Case: 1:05-cv-00043-SSB-TSB Doc #: 19 Filed: 09/08/05 Page: 1 of 13 PAGEID #: 178
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF OHIO
` WESTERN DIVISION
`Ripple Junction Design Co.,
`Plaintiff,
`
`))
`
`
`) Case No. 1:05-CV-43
`)
`
`Defendant.
`
`)
`O R D E R
`This matter is before the Court on Defendant Olaes
`Enterprises, Inc.’s motion to dismiss, transfer or stay (Doc. No.
`9). For the reasons set forth below, Defendant’s motion to
`dismiss is GRANTED IN PART AND DENIED IN PART; Defendant’s motion
`to transfer is MOOT; Defendant’s motion to stay is MOOT.
`I. Background
`On January 24, 2005, Plaintiff Ripple Junction Design
`Co. (“Ripple Junction”) filed a complaint asserting federal
`claims of trademark and copyright infringement against Defendant
`Olaes Enterprises, Inc. (“ODM”). The complaint also asserts a
`claim against ODM under the Lanham Act for false designation of
`origination and a state common law claim for unfair competition.
`Ripple Junction’s claims relate to the following marks: “MY
`
`)))
`
`)
`
`))
`
`vs.
`
`Olaes Enterprises, Inc.,
`d/b/a ODM,
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF OHIO
` WESTERN DIVISION
`Ripple Junction Design Co.,
`Plaintiff,
`
`))
`
`
`) Case No. 1:05-CV-43
`)
`
`Defendant.
`
`)
`O R D E R
`This matter is before the Court on Defendant Olaes
`Enterprises, Inc.’s motion to dismiss, transfer or stay (Doc. No.
`9). For the reasons set forth below, Defendant’s motion to
`dismiss is GRANTED IN PART AND DENIED IN PART; Defendant’s motion
`to transfer is MOOT; Defendant’s motion to stay is MOOT.
`I. Background
`On January 24, 2005, Plaintiff Ripple Junction Design
`Co. (“Ripple Junction”) filed a complaint asserting federal
`claims of trademark and copyright infringement against Defendant
`Olaes Enterprises, Inc. (“ODM”). The complaint also asserts a
`claim against ODM under the Lanham Act for false designation of
`origination and a state common law claim for unfair competition.
`Ripple Junction’s claims relate to the following marks: “MY
`
`)))
`
`)
`
`))
`
`vs.
`
`Olaes Enterprises, Inc.,
`d/b/a ODM,
`
`
`
`Case: 1:05-cv-00043-SSB-TSB Doc #: 19 Filed: 09/08/05 Page: 2 of 13 PAGEID #: 179
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`WIENER” “MY WIENER (with the image of a profile of a Dachshund),”
`and “I Ì WIENER (with the image of a profile of a Dachshund).”
`Complaint ¶ 4. Ripple Junction has filed both trademark and
`copyright applications, but to date no action has been taken.
`See id.; id. ¶ 6. The complaint alleges that ODM has infringed
`its trademarks and copyrights by selling t-shirts that sometimes
`bear an image of a Dachshund and with the sayings “My Wiener is
`Happy,” “My Wiener Likes You,” or “Balanced Wiener.” Id. ¶ 12.
`The complaint discloses that Ripple Junction sent a
`cease and desist letter to ODM in September 2004, but an exchange
`of correspondence between the parties did not resolve the
`dispute. Id. ¶¶ 12-16. Instead, in December 2004, ODM filed a
`complaint for a declaratory judgment of non-infringement against
`Ripple Junction in the United States District Court for the
`Southern District of California. However, Judge Benitez recently
`dismissed ODM’s case in California as not being appropriate for
`declaratory relief on the grounds ODM was using its declaratory
`judgment as a means of forum shopping. Additionally, Judge
`Benitez ruled that the first-to-file rule did not apply because
`ODM was forum shopping. See Doc. No. 18.
`On February 18, 2005, ODM filed a motion to dismiss,
`transfer, or stay this case. In its motion, ODM argued that this
`Court should stay this case or transfer it to the Southern
`District of California under the first-to-file rule. However,
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`Judge Benitez’s decision that the first-to-file rule does not
`apply and dismissing ODM’s declaratory judgment action moots this
`aspect of ODM’s motion. Alternatively, ODM argues that the Court
`should dismiss Ripple Junction’s claims pursuant to Rule 12(b)(6)
`of the Federal Rules of Civil Procedure. ODM argues that the
`complaint insufficiently states a claim for trademark
`infringement because it fails to allege the exact word or graphic
`designations it claims as a trademark. ODM also argues that
`“wiener” cannot be registered as a trademark because it is a
`generic or common descriptive term. ODM moves to dismiss Ripple
`Junction’s copyright infringement claims because, although it has
`filed applications for registration with the PTO, its
`applications have not yet been approved. Finally, ODM moves to
`dismiss Ripple Junction’s claim for injunctive relief, which is
`pled as a separate cause of action, because injunctive relief is
`not a substantive cause of action.
`II. Rule 12(b)(6) Standard of Review
`A motion to dismiss pursuant to Rule 12(b)(6) operates
`to test the sufficiency of the complaint. In its consideration
`of a motion to dismiss under Rule 12(b)(6), the court is required
`to construe the complaint in the light most favorable to the
`Plaintiff and accept all well-pleaded factual allegations in the
`complaint as true. Scheuer v. Rhodes, 416 U.S. 232, 236 (1974)
`and Roth Steel Products v. Sharon Steel Corp., 705 F.2d 134, 155
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`(6th Cir. 1983). A court, however, will not accept conclusions
`of law or unwarranted inferences which are presented as factual
`allegations. Blackburn v. Fisk University, 443 F.2d 121, 124
`(6th Cir. 1974). A court will, though, accept all reasonable
`inferences that might be drawn from the complaint. Fitzke v.
`Shappell, 468 F.2d 1072, 1076-77 n.6 (6th Cir. 1972).
`When considering the sufficiency of a complaint
`pursuant to a Rule 12(b)(6) motion, this Court recognizes that "a
`complaint should not be dismissed for failure to state a claim
`unless it appears beyond doubt that the Plaintiff can prove no
`set of facts in support of his claim which would entitle him to
`relief." Conley v. Gibson, 355 U.S. 41, 45-6 (1957).
`III. Analysis
`A. Trademark Infringement
`In order to prevail on a claim for trademark
`infringement, the plaintiff must establish: 1) ownership of a
`specific service mark in connection with specific services; 2)
`continuous use of the service mark; 3) establishment of secondary
`meaning if the mark is descriptive; and 4) a likelihood of
`confusion amongst consumers due to the contemporaneous use of the
`parties' service marks in connection with the parties' respective
`services. Homeowners Group, Inc. v. Home Mktg Spec., Inc., 931
`F.2d 1100, 1105 (6th Cir. 1991).
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`Contrary to ODM’s motion, Ripple Junction’s trademark
`infringement complaint satisfies each of these elements. The
`complaint alleges that Ripple Junction is the owner of the
`copyrights using “WIENER” and the image of a Dachshund in
`connection with selling clothing and novelty goods. Complaint ¶
`8. The complaint further alleges that Ripple Junction has been
`using these marks since August of 2003. Id. ¶ 5. The complaint
`alleges that customers will likely be confused by ODM’s use of
`similar marks. Complaint ¶¶ 22-23. Although ODM argues that
`“WIENER” is merely a generic or descriptive term, the complaint
`alleges that its marks are famous and “enable consumers to rely
`upon the WIENER name and Dachshund dog logo when purchasing
`clothing and/or novelty goods.” Complaint ¶¶ 10, 11. This last
`contention is sufficient to allege that Ripple Junction’s
`trademarks have acquired secondary meaning. See Champions Golf
`Club, Inc. v. The Champions Golf Club, Inc., 78 F.3d 1111, 1117
`(6th Cir. 1996)(“To acquire a secondary meaning in the minds of
`the buying public, an article of merchandise when shown to a
`prospective customer must prompt the affirmation, ’That is the
`article I want because I know its source,’ and not the negative
`inquiry as to ’Who makes that article?’"). Therefore, the
`complaint meets all of the requirements to state a claim for
`trademark infringement. Finally, the Court notes that Ripple
`Junction’s marks are entitled to protection under the Lanham Act
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`even if they are unregistered. Two Pesos, Inc. v. Taco Cabana,
`Inc., 505 U.S. 763, 767-68 (1992).
`Accordingly, ODM’s motion to dismiss Ripple Junction’s
`Lanham Act trademark infringement claims is not well-taken and is
`DENIED.
`
`B. Copyright Infringement
`ODM moves to dismiss Ripple Junction’s claims for
`copyright infringement because the Copyright Office has not
`approved its applications for copyrights. Ripple Junction argues
`that the filing of its applications with the Copyright Office is
`sufficient to confer standing to sue ODM for copyright
`infringement. It is well-established that registration is a
`prerequisite to filing suit for copyright infringement. Murray
`Hill Pub., Inc. v. ABC Comm., Inc., 264 F.3d 622, 630 (6th Cir.
`2001). In this case, the complaint demonstrates that Ripple
`Junction has filed applications to register its copyrights, but
`that the Copyright Office has taken no action on its
`applications. The question presented is whether a plaintiff
`satisfies the condition precedent by merely filing an application
`for registration or whether the Copyright Office must approve the
`application and issue a certificate of registration before the
`plaintiff can maintain a lawsuit for copyright infringement.
`There is a split of authority on whether an application
`for registration satisfies the condition precedent. See Apple
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`Barrel Prod., Inc. v. Beard, 730 F.2d 384, 386 (5th Cir. 1984)(in
`order to establish standing, plaintiff only need show payment of
`fee, deposit of work in question, and receipt by the Copyright
`Office of the registration application); Iconbazaar, L.L.C. v.
`America Online, Inc., 308 F. Supp.2d 630, 633 (M.D.N.C.
`2004)(same)(collecting cases identifying split of authority); La
`Resolana Architects, PA v. Clay Realtors Angel Fire, 416 F.3d
`1195, 1200-01 (10th Cir. 2005)(“[O]nly upon registration or
`refusal to register is a copyright holder entitled to sue for
`copyright infringement under § 411.”); Marshall & Swift v. BS & A
`Software, 871 F. Supp. 952, 957-58 (W.D.Mich. 1994)(application
`for copyright registration insufficient to satisfy condition
`precedent; plaintiff must obtain certificate of registration
`before filing suit); Loree Rodkin Mmgt. Corp v. Ross-Simons,
`Inc., 315 F. Supp.2d 1053, 1054-56 (C.D.Cal. 2004)(same).
`The Sixth Circuit has not specifically addressed
`whether the registrant’s application for a copyright satisfies
`the condition precedent necessary to filing an action for
`copyright infringement. As a matter of straightforward statutory
`construction, this Court agrees with those courts, in particular
`the court in Rodkin Mmgt., who have decided that a district court
`does not have subject matter jurisdiction over a copyright
`infringement action until the Copyright Office issues a
`certificate of registration to the applicant, or the Copyright
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`Office refuses the application. In other words, merely filing an
`application for registration is insufficient to satisfy the
`condition precedent to filing an infringement suit.
`Section 411(a) of the Copyright Act provides in
`relevant part:
`Except for an action brought for a violation of the
`rights of the author under section 106A(a), and subject
`to the provisions of subsection (b), no 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. In any case, however, where
`the deposit, application, and fee required for
`registration have been delivered to the Copyright
`Office in proper form and registration has been
`refused, the applicant is entitled to institute an
`action for infringement if notice thereof, with a copy
`of the complaint, is served on the Register of
`Copyrights.
`17 U.S.C. § 411(a).1 This section makes clear that an
`infringement suit may not instituted until registration of the
`copyright is completed. In turn, § 410(a) states that:
`When, after examination, the Register of Copyrights
`determines that, in accordance with the provisions of
`
`“Preregistration” suggests an application process.
`1
`“Preregistration,” however, is a term of art under the Copyright
`Act which applies to a class of works determined by the Register
`of Copyrights to have a history of infringement prior to
`authorized commercial distribution. 17 U.S.C. § 408(f).
`Although other classes of works may be eligible for
`preregistration, it appears that Congress enacted the
`preregistration provisions to protect producers of motion
`pictures and sound recordings from pre-distribution infringement.
`Preregistration is not a substitute for registration, however,
`and Ripple Junction does not otherwise contend that the
`preregistration provisions apply here. See generally 70 Fed.
`Reg. 42286-01 (July 22, 2005).
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`this title, the material deposited constitutes
`copyrightable subject matter and that the other legal
`and formal requirements of this title have been met,
`the Register shall register the claim and issue to the
`applicant a certificate of registration under the seal
`of the Copyright Office.
`17 U.S.C. § 410(a). Section 410(a) shows that a claim is not
`registered until the Copyright Office determines that the
`material under submission is copyrightable and the other formal
`requirements of the Act have been met. Read together, § 411(a)
`and § 410(a) show that “registration” means that the Copyright
`Office has determined that the copyright claim has been approved
`and that an infringement suit may not be instituted until
`registration has been completed. Had Congress wished to
`authorize the filing of infringement suits upon an application to
`register a copyright it could have easily said so. The Court
`notes that § 409 is entitled “Application for Copyright
`Registration” and sets forth the information and materials the
`applicant is required to file with Copyright Office to obtain
`registration. Thus, Congress clearly wanted to differentiate the
`application process from the registration process.
`The Court also notes that § 411(a) provides that an
`infringement suit may be initiated after the application for
`registration is refused. If a party could file an infringement
`suit merely upon filing his application for registration, there
`would be no need to include a provision stating that a suit can
`be maintained after the application is refused. A party could
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`simply file suit when he filed his application for registration
`and it would make no difference whether the application was
`granted or refused in terms of satisfying the condition
`precedent. The Court must interpret a statute to give effect to
`each clause, sentence, and word so that none is rendered
`superfluous or surplusage. United States v. Perry, 360 F.3d 519,
`537 (6th Cir. 2004). An interpretation of § 411(a) that allows
`filing an infringement suit upon application for registration
`would read out of the statute the provision that a suit can be
`filed after the application is refused. Finally, the Court
`observes that by specifically stating that an infringement suit
`may be instituted after registration is completed, or the
`application is refused, but omitting that suit can be instituted
`upon application for registration, Congress intended for the
`Copyright Office to have the first opportunity to review the
`merits of the claimed copyright.
`For the reasons stated, the Court concludes that the
`condition precedent to filing an infringement suit established by
`§ 411(a) is not satisfied by the filing of an application for
`registration. Rather, in order to bring an infringement action
`on a copyright, the Copyright Office must have either registered
`the copyright or refused the application. In this case, the
`complaint demonstrates that Ripple Junction has filed
`applications to register its copyrights, but they have not been
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`registered by the Copyright Office. Nor has the Copyright Office
`refused Ripple Junction’s applications. Consequently, Ripple
`Junction has not met the condition precedent to filing an
`infringement suit and the Court does not have jurisdiction over
`its copyright infringement claims. Accordingly, ODM’s motion to
`dismiss Ripple Junction’s copyright infringement claims is well-
`taken and is GRANTED. Count Three of the complaint is DISMISSED
`WITHOUT PREJUDICE.
`
`C. Miscellaneous
`ODM moves to dismiss Ripple Junction’s claim for
`injunctive relief because it is a form of relief rather than a
`cause of action. The Court notes and appreciates the technical
`accuracy of the distinction identified by ODM. Nevertheless, the
`Lanham Act authorizes a district court to award injunctive relief
`to the plaintiff. Frisch’s Restaurants, Inc. v. Elby’s Big Boy
`of Steubenville, Inc., 670 F.2d 642, 647 (6th Cir. 1982).
`Dismissing Ripple Junction’s claim for injunctive relief because
`it is captioned as a cause of action rather than a claim for
`relief elevates form over substance. Accordingly, ODM’s motion
`to dismiss Ripple Junction’s claim for injunctive relief is not
`well-taken and is DENIED.
`Finally, ODM argues that Ripple Junction’s unfair
`competition claims should be dismissed to the extent they
`coincide with rights provided under the Copyright Act. Ripple
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`Junction responds that its unfair competition claims arise only
`under the Lanham Act, not under the Copyright Act. This argument
`overlooks, however, Count Five of the complaint, which states in
`pertinent part, “The acts complained of in Counts One through
`Four constitute unfair competition under the common law of the
`State of Ohio, and under the federal unfair competition laws.”
`Complaint ¶ 39.
`The Court agrees with ODM that Ripple Junction’s state
`law unfair competition claims are preempted to the extent they
`are based on ODM’s alleged infringement of its copyrights. See
`ATC Dist. Group, Inc. v. Whatever It Takes Trans. & Parts, Inc.,
`402 F.3d 700, 713-14 (6th Cir. 2005). Therefore, to that extent,
`ODM’s motion to dismiss is well-taken and is GRANTED. On the
`other hand, state law unfair competition claims are not preempted
`by federal law and in fact parallel Lanham Act claims for
`trademark infringement and false designation of origin.
`Interactive Prod. Corp. v. a2Z Mobile Office Solutions, Inc., 326
`F.3d 687, 694 (6th Cir. 2003). Therefore, to the extent Ripple
`Junction’s common law unfair competition claims parallel the
`Lanham Act, ODM’s motion to dismiss is not well-taken and is
`DENIED.
`
`Conclusion
`In conclusion, ODM’s motion to dismiss, transfer, or
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`stay is GRANTED IN PART, DENIED IN PART, and MOOT IN PART. To
`the extent that ODM moves to transfer or stay this case under the
`first-to-file rule, the motion is MOOT. ODM’s motion is well-
`taken and is GRANTED to the extent it seeks dismissal of Ripple
`Junction’s federal copyright claims and state unfair competition
`claims which are based on copyright infringement. Ripple
`Junction’s federal copyright claims are DISMISSED WITHOUT
`PREJUDICE. Ripple Junction’s state law unfair competition claims
`based on copyright infringement are preempted, and therefore, are
`DISMISSED WITH PREJUDICE. ODM’s motion to dismiss Ripple
`Junction’s federal Lanham Act claims, parallel state law unfair
`competition claims, and claim for injunctive relief is not well-
`taken and is DENIED.
`
`IT IS SO ORDERED
`
`Date September 8, 2005 s/Sandra S. Beckwith
` Sandra S. Beckwith, Chief Judge
`
` United States District Court
`
`13
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