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.
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.
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