United States District Court, E.D. New York
June 22, 2004.
HOME & NATURE INC., Plaintiff,
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.
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
statement before interposing a responsive pleading.
Rule 12(e) is designed to prevent unintelligibility in
complaints in order for a party to interpose a responsive
pleading. See id. Under Rule 8(a), a plaintiff is required only
to plead "a short and plain statement of the claim," Fed.R. Civ.
P. 8(a), so as to provide a defendant with fair notice of the
plaintiff's claim and the grounds upon which it rests, Conley v.
Gibson, 355 U.S. 41, 47, 2 L.Ed.2d 80, 78 S.Ct. 99 (1957).
Thus, a Rule 12(e) motion should be denied if a complaint
comports with the liberal pleading requirements of Rule 8(a).
See Vapac, 2000 U.S. Dist. LEXIS 10027, at *17 (citing Tom
Kelley Studios Inc. v. Int'l Collectors Soc'y Inc., No. 97 Civ.
0056, 1997 U.S. Dist. LEXIS 14571, at *2 (S.D.N.Y. Sept. 25,
B. Patent Infringement
To state a claim for patent infringement, a plaintiff need only
plead facts sufficient to place the defendant on notice of the
asserted claim and to ensure that the defendant has adequate
knowledge of the facts alleged in order to reasonably form a
response. See Asip, 2004 U.S. Dist. LEXIS 2350, at *8 (quoting
Phonometrics, Inc. v. Hospitality Franchise Sys., Inc.,
203 F.3d 790, 794 (Fed. Cir. 2000)). A complaint for patent
infringement satisfies the above requirements, as well as the
limited criteria of Rule 8(a), when the plaintiff: (1) alleges
ownership of the asserted patent, (2) names each individual
defendant, (3) cites the patent that is allegedly infringed, (4)
describes the manner in which the defendants allegedly infringe,
and (5) identifies the specific sections of the patent law
invoked. See id. (internal quotations and citations omitted).
As to the first element, the plaintiff states that it is the
owner of eight United States Patents issued for its designs and
two United States Patents issued for its constructions. The
plaintiff further lists the patent numbers issued by the United
States for its patents and annexes to the complaint the cover
pages of the United States Patents. Thus, the plaintiff
sufficiently pleads ownership of the asserted patents and
satisfies the first element. The plaintiff also effectively
pleads the second element by identifying the individual defendant
in the complaint.
The third element, "the patent that is allegedly infringed,"
may be shown by citing "the patents by number." digiGAN v.
iVALIDATE, Inc., No. 02 Civ. 420, 2004 U.S. Dist. LEXIS 1324, at
*12 (S.D.N.Y. Feb. 3, 2004). Here, the plaintiff specifically
lists the patent numbers issued by the United States for each of
its ten patents and thereby satisfies the third element. With
regard to the fourth element, the plaintiff states that the
defendant infringes on its patents by "importing, causing to be
manufactured, selling and/or offering for sale unauthorized
tattoo-like jewelry items." This description adequately explains
the manner in which the defendant allegedly infringes.
As to the fifth and final element, the plaintiff sufficiently
identifies the specific section of the patent law invoked as
35 U.S.C. § 271. Accordingly, the plaintiff has sufficiently plead
the five required elements of patent infringement in compliance
with Rule 8. Thus, a more definite statement of the plaintiff's
patent infringement claim is not required.
C. Copyright Infringement
The Court next examines whether the plaintiff has plead the
elements of copyright infringement in accordance with Rule 8(a).
A complaint alleging copyright infringement sufficiently complies
with Rule 8(a) when the plaintiff asserts: "`(1) which specific
original works form the subject of the copyright claim; (2) that
the plaintiff owns the copyrights in those works; (3) that the
copyrights have been registered in accordance with the statute;
and (4) by what acts [and] during what time the defendant
infringed the copyright.'" Krasselt v. Joseph E. Seagram & Sons,
Inc., No. 01 Civ. 2821, 2002 U.S. Dist. LEXIS 16136, at *3-4
(S.D.N.Y. Aug. 28, 2002) (quoting Plunket v. Doyle, 99 Civ.
11006, 2001 U.S. Dist. LEXIS 2001, at *4 (S.D.N.Y. Feb. 22,
2001)), see also Mahnke v. Munchkin Prods. Inc., No. 99 Civ.
4684, 2001 U.S. Dist. LEXIS 7558, at *6 (S.D.N.Y. Mar. 29,
To plead the first element, the plaintiff is not required to
assert exactly which individual elements of the copyrighted works
were infringed. See id. at *5 (citing Tim Pan Apple v. Miller
Brewing Co., 737 F. Supp. 826, 828 (S.D.N.Y. 1990) (denying
motion to dismiss for where complaint alleged that defendants
copied "one or more" of plaintiff's copyrighted works; "the
precise meaning of `one or more' may be explored on discovery").
By listing the copyright registration numbers issued by the
United States that correspond to each of its copyrighted jewelry
designs, annexing copies of the United States Certificates of
Copyright Registration, and stating that the defendant has
infringed upon one or more of these copyrights, the plaintiff
satisfies the first element.
Also, the plaintiff satisfies the second element by asserting
ownership of five copyrights in the complaint, listing the
copyright registration numbers, and annexing copies of the five
copyright registrations. In addition, the third element is
satisfied because the plaintiff states that it has "duly and
legally complied in all respect with the provisions of the
Copyright Laws of the United States and [has] secured the
exclusive rights and privileges in and to tattoo-like designs
granted pursuant to the Copyright Laws." Moreover, the annexed
copies of the plaintiff's Certificates of Copyright Registration
each include a paragraph stating that the certificate is "issued
under the seal of the Copyright Office in accordance with title
17, United States Code."
Further, the fourth element is satisfied because the plaintiff
states that the defendant has, since December 2000, infringed and
continues to infringe "one or more" of its copyrights by
"importing, causing to be manufactured, selling and/or offering
for sale unauthorized tattoo-like jewelry items." This statement
adequately puts the defendant on notice as to which acts form the
basis of the plaintiff's claim and during which times the acts
have allegedly taken place. Thus, the Court finds the plaintiff
has plead each of the elements of copyright infringement in
accordance with Rule 8(a). Therefore, a more definite statement
with regard to the copyright infringement claim is unnecessary.
Accordingly, because the plaintiff has properly plead both the
elements of patent infringement and the elements of copyright
infringement, the defendant's motion for a more definite
statement pursuant to Rule 12(e) is denied.
In sum, it appears that, based on a review of the defendant's
papers, the primary purpose of the defendant's motion is to
obtain more detailed copies of the plaintiff's patents and
copyrights so as to scrutinize the appearance and construction of
the plaintiff's products as well as to secure additional evidence
of the plaintiff's ownership of the copyrights. The Court notes
that Rule 12(e) is not the proper vehicle to resolve problems of
uncertainty arising due to want of specificity or lack of detail.
See Asip, 2004 U.S. Dist. LEXIS 2350, at *7. Such problems are
appropriately resolved by discovery, not by an order. See id.
Based on the foregoing, it is hereby
ORDERED, that the defendant's motion for a more definite
statement of the complaint pursuant to Rule 12(e) is DENIED.
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