CRAIG VAN DEN BRULLE, doing CIVIL ACTION NO. NO. FURNISHINGS, (JSR) Plaintiff,

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1 Case 1:06-cv JSR Document Filed 08/30/2006 Filed 08/30/2006 Page 1 of Page 11 1 of 11 UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK CRAIG VAN DEN BRULLE, doing business as as CAPITOL CAPITOL CIVIL ACTION NO. NO. FURNISHINGS, (JSR) Plaintiff, - vs. vs. - NIEDERMAIER INC., JUDY NIEDERMAIER and RIO HAMILTON, Defendants. MEMORANDUM OF LAW IN OPPOSITION TO TO DEFENDANTS MOTION TO DISMISS BRAGAR WEXLER & & EAGEL, PC Ronald PC D. D. Coleman (RC (RC 3875) 3875) 885 Third Avenue Avenue Suite New York, NY NY (212)

2 Case 1:06-cv JSR Document Filed 08/30/2006 Filed 08/30/2006 Page 2 of Page 11 2 of 11 TABLE OF CONTENTS TABLE OF AUTHORITIES ii. PRELIMINARY STATEMENT 1 STATEMENT OF FACTS 1 LEGAL ARGUMENT 5 I. THIS THIS COURT HAS HAS SUBJECT MATTER JURISDICTION OVER THIS CASE AND DEFENDANTS MOTION TO DISMISS SHOULD BE DENIED 5 II. IF THE IF THE COURT COURT FINDS FINDS THAT THAT THERE THERE IS IS NO SUBJECT MATTER JURISDICTION AS CURRENTLY PLED, THE PROPER REMEDY IS FOR THE COURT TO GRANT MR. VAN DEN BRULLE LEAVE TO REPLEAD 7 CONCLUSION 9 i

3 Case 1:06-cv JSR Document Filed 08/30/2006 Filed 08/30/2006 Page 3 of Page 11 3 of 11 TABLE OF AUTHORITIES CASES City Merchandise, Inc. v. Inc. Kingsv. Kings Overseas Corp., WL WL (S.D.N.Y. (S.D.N.Y. 2001) 2001) 6 Corbis Corp. Corp. v. UGO v. Networks, UGO Networks, Inc., 322 Inc., F. Supp. 322 F. Supp. 2d 520 (S.D.N.Y. 2004) 2004) 5 Greene v. v. Columbia Records/Sony Music Music Entertainment, Inc. (S.D.N.Y. Inc. (S.D.N.Y. 2004) 2004) 5 Havens v. v. Time Time Warner, Warner, Inc., 896 Inc., 896 F. Supp. 141, 141, 143 (S.D.N.Y. 143 (S.D.N.Y. 1995) 1995) 6 Lakedreams v. v. Taylor, Taylor, 932 F.2d F.2d 1103 (5th Cir. Cir. 1991) 1991) 6 Lunney v. v. U.S., U.S., 319 F.3d , F.3d , (2d Cir ) (2d Cir. 2003) 5 Manning v. v. Utilities Utilities Mut. Insur. Mut. Co., Insur. Co., 254 F.3d 387, 387, 402 (2d 402 Cir. (2d 2001) Cir. 2001) 8 Oliver Schools, Inc. v. Inc. Foley, v. 930 Foley, F.2d F.2d 248 (2nd Cir. 1991) 1991) 8 Raila v. v. U.S., U.S., 355 F.3d , F.3d , (2d Cir ) (2d Cir. 2004) 2, 5 5 Sebastian Int l Int l v. Consumer v. Consumer Contact Contact (PTY) Ltd., Ltd., 664 F. 664 Supp. F. 909, Supp , 912 (D.N.J. 1987) 1987) 6 Tabachnik v. Dorsey, v. Dorsey, 2005 WL WL (S.D.N.Y. 2005) 2005) 6 U-Neek, Inc. Inc. v. Wal-Mart v. Wal-Mart Stores, Inc., Stores, Inc., 147 F. F. Supp. Supp. 2d 158, 2d 158, 169 (S.D.N.Y. 169 (S.D.N.Y. 2001) 2001) 6 Well-Made Toy Toy Mfg. Mfg. Corp. Corp. v. Goffav. Goffa Int l Corp., Corp., 210 F. 210 Supp. F. 2d Supp d 147 (E.D.N.Y. 2002) 2002) 6 OTHER AUTHORITY 17 U.S.C. 411(a) 411(a) 5 Fed. R. R. Civ. Civ. P. 15(a) P. 15(a) 8, 9 9 ii

4 Case 1:06-cv JSR Document Filed 08/30/2006 Filed 08/30/2006 Page 4 of Page 11 4 of 11 PRELIMINARY STATEMENT Plaintiff Craig Craig Van Den Van Brulle Den submits Brulle this memorandum submits this memorandum of law law in opposition in opposition to the motion by defendants to the motion by defendants Niedermaier Inc., Judy Inc., Niedermaier Judy and Niedermaier Rio Hamilton and Rio Hamilton (collectively defendants ) defendants ) to dismiss Mr. to Van dismiss Den Brulle s Mr. Van Den Brulle s complaint on the on ground the of lack ground of subject of matter lack of subject matter jurisdiction. STATEMENT OF FACTS1 1 Mr. Van Van Den Den Brulle Brulle is a visual artist a visual and sculptor artist whoand sculptor who operates a gallery a gallery and retail establishment, and retail Capitol establishment, Capitol Furnishings, in New in York New City. York Mr. Van City. Den Brulle Mr. created Van Den Brulle created an original work known work as known Lucite Obelisks as Lucite and, at all Obelisks and, at all relevant times, times, has been has and been is still the and owner is of still the the owner of the exclusive rights rights to reproduce to and reproduce distribute, and and to distribute, and to authorize the reproduction the reproduction and distribution and of distribution the Lucite of the Lucite Obelisks. Beginning in or in around or around 2000, the 2000, Lucite Obelisks the Lucite were Obelisks were sold on on Mr. Van Mr. Den Van Brulle s Den behalf Brulle s by high-end behalf retail by high-end retail stores such such as Neiman as Neiman Marcus Marcus and Bergdorf and Goodman, Bergdorf as Goodman, well as well as directly through through Capitol Furnishings. Capitol Furnishings. In approximately In approximately 2003, Mr. Mr. Van Den Van Brulle Den contracted Brulle with defendant contracted with defendant 1 The facts set set forth forth herein herein are based are based on the on Amended the Amended Complaint Complaint filed infiled in this action, see, see, Raila Raila v. U.S., v. 355 U.S., F.3d , F.3d 119 (2d 118, Cir ) (2d(on Cir. 2004) (on motion to to dismiss, dismiss, court court should should accept as accept true all as of the true factual all of the factual allegations in the in complaint) the complaint) and the and Verification the Verification of Counsel filed of Counsel filed herewith. 2

5 Case 1:06-cv JSR Document Filed 08/30/2006 Filed 08/30/2006 Page 5 of Page 11 5 of 11 Neidermaier, Inc., Inc., a gallery a in lower gallery Manhattan, in lower to showmanhattan, to show and sell sell his original his original Lucite Obelisks Lucite at its galleries Obelisks on at its galleries on Mr. Van Van Den Den Brulle s Brulle s behalf in behalf exchange in for a exchange commission. for a commission. Defendant Judy Judy Niedermaier is the principal is the of Niedermaier, principal of Niedermaier, Inc. and and operates operates the company the company and its Chicago and gallery its Chicago from gallery from Chicago, where where she lives. she Defendant lives. Rio Defendant Hamilton is the Rio Hamilton is the manager of of Niedermaier, Inc. s New Inc. s York gallery. New York gallery. At no no time time did Mr. Van did Den Mr. Brulle Van authorize Den any Brulle authorize any defendant to copy to and/or copy duplicate and/or any duplicate of his originalany of his original works or or to offer to for offer sale or sell for any sale copies or of hissell any copies of his original works. works. From 2003 through late 2005, late Neidermaier, 2005, Neidermaier, Inc. sold a Inc. sold a number of of Lucite Lucite Obelisks Obelisks and paid commissions and paid to commissions Mr. Van to Mr. Van Den Brulle. In late In late 2005, however, Mr. Van Mr. Den Van BrulleDen Brulle learned that that Neidermaier, Neidermaier, Inc. galleries Inc. were galleries selling more were selling more Lucite Obelisks Obelisks than they than were they purchasing were from purchasing Mr. Van Den from Mr. Van Den Brulle. To his To shock, his Mr. shock, Van Den Mr. Brulle Van discovered Den Brulle that discovered that the Neidermaier, Inc. galleries Inc. galleries were selling knock were off selling or knock off or counterfeit copies copies of the Lucite of Obelisks, the Lucite and were Obelisks, even and were even promoting and and holding holding out to the out public to the counterfeit the public the counterfeit Lucite Obelisks as the as original the work original of Mr. Van work Den of Brulle. Mr. Van Den Brulle. On September 27, 2005, an an attorney attorney representing representing Mr. Mr. Van Den Brulle Brulle sent a sent letter to a defendants letter to demanding defendants that demanding that they cease reproducing and selling and reproductions selling reproductions of Mr. Van of Mr. Van 3

6 Case 1:06-cv JSR Document Filed 08/30/2006 Filed 08/30/2006 Page 6 of Page 11 6 of 11 Den Brulle s original works. original works. On October 25, 2005, defendant Judy Judy Niedermaier Niedermaier responded to responded Mr. Van Den to Mr. Van Den Brulle s lawyer, lawyer, stating stating We at at Niedermaier would like would to like to have a a cordial relationship relationship with Capital. with We will Capital. sell out We will sell out the obelisks that we that have we and have put through and put another through design another in design in the near near future. future. The obelisks Ms. Niedermaier Ms. Niedermaier was was referring to were to the were unauthorized the unauthorized reproductions reproductions of Mr. Van of Mr. Van Den Brulle s work. work. The letter was The an letter implicit admission was an implicit admission that the the Lucite Lucite Obelisks had Obelisks indeed been had copied indeed at thebeen copied at the direction of one of or one more or defendant. more defendant. Despite Ms. Ms. Niedermaier s October 25, October letter, however, 25, letter, however, Niedermaier, Inc. continued Inc. continued to cause reproductions to cause or reproductions or derivative works works to be made to be of Mr. made Van of Den Mr. Brulle s Van design Den Brulle s design and to to sell sell those those reproductions. reproductions. This lawsuit followed. This lawsuit followed. After this this motion motion was brought, was Mr. brought, Van Den Brulle Mr. Van Den Brulle filed an Amended an Amended Complaint Complaint (no answer having having been filed) been filed) which specifically alleged the alleged refusal of the Copyright refusal of the Copyright Office to issue to a issue registration, a registration, in order to meet all in order to meet all opinions of the of sufficiency the sufficiency of the pleading. of Defendants the pleading. Defendants were asked by letter by letter on Auguston August 25, 2006 to to withdraw withdraw this this motion considering its apparent its apparent mootness but mootness as of the time but as of the time of this this filing, defendants filing, have defendants not responded tohave not responded to plaintiff s request. request. 4

7 Case 1:06-cv JSR Document Filed 08/30/2006 Filed 08/30/2006 Page 7 of Page 11 7 of 11 LEGAL ARGUMENT I. THIS THIS COURT COURT HAS HAS SUBJECT MATTER MATTER JURISDICTION OVER THIS CASE AND DEFENDANTS MOTION TO DISMISS SHOULD BE DENIED Mr. Van Van Den Brulle s Den Brulle s Complaint, and Complaint, the Amended and the Amended Complaint, allege allege that he that filed an he application filed to an register application to register the Lucite Lucite Obelisks Obelisks design with design the Copyright with Office the incopyright Office in full compliance with the with Copyright the Act. Copyright On a motion Act. to On a motion to dismiss based based on lack on of subject lack matter of jurisdiction subject matter jurisdiction pursuant to Federal to Federal Rule of Civil Rule Procedure of Civil Procedure 12(b)(1), the the court should should accept accept as true all as of true the factual all allegations of the factual allegations in the the complaint complaint and must and draw must all reasonable draw all inferences reasonable in inferences in favor of the of non-moving the non-moving party. Raila party. v. U.S., Raila v. U.S., 355 F.3d F.3d 118, (2d (2d Cir. 2004); Cir. Lunney 2004); v. U.S., Lunney 319 v. F.3d U.S., 550, F.3d 550, 554 (2d Cir. Cir. 2003). 2003). There is no is dispute no dispute that subject-matter that subject-matter jurisdiction jurisdiction for a claim a claim of copyright of copyright infringement infringement is not conferred is uponnot conferred upon a federal court until court the United until State the Copyright United Office State Copyright Office ( Copyright Office ) Office ) has either approved has either or denied approved a or denied a pending application for copyright for registration. copyright See registration. See 17 U.S.C. 411(a); Corbis Corbis Corp. v. UGO Corp. Networks, v. UGO Inc., Networks, 322 F. Inc., 322 F. Supp. 2d 520, 521 (S.D.N.Y. 2004); Greene Greene v. Columbia v. Columbia Records/Sony Music Music Entertainment, Inc., Inc., 2004 WL at at *3 (S.D.N.Y. 2004). 2004). Federal courts Federal are, however, courts split are, as however, split as to exactly when when that subject that matter subject jurisdiction matter attaches. jurisdiction attaches. 5

8 Case 1:06-cv JSR Document Filed 08/30/2006 Filed 08/30/2006 Page 8 of Page 11 8 of 11 Thus, courts courts in this in District this have District held that jurisdiction have held that jurisdiction does not not arise arise until the pending until application the pending has beenapplication has been actually approved approved or denied, or which denied, of course which is the of casecourse is the case here. See, See, e.g., Tabachnik e.g., Tabachnik v. Dorsey, v. Dorsey, 2005 WL at at *3 (S.D.N.Y. 2005); City City Merchandise, Merchandise, Inc. v. Kings Inc. v. Kings Overseas Corp., Corp., 2001 WL WL at at *2 (S.D.N.Y. 2001); U- U- Neek, Inc. Inc. v. Wal-Mart v. Wal-Mart Stores, Inc., Stores, Inc., 147 F. F. Supp. Supp. 2d 158, 169 (S.D.N.Y. 2001). 2001). Other courts Other have courts held, however, have held, that however, that jurisdiction is conferred is conferred at the time when at the Copyright time when the Copyright Office receives receives the application the application and fee, even and if a decision fee, even if a decision has not not yet yet been rendered. been rendered. See Lakedreams See v. Lakedreams Taylor, v. Taylor, 932 F.2d 1103, 1108 (5th Cir. Cir. 1991); Well-Made Toy Mfg. Toy Corp. Mfg. Corp. v. Goffa Goffa Int l Corp., Int l Corp., 210 F. F. Supp. Supp. 2d 147, 157 (E.D.N.Y. 2002); Havens Havens v. Time v. Warner, Time Warner, Inc., Inc., 896 F. F. Supp. Supp. 141, 143 (S.D.N.Y. 1995); Sebastian Int l v. Int l Consumer v. Contact Consumer Contact (PTY) Ltd., F. Supp. F. Supp. 909, , (D.N.J ). (D.N.J. 1987). Still, all agree all that agree where, that as here, where, a decision as has here, a decision has actually been been communicated communicated to the applicant, to the and applicant, certainly and certainly where the plaintiff s the plaintiff s pleadings alleges pleadings the fact, alleges the fact, jurisdiction adheres. adheres. Thus this Thus Court need this not Court revisit need this not revisit this issue, because because under either under test Mr. either Van Den test Brulle Mr. Van Den Brulle satisfies this jurisdictional this jurisdictional requirement: his requirement: application his application with the the Copyright Copyright Office on was Office filed on on February was filed on February 21, 2006, it was it refused was refused on Marchon March 7, 2006 and and this this action action was was 6

9 Case 1:06-cv JSR Document Filed 08/30/2006 Filed 08/30/2006 Page 9 of Page 11 9 of 11 not commenced until until April April 14, See Declaration of of Ronald D. Coleman. D. Coleman. The original The Complaint original does notcomplaint does not explicitly allege allege that the Copyright that the Office Copyright refused Mr. Office Van refused Mr. Van Den Brulle s application application March on March 7, 2006, though counsel counsel for Mr. Mr. Van Den Van Brulle Den orally Brulle communicated orally that communicated fact to that fact to defendants on several on several occasions occasions prior to the prior filing of to thisthe filing of this motion. But But the Amended the Amended Complaint, Complaint, filed on Augustfiled on August 28, 2006, does does in fact in allege fact the refusal allege of the Copyright refusal of the Copyright Office, thereby thereby mooting mooting defendants defendants motion. motion. II. IF THE IF COURT THE COURT FINDS FINDS THAT THAT THERE THERE IS NO IS SUBJECT NO SUBJECT MATTER JURISDICTION AS CURRENTLY PLED, THE PROPER REMEDY IS FOR THE COURT TO GRANT MR. VAN DEN BRULLE LEAVE TO REPLEAD As demonstrated above, above, it is black-letter it is law black-letter that law that this Court Court has subject has matter subject jurisdiction matter over thisjurisdiction over this infringement action. action. If, however, If, the Court however, were to the rule Court were to rule that Mr. Mr. Van Van Den Brulle s Den Brulle s failure explicitly failure to allege explicitly that to allege that his application was denied was by denied the Copyright by the Office Copyright on March Office on March 7, 2006 in in the original the original Complaint was Complaint determinative, was and determinative, and that for for some some reason reason the filing the of the filing Amended of Complaint the Amended on Complaint on August 28, 2006 did did not properly not properly remedy this pleading remedy this pleading deficiency, it is well it established well that established the proper remedy that the proper remedy is not not a dismissal a dismissal but rather but to grant rather plaintiff to leave grant to plaintiff leave to replead and and include include that allegation. that allegation. 7

10 Case 1:06-cv JSR Document Filed 08/30/2006 Filed 08/30/2006 Page 10 Page of 1110 of 11 Federal Rule Rule of Civil of Procedure Civil Procedure 15(a) states states that that leave to to be replead be replead should be should freely given be freely when justice given so when justice so requires. Fed. Fed. R. Civ. R. P. 15(a); Civ. Manning P. 15(a); v. Utilities Manning Mut. v. Utilities Mut. Insur. Co., Co., 254 F.3d , F.3d , (2d Cir ) (2d (on Cir. motion 2001) to (on motion to dismiss, the interests the interests of justice of of Rulejustice of Rule 15(a) strongly strongly favor allowing a plaintiff a plaintiff to replead). As to the replead). Circuit has As the Circuit has taught: Rule 15(a) of the of Federal the Federal Rules of Civil Rules Procedure of Civil Procedure provides that that the court the should court grant should leave to amend grant leave to amend freely when when justice so justice requires, so and the requires, and the principle that permission that permission to amend to to state amend a claim to state a claim should be freely be freely granted is granted likewise applicable is likewise to applicable to dismissals for failure for failure to plead an to adequate plead basis an for adequate basis for federal jurisdiction. jurisdiction. In dismissing In a complaint dismissing for a complaint for failure to show to jurisdiction, show jurisdiction, the court should the heed court should heed the admonition of Rule of 15 Rule and allow 15 and amendment allow freely amendment freely if it appears it appears at all possible at all that possible the plaintiff can that the plaintiff can correct the the defect. defect. Thus, in vacating Thus, in a dismissal vacating with a dismissal with prejudice for, inter for, alia, inter failure to alia, state a failure claim to state a claim and lack of subject of subject matter jurisdiction, matter jurisdiction, we have noted we have noted that when when a motion a motion to dismiss to is granted, dismiss the is usual granted, the usual practice is to is grant to leave grant to amend leave the to complaint. amend the complaint. Although the the decision decision whether whether to grant leave to to grant amendleave to amend is within within the discretion the of discretion the district court, of the district court, refusal to grant to leave grant must leave be based must on a valid be based on a valid ground. Where Where the possibility the possibility exists that the exists defect that the defect can be be cured cured and there and is no there prejudice is to theno prejudice to the defendant, leave leave to amend to at least amend once should at least once should normally be be granted granted as a matter as a of matter course. of course. Oliver Schools, Schools, Inc. v. Foley, Inc. v. Foley, 930 F.2d F.2d 248, (2nd Cir. 1991) 1991) (citations (citations and internal and quotations internal omitted). quotations omitted). Here no no answer answer has been has filed, been but filed, because plaintiff but because plaintiff has amended its complaint its complaint once, leave once, of court leave would beof court would be required to file to any file further any amendment. further Fed. amendment. R. Civ. P. Fed. R. Civ. P. 8

11 Case 1:06-cv JSR Document Filed 08/30/2006 Filed 08/30/2006 Page 11 Page of of 11 15(a). Certainly Certainly defendants, defendants, who had initially who defaulted had initially defaulted by failing to file a to timely file response a timely to the complaint response andto the complaint and were granted, nun pro nun tunc, pro additional tunc, time additional to respond time to respond merely by by making making an appearance an appearance at a court-ordered at a motion court-ordered motion for default default judgment, judgment, cannot be heard cannot to complain be heard of to complain of prejudice if Mr. if Van Mr. Den Van Brulle Den were Brulle permitted were to amend permitted the to amend the complaint to add to whatever add whatever technical allegation technical the Court allegation the Court deems necessary to perfect to perfect the pleadings. the Under pleadings. the law Under the law cited in Section in Section (I) above, above, however, however, and in light and of the in light of the amendment already filed, filed, it is respectfully it is submitted respectfully that submitted that there is no is substantive no substantive basis under the basis law on which under the law on which defendants motion motion can be can granted. be granted. CONCLUSION Based on the on foregoing, the Mr. foregoing, Van Den BrulleMr. Van Den Brulle respectfully requests requests that defendants that defendants motion be denied motion in be denied in its entirety entirety and if the and defendants if the motion defendants is granted, motion Mr. is granted, Mr. Van Den Brulle respectfully respectfully requests leave requests to replead. leave to replead. BRAGAR WEXLER & & EAGEL, PC PC By: /s/ Ronald D. D. Coleman (RC-3875) (RC-3875) 885 Third Avenue Avenue Suite New York, NY NY (212) Dated: August 30, 30,