The opinion of the court was delivered by: Sweet, District Judge.
Plaintiff Tuff-N-Rumble Management, Inc. ("Tuff") has moved (1)
pursuant to Rule 12(b)(1) of the Federal Rules of Civil Procedure
to dismiss the counterclaim for copyright interference asserted
against it by defendants Sugarhill Music Publishing Inc., Sugar
Hill Records, Ltd., Sugar Hill Records, Inc., Sugar Hill Music,
Inc., and Sugar Hill Music Publishing, Ltd. (collectively,
"Sugarhill"); and (2) for an order, pursuant to Rule 56 of the
Federal Rules of Civil Procedure, dismissing Sugarhill's
counterclaims for tortious interference with contract and
defamation, and Sugarhill's affirmative defense of prior
transfer. Defendants have moved to strike Tuff's First Amended
For the reasons set forth below, Tuff's motions are granted in
part and denied in part, and Sugarhill's motion is denied.
Tuff is a New York corporation with its principal place of
business in New York, New York.
Sugarhill Music Publishing, Inc., Sugar Hill Records, Inc., and
Sugar Hill Music Publishing, Ltd. are New Jersey corporations
with their principal place of business in Englewood, New Jersey.
Sugar Hill Records, Ltd. and Sugar Hill Music, Ltd. have their
principal places of business in Englewood, New Jersey. In its
complaint, Tuff asserted that these entities are New Jersey
corporations, but Sugarhill denied these claims in its answer.
Defendants are engaged in the business of commissioning,
acquiring, owning, licensing and selling musical compositions,
works, songs, and the recorded performances thereof.
Tuff filed a complaint against Sugarhill alleging copyright
infringement, violation of the Lanham Act, tortious interference
with prospective economic advantage, and unfair business
practices in violation of New York General Business Law on
October 17, 1997. Sugarhill filed its answer and six
counterclaims on March 9, 1998. Sugarhill alleges that Tuff
committed copyright infringement in violation of copyright law
and that Tuff is liable under New Jersey law for interference
with prospective economic advantage, tortious interference with
contract, slander of title, defamation, and malicious
On March 26, 1998, Tuff filed a motion, pursuant to
Fed.R.Civ.P. 12(b)(6), to dismiss the six counterclaims asserted
against it by Sugarhill. By opinion and order dated June 15,
1998, the Court granted the motion to dismiss Sugarhill's
counterclaim for malicious prosecution, but denied the motion to
dismiss the counterclaims of interference with prospective
economic advantage, tortious interference with contract, slander
of title, defamation, and copyright infringement.
On December 15, 1998, Tuff moved to amend the complaint to join
additional defendants. Tuff's motion was granted by order dated
January 27, 1999. Tuff filed and served its amended complaint
(the "Amended Complaint") on February 3, 1999.
On December 17, 1999, Tuff filed the instant motions to dismiss
the Sugarhill counterclaims. Oral argument was heard on February
14, 1999, at which time the motions were deemed fully submitted.
Sugarhill moved to strike the Amended Complaint on February 12,
1999. Opposition and reply papers were received through March 10,
1999, at which time the motion was deemed fully submitted.
For the purposes of these motions addressed to the pleadings
the factual allegations of the pleadings are taken as true,
though it is appropriate when considering jurisdictional issues
to consider matters outside the parameters of the pleadings. See
Cargill Intern. S.A. v. M/T Pavel Dybenko, 991 F.2d 1012, 1019
(2d Cir. 1993); Kamen v. A.T. & T. Co., 791 F.2d 1006, 1011 (2d
Cir. 1986). When considering Tuff's motion to dismiss the
counterclaims for lack of subject matter jurisdiction, all
material factual allegations in Sugarhill's answer must be
accepted as true. See Scheuer v. Rhodes, 416 U.S. 232, 236, 94
S.Ct. 1683, 40 L.Ed.2d 90 (1974); see also Atlantic Mutual Ins.
Co. v. Balfour Maclaine Int'l Ltd., 968 F.2d 196, 198 (2d Cir.
1992); Rubin v. Tourneau, Inc., 797 F. Supp. 247, 248 (S.D.N Y
1992). However, the Court must examine the substance of the
allegations and any other evidence before it in resolving the
jurisdictional dispute, see Cargill, 991 F.2d at 1019, but need
not draw argumentative inferences favorable to the party
asserting jurisdiction. See Norton v. Larney, 266 U.S. 511,
515, 45 S.Ct. 145, 69 L.Ed. 413 (1925); Atlantic Mutual, 968
F.2d at 198. Therefore, the factual allegations set forth below
do not constitute findings of fact by the Court. Unless otherwise
indicated, the facts are drawn from the allegations made by
Sugarhill in their counterclaims.
The dispute between Tuff and Sugarhill focuses on the copyright
ownership of the song "Spoonin' Rap," a musical composition (the
"Composition") by Gabriel Jackson, a/k/a Marion Jackson,
professionally known as Spoonie Gee ("Jackson"). On or about
November 1, 1979, Jackson sold to Heavenly Crown Music his rights
to the Composition and the master recording (the "Master"). On
June 9, 1980, Peter Brown, on behalf of Heavenly Crown Music,
assigned the copyright to both the Composition and the Master to
Sugarhill, which subsequently recorded the assignment in
the United States Copyright Office on August 18, 1995.
According to Tuff, Jackson assigned his copyright interest in
the Composition to Tuff in 1988, and it holds United States
Copyright Registration SR 174-458, dated August 23, 1994 (the
"Registration"). Sugarhill, however, maintains that Tuff's
copyright registration covers only the sounding recording.
Although Tuff has had knowledge of Sugarhill's interest in
"Spoonin' Rap," it has represented itself as the rightful owner
of both the Composition and the Master and claimed exclusive
entitlement to all royalties and licensing fees. As a result of
Tuff's assertions, Sugarhill has had ...