A.V.E.L.A., Inc. v. Estate of Monroe

34 F. Supp. 3d 311, 2014 WL 3767035
CourtDistrict Court, S.D. New York
DecidedJuly 24, 2014
DocketNo. 12 Civ. 4828(KPF)(JCF)
StatusPublished
Cited by8 cases

This text of 34 F. Supp. 3d 311 (A.V.E.L.A., Inc. v. Estate of Monroe) is published on Counsel Stack Legal Research, covering District Court, S.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
A.V.E.L.A., Inc. v. Estate of Monroe, 34 F. Supp. 3d 311, 2014 WL 3767035 (S.D.N.Y. 2014).

Opinion

MEMORANDUM AND ORDER

JAMES C. FRANCIS IV, United States Magistrate Judge.

The counter-plaintiff in this dispute over who may rightfully license the likeness of film actress Marilyn Monroe requests leave to file an amended counterclaim, adding alter ego allegations and claims of infringement against three entities it seeks to add as new counter-defendants. Background

The plaintiff in this action, A.V.E.L.A., Inc. (“AVELA”), is a company that creates and licenses artwork featuring pop culture figures in the public domain, for use on clothing, novelty items, and other consumer products. (Complaint (“Compl.”), ¶ 1; Answer and Counterclaims (“Answer”) at 17, ¶ 20). In June 2011, the Estate of Marilyn Monroe, LLC (the “Estate”), which holds certain trademarks associated with Marilyn Monroe, including her name and signature, and claims to have protecta-ble rights in her image, persona, and likeness, sent AVELA a cease and desist letter regarding AVELA-licensed products bearing the image of Marilyn Monroe. (Compl., ¶ 9; Answer at 14-16, ¶¶ 9-15). AVELA then sued the Estate, seeking declaratory judgment that the products that AVELA licenses do not infringe on any intellectual property owned by the Estate and also asserting claims of tortious interference. The Estate countersued AVELA and its owner, Leo Valencia, bringing claims of unfair competition, false association, trademark infringement, dilution, and violation of state law. (Answer at 20-28, ¶¶ 39-89). *

The Estate now seeks to add three proposed corporate counter-defendants — IPL, Inc. (“IPL”), X One X Movie Archives Inc. (“X One X”), and V. International Fine Arts Publishing, Inc. (‘V. International”)— that it alleges are the alter-egos of the current counter-defendants, AVELA and Mr. Valencia. According to the proposed amended counterclaim, Mr. Valencia “conducts business under a number of assumed names” and corporations “for the purpose of dissipating the liability of any given entity associated with the licensing business.” (First Amended Counterclaim (“First Am. Counterclaim”) at 7, ¶ 23, attached as Exh. A to Defendant/Counter-Plaintiff The Estate of Marilyn Monroe, LLC’s Memorandum of Law in Support of Motion for Leave to File First Amended Counterclaim and to Add Counter-Defendants (“Counter-Pi. Memo.”)). The Estate alleges that it first learned of these three additional parties during discovery, and that without the amendment, any potential injunctive relief or damages will be inadequate. (Counter-Pi. Memo, at 5). The proposed amendment also includes updated information regarding the trademarks owned and registered by the Estate, and omits certain allegations that AVELA improperly contacted a licensee of the Estate. (Counter-Pi. Memo, at 4). [315]*315The latter changes are not contested by the counter-defendants.

Discovery in this action has been disjointed due to numerous disputes and the replacement of AVE LA’s counsel, and the Estate filed its motion one week before discovery closed. The counter-plaintiff alleges that it first learned of V. International during the deposition of Liza Acuna in September 2013, when Ms. Acuna identified V. International as the licensing agent for AVELA. (Counter-PL Memo, at 5). Following the deposition, the Estate sought documentation of any agreements or payments between Y. International and AVELA. (Counter-Pi. Memo, at 5-6). After a lengthy dispute, unredacted copies of checks showing the payment of agency fees to V. International were produced on January 14, 2014, see A.V.E.L.A., Inc. v. Estate of Marilyn Monroe, No. 12 Civ. 4828, 2014 WL 715540, at *3, *10 (S.D.N.Y. Feb. 24, 2014), adhered to on reconsideration, 2014 WL 1408488 (S.D.N.Y. April 11, 2014); the Estate maintains that these financial documents were “manufactured” to “create the appearance of independence” between Mr. Valencia and V. International (Counter-Pi. Memo, at 4; First Am. Counterclaim at 8, ¶ 32). During the September 13, 2013 deposition, when asked to list the licensees of Marilyn Monroe images, Ms. Acuna included the company Mighty Fine. (Counter-Pi. Memo, at 6; Deposition of Liza Acuna dated Sept. 13, 2013, attached as Exh. E to Declaration of Gina L. Durham dated Dec. 19, 2013 (“Durham 12/19/13 Deck”), at 102-03). Ms. Acuna subsequently clarified that Mighty Fine was not an AVELA licensee, prompting the Estate to subpoena the license agreement from Mighty Fine, which showed that IPL, rather than AVELA, was the licensor. (Counter-Pi. Memo, at 6-7). The Estate deposed a Mighty Fine representative on November 14, 2013, who stated that Mighty Fine licensed Marilyn Monroe products from IPL, provided royalty reports on the products it sold, and considered IPL to be “one and the same” as AVELA. (Deposition of Patricia Tim-sawat dated Nov. 14, 2014, attached as Exh. Q to Durham 12/19/13 Deck, at 54-55). The Estate learned of X One X during Mr. Valencia’s September 30, 2013 deposition, when he stated that AVELA licenses images from X One X in return for a licensing agent fee. (Counter-Pi Memo, at 7). Mr. Valencia also stated that he could not locate a written agreement between AVELA and X One X, nor distinguish between those images owned by AVELA and those owned by X One X. (Counter-Pi. Memo, at 7). According to the Estate, the counter-defendants had not produced any documentation of invoices or payments between AVELA and X One X related to licensing of Marilyn Monroe images at the time the motion was filed. (Counter-Ph Memo, at 7; Declaration of Gina L. Durham dated Feb. 4, 2014, ¶ 6).

Discussion

Rule 15 of the Federal Rules of Civil Procedure provides that courts should “freely give” leave to amend “when justice so requires.” Fed.R.Civ.P. 15(a)(2); see also Foman v. Davis, 371 U.S. 178, 182, 83 S.Ct. 227, 9 L.Ed.2d 222 (1962); Aetna Casualty & Surety Co. v. Aniero Concrete Co., 404 F.3d 566, 603-04 (2d Cir.2005). The Second Circuit has stated that “[t]his permissive standard is consistent with our strong preference for resolving disputes on the merits.” Williams v. Citigroup Inc., 659 F.3d 208, 212-13 (2d Cir.2011) (internal quotation marks omitted); MHANY Management Inc. v. County of Nassau, 843 F.Supp.2d 287, 340 (E.D.N.Y.2012) (“Amendments are generally favored because they tend to facilitate a proper decision on the merits.” (internal quotation marks omitted)). Motions to amend should therefore by denied [316]*316only for reasons of undue delay, bad faith or dilatory motive, undue prejudice to the non-moving party, or futility. See Burch v. Pioneer Credit Recovery, Inc., 551 F.3d 122, 126 (2d Cir.2008) (citing Foman, 371 U.S. at 182, 83 S.Ct. 227); McCarthy v. Dun & Bradstreet Corp., 482 F.3d 184, 200 (2d Cir.2007). The court has broad discretion over such motions. See McCarthy, 482 F.3d at 200. “Although Rule 21, and not Rule 15(a) normally governs the addition of new parties to an action, the same standard of liberality applies under either rule.” Zarycki v. Mount Sinai/NYU Health, No. 02 Civ.

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34 F. Supp. 3d 311, 2014 WL 3767035, Counsel Stack Legal Research, https://law.counselstack.com/opinion/avela-inc-v-estate-of-monroe-nysd-2014.