Mosher v. Veyda

Background

John Mosher alleged that he and Keith Elam, also known as “Guru,” formed a music enterprise and worked together on Gangstarr, Jazzmatazz, and 7Grand projects. Mosher claimed that defendants had received royalties and profited from music, copyrights, and trademarks in which he had an interest.

The opinion describes earlier litigation in New York state court involving the Estate of Keith Elam. The state trial court ordered Mosher to pay the Estate and found that he did not own or hold interests in certain works, recordings, and Gangstarr and Jazzmatazz trademarks. It also permanently barred him from specified involvement with those names, logos, and trademarks. The Appellate Division modified that judgment in part, including by reducing the amount Mosher owed, but did not disturb the findings concerning the Estate’s interests in certain corporations and trademarks.

Mosher’s Third Amended Complaint asserted claims for copyright infringement, declaratory judgment, trademark infringement, false designation of origin, unfair competition, and conversion. The defendants who moved to dismiss were Lana Veyda, Patricia Elam, Keith C. Elam, and the Estate of Keith Edward Elam. The complaint also named Christopher Martin, also known as DJ PREMIER, but no summons had been requested or issued for him.

The Court’s Analysis

The defendants argued under Federal Rule of Civil Procedure 12(b)(1) that the trademark claims should be dismissed for lack of subject-matter jurisdiction under the substantiality doctrine. The court denied that part of the motion. It held that the trademark claims were not so frivolous or devoid of merit that they failed to present a federal controversy. The existence of potentially preclusive state-court decisions did not eliminate federal jurisdiction; instead, those decisions could support dismissal for failure to state a claim.

The court nevertheless dismissed the trademark infringement and false-designation claims under Rule 12(b)(6), which addresses whether a complaint states a legally sufficient claim. Mosher alleged that he had owned the “GANG STARR” logo trademark, but acknowledged that its registration expired in 2019. The court also noted the earlier state-court findings that Mosher had no interest or rights in the Gangstarr or Gang Starr names, logos, or trademarks. In addition, the complaint did not provide factual details about the defendants’ alleged use of the mark, lack of permission, or the likelihood that consumers would be confused. The court therefore concluded that the allegations were conclusory and insufficient.

The court dismissed the copyright-infringement claims under Rule 12(b)(6). Mosher identified one registered work, “Life After Death,” and also referred to unidentified and unregistered common-law works. The court held that infringement claims concerning unregistered works could not proceed because the Copyright Act generally requires registration before suit. As to “Life After Death,” the registration identified 7 Grand Records as the copyright claimant, while Mosher did not allege facts plausibly showing that he retained a legal or beneficial ownership interest or a right to sue. The court further found that Mosher did not identify what acts of copying occurred, which defendant committed them, or when they occurred.

The court dismissed the declaratory-judgment claim because the Declaratory Judgment Act does not independently provide federal jurisdiction. After dismissing the federal claims, the court found no remaining actual controversy supporting declaratory relief. The court also dismissed the federal claims against Christopher Martin, even though he had not moved to dismiss, because the court’s reasons for rejecting those claims applied equally to him.

The complaint’s remaining claims were New York claims for unfair competition and conversion. Because all federal claims had been eliminated before trial, the court declined to exercise supplemental jurisdiction over those state-law claims and dismissed them without prejudice.

Disposition

Judge Seibel granted the defendants’ motion to dismiss. The court dismissed Mosher’s claims for trademark infringement, false designation of origin, copyright infringement, and declaratory judgment with prejudice. It dismissed the unfair-competition and conversion claims without prejudice. The court declined to grant Mosher leave to amend again because he had already amended the complaint three times, had received notice of the alleged deficiencies, and had not explained how another amendment would cure them. The Clerk was directed to terminate the motion and close the case.