Shane Byrne v. Rippy et al, No. 2:2015cv06717 - Document 36 (E.D. La. 2016)

Court Description: ORDER AND REASONS re 28 Motion to Dismiss for Failure to State a Claim. IT IS ORDERED that Defendants motion to dismiss is GRANTED IN PART and DENIED IN PART in that the Court DISMISSES WITH PREJUDICE Plaintiffs Count 4 for trademark infringement, but DENIES Plaintiffs motion in other regards. Signed by Judge Susie Morgan on 7/13/2016. (bwn)

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Shane Byrne v. Rippy et al Doc. 36 U N ITED S TATES D ISTRICT COU RT EASTERN D ISTRICT OF LOU ISIAN A SH AN E BYRN E, Pla in tiff CIVIL ACTION VERSU S N o . 15 -6 717 AN D REW W ALLACE RIPPY, ET AL., D e fe n d an ts SECTION "E"( 4 ) ORD ER AN D REAS ON S Before the Court is the Rule 12(b)(6) m otion to dism iss by Defendants, Andrew Wallace Rippy and Southern Retriever Clothing Com pany, LLC (“Defendants”). 1 Plaintiff Shane Byrne tim ely opposed the m otion. 2 Defendants m oved for leave to file a reply, which Plaintiff opposed. 3 For the reasons stated below, the Court grants Defendants’ m otion insofar as it will dism iss Plaintiff’s claim for tradem ark infringem ent with prejudice, but denies Defendants’ m otion in all other regards. I. Ba ckgro u n d Plaintiff alleges that he is the owner and founder of an online business that caters to and has a large following of "people who have a passion for sporting dogs and outdoor activities." 4 Plaintiff alleges that, beginning as early as October 13, 20 14, he has m arketed a "Southern Retrievers" bran d in com m erce on various social m edia platform s and a website. 5 Plaintiff alleges that he began by selling decals in October 20 14, then, in 1 R. Doc. 28 . R. Doc. 34. 3 R. Docs. 16 & 17. Plaintiff m akes the unsupported con tention that Defendant’s reply would be untim ely. Defendant filed its m otion for leave to file a reply on the noticed subm ission date for its m otion to dism iss. The Court in its discretion will grant the m otion for leave and considers the reply herein. 4 R. Doc. 1 at 4– 8 . 5 Id. Plaintiff alleges he has actively posted on an Instagram account with the “Southern Retrievers” nam e as early as Novem ber 29, 20 13. Id. 2 1 Dockets.Justia.com accordance with a business plan, expanded to sales of clothing, apparel, and accessories. 6 Plaintiff alleges that he filed three applications for tradem ark registration with the U.S. Patent and Tradem ark Office (“PTO”) on October 30 , 20 15. 7 The applications were for tradem arks of: 1) a “dog with the letters SR overlay on neck of dog and Southern Retrievers along bottom of m ark;” 2) a “dog with letters SR overlay on neck of dog;” and 3) “SOUTHERN RETRIEVERS.”8 Plaintiff alleges that, on Decem ber 9, 20 14, Defendants filed an intent-to-use application with the PTO for a word m ark on “SOUTHERN RETRIEVER" 9 and a logo consisting of a silhouette of a retriever dog. 10 Plaintiff alleges that Defendants launched a clothing, apparel, sticker, and decal busin ess in early 20 15, with the two m arks prom inently featured on Defendants’ m erchandise, website, and social m edia accounts. 11 Plaintiff alleges that Defendants has asserted a tradem ark right over Plaintiff through correspondence and have requested that Plaintiff cease and desist, lim iting sales only to decals. 12 Plaintiff alleges that, as the senior user of the term “Southern Retrievers,” his business and property interests have been dam aged due to consum er confusion, false connection, tradem ark dilution, and lost sales. 13 Plaintiff filed suit on Decem ber 11, 20 15, alleging five federal law counts against Defendants under the Lanham Act for: 1) unfair com petition; 2) attorneys’ fees and treble dam ages; 3) dilution; 4) tradem ark infringem ent; and 5) declaratory judgm ent for 6 Id. Id. 8 Id. 9 At one point in the com plaint, Plaintiff alleges that the intent-to-use application was for the m ark “SOUTHERN RETRIEVERS”; however, all subsequent references to the application assert that the m ark is “SOUTHERN RETRIEVER.” See id. at 8– 9. 10 Id. at 8– 10 . 11 Id. at 10 . 12 Id. at 11. 13 Id. 7 2 infringem ent, unfair com petition, and dilation and injunctive relief against Defendants’ continued use. 14 Defendants filed the instant m otion to dism iss on May 19, 20 16, arguing that Plaintiff cannot state a claim for dilution or infringem ent under the Lanham Act. 15 II. Argu m e n ts o f th e Partie s Defendants only seek dism issal of Plaintiff’s claim s for tradem ark dilution and infringem ent. As to dilution, Defendants argue that Plaintiff cannot state a claim for tradem ark dilution, because he has not alleged that his m arks are "fam ous," nor when the m arks allegedly becam e fam ous, thereby m aking it im possible to know whether Plaintiff’s m arks were fam ous before Defendants com m enced use of their m arks. 16 Should the Court determ ine that Rule 12(b)(6) dism issal is not the appropriate rem edy for the deficiency of Plaintiff’s com plaint, Defendants ask that the Court order Plaintiff to provide a m ore definite statem ent of his dilution claim under Rule 12(e). As to infrin gem ent, Defendants argue dism issal is appropriate, because none of Plaintiff’s m arks are actually registered. 17 Defendants assert the PTO has “refused registration of all three of Plaintiff’s tradem ark applications.”18 While not m aking it explicit, Plaintiff apparently concedes that his tradem arks are pending, not registered, and states “Mr. Byrne acknowledged the lack of tradem ark registrations for the purpose of 15 U.S.C. § 1114 and m aintains his other claim s, including the claim s under 15 U.S.C. § 1125. 19 However, Plaintiff contends his com plaint alleges that 14 Id. at 11– 13. Plaintiff also alleges two state-law counts against Defendants, which are not at issue for the purposes of Plaintiff’s m otion to dism iss. See id. at 13– 14. 15 See R. Doc. 28. 16 Id. at 3– 5. 17 Id. at 5– 6. 18 Id. at 6. 19 R. Doc. 34 at 4– 5. 3 he had a large num ber of followers on the Internet in conn ection with his m arks, which is adequate for the purposes of a com plaint to establish his m arks were fam ous. 20 III. Sta n d ard o f Law When deciding a m otion to dism iss, the Court accepts all well-pleaded facts as true and views those facts in the light m ost favorable to the plaintiff. W hitley v. Hanna, 726 F.3d 631, 637 (5th Cir. 20 13). The Court m ay consider only the pleadings, the docum ents attached to or incorporated by reference in the plaintiff's com plaint, the facts of which judicial notice m ay be taken, m atters of public record, and docum ents attached to a m otion to dism iss “when the docum ents are referred to in the pleadings and are central to a plaintiff's claim s.” Brand Coupon N etw ork, L.L.C. v. Catalina Mktg. Corp., 748 F.3d 631, 635 (5th Cir. 20 14); see also U.S. ex rel. W illard v. Hum ana Health Plan of Texas Inc., 336 F.3d 375, 379 (5th Cir. 20 0 3); Lovelace v. Softw are Spectrum Inc., 78 F.3d 10 15, 10 17– 18 (5th Cir. 1996). For the com plaint to survive a m otion to dism iss, the facts taken as true m ust state a claim that is plausible on its face. Brand, 748 F.3d at 637– 38. A claim is facially plausible “when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the m isconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (20 0 9). “The plausibility standard is not akin to a probability requirem ent, but it asks for m ore than a sheer possibility that a defendant has acted unlawfully.” Culbertson v. Ly kos, 790 F.3d 60 8, 616 (5th Cir. 20 15) (citation om itted) (internal quotation m arks om itted). A com plaint is insufficient if it contains “only labels and 20 Id. at 3. 4 conclusions, or a form ulaic recitation of the elem ents of a cause of action.” W hitley , 726 F.3d at 638 (citation om itted) (internal quotation m arks om itted). IV. An a lys is A. Dilution A dilution by blurring claim alleges an “association arising from the sim ilarity between a m ark or trade nam e and a fam ous m ark that im pairs the distinctiven ess of the fam ous m ark.” 15 U.S.C. § 1125(c)(2)(B). U nder 15 U.S.C. § 1125(c), “the owner of a fam ous m ark that is distinctive, inherently or through acquired distinctiven ess, shall be entitled to an injunction again st another person who, at any tim e after the owner's m ark has becom e fam ous, com m ences use of a m ark or trade nam e in com m erce that is likely to cause dilution by blurring or dilution by tarnishm ent of the fam ous m ark, regardless of the presence or absence of actual or likely confusion, of com petition, or of actual econom ic injury.” “A m ark is fam ous if it is widely recognized by the general consum ing public of the United States as a designation of source of the goods or services of the m ark's owner.” 15 U.S.C. § 1125(c)(2)(A). To determine whether a m ark has achieved the “requisite degree of recognition,” courts m ay consider any relevant factor, such as: (i) the extent, duration, and geographic reach of publicity and advertising of the m ark; (ii) the am ount and geographic extent of sales of goods offered; (iii) the extent of actual recognition; and (iv) whether the m ark was registered. See 15 U.S.C. §§ 1125(c)(2)(A)(i)-(iii). Taking the facts alleged in the com plaint as true, the Court concludes Plaintiff has adequately alleged a dilution claim . According to Plaintiff’s com plaint, he established a large following on the Internet connected with his m arks beginning in late 20 13 and began selling decals baring the m arks roughly three m onths before Defendants began selling 5 goods using their respective m arks. Defendants point the Court to no authority indicating that it is not at least plausible that Plaintiff had fam ous m arks established before Defendants began use of their allegedly diluting m arks. The com plaint puts Defendants on sufficient notice of the tim e period and m anner in which Plaintiff allegedly developed the fam ous m arks. The fact that Plaintiff did not explicitly allege he had a fam ous m ark or state the date upon which the m ark allegedly becam e fam ous for the purposes of 15 U.S.C. § 1125(c) does not render the com plaint deficient. As such, the Court denies Defendants’ m otion to dism iss Plaintiff’s dilution claim . B. Infringem ent Plaintiff’s claim for infringem ent under 15 U.S.C. § 114(1) is clearly deficient. Plaintiff’s com plaint m akes clear that his tradem ark applications are pending and his opposition to Defendants’ m otion does not represent otherwise. To state a claim under 15 U.S.C. § 1114(1), a plaintiff m ust allege infringem ent of a registered m ark. Particularly given that Plaintiff constructively consents to dism issal, the Court will dism iss Plaintiff’s infringem ent claim with prejudice. Accordingly, IT IS ORD ERED that Defendants’ m otion to dism iss 21 is GRAN TED IN PART and D EN IED IN PART in that the Court D ISMISSES W ITH PREJU D ICE Plaintiff’s Count 4 for tradem ark infringem ent, 22 but D EN IES Plaintiff’s m otion in other regards. N e w Orle an s , Lo u is ian a, th is 13 th d ay o f Ju ly, 2 0 16 . ___________ _______ ________ SU SIE MORGAN U N ITED S TATES D ISTRICT J U D GE 21 R. 22 Doc. 28 . See R. Doc. 1 at 12– 13. 6

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