Case 7:22-cv-09632-CS Document 56 Filed 12/02/24 Page 1 of 24
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`-------------------------------------------------------------x
`JOHN MOSHER,
`
`
`
`
`
`
`
`
`
`
`
`
`Plaintiff,
`
`
`OPINION & ORDER
`
`No. 22-CV-9632 (CS)
`
`
`
`- against -
`
`
`
`
`
`LANA VEYDA, PATRICIA ELAM,
`KEITH ELAM, CHRISTOPHER MARTIN
`a/k/a DJ PREMIER, and ESTATE OF
`KEITH ELAM,
`
`Defendants.
`
`
`
`
`
`-------------------------------------------------------------x
`
`Appearances:
`
`Emmanuel Coffy
`Coffylaw, LLC
`Maplewood, New Jersey
`Counsel for Plaintiff
`
`Kristin Grant
`Grant Attorneys at Law PLLC
`New York, New York
`Counsel for Defendants Veyda, Elam,
`Elam & Estate of Keith Elam
`
`Seibel, J.
`
`Before the Court is the motion of Lana Veyda, Patricia Elam, Keith C. Elam and the
`
`Estate of Keith Edward Elam (collectively, the “Defendants”) to dismiss Plaintiff’s Third
`
`Amended Complaint pursuant to Federal Rules of Civil Procedure 12(b)(1), 12(b)(6), and
`
`12(b)(7). (ECF No. 50.) For the reasons set forth below, Defendants’ motion is GRANTED.
`
`

`

`Case 7:22-cv-09632-CS Document 56 Filed 12/02/24 Page 2 of 24
`
`I.
`
`BACKGROUND
`
`For purposes of the motion to dismiss for failure to state a claim, the Court accepts as true
`
`the facts, but not the conclusions, alleged by Plaintiff John Mosher in the Third Amended
`
`Complaint. (See ECF No. 49 (“TAC”).)
`
`
`
`Facts
`
`Sometime in 2001, Plaintiff and Keith Elam, who was also known as “Guru,” formed an
`
`enterprise to compose, record, publish and perform original music. (TAC ¶ 8.) Guru is also
`
`known as Gangstarr, a persona that he created when he came to New York City in the mid-to-late
`
`1980s to pursue a career as a rap artist. (Id. ¶ 9.) Working as Gangstarr, Guru signed an
`
`independent label deal with “wild pitch records,” adding Defendant Christopher Martin, known
`
`as “DJ Premier,” as his DJ.1 (Id.) Together, DJ Premier and Guru wrote, composed and
`
`produced nearly all of Gangstarr’s songs and albums, which Guru would perform. (Id.) There
`
`were a few exceptions: the album “One of the Best Yet” that Plaintiff recorded, produced and
`
`composed, with Guru contributing lyrics; the album “The Ownerz” produced by Plaintiff, who
`
`also co-wrote the lyrics and music; and the song “Battle,” which Plaintiff co-produced and co-
`
`wrote and which is on the soundtrack for the movie 8 Mile. (Id.).
`
`In addition to Gangstarr, Guru worked on a side venture called Jazzmatazz, which did not
`
`involve DJ Premier. (Id. ¶ 10.) As part of Jazzmatazz, Guru released four albums: three
`
`written, composed and produced by Guru, and one composed, produced and co-written by
`
`Plaintiff, who also performed as an artist on the album and was Guru’s touring and business
`
`partner for that venture. (Id. ¶¶ 10-11.) Guru and Plaintiff recorded and performed as 7Grand,
`
`
`1 While the TAC names Martin as a defendant, Plaintiff has not requested a summons for
`him, and the time to serve him, see Fed. R. Civ. P. 4(m), has passed.
`
`2
`
`

`

`Case 7:22-cv-09632-CS Document 56 Filed 12/02/24 Page 3 of 24
`
`made many recordings together, and released five albums as partners. (Id. ¶¶ 12-13.) Their
`
`business continued until Guru died on April 19, 2010. (Id. ¶ 8.)
`
`Guru’s Estate thereafter commenced litigation in the Surrogate’s Court of the State of
`
`New York, County of Rockland, seeking recovery of certain intellectual property that Plaintiff
`
`allegedly possessed. (Id. ¶ 14.) On March 12, 2014, the Surrogate’s Court entered judgment,
`
`ordering Plaintiff to pay $169,850.36 to the Estate, among other things. (ECF No. 29-1
`
`(“Surrogate’s Decree”) at 6; see TAC ¶ 15.)2 The Surrogate also held that Plaintiff was not an
`
`owner of, nor held any interest in, “any writings, drawings, designs, lyrics or notes created by
`
`Keith Elam and/or any rights thereto” or the recordings embodying Guru’s voice or image.
`
`(Surrogate’s Decree at 2-3; see TAC ¶ 16.) Likewise, the Surrogate determined that neither
`
`Guru nor any of the entities that he controlled ever transferred or gave Plaintiff trademarks for
`
`the “GangStarr,” “Gang Starr,” “Jazzmatazz,” or “Guru’s Jazzmatazz” names or logos, and that
`
`Plaintiff had no interest in those marks. (Surrogate’s Decree at 4-5.) The court permanently
`
`restrained and enjoined Plaintiff from “any involvement with . . . utilizing, licensing or
`
`conveying to any entity or person, except the Estate of Keith Elam, the ‘Gangstarr’ and/or ‘Gang
`
`Starr’ name(s), logo(s) and/or trademark(s) and/or any rights thereto.” (Surrogate’s Decree at 3.)
`
`It did the same with respect to the “Jazzmatazz” and “Guru’s Jazzmatazz” names, logos, and
`
`trademarks. (Id.) In his decision, the Surrogate, who had presided over a six-day trial, noted his
`
`
`
`2 The TAC refers to numerous exhibits that Plaintiff describes as having been attached to
`the “1st Compl.” (See TAC ¶¶ 15, 17, 19, 28, 33.) No documents were attached to the original
`Complaint, (ECF No. 4), but exhibits were attached to the second amended complaint, (ECF No.
`29 (“SAC”)). It is apparent that counsel intended to refer to the exhibits attached to the SAC,
`and in any event they are incorporated in and integral to the TAC, see United States ex rel.
`Foreman v. AECOM, 19 F.4th 85, 106 (2d Cir. 2021) (court in deciding motion to dismiss may
`consider documents attached to, incorporated in or integral to complaint), so I consider them in
`connection with this motion.
`
`3
`
`

`

`Case 7:22-cv-09632-CS Document 56 Filed 12/02/24 Page 4 of 24
`
`“serious concerns with the apparent persistent, pervasive, material and intentional
`
`misrepresentations by, and the resulting lack of credibility of [Plaintiff].” (ECF No. 51-2 at 2.)3
`
`Plaintiff appealed the Surrogate’s Court’s judgment, (TAC ¶ 17), and on June 1, 2016,
`
`the Appellate Division, Second Department issued a Decision and Order that modified the
`
`Surrogate’s Decree and affirmed it as modified, (see ECF No. 29-2 (“Appellate Decision”) at 1).
`
`Specifically, the Appellate Division held that the Surrogate’s credibility and factual
`
`determinations with respect to the estate’s ownership interest in certain corporations and
`
`trademarks (and Plaintiff’s alleged wrongful conversion of certain funds that belonged to the
`
`Estate) were supported by the record, and it did not disturb those determinations. (Appellate
`
`Decision at 2.) But the Appellate Division also held that the Surrogate’s determinations that
`
`Plaintiff “held no interest in any writings, drawings, designs, lyrics, or notes created by [Guru]
`
`and/or any recordings embodying [Guru’s] voice and/or image” (and that Plaintiff improperly
`
`received funds from Guru’s life insurance policy and retirement fund) were not supported by the
`
`record. (Id.) The Appellate Division thus modified the Surrogate’s Decree by deleting certain
`
`paragraphs and by reducing the total amount that Plaintiff owed to the estate to $114,162.36. (Id.
`
`at 1; see ECF No. 51-2 at 5-11 (reflecting portions of Surrogate’s Decree that Appellate Division
`
`modified).)
`
`Plaintiff alleges that while the Surrogate’s Court proceeding remained pending, and
`
`continuing through the date of this action, Defendants have received and accepted royalties in
`
`
`
`3 I may consider this document, which is a public record, not for its truth but for the fact
`that it was said. See Videri, Inc. v. ONAWHIM (OAW) Inc., No. 23-CV-2535, 2024 WL
`4027980, at *7 (S.D.N.Y. Sept. 3, 2024); Doe v. State Univ. of N.Y. Purchase Coll., 617 F. Supp.
`3d 195, 201 n.3 (S.D.N.Y. 2022); Yany’s Garden LLC v. City of N.Y., No. 18-CV-2813, 2020
`WL 224701, at *3 (E.D.N.Y. Jan. 15, 2020). Citations to ECF No. 51-2 use the pagination
`generated by the Court’s Electronic Case Filing (“ECF”) system.
`
`4
`
`

`

`Case 7:22-cv-09632-CS Document 56 Filed 12/02/24 Page 5 of 24
`
`connection with activities conducted by Guru and Plaintiff. (TAC ¶ 19.) Plaintiff contends that
`
`these royalties are derived from specific copyrights, (id. (citing ECF No. 29-5)),4 but Plaintiff
`
`does not include any details about these royalties except his conclusion that he was “entitled to
`
`receive” them, (see id. ¶ 20). Plaintiff apparently – and erroneously – construes the Appellate
`
`Division’s finding that the Estate had not proven that Plaintiff “held no interest in any writings,
`
`drawings, designs, lyrics, or notes created by [Guru] and/or any recordings embodying [Guru’s]
`
`voice and/or image” as a finding that Plaintiff did in fact hold such an interest, and infers that he
`
`is therefore entitled to “income and royalties arising therefrom.” (Id. ¶ 21.) He asserts that
`
`Defendants have wrongfully profited from the sale of his intellectual property – including the
`
`licensing or sale of masters and copyrights that were lawfully transferred to him – and that
`
`Defendants have not credited Plaintiff in any way for their use of his work, nor has he received
`
`any royalties or credit from his work in DJ Premier’s productions. (See id. ¶¶ 28-33.)
`
`
`
`4 The list of copyrights to which Plaintiff refers is in a document captioned “Exhibit A –
`Trustee’s Motion for Authority to Conduct Exam[i]nations Under Fed. R. Civ. P. 2004.” (ECF
`No. 29-5.) This document (which erroneously refers to Fed. R. Civ. P. 2004 rather than Fed. R.
`Bankr. Proc. 2004) is apparently taken from a motion in Plaintiff’s bankruptcy case in which the
`trustee seemingly was trying to determine if Plaintiff had assets in the form of an interest in
`various copyrights. Plaintiff asserts that during his bankruptcy, Defendants Patricia Elam and
`the Estate took the position that Plaintiff owned those copyrights, but the document to which he
`cites, (TAC ¶ 34; see ECF No. 29-3), says no such thing; rather it is his own amended schedule
`of property in which he claims an interest in various Gangstarr and Jazzmatazz copyrights.
`Elsewhere in the TAC, Plaintiff asserts that he holds a registered copyright only in one work that
`bears Registration No. SR 713-381 (TAC at 1), which apparently refers to the Gangstarr work
`“Life After Death,” although he later refers to Registration No. “SR 713-” and a work called
`“Life Fter Death,” (id. ¶ 37). Life After Death is not one of the works listed in ECF No. 29-5. In
`any event, the U.S. Copyright Office’s Copyright Public Records System shows that the claimant
`for “Gangstarr Life After Death,” Registration No. 713-381, is 7 Grand Records. See
`https://cocatalog.loc.gov/cgi-
`bin/Pwebrecon.cgi?Search_Arg=Gangstarr+Life+After+Death&Search_Code=TALL&PID=81y
`ieCjBwKSojs0Y3kyye0TGCQ3r1TV&SEQ=20241116165340&CNT=25&HIST=1 (last visited
`Dec. 2, 2024). A document on which Plaintiff relies likewise shows that 7 Grand Records, not
`Plaintiff, is the registered claimant of the Life After Death copyright. (ECF No. 29-6 at 1.)
`
`5
`
`

`

`Case 7:22-cv-09632-CS Document 56 Filed 12/02/24 Page 6 of 24
`
`Procedural History
`
`Plaintiff filed his initial complaint on November 11, 2022, (ECF No. 1),5 and an amended
`
`complaint on March 14, 2023, (ECF No. 12). I thereafter granted Defendants’ request for
`
`substitution of counsel and their subsequent request for an extension of time to respond to the
`
`first amended complaint. (See ECF Nos. 18, 21, 22.) On July 24, 2023, Defendants filed a pre-
`
`motion letter in anticipation of a motion to dismiss and a motion for sanctions. (ECF No. 23.)
`
`At the pre-motion conference on August 29, 2023, I granted Plaintiff leave to amend the
`
`complaint a second time and set a briefing schedule. (See Minute Entry dated Aug. 29, 2023.)
`
`On September 27, 2023, Plaintiff filed his second amended complaint, (ECF No. 29), but before
`
`briefing was completed, Plaintiff’s then-counsel moved to withdraw, (ECF Nos. 32, 33, 37, 38.)
`
`At a show cause hearing on November 17, 2023, I granted Plaintiff’s counsel’s application to be
`
`relieved and denied Defendants’ motion to dismiss without prejudice to renewal. (See Minute
`
`Entry dated Nov. 17, 2023.) After Plaintiff retained new counsel, I held a status conference on
`
`January 17, 2024, at which I granted Plaintiff leave to file a Third Amended Complaint and set a
`
`briefing schedule for the motion to dismiss. (See Minute Entry dated Jan. 17, 2024.) On March
`
`13, 2024, Plaintiff filed the TAC, (ECF No. 49), which is the operative complaint, asserting
`
`claims for copyright infringement, (TAC ¶¶ 36-46), declaratory judgment, (id. ¶¶ 47-49),
`
`trademark infringement and false designation of origin, (id. ¶¶ 50-56), unfair competition, (id. ¶¶
`
`57-58), and conversion, (id. ¶¶ 59-61). The copyrights in which he claims an interest are the
`
`registered copyright in the Gangstarr work Life After Death and “a number of common law
`
`copyrighted works” that he does not identify. (Id. ¶¶ 37, 39.) The trademark in which he claims
`
`
`5 Plaintiff attempted to file the original complaint on that date, but the filing was rejected
`by the Clerk of Court for filing deficiencies. (See ECF No. 1.) He successfully filed on
`December 23, 2022. (ECF No. 4.)
`
`6
`
`

`

`Case 7:22-cv-09632-CS Document 56 Filed 12/02/24 Page 7 of 24
`
`an interest is the expired registered trademark for the Gang Starr logo, which he alleges he
`
`continues to use. (Id. ¶¶ 50-51.) The instant motion followed.
`
`II.
`
`LEGAL STANDARDS
`
`
`
`Rule 12(b)(1) Motion to Dismiss for Lack of Subject Matter Jurisdiction
`
`“A federal court has subject matter jurisdiction over a cause of action only when it has
`
`authority to adjudicate the cause pressed in the complaint.” Arar v. Ashcroft, 532 F.3d 157, 168
`
`(2d Cir. 2008), vacated and superseded on other grounds on reh’g en banc, 585 F.3d 559 (2d
`
`Cir. 2009).6 “Determining the existence of subject matter jurisdiction is a threshold inquiry, and
`
`a claim is properly dismissed for lack of subject matter jurisdiction under Rule 12(b)(1) when the
`
`district court lacks the statutory or constitutional power to adjudicate it.” Id.; see Makarova v.
`
`U.S., 201 F.3d 110, 113 (2d Cir. 2000). “When a defendant moves to dismiss pursuant to Rule
`
`12(b)(1) for lack of subject-matter jurisdiction and also moves to dismiss on other grounds, the
`
`Court usually must consider the Rule 12(b)(1) motion first.” Al-Ahmed v. Twitter, Inc., 553 F.
`
`Supp. 3d 118, 123 (S.D.N.Y. 2021) (citing Rhulen Agency, Inc. v. Alabama Ins. Guar. Ass’n, 896
`
`F.2d 674 (2d Cir. 1990)). “The court must take all facts alleged in the complaint as true and
`
`draw all reasonable inferences in favor of plaintiff, but jurisdiction must be shown affirmatively,
`
`and that showing is not made by drawing from the pleadings inferences favorable to the party
`
`asserting it.” Morrison v. Nat’l Austl. Bank Ltd., 547 F.3d 167, 170 (2d Cir. 2008), aff’d on
`
`other grounds, 561 U.S. 247 (2010). Further, in making its determination on jurisdiction, “a
`
`district court . . . may refer to evidence outside the pleadings.” Makarova, 201 F.3d at 113; see
`
`Arar, 532 F.3d at 168.
`
`
`6 Unless otherwise indicated, case quotations omit all internal citations, quotation marks,
`footnotes, and alterations.
`
`7
`
`

`

`Case 7:22-cv-09632-CS Document 56 Filed 12/02/24 Page 8 of 24
`
`Rule 12(b)(6) Motion to Dismiss for Failure to State a Claim
`
`“To survive a motion to dismiss, a complaint must contain sufficient factual matter,
`
`accepted as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556
`
`U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). “A claim
`
`has facial plausibility when the plaintiff pleads factual content that allows the court to draw the
`
`reasonable inference that the defendant is liable for the misconduct alleged.” Id. “While a
`
`complaint attacked by a Rule 12(b)(6) motion to dismiss does not need detailed factual
`
`allegations, a plaintiff’s obligation to provide the grounds of his entitlement to relief requires
`
`more than labels and conclusions, and a formulaic recitation of the elements of a cause of action
`
`will not do.” Twombly, 550 U.S. at 555. While Rule 8 “marks a notable and generous departure
`
`from the hypertechnical, code-pleading regime of a prior era, . . . it does not unlock the doors of
`
`discovery for a plaintiff armed with nothing more than conclusions.” Iqbal, 556 U.S. at 678-79.
`
`In considering whether a complaint states a claim upon which relief can be granted, the
`
`court “begin[s] by identifying pleadings that, because they are no more than conclusions, are not
`
`entitled to the assumption of truth,” and then determines whether the remaining well-pleaded
`
`factual allegations, accepted as true, “plausibly give rise to an entitlement to relief.” Id. at 679.
`
`Deciding whether a complaint states a plausible claim for relief is “a context-specific task that
`
`requires the reviewing court to draw on its judicial experience and common sense.” Id.
`
`“[W]here the well-pleaded facts do not permit the court to infer more than the mere possibility of
`
`misconduct, the complaint has alleged – but it has not ‘shown’ – ‘that the pleader is entitled to
`
`relief.’” Id. (quoting Fed. R. Civ. P. 8(a)(2)).
`
`When deciding a motion to dismiss under Rule 12(b)(6):
`
`a district court may consider the facts alleged in the complaint, documents
`attached to the complaint as exhibits, and documents incorporated by reference in
`
`8
`
`

`

`Case 7:22-cv-09632-CS Document 56 Filed 12/02/24 Page 9 of 24
`
`the complaint. Where a document is not incorporated by reference, the court may
`nevertheless consider it where the complaint relies heavily upon its terms and
`effect, thereby rendering the document integral to the complaint. For a document
`to be considered integral to the complaint, the plaintiff must rely on the terms and
`effect of a document in drafting the complaint[;] mere notice or possession is not
`enough. And even if a document is integral to the complaint, it must be clear on
`the record that no dispute exists regarding the authenticity or accuracy of the
`document, and it must be clear that there exist no material disputed issues of fact
`regarding the relevance of the document.
`
`United States of America ex rel. Foreman v. AECOM, 19 F.4th 85, 106 (2d Cir. 2021); see
`
`Solano v. New York, No. 20-CV-1378, 2021 WL 4134793, at *3 (N.D.N.Y. Sept. 10, 2021); 170
`
`Mercer LLC v. Rialto Cap. Advisors, LLC, No. 20-CV-2496, 2021 WL 1163649, at *2 (S.D.N.Y.
`
`Mar. 25, 2021). A court may also consider “matters of which judicial notice may be taken.”
`
`Goel v. Bunge, Ltd., 820 F.3d 554, 559 (2d Cir. 2016).
`
`III. DISCUSSION
`
`
`
`Subject Matter Jurisdiction Over Lanham Act Claims
`
`With respect to his trademark claims, Plaintiff alleges trademark infringement under 15
`
`U.S.C. § 1114, or Section 32 of the Lanham Act, and false designation of origin under 15 U.S.C.
`
`§ 1125(a), or Section 43(a) of the Lanham Act. (TAC ¶¶ 50-56.) At the threshold, Defendants
`
`argue that Plaintiff’s federal trademark claims must be dismissed for lack of subject matter
`
`jurisdiction based on the substantiality doctrine. (See ECF No. 51 (“Ds’ Mem.”) at 12-14.)
`
`“Under the substantiality doctrine, federal courts are without power to entertain claims otherwise
`
`within their jurisdiction if they are so attenuated and unsubstantial as to be absolutely devoid of
`
`merit.” Congregation Rabbinical Coll. of Tartikov, Inc. v. Vill. of Pomona, No. 20-CV-6158,
`
`2024 WL 4263205, at *5 (S.D.N.Y. Sept. 23, 2024). “The doctrine is understood to have
`
`jurisdictional implications on the theory that a claim can be so meritless, it does not present a
`
`federal question for a court to consider.” Id.; see Tancredi v. Metro. Life Ins. Co., 378 F.3d 220,
`
`9
`
`

`

`Case 7:22-cv-09632-CS Document 56 Filed 12/02/24 Page 10 of 24
`
`224 (2d Cir. 2004); Pot Luck, L.L.C. v. Freeman, No. 06-CV-10195, 2009 WL 693611, at *2
`
`(S.D.N.Y. Mar. 10, 2009). “A claim is not insubstantial merely because it relies upon a tenuous
`
`legal theory or is otherwise likely to fail” but rather “claims are deemed insubstantial only if
`
`prior decisions inescapably render the claims frivolous.” Adams v. Suozzi, 433 F.3d 220, 225 (2d
`
`Cir. 2005).
`
`The Court cannot say that Plaintiff’s claims for trademark infringement and false
`
`designation of origin under the Lanham Act7 – which, as discussed below, fail to state a claim on
`
`which relief can be granted – sink to the level of “absolutely devoid of merit” or “inescapably . . .
`
`frivolous.” Defendants contend that the claims meet that standard based on the Surrogate’s
`
`Court and Appellate Division decisions that rejected Plaintiff’s claims to ownership of or interest
`
`in the “Gangstarr” and “Gang Starr” logo(s) and trademarks, and permanently enjoined his use of
`
`that trademark. (Ds’ Mem. at 13-14.) I am not persuaded. The existence of a prior decision that
`
`has preclusive effect is a fairly common reason why claims are dismissed, but that is because
`
`such claims fail to state a claim on which relief can be granted, not because the applicability of a
`
`doctrine such as res judicata or collateral estoppel deprives the court of subject-matter
`
`jurisdiction when the claim otherwise meets the requirements of 28 U.S.C. §§ 1331 or 1332.
`
`Plaintiff alleges ownership of a trademark, (TAC ¶¶ 50-51), and the existence of state
`
`court decisions undermining that allegation does not transform his claims from meritless to “so
`
`insubstantial, implausible, foreclosed by prior decisions of the [Supreme] Court, or otherwise
`
`completely devoid of merit as not to involve a federal controversy,” Steel Co. v. Citizens for a
`
`Better Env’t, 523 U.S. 83, 89 (1998); see Adams, 433 F.3d at 225 (“A claim is not insubstantial
`
`
`
`7 Plaintiff also asserts federal question jurisdiction for his copyright infringement claims
`under the Copyright Act, but Defendants challenge only the federal trademark claims under Rule
`12(b)(1). (See ECF No. 55 (“Ds’ Reply”) at 2.)
`
`10
`
`

`

`Case 7:22-cv-09632-CS Document 56 Filed 12/02/24 Page 11 of 24
`
`merely because it relies upon a tenuous legal theory or is otherwise likely to fail.”); cf. Belcher v.
`
`Wells Fargo Bank NA, 377 F. App’x 59, 60 (2d Cir. 2010) (summary order) (dismissing
`
`“fantastical claims” for failing to meet substantiality doctrine where plaintiff did not assert a
`
`single federal claim to support federal question jurisdiction); Pot Luck, 2009 WL 693611, at *3-4
`
`(dismissing trademark infringement claim under substantiality doctrine where plaintiff did not
`
`allege ownership of protectible mark and complaint’s allegations were devoid of merit under
`
`directly applicable Supreme Court precedent). Thus, I deny Defendants’ motion to dismiss the
`
`trademark claims for lack of subject matter jurisdiction.
`
`Failure to State a Claim
`
`1.
`
`Trademark Infringement and False Designation of Origin
`
`Defendants alternatively move to dismiss Plaintiff’s trademark infringement and false
`
`designation of origin claims under Rule 12(b)(6) for failure to state a claim. (Ds’ Mem. at 17-19;
`
`ECF No. 55 (“Ds’ Reply”) at 4-5.) “The prima facie case required for [trademark infringement
`
`under 15 U.S.C. § 1114(1) and for false designation of origin under 15 U.S.C. § 1125(a)] is the
`
`same.” OffWhite Prods., LLC v. Off-White LLC, 480 F. Supp. 3d 558, 563 (S.D.N.Y. 2020).
`
`“For each, the [TAC] must allege sufficient facts to establish, first, that the plaintiff’s mark is
`
`entitled to protection, and second, that the defendant[s’] use of [their] mark is likely to cause
`
`consumers confusion as to the origin or sponsorship of [defendants’] goods.” Id.; see Camelot
`
`SI, LLC v. ThreeSixty Brands Grp. LLC, 632 F. Supp. 3d 471, 480 (S.D.N.Y. 2022) (“To state a
`
`claim under the Lanham Act for trademark infringement, unfair competition, and false
`
`designation of origin, a plaintiff must establish that: (1) [plaintiff] owns a valid mark entitled to
`
`protection under the Lanham Act; (2) defendant used the protected mark in commerce, without
`
`plaintiff's consent; and (3) defendant's use of that mark is likely to cause consumers confusion as
`
`to the origin or sponsorship of the defendant's goods.”).
`
`11
`
`

`

`Case 7:22-cv-09632-CS Document 56 Filed 12/02/24 Page 12 of 24
`
`While “a certificate of registration with the [United States Patent and Trademark Office]
`
`is prima facie evidence that the mark is registered and valid (i.e., protectible), that the registrant
`
`owns the mark, and that the registrant has the exclusive right to use the mark in commerce,” that
`
`presumption “evaporates” where a registration of a trademark is cancelled. Now-Casting Econ.,
`
`Ltd. v. Econ. Alchemy LLC, No. 23-947, 2024 WL 2720235, at *2 (2d Cir. May 28, 2024). An
`
`unregistered trademark may still support an infringement claim but the “unregistered trademark
`
`does not enjoy presumptions of validity or of the owner’s ownership of the mark.” Videri Inc. v.
`
`ONAWHIM (OAW) Inc., No. 23-CV-2535, 2024 WL 4027980, at *9 (S.D.N.Y. Sept. 3, 2024).
`
`In other words, “trademark rights attach based upon use of the mark in commerce and
`
`registration provides no additional substantive rights against infringement beyond acquired
`
`common law rights. . . . [R]egistrations merely offer evidence of ownership, and that showing
`
`need not be dispositive of the matter if contrary proof is available.” Broecker v. Widows Sons
`
`Grand Chapter the King’s Guard Inc., No. 21-CV-6309, 2021 WL 5309716, at *7 (W.D.N.Y.
`
`Nov. 15, 2021).
`
`Plaintiff alleges that from 2005 to 2019, he was the registered owner of the trademark for
`
`the “GANG STARR” logo (U.S. Registration No. 2,994,404), which was used in connection
`
`with music and video recordings. (TAC ¶ 50; see ECF No. 29-7.) He concedes that the
`
`registration expired in 2019, (TAC ¶ 51; see
`
`https://tsdr.uspto.gov/#caseNumber=2,994,404&caseSearchType=US_APPLICATION&caseTy
`
`pe=DEFAULT&searchType=statusSearch (last visited Dec. 2, 2024) (stating registration for
`
`mark was cancelled on April 30, 2019)),8 but contends that he continued to use the trademark
`
`
`
`8 The Court may take judicial notice of public records such as federal trademark
`registrations but only “for the limited purpose of noting what the documents state, rather than to
`prove the truth of their contents.” Videri, Inc., 2024 WL 4027980, at *7.
`
`12
`
`

`

`Case 7:22-cv-09632-CS Document 56 Filed 12/02/24 Page 13 of 24
`
`beyond the expiration of its registration and thereby maintained his common law protections.
`
`(TAC ¶ 51.)
`
`Defendants argue that the Plaintiff cannot assert any ownership interest in the “Gang
`
`Starr” trademark because the Surrogate’s Court and Appellate Division have already decided that
`
`he lacks such an interest. (See Ds’ Mem. at 17-18.) Plaintiff ignores this argument in his
`
`opposition. (See P’s Opp. at 9-10.) I see no reason why Plaintiff’s claims would not be barred
`
`by res judicata and collateral estoppel, given the clear findings that: 1) “neither [Guru], nor
`
`entities he owned or controlled . . . ever transferred or gave to Mosher trademarks to the
`
`‘GangStarr’ and/or ‘Gang Starr’ name(s) and/or logo(s); 2) Plaintiff “has no interest in, or rights
`
`to such name(s), logo(s) and/or trademark(s); and 3) Plaintiff “is enjoined from any involvement
`
`with or, directly or indirectly, utilizing . . . the ‘Gangstarr’ and/or ‘Gang Starr’ name(s), logo(s)
`
`and/or trademark(s) and/or any rights thereto.” (ECF No. 51-2 at 7-9.) See Mahindra &
`
`Mahindra Ltd. v. FCA US LLC, 503 F. Supp. 3d 542, 552-55 (E.D. Mich. 2020) (res judicata
`
`barred trademark infringement claims); Fischer v. Brushy Mountain Bee Farm, Inc., No. 17-CV-
`
`10094, 2019 WL 935957, at *8-10 (S.D.N.Y. Feb. 26, 2019) (same), report and recommendation
`
`adopted, 2023 WL 8603027 (S.D.N.Y. Dec. 12, 2023); Manchanda v. Google, No. 16-CV-3350,
`
`2016 WL 6806250, at *7-8 (S.D.N.Y. Nov. 16, 2016) (collateral estoppel barred trademark
`
`infringement claims to the extent duplicative of issues litigated and decided in prior state court
`
`proceedings); see also Broecker, 2021 WL 5309716, at *8-9 (addressing doctrines of res
`
`judicata and collateral estoppel with respect to trademark infringement claims).
`
`Even if Plaintiff had adequately pleaded ownership and validity of the “GANG STARR”
`
`trademark, he has not adequately pleaded, or even addressed, the remaining requirements of a
`
`trademark infringement claim: whether Defendants are using the mark without permission and
`
`13
`
`

`

`Case 7:22-cv-09632-CS Document 56 Filed 12/02/24 Page 14 of 24
`
`whether such use is likely to cause confusion as to origin or sponsorship. The TAC pleads no
`
`facts regarding Defendants’ purported use of the “Gang Starr” mark or similar marks. Rather, it
`
`contains only a single conclusory statement that Defendants “have been using a mark identical or
`
`confusingly similar to GANG STARR in connection with the same goods/services . . . which is
`
`likely to cause confusion, mistake, or deception among consumers, contrary to 15 U.S.C. §
`
`1114(1) and § 1125(a).” (TAC ¶ 52.)9 This is the fact-free “formulaic recitation of the elements
`
`of a cause of action” condemned by Twombly. 550 U.S. at 555. Plaintiff’s mere assertion of
`
`trademark infringement absent any facts regarding the nature of the infringement fails to provide
`
`Defendants with fair notice of the claims. Rodriguez v. Redbubble, Inc., No. 21-CV-2973, 2023
`
`WL 6294180, at *4 (S.D.N.Y. Sept. 27, 2023); see OffWhite, 480 F. Supp. 3d at 566 (dismissing
`
`Lanham Act claims because the amended complaint’s “sparse factual allegations fail[ed] to
`
`plausibly allege the foundational element of consumer confusion”). Put another way, “Plaintiff
`
`pleads no factual content that could lead me to draw a reasonable inference that Defendants have
`
`used Plaintiff’s mark in commerce in a way that is likely to cause confusion,” and instead
`
`“pleads only threadbare recitals of the elements of a cause of action, supported by mere
`
`conclusory statements.” Rodriguez, 2023 WL 6294180, at *4; see Down to Earth Organics, LLC
`
`v. Efron, No. 22-CV-6218, 2024 WL 1376532, at *9 (S.D.N.Y. Mar. 31, 2024) (conclusory
`
`allegations about likelihood of confusion could not plausibly support claims for trademark
`
`infringement and false designation of origin). Thus, the TAC’s “bare-bones allegations, which
`
`Plaintiff fails to even elaborate on in [his] Opposition, are insufficient to plausibly state a claim
`
`that Defendants have infringed on [his purported] Marks.” Down to Earth Organics, 2024 WL
`
`
`
`9 Plaintiff repeats similar conclusory statements in his opposition, simply quoting the
`legal standards for a trademark infringement claim, without reference to any facts that might
`render those conclusions plausible. (See P’s Opp. at 9-10.)
`
`14
`
`

`

`Case 7:22-cv-09632-CS Document 56 Filed 12/02/24 Page 15 of 24
`
`1376532, at *7. Accordingly, Plaintiff’s trademark infringement and false designation of origin
`
`claims must be dismissed.
`
`2.
`
`Copyright Infringement Claims
`
`“Under the Copyright Act of 1976, as amended, copyright protection attaches to ‘original
`
`works of authorship’ – prominent among them, literary, musical, and dramatic works – fixed in
`
`any tangible medium of expression.’” Fourth Est. Pub. Benefit Corp. v. Wall-Street.com, LLC,
`
`586 U.S. 296, 300 (2019) (quoting 17 U.S.C. § 102(a)). Authors of copyrights gain exclusive
`
`rights upon the work’s creation, including rights to reproduce, distribute, display, and perform.
`
`See id. at 300-01. “To state a claim for copyright infringement, the complaint must allege 1)
`
`which specific original works are the subject of the copyright claim, 2) that plaintiff owns the
`
`copyrights in those works, 3) that the copyrights have been registered in accordance with the
`
`statute, and 4) by what acts during what time the defendant infringed the copyright.” Hongmian
`
`Gong v. Lerone Savage, No. 23-CV-7355, 2024 WL 4696128, at *2 (S.D.N.Y. Nov. 4, 2024);
`
`see Richards v. Warner Music Grp., No. 22-CV-6200, 2024 WL 4307994, at *3-4 (S.D.N.Y.
`
`Sept. 26, 2024); Gordon v. Chambers, No. 20-CV-696, 2024 WL 3533876, at *9 (E.D.N.Y. July
`
`25, 2024).
`
`Here, Plaintiff has only alleged registration of a single copyrighted work – Gangstarr
`
`“Life After Death” (U.S. Registration No. SR 713-381). (TAC at 1; see id. ¶ 37.) To the extent
`
`that Plaintiff alleges infringement claims for