United States District Court, S.D. New York
MEMORANDUM AND ORDER
P. EVIN CASTEL, District Judge.
Plaintiff Newlight Eyewear, LLC ("Newlight") creates and distributes hand-painted eyeglass frames. It seeks declaratory judgment that it has not infringed the copyrights of defendant Art-Optic, Ltd. ("Art-Optic"), and that Art-Optic's copyrights are not valid or enforceable. Newlight also brings a claim under New York law, asserting that Art-Optic tortiously interfered in its contractual relations with customers.
Defendant Art-Optic moves to dismiss plaintiff's Amended Complaint (the "Complaint") pursuant to Rule 12(b)(6), Fed.R.Civ.P. (Docket # 14.) For the reasons explained, the Complaint fails to set forth allegations that plausibly state a claim for declaratory relief concerning Art-Optic's copyrights. The Court declines to exercise supplemental jurisdiction as to plaintiff's tortious interference claim. The defendant's motion is therefore granted, and the Complaint is dismissed.
In reviewing the Complaint, the Court accepts all non-conclusory factual allegations as true, and draws every reasonable inference in favor of the plaintiff as the non-movant. See In re Elevator Antitrust Litig. , 502 F.3d 47, 50 (2d Cir. 2007) (per curiam).
Plaintiff Newlight describes itself as "a wholesale distributor of original hand painted eyeglass frames." (Compl't ¶ 1.) Defendant Art-Optic is a company located in Israel, and, like plaintiff, sells hand-painted eyeglass frames. (Compl't ¶ 2.) Plaintiff sells its frames under the brand name Matisse,  and defendant's frames are sold under the brand name Ronit Furst. (Compl't ¶¶ 1-2.) Both parties sell and distribute products in the United States, where they are direct competitors. (Compl't ¶ 3.) Federal subject matter jurisdiction is premised solely on plaintiff's claims for declaratory relief under the Copyright Act and the Declaratory Judgment Act, (Compl't 4-5.) Plaintiff also purports to invoke subject matter jurisdiction pursuant to the Lanham Act, even though no Lanham Act claim is raised. (Compl't ¶ 6.)
According to the Complaint, in 2004, the principals of Newlight entered into an agreement with Art-Optic to sell Art-Optic's Ronit Furst brand of eyeglass frames in the United States. (Compl't 9.) That agreement was terminated in 2006. (Compl't ¶ 10.) In 2008, defendant Art-Optic commenced an action in this District, alleging that Newlight and its principals infringed the copyrights of Art-Optic's designs. (Compl't ¶ 11; Art-Optic Ltd. v. Samuel Tomashover, et al., 08 Civ. 327 (MGC).) Its copyright allegations centered on Newlight's alleged counterfeiting of original Art-Optic designs, not infringement by the Matisse product line. (08 Civ. 327, Docket # 1, ¶¶ 24-31, 38-44.) Art-Optic voluntarily dismissed the action without prejudice. (Compl't ¶ 14.) According to the Complaint in this action, Art-Optic dismissed the case after Newlight established that it merely sold Ronit Furst frames that remained in its inventory after the distribution agreement expired. (Compl't ¶ 13.)
In the current complaint, Newlight asserts that Art-Optic "continues to harass" Newlight and its customers with spurious copyright infringement accusations. (Compl't ¶ 17.) It alleges upon information and belief that Art-Optic and its agents are telling Newlight customers that Newlight's Matisse-brand frames are infringements, and that these customers therefore should not do business with Newlight. (Compl't ¶¶ 18-19.) According to Newlight, Art-Optic is making these infringement accusations despite knowing that they are false. (Compl't ¶ 20.)
Count I of the Complaint seeks a declaration that the eyeglass frames of plaintiff Newlight "do not infringe upon any valid copyright rights of the Defendant." (Compl't ¶ 24.) Count II seeks a declaration that defendant Art-Optic's "purported copyright rights, if any, are invalid and/or unenforceable under United States law." (Compl't ¶ 30.) Count III asserts that Art-Optic tortiously interfered with Newlight's contracts with its customers by discouraging them from doing business with Newlight. (Compl't ¶¶ 34-36.)
Defendant Art-Optic moves to dismiss the Complaint for failure to state a claim pursuant to Rule 12(6)(6). In addition to its contention that the plaintiff Newlight does not plausibly allege claims for declaratory judgment and tortious interference, it also argues that the Complaint should be dismissed pursuant to Rule 12(b)(5), Fed. R. Civ. P., because plaintiff did not successfully effectuate service of process in Israel pursuant to Article 10 of the Hague Convention. Plaintiff also argues that this action is barred by the res judicata effect of an action it brought against Newlight in Israel, wherein a Tel Aviv court found Newlight liable for tortiously "passing off" Ronit Furst designs. Because this Court concludes that the Complaint does not plausibly allege claims for declaratory judgment, it does not reach Art-Optic's alternative grounds for dismissal.
RULE 12(b)(6) STANDARD
To survive a motion to dismiss under Rule 12(b)(6), "a complaint must contain sufficient factual matter, accepted as true, to state a claim to relief that is plausible on its face.' Ashcroft v. Iqbal , 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly , 550 U.S. 544, 570 (2007)). "[L]abels and conclusions' or a formulaic recitation of the elements of a cause of action will not do.'" Id . (quoting Twombly , 550 U.S. at 555). A plaintiff must plead "factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Id . Hence, although "detailed factual allegations' are not necessary in order to state a claim, id. (quoting Twombly , 550 U.S. at 555), in order to satisfy Rule 8, Fed. R. Civ. P., a complaint must still set forth "sufficient information to permit the defendant to have a fair understanding of what the plaintiff is complaining about and to know whether there is a legal basis for recovery." Kittay v. Kornstein , 230 F.3d 531, 541 (2d Cir. 2000).
I. The Complaint Sets Forth No Facts that Support a Plausible Claim ...