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HOME & NATURE INC. v. SHERMAN SPECIALTY COMPANY

June 22, 2004.

HOME & NATURE INC., Plaintiff,
v.
SHERMAN SPECIALTY COMPANY, INC., Defendant.



The opinion of the court was delivered by: ARTHUR SPATT, District Judge

MEMORANDUM OF DECISION AND ORDER

Presently before the Court is a motion by the defendant Sherman Specialty Company, Inc. ("Sherman" or the "defendant") pursuant to Rule 12(e) of the Federal Rules of Civil Procedure (" Fed.R.Civ. P.") for a more definite statement of the complaint.

I. BACKGROUND

  On January 9, 2004, Home & Nature Inc. ("H & N" or the "plaintiff") filed an eight-page complaint, with eighteen pages annexed, against the defendant sounding in patent and copyright infringement. In particular, the plaintiff asserts that the defendant infringed on "one or more claims of Plaintiff's design and utility patents" under the provisions of 35 U.S.C. § 271 by "importing, causing to be manufactured, selling and/or offering for sale unauthorized tattoo-like jewelry items," and that the defendant infringed on "one or more of Plaintiff's copyrights" under the provisions of 17 U.S.C. § 106 and 501 by "importing, causing to manufactured, selling and/or offering for sale unauthorized tattoo-like jewelry items."

  The plaintiff is the owner of intellectual property rights to a series of designs and constructions for increasingly popular "tattoo-like" jewelry chains. The plaintiff owns eight patents regarding its designs and two patents regarding its constructions. The plaintiff includes a list of the eight patent numbers in the complaint and also annexes copies of the cover pages of each of its patents in Exhibits A and B. Each cover page includes, but is not limited to, the patent number, date of patent, names of inventor and assignee, term of years of the patent, a description of the patented product or construction, and a drawing of the product or construction.

  By assignment, the plaintiff is also the owner of five copyrights for the jewelry designs, and the complaint includes a list of the five copyright registration numbers issued by the United States. The plaintiff annexes copies of its five United States Certificates of Copyright Registration in Exhibit C. Each copy includes, but is not limited to, the title of the work; the nature of the work; the names of the author and copyright claimants; the nature of authorship; the year in which creation of the work was completed; the date of effective registration; and the official seal of the copyright office of the Library of Congress. The plaintiff also states that each patent and copyright is valid and legally issued in compliance with the United States Patent and Copyright Laws.

  According to the plaintiff, on several occasions, the defendant was placed on notice of, and charged with, violation of its intellectual property rights. Pursuant to a December 2000 Release, the defendant agreed not to interfere with plaintiff's intellectual property rights or to obtain any further tattoo-like jewelry items covered by the plaintiff's rights. The defendant further agreed that, in the absence of a written license agreement, any further activities with respect to goods falling within the scope of the plaintiff's intellectual property rights would be deemed acts of intentional, willful infringement.

  However, the plaintiff asserts that, despite these representations, the defendant has, since December 2000, consistently infringed and continues to infringe upon the plaintiff's patents and/or copyrights by manufacturing or having manufactured for it, importing, promoting, displaying, offering for sale and selling tattoo-like jewelry items having substantially the same appearance and construction as jewelry chains covered by one or more of the plaintiff's patents and/or copyrights. The plaintiff asserts that the defendant's products were not obtained from the plaintiff or from any authorized licensee of the plaintiff. The plaintiff annexes a representative sample of the defendant's products in Exhibit D.

  The defendant now moves for a more definite statement pursuant to Rule 12(e). The defendant complains that, because the plaintiff refers to and annexes only the cover pages of its construction and design patents in its complaint, the defendant is unable to properly determine whether the protested product infringed on the plaintiff's patents. Therefore, the defendant requests full copies of the plaintiff's utility patents and full copies of the design patents, so that it may view the "figures" alluded to on the cover sheets of the design patents and thereby ascertain whether its product matches such figures. In addition, the defendant seeks copies of the applications for each Certificate of Copyright Registration, photographs or other appropriate depictions of the monetary deposits received for each listed certificate, and photographs or other appropriate depictions of the jewelry designs listed on each certificate.

  II. DISCUSSION

  A. Standard of Review Pursuant to Rule 12(e)

  The parties dispute the standard of review under Rule 12(e). The plaintiff contends that a motion for a more definite statement is available only if "a pleading is so vague or ambiguous that a party cannot reasonably be required to frame a responsive pleading" and that a 12(e) motion does not permit the moving party to demand a more comprehensive complaint when the pleadings are otherwise in compliance with Rule 8. In this regard, the plaintiff asserts that, because the defendant does not contend that the complaint is so unintelligible that it is unable to reasonably form a response and does not include any assertions that the complaint failed to comply with Rule 8, the defendant's Rule 12(e) motion must be denied as frivolous. In addition, the plaintiff asserts that the liberal rules of discovery provide the defendant with a more appropriate avenue for securing copies of the plaintiff's patents and depictions of its copyrighted works. The defendant counters that it is "faulty and not responsive" to argue compliance with Rule 12(e) by demonstrating compliance with Rule 8(a). In the Court's view, the defendant misconstrues the purpose of Rule 12(e).

  An underlying aim of the Federal Rules is "`to discourage motions to compel more definite complaints and to encourage the use of discovery procedures to apprise the parties of the basis for the claims made in the pleadings.'" Asip v. Nielsen Media Research, Inc., No. 03 Civ. 5866, 2004 U.S. Dist. LEXIS 2350, at *7 (S.D.N.Y. Feb. 17, 2004) (quoting Markovic v. New York City Sch. Constr. Auth., No. 99 Civ. 10339, 2000 U.S. Dist. LEXIS 13130, at *3 (S.D.N.Y. Sept. 13, 2000)); Vapac Music Publ'g, Inc., v. Tuff `n' Rumble Mgmt, No. 99 Civ. 10656, 2000 U.S. Dist. LEXIS 10027, at *16 (S.D.N.Y July 11, 2000).

  Rule 12(e) reads in pertinent part:
[i]f a pleading to which a responsive pleading is permitted is so vague or ambiguous that a party cannot reasonably be required to frame a responsive pleading, the party may move for a more definite ...

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