Chiykowski v. Goldner

Background

Peter Chiykowski, a visual artist, comics illustrator, and author, sued Marc Goldner, Golden Bell Entertainment, LLC, and Golden Bell Studios, LLC. The complaint asserted claims for copyright infringement, fraudulent inducement, and breach of contract, and sought a declaratory judgment.

Chiykowski alleged that he created illustrations and characters for the game “Turtles Riding Airships” and agreed to work with the defendants to publish and distribute that game and other works. He alleged that he signed a Collaboration Agreement after Goldner assured him that he would retain rights to his characters and could create other work involving them. Under the agreement, Chiykowski was to assign ownership rights in specified works to Golden Bell Entertainment, which would receive exclusive rights to print, distribute, and market those works. He alleged that the defendants did not print, publish, or distribute the books, pay the agreed advances, or provide the promised complimentary copies.

Chiykowski also alleged that Golden Bell Entertainment applied to the United States Patent and Trademark Office to register his “Rock, Paper, Cynic” mark and used his illustrations in support of trademark applications. The defendants filed a partial motion to dismiss the copyright infringement and declaratory-judgment claims under Rule 12(b)(6), which tests whether a complaint states a legally sufficient claim.

Copyright Infringement Claim

To plead copyright infringement, a plaintiff generally must identify the original works, allege ownership, address registration requirements, and identify the acts and period of alleged infringement. The court explained that registration is not required for works originating outside the United States in a country that is a party to the Berne Convention for the Protection of Literary and Artistic Works. The court took judicial notice that Canada is a signatory to that convention.

The court held that Chiykowski adequately pleaded the claim. The Second Amended Complaint identified the illustrations allegedly used in the defendants’ trademark applications, alleged that Chiykowski owned the copyrights under Canadian law, alleged that the illustrations were not United States works because they were first published in Canada or were unpublished, and alleged that the defendants infringed the copyrights by using the illustrations in trademark applications submitted to the United States Patent and Trademark Office. The court therefore denied the motion to dismiss the copyright claim.

Declaratory-Judgment Claim

The defendants argued that the declaratory-judgment claim duplicated the breach-of-contract claim. The court explained that a declaratory judgment should serve a useful purpose by clarifying legal issues and resolving uncertainty, and that courts may reject such claims when other claims would resolve the same issues.

The court concluded that the claims were not duplicative. The breach-of-contract claim sought damages based on the defendants’ alleged failure to pay advances, publish, distribute, market, and commercially exploit two works covered by the Collaboration Agreement. The declaratory-judgment claim instead sought a declaration about ownership rights concerning other works, including a September 2018 short-story compilation, the “Rock, Paper Cynic” trademarks, and future works. Although the court said the declaratory claim could have been pleaded more clearly, it held that the claim was not duplicative and denied the motion to dismiss it.

Disposition

The court denied the defendants’ partial motion to dismiss. The opinion states that this resolved Docket No. 25 and that a previously scheduled post-discovery conference would be held on December 4, 2020.