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


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  •      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 R. 47.5, the court has determined that this opinion should not
    be published and is not precedent except under the limited circumstances set forth in 5TH CIR.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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