United States District Court, S.D. New York
JAMES H. FISCHER, Plaintiff,
STEPHEN T. FORREST, JR., SANDRA F. FORREST, SHANE R. GEBAUER, and BRUSHY MOUNTAIN BEE FARM, INC., Defendants.
OPINION & ORDER
A. ENGELMAYER, District Judge:
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
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.
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.
following reasons, the Court adopts the Report in its
entirety and therefore grants in part and denies in part
defendants' motions to dismiss.
Standard of Review
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.”).
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.
makes three objections to the Report. The Court rejects each
after de novo review.
Relation Back of Copyright Claims Against BMBF and
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
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.
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.
¶ 14 n.4. In denying the Forrests' ...