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Fischer v. Forrest

United States District Court, S.D. New York

March 21, 2017

JAMES H. FISCHER, Plaintiff,

          OPINION & ORDER

          PAUL A. ENGELMAYER, District Judge:

         Plaintiff James H. Fischer, initially proceeding pro se but now represented by counsel, brought these two similar actions against defendants. Fischer, an apiarist, created a popular honey harvesting aid called Fischer's Bee-Quick; he alleges in these lawsuits that defendants used Fischer's proprietary text, images, and names to sell a knock-off product. He brings claims under the Copyright Act, 17 U.S.C. § 101 et seq., the Digital Millennium Copyright Act ("DMCA"), 17 U.S.C. § 1201 et seq., and the Lanham Act, 15 U.S.C. § 1051 et seq., along with claims under New York law for violation of his right of publicity, unfair competition, unfair business practices, breach of contract, and unjust enrichment.

         Defendants Stephen T. Forrest, Jr. and Sandra F. Forrest (the "Forrests") previously moved to dismiss these cases. The Court denied those motions in their entirety in a decision issued on January 13, 2015. 14 Civ. 1304, Dkt. 45; 14 Civ. 1307, Dkt. 65 (collectively, "First MTD Decision"). On December 28, 2015, Fischer filed a Third Amended Complaint ("TAC") in each action, see 14 Civ. 1304, Dkt. 89; 14 Civ. 1307, Dkt. 111. After defendants moved to dismiss various claims in the TACs, see 14 Civ. 1304, Dkts. 102, 105, 108; 14 Civ. 1307, Dkts. 123, 126, the Court referred the motions to dismiss to Magistrate Judge Henry B. Pitman for a Report and Recommendation, having earlier referred the cases to Judge Pitman for general pretrial supervision. On December 15, 2016, these referrals were reassigned to Magistrate Judge Andrew J. Peck.

         Before the Court is Judge Peck's detailed and persuasive January 13, 2017 Report and Recommendation. 14 Civ. 1304, Dkt. 132; 14 Civ. 1307, Dkt. 147 (the “Report”). The Report recommends granting the motions to dismiss Fischer's trademark counterfeiting claim and his right of publicity claim under New York law, but otherwise to deny the motions. It also recommends dismissing some of Fischer's copyright infringement claims against defendants Shane R. Gebauer and Brushy Mountain Bee Farm, Inc. (“BMBF”), on the grounds that Fischer's copyright infringement claims against these defendants do not relate back to the filing of the original complaint, making some of them untimely. On January 27, 2017, Fischer filed objections to the Report, 14 Civ. 1304, Dkt. 137; 14 Civ. 1307, Dkt. 150, and, on February 10, 2017, defendants filed responses to these objections, 14 Civ. 1304, Dkt. 141; 14 Civ. 1307, Dkt. 151.

         For the following reasons, the Court adopts the Report in its entirety and therefore grants in part and denies in part defendants' motions to dismiss.

         I. Standard of Review

         After a magistrate judge has issued a Report and Recommendation, a district court may “accept, reject, or modify, in whole or in part, the findings or recommendations made by the magistrate judge.” 28 U.S.C. § 636(b)(1). To accept the portions of a report to which no timely objection has been made, “a district court need only satisfy itself that there is no clear error on the face of the record.” Acevedo v. Lempke, No. 10 Civ. 5285 (PAE) (HBP), 2014 WL 4651904, at *3 (S.D.N.Y. Sept. 17, 2014) (quoting King v. Greiner, No. 02 Civ. 5810 (DLC), 2009 WL 2001439, at *4 (S.D.N.Y. July 8, 2009)). When a timely and specific objection has been made, the court is obligated to review the contested issues de novo. See id.; Fed.R.Civ.P. 72(b)(3); Hynes v. Squillace, 143 F.3d 653, 656 (2d Cir. 1998). But when the objections simply reiterate previous arguments or make only conclusory statements, the court should review the Report and Recommendation for clear error. Dickerson v. Conway, No. 08 Civ. 8024 (PAE) (FM), 2013 WL 3199094, at *1 (S.D.N.Y. June 25, 2013); see also Kirk v. Burge, 646 F.Supp.2d 534, 538 (S.D.N.Y. 2009) (collecting cases). This is so even in the case of a pro se plaintiff. Cf. Molefe v. KLM Royal Dutch Airlines, 602 F.Supp.2d 485, 487 (S.D.N.Y. 2009). Further, “[c]ourts generally do not consider new evidence raised in objections to a magistrate judge's report and recommendation.” Tavares v. City of New York, No. 08 Civ. 3782 (PAE), 2011 WL 5877548, at *2 (S.D.N.Y. Nov. 23, 2011) (citation omitted); see also Pan Am. World Airways v. Int'l Bhd. Of Teamsters, 894 F.2d 36, 40 n.3 (2d Cir. 1990) (“A district judge is not required to hear or rehear any witness, and Pan Am had no right to present further testimony when it offered no justification for not offering the testimony at the hearing before the magistrate.”).

         II. Discussion

         The Court assumes familiarity with the underlying factual allegations and claims, and incorporates by reference both the Report and the Court's First MTD Decision, in which the Court denied defendants' earlier motions to dismiss. Whether reviewed de novo or for clear error, Judge Peck's Report is thorough and persuasive, and the Court adopts it in full.

         Fischer makes three objections to the Report. The Court rejects each after de novo review.

         A. Relation Back of Copyright Claims Against BMBF and Gebauer

         First, Fischer argues the Report erred by determining that the copyright claims against BMBF and Gebauer do not relate back to Fischer's original complaint, making some claims- those brought beyond the three-year statute of limitations for copyright actions-untimely. The statute of limitations for copyright claims is three years. 17 U.S.C. § 507(b). Judge Peck held that these claims are untimely unless they relate back to the filing of Fischer's original complaint. He explained that the TAC alleges the copyright infringement occurred in March 2011, when BMBF allegedly published Fischer's copyrighted information on its website and in its catalog, but that BMBF and Gebauer, BMBF's general manager, were added as defendants in 2015, more than three years later. Therefore, Judge Peck concluded, as to Gebauer, who was added on February 3, 2015, 14 Civ. 1304, Dkt. 50; 14 Civ. 1307, Dkt. 70, any copyright claim that accrued before February 3, 2012 was untimely absent relation back; and as to BMBF, which was added on December 28, 2015, 14 Civ. 1304, Dkt. 89; 14 Civ. 1307, Dkt. 111, any copyright claim that accrued before December 28, 2012 was similarly untimely.

         In determining that the copyright infringement claims against Gebauer and BMBF do not relate back to the filing of Fischer's original complaints, Judge Peck found that when Fischer originally did not sue BMBF or Gebauer, Fischer had not made a “mistake concerning the proper party's identity, ” within the meaning of Federal Rule of Civil Procedure 15(c). Under that rule, an amended pleading relates back to the date of the original pleading when “the party to be brought in by amendment: (i) received such notice of the action that it will not be prejudiced in defending on the merits; and (ii) knew or should have known that the action would have been brought against it, but for a mistake concerning the proper party's identity.” Fed.R.Civ.P. 15(c)(1)(C). This rule “asks what the prospective defendant knew or should have known during the Rule 4(m) period, not what the plaintiff knew or should have known at the time of filing her original complaint.” Krupski v. Costa Crociere S.p.A., 560 U.S. 538, 548 (2010) (emphasis in original). The information a plaintiff had in his or her possession is relevant only when it bears on the defendant's awareness of whether the plaintiff made a mistake regarding the proper party's identity; the plaintiff's knowledge of a party's existence does not rule out a mistake if the plaintiff sued a different party based on a misunderstanding of the respective parties' roles. Id. at 549. But, “[w]hen the original complaint and the plaintiff's conduct compel the conclusion that the failure to name the prospective defendant in the original complaint or the amended complaint was the result of a fully informed decision as opposed to a mistake concerning the proper defendant's identity, the requirements of Rule 15(c)(1)(C)(ii) are not met.” Id. at 552.

         Judge Peck correctly determined that, when he originally brought these lawsuits, Fischer had not made a mistake about the roles or potential liability of BMBF or Gebauer but instead had deliberately chosen not to sue either of them. As to BMBF, Judge Peck noted that Fischer's amended complaint in 14 Civ. 1307 explicitly explained his decision not to sue. In a section of the amended complaint explaining why the Forrests (BMBF's alleged corporate officers) were personally liable, Fischer stated there was no need to sue BMBF for the Forrests to be personally liable. See Amended Complaint ¶¶ 14-15, 14 Civ. 1307, Dkt. 50 (alleging that “‘[p]iercing the corporate veil' is not a prerequisite to imposing personal liability upon corporate officer-owners for infringement of intellectual property”). Fischer added that “[a] judgment against the corporate entity would endanger the income of employees who had no part in the illegal acts of Defendants, or had to obey Defendants' orders. Defendants have extracted significant personal wealth from the business, and their extensive assets include shares in the business that can be sold to satisfy a judgment, without putting any employees or employee families at risk.” Id. ΒΆ 14 n.4. In denying the Forrests' ...

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