Omar Jaso v. Coca Cola Company , 537 F. App'x 557 ( 2013 )

Case: 13-20045 Document: 00512329886 Page: 1 Date Filed: 08/02/2013
IN THE UNITED STATES COURT OF APPEALS
FOR THE FIFTH CIRCUIT United States Court of Appeals
Fifth Circuit
FILED
August 2, 2013
No. 13-20045 Lyle W. Cayce
Summary Calendar Clerk
OMAR JASO,
Plaintiff-Appellant
v.
THE COCA COLA COMPANY; THE COCA COLA EXPORT
CORPORATION; MCCANN ERICKSON,
Defendants-Appellees
Appeal from the United States District Court
for the Southern District of Texas
USDC No. 4:10-CV-2423
Before REAVLEY, JOLLY, and DAVIS, Circuit Judges.
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
*
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 R. 47.5, the court has determined that this opinion should not
be published and is not precedent except under the limited circumstances set forth in 5TH CIR.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.
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No. 13-20045
entitled “Always Coca-Cola” 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 F. App’x 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 F. App’x at
358–59. 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).
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, 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, 312–13 (5th Cir. 2003); see also Fed. R. Civ. P. 12(d).
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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).
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
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infringement”), as does his claim for vicarious infringement, which is based only
on alleged receipts from 1994, long before he filed the instant suit.
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).
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 be
brought within four years after it accrues. See Agency Holding Corp. v.
Malley-Duff & Assocs., Inc., 483 U.S. 143, 156, 107 S. Ct. 2759, 2767 (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.
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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).
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 F. App’x 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. Bd., 655
F.3d 386, 392 & n.6 (5th Cir. 2011); see also Fed. R. App. P. 28(a)(9)(A).
AFFIRMED.
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