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LENNON v. SEAMAN

September 8, 1999

YOKO ONO LENNON, PLAINTIFF,
v.
FREDERIC SEAMAN, DEFENDANT.



The opinion of the court was delivered by: Sand, District Judge.

  OPINION

The plaintiff, Yoko Ono Lennon, brings this action against the defendant, Frederic Seaman, for copyright infringement, declaratory judgment, fraud on the copyright office, recovery of chattels, "trespass,"*fn1 tortious interference with contract, prima facie tort, unjust enrichment, breach of contract, as well as for injunctive relief. Presently before the Court is the defendant's motion to a) dismiss various claims in the complaint for failure to state a claim upon which relief may be granted due to i) statute of limitations; ii) laches; iii) preemption of state law claims by the Copyright Act of 1976, § 101 et seq. ("the Copyright Act"); and iv) failure to state an essential element; b) to dismiss the complaint for failure to comply with service requirements; c) to dismiss the state law claims for lack of subject matter jurisdiction; d) to dismiss the complaint due to failure to comply with Fed.R.Civ.P. 8(a); e) to strike matters from the complaint; and f) for an award of fees and costs. All of the defendant's motions are denied, except as follows: the plaintiff's claims for tortious interference with contract and prima facie tort are dismissed; the plaintiff's claims for recovery of chattels and "trespass," are dismissed to the extent that these claims relate to the photographs contained in the book The Last Days of John Lennon: A Personal Memoir by Frederic Seaman (Carol Publishing Group, 1991) ("The Last Days of John Lennon"); and the plaintiff's unjust enrichment cause of action is dismissed because it is preempted by federal copyright law. Furthermore, the plaintiff is instructed to submit briefing to the Court relating to the issue of copyright registration, as described below; and the parties are instructed to submit briefing on the issue of ripeness in relation to the fraud on the Copyright Office claim. All papers should be submitted to the Court within sixty days from the date of this Opinion.

BACKGROUND

The plaintiff is the widow of the late John Lennon. In the late 1970s and early 1980s the defendant was an employee of the Lennon household. At the center of this dispute lie various photographs and other depictions of the Lennons, presumably taken by the defendant, that were created during the defendant's employment. The plaintiff contends that she is the owner of the copyrights to the items pursuant to the work-for-hire doctrine, as well the owner of the actual photographs themselves. The defendant, on the other hand, claims that he owns the items and the copyright to those items. Out of this difference of opinion arise thirteen causes of action.

The complaint alleges that the defendant unlawfully removed photographs, videotapes and other depictions of the Lennons from the Lennon household from December of 1980 to December of 1981. The plaintiff seeks the return of these items, and damages for "trespass."

The plaintiff also claims that the defendant infringed her copyright in many of the photographs through his unauthorized publication of the items by, among other allegations, appearing and showing the photographs on the Fox Family Channel special entitled "Famous Families: the Kennedys and the Lennons" in February 1999, and on Court TV's program, "Pro and Con," in May 1999. The plaintiff seeks a declaratory judgment that she is and has always been the rightful owner of the photographs, as well as injunctive relief. She also asserts that the defendant has been unjustly enriched by virtue of his exploitation of the photographs.

As a condition of the defendant's employment with the Lennons, he purportedly signed a contract ("Confidentiality Agreement") whereby he agreed "not to divulge, exploit, commercially or otherwise, or publicize, in any manner whatsoever, any information, facts, or anecdotes or otherwise relating to [the Lennons] in any manner" without prior written permission from the Lennons. (Second Amend. Compl. at ¶ 5, quoting Confidentiality Agreement.) The plaintiff contends that the defendant has breached this contract by disclosing information about the Lennons through his dissemination of the photographs and other confidential information to others. She seeks both damages and injunctive relief in regards to the defendant's ongoing breach of the Confidentiality Agreement.

On this motion to dismiss, the defendant argues that the plaintiff is barred by laches as well as the statue of limitations from asserting her various claims. In response, the plaintiff contends that the defendant is equitably estopped from asserting both the defense of laches and the statute of limitations as a result of the defendant's prior behavior. In particular, the plaintiff claims that the defendant's representation that he had complied with his obligations under a plea agreement — which arose in connection with the defendant's conviction for larceny of Mr. Lennon's journals — to return all items wrongfully taken from the Lennon household, even though he had not, constitutes fraudulent concealment and makes the asserted defenses by the defendant inapplicable.

The defendant also contends that the plaintiff's causes of action pursuant to state law are preempted by the Copyright Act, and that various claims should be dismissed for failure to state an essential element of those claims. The defendant also moves to dismiss the complaint for failure to comply with Fed.R.Civ.P. 8(a); to strike portions of the complaint; to dismiss for lack of proper service; to dismiss for lack of subject matter jurisdiction, assuming the copyright claims are dismissed, and for an award of fees and costs

DISCUSSION

As a preliminary matter, we note that the Court has subject matter jurisdiction pursuant to 28 U.S.C. § 1331, 1338, and 1367. Registration of copyright is a jurisdictional prerequisite for infringement actions. 17 U.S.C. § 411(a). This requirement can be met by filing an application for registration. See 2 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 7.16[B][1][a], n. 39. The plaintiff alleges that she has been issued copyright registration in the 42 photographs appearing in The Last Days of John Lennon, and that she had filed with the Copyright Office an application and fee for registration of the 332 other photographs for which she is suing for infringement.*fn2 (See Second Amend.Compl. at ¶ 26). The Court does note, however, that some of the plaintiff's copyright claims mention not only the aforementioned Photographs, but also other photographs, videotapes and other depictions of the Lennons. No allegation is made that registration of the copyright in these items has been issued or that an application is pending. For these reasons, the Court directs the plaintiff to submit briefing to the Court within sixty days from the date of this Opinion, indicating either that the plaintiff is relying on an exception to the registration requirement, or that the plaintiff has sought to register copyright in these materials. For the aforementioned reasons, the Court's Opinion today does not address the portion of the plaintiff's copyright claims relating to the other photographs, videotapes or other depictions of the Lennons.

I. Motion to Dismiss Relating to Service

The defendant moves to dismiss the second amended complaint for reasons related to service. The Court's best assessment of the defendant's motion is that the defendant seeks to dismiss the action because the plaintiff failed to file the Affidavit of Service of the original summons and complaint at the time the plaintiff filed those documents. The plaintiff states that the Affidavit of Service was inadvertently omitted when the papers were filed with the Court on April 16, 1999, but that the Affidavit was filed the next business day. A review of the Court file indicates that such an Affidavit of Service was so filed with the Court on April 19, 1999. The Court also notes that a failure to make proof of service does not affect the validity of the service. See Fed.R.Civ.P. 4(1). Accordingly, this portion of the defendant's motion is denied.

II. Motion to Dismiss for Failure to State an Essential Element

The defendant asserts that the plaintiff has failed to state the essential elements of the following claims: tortious interference with contract; prima facie tort; and unjust enrichment. The plaintiff disputes this assertion.

The plaintiff's ninth claim alleges that the defendant tortiously interfered with her contract with Capitol to release the box set. The defendant argues that the claim has failed to state the essential element of an actual breach. Under New York law, the elements of a claim for tortious interference with contractual relations are: i) the existence of a valid contract between the plaintiff and a third party; ii) defendant's knowledge of the contract; iii) defendant's intentional inducement of the third party to breach the contract or otherwise render performance impossible; and iv) damages to the plaintiff. See Kronos, Inc. v. AVX Corp., 81 N.Y.2d 90, 94, 612 N.E.2d 289, 595 N.Y.S.2d 931 (N.Y. 1993). The Court of Appeals has explicitly stated that this cause of action requires an actual breach. See NBT Bancorp Inc. v. Fleet/Norstar Fin. Group, Inc., 87 N.Y.2d 614, 620, 664 N.E.2d 492, 641 N.Y.S.2d 581 (N.Y. 1996); see also D'Andrea v. Rafla-Demetrious, 146 F.3d 63, 65-66 (2d Cir. 1998).

The plaintiff, however, contends that where there is no breach, a plaintiff can still maintain a cause of action for tortious interference with contract by alleging "culpable conduct" or "wrongful means" on the part of the defendant. Plaintiff then cites to NBT and Guard-Life Corp. v. S. Parker Hardware Mfg. Corp., 50 N.Y.2d 183, 191, 406 N.E.2d 445, 428 N.Y.S.2d 628 (N.Y. 1980) for support of this proposition. The plaintiff has merged two causes of action — tortious interference with contract and tortious interference with prospective contract or business relations. The former requires an allegation of an actual breach, and the latter requires a showing of "wrongful means." See NBT, 87 N.Y.2d at 620-24, 664 N.E.2d 492, 641 N.Y.S.2d 581; Guard-Life, 50 N.Y.2d at 190-92, 406 N.E.2d 445, 428 N.Y.S.2d 628.

The defendant moves to dismiss the plaintiff's tenth claim, prima facie tort, on the theory that the plaintiff has failed to state a necessary element. In particular, the defendant argues that although the plaintiff alleges that the defendant acted without legal or social justification, the defendant did have such justification, and that the defendant did not seek to injure the plaintiff, but merely to protect his own interests. The plaintiff, not surprisingly, has a different viewpoint. On a motion to dismiss for failure to state a necessary element, the defendant's contention that he only acted to protect his own interests is not sufficient to require dismissal.

Nevertheless, plaintiff's claim does lack an essential element. Under New York law, the elements of a prima facie tort claim are intentional infliction of harm, resulting in special damages, without excuse or justification, by an act that would otherwise be lawful. See, e.g., Burns Jackson Miller Summit & Spitzer v. Lindner, 59 N.Y.2d 314, 332, 464 N.Y.S.2d 712, 451 N.E.2d 459 (N.Y. 1983). Furthermore, the plaintiff must allege that the defendant's sole motivation was disinterested malevolence. See Lindner, 59 N.Y.2d at 333, 464 N.Y.S.2d 712, 451 N.E.2d 459. It is on this last element that the plaintiff's claim fails. Not only did the plaintiff fail to allege that the defendant was motivated solely by malice, but by incorporating paragraphs 1-36 of the complaint in the claim, the plaintiff has actually alleged that the defendant's motivations behind the theft and use of Lennon's items were monetary in nature. When there are other motives, such as profit or self-interest, behind the alleged actions, there will be no recovery under the theory of prima facie tort. Marcella v. ARP Films, Inc., 778 F.2d 112, 119 (2d Cir. 1985) (interpreting New York law); Lindner, 59 N.Y.2d at 333, 464 N.Y.S.2d at 720. See also Idaho Potato Comm'n v. M & M Produce Farms and Sales, 35 F. Supp.2d 313, 324 (S.D.N.Y. 1999) (dismissing sua sponte plaintiff's prima facie tort claim for failure to allege disinterested malevolence, and for essentially pleading other motives in paragraphs that were re-alleged in the prima facie tort claim). Therefore, we dismiss plaintiff's prima facie tort claim.

We do not reach the defendant's claim that the unjust enrichment cause of action lacks an essential element because, as described below, we find the unjust enrichment claim to be preempted by federal copyright law.

III. Preemption

The defendant moves to dismiss the plaintiff's seventh through thirteenth causes of action on the theory that these state law claims are preempted by the Copyright Act. The plaintiff argues that the state law claims are all independent of the Copyright Act.

When Congress amended the Copyright Act in 1976, it included a provision that provided for preemption of state law claims in certain situations. See 17 U.S.C. § 301. The relevant portion of the statute reads as follows:

  (a) On and after January 1, 1978, all legal or
  equitable rights that are equivalent to any of the
  exclusive rights within the general scope of
  copyright as specified by section 106 in works of
  authorship that are fixed in a tangible medium

  of expression and come within the subject matter of
  copyright as specified by sections 102 and 103,
  whether created before or after that date and whether
  published or unpublished, are governed exclusively by
  this title. Thereafter, no person is entitled to any
  such right or equivalent right in any such work under
  the common law or statutes of any State.
  (b) Nothing in this title annuls or limits any rights
  or remedies under the common law or statutes of any
  State with respect to —
    (1) subject matter that does not come within the
    subject matter of copyright as specified by
    sections 102 and 103, including works of authorship
    not fixed in any tangible medium of expression; or
    (3) activities violating legal or equitable rights
    that are not equivalent to any of the exclusive
    rights within the general scope of copyright as
    specified by section 106.

17 U.S.C. § 301.

Thus, a court analyzing whether a state claim is preempted by federal copyright law must engage in a two-part inquiry. The Court must determine if the state law creates rights that are equivalent to the rights protected by federal copyright law under 17 U.S.C. § 106. See Nat'l Basketball Ass'n v. Motorola, Inc., 105 F.3d 841, 848 (2d Cir. 1997). This has been referred to as the "general scope" requirement. See id. If the state law claim requires an extra element "`instead of or in addition to the acts of reproduction, performance, distribution or display . . . then the right does not lie within the general scope of copyright, and there is no preemption.'" Computer Assocs. Int'l. Inc. v. Altai, Inc., 982 F.2d 693, 716 (2d Cir. 1992) (quoting 1 Nimmer, § 1.01[B]) (internal quotation omitted). The extra element must, however, alter the nature of the claim such that it is qualitatively different from a claim pursuant to the federal copyright laws. See id.; Harper & Row, Publishers, Inc. v. Nation Enter., 723 F.2d 195, 201 (2d Cir. 1983), rev'd on other grounds, 471 U.S. 539, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985); Mayer v. Josiah Wedgwood & Sons, Ltd., 601 F. Supp. 1523, ...


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