United States District Court, S.D. Florida
P. GAYLES UNITED STATES DISTRICT JUDGE
CAUSE came before the Court upon Defendant's Motion to
Dismiss Copyright Claims for Lack of Declaratory Judgment
Jurisdiction [ECF No. 6]. The Court has reviewed the Motion
and the record and is otherwise fully advised. For the
reasons that follow, the Motion is granted.
Tobias Designs, Inc. (“Plaintiff”) and Defendant
Chromcraft Revington Douglas Ind., Inc.
(“Defendant”) are furniture companies, each
producing swivel chairs. On September 7, 2016, Defendant sent
a cease and desist letter to Plaintiff and one of
Plaintiff's distributors alleging that Plaintiff had
infringed on Defendant's designs and intellectual
property and Defendant's original copyrighted work with
respect to a particular chair. Defendant threatened suit for
both trade dress and copyright infringement. Plaintiff
responded on October 4, 2016, denying liability.
acquiring new counsel, Chromcraft sent a second cease and
desist letter to Plaintiff, threatening legal action for only
the trade dress claim and eliminating the reference to
copyright infringement. In lieu of responding, Plaintiff
filed this action seeking declaratory relief. In particular,
Plaintiff seeks a declaration that (1) Defendants's
alleged copyrights are invalid (Claim I); (2) Plaintiff has
not infringed on any of Defendant's copyrights (Claim
II); (3) Defendant's alleged trade dress is unenforceable
(Claim III); and (4) Plaintiff has not infringed on
Defendant's trade dress.
November 10, 2016, Defendant sent Plaintiff a draft covenant
not to sue. The proposed covenant promised not to pursue
legal action for copyright infringement against Plaintiff
with respect to any products or furniture designs used, sold,
or marketed by Plaintiff as of the effective date. The
proposed covenant was not signed and appeared to require the
signatures of both Defendant and Plaintiff to be effective
Plaintiff rejected the proposed covenant.
November 15, 2016, Defendant moved to dismiss Claims I and II
of the Complaint arguing that the Court has no jurisdiction
over those claims because (1) there are no registered
copyrights at issue and (2) the proposed covenant not to sue
eliminates any case or controversy. Defendant also sought
sanctions against Plaintiff.
December 9, 2016, Defendant filed an amended version of the
proposed covenant adding that “Chromcraft [Defendant]
agrees that this Agreement shall be binding upon it even
absent signature of Tobias [Plaintiff] for the sake of
resolving the pending motion.” [ECF No. 15-1].
courts are courts of limited jurisdiction. They possess only
that power authorized by Constitution and statute.”
Kokkonen v. Guardian Life Ins. Co. of Am., 511 U.S.
375, 377 (1994). “A district court must have
jurisdiction under at least one of the three types of
subject-matter jurisdiction: (1) jurisdiction pursuant to a
specific statutory grant; (2) federal question jurisdiction
pursuant to 28 U.S.C. § 1331; or (3) diversity
jurisdiction pursuant to 28 U.S.C. § 1332(a).”
Butler v. Morgan, 562 F.App'x 832, 834 (11th
Cir. 2014) (citation omitted). “It is to be presumed
that a cause lies outside this limited jurisdiction . . . and
the burden of establishing the contrary rests upon the party
asserting jurisdiction.” Kokkonen, 511 U.S. at
377 (citations omitted).
motion to dismiss for lack of subject matter jurisdiction
pursuant to Fed.R.Civ.P. 12(b)(1) can be based upon either a
facial or factual challenge to the complaint.”
McElmurray v. Consol. Gov't of Augustana-Richmond
Cty., 501 F.3d 1244, 1251 (11th Cir. 2007) (citing
Williamson v. Tucker, 645 F.2d 404, 412 (5th Cir.
1981)). A facial challenge provides Plaintiff with similar
safeguards to those of a Rule 12(b)(6) motion, and “the
court must consider the allegations in the plaintiff's
complaint as true.” Id. In considering a
facial attack on the complaint, the court must look to
whether the plaintiff has “sufficiently alleged a basis
of subject matter jurisdiction.” Id. The court
can consider the complaint as well as the attached exhibits.
Id. “Factual attacks challenge subject matter
jurisdiction in fact, irrespective of the pleadings. In
resolving a factual attack, the district court may consider
extrinsic evidence such as testimony and affidavits.”
Morrison v. Amway Corp.¸ 323 F.3d 925 n.5
(11th Cir. 2003). However, where “the existence of
subject matter jurisdiction is inextricably intertwined with
material facts affecting the merits of the claim, a district
court must be guided by the standard for summary judgment
motions under Fed.R.Civ.P. 56.” Bennett v. United
States, 102 F.3d 486, 488 (11th Cir. 1996).
Declaratory Judgment Act
Declaratory Judgment Act grants the federal district courts
the power to “declare the rights and other legal
relations of any interested party seeking such declaration,
whether or not further relief is or could be sought.”
28 U.S.C. § 2201(a). “An essential element for a
declaratory judgment action is the existence of an
‘actual controversy' between the parties, a term
which holds the same meaning as the cases and controversies
requirement of Article III to the United States
Constitution.” Sprint Sols., Inc. v. 4 U Cell,
LLC, No. 2:15-CV-605-FTM-38CM, 2016 WL 1244528, at *2
(M.D. Fla. Mar. 30, 2016). “A case or controversy must
exist at the time the declaratory judgment action is
filed.” GTE Directories Pub. Corp. v. Trimen Am.,
Inc., 67 F.3d 1563, 1568 (11th Cir. 1995). “The
test for an ‘actual controversy' under the
Declaratory Judgment Act does not require a present dispute,
but only the ‘practical likelihood' that a dispute
will arise.” Tudor Ins. Co. v. Zelwin, LLC,
No. 8:16-CV-376-T-30JSS, 2016 WL 1383040, at *1 (M.D. Fla.
Apr. 7, 2016). “[A]n ‘actual controversy'
exists where ‘there is a substantial controversy,
between parties having adverse legal interests, of sufficient
immediacy and reality to warrant the issuance of a
declaratory judgment.'” Blitz Telecom
Consulting, LLC v. Peerless Network, Inc., 151 F.Supp.3d