Case 1:18-cv-05930-MKB-ST Document 211 Filed 09/11/22 Page 1 of 8 PageID #: 2821
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF NEW YORK
`
`---------------------------------------------------------------
`
`
`
`
`
`
`
`
`
`MEMORANDUM & ORDER
`18-CV-5930 (MKB)
`
`TAJE MONBO and DEAFUEH MONBO,
`
`
`
`
`
`Plaintiffs,
`
`
`
`v.
`
`
`
`
`
`
`
`
`
`
`
`LOTFY NATHAN, RED GAP FILM GROUP,
`LLC, VERTICAL ENTERTAINMENT, LLC,
`OSCILLOSCOPE PICTURES, INC.,
`OSCILLOSCOPE, INC., DANIEL BERGER,
`THOMAS SLADEK, OVERBROOK
`ENTERTAINMENT, INC., OVERBROOK
`ENTERTAINMENT, LLC, SONY PICTURES
`ENTERTAINMENT, INC., ERIC BLAIR,
`WILLARD CARROLL SMITH, JR., MISSION
`FILM, INC., and MARIA MOCHIN individually
`and doing business as MISSION FILM
`PRODUCTIONS,
`
`
`
`
`
`
`
`
`
`
`Defendants.
`
`---------------------------------------------------------------
`
`MARGO K. BRODIE, United States District Judge:
`
`Plaintiffs Taje Monbo and Deafueh Monbo, proceeding pro se, commenced the above-
`
`captioned action on October 23, 2018, and filed an Amended Complaint on August 29, 2019,
`
`against Defendants Lotfy Nathan, Red Gap Film Group, LLC (“Red Gap”), and Vertical
`
`Entertainment, LLC (“Vertical Entertainment”) (collectively, the “Nathan Defendants”);
`
`Oscilloscope Pictures, Inc., Oscilloscope Inc., Daniel Berger, and Thomas Sladek (collectively,
`
`the “Oscilloscope Defendants”); Overbrook Entertainment, Inc., Overbrook Entertainment, LLC,
`
`Willard Carroll Smith, Jr., and Sony Pictures Entertainment, Inc. (collectively, the “SPE
`
`Defendants”); and Maria Mochin (both individually and doing business as Mission Film
`
`Productions), Mission Film, Inc., and Eric Blair. (Compl., Docket Entry No. 1; Am. Compl.,
`
`

`

`Case 1:18-cv-05930-MKB-ST Document 211 Filed 09/11/22 Page 2 of 8 PageID #: 2822
`
`Docket Entry No. 98.) Plaintiffs alleged that the Nathan Defendants’ 2013 documentary about
`
`an aspiring dirt-bike rider in Baltimore, titled “12 O’Clock Boys” (the “2013 Documentary”),
`
`and the SPE Defendants’ feature film based on it (the “Feature Film”) infringe their copyrights in
`
`their 2001 film “12 O’Clock Boyz” (the “2001 Documentary”) and 2003 sequel “12 O’Clock
`
`Boyz: The Paparazzi Edition” (the “2003 Documentary”), featuring the 12 O’Clock Boyz dirt-
`
`bike stunt group. As also relevant here, Plaintiffs brought claims for unjust enrichment and
`
`violations of the Lanham Act and related Maryland trademark law and sought declaratory
`
`judgments invalidating the Nathan Defendants’ copyright registrations in the 2013 Documentary
`
`and six DVDs Nathan produced in 2008 entitled “The Twelve O’Clock Boyz” (the “2008
`
`DVDs”) and declaring that the SPE Defendants’ Feature Film infringes their copyrights. On
`
`September 4, 2019, Plaintiffs also filed a motion for the issuance of a request to the Register of
`
`Copyrights pursuant to 17 U.S.C. § 411(b)(2).1
`
`On February 6, 2020, the SPE Defendants moved to dismiss the Amended Complaint,2
`
`and on August 26, 2022, the Court granted the SPE Defendants’ motion (the “August 2022
`
`Decision”). (Aug. 2022 Decision, Docket Entry No. 209.) On September 2, 2022, Plaintiffs
`
`refiled their opposition to the SPE Defendants’ motion to dismiss styled as a motion for
`
`
`1 (Pls.’ Mot. for Issuance of Request 1 (“Pls.’ Mot. for Issuance”), Docket Entry No.
`103; Nathan Defs.’ Mem. in Opp’n to Pls.’ Mot. for Issuance (“Nathan Defs.’ Opp’n”), Docket
`Entry No. 109; Pls.’ Reply to Nathan Defs.’ Opp’n (“Pls.’ Reply”), Docket Entry No. 111; see
`also Pls.’ Second Mot. for Issuance of Request, Docket Entry No. 169; Decl. of Alan R.
`Friedman, Docket Entry No. 172.)
`
` 2
`
` (SPE Defs.’ Mot. to Dismiss (“SPE Defs.’ Mot.”), Docket Entry No. 147; SPE Defs.’
`Mem. in Supp. of SPE Defs.’ Mot. (“SPE Defs.’ Mem.”), Docket Entry No. 148; Pls.’ Opp’n to
`SPE Defs.’ Mot., Docket Entry No. 142; SPE Defs.’ Resp. to Pls.’ Opp’n (“SPE Defs.’ Reply”),
`Docket Entry No. 154.)
`
`
`
`
`2
`
`

`

`Case 1:18-cv-05930-MKB-ST Document 211 Filed 09/11/22 Page 3 of 8 PageID #: 2823
`
`reconsideration of the August 2022 Decision.3 (Compare Pls.’ Mot. for Recons., Docket Entry
`
`No. 210; with Pls.’ Opp’n to SPE Defs.’ Mot.)
`
`For the reasons discussed below, the Court denies Plaintiffs’ motion for reconsideration
`
`and motion for the issuance of a request to the Register of Copyrights.
`
`I. Background
`
`In the August 2022 Decision,4 the Court found that it lacked “both specific and general
`
`jurisdiction over Overbrook Entertainment, Inc., Overbrook Entertainment, LLC, and Smith” and
`
`dismissed the claims against them without prejudice. (Aug. 2022 Decision 109.) The Court
`
`found that “Plaintiffs’ claims against these Defendants nevertheless fail for the reasons discussed
`
`. . . with respect to Sony Pictures Entertainment, Inc.” (Id.)
`
`With respect to Sony Pictures Entertainment, Inc., the Court found that Plaintiff’s
`
`copyright infringement claim failed because Plaintiffs’ works and the Feature Film are not
`
`substantially similar, and Plaintiffs’ claims of vicarious and contributory infringement failed
`
`“because neither the 2013 Documentary nor the Feature Film infringes on Plaintiffs’ copyrights.”
`
`(Id. at 111.) In addition, the Court found that Plaintiffs’ federal and state trademark claims5
`
`
`3 The Court’s August 2022 Decision also addressed the Nathan Defendants’ and
`Oscilloscope Defendants’ joint motion to dismiss the Amended Complaint, which the Court
`converted into a summary judgment motion. Plaintiffs do not seek reconsideration of the Court’s
`decision on the joint motion.
`
` 4
`
` The Court assumes the parties’ familiarity with the factual and procedural background
`of this case, as set forth in the August 2022 Decision.
`
` 5
`
` Plaintiffs raised claims of trademark infringement under section 32(1) of the Lanham
`Act, 15 U.S.C. § 1114(1) based on the SPE Defendants’ use and continued use of “reproductions,
`copies, and colorable imitations of Plaintiffs’ registered 12 O’Clock Boyz [m]arks” in
`connection with advertising of the Feature Film, (Am. Compl. ¶ 227); trademark infringement,
`false designation of origin, and unfair competition under section 43(a) of the Lanham Act, 15
`U.S.C. § 1125(a), based on the SPE Defendants’ use of the phrase “12 O’Clock Boys” as the title
`
`
`
`
`3
`
`

`

`Case 1:18-cv-05930-MKB-ST Document 211 Filed 09/11/22 Page 4 of 8 PageID #: 2824
`
`based on internet references to “Twelve” and “12 O’Clock Boys” as potential titles for the
`
`Feature Film failed because “[t]he SPE Defendants’ use of ‘Twelve’ as a potential title cannot
`
`serve as the basis for Plaintiffs’ trademark claims, as Plaintiffs do not allege that they have a
`
`valid trademark in the word ‘Twelve,’” and “their use of the phrase ‘12 O’Clock Boys’ as a
`
`potential title on Wikipedia, IMDB, or in advertising for the film [cannot] serve as a basis for
`
`their trademark claims, as such claims are barred by the First Amendment” under Rogers v.
`
`Grimaldi, 875 F.2d 994 (2d Cir. 1989). (Id. at 114–15.) The Court also found that “because
`
`Plaintiffs fail to state claims of direct trademark infringement, their claims of contributory and
`
`vicarious infringement also fail,” and “because the 12 O’Clock Boyz mark is not sufficiently
`
`famous to be the subject of a dilution claim, this claim also fails.”6 (Id. at 116.) The Court found
`
`that Plaintiffs failed to state an unjust enrichment claim under Maryland law because they “failed
`
`to plausibly allege that the SPE Defendants had an ‘appreciation or knowledge’ of the benefit
`
`allegedly conferred on them by their use of the phrase ‘12 O’Clock Boys’ in advertising the
`
`Feature Film” and “also failed to plausibly allege that it would be inequitable to allow the SPE
`
`Defendants to ‘retain this benefit without the payment of its value,’ as Plaintiffs . . . failed to
`
`state a claim that the SPE Defendants’ use of the phrase infringed their mark and that their
`
`
`of the Feature Film, (id. ¶ 229); trademark dilution under section 43(c) of the Lanham Act, 15
`U.S.C. § 1125(c), based on the SPE Defendants “casting random riders” as 12 O’Clock Boys,
`(id. ¶ 233); trademark infringement under Maryland Code Business Regulation § 1-414 et seq.,
`(id. ¶ 244); trademark infringement, false advertising, and unfair competition under the Maryland
`common law, (id. ¶¶ 246–248); and contributory and vicarious trademark infringement under
`federal law and the Maryland common law, (id. ¶ 251).
`
` 6
`
` Because the Court granted the SPE Defendants’ motion to dismiss Plaintiffs’ trademark
`claims on these grounds, the Court “decline[d] to consider the SPE Defendants’ additional
`arguments that their use of the phrase ‘12 O’Clock Boys’ as a potential title is fair use and that
`Plaintiffs have abandoned their trademark claims by failing to respond to the SPE Defendants’
`arguments.” (Aug. 2022 Decision 115 n.35.)
`
`
`
`
`4
`
`

`

`Case 1:18-cv-05930-MKB-ST Document 211 Filed 09/11/22 Page 5 of 8 PageID #: 2825
`
`retention of any benefits due to the use of the phrase ‘12 O’ Clock Boys’ is therefore ‘unjust.’”
`
`(Id. at 117.) The Court also found that Plaintiffs failed to state an unjust enrichment claim under
`
`New York law because they failed to allege “a relationship between themselves and the SPE
`
`Defendants.” (Id. at 118.)
`
`The Court denied Plaintiffs leave to amend, noting that the problems with their claims are
`
`substantive because “Plaintiffs copyright claims fail as a matter of law; they cannot state their
`
`trademark claims based on the SPE Defendants’ use of the phrases ‘Twelve’ and ‘12 O’Clock
`
`Boys’ as potential titles because they do not own a copyright in the phrase ‘Twelve’ and their
`
`claims based on the phrases ‘Twelve’ and ‘12 O’Clock Boys’ are also barred by the First
`
`Amendment under Rogers; and they cannot state their trademark dilution claim because the mark
`
`is not famous enough to support this claim, or state their unjust enrichment claim, which is
`
`premised on their trademark claims.” (Id. at 121–22.)
`
`II. Discussion
`
`a. Standard of review
`
`The standard for granting a motion for reconsideration “is strict, and reconsideration will
`
`generally be denied unless the moving party can point to controlling decisions or data that the
`
`court overlooked — matters, in other words, that might reasonably be expected to alter the
`
`conclusion reached by the court.” Van Buskirk v. United Grp. of Cos., Inc., 935 F.3d 49, 54 (2d
`
`Cir. 2019) (quoting Shrader v. CSX Transp., Inc., 70 F.3d 255, 257 (2d Cir. 1995)); see also
`
`Local Civ. R. 6.3 (providing that the moving party must “set[] forth concisely the matters or
`
`controlling decisions which counsel believes the [c]ourt has overlooked”).
`
`It is thus well-settled that a motion for reconsideration is “not a vehicle for relitigating
`
`old issues, presenting the case under new theories, securing a rehearing on the merits, or
`
`
`
`5
`
`

`

`Case 1:18-cv-05930-MKB-ST Document 211 Filed 09/11/22 Page 6 of 8 PageID #: 2826
`
`otherwise taking [another] bite at the apple.” U.S. for Use & Benefit of Five Star Elec. Corp. v.
`
`Liberty Mut. Ins. Co., 758 F. App’x 97, 101 (2d Cir. 2018) (alteration in original) (quoting
`
`Analytical Survs., Inc. v. Tonga Partners, L.P., 684 F.3d 36, 52 (2d Cir. 2012), as amended,
`
`(July 13, 2012)). “A motion for reconsideration is ‘neither an occasion for repeating old
`
`arguments previously rejected nor an opportunity for making new arguments that could have
`
`previously been made.’” Salveson v. JP Morgan Chase & Co., 166 F. Supp. 3d 242, 248
`
`(E.D.N.Y. 2016) (quoting Simon v. Smith & Nephew, Inc., 18 F. Supp. 3d 423, 425 (S.D.N.Y.
`
`2014)), aff’d, 663 F. App’x 71 (2d Cir. 2016).
`
`b. The Court denies Plaintiffs’ motion for reconsideration
`
`Although Plaintiffs seek reconsideration of the August 2022 Decision granting the SPE
`
`Defendants’ motion to dismiss, they have merely refiled their opposition to the SPE Defendants’
`
`motion without the original exhibits. Therefore, their motion for reconsideration is not
`
`responsive to the Court’s August 2022 Decision. Accordingly, because Plaintiffs have not
`
`pointed to any controlling law or facts that the Court overlooked, the Court finds that Plaintiffs
`
`have not met the standard for reconsideration.
`
`c. The Court denies Plaintiffs’ motion for the issuance of a request to the
`Register of Copyrights
`
`In their motion for reconsideration (and thus also in their opposition to the SPE
`
`Defendants’ motion to dismiss), Plaintiffs note that they “filed a [m]otion for the [i]ssuance of a
`
`[r]equest to the Register of Copyrights” pursuant to 17 U.S.C. § 411(b)(2) on September 4, 2019,
`
`and that the Court has “deferred ruling” on the motion. (Pls.’ Mot. for Recons. 16.) In their
`
`motion for the issuance of a request to the Register of Copyrights, Plaintiffs ask the Court to
`
`request that the Register of Copyrights advise the Court on whether alleged inaccurate
`
`information in Red Gap’s and Vertical Entertainment’s applications for copyright registrations
`
`
`
`6
`
`

`

`Case 1:18-cv-05930-MKB-ST Document 211 Filed 09/11/22 Page 7 of 8 PageID #: 2827
`
`for the 2013 Documentary and 2008 DVDs, respectively, would have caused the Register of
`
`Copyrights to refuse the registrations if known. Specifically, Plaintiffs argue that (1) Nathan and
`
`Red Gap made material misrepresentations on their copyright application for the 2013
`
`Documentary by listing Red Gap as the author when it did not exist at the time the film was
`
`produced and by failing to disclose the use of pre-existing materials, the fact that Red Gap did
`
`not have a written work-for-hire agreement signed prior to the creation of the film, and the
`
`publication date of the film; and (2) Vertical Entertainment made misrepresentations by listing
`
`itself as the author of the 2008 DVDs and failing to disclose that it did not have a written work-
`
`for-hire agreement signed prior to the creation of the 2008 DVDs. (Pls.’ Mot. for Issuance 6–7.)
`
`Plaintiffs ask the Court to submit this request to the Register of Copyrights because they “believe
`
`that the submission of this request is important for an early disposition” of their fourteenth and
`
`fifteenth causes of action seeking declaratory judgments that Red Gap’s and Vertical
`
`Entertainment’s copyrights are invalid because they are not the true authors of these works. (Id.
`
`at 2, 7; Am. Compl. ¶¶ 271–288.) In addition, Plaintiffs argue that if the Register of Copyrights
`
`would have refused Red Gap’s copyright registration because Red Gap is not the author of the
`
`2013 Documentary, then Defendants cannot rely on the fair use defense because this defense
`
`only permits “another author” to make limited use of the original author’s work without
`
`permission. (Pls.’ Reply 1; Pls.’ Opp’n to SPE Defs.’ Mot. 16–17; Pls.’ Mot. for Recons. 16–
`
`17.)
`
`The Court did not directly address Plaintiffs’ motion in the August 2022 Decision but
`
`declined Plaintiffs’ requests to issue declaratory judgments that the Nathan Defendants’
`
`copyrights are invalid because judgments that the Nathan Defendants’ copyrights in the 2013
`
`Documentary and 2008 DVDs are invalid “would not settle the legal issues disputed in this
`
`
`
`7
`
`

`

`Case 1:18-cv-05930-MKB-ST Document 211 Filed 09/11/22 Page 8 of 8 PageID #: 2828
`
`case,” given that the validity of the Nathan Defendants’ copyrights “has no bearing on whether
`
`Plaintiff’s copyrights (or their other rights) were violated” by the Nathan Defendants, and
`
`therefore the declaratory judgments “would not have practical implications for the dispute
`
`between the parties.” (Aug. 2022 Decision 95.) The Court also noted that authorship is
`
`irrelevant to the fair use test. (Id. at 43.) In view of these holdings, Plaintiffs’ motion for the
`
`issuance of a request to the Register of Copyrights is denied as moot.
`
`III. Conclusion
`
`For the foregoing reasons, the Court denies Plaintiffs’ motion for reconsideration. In
`
`addition, the Court denies as moot Plaintiffs’ motion for the issuance of a request to the Register
`
`of Copyrights.
`
`Dated: September 11, 2022
`Brooklyn, New York
`
`
`
`
`
`SO ORDERED:
`
`
`s/ MKB
`
`
`MARGO K. BRODIE
`United States District Judge
`
`
`
`8
`
`