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Jaso v. Coca Cola Co., 537 Fed.Appx.

557 (2013)
2013 Copr.L.Dec. P 30,468
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537 Fed.Appx. 557
This case was not selected for
publication in the Federal Reporter.
Not for Publication in West's Federal Reporter.
See Fed. Rule of Appellate Procedure 32.1
generally governing citation of judicial
decisions issued on or after Jan. 1, 2007. See
also Fifth Circuit Rules 28.7, 47.5.3, 47.5.4.
(Find CTA5 Rule 28 and Find CTA5 Rule 47)
United States Court of Appeals,
Fifth Circuit.
Omar JASO, PlaintiffAppellant
v.
The COCA COLA COMPANY; The
Coca Cola Export Corporation; McCann
Erickson, DefendantsAppellees.
No. 1320045 | Summary
Calendar. | Aug. 2, 2013.
Synopsis
Background: Owner of copyrighted song filed suit against
soft drink manufacturer and its marketing company for
copyright infringement, violations of Racketeer Influenced
and Corrupt Organizations Act (RICO) and Lanham Act,
and other claims. The United States District Court for the
Southern District of Texas dismissed complaint and denied
owner's motion to amend. Owner appealed. The Court of
Appeals, 435 Fed.Appx. 346, affirmed in part, and reversed
and remanded in part to allow owner to file amended
complaint on claims that were not barred on their face. On
remand, the District Court, 2013 WL 77187, again dismissed
claims on summary judgment, and owner appealed.
Holdings: The Court of Appeals held that:
[1] conversion of defendants' motion to dismiss to one for
summary judgment was not abuse of discretion;
[2] sale of calculator in Mexico could not form basis of claim
for copyright infringement;
[3] summary judgment evidence of ringtones made available
to third-party websites did not create fact issue on claim for
copyright infringement;
[4] evidence of defendants' licensing strategies, royalty
payments, and contractual relationship was not relevant to
issue whether they were liable for infringement of copyright;
[5] unsupported, conclusory allegations did not create fact
issue on claims brought under RICO;
[6] RICO claims were barred by four-year limitations period;
and
[7] owner could not recover for alleged reverse passing off
under Lanham Act.
Affirmed.
West Headnotes (10)
[1] Copyrights and Intellectual Property
Summary judgment
Federal Civil Procedure
Motion
District court's conversion of soft drink
manufacturer's and marketing company's
motion to dismiss to one for summary
judgment was not abuse of discretion, in
action for copyright infringement and other
claims, where district court provided notice
of conversion, it gave parties opportunity
to supplement pleadings, and it considered
evidence outside complaint, including evidence
that copyright holder himself submitted.
Fed.Rules Civ.Proc.Rule 12(d), 28 U.S.C.A.
Cases that cite this headnote
[2] Copyrights and Intellectual Property
Scope of Exclusive Rights; Limitations
Sale of calculator in Mexico could not form basis
of claim for copyright infringement.
Cases that cite this headnote
[3] Copyrights and Intellectual Property
Summary judgment
Jaso v. Coca Cola Co., 537 Fed.Appx. 557 (2013)
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Summary judgment evidence of ringtones made
available to third-party websites did not create
fact issue on claim for copyright infringement
arising out of soft drink manufacturer's alleged
use of derivative form of copyrighted song
in commercial advertising, where evidence did
not affirmatively link defendants to alleged
violations.
Cases that cite this headnote
[4] Copyrights and Intellectual Property
Musical works
Evidence of soft drink manufacturer's and
marketing company's licensing strategies,
royalty payments, and contractual relationship
was not relevant to issue whether they were liable
for infringement of copyright with respect to
derivative form of copyrighted song allegedly
used in commercial advertising.
Cases that cite this headnote
[5] Federal Civil Procedure
Racketeering cases
Copyright owner's unsupported, conclusory
assertions that soft drink manufacturer and
its marketing company engaged in pattern
of racketeering activity by threatening to
murder him and his family if he persisted in
seeking legal remedies for alleged copyright
infringement, that they made false statements
to United States Copyright Office, and that
they used, distributed, and broadcast derivative
form of owner's song in their commercial
advertisements, were insufficient to create fact
issue necessary to survive summary judgment on
claim for violations of Racketeer Influenced and
Corrupt Organizations Act (RICO). 18 U.S.C.A.
1961 et seq.
Cases that cite this headnote
[6] Limitation of Actions
Liabilities Created by Statute
Four-year limitations period governing
copyright owner's suit under Racketeer
Influenced and Corrupt Organizations Act
(RICO) against soft drink manufacturer and
its marketing company, based on claim that
defendants threatened to kill owner and his
family if he continued to seek legal remedies for
defendants' use of derivative form of copyrighted
song in commercial advertising, began to run
from date that alleged threats were made. 18
U.S.C.A. 1961 et seq.
Cases that cite this headnote
[7] Limitation of Actions
Liabilities Created by Statute
Four-year limitations period governing
copyright owner's suit under Racketeer
Influenced and Corrupt Organizations Act
(RICO) against soft drink manufacturer and
its marketing company, based on claim that
defendants made false statements to United
States copyright office, began to run from
date false statements were allegedly made. 18
U.S.C.A. 1961 et seq.
Cases that cite this headnote
[8] Limitation of Actions
Liabilities Created by Statute
Four-year limitations period governing
copyright owner's suit under Racketeer
Influenced and Corrupt Organizations Act
(RICO) against soft drink manufacturer and
its marketing company based on claim that
defendants used and distributed derivative
form of copyrighted song for its commercial
advertising, began to run from date that
defendants, rather than third parties, used song.
18 U.S.C.A. 1961 et seq.
Cases that cite this headnote
[9] Antitrust and Trade Regulation
Reverse passing off or palming off
Copyright owner's claim that soft drink
manufacturer and its marketing company copied
ideas or concepts embodied in his own
copyrighted work was not claim for reverse
passing off under Lanham Act. Lanham Act,
43(a), 15 U.S.C.A. 1125(a).
Jaso v. Coca Cola Co., 537 Fed.Appx. 557 (2013)
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Cases that cite this headnote
[10] Antitrust and Trade Regulation
Delay in assertion of rights; laches
Copyright owner's claim under Lanham
Act for reverse passing off against soft
drink manufacturer defendants arising out of
defendants' use and distribution of derivative
form of owner's copyrighted song in commercial
advertising was barred by doctrine of laches,
where allegations were unclear and were based
on actions that occurred nearly two decades ago.
Lanham Act, 43, 15 U.S.C.A. 1125(a).
Cases that cite this headnote
Attorneys and Law Firms
*559 Delphine M. James, Esq., Houston, TX, for Plaintiff
Appellant.
Bruce William Baber, King & Spalding, L.L.P., Atlanta, GA,
Adam Matthew Conrad, King & Spalding, L.L.P., Charlotte,
NC, Kathleen E. McCarthy, King & Spalding, L.L.P., New
York, NY, Tracie Jo Renfroe, Esq., King & Spalding, L.L.P.,
Houston, TX, for DefendantsAppellees.
Appeal from the United States District Court for the Southern
District of Texas, USDC No. 4:10CV2423.
Before REAVLEY, JOLLY, and DAVIS, Circuit Judges.
Opinion
PER CURIAM:
*
Appellant Omar Jaso appeals from the district court's
summary judgment in favor of the defendants on his
complaint for alleged copyright infringement, RICO
violations, and Lanham Act violations. Jaso contends that
he holds a Mexican copyright in a song entitled El Juego,
and that in 1994 the Appellees (collectively Coca Cola
defendants) began unlawfully using a derivative work
entitled Always CocaCola in an advertising campaign.
Jaso brought an unsuccessful criminal complaint against
Coca Cola in Mexico in the 1990s before filing the instant
suit in 2010. Because of the lengthy passage of time since the
Coca Cola defendants allegedly began using Jaso's song, the
district court dismissed the complaint as barred by limitations.
We reversed in part because some claims in a proposed
amended complaint were not barred, at least on their face,
and we remanded for the district court to allow Jaso to file
his amended complaint. See Jaso v. The Coca Cola Co., 435
Fed.Appx. 346 (5th Cir.2011) (Jaso I ). The district court
again dismissed the complaint on remand. Reviewing the
record de novo, see, e.g., Tekelec, Inc. v. Verint Sys., Inc., 708
F.3d 658, 662 (5th Cir.2013), we AFFIRM for the following
reasons.
Jaso's claim that the district court failed to comply with the
mandate of Jaso I is without merit. Our prior opinion held that
the district court should have granted Jaso leave to amend
his complaint in order to allege several claims that were
not facially barred on limitations grounds. See Jaso I, 435
Fed.Appx. at 35859. On remand, the district court ordered
Jaso to file an amended complaint that was consistent with
our opinion. Because Jaso I had held that some of the claims
contained in the proposed amended complaint were barred
while other claims should be permitted to go forward, the
district court's order at bar was not erroneous and complied
with both the letter and spirit of the mandate. League of
United Latin Am. Citizens, Dist. 19 v. City of Boerne, 675
F.3d 433, 438 (5th Cir.2012) (internal quotation marks and
citation omitted).
[1] There is also no merit to Jaso's claim that the
district court improperly converted the motion to dismiss
into a motion for summary judgment. The district court
provided notice of the conversion, *560 gave the parties
an opportunity to supplement their pleadings, and considered
evidence outside of the complaint, some of which Jaso
himself submitted. There was no error. See Bolen v. Dengel,
340 F.3d 300, 31213 (5th Cir.2003); see also Fed.R.Civ.P.
12(d).
[2] Nor did the district court incorrectly assign the burden
of proof on summary judgment or err in dismissing the
copyright claims. The Coca Cola defendants met their burden
as movants by pointing out that Jaso's complaint, with its
voluminous attached exhibits, failed to connect them to the
alleged infringing acts associated with the calculator and the
ringtones. See ContiCommodity Servs., Inc. v. Ragan, 63 F.3d
438, 441 (5th Cir.1995) (holding that a defendant may meet
its burden of showing there is no genuine issue of material
fact by pointing out the lack of evidence supporting an issue
for which the plaintiff bears the burden of proof).
Jaso v. Coca Cola Co., 537 Fed.Appx. 557 (2013)
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[3] Because Jaso first learned that the Coca Cola defendants
were allegedly infringing his copyright in 1994, but he did
not file the instant suit until 2010, he could sue for copyright
infringement only for alleged violations that occurred within
three years of his filing suit, i.e. after 2007. See 17 U.S.C.
507(b). Jaso's only claims of infringement after that
date concerned a calculator sold in Mexico and ringtones
allegedly available on third-party websites. There was no
evidence affirmatively linking the defendants to these alleged
violations, however. See, e.g., Alcatel USA, Inc. v. DGI
Techs., Inc., 166 F.3d 772, 790 (5th Cir.1999) (holding
that a claim for copyright infringement requires, inter alia,
copying by the defendant). Moreover, the sale in Mexico
was an improper basis for the copyright claim because,
with limited exception, the copyright laws generally do not
have extraterritorial application. Update Art, Inc. v. Modiin
Publ'g, Ltd., 843 F.2d 67, 73 (2d Cir.1988). At most, Jaso's
evidence related to the calculator and the ringtones amounted
to only a scintilla, and thus was insufficient to avoid summary
judgment. See Little v. Liquid Air Corp., 37 F.3d 1069, 1075
(5th Cir.1994) (en banc).
For similar reasons, Jaso's claim for contributory
infringement also fails, see Bridgeport Music, Inc. v.
Diamond Time, Ltd., 371 F.3d 883, 889 (6th Cir.2004)
(holding that [t]here can be no contributory infringement
without a direct infringement), as does his claim for
vicarious infringement, which is based only on alleged
receipts from 1994, long before he filed the instant suit.
[4] Jaso next claims that the district court improperly denied
his request for further discovery. His Rule 56(d) motion
sought depositions related to the Coca Cola defendants'
licensing strategies, royalty payments, and contractual
relationship. The district court held that the information Jaso
sought related to damages, not liability. After reviewing the
motion, we agree and see no abuse of discretion. See Am.
Family Assurance Co. of Columbus v. Biles, 714 F.3d 887,
894 (5th Cir.2013).
[5] [6] [7] [8] Jaso's claim under RICO also lacks
merit. As stated in the amended complaint, Jaso essentially
claims that the Coca Cola defendants engaged in a pattern
of racketeering activity by threatening to murder him and his
family if he continued to seek legal remedies against them, by
making false statements to the United States copyright office,
and by using, distributing, and broadcasting the Always song
in their commercial advertising. Jaso's claim is supported
primarily by conclusory assertions, which may not prevent
summary judgment. See Little, 37 F.3d at 1075. Moreover, a
civil RICO claim must *561 be brought within four years
after it accrues. See Agency Holding Corp. v. MalleyDuff
& Assocs., Inc., 483 U.S. 143, 156, 107 S.Ct. 2759, 2767,
97 L.Ed.2d 121 (1987). As noted by the district court, Jaso
admitted that the alleged threats occurred in 2000 and the
alleged false statements occurred in 1994. With respect to
the advertising, Jaso's complaint relied on invoices also
from 1994. We further note that there was some evidence in
the record suggesting that the defendants stopped using the
Always song in 2000, at least in television advertising. Yet,
Jaso provided no evidence that the defendants, rather than
third-parties, distributed or authorized the distribution of the
allegedly offending song at a later time.
[9] With respect to his Lanham Act claim, Jaso asserts that
the Coca Cola defendants are liable for reverse passing off.
See 15 U.S.C. 1125(a). Jaso has not alleged, however, that
the defendants have taken a tangible copy of his work and
tried to sell it as their own; rather, his claim essentially is that
the defendants have copied the ideas or concepts embodied
in his own copyrighted work. This is a copyright claim and
is not actionable under the Lanham Act. See Gen. Universal
Sys., Inc. v. Lee, 379 F.3d 131, 149 (5th Cir.2004).
[10] Moreover, even if Jaso had sufficiently stated a cause
of action for reverse passing off, Jaso is incorrect that Jaso
I held the defendants had waived the laches defense. In Jaso
I, we held only that because the defendants had not argued
prejudice, and because prejudice was not apparent on the face
of Jaso's complaint, the district court erroneously granted the
motion to dismiss on limitations grounds. See Jaso I, 435
Fed.Appx. at 356. We did not hold that Jaso had otherwise
stated a sufficient claim or that on remand the district court
could not on summary judgment reconsider the Lanham Act
claim and laches issue, or any other issue for that matter.
Upon review of the complaint, we agree with the district court
that Jaso's imprecise claims about conduct that is nearly two
decades old, or five times the four-year limitations period,
was prejudicial. See Elvis Presley Enters., Inc. v. Capece, 141
F.3d 188, 205 (5th Cir.1998) (laches bars a claim when the
plaintiff's inexcusable delay is prejudicial to the defendant).
Finally, with respect to his claim for declaratory judgment,
Jaso provides only block quotes from Jaso I and from
the district court's opinion rather than citing authority and
providing analysis. Because the issue is inadequately briefed,
we do not consider it. See Swindle v. Livingston Parish Sch.
Jaso v. Coca Cola Co., 537 Fed.Appx. 557 (2013)
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Bd., 655 F.3d 386, 392 & n. 6 (5th Cir.2011); see also Fed.
R.App. P. 28(a)(9)(A).
AFFIRMED.
Parallel Citations
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Footnotes
*
Pursuant to 5TH CIR. R. 47.5, the court has determined that this opinion should not be published and is not precedent except under
the limited circumstances set forth in 5TH CIR. R. 47.5.4.
End of Document 2014 Thomson Reuters. No claim to original U.S. Government Works.