The opinion of the court was delivered by: Honorable David H. Coar
MEMORANDUM OPINION AND ORDER
Tom Mullen, Brian Loeffler, John Rotonda, Jennifer Kules, Matthew Gunnels, and William Morey (collectively "Plaintiffs"), are suing the Society of Stage Directors & Choreographers, Barbara Hauptman, United Scenic Artists (individually "USA"), John Rando, John Carrafa, Scott Pask, Brian MacDevitt, and Gregory Gale (collectively "Defendants") in this Court for a declaration on non-infringement under the Copyright Act, 28 U.S.C. § 101 et. seq., and Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), (Counts I and II) and defamation (Count III). On December 14, 2006, Plaintiffs filed an amended complaint. Before the Court now are USA's Motion to Dismiss the amended complaint pursuant to Federal Rule of Civil Procedure 12(b)(6) and certain Defendants Motion for Judgment on the Pleadings, both motions assert failure to state a claim upon which relief can be granted. For the reasons stated below, USA's motion is GRANTED partially and DENIED partially; certain Defendant's motion is DENIED.
Plaintiffs seek a declaratory judgment that their Chicago production (the "Chicago Production") of "Urinetown!" the Musical (the "Work") was original and unique and did not copy any of Defendant's creative authorship present in Defendant's Broadway production of the Work (the "Broadway Production") under the Copyright Act. Plaintiffs also seek a declaratory judgment that the Chicago Production did not constitute "passing off" Defendants' creative authorship, if any, in the Broadway Production as Plaintiffs' own, in violation of the Lanham Act. Lastly, Plaintiffs seek damages for Defendants' knowingly false public statement that Plaintiffs staging of the Work in Chicago "plagiarized" substantial elements of the Broadway Production.
Tom Mullen is a professional stage Director, a member of the Society of Stage Directors & Choreographers ("SSDC") and he directed the Chicago Production. Brian Loeffler is a professional Choreographer and he choreographed the Chicago Production. John Rotonda was the Scenic Designer in the Chicago Production. Jennifer Kules was the Lighting Designer in the Chicago Production. Matthew Gunnels was the Associate Director in the Chicago Production. William Morey was the Costume and Wig Designer in the Chicago Production. The SSDC is a New York not-for-profit corporation. Barbara Hauptman is the Executive Director of SSDC. United Scenic Artists ("USA") is a New York not-for-profit corporation. John Rando is the Director of the Broadway Production. John Carrafa is the Choreographer of the Broadway Production. Scott Pask is the Scenic Designer of the Broadway Production. Brian MacDevitt is the Lighting Designer of the Broadway Production. Gregory Gale is the Costume Designer of the Broadway Production.
On or about November 9, 2005, Blue Dog Entertainment, LLC entered into a licensing agreement with Music Theatre International ("MTI"), whereby the Chicago Team was granted a license to use the script and music for Urinetown the Musical ("Urinetown"). The Work was first staged in 1999 at the New York International Fringe Fest by Joseph P. McDonnell, who directed the original production of the Work. A copyright claim to the book and lyrics of Urinetown was registered with the U.S. Copyright Office on August 12, 1998, by Greg Kotis and Mark Hollmann. A copyright claim to the lighting design of Urinetown was registered with the U.S. Copyright Office on August 21, 2006, by Brian MacDevitt. No other copyright claims associated with Urinetown have been registered with the U.S. Copyright Office. In order to make the satire of musical theater conventions successful, it is necessary to borrow heavily from the parodied works themselves, including such elements as stage direction, choreography, scenic design, costumes and lighting. In 2001, the Work was staged again on Broadway by Defendants Rando, Carrafa, Pask, MacDevitt and Gale (the "Broadway Team"). Defendant Rando won the 2001 Tony Award for "Best Director" for his direction of the Work and Defendant Carrafa, was nominated for, but did not win the Tony Award. In 2006, the Work was staged at the Mercury Theatre in Chicago, Illinois by the Chicago Team.
On November 13, 2006 each member of the Chicago Team received a "cease and desist" letter (the "letter") from lawyers representing the Broadway Team, the SSDC and the USA Guild. A true and correct copy of the November 13, 2006 letter was attached to the Amended Complaint. The letter stated that "original contributions" of each member of the Broadway Team were "copied willfully, blatantly and practically wholesale" by each member of the Chicago Team. The letter further stated that the Chicago Team "set out to willfully duplicate [the Broadway Team's creative elements] in their entirety and with extraordinary precision." The letter demanded that within ten days the Chicago Team represent in writing that they agree to cease performing Urinetown (the show closed in May 2006), that Mr. Loeffler "decline and remit" the Jefferson Award and After Dark Award, and that the Chicago team provide an accounting to "assess license fees and damages." The letter closed with an admonition to Plaintiffs that the Defendants authorized their lawyers to "vigorously and promptly pursue their rights in the United States District Court in the event [Plaintiffs] do not comply with the terms of this letter."
On November 14, 2006, the Broadway Team, Defendant Hauptman, representing the SSDC, and USA held a press conference in the SSDC's offices in New York City, where the Defendants publicly released the letter and publicly stated that the Chicago Team plagiarized stage direction, choreography, scenic design, costumes and lighting from the Broadway Team. During the press conference, the Defendants publicly stated that the Chicago Production was "nearly identical" to the Broadway Production, that the Act I Finale was "copied exactly" and the Defendant's called the Chicago Team "plagiarists." Attached to the Amended Complaint is an article in which the Chicago Team is accused of plagiarism. On December 7, 2006, McDonnell, the original director and choreographer of the Work, publicly stated that the Broadway Team had copied substantial portions of McDonnell's creative authorship present in the original staging of the Work.
Plaintiffs allege that the Defendants made public statements that the Chicago Production was "nearly identical" to the Broadway Production, that the Act I Finale was "copied exactly" and that the Chicago Team are "plagiarists" are false and defamatory. According to Plaintiffs, the term "plagiarist" has an objective and factual meaning in the creative arts profession. The clear and unequivocal effect of Defendants' statements is that the Chicago Team intentionally committed professional and intellectual theft. Moreover, the statements were not expressions of opinion. Lastly, the statements were defamatory per se because they attacked the professional honesty, integrity and ability of each member of the Chicago Team and damaged the reputations of each member of the Chicago Team in the eyes of the creative arts community in which they work and in the minds of thousands of writers, directors, choreographers, designers, actors, producers and millions of theatre patrons. The statements were made with actual malice, with the knowledge that they are false or reckless disregard for whether they are false and in with the knowledge that the allegations would likely cause actual harm to the Plaintiffs professional reputations. The allegations were made within sixteen hours of sending the letter to Plaintiffs, in the offices of the very union to which several of the parties belong, giving the allegations and Defendants' a false air of legitimacy and unfairly attacking the Plaintiffs' in such a manner that it would be nearly impossible for the Plaintiffs to defend against such charges.
Plaintiffs request that this Court issue a declaratory judgment that Plaintiffs' production of the Work was unique and not copied protectable creative authorship lawfully owned by the Defendants; issue a declaratory judgment that Plaintiffs' production of the Work was unique and that Plaintiffs did not pass off Defendants' work as their own; issue a permanent injunction against Defendants, jointly and severally, enjoining and prohibiting Defendants, their agents, servants, employees, officers, attorneys, successors and assigns from making any further public statements inconsistent with the judgments of non-infringement; order Defendants, jointly and severally, to place a minimum one-quarter (1/4) page advertisement in Variety Magazine recant their allegations and apologizing to Plaintiffs; order an award of damages against the Defendants, jointly and severally, in an amount to be determined at trial; and order an award of attorney's fees and costs against the Defendants, jointly and severally, as provided by Section 35(a) of the Lanham Act. Plaintiffs conceded in their reply brief that USA had no ownership interests in any copyrights at issue in the Copyright Act and Lanham Act claims.
In reviewing a motion to dismiss for failure to state a claim upon which relief can be granted, the Court accepts all well-pleaded allegations in the plaintiff's complaint as true. Fed. R. Civ. P. 12(b)(6). The purpose of a 12(b)(6) motion is to decide the adequacy of the complaint, not to determine the merits of the case. Gibson v. City of Chicago, 910 F.2d 1510, 1520 (7th Cir. 1990) (citation omitted). A complaint should not be dismissed pursuant to Rule 12(b)(6) unless it fails it provide fair notice of what the claim is and the grounds upon which it rests or it is apparent from the face of the complaint that under no plausible facts may relief be granted. St. John's United Church of Christ v. City of Chicago, 2007 WL 2669403 at *7 (7th Cir. September 13, 2007) (citing Bell Atlantic Corporation v. Twombly, 127 S.Ct. 1955 (May 21, 2007). All reasonable inferences are to be drawn in favor of the plaintiff. Gastineau v. Fleet Mortg. Corp., 137 F.3d 490, 493 (7th Cir. 1998) (citation omitted).
A. Non-Infringement under the Copyright Act ...