united states district court district of new jersey€¦ · madonna ventures, inc. bambi baby.com...

1616011

UNITED STATES DISTRICT COURTDISTRICT OF NEW JERSEY

________________________________________________________________________

MEMORANDUM OF LAW IN SUPORT OF PLAINTIFF’S MOTION TO DISMISS THE AMENDED COMPLAINT

FOR FAILURE TO STATE A CLAIM UPON WHICH RELIEF CAN BE GRANTED PURSUANT TO FED. R. CIV. P. 12(b)(6)

Ronald D. Coleman MANDELBAUM SALSBURG PC 3 Becker Farm Road Livingston, NJ 07068 973-736-4600 [email protected] for Defendant Madonna Ventures, Inc.

BAMBI BABY.COM CORP,

Plaintiff,

- vs.-

MADONNA VENTURES, INC., and INSPIRATION BY STERLING, INC.,

Defendants.

CIVIL ACTION NO. 2:18 cv 12669WHWCLW

________________________________________________________________________

Case 2:18-cv-12669-WHW-CLW Document 23-1 Filed 03/17/19 of 22 PageID: 330

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TABLE OF CONTENTS

TABLE OF AUTHORITIES …………………………………….. ………….…………………iii

PRELIMINARY STATEMENT AND STATEMENT OF FACTS ………….………………….1

LEGAL ARGUMENT ……………………………………………………………………………2

I. MOTION TO DISMISS STANDARD ................................................................................ 2

II. PLAINTIFF HAS FAILED TO STATE A CLAIM FOR COPYRIGHT

INFRINGEMENT AS A MATTER OF LAW. .............................................................................. 2

III. PLAINTIFF’S ALLEGATIONS THAT MADONNA COPIED ITS WEBSITE

CONTENT AND SHIPPING METHODS AND SERVICES FAILS DO NOT STATE A

CLAIM FOR UNFAIR COMPETITION. ...................................................................................... 6

IV. PLAINTIFF’S ALLEGATIONS OF TRADE DRESS INFRINGEMENT IN

CONNECTION WITH THE LOOK AND FEEL OF ITS WEBSITE FAIL TO STATE A

CAUSE OF ACTION. .................................................................................................................... 8

V. PLAINTIFF’S CLAIM FOR FALSE ADVERTISING DOES NOT STATE A CLAIM

FOR WHICH RELIEF CAN BE GRANTED. ............................................................................. 13

VI. PLAINTIFF’S CLAIM FOR TORTIOUS INTERFERENCE DOES NOT STATE A

CLAIM FOR WHICH RELIEF CAN BE GRANTED. ............................................................... 15

CONCLUSION ............................................................................................................................. 17


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TABLE OF AUTHORITIES

Cases

Am. Greetings Corp. v. Dan-Dee Imports, Inc., 619 F. Supp. 1204 (D.N.J. 1985) ...................... 11

Am. Millennium Ins. Co. v. First Keystone Risk Retention Grp., Inc., 332 Fed.Appx. 787 (3d Cir. 2009) ............................................................................................ 16

Ashcroft v. Iqbal, 556 U.S. 662 (2009) ........................................................................................... 2

Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) ........................................................................... 2

Bossen Architectural Millwork, Inc. v. Kobolak & Sons, Inc., No. CV 14-4294 (RBK/JS), 2015 WL 7302162 (D.N.J. Nov. 18, 2015), amended, No. 14-4294 (RBK/JS), 2015 WL 9701587 (D.N.J. Nov. 23, 2015) ............................................................... 3

Brownstein v. Lindsay, 742 F.3d 55 (3d Cir. 2014) ........................................................................ 5

Buying For The Home, LLC v. Humble Abode, LLC, 459 F. Supp. 2d 310 (D.N.J. 2006) ........................................................................................................................... 6, 8

Buzz Bee Toys, Inc. v. Swimways Corp., 20 F. Supp. 3d 483 (D.N.J. 2014) ................................ 10

Canfield Sci., Inc. v. Melanoscan, LLC, No. CV 16-4636, 2017 WL 2304644 (D.N.J. May 25, 2017)......................................................................................................... 16, 17

Coast Cities Truck Sales, Inc. v. Navistar Int'l Transp. Co., 912 F. Supp. 747 (D.N.J. 1995) ...................................................................................................................... 15

CRA, Inc. v. Ozitus Int'l, Inc., No. CV 16-5632 (JBS/AMD), 2017 WL 2779749 (D.N.J. June 27, 2017) ........................................................................................ 15

Daley v. Firetree, Ltd., No. 4:CV-04-2213, 2006 WL 148879 (M.D. Pa. Jan. 19, 2006) ............................................................................................................. 7

Diversified Indus., Inc. v. Vinyl Trends, Inc., No. 13–6194, 2014 WL 1767471(D.N.J. May 1, 2014) ........................................................................................... 16

Diversified Indus., Inc. v. Vinyl Trends, Inc., No. CIV.A. 13-6194 JBS, 2014 WL 1767471 (D.N.J. May 1, 2014) ................................................................................. 15

Fair Wind Sailing, Inc. v. Dempster, 764 F.3d 303 (3d Cir. 2014) .......................................... 9, 12

Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC, No. 17-571, 2019 WL 1005829 (U.S. Mar. 4, 2019) ...................................................................................... 2

G&W Labs., Inc. v. Laser Pharm., LLC, No. 3:17-CV-3974-BRM-DEA,


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2018 WL 3031943 (D.N.J. June 19, 2018) ................................................................................. 8

Harlem Wizards Entertainment Basketball, Inc. v. NBA Properties, Inc.,952 F.Supp. 1084 (D.N.J. 1997) ................................................................................................. 6

Hedges v. United States, 404 F.3d 744 (3d Cir.2005) .................................................................... 2

Interlink Prod. Int'l, Inc. v. F & W Trading LLC, No. CV 151340 MAS-DEA, 2016 WL 1260713 (D.N.J. Mar. 31, 2016) ........................................................... 13

J & J Snack Foods, Corp. v. Earthgrains Co., 220 F.Supp.2d 358 (D.N.J. 2002) ..................... 6, 8

Lucas Indus., Inc. v. Kendiesel, Inc., No. 93–4480, 1995 WL 350050 (D.N.J. June 9, 1995).................................................................................................... 16

N. Jersey Media Grp. Inc. v. Sasson, No. CIV. 2:12-3568 WJM, 2013 WL 74237 (D.N.J. Jan. 4, 2013) ........................................................................................ 2

Parks LLC v. Tyson Foods, Inc, 863 F.3d 220 (3d Cir. 2017) ................................................ 14, 15

Patrick Collins, Inc. v. Does 1–26, 843 F.Supp.2d 565 (E.D. Pa. 2011) ........................................ 3

Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995) ............................................. 10

Reed *663 Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010) .......................................................... 3

Sands v. McCormick, 502 F.3d 263 (3d Cir. 2007) ........................................................................ 2

Thomas & Betts Corp. v. Panduit Corp., 65 F.3d 654 (7th Cir.1995) ............................................ 9

Tristar Prod., Inc. v. SAS Grp., Inc., No. CIV.A.08-6263(PGS), 2009 WL 3296112 (D.N.J. Oct. 9, 2009) .................................................................................... 4

Warth v. Seldin, 422 U.S. 490 (1975) ............................................................................................. 2

Zaslow v. Coleman, 103 F. Supp. 3d 657 (E.D. Pa. 2015) ............................................................. 3

Statutes

§ 1125(a)(1)(A) ............................................................................................................................. 14

§ 1125(a)(1)(B) ............................................................................................................................. 14

15 U.S.C. § 1125(a)(1)(B) .................................................................................................... 1, 6, 14

15 U.S.C. § 1125(a)(3) .................................................................................................................. 10

17 U.S.C. § 101 ............................................................................................................................... 5


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17 U.S.C. § 106(2) .......................................................................................................................... 5

17 U.S.C. § 411(a) ...................................................................................................................... 1, 3

N.J.S.A. § 56:4–1 ............................................................................................................................ 8

Rules

Fed. R. Civ. P. 12(b)(6)......................................................................................................... 1, 2, 13


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PRELIMINARY STATEMENT AND STATEMENT OF FACTS

Plaintiff competes with defendant Madonna Ventures, Inc. (“Madonna”) in the online

sale of baby and juvenile furniture. It brings this action against Madonna claiming copyright

infringement, tortious interference and unfair competition under N.J.S.A. 56:4-1 and federal law

based on allegations arising from supposed copying by Madonna of content from plaintiff’s

website. After defendant filed a motion to dismiss the original Amended Complaint, plaintiff

sought and received leave of the Court to file an Amended Complaint, which was filed on

February 21, 2019 [ECF 22]. This motion is timely pursuant to a stipulation between the parties.

Defendant moves to dismiss the Amended Complaint because the amendments repair

none of the deficiencies of the original. It is still the case that neither the copyright claim nor the

unfair competition claim is legally cognizable, and both should be dismissed as a matter of law

under Fed. R. Civ. P. 12(b)(6). The copyright claim must be dismissed because the alleged

copyright is not registered to the plaintiff, which does not even allege that it has applied for

registration. Under 17 U.S.C. § 411(a), which prohibits the maintenance of any civil action for

copyright infringement, this omission is fatal and mandates dismissal as a matter of law.

Plaintiff’s unfair competition counts under also fail to state claims for which relief can be

granted. They are based on allegations that Madonna displayed, on its own website, “the

infringing works” as well as “descriptions of [plaintiff’s] shipping methods and services” and

“copying [plaintiff’s] shipping methods and services.” As set out in detail below, these

allegations do not remotely make out either under N.J.S.A. 56:4–1 or Section 43(a)(1) of the

Lanham Act, identical offenses which prohibit unfair competition based on false designation of

origin or false advertising. Plaintiff’s remaining claims are merely attempts to find some package

that will contain the amorphous mass that is the Amended Complaint, an effort which does not


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succeed. The claims of the Amended Complaint are not only meritless, they are plainly

frivolous, and should be dismissed under Fed. R. Civ. P. 12(b)(6).

LEGAL ARGUMENT

I. MOTION TO DISMISS STANDARD

The standard for a motion to dismiss under Fed. R. Civ. P. 12(b)(6) is well known to this

Court:

Federal Rule of Civil Procedure 12(b)(6) provides for the dismissal of a Complaint, in whole or in part, if the plaintiff fails to state a claim upon which relief can be granted. The moving party bears the burden of showing that no claim has been stated. Hedges v. United States, 404 F.3d 744, 750 (3d Cir.2005). In deciding a motion to dismiss under Rule 12(b)(6), a court must take all allegations in the Complaint as true and view them in the light most favorable to the plaintiff. Warth v. Seldin, 422 U.S. 490, 501, 95 S.Ct. 2197, 45 L.Ed.2d 343 (1975). See also Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007); Ashcroft v. Iqbal, 556 U.S. 662, 129 S.Ct. 1937, 1949, 173 L.Ed.2d 868 (2009). When considering a motion to dismiss, the court generally relies on the Amended Complaint, attached exhibits, and matters of public record. Sands v. McCormick, 502 F.3d 263 (3d Cir. 2007).

N. Jersey Media Grp. Inc. v. Sasson, No. CIV. 2:12-3568 WJM, 2013 WL 74237, at *1 (D.N.J.

Jan. 4, 2013). As demonstrated below, the Amended Complaint does not meet the standard for

pleading a plausible cause of action for any of the claims here, and should be dismissed.

II. PLAINTIFF HAS FAILED TO STATE A CLAIM FOR COPYRIGHT INFRINGEMENT AS A MATTER OF LAW.

On March 4, 2019, the United States Supreme Court, in Fourth Estate Pub. Benefit Corp.

v. Wall-Street.com, LLC, No. 17-571, 2019 WL 1005829 (U.S. Mar. 4, 2019), reiterated and

reinforced the legal point that formed the primary argument in defendant’s original motion to

dismiss: Prior registration of a copyright with the Copyright Office is a precondition to

instituting a copyright action. 17 U.S.C. § 411(a) (“[N]o civil action for infringement of

the copyright in any United States work shall be instituted until preregistration or registration of

the copyright claim has been made in accordance with this title.”); see also, Reed *663 Elsevier,


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Inc. v. Muchnick, 559 U.S. 154, 166 (2010) (“Section 411(a) imposes a precondition to filing a

claim ...”). Accordingly, to satisfy § 411 and establish a requisite element of an infringement

claim, a copyright infringement plaintiff must establish that it holds a registered copyright in the

work claimed to bring an action for infringement.

As in the original Complaint, plaintiff not only fails to refer to, much less attach, a

copyright registration to its Amended Complaint. It does not even allege that it has

a registered copyright for works claimed to have been infringed. Plaintiff, in fact, actually

admits in its own Amended Complaint that it the copyright it seeks to enforce through a

civil action in this Court is not registered, alleging in ¶ 18 of the Amended Complaint that

“Bambi Baby did not register the Copyrighted Works with the United States Copyright Office.”

To bar any misunderstanding, the Amended Complaint repeats this admission in ¶ 51. “Plaintiffs

do not assert in their Amended Complaint that they hold registered copyrights in the photographs

at issue. Under the registration approach, this Court must therefore conclude that Plaintiffs do not

state a plausible claim for copyright infringement.” Bossen Architectural Millwork, Inc. v.

Kobolak & Sons, Inc., No. CV 14-4294 (RBK/JS), 2015 WL 7302162, at *3 (D.N.J. Nov. 18,

2015), amended, No. 14-4294 (RBK/JS), 2015 WL 9701587 (D.N.J. Nov. 23, 2015); Zaslow v.

Coleman, 103 F. Supp. 3d 657, 662–63 (E.D. Pa. 2015); Patrick Collins, Inc. v. Does 1–26, 843

F.Supp.2d 565, 569 (E.D. Pa. 2011).

Not only has plaintiff failed to remedy the lack of a registration for its copyright, it has

even admitted that it is unlikely even to have any copyright in the images it claims were

infringed in the first place, stating in ¶ 23 of the Amended Complaint that “The Digital

Photographs were originally vendor images . . .” Plaintiff’s claim is that these images created

and presumably copyrighted by others “were selected, modified and arranged by Bambi Baby


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in such a manner that the resulting work as a whole constitutes an original work of authorship.”

But while a sufficiently creative and original arrangement of photographs could, under

circumstances not even alleged here, be protected as trade dress (as discussed in the next

section), the arrangement of photographs of created by others is almost never “an original work

of authorship” As this Court explained in Tristar Prod., Inc. v. SAS Grp., Inc., No. CIV.A.08-

6263(PGS), 2009 WL 3296112 (D.N.J. Oct. 9, 2009):

To sufficiently allege a copyright infringement claim, a plaintiff must allege both that it has a valid copyright in the work and that the defendant copied elements of the work that are original. It is a general principle of copyright law that substantial similarity between two works cannot be demonstrated solely by pointing out random similarities across the works. This is especially true when the copyright infringement claim is based on an original arrangement of unprotected materials, as the entire basis for the claim is that both works are identically sequenced.

Id. at *5 (emphasis added; internal quotes and citations omitted). Here however all the Amended

Complaint offers is a mere recitation of similarities between two sets of supposed

“arrangements” of unprotected materials, stating only that the vendor photographs were

“selected, modified and arranged by Bambi Baby” in an undisclosed “manner.”

The “original work of authorship” phrase puts this claim firmly in the (unregistered)

copyright basket. But, as a matter of copyright law, it is not sustainable as a valid assertion of

enforceable rights on the strength of these pleadings, not only because no copyright infringement

claim could under any circumstances be brought by plaintiff under § 411(a). The Amended

Complaint’s allegations do not meet the standard for establishing a prima claim of authorship in

such an arrangement, and therefore plaintiff’s copyright claim based on a collation-of-

photographs “work” fails to allege the existence of a valid copyright owned by plaintiff.


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Similarly, the allegations in the Amended Complaint to the effect that the vendor photos

were “modified” by plaintiff are also unhelpful for two reasons. First, they too are vague1 with

respect to the nature and extent of the “arrangement” and modification referred to. Secondly,

while a work “consisting of editorial revisions, annotations, elaborations, or other modifications

which, as a whole, represent an original work of authorship” is protectable under 17 U.S.C. §

101 as a derivative work, it is the original copyright owner – i.e., the vendor that provided the

photos – that has exclusive rights to “prepare derivative works based upon the copyrighted work”

under 17 U.S.C. § 106(2). “If the original work is copyrightable, then the original author or

authors must consent to the creation of a derivative work by a third party – unauthorized creation

of a derivative work, which incorporates the original work, constitutes an infringement of the

underlying work,” and certainly not a work of original authorship on which a claim for

infringement could be based. Brownstein v. Lindsay, 742 F.3d 55, 68 (3d Cir. 2014). In other

words, based solely on the facts alleged in the Amended Complaint, if there is any copyright

infringement here, that infringement is by plaintiff, which admits to having made and published

what it describes as a derivate work without the permission of the original author.

The Amended Complaint also alleges that the components of plaintiff’s supposed trade

dress described in ¶¶ 24 and 25 – Tool Tips, banner ads and landing pages – also “constitute[] . .

. original work[s] of authorship.” These features, however, are universally employed

components of modern website design, despite the implausible allegation by plaintiff that it

“created” them (at best, the allegation can be read as alleging that plaintiff chose “a specific style

1 The “before” and “after” photographs in ¶23 of the Amended Complaint do not help. The difference between Photo 1, the “original vendor image,” and Photo 2, described as “Bambi Baby’s protected Digital Photograph,” appears to be that a matching dresser and hutch were inserted into the first picture and various angles and wall spaces were manipulated using standard digital photo-editing tools. Plaintiff claims that this modification resulted in “an original work of authorship.” To the extent this trivial “cutting and pasting” produced a derivative work of the original, however. any right to enforce the copyright of that work is, again, owned solely by the creator of the original work.


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and color” of Tool Tip. Moreover, plaintiff’s reference to “works” and “authorship” necessary

place these claims too in the category of copyright infringement allegations, despite its use of the

term “unfair competition,” and are thus addressed in this section concerning copyright. As

explained above, however, absent a copyright registration, plaintiff cannot proceed with any

copyright infringement claim, whether called “copyright” or “unfair competition.” Plaintiff’s

transparently frivolous copyright claims should be dismissed, with prejudice, as a matter of law.

III. PLAINTIFF’S ALLEGATIONS THAT MADONNA COPIED ITS WEBSITE CONTENT AND SHIPPING METHODS AND SERVICES FAILS DO NOT STATE A CLAIM FOR UNFAIR COMPETITION.

N.J.S.A. 56:4–1 is the statutory equivalent of Section 43(a)(1) of the Lanham Act.

Harlem Wizards Entertainment Basketball, Inc. v. NBA Properties, Inc., 952 F.Supp. 1084, 1091

(D.N.J. 1997). “[T]he elements for a claim for trademark infringement under the Lanham Act are

the same as the elements for a claim of unfair competition under the Lanham Act and for claims

of trademark infringement and unfair competition under New Jersey statutory and common law.

. Thus, to prove unfair competition under the Lanham Act, and hence under N.J.S.A. 56:4–1, a

plaintiff must show that (1) it owns a trademark that is valid and legally protectable, (2) that the

defendant used the mark in commerce on or in connection with any goods or services or

container for goods, and (3) that this “use” was in a manner likely to create confusion concerning

the origin of the goods or services.” Buying For The Home, LLC v. Humble Abode, LLC, 459 F.

Supp. 2d 310, 318 (D.N.J. 2006).

The second count of the Amended Complaint, alleging a violation of N.J.S.A. 56:4–1,

does not allege a single one of these elements of unfair competition. It does, however, appear to

make two sorts of supposed unfair competition claims, neither of which is cognizable.


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The first is based on the theory that alleged “display of protected works” – the works

described in the first count of the Amended Complaint for copyright infringement – is a form of

unfair competition. It is well established, however, that calling infringement of a work alleged to

be original to the plaintiff “unfair competition” does not make it anything besides (at best) a

claim for copyright infringement. See, Daley v. Firetree, Ltd., No. 4:CV-04-2213, 2006 WL

148879, at *5 (M.D. Pa. Jan. 19, 2006) (“after considering what the plaintiff seeks to protect, the

theories in which the matter is thought to be protected and the rights sought to be enforced . . .

we find that plaintiff's unfair competition claim is not qualitatively different from its copyright

claim.”) The fact that, as set forth above, plaintiff’s copyright claim is patently meritless does not

mean that it can be rescued by being restated as a claim for unfair competition.

The other apparent theory of recovery in these allegations is that Madonna competed

unfairly by “blatantly copying [plaintiff’s] shipping methods and services” (¶ 62). This is not a

claim for unfair competition either. Shipping methods and services are not designations of

origin, i.e., trademarks. The allegations do not even claim that these methods and services are

proprietary, explain what it is that makes them “protected” (a term repeated multiple times) or

that they have secondary meaning. The mere offering of a product or service offered by another

does not constitute unfair competition or trademark infringement; on the contrary, it constitutes

competition – precisely what the laws of unfair competition are meant to protect. Even if

“misappropriation of an advertising idea or style of doing business” were actionable under

N.J.S.A. 56:4–1 and even if something as vague as shipping methods could be deemed an

“advertising idea” that somehow causes consumers to associate services or goods with a

particular source, nothing remotely akin to such an allegation is found in the Amended

Complaint.


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IV. PLAINTIFF’S ALLEGATIONS OF TRADE DRESS INFRINGEMENT IN CONNECTION WITH THE LOOK AND FEEL OF ITS WEBSITE FAIL TO STATE A CAUSE OF ACTION.

It is black-letter law that “the elements for a claim for trademark infringement under the

Lanham Act are the same as the elements for a claim of unfair competition under New Jersey

statutory and common law. J & J Snack Foods, Corp. v. Earthgrains Co., 220 F.Supp.2d 358,

374 (D.N.J. 2002). Under the Lanham Act, New Jersey common law and N.J.S.A. § 56:4–1, a

plaintiff must allege that it owns a trademark that is valid and legally protectable, that the

defendant used the mark in commerce on or in connection with any goods or services or

container for goods, and that this “use” was in a manner likely to create confusion concerning the

origin of the goods or services.” Buying For The Home, LLC v. Humble Abode, LLC, 459 F.

Supp. 2d 310, 318 (D.N.J. 2006). Similarly, “the elements of unfair competition under N.J.S.A.

§ 56:4–1 and New Jersey common law are the same as those required under the Lanham Act.”

G&W Labs., Inc. v. Laser Pharm., LLC, No. 3:17-CV-3974-BRM-DEA, 2018 WL 3031943, at

*7 (D.N.J. June 19, 2018).

Given these well-established legal rules, the logic of plaintiff’s restatement, in the

Amended Complaint, of its original unfair claim into three separate causes of action is hard to

understand. In any event, just as the original Complaint did not allege a single one of these

elements of unfair competition / trademark infringement, neither does the Amended Complaint.

The Amended Complaint does move certain allegations from one part of the pleading to another

and adds a level of “detail” not found in the original complaint, but this redecorating does

nothing to satisfy the requirements for an unfair competition claim under either federal or state

law: the identification of a trademark or of cognizable trade dress of the plaintiff and the

infringing or misleading use of it, by defendant, that is likely to cause confusion.


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The Amended Complaint places great stock in the concept of unfair competition based on

the use by defendant of “compilations of digital photographs which depict Bambi Baby’s goods

to be sold in a distinct and wholly original manner.” Amended Complaint at ¶ 7. As set out

above, the only way to convert a “work of authorship,” i.e., copyright claim into a trade dress

claim is for the trade dress elements alleged to be protectable be specifically identified – or, in

the case of a selection and arrangement of the work of others, that facts are set forth indicating

that they are painstakingly selected. As the Third Circuit explained in Fair Wind Sailing, Inc. v.

Dempster, 764 F.3d 303, 308–09 (3d Cir. 2014):

The purpose of trade dress protection is to secure the owner of the trade dress the goodwill of his business and to protect the ability of consumers to distinguish among competing producers. Trade dress protection does not shield businesses from plagiarism. Indeed, trade dress protection must subsist with the recognition that in many instances there is no prohibition against copying goods and products. “Copying is not only good, it is a federal right—a necessary complement to the patent system's grant of limited monopolies.” Thus, the law does not afford every combination of visual elements exclusive legal rights. Instead, trade dress protection extends only to incidental, arbitrary or ornamental product features which identify the product's source.

Id. at 308-09 (internal quotes and citations omitted, except quotation from Thomas & Betts Corp.

v. Panduit Corp., 65 F.3d 654, 657 (7th Cir.1995)). Thus, to plead a trade dress claim not

subsumed by copyright, a plaintiff must allege that (1) the allegedly infringing design is

nonfunctional; (2) the design is inherently distinctive or has acquired secondary meaning; and (3)

consumers are likely to confuse the source of the plaintiff's product with that of the defendant's

product, and must articulate “the specific elements which comprise its distinct dress.” The

Amended Complaint never specifies the non-functional trade dress or lays out anything so

unique about the arranging photographs one way as opposed to another on a website that its

claim of distinctiveness can be deemed plausible. These allegations do not state a claim under

either the Lanham Act or New Jersey’s unfair competition law.


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Apart from its legally deficient and muddled photographs-as-trademarks theory, the

Amended Complaint explicitly acknowledges that plaintiff is claiming the “look and feel” of its

website as a trademark or trade dress under N.J.S.A. 56:4–1, common law trademark and § 43(a)

of the Lanham Act. But it fails to plead a claim that actually describes protectable elements of a

website’s look and feel, omitting any description of the specific elements of non-functional trade

dress alleged to have been infringed. What plaintiff does offer is a lot of adjectives, and vague

characterizations such as the claim that “The Bambi Baby Website is the product of numerous

distinct choices (with respect to font, colors, layout, design, photographs, video, etc.) all made to

most precisely convey Bambi Baby’s unique identity, products, and services.” (Amended

Complaint at ¶ 12.) There is, of course, virtually no retail website that would not and could not

accurately describe itself the same way. These “features” are thus not “distinctive” at all.

Moreover, taking the pleadings at their word, these qualities are functional, and therefore

cannot constitute trade dress. “The Lanham Act mandates that “[i]n a civil action for trade dress

infringement ... for trade dress not registered ..., the person who asserts trade dress protection has

the burden of proving that the matter sought to be protected is not functional.” 15 U.S.C. §

1125(a)(3). “[A] product feature is functional ... if it is essential to the use or purpose of the

article or if it affects the cost or quality of the article, that is, if exclusive use of the feature would

put competitors at a significant non-reputation-related disadvantage.” Buzz Bee Toys, Inc. v.

Swimways Corp., 20 F. Supp. 3d 483, 497 (D.N.J. 2014), quoting, Qualitex Co. v. Jacobson

Products Co., Inc., 514 U.S. 159, 165 (1995).

Here, plaintiff’s own description of these features as conveying “babyness” and other

messages about Bambi Baby as a source of goods suggests that they are, in fact, functional and

not protectable. See, e.g., Am. Greetings Corp. v. Dan-Dee Imports, Inc., 619 F. Supp. 1204,


11

1219 (D.N.J. 1985) (regarding “tummy graphics” used on “Care Bears” characters, “the very fact

that plaintiffs chose these graphics and explicitly linked them to particular messages

demonstrates their functionality”). This is even more obvious in the section of the amended

pleading found under the heading, “The Bambi Baby Website Trade Dress,” at ¶¶ 19 and 20, in

which the Amended Complaint essentially repeats the formulation in ¶ 12 using more words.

And these are not just any words. They include frequent iterations of what plaintiff seems

to think are “magic words” such as “distinct,” “distinctive” and “readily identifiable.” In this

attempt to simulate specificity without actually specifying anything, the Amended Complaint

sets forth as follows in ¶ 21:

The distinctive and innovative “look and feel" of the Bambi Baby Website includes the following elements that together and in combination create an overall visual impression unique to Bambi Baby:

(a) A distinctive palette of colors and image/video filters featuring a clean, modern, and straightforward user interface highlighted by bright, vibrant colors set in an environment / backdrop of warm, baby tones;

(b) A home page display featuring an assortment of products needed by new parents that seeks to quickly affirm to Bambi Baby's customers that they've landed in the right place; and

(c) The consistent placement and location of certain user options and the company's logo on each and every page of the Bambi Baby Website.

Of course, merely describing elements of a website design as “distinctive and innovative”

does not make them so, no matter how many times the words “distinctive” is repeated. Going

down the enumerated list, the first subsection, ¶ 21 (a), attempts to establish protectable trade

dress in the Bambi Baby “look and feel” through the use of adjectives – “distinctive palette,”

“clean, modern and straightforward user interface,” “bright, vibrant colors” and “warm, baby

[sic] tones.” In terms of actual information, however, ¶ 21 (a) does nothing more than allege that

Bambi Baby has an attractive website utilizing “baby tone.”


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The next section, ¶ 21 (b), alleges protectable trade dress in the look and feel of the

website based on “A home page display featuring an assortment of products needed by new

parents that seeks to quickly affirm to Bambi Baby's customers that they've landed in the right

place.” This “feature” would, of course, also apply to Amazon.com, Walmart.com and every

other retail website designed in the last 20 years. So too regarding ¶ 21(c), which purports to

establish something distinct and protectable in “The consistent placement and location of certain

user options and the company's logo on each and every page of the Bambi Baby Website” – also

a standard set of features on any consumer-facing e-commerce platform, and hardly worthy of

protection as trade dress.

Indeed, these supposed features of the Bambi Baby website are not only gauzy and

virtually universal, they are even more functional than those previously described. Again,

returning to the Third Circuit’s guidance in Fair Wind Sailing:

[E]ven assuming that Fair Wind had adequately stated the overall design it seeks to protect, its alleged “trade dress” is clearly functional, and therefore not protectable. A functional feature is one that is essential to the use or purpose of the article, affects the cost or quality of the article, or one that, if kept from competitors, would put them at a significant non-reputation-related disadvantage. By contrast, a feature is nonfunctional where it is unrelated to the consumer demand and serves merely to identify the source of the product or business. Student feedback procedures, catamarans, teaching itineraries, and curriculum all affect the quality of Fair Wind's business. They play a critical role in the consumer demand for Fair Wind's services, rather than merely identifying Fair Wind as the source of the sailing instruction. Thus, Fair Wind's alleged dress is plainly functional.

764 F.3d at 310-311. Here too, other than – arguably – the aesthetic features set out in the ¶ 21

(a) of the Amended Complaint, the supposed components of the alleged trade dress or “look and

feel” of the Bambi Baby website consists of nothing but functional features: product displays on

the home page “to quickly affirm to Bambi Baby's customers that they've landed in the right

place” and placement of user option – on other words, website navigation tools – and the


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company’s logo on web pages. The same is true of ¶ 24, which describes various graphic

elements used on plaintiff’s website to “enhance[] the customer's overall online shopping

experience . . .,” which is entirely functional, as well as ¶ 25, which claims, as part of the

allegedly distinctive look and feel of the Bambi Baby website, “banner advertisements and

landing pages.” Certainly to the extent plaintiff itself describes them in functional terms – for

example, Bambi Baby’s Tool Tips light bulb graphic is described as “provid[ing] customers with

detailed descriptions of items throughout the Bambi Baby Website” and “enhanc[ing] the

customer's overall online shopping experience” (Amended Complaint at ¶ 24) – the functionality

of these features renders them ineligible for protection as trade dress.2 Compare, Interlink Prod.

Int'l, Inc. v. F & W Trading LLC, No. CV 151340 MAS-DEA, 2016 WL 1260713 (D.N.J. Mar.

31, 2016) (plaintiff stated a claim for trade dress by describing non-functional elements of its

promotional materials, including the use of “circular pictures in a vertical column with certain

fonts, words, and pictures” because the allegations of “circular pictures in a vertical column”

instantly conveyed an impression of a potentially distinctive presentation).

V. PLAINTIFF’S CLAIM FOR FALSE ADVERTISING DOES NOT STATE A CLAIM FOR WHICH RELIEF CAN BE GRANTED.

Plaintiff restructured its pleading in the Amended Complaint by breaking out its original

unfair competition claim as “separate” claims for statutory unfair competition under New Jersey

law, common law unfair competition and Federal unfair competition under the Lanham Act –

which, as stated above, all have the same legal elements. The new claims presented in the

Amended Complaint are the Fourth Count for false advertising, also under § 43(a) of the Lanham

Act and a Fifth Count for tortious interference, discussed in the next section. Because plaintiff’s

2 As mentioned above, plaintiff characterizes all these design features as “original works of authorship – a term of art relevant only to copyright, not trademark or unfair competition. To give the plaintiff every benefit of the doubt, however, as is required under Fed. R. Civ. P. 12(b)(6), defendant has analyzed these website “features” as if they were alleged to be components of plaintiff’s alleged trade dress.


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false advertising claim is premised on an allegedly false association or sponsorship between it

and defendant, however, it fails as a matter of law.

Subsection (a)(1)(B) of the Lanham Act forbids “commercial advertising or promotion”

that “misrepresents the nature, characteristics, qualities, or geographic origin of his or her or

another person's goods, services, or commercial activities[.]” 15 U.S.C. § 1125(a)(1)(B). Claims

under that provision are called “false advertising” claims. Parks LLC v. Tyson Foods, Inc, 863

F.3d 220, 226 (3d Cir. 2017). “Qualities” does not mean source of origin, association or

sponsorship, i.e., false “association” with a given manufacturer or provider, which is properly a

claim for unfair competition under § 1125(a)(1)(A), which is addressed at length above. “Absent

a false statement about geographic origin, a misrepresentation is actionable under §

1125(a)(1)(B) only if it misrepresents the characteristics of the good itself – such as its properties

or capabilities. The statute does not encompass misrepresentations about the source of the

ideas embodied in the object (such as a false designation of authorship)[.]” Id., quoting Kehoe

Component Sales Inc. v. Best Lighting Prods., Inc., 796 F.3d 576, 590 (6th Cir. 2015) (internal

quotation marks and citation omitted; emphasis added). Similarly, the Third Circuit in Parks

LLC held as follows:

[T]hat subsection is not the right vehicle for addressing claims of false designation of origin that are not concerned specifically with geographic origin. . . . . We have suggested as much before in dicta, but never in a holding. The question is now squarely before us and we conclude that the term “geographic origin” refers solely to the place of origin and not to the creator, manufacturer, or any broader conception of the term “origin.”

Id. at 228–29. Because the only “quality” alleged by plaintiff to have been misrepresented by

defendant is the “quality” of being Bambi Baby, plaintiff’s unfair advertising claim is deficient

as a matter of law under the rule of Parks LLC, and should be dismissed with prejudice.


15

VI. PLAINTIFF’S CLAIM FOR TORTIOUS INTERFERENCE DOES NOT STATE A CLAIM FOR WHICH RELIEF CAN BE GRANTED.

Plaintiff’s Sixth Count claims that defendant disrupted the relationships between

“existing and prospective relationships between Bambi Baby and its customers,” causing

plaintiff harm and that there was “no justifiable cause” for this conduct. (Amended Complaint ¶

90 – 92). This claim should be dismissed because it is merely a reformulation of, and is based on

the same underlying allegations as, plaintiff’s claims sounding in unfair competition and just as

they fail to state a cause of action, so does the interference claim. See, CRA, Inc. v. Ozitus Int'l,

Inc., No. CV 16-5632 (JBS/AMD), 2017 WL 2779749, at *11 (D.N.J. June 27, 2017) (where the

factual basis for the unfair competition claim is the same as for the tortious interference count

“the better course is to dismiss the unfair competition claim as duplicative”); Diversified Indus.,

Inc. v. Vinyl Trends, Inc., No. CIV.A. 13-6194 JBS, 2014 WL 1767471, at *7 (D.N.J. May 1,

2014) (same); Sussex Commons Outlets, L.L.C. v. Chelsea Prop. Grp., Inc., No. A-3714-07T1,

2010 WL 3772543, at *10 (N.J. Super. Ct. App. Div. Sept. 23, 2010) (dismissing unfair

competition and tortious interference claims based on identical facts); Coast Cities Truck Sales,

Inc. v. Navistar Int'l Transp. Co., 912 F. Supp. 747, 786 (D.N.J. 1995) (“New Jersey law would

find unfair competition where there has been tortious interference”; dismissing unfair

competition claim on summary judgment based on dismissal of unfair competition claim).

Moreover, the Amended Complaint’s allegations of tortious interference are implausible

and go beyond the level of vagueness permitted under the standards of notice pleading,

particularly with respect to the allegation that defendant “knew of” actual relationships between

Bambi Baby and specific customers (¶ 89), that defendant acted with a specific “design[] to

disrupt the existing and prospective economic relationships between Bambi Baby and its


16

customers” and that the only purpose of the alleged disruption of those relationships by

defendant was actual malice, i.e., “the intentional and improper purpose of causing damage” to

plaintiff (¶ 92).

Based on the pleadings, the allegation here concerns economic relationships – both

“existing” and “prospective” – between plaintiff and its actual (not prospective) customers. “The

primary difference between these two related torts is the existence of a contract, rather than

merely a reasonable expectation of an agreement. Thus, to plead a claim for interference with

prospective contractual relations, a claimant must demonstrate a reasonable probability of a

prospective, rather than actual, contractual relation. . . . . The mere allegation of lost business

does not suffice [and a]t a minimum, a plaintiff must at least allege specific prospective

contracts that were interfered with.” Canfield Sci., Inc. v. Melanoscan, LLC, No. CV 16-4636,

2017 WL 2304644, at *5 (D.N.J. May 25, 2017) (internal quotes and citations omitted).

That required specificity is manifestly absent here, where the Amended Complaint states

nothing more than “the relationships were disrupted as a result of defendants’ interference” (¶

90). As this Court explained in Canfield Scientific:

The allegations are not sufficient to plead that Defendants caused Canfield to lose any current or anticipated economic benefit. See Am. Millennium Ins. Co. v. First Keystone Risk Retention Grp., Inc., 332 Fed.Appx. 787, 790 (3d Cir. 2009) (affirming district court's dismissal of plaintiff's tortious interference claim when the “complaint fail[ed] to identify a single, specific customer that [plaintiff] either lost or could have acquired but for [defendants'] conduct”); Diversified Indus., Inc. v. Vinyl Trends, Inc., No. 13–6194, 2014 WL 1767471, at *5 (D.N.J. May 1, 2014) (dismissing a tortious interference counterclaim when “[d]efendant fail[ed] to identify any actual contract or customer affected by [p]laintiff's alleged misconduct.”); Lucas Indus., Inc. v. Kendiesel, Inc., No. 93–4480, 1995 WL 350050, at *9 (D.N.J. June 9, 1995) (granting motion to dismiss where counter-claimant failed to identify “a single customer or a single contract that [ ] was likely to consummate, but failed to consummate, due to the actions taken by [counter-claim defendant]”).


17

Canfield Scientific, 2017 WL 2304644, at *6. Moreover, the conclusory allegation of the

Amended Complaint that defendant knew, or even could have known, about any of the

“relationships” supposedly “disrupted” is simply implausible given the lack of any pleading of a

factual basis for such a conclusion, and provides an additional ground for dismissing this claim.

See id. at *7 (“Canfield has also failed to plausibly plead the necessary knowledge and intent, or

malice element of tortious interference”; dismissing claim for tortious interference).

CONCLUSION

For the foregoing reasons, defendants respectfully request that this Court dismiss the

Amended Complaint with prejudice pursuant to Fed. R. Civ. P. 12(b)(6).

MANDELBAUM SALSBURG PC

_________________________ Ronald D. Coleman

3 Becker Farm Road Roseland, NJ 07068 973-736-4600 [email protected] for Defendant Madonna Ventures, Inc.

March 17, 2019


rcoleman

Ronald D. Coleman

united states district court district of new jersey€¦ · madonna ventures, inc. bambi baby.com...

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