Moore v. HorrorHound Ltd, LLC, No. 3:2014cv00836 - Document 24 (E.D. Va. 2015)
Court Description: MEMORANDUM OPINION. Signed by District Judge James R. Spencer on 08/27/2015. (tjoh, )
Download PDF
<![CDATA[
Moore v. HorrorHound Ltd, LLC Doc. 24 UNITED STATES DISTRICT COURT EASTERN DISTRICT OF VIRGINIA RICHMOND DIVISION IAN MATTLOCK MOORE, Plaintiff, Civil Action No. 3:14-CV-836 v. HORRORHOUND LTD, LLC, Defendant. MEMORAN D U M OPIN ION THIS MATTER is before the Court on a Motion to Am end Com plaint (“Motion”) (ECF No. 20 ), filed by Plaintiff, Ian Mattlock Moore (“Plaintiff” or “Moore”), on J uly 31, 20 15. Defendant, HorrorHound LTD, LLC (“Defendant” or “HorrorHound”), filed a response in opposition on August 11, 20 15 (“Opp’n Mem .”) (ECF No. 22). Plaintiff subsequently filed a reply on August 12, 20 15 (“Reply Mem .”) (ECF No. 23). The parties have not requested a hearing on this m atter, and the Court finds that oral argum ent is unnecessary. See E.D. Va. Loc. Civ. R. 7(J ). For the reasons set forth below, the Court hereby GRANTS the Motion. I. BACKGROU N D a. Fa ct u a l Ba ck g r o u n d 1 Plaintiff is a writer of articles that delve into the history of horror m ovies, and Defendant publishes a m agazine entitled HorrorHound m arketed to fans of horror culture. In 20 0 8, Plaintiff began writing a series of articles for Defendant entitled “Video Invasion.” The series focuses on the rise of the Video Hom e System (“VHS”) in Am erica and chronicles the m any producers of horror-them ed m ovies. In total, Plaintiff penned twenty-six articles for the Video Invasion series from J uly 20 0 8 through J anuary 20 13. In early 20 13, Plaintiff and Defendant ended their working relationship, and agreed at 1 The factual background is drawn from Plaintiff’s First Am ended Com plaint. (ECF No. 9.) 1 Dockets.Justia.com that tim e that the Video Invasion series would no longer be published in Defendant’s m agazine. Despite Plaintiff’s decision to discontinue writing for Defendant, Defendant continued to list Plaintiff as a writer in Issues 40 , 41, 42, 43, 44 and 45 (an entire year’s worth of issues). In Issue 41, Defendant announced the return of the Video Invasion series, although Defendant had never approached Plaintiff requesting perm ission to use the Video Invasion tradem ark or the series’ “look and feel.” In Issue 46, published in March 20 14, Defendant printed an article entitled “VHS Invasion,” which focused on the sam e subject m atter as Plaintiff’s Video Invasion series. Plaintiff alleges that the VHS Invasion article’s “look and feel” was alm ost identical to the “look and feel” of Plaintiff’s Video Invasion series. In other words, Plaintiff argues that the VHS Invasion articles were derived from the Video Invasion series. Plaintiff alleges that Defendant infringed upon Plaintiff’s trade dress, and the use of Defendant’s VHS Invasion tradem ark was intended to cause and has caused actual confusion in the m arketplace. b. Pr o ce d u r a l Ba ck g r o u n d On Decem ber 17, 20 14, Plaintiff filed a six-count Com plaint against Defendant alleging: (1) unfair com petition under the Lanham Act; (2) federal unfair com petition under the Lanham Act; (3) state tradem ark infringem ent; (4) com m on law unfair com petition/ m isappropriation; (5) federal copyright infringem ent; and (6) statutory right of publicity. Defendant then filed a Motion to Dism iss all claim s except Claim One pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure. (ECF No. 6.) Plaintiff subsequently filed an Am ended Com plaint, which provided additional factual support for his claim s and added a seventh claim for com m on law Quantum Meruit against Defendant. (ECF No. 9.) On May 7, 20 15, Defendant filed an answer to the Am ended Com plaint. (ECF No. 11.) On J une 25, 20 15, this Court held a pretrial conference and set a trial date of Decem ber 14-16, 20 15. Pursuant to the Pretrial Order, discovery is scheduled to conclude on October 6, 20 15. (ECF No. 17.) Plaintiff then filed the present Motion on J uly 31, 20 15, seeking leave to file a Second 2 Am ended Com plaint. Plaintiff’s proposed Second Am ended Com plaint (attached to Plaintiff’s Motion as Exhibit A), includes three new counts: (1) declaratory judgm ent (count V); (2) accounting (count VI); and (3) constructive trust (count VII).2 These additional counts add a claim in the alternative for a declaratory judgm ent of joint ownership of the copyright in each Video Invasion article that Plaintiff penned, alon g with the rem edies available to him under such a claim . II. LEGAL STAN D ARD Rule 15(a) states that a party m ay am end its pleading once as a m atter of course within 21 days after serving it or within 21 days after service of a responsive pleading. Fed. R. Civ. P. 15(a)(1)(A)– (B). “In all other cases, a party m ay am end its pleading only with the opposing party’s written consent or the court’s leave. The court should freely give leave when justice so requires.” Fed. R .Civ. P. 15(a)(2). Typically, a court should allow a party to am end unless “the am endm ent would be prejudicial to the opposing party, there has been bad faith on the part of the m oving party, or the am endm ent would have been futile.” Laber v. Harvey , 438 F.3d 40 4, 426 (4th Cir. 20 0 6) (citations and internal quotation m arks om itted). “Disposition of a m otion to am end is within the sound discretion of the district court.” Deasy v. Hill, 833 F.2d 38, 40 (4th Cir. 1987) (citations om itted). III. D ISCU SSION As noted above, a court should allow a party to am end a pleading unless “the am endm ent would be prejudicial to the opposing party, there has been bad faith on the part of the m oving party, or the am endm ent would have been futile.” Laber, 438 F.3d at 426 (citations and internal quotation m arks om itted). The Court will thus address each of these three factors in turn. // 2 Plaintiff’s proposed Second Am ended Com plaint also elim inates Plaintiff’s claim for federal unfair com petition under the Lanham Act. 3 (1) Prejudice “Whether an am endm ent is prejudicial will often be determ ined by the nature of the am endm ent and its tim ing.” Id. at 427. For exam ple, “a prejudicial am endm ent is one that raises a new legal theory that would require the gathering and analysis of facts not already considered by the [defendant, and] is offered shortly before or during trial.” Id. (citations and internal quotation m arks om itted). The Fourth Circuit in Equal Rights Center v. N iles Bolton Associates, 60 2 F.3d 597 (4th Cir. 20 10 ) affirm ed the district court’s denial of plaintiff’s m otion for leave to am end its com plaint based on a finding of prejudice. “After the close of a three-year long discovery process and on the eve of the deadline for dispositive m otions,” the plaintiff in Equal Rights Center wished to add a new claim which would change the litigation theory to one of partial, instead of sole, liability. Id. at 60 3. The district court noted that the defendant’s “‘litigation plan did not contem plate such an atom istic battlefield.’” Id. (quoting Equal Rights Ctr. v. Archstone Sm ith Trust, 60 3 F. Supp. 2d 814, 818– 19 (D. Md. 20 0 9)). The Fourth Circuit found “com pelling the [district] court’s analysis that the am endm ent– com ing so belatedly– would change the nature of the litigation, and would therefore, prejudice [the defendant].” Id. at 60 4. Sim ilarly, in Deasy , the Fourth Circuit affirm ed the district court’s denial of the plaintiff’s m otion for leave to am end. Plaintiff’s original com plaint only alleged negligence regarding the defendant’s failure to inform plaintiff of her m edical test results or of the need for reexam ination. 833 F.2d at 41– 42. “Thus cast, the com plaint raised a purely factual question, the resolution of which required no m edical expertise.” Id. But the plaintiff then sought to add a new claim “just before trial” that the defendant failed to m eet the applicable standard of care in perform ing the m edical test. Id. at 41– 42. The Fourth Circuit held that this claim would “alter substantially the nature of the lawsuit,” and “[t]he proof required to defend against this new claim would be of an entirely different character than the proof which the defendant had been led to believe would be necessary.” Id. at 42. The Court held, “Belated claim s which change the 4 character of litigation are not favored.” Id. (citations om itted). In contrast to prejudicial am endm ents, an am endm ent that “m erely adds an additional theory of recovery to the facts already pled an d is offered before any discovery has occurred,” would not be considered prejudicial. Laber, 438 F.3d at 427 (citing Davis v. Piper Aircraft Corp., 615 F.2d 60 6, 613 (4th Cir. 1980 )); see also Fom an v. Davis, 371 U.S. 178, 182 (1962) (reversing district court’s denial of plaintiff’s m otion to am end where “the am endm ent would have done no m ore than state an alternative theory for recovery”); W ard Elecs. Serv., Inc. v. First Com m ercial Bank, 819 F.2d 496, 497 (4th Cir. 1987) (“[T]he fact that an am endm ent changes the plaintiff’s theory of the case will not suffice as a reason for denial absent a showing of prejudice, bad faith, futility, or dilatoriness associated with the m otion.”). Moreover, “[d]elay alone . . . is an insufficient reason to deny the plaintiff’s m otion to am end.” Laber, 438 F.3d at 427 (citing Davis, 615 F.2d at 613); see also Edw ards v. City of Goldsboro, 178 F.3d 231, 242 (4th Cir. 1999) (“[D]elay m ust be accom panied by prejudice, bad faith, or futility.”). Here, Defendant argues that Plaintiff seeks to “change the character of this litigation” by “add[ing] an alternative, contradictory theory requesting a declaratory judgm ent that the parties are joint owners of the Video Invasion articles that appeared in HorrorHound Magazine.” (Opp’n Mem . at 4.) Defendant also claim s that Plaintiff’s am endm ent “greatly expand[s] the scope of this litigation” as the proposed Second Am ended Com plaint seeks a declaratory judgm ent on the question of ownership of twenty-six (26) Video Invasion articles, rather than the six (6) articles Plaintiff had included in his original Com plaint and First Am ended Com plaint. (Id. at 5.) Finally, Defendant subm its that Plaintiff has unduly delayed in filing his Motion, and because “m uch of discovery has already occurred in this case,” Defendant would be prejudiced by the proposed am endm ent. (Id. at 4, 6.) In reply, Plaintiff argues that “[t]his [case] has always been, and will rem ain in spite of the proposed am endm ent, a case about Mr. Moore’s work in connection with his VIDEO INVASION™ articles.” (Reply Mem . at 2.) Defendant asserted in its Answer that it is the sole 5 owner of the copyright. “Therefore, [Plaintiff contends], the crux of the copyright portion of the case, even without am endm ent, revolves around who owns the copyright to the VIDEO INVASION™ articles.” (Id. at 3.) Finally, Plaintiff notes that the Motion is m ade with two m onths left in the discovery period and well before trial or the deadline for dispositive m otions. (Id.) The Court finds Plaintiff’s argum ent m ore com pelling as Plaintiff’s proposed am endm ent would not change the character of this litigation. Both the First Am ended Com plaint and the proposed Second Am ended Com plaint discuss the twenty-six articles that Plaintiff allegedly penned for the Video Invasion Series. (ECF No. 9, at ¶ 10 ; Mot., Ex. A at ¶ 10 .) Both Com plaints also note that Plaintiff currently has a federal copyright application pending for the Video Invasion series of articles covering Issues 34 through 39. (ECF No. 9, at ¶ 37; Mot., Ex. A at ¶ 39.) Additionally, both Com plaints allege that “Plaintiff is, and [at] all relevant tim es has been, the copyright owner of exclusive rights with respect to every VIDEO INVASION™ article Plaintiff penned.” (ECF No. 9 at ¶ 67; Mot., Ex. A at ¶ 73.) In addition, as Plaintiff notes, Defendant’s Answer to the Am ended Com plaint alleges that Defendant “owns the copyright rights in and to each of the final published VIDEO INVASION™ articles.” (ECF No. 11 at ¶ 10 8; see also ¶¶ 113, 115.) Thus, Plaintiff’s proposed am endm ent for a joint copyright authorship claim “flows from the assertions m ade in Defendant’s Answer.” (Mem . in Supp. of Mot. at 3.) Unlike the claim s in Equal Rights Center and Deasy , Plaintiff’s proposed joint authorship claim would not substantially change the nature of this litigation. Rather, the claim of joint authorship stem s from the sam e set of core facts and prior allegations. Furtherm ore, the present Motion was not m ade “shortly before or during trial.” Laber, 438 F.3d at 427. Plaintiff filed the present Motion on J uly 31, 20 15– after discovery has progressed for only a m onth and a half. (Mem . in Supp. of Mot. at 4.) A jury trial is currently scheduled to begin on Decem ber 14, 20 15, and all discovery is set to be com pleted by October 6, 20 15. (ECF No. 17.) Thus Plaintiff m ade his Motion with two m onths left in the discovery period, 6 and well before any dispositive m otions are due. 3 (2) Bad Faith With regards to bad faith, Plaintiff subm its that his desired am endm ent “stem [s] from a good faith belief in [a] legitim ate claim against the [Defendant].” (Mem . in Supp. of Mot. at 4) (quoting Tao of Sy s. Integration v. Analy tical Servs. & Materials, Inc., 299 F. Supp. 2d 565, 571 (E.D. Va. 20 0 4)). Defendant’s opposition does not com m ent on Plaintiff’s bad faith, but instead highlights undue delay (which is addressed under the prejudice prong above). Without evidence that Plaintiff acted in bad faith, this factor weighs in favor of Plaintiff. (3) Futility Leave to am end a com plaint will be denied “on the ground of futility when the proposed am endm ent is clearly insufficient or frivolous on its face.” Johnson v. Orow eat Foods Co., 785 F.2d 50 3, 510 (4th Cir. 1986) (citations om itted). “If a proposed am endm ent sets forth facts and circum stances which m ay entitle a plaintiff to relief, then futility is not a proper basis on which to deny the am endm ent,” because “it is the possibility of recovery, and not its likelihood, that guides this Court’s analysis.” Sm ithfield Foods Inc. v. United Food and Com m ercial W orkers Int’l Union, 254 F.R.D. 274, 28 0 (E.D. Va. 20 0 8 ) (citation om itted) (em phasis added). Here, Defendant takes issue with the three additional counts (counts V4 , VI 5 and VII 6 ) pled in Plaintiff’s proposed Second Am ended Com plaint, arguing that Plaintiff’s proposed Second Am ended Com plaint is futile as it “is insufficient or frivolous on its face.” (Opp’n Mem . 3 “In the absence of prejudice, the granting of leave to am end is norm ally warranted.” Fletcher v. Tidew ater Builders Ass’n Inc., 216 F.R.D. 584, 587 (E.D. Va. 20 0 3) (citation om itted). For the sake of thoroughness, however, the Court will address the rem aining two factors in the analysis: bad faith and futility. 4 Count V of Plaintiff’s proposed Second Am ended Com plaint seeks a declaratory judgm ent that if Plaintiff is not the sole owner of each Video Invasion article that he penned, then, in the alternative, he is, at the very least, a joint author. (Mot., Ex. A at ¶ 82.) 5 Count VI seeks an accounting to Plaintiff for his pro rata share of profits Defendant m ade from the Video Invasion articles as well as VHS Invasion articles. (Id. at ¶¶ 92– 94.) 6 In Count VII, Plaintiff alleges that “Defendant wrongfully deprived Plaintiff of his share of the profits that Defendant enjoyed from the comm ercial exploitation of each Video Invasion article that he penned and/ or the Video Invasion series as a whole, as well as the VHS Invasion articles.” (Id. at ¶ 99.) Plaintiff argues that “[b]y virtue of Defendant’s acts, Defendant holds the[se] profits . . . as constructive trustee for the benefit of Plaintiff and Defendant.” (Id. at ¶ 10 0 .) 7 at 8.) Specifically, Defendant argues in part that even if the Court were to find Plaintiff to be a joint owner of the Video Invasion articles, Plaintiff would not be the joint owner of the VHS Invasion articles, a derivative work 7, and thus would not be entitled to any profits arising from the VHS Invasion articles. (Id.) (citing W eissm an v. Freem an, 868 F.2d 1313 (2d Cir. 1989)). Plaintiff responds that the proposed Second Am en ded Com plaint “is not futile as it properly states a claim for a declaratory judgm ent of join t authorship under the Copyright Act and claim s for accom panying rem edies resulting therefrom .” (Mem . in Supp. of Mot. at 4.) Plaintiff further claim s that “Defendant [has] m isstate[d] the law with respect to a joint copyright owner’s rights to a share of profits in a derivative work.” (Reply Mem . at 5.) Thus, in order to decide whether Plaintiff’s proposed Second Am ended Com plaint is futile, the Court m ust determ ine whether Plaintiff (if found to be a joint author of the Video Invasion articles), is entitled to a share of the profits derived from the VHS Invasion articles. The Copyright Act defines a “joint work” as “a work prepared by two or m ore authors with the intention that their contributions be m erged into inseparable or interdependent parts of a unitary whole.” 17 U.S.C. § 10 1. Further, the Act provides that “[t]he authors of a joint work are coowners of copyright in the work.” 17 U.S.C. § 20 1(a); see also Custom Dy nam ics, LLC v. Radiantz LED Lighting, Inc., 535 F. Supp. 2d 542, 550 (E.D. N.C. 20 0 8) (“Where two parties engage in a joint effort to create a copyrighted work, they are joint owners of the resulting copyright.”) (citations om itted). The owner of copyright has the exclusive right “to prepare derivative works based upon the copyrighted work.” 17 U.S.C. § 10 6(2). J oint authorship of a pre-existing work, however, does not autom atically m ake the joint authors co-owners of the derivative work. W eissm ann, 868 F.2d at 1317. But, that being said, “a joint owner is [still] under a duty to account to the other joint owners of the [pre-existing] work for a rateable share of the profits realized from his 7 The Copyright Act defines “derivative work” as “a work based upon one or m ore preexisting works.” 17 U.S.C. § 10 1. A derivative work “consists of a contribution of original m aterial to a pre-existing work so as to recast, transform or adapt the pre-existing work.” Mass. Museum of Contem porary Art Found., Inc. v. Buchel, 593 F.3d 38, 65– 64 (1st Cir. 20 10 ). 8 use of the work.” 1-6 Nim m er on Copyright § 6.12; see also Thom son v. Larson, 147 F.3d 195, 199 (2d Cir. 1998) (“[E]ach joint author has the right to use or to license the work as he or she wishes, subject only to the obligation to account to the other joint owner for any profits that are m ade.”); W eissm ann, 868 F.2d at 1318 (citation om itted) (“The only duty joint owners have with respect to their joint work is to account for profits from its use.”). In other words, “a joint author m ust account to his co-author for use of their joint work in a derivative work.” Maurizio v. Goldsm ith, 84 F. Supp. 2d 455, 467 (S.D.N.Y. 20 0 0 ). This rule has been justified on the basis that “a ‘constructive trust’ exists between the joint owners that requires such an accounting.” 1-6 Nim m er on Copyright § 6.12. In this case, Count V of Plaintiff’s proposed Second Am ended Com plaint seeks a declaratory judgm ent that Plaintiff and Defendant are joint authors of the Video Invasion articles. Based on the law defined above, if Plaintiff is found to be a joint author, Counts VI and VII properly request Plaintiff’s pro rata share of the profits that Defendant enjoyed from each Video Invasion article, as well as profits Defendant enjoyed from the derivative work, VHS Invasion articles.8 IV. CON CLU SION For the foregoing reasons, Plaintiff’s Motion is GRANTED. Let the Clerk send a copy of this Mem orandum Opinion to all counsel of record. An appropriate Order will issue. ________________/s/_____________ James R. Spencer Senior U. S. District Judge ENTERED this 27th_ _ _ day of August 20 15. 8 With regards to Defendant’s argum ent that Plaintiff pleads “rem edies, not causes of action” in Counts VI and VI, (Opp’n Mem. at 7– 8), such argum ent m ust be dism issed. Case law demonstrates that in joint copyright ownership com plaints, plaintiffs m ay include a separate count for an accounting of profits and/ or a constructive trust. See Corw in v. Quinonez, 858 F. Supp. 2d 90 3 (N.D. Ohio 20 12); Exceller Softw are Corp. v. Pearson Educ., Inc., No. 10 CIV 0 381(PGG), 20 10 WL 4486944 (S.D.N.Y. Nov. 9, 20 10 ); Maurizio v. Goldsm ith, No. 96 CIV. 4332(LMM), 20 0 1 WL 1568428 (S.D.N.Y. Dec. 5, 20 0 1). 9
]]>
Some case metadata and case summaries were written with the help of AI, which can produce inaccuracies. You
should read the full case before relying on it for legal research purposes.
This site is protected by reCAPTCHA and the Google
Privacy Policy and
Terms of Service apply.
