United States District Court, S.D. New York
May 24, 2004.
Michael Lewittes, plaintiff, -against- Jamie Cohen, Joshua Blume, and Marilyn Blume Defendants
The opinion of the court was delivered by: CHARLES HAIGHT, District Judge
MEMORANDUM OPINION AND ORDER
Defendants bring this motion seeking dismissal of the complaint for
failure to state a claim upon which relief can be granted, pursuant to
Federal Rule of Civil Procedure 12(b)(6). For the purposes of a Rule
12(b)(6) motion, all well-pleaded factual allegations contained in the
complaint must be treated as true by the Court, Cohen v. Koenig,
25 F.3d 1168, 1172 (2d Cir. 1994), and all reasonable inferences must be
made in the plaintiff's favor. Gant v. Wallingford Board of Education,
69 F.3d 669, 673 (2d Cir. 1995). The Court must not dismiss the action
"unless it appears beyond doubt that the plaintiff can prove no set of
facts in support of his claim which would entitle him to relief." Conely
v. Gibson, 355 U.S. 41, 45-46 (1957); Frasier v. G.E. Co., 930 F.2d 1004,
1007 (2d Cir. 1991). However, "[c]onclusory allegations or legal
conclusions masquerading as factual conclusions will not suffice to
prevent a motion to dismiss," 2 Moore's Federal Practice § 12.34[b] (3d
ed. 2001); Electronics Communications Corp. v. Toshiba America Consumer
Products, Inc., 129 F.3d 240, 243 (2d Cir. 1997). In accordance with this well-established legal standard, the Court will
accept as true, for the purposes of this motion, the account of the facts
presented in plaintiff's Third Amended Complaint.
For reasons set forth below, defendants' motion is granted in-part and
According to the Third Amended Complaint (the "Complaint"), plaintiff,
Michael Lewittes, is a journalist and editor who specializes in celebrity
reporting, a screenwriter, and a commentator who frequently appears on
national television programs. Defendant Marilyn Blume, formerly known as
Marilyn Lewittes, was once married to plaintiff's brother, David
Lewittes. Defendant Joshua Blume, also known as Jamie Cohen, is Marilyn
Blume's brother. In March 2000, Marilyn Blume was in the midst of divorce
proceedings against David Lewittes, who is not a party to the present
On or about March 30, 2000, Marilyn Blume, with the aid and support of
Joshua Blume, registered the domain named " www.lewittes.com" and created
a website lodged at that location.*fn1 When accessed, one incarnation*fn2
of this website promised to provide details, including documents and
subjective accounts, relating to the divorce proceedings involving
Marilyn Blume and David Lewittes. While the website was, apparently,
never completed, one page that was available at the site featured a title
in bold and large font text reading "the story will be told," accompanied by a statement in smaller font reading "ask the doorman . . .
and that closeted editor of a certain paper" (ellipsis in original). In
addition, this same page displayed a statement reading "soon to be a
major motion picture . . ." (ellipsis in original). The page also
contained links labeled "women," "Jewish," and "and one more," none if
which, it seems, was active. A later version of the site,*fn3 created on
or about June 24, 2002, claimed, simply, that the site was "currently
under development," invited "comments," and incorporated links labeled
"cnn," "ny1," and "post."
In mid-June 2002, plaintiff made inquiries at Register.com, a registrar
of domain names, to ascertain who had registered the domain
"www.lewittes.com." At that time, the registration information on-file
with Register.com did not contain accurate or reliable contact
information for either Joshua Blume or Marilyn Blume.*fn4
The original complaint in this case, making claims for unfair
competition, dilution, and trademark infringement, was filed against John
Doe and Jane Doe on January 9, 2003. A First Amended Complaint, making
identical claims, was filed on January 27, 2003, naming Jamie Cohen as
the sole defendant. A Second Amended Complaint, based on the same
claims, was filed and served on February 6, 2003, naming Jamie Cohen and
Joshua Blume as defendants.
After the Second Amended Complaint was filed, plaintiff's counsel
interviewed Joshua Blume and confirmed that Jamie Cohen is a pseudonym
used by Joshua Blume, a fact that defendants acknowledge. Counsel was also informed by Joshua Blume
that he constructed the website at the request and direction of Marilyn
Blume. Based on this information, plaintiff filed and served a Third
Amended Complaint on October 2, 2003, adding counts for defamation and
naming Jamie Cohen, Joshua Blume, and Marilyn Blume as defendants.
Leave to file Amended Complaint
The Court will address first plaintiff's application to file his Third
Amended Complaint nunc pro tunc. Federal Rule of Civil Procedure 15(a)
provides that "[a] party may amend the party's pleading once as a matter
of course at any time before a responsive pleading is served." As is
indicated by the title "Third Amended Complaint," Plaintiff exercised his
one free amendment prior to the present proposed amendment. Therefore,
despite the fact that the Third Amended Complaint was filed and served
before defendants filed their Answer, the amendments therein can be made
only "by leave of court or by written consent of the adverse party."
Defendants oppose the motion to amend. Consistent with this position,
no written consent to the amendment has been provided to the Court. It
falls, then, on plaintiff to move the Court for permission to amend.
Plaintiff has so moved. The Court is directed that leave to file
amendments "shall be freely given when justice so requires." Fed.R. Civ.
The Court takes note of four critical facts in evaluating the motion to
amend. First, the proposed amendments serve, primarily, to add Joshua
Blume and Marilyn Blume as named defendants, as final replacements of the
originally named John and Jane Doe, and to add a claim for defamation. Second, defendants acknowledge that the additions
made by the Third Amended Complaint "relate back" to the original
complaint. Defendants' Reply Memorandum (the "Reply") at 6, note 4.
Third, and consistent with this position, defendants' Answer, filed on
December 1, 2003, responds directly to the Third Amended Complaint.
Fourth, defendants' current motion is to dismiss the Third Amended
From these facts it is clear that the Third Amended Complaint provides
the most complete and current account of the factual allegations,
claims, and parties involved in this case. Also significant, given the
premium put on efficiency and justice in this context, the Third Amended
Complaint provides the entire stage-setting for all present activity of
the parties. In these circumstances, plaintiff's motion for leave to file
the Third Amended Complaint nunc pro tunc is appropriate and is granted
in the interests of clarity, consistency, and justice.
Plaintiff's first and second causes of action in the Complaint are for
defamation and for punitive damages arising from the alleged defamation,
respectively. Defendant's contend that these claims should be dismissed
as time-barred. The Court agrees.
"There are three critical elements to any statute of limitations
analysis: the duration of the limitation, the date on which time begins
to run, and the date, if any, on which the clock was stopped." Zoll v.
Ruder Finn, No. 02 Civ. 3652, 2004 WL 42260 (S.D.N.Y., Jan. 7, 2004). The
statute of limitations for defamation claims in New York is one year.
N.Y. CPLR § 215(3). According to the Complaint, the offending website was
created on March 30, 2000. Complaint at para. 13. Therefore, the
statutory deadline for all defamation claims based on materials originally published on the website was March 30, 2001. All claims
filed on March 31, 2001 or later would be time-barred.
Plaintiff's claims for defamation were first added to his cause of
action by the Third Amended Complaint, filed on October 2, 2003.
Plaintiff contends, and defendants accept, that these amendments relate
back to the original complaint, which was filed on January 9, 2003. Both
dates are well past the March 30, 2001 deadline for plaintiff's
defamation claims. Thus, they appear to be time-barred.
In his Response, plaintiff argues that the defamatory statements
alleged in the Complaint may have been added or altered within the year
counting back from January 9, 2003. Response at 6. While this may be the
case, the Complaint does not so allege and, pursuant to the rules of
engagement on a motion to dismiss, the Court will not speculate about
facts not well-pleaded in the Complaint.
Plaintiff also argues that defendants are estopped from raising a
statute of limitations defense because they did not maintain accurate
identifying information with Register.com, the organization through which
defendants registered "Lewittes.com." While fraud, misrepresentation, and
deception on the part of a defendant that prevent a plaintiff from
commencing a timely action can provide a basis for estopping a statute of
limitations defense, there is no evidence that defendants' omissions in
this case delayed commencement of the present action. Plaintiff stopped
the clock with his first complaint, which identified as defendants John
and Jane Doe. While defendants may be to blame for the original complaint
being directed against the Does, plaintiff is solely responsible for when
it was filed and consequently when the clock was stopped. Plaintiff's
first and second causes of action are, for these reasons,*fn5 dismissed without prejudice.*fn6 Lanham Act Claim
Plaintiff's third cause of action is for unfair competition under
15 U.S.C. § 1125. To prevail on this Lanham Act claim, plaintiff must
show that he has a mark entitled to protection, that defendants used the
mark, and that the defendants' use of the mark is likely to cause
confusion. Nabisco, Inc. v. Warner-Lambert Co., 220 F.3d 43, 45 (2d
Cir., 2000); 15 U.S.C. § 1125(a)(1)(A). In addition, Plaintiff must show
that the alleged use of his mark was "in connection with any goods or
services" and in the course of "commerce." 15 U.S.C. § 1125(a)(1). Any
"[n]oncommercial use of a mark" is not actionable under the Lanham Act.
15 U.S.C. § 1125(c)(4)(B).
Plaintiff has applied for trademark protection of "Michael Lewittes."
Complaint at para. 4. Plaintiff has not reported either success or
failure of this application, but registration of a trademark is not
critical to a Lanham Act claim. See L.& J.G. Stickley, Inc. v. Canal
Dover Furniture Co., 79 F.3d 258, 262 (2d Cir. 1996). What is critical is
a demonstration that the mark is sufficiently strong to be entitled to
protection and that there is a likelihood of confusion between uses of the
mark made by plaintiff and defendants. Id. Both analyses are highly
factual in nature. See Polaroid Corp. v. Polar ad Electronics Corp.,
287 F.2d 492, 495 (2d Cir., 1961) (setting forth the now familiar,
non-exclusive factors to be considered in determining likelihood of
confusion: (1) strength of the plaintiff's mark; (2) the degree of
similarity between the two marks; (3) the proximity of the products; (4)
the likelihood that the prior owner will "bridge the gap"; (5) actual
confusion; (6) the defendants' good faith in adopting its mark; (7) the
quality of the defendant's product; and (8) the sophistication of the
Defendants claim that there is no likelihood of confusion and that
plaintiff's claims are self-defeating. Specifically, defendants contend that plaintiff's
allegations of defamation and confusion logically contradict themselves,
since no reasonable person would conclude that plaintiff defamed himself
by use of his own website. Motion at 13, 14. Defendants further claim
that "www.lewittes.com" was not used in the course of commerce or in
connection with any goods or services. Motion at 9-12.
In response, plaintiff, alleges that "Michael Lewittes" is a unique
mark that, in addition to being plaintiff's name, has gained a
distinctive secondary commercial meaning through his work as a celebrity
journalist, editor, and screenwriter, Complaint at paras. 4-7, and has
come to be "clearly identified in public mind with plaintiff." Id. at
Plaintiff also alleges that the website lodged at "www.lewittes.com"
contains promises to tell an entertaining story and references to a
forthcoming "major motion picture." Complaint at paras. 14-16. From these
facts, Plaintiff argues that one could reasonably conclude that
defendants use of "www.lewittes.com" was, in part, driven by a commercial
intent to "entertain" and to promote a "major motion picture." Response
at 18. Plaintiff also claims that the proximity of these promises to his
professional and commercial life is likely to cause confusion in the form
of false attribution of "www.lewittes.com" and its content to plaintiff.
Complaint at paras. 33-35. In addition, plaintiff claims that screen
writing and production and promotion of screenplays and movies on "www.
lewittes.com" is in direct competition with his own commercial
enterprises in these fields. Trading on such a confusion and use of
plaintiff's commercial reputation as a screenwriter to market defendants'
proposed movie project would, plaintiff claims, violate his rights under
the Lanham Act.
Defendants assert that the phrase "soon to be a major motion picture"
found on www.lewittes.com is merely a literary device, and that it does not
connect their use of "www.lewittes.com" with the sale of any goods or
services. Reply at 7.
These exchanges present the Court with a number of critical factual
disputes. In the present context and without the benefit of any record of
discovery, these disputes must be resolved in favor of plaintiff. Giving
plaintiff the benefits he is owed at this stage says nothing of his
ability to develop any actual evidence sufficient to create a genuine
issue of fact or to prove his case at later stages. It simply reflects
placement of burdens and presumptions on motions to dismiss.
With the full benefit accorded to him at this stage of litigation,
facts alleged by plaintiff in the complaint construct a picture of events
in which defendants created their website, at least in part, to sell or
otherwise market the story of a divorce and to use a confused association
with plaintiff's name and fame to advance that purpose. Plaintiff has, on
this basis, met his burden to plead facts sufficient to make out an
unfair competition claim under the Lanham Act. See e.g. Patsy's Brand,
Inc. v. I.O.B. Realty, Inc., 317 F.3d 209, 215 (2d Cir. 2003) (denying a
motion for summary judgment where a factual dispute existed with respect
to one of the Polaroid factors). The motion to dismiss plaintiff's third
claim is denied.*fn7 Claim for Dilution
Plaintiff's fourth cause of action is for dilution of "Michael
Lewittes" in violation of 15 U.S.C. § 1125(c). In their Motion,
defendants rightly cite Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208
(2d Cir., 1999), pointing out that plaintiff must meet five burdens on
his dilution claim. Specifically, plaintiff must show that his mark,
"Michael Lewittes," is famous, that it is distinctive, that defendants'
use of "www.lewittes.com" is a commercial use, that this Use commenced
after "Michael Lewittes" became famous, and that this use diluted the
distinctive qualities of "Michael Lewittes." In moving for dismissal,
defendants contend that, the surname "Lewittes" is not sufficiently
distinctive to sustain a claim for dilution. Motion at 15. Defendants
also contend that, though plaintiff may be famous, "Michael Lewittes," as
a trademark, is not sufficiently famous to meet the legal requirements
for a dilution claim. Motion at 15. Finally, defendants assert that
"lewittes," as used in "www.lewittes.com," is not a commercial use.
15 U.S.C. § 1125(c) provides only equitable relief and only for owners
of famous marks. See 15 U.S.C. § 1125(c)(1) and (2). According to the
Second Circuit, a "mark would qualify as `famous' only if [it] carried
a substantial degree of fame," TCP IP Holding Co. v. Haar Communs.,
Inc., 244 F.3d 88, 99 (2d Cir., 2001). In that case, the principal
considerations relevant to determining "substantial" fame were duration,
geography, and demography. Id. ("It seems most unlikely that Congress
intended to confer on marks that have enjoyed only brief fame in a small
part of the country, or among a small segment of the population, the power
to enjoin all other users throughout the nation in all realms of
In the Complaint, plaintiff alleges that he has used "Michael Lewittes"
as his service mark since 1989, that he has "achieved nationwide recognition and
respect," aided, in part, by numerous television appearances on widely
broadcast television programs, and that his success is bound to "his good
name." Complaint at paras. 2, 6-8. These allegations are sufficient to
constitute a pleading that plaintiff's service mark is "famous" within
the meaning of the statute. It remains to be seen whether plaintiff can
muster sufficient evidence to create a genuine issue of fact as to
whether his mark is "truly prominent and renowned," I.P. Lund Trading ApS
v. Kohler Co., 163 F.3d 27, 46 (1st Cir. 1998) (citations omitted), and
in the same class as "DuPont, Buick, or Kodak." TCPIP Holding Co. 191
F.3d at 214.
The facts set forth in the complaint that address duration, geography,
and demography are equally pertinent to an analysis of "distinctiveness."
See 15 U.S.C. § 1125(c)(1)(C), (D), and (F). Also relevant is "the nature
and extent of use of the same or similar marks by third parties."
15 U.S.C. § 1125(c)(1)(G). In the Complaint, plaintiff asserts that he is
the only person with the name "Lewittes" practicing as an "editor,
writer, journalist, or media correspondent in the United States." Id. at
para. 3. This fact, if true, taken with claims of duration, geographic
coverage, and demographic impact, could support a reasonable inference
that "Michael Lewittes" is both famous and a distinct mark that uniquely
identifies plaintiff's professional and commercial services.
I have already held that Plaintiff has pleaded sufficient facts to
support his claim that defendants used "www.Lewittes.com" for commercial
The motion to dismiss plaintiff's fourth cause of action is denied. Common Law Unfair Competition and Trademark Infringement
Defendants seek dismissal of plaintiff's cause of action for common law
unfair competition and trademark infringement for two reasons. First,
defendants claim that plaintiff has not alleged facts sufficient to
fulfill his burden of showing commercial competition. I have already held
here that plaintiff has met his pleading burden in this regard.
Second, defendants seek protection from the First Amendment of the
United States Constitution for what, they claim, is speech exercised to
advance public discourse. This defense turns on whether or not
defendants' use of "www.lewittes.com" was for commercial purposes and
intentionally created confusion as to source and attribution of the
stories and screenplay referred to on the site. These are, of course,
critical issues that must be developed and resolved through this
litigation. At this stage, it would not be appropriate for the Court to
decide contested issues of fact, particularly in the absence of any
record of substance.
Defendants' motion to dismiss plaintiff's fifth cause of action is
Plaintiff's sixth cause of action is for violations of the
Anticybersquatting Consumer Protection Act (the "ACPA"),
15 U.S.C. § 1125(d). The ACPA was passed "to protect consumers and
American businesses, to promote the growth of online commerce, and to
provide clarity in the law for trademark owners by prohibiting the
bad-faith and abusive registration of distinctive marks as Internet
domain names with the intent to profit from the goodwill associated with
such marks a practice commonly referred to as `cybersquatting'."
Sporty's Farm L.L.C. v. Sportsman's Mkt., Inc., 202 F.3d 489, 495 (U.S.
App., 2000) (citing S. Rep. No. 106-140, at 4.). To establish a claim under the ACPA plaintiff must show that
defendants' use of "www.lewittes.com" either dilutes a famous mark or is
identical or confusingly similar to a distinctive mark, and that
defendants had a bad faith intent to profit from their use of
"wvww.lewittes.com." 15 U.S.C. § 1125(d)(1). Since the Court has already
denied defendants's motion to dismiss claims for dilution and trademark
infringement, defendants may only seek dismissal on the "bad faith"
The ACPA provides that bad faith intent to profit "shall not be found
in any case in which the court determines that the person believed and
had reasonable grounds to believe that the use of the domain name was a
fair use or otherwise lawful." 15 U.S.C. § 1125(d)(1)(B)(ii). The
statute further sets forth a non-exhaustive list of factors a district
court should consider in determinating whether the registrant had such an
intent. These include:
"(I) the trademark or other intellectual property
rights of the person, if any, in the domain name;
(II) the extent to which the domain name consists
of the legal name of the person or a name that is
otherwise commonly used to identify that person;
(III) the person's prior use, if any, of the domain
name in connection with the bona fide offering of any
goods or services;
(IV) the person's bona fide noncommercial or fair
use of the mark in a site accessible under the
(V) the person's intent to divert consumers from the
mark owner's online location to a site accessible
under the domain name that could harm the goodwill
represented by the mark, either for commercial gain or
with the intent to tarnish or disparage the mark, by
creating a likelihood of confusion as to the source,
sponsorship, affiliation, or endorsement of the site; (VI) the person's offer to transfer, sell, or
otherwise assign the domain name to the mark owner or
any third party for financial gain without having
used, or having an intent to use, the domain name in
the bona fide offering of any goods or services, or
the person's prior conduct indicating a pattern of
(VII) the person's provision of material and
misleading false contact information when applying for
the registration of the domain name, the person's
intentional failure to maintain accurate contact
information, or the person's prior conduct indicating
a pattern of such conduct;
(VIII) the person's registration or acquisition of
multiple domain names which the person knows are
identical or confusingly similar to marks of others
that are distinctive at the time of registration of
such domain names, or dilutive of famous marks of
others that are famous at the time of registration of
such domain names, without regard to the goods or
services of the parties; and
(IX) the extent to which the mark incorporated in the
person's domain name registration is or is not
distinctive and famous within the meaning of
subsection (c)(1) of section 43 [subsec. (c)(1) of
15 U.S.C. § 1125(d)(1)(B)(I)-(DC).
The ACPA, including these useful criteria, should be read in view of
the legislative purpose of the Act itself, which was to respond "to
concerns over the proliferation of cybersquatting the Internet version
of a land grab." Virtual Works, Inc. v. Volkswagen of America, Inc.,
238 F.3d 264, 267 (4th Cir. 2001). Specifically, the ACPA was designed to
cover gaps in current legislation and to focus on individuals who
"register well-known brand names as Internet domain names in order to
extract payment from the rightful owners of the marks, register
well-known marks as domain names and warehouse those marks with the hope
of selling them to the highest bidder; register well-known marks to prey on consumer
confusion by misusing the domain name to divert customers from the mark
owner's site to the cybersquatter's own site; and target distinctive
marks to defraud consumers, including to engage in counterfeiting
activities." Lucas Nursery v. Grosse, 359 F.3d 806, 809 (6th Cir., 2004)
(quoting S. Rep. No. 106-104 at 5-6). In short it is, as titled, a law
designed to combat cybersquatting.
At the time that she registered "www.lewittes.com," defendant Barbara
Blume's last name was "Lewittes." Motion at 2. There are no facts in the
Complaint that support an allegation that plaintiff has his own website.
Given this, it is no surprise that there are no facts to support any
allegation that defendants intended to divert business from any site the
plaintiff might maintain. There is no allegation in the Complaint that
defendants offered to sell or transfer "www. Lewittes.com" for financial
gain. There are no assertions in the Complaint that defendants
"warehoused" domain names. It is alleged in the Complaint that defendants
did not maintain accurate contact information on the website and with
Register.com and that plaintiff has made sufficient pleadings to maintain
his assertion that his mark is distinctive, but, on the whole, the
allegations set forth in the Complaint do not even remotely suggest that
defendants perpetrated the core activities that threaten to result in the
"paradigmatic harm that the ACPA was enacted to eradicate." Lucas Nursery
v. Grosse, 359 F.3d at 810 (citations omitted). Accordingly Plaintiff's
sixth cause of action is dismissed, without prejudice to repleading if
plaintiff can develop sufficient facts to support the claim. CONCLUSION
For the foregoing reasons, the Court makes the following Order:
1. Plaintiff's motion to file his Third Amended Complaint is granted
nunc pro tunc. Its allegations relate back to the filing of the first
complaint on January 9, 2003.
2. Plaintiff's first, second, and sixth causes of action are dismissed
3. Defendants' motions to dismiss plaintiff's third, fourth, and fifth
causes of action are denied.
4. The stay on discovery in this case imposed by this Court's Order
dated March 9, 2004 is lifted. The parties are ordered to proceed with
discovery in accordance with the Civil Case Management Plan stipulated to
by the parties and endorsed by the Court on March 22, 2004.