showing required for injunctive relief based on a false advertising theory, see Mobius Management, 880 F. Supp. at 1021-22, for Sun Trading does not argue that Evidence's album covers are "literally or explicitly false"; rather, it merely claims that they are deceptive and misleading.
If Sun Trading cannot make the requisite showing of likelihood of consumer confusion to entitle it to injunctive relief, it certainly cannot make the heightened showing of actual consumer confusion or deception required to entitle it to money damages. See PPX, 818 F.2d at 271. Consequently, Sun Trading's Lanham Act claim stemming from the Roney recording also fails as a matter of law. Cf. Arden v. Columbia Pictures Indus., Inc., 908 F. Supp. 1248, 1263 (S.D.N.Y. 1995) (granting defendant's motion for summary judgment on Lanham Act claim because plaintiff failed to raise "a reasonable fact issue regarding the 'likelihood of confusion,' an essential element of a Lanham Act claim").
It may well be that Sun Trading has valid claims, but it does not have valid claims under the Lanham Act. As Judge Sotomayor has stated, "The Lanham Act . . . should not be used as a remedy for a bruised ego. The Lanham Act should not be used to transform a breach of contract dispute into a federal cause of action." Stratta, 1997 U.S. Dist. LEXIS 7399, 1997 WL 282250, at *5.
2. State Law Claims
The Court need not consider Sun Trading's state law claims. In dismissing the Lanham Act claims, the Court has the discretion whether to exercise jurisdiction over the remaining state law claims. 28 U.S.C. § 1367(c)(3); see also United Mine Workers v. Gibbs, 383 U.S. 715, 726, 16 L. Ed. 2d 218, 86 S. Ct. 1130 (1966); Reese Publ'g Co. v. Hampton Int'l Communications, Inc., 620 F.2d 7, 13 (2d Cir. 1980) (holding that when a Lanham Act claim is dismissible upon motion, state law claims should be dismissed without prejudice). The Court declines to exercise jurisdiction over such claims. Accordingly, Sun Trading's state law claims are hereby dismissed without prejudice to re-filing in state court.
B. Plaintiff's Cross Motion for Leave to Amend the Complaint
Sun Trading moves for leave to amend its complaint to include Kenwood Japan and Art Union Records as defendants, in place of Kenwood Electronics Corp. The Court finds that amendment of the complaint at this stage would be futile. Even if Sun Trading were able to determine the proper Kenwood entities and add them as defendants, its claims against these entities would fail as a matter of law for the reasons stated above. Accordingly, plaintiff's motion for leave to amend the complaint is hereby denied. See Foman v. Davis, 371 U.S. 178, 182, 9 L. Ed. 2d 222, 83 S. Ct. 227 (1962) (holding that futility is among the reasons for denying leave to amend a complaint).
For the foregoing reasons, defendants' motion for summary judgment is granted as to plaintiff's Lanham Act claims, and the Court declines to exercise supplemental jurisdiction over the remaining state law claims. Defendants' application for an award of costs pursuant to 15 U.S.C. § 1117 is denied, as the Court does not find that plaintiff's Lanham Act claims were brought for an improper purpose. The Clerk of the Court shall enter judgment in favor of defendants dismissing the complaint, with prejudice as to the Lanham Act claims and without prejudice as to the state law claims, and without fees or costs.
Dated: New York, New York
October 14, 1997
United States District Judge