intellectual property law violated by linking?
Knight-McConnell v. Cummins
States District Court, Southern District of New York
Plaintiff fails to state a
claim for false designation of origin under the Lanham Act, 15 USC
§1125(a)(1), based on allegations that defendant, who operates a site highly
critical of plaintiff, has linked to plaintiff’s web site without
plaintiff’s permission, has used plaintiff’s name in the post-domain path of
the URLs for several web pages, and has posted links on Internet chat forums
and discussion boards directing users to visit these pages. To state a claim
for false designation of origin, a plaintiff must show that she has a valid
and protectable mark and that defendant’s conduct is likely to cause
confusion concerning the source or sponsorship of the goods or services in
question. Even if plaintiff can show that she has a valid and protectable
mark in her name, plaintiff fails to allege that defendant has engaged in
any conduct that is likely to cause confusion as to the origin of
defendant’s web site. The mere appearance on a web site of a hyperlink to
another site will not lead a webuser to conclude that the owner of the site
she is visiting is associated with the owner of the linked site. Nor does
defendant’s use of plaintiff’s name in the post-domain path of the URLs and
the placement of those URLs on chat forums and search engines give rise to
any source confusion….
IP 1.1, IP
1.10 — No claim under Berne Convention absent copyright registration.
Plaintiff’s failure to allege
that she has any registered copyrights precludes her from raising a
copyright claim under the Berne Convention. A plaintiff may not enforce the
provisions of the Berne Convention by stating a cause of action pursuant to
the convention itself, and a claim for copyright infringement may not be
pursued unless the plaintiff has registered a copyright. Absent any
allegation of such a registration, plaintiff’s cause of action must be
FS 3, IC
10.6.2, JU 4.2, PR 1 — Federal court may exercise diversity jurisdiction
over tortuous interference, but not defamation or privacy claims.
While New York law precludes a
federal court from exercising diversity jurisdiction over plaintiff’s state
law defamation and privacy claims, the court may have continued jurisdiction
over the case if plaintiff files an amended complaint that states a valid
claim for tortuous interference. Plaintiff, who operates a web site covering
various stocks and investment opportunities, alleged that defendant has
posted, on defendant’s own web site and on various Internet discussion
sites, defamatory statements about plaintiff intended to discredit her.
Plaintiff has further alleged that defendant has contacted plaintiff’s
“clients,” and that, as a result, one of the companies plaintiff “covers”
for her investor site had asked her to discontinue coverage out of fear that
investors would believe defendant’s statements and sell its stock. Plaintiff
has failed, however, to allege specific contractual relationships, either
present or future, that have been terminated or altered as a result of
defendant’s conduct. Inasmuch as plaintiff is proceeding pro se, she is
granted to file an amended complaint that should state with specificity what
contractual relationships, if any, were affected by defendant’s conduct…
Plaintiff pro se Kathy
Knight-McConnell has brought this suit against defendant pro se Mary
Cummins, alleging, inter alia, defamation and privacy violations.1
Now pending is defendant’s motion to dismiss on the following grounds: 1)
lack of personal jurisdiction; 2) improper venue; and 3) failure to state a
claim. For the reasons set forth below, defendant’s motion is granted.
However, as set out infra, plaintiff is granted limited leave to replead.
Although plaintiff’s complaint
lacks a clear description of her work, we gather from her exhibits that she
runs a website, investortoinvestor.com, which is a forum for investor
discussions and publishes a newsletter on various stocks. Pl.’s Ex. A.
Plaintiff’s site explicitly states that plaintiff is not a licensed analyst,
and that the newsletter is offered as “research material” and not as
investment advice. Id.
For reasons that are not at
all clear, defendant, a day trader who apparently has never met plaintiff,
has nonetheless devoted a remarkable amount of time and energy to writing
about her on the Internet. On various website discussion groups, as well as
on her own website (which she has linked to plaintiff’s site without
permission), defendant has posted numerous messages describing plaintiff as
a securities fraud “criminal,” “insane,” “paid to lie to investors,” a
cheat, a thief, Pl.’s Ex. J, and “obese,”
Id. Ex. F. According to the
complaint, defendant has also repeatedly reported plaintiff to the SEC and
written to various “clients”2 and/or associates of plaintiff’s, accusing
plaintiff of fraud. After sending a cease and desist letter to defendant on
September 10, 2002, plaintiff filed this action.
In considering a motion to
dismiss pursuant to Fed. R. Civ. P. 12(b) (6), we accept as true all
material factual allegations in the complaint,
Atlantic Mutual Ins.
Co. v. Balfour Maclaine Int’l, Ltd.,
968 F2d 196, 198 (2d Cir 1992), and may grant the motion only where “it
appears beyond doubt that the plaintiff can prove no set of facts in support
of [its] claim which would entitle [it] to relief.”
Still v. DeBuono, 101 F3d 888,
891 (2d Cir 1996); see Conley v. Gibson,
355 US 41, 48, 2 L Ed 2d 80, 78 S Ct 99 (1957). At the same time, we are not
required to accept any legal conclusions contained in the complaint.
Papasan v. Allain, 478 US 265,
286, 92 L Ed 2d 209, 106 S Ct 2932 (1986);
Joint Council v.
L. & W. R.R.,
157 F2d 417, 420 (2d Cir 1946).
In addition to the facts set
forth in the complaint, we may also consider documents attached thereto and
by reference therein,
Automated Salvage Transp., Inc. v.
Wheelabrator Envtl. Sys., Inc., 155 F3d
59, 67 (2d Cir 1998), as well as matters of public record,
Pani v. Empire Blue Cross Blue Shield, 152 F3d 67, 75
(2d Cir 1998), cert. denied,
525 US 1103, 142 L Ed 2d 770
Because the complaint includes
multiple federal and state
causes of action, our resolution of the threshold
issues of venue and personal jurisdiction depends, in part, on
our determination of the validity of these causes
of action. Thus, the threshold issues will be discussed in the
context of the various claims.
Plaintiff’s Federal Claims
Plaintiff’s securities law claim
Plaintiff alleges that
defendant has intentionally maligned certain stocks promoted by plaintiff to
drive down their price in violation of 15 USC §§ 78i , 78j, 78t.3
Compl. ¶11. Regardless of the
merit of these allegations, plaintiff lacks standing to sue under these
provisions because she does not allege that she purchased or sold stock in
reliance on any representation or statement by defendant, even assuming the
existence of a duty on defendant’s part.
Cohen v. Citibank, N.A., 954 F
Supp 621, 629 (SD NY 1996) (“[A] private right of action under Section 9 [15
USC §78i] accrues only to purchasers or sellers of securities at prices
affected by acts or transactions in violation of section 9.”);
Public Service Employees Union Pension
Trust Fund v. Nortel Networks
Corp., 369 F3d 27, 31-32 (2d Cir
2004) (stating identical rule
with respect to §78j).4 Therefore, plaintiff’s securities claims are
Plaintiff further claims that
defendant is violating federal intellectual property law by linking her
website to the plaintiff’s website without permission or authorization,
using the plaintiff’s name in the post-domain path of the URLs for seven of
her web-pages (and submitting these URL’s to search engines), and posting
links on Internet chat forums and discussion boards directing users to visit
these web-pages. Plaintiff contends that these acts violate the “false
designation of origin” provision of the Lanham Act, 15 USC §1125(a)(1), and
the Berne Convention. This contention is incorrect.
Section 43(a) of the Lanham
Act prohibits the commercial use of any “word, term, name, symbol, device,
or any combination thereof, or any false designation of origin, false or
misleading description of fact, or false or misleading representation of
fact,” which would either (1) cause confusion about the origin, affiliation,
connection, association, or sponsorship of a product or service (“false
designation of origin”) or (2) constitute a misleading representation about
the nature, qualities, or geographic origin of the product or service being
offered (“false advertising”). See
15 USC §1125(a)(1)(A); 15 USC §1125(a)(1)(B).
In order to succeed on a false
designation of origin claim, a plaintiff generally must show that she has a
valid and protectable mark and that the defendant’s conduct is likely to
cause confusion concerning the source or sponsorship of the goods or
services in question. See
Register.com, Inc. v. Verio, Inc.,
126 F Supp2d 238 [6
ILR (P&F) 743] (SD NY 2000)
aff’d, 356 F3d 393
ILR (P&F) 277] (2d Cir 2004);
Co. v. Gillette Co., 984 F2d
567, 570-71 (2d Cir 1993) (noting that it is well-settled that a plaintiff
must demonstrate likelihood of confusion in order to succeed on the merits
of a false designation of origin claim).
Even if we assume that
plaintiff’s name is a valid and protectable mark, plaintiff has not alleged
that the defendant engaged in any conduct that is likely to cause confusion
as to the origin of the defendant’s website. The mere appearance on a
website of a hyperlink to another site will not lead a web-user to conclude
that the owner of the site he is visiting is associated with the owner of
the linked site. This is particularly true in this case because defendant’s
website advertises real estate and web design services, not investment
services, and defendant is continuously disassociating herself from
plaintiff by criticising her and accusing her of misconduct.
We similarly find that, given
the overall circumstances of this case, defendant’s use of the plaintiff’s
name in the post-domain path of a URL and placement of URLs using the
plaintiff’s name in the post-domain paths on chat forums, discussion boards,
and search engines do not give rise to any source confusion.
Products Corp. v. a2z Mobile Office
326 F3d 687, 696 [13 ILR (P&F) 303]
(6th Cir 2003) (noting that the post-domain path of a URL “merely
shows how the website’s data is organized within the host computer’s files”
and does not suggest an association between items, even if various search
engines link plaintiff’s product and defendant’s Web page).
Finally, there is no merit to
the plaintiff’s claim that the defendant’s activities violated the Berne
Convention (which relates to copyrights). We initially observe that a
plaintiff may not enforce the provisions of the Berne Convention by stating
a cause of action pursuant to the convention itself.
See Itar-Tass Russian News Agency v.
Russian Kurier, Inc., 153 F3d
82, 90 (2d Cir 1998) (citing 17 USC §104(c) and Pub. L. 100-568). As
plaintiff is pro se, we construe her complaint leniently and assume that she
means to state a claim under the Copyright Act of 1976, 17 USC §101, et seq.
However, a claim for copyright
infringement may not be pursued unless the plaintiff has registered a
copyright. See 17 USC §411 (“no action for infringement of the copyright in
any work shall be instituted until registration of the copyright claim has
been made in accordance with this title.”).
See Well-Made Toy Mfg. Co. v.
Goffa Int’l Corp., 354 F3d 112,
114 (2d Cir 2003) (holding that plaintiff’s failure to register its
copyright deprived the court of subject matter jurisdiction). As plaintiff
has not alleged that she has any registered copyrights that the defendant
infringed, she is precluded from raising a copyright claim here.
To summarize, we find that
plaintiff has failed to state a valid federal claim. However, defendant’s
assumption that this conclusion disposes of plaintiff’s caseis incorrect, as
this Court potentially has diversity jurisdiction over plaintiff’s state law
Plaintiff’s State Law Claims
In addition to her federal
claims, plaintiff has claimed that defendant is liable under state law for
privacy violations (including placing plaintiff in a “false light”),
defamation, and tortious interference.6 Although defendant’s brief does not
address the merits of these claims, we have examined them in the interest of
Plaintiff’s complaint appears
to state a defamation claim. However, under New York law, a defamation claim
does not give rise to personal jurisdiction over an out-of state defendant.7
Moreover, plaintiff’s claims of privacy violation are not recognized under
New York law. See Howell v. New York
Post Co., Inc., 81 NY2d 115, 123-24, 612 NE2d 699, 596 NYS 2d
350, 354-55 (1993) (declining, in the absence of any legislative initiative,
to recognize the common law right to privacy that is recognized in certain
jurisdictions).8 Our continued jurisdiction over this case, therefore,
depends on whether plaintiff has stated a valid tortious interference claim.
The elements of a claim of
tortious interference with an existing contract are “(1) the existence of a
valid contract between plaintiff and a third party; (2) the defendant’s
knowledge of that contract; (3) the defendant’s intentional procuring of the
breach, and (4) damages.” Foster v.
Churchill, 87 NY2d 744, 749-50, 665 NE2d 153, 642 NYS 2d 583, 586
(1996). Similarly, to plead tortious interference with prospective economic
relations, a plaintiff must allege “that plaintiff would have entered into
an economic relationship but for the defendant’s wrongful conduct,” and
“name the parties to any specific contract [he] would have obtained.”
DCA Productions Plus Inc.,
293 A.D.2d 265, 266-67, 741 NYS 2d 20, 23 (1st Dep’t 2002).
Plaintiff has alleged that
defendant has posted, on her own website and on various Internet discussion
sites, defamatory statements about plaintiff intended to discredit her.9
Plaintiff has further alleged that defendant has contacted plaintiff’s
“clients,” and that, as a result, one of the companies plaintiff “covers,”
QuoteMedia.com, asked her to discontinue coverage out of fear that investors
would believe defendant’s statements and sell its stock. Plaintiff has
failed, however, to allege specific contractual relationships, either
present or future, that have been terminated or altered as a result of
defendant’s conduct. Moreover, there is an apparent inconsistency in
plaintiff’s position. Plaintiff states that defendant has defamed her by
accusing her of being a paid promoter of stocks. If plaintiff is not in fact
paid by the companies she “covers,” it is difficult to see how she can claim
that defendant’s activities have disrupted “business relationships” of hers.
Despite these observations, as
plaintiff is pro se and has not had an opportunity to address the concerns
we raise here, rather than dismiss the complaint with prejudice, we will
allow plaintiff two weeks to submit an amended complaint stating a proper
claim for tortuous interference, if such an amendment is possible consistent
with Fed. R. Civ. P. 11’s good faith requirement.
See Fed. R. Civ. P. 11(b)(3).
Any amended complaint must state with specificity what contractual
relationships, if any, were affected by defendant’s conduct and how these
relationships were affected, as well as the damages, if any, suffered by
plaintiff. In this respect, it would be helpful if the complaint set forth
the exact nature of plaintiff’s business.
For the reasons set forth
above, defendant’s motionto dismiss is granted, and this case is dismissed
without prejudice to the filing of an amended complaint as set forth above.
In light of our decision here, plaintiff’s motion for default and permanent
injunction, Doc. 13, is denied.
As a final matter, plaintiff
has moved for payment of costs of service pursuant to F. R. Civ. P. 4(d)(2)(C)(ii),
in the amount of $ 381.98. Under Rule 4(d)(2), “if a defendant located
within the United States fails to comply with a request for waiver made by a
plaintiff . . . , the court shall
impose the costs subsequently incurred in effecting service on the
defendant unless good cause for the failure be shown.” (emphasis added). The
Committee Notes explain that this rule is intended to “impose upon the
defendant those costs that could have been avoided if the defendant had
cooperated reasonably in the manner prescribed,” and that the rule is a
“useful” measure against “furtive” defendants. Advisory Committee Notes,
Plaintiff originally attempted
to serve the amended complaint by first class mail, return receipt requested
with proper notice and acknowledgement forms enclosed. The acknowledgement
was never returned, see Pl.’s June 17, 2004 Affirmation, and plaintiff was
forced to proceed with personal service, the cost of which she has
documented. Defendant has not offered any reasons for her failure to waive
service, and any doubt as to her motivation is resolved by her Internet
message to plaintiff (“Why would I make anything easy for you.”), Ex. 5 to
Pl.’s Opp’n to Mot’n to Quash Summons. Accordingly, plaintiff’s Rule 4
motion is granted in the amount of $ 381.98, and defendant is directed to
pay this sum.
alleges, as a fifth cause of action, a “Civil conspiracy” to involve
plaintiff as a defendant in a federal action:
Harvest Court, LLC v. Nanopierce
Technologies, Inc., No. 02- 7579, now pending before Judge Sand.
We know of no statutory or judicial authority, nor does plaintiff suggest
one, for imposing liability based on this allegation.
As noted throughout, our analysis is somewhat hampered by plaintiff’s
vagueness as to her business and her client relationships.
We are at a
loss as to why plaintiff has invoked §80b-2, as this provision merely
defines terms used in other provisions.
As §78t only
creates liability for any party controlling a party liable under other
provisions of §78, “to any person to whom such a controlled person is
liable,” a plaintiff has standing to raise a §78t claim only if she would
have standing to raise a claim under other provisions of §78.
have serious doubts as to whether plaintiff could establish damages
amounting to $75,000 (the statutory minimum for diversity jurisdiction), the
Supreme Court has held that “the sum claimed by the plaintiff controls if
the claim is apparently made in good faith. It must appear to a legal
certainty that the claim is really for less than the jurisdictional amount
to justify dismissal.” St. Paul Mercury
Indemnity Co. v. Red Cab Co.,
303 US 283, 288-89, 82 L Ed 845, 58 S Ct 586 (1938). At this time, we do not
find that plaintiff’s damages are deficient “to a legal certainty,” although
our conclusion may change, should plaintiff choose to file an amended
complaint that clarifies the nature of plaintiff’s business and the
relationships allegedly harmed by defendant’s conduct.
the word “conversion,” in her complaint,
see ¶11, which suggests that she
may also intend to allege that
defendant has committed the tort of conversion. However,
this tort only covers “tangible personal property or specific
money,” Fiorenti v. Central
Emergency Physicians, PLLC,
305 A.D.2d 453, 454-55, 762 NYS 2d 402, 403-04 (2d Dep’t
2003), and is
therefore inapplicable to this case. Plaintiff’s
invocation of the concept of “misappropriation,” see ¶11, is
similarly unavailing, as that tort requires a showing that “the
defendant must have misappropriated the labors and expenditures
of another.” Werlin v.
Reader’s Digest Ass’n, Inc., 528
F Supp 451, 464 (D.C.N.Y. 1981). “Misappropriation of
identity,” as a form of privacy tort, is not recognized in New
York. See infra.
N.Y.Civ.Prac.L. Section 302(a) (emphasis added): Acts which are the basis of
jurisdiction. As to a cause of action arising from any of the acts
enumerated in this section, a court may exercise personal jurisdiction over
any nondomiciliary, or his executor or administrator who in person or
through an agent:
any business within the state; or
2. commits a
tortious act within the state, except as
to a cause of action for defamation of character arising from
the act; or
3. commits a
tortious act without the state causing injury to person or property within
the state, except as to a
cause of action for defamation of character
arising from the act; if he
does or solicits business, or engages in any other persistent course of
conduct, or derives substantial revenue from goods used or consumed or
services rendered, in the state, or
or should reasonably expect the act to have consequences in the state and
derives substantial revenue from interstate or international commerce;
The New York
Legislature has adopted part of the common law right to privacy.
See Civil Rights Law §§ 50 and
51 (providing cause of action for use of a living person’s name, portrait or
picture for “advertising” or “trade” purposes without prior written
consent). However, plaintiff has failed to plead any facts what might be
covered by these sections.
alleges that defendant has targeted Nanopierce, a company that “plaintiff’s
business covers.” Compl. ¶19-20. To the extent plaintiff is attempting to
assert a claim on behalf of Nanopierce or any of its employees, plaintiff
lacks standing to do so. To the extent plaintiff is arguing that she had a
concrete business arrangement with Nanopierce that was disrupted by
defendant’s activities, plaintiff must state the underlying facts with