United States District Court, S.D. New York
Bonnie Jarret, Esq., David Draper, Esq., KIRKLAND & ELLIS LLP, New York, NY, Attorneys for Plaintiff.
JESSICA LOPEZ, New York, NY, Pro Se
ROBERT W. SWEET, District Judge.
The defendant, pro se, Jessica Lopez ("Lopez" or the "Defendant") has moved (1) to dismiss the complaint of plaintiff Rafael Serrano ("Serrano" or the "Plaintiff"), (2) for the appointment of counsel, and (3) for injunctive relief. Serrano has moved to dismiss the counterclaim of Lopez alleging slander.
Based on the conclusions set forth below, the motions of Lopez to dismiss the complaint, for counsel, and for injunctive relief are each denied, and the motion of Serrano to dismiss the slander counterclaim is granted with leave granted to Lopez to replead.
On January 29, 2014, Serrano filed his complaint alleging Defendant's infringement of his intellectual property rights, fraudulent procurement of a federal trademark registration, and misappropriation of his identity and persona. On February 20, 2014, Lopez filed a counterclaim seeking to assert a state law claim for slander and a motion to dismiss Serrano's complaint. Lopez's pleadings also indicated that she sought injunctive relief. On March 17, 2014, Serrano moved to dismiss Lopez's slander counterclaim. All motions were marked fully submitted on April 16, 2014.
1. Plaintiff's Conception and Use of the AMORETTO Mark
Plaintiff's complaint alleges that in or about February of 1985, Serrano conceived of a music performance concept which consisted of group performance combining instrumental and vocal aspects resulting in a musical blend which incorporated versified, traditional elements of Latin music, such as Latin beats and the distinctive clave rhythm, with computerized music sounds. (Compl. ¶ 14.) Visually and in live performance, the music performance concept included an element of dance and physical movement, primarily by two or three female performers who would also provide backup vocals, and further included attire derived from Latin American and Spanish origins of fashion, including black and/or white color-schemed garments and Bolero-styled hats. (Compl. ¶ 15.)The term "AMORETTO" was used by Serrano to identify and promote the distribution and performance of recorded and live music associated with this music performance concept. (Compl. ¶ 13.)
Serrano first made commercial use of the AMORETTO mark when he produced the recorded music album Cláve Rocks on a microgroove vinyl record ("LP record") medium and included three versions of the "Cláve Rocks" song-the Club Vocal, Radio Edit, and Dub Rocks versions. (Compl. ¶ 16.) The production and recording of the AMORETTO Cláve Rocks album was proposed, organized, controlled, and overseen by Serrano. (Compl. ¶ 17.) Serrano exercised creative control and direction over the production of the album and made key personnel decisions surrounding the recording and production of the album, including through composing the various instrumental and vocal roles, and then selecting the specific individuals who would fulfill each role. (Compl. ¶ 18.)
The AMORETTO Cláve Rocks album was recorded and produced on an LP record between February of 1985 and February of 1986 and was sold and distributed beginning in March or April of 1986 with the help of record company PKO Records ("PKO"). (Compl. ¶ 19.) The AMORETTO mark was printed on the labels of the LP record and the record was distributed to a variety of retail outlets for sale to the public and was played on New York-based radio stations broadcasting in the tri-state metropolitan area. (Compl. ¶¶ 19-21.) When the "Cláve Rocks" song was performed on the radio, disc jockeys simultaneously identified the song with its title (i.e., "Cláve Rocks") and the associated AMORETTO mark. (Compl. ¶ 22.)
In July of 1986, Serrano and PKO created a design for an outer cardboard record jacket to be used for future sales of the Cláve Rocks LP record previously released in March or April of 1986. (Compl. ¶ 23.) The face of the jacket for the AMORETTO Cláve Rocks album prominently featured the album title, Cláve Rocks, alongside the AMORETTO mark. (Compl. ¶ 24.) Serrano and PKO enlisted three women, including Defendant, to pose with Serrano to create the photograph for the AMORETTO Cláve Rocks album cover. (Compl. ¶ 26.) The design for the face of the jacket for the AMORETTO Cláve Rocks album was subject to Serrano's final approval; Serrano alleges Lopez was not involved in the creation, recording, production, or release of the Cláve Rocks album. (Compl. ¶¶ 25, 27.)
In September or October of 1986, Serrano began public performance of the "Cláve Rocks" song using the AMORETTO mark in various locations in New York City and New Jersey. (Compl. ¶¶ 28-29.) Serrano made the booking arrangements and exercised control over the logistics of these early live performance appearances. (Compl. ¶ 30.) During the performances, Serrano danced and played synthesizer and keyboard instruments, while a pre-recorded overlay of the vocal and instrumental tracks from the AMORETTO Cláve Rocks album played. (Compl. ¶ 28.) Three women danced and provided backup vocal accompaniment, ...