Modu v. Notorious B.I.G. LLC

Background

Chi Modu filed the action representing himself. He alleged that, after he refused to license his copyrighted photograph of Christopher Wallace, the rap artist known as Notorious B.I.G., to the defendants at below-market rates, the defendants brought a trademark action against him and his associates. Modu filed a counterclaim in that California trademark action alleging that Notorious B.I.G., LLC, engaged in unfair trade practices concerning licensing his photograph.

In this New York action, Modu asserted claims against Notorious B.I.G., LLC, Voletta Wallace, Faith Evans, Rick Barlow, ByStorm Entertainment, Wayne Barrow, Tom Bennet, Republic Merchandising, Inc., Remrylie License Group, and John and Jane Does 1–10. He alleged unfair business practices concerning the licensing of his photographs of Wallace, under section 5 of the Federal Trade Commission Act and section 43(a) of the Lanham Act. He also invoked diversity jurisdiction, but the court noted that his amended complaint did not plead facts about the citizenship of all defendants.

Court’s analysis

The court discussed the first-filed rule. That rule creates a strong presumption in favor of the court handling the earlier-filed action when two federal district courts have cases involving the same or substantially similar parties and issues. Unless that presumption is overcome by circumstances such as convenience or other special circumstances, the later-filed case generally should be stayed or dismissed in favor of the earlier case. The court may also transfer the later-filed case to the court handling the earlier action.

The court concluded that this action substantially overlapped with Modu’s pending counterclaim in the California trademark case. Although Modu named only Notorious B.I.G., LLC, in that counterclaim, the court stated that the counterclaim implicated many people and entities named as defendants in this action.

Order

The court directed Modu to submit a brief statement within 30 days addressing whether this case should be stayed, dismissed without prejudice to the pending counterclaim, or transferred to the United States District Court for the Central District of California. Any defendant could also submit a statement within that period. The parties could address convenience of witnesses and parties, the location of documents, and the weight given to Modu’s choice of filing district.

The court directed the Clerk to mail the order to Modu and directed Modu to serve the order on the defendants with the summons and complaint. The order did not itself stay, dismiss, or transfer the action. It stated that, if no party responded within 30 days, the court would transfer the case to the Central District of California under the first-filed rule.