UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF TENNESSEE
`NASHVILLE DIVISION
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`
`
`DONALD A. CHIUSA, JR. and
`COLOR COPPER LLC,
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`Plaintiffs,
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`v.
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`FRED STUBENRAUCH and
`COPPER VENTURES LLC,
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`Defendants.
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`Case No. 3:21-cv-00545
`Judge Aleta A. Trauger
`
`MEMORANDUM
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`Defendants Fred Stubenrauch and Copper Ventures LLC (“CV”) have filed a Motion to
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`Dismiss First Amended Complaint (Doc. No. 46), to which plaintiffs Donald A. Chiusa, Jr. and
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`Color Copper LLC (“CC”) have filed a Response (Doc. No. 54), and the defendants have filed a
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`Reply (Doc. No. 59). For the reasons set out herein, the motion will be granted in part and denied
`
`in part.
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`A. History
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`I. BACKGROUND1
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`The parties in this case are former business associates. Stubenrauch, who lives in Tucson,
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`Arizona, is the controlling member of CV, which makes and sells “residential fixtures and décor
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`made from aged and/or etched copper.” (Doc. No. 37 ¶¶ 14, 24.) Stubenrauch’s treated copper
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`sheets feature patterns that are unusually colorful compared to the metal’s ordinary appearance:
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`
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`1 The facts herein are taken from the First Amended Complaint (Doc. No. 37) and are treated as true for the
`purposes of Rule 12(b)(6).
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`
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`Case 3:21-cv-00545 Document 62 Filed 07/15/22 Page 1 of 29 PageID #: 427
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`1
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`(Doc. No. 37-3 at 50.)
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`Chiusa, who lives in Spring Hill, Tennessee, is the owner and operator of CC, which
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`“create[es] commercial websites and sell[s]various products for manufacturers.” (Doc. No. 37 ¶
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`4.) In the early 2010s, Stubenrauch approached Chiusa about working together to launch a website
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`selling Stubenrauch’s copper lampshades and mirrors. (Id. ¶ 24.) Chiusa agreed, and the venture
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`was apparently enough of a success—or at least showed enough promise—that the two men
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`decided to expand their collaboration. They agreed that Chiusa would create and operate a website
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`marketing Stubenrauch’s copper sheets “to a new industry for copper countertops, bar tops and
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`kitchen backsplash.” (Id. ¶ 25.) That website, located at http://www.colorcopper.com, would
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`function as an online distributorship of Stubenrauch’s products under the trade name COLOR
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`COPPER.COM.2 (Id. ¶¶ 25–26.)
`
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`2 The space between “color” and “copper” is apparently intentional and appears in CC’s trademark
`registration, which the court will discuss infra. To reflect the registration, the court will use the space when
`discussing the mark itself. The space, however, does not (and could not) actually appear in the underlying
`website URL.
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`
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`2
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`The parties went forward with the http://www.colorcopper.com project, but they never
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`signed a formal written document memorializing and defining the nature of their business
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`relationship. Chiusa asserts, however, that their dealings followed the “normal course of the
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`supplier-distributor relationship,” which Chiusa describes as follows:
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`(1) a consumer would place an order for the copper product through the Plaintiffs’
`Website; (2) Mr. Chiusa would communicate that order to Mr. Stubenrauch; (3)
`Mr. Stubenrauch and CV would then fill the order by creating the copper product;
`(4) in most instances Mr. Stubenrauch and CV would fabricate and dropship the
`finished product directly to the customer using Mr. Chiusa’s shipping account with
`Federal Express; (5) on rare occasions and in special circumstances, Mr.
`Stubenrauch and CV would ship the customers’ finished order to Plaintiffs in
`Tennessee, and Plaintiffs would ship it to the customer.
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`(Id. ¶ 28.) The parties continued doing business on those terms for nearly a decade, between 2010
`
`and 2019. (Id. ¶ 29.)
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`
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`In January 2019, however, Stubenrauch contacted another man, Eric Wasser, about
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`creating a new website for CV. Stubenrauch did not inform Chiusa of the plan, but he told Wasser
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`that he was free to use photos and text from Chiusa’s website. (Id. ¶ 30.) Wasser accepted the
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`assignment and built the new website, which Chiusa eventually discovered in December of that
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`year. Chiusa contacted Stubenrauch to investigate the situation, and Stubenrauch invited Chiusa
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`to “work together with” Wasser, who, Stubenrauch told Chiusa, would “make them both a lot of
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`money.” (Id. ¶ 31.) Chiusa declined the offer. (Id.)
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`Chiusa’s decision not to go into business with Wasser turned out to be a wise one, at least
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`according to the First Amended Complaint. Wasser allegedly “proceeded to misappropriate the
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`moneys coming in through the website while never delivering any copper products to customers,”
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`eventually “abscond[ing] with the money.” (Id. ¶ 32.) Wasser—who, at least as of the filing of the
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`First Amended Complaint, still had not been tracked down (Id.)—is not a party to this case and
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`therefore has not had the opportunity to defend himself against the serious allegations against him.
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`3
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`This case, however, is not ultimately about what Wasser may have done. It is, rather, about the
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`chain of events that Wasser’s actions set in motion.
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`Chiusa, who says he was concerned that his own reputation might be damaged by his
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`association with Stubenrauch
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`in
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`the wake of
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`the Wasser fiasco,
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`took down CC’s
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`http://www.colorcopper.com website marketing the CV products. (Id. ¶ 33.) Stubenrauch urged
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`Chiusa not to shut the site down, and, when Chiusa refused his request, Stubenrauch offered to
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`buy the http://www.colorcopper.com site from him. Chiusa rebuffed that proposal as well. As a
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`result, Stubenrauch was suddenly left without either his preexisting revenue stream from Chiusa’s
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`website or the expected new revenue stream from Wasser’s. (Id. ¶¶ 33–35.)
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`In in an attempt to right the ship and offset his losses, Stubenrauch created a new website,
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`which the court will refer to as the “Subject Copper Website,” based on its role in this case. The
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`Subject Copper Website appears to use many of the photographs that Chiusa had used on the
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`http://www.colorcopper.com website and to reproduce at least some portions of the original site’s
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`text.
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`(Id. ¶ 35 &
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`illustrations.) Stubenrauch’s new website can be
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`found at
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`http://www.coloredcopper.com—that is, the same address as the scuttled collaborative website,
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`with “color” changed to “colored”—and uses a logo of the trade name COLOREDCOPPER.COM
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`that shares a number of visual characteristics with the COLOR COPPER.COM mark. (See id.)
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`Stubenrauch also allegedly created a new website directly competing with another of
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`Chiusa’s ventures. At some point during the parties’ relationship, Chiusa had started what he refers
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`to as an “ancillary business selling various types of epoxy products over the internet” under the
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`trade name ULTRACLEAR EPOXY. (Id. ¶ 29.) After the parties’ falling out, Stubenrauch created
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`his own website selling epoxy, which the court will refer to as the “Subject Epoxy Website.” (Id.
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`4
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`¶ 36.) The Subject Epoxy website uses language that appears to be taken directly from Chiusa’s
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`site. (Id.)
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`On July 20, 2021, Chiusa filed a Complaint against Stubenrauch, CV, and another
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`corporate defendant that is no longer part of this case. (Doc. No. 1.) On October 4, 2021, Chiusa—
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`now joined by CC as a co-plaintiff—filed the First Amended Complaint. (Doc. No. 37.) The
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`plaintiffs state what they characterize as seven counts, although they plead more than seven
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`theories of liability. Count I is for willful copyright infringement. (Id. ¶¶ 54–68.) Count II is for
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`breach of the oral distribution agreement between Chiusa/CC and Stubenrauch/CV. (Id. ¶¶ 69–
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`72.) Counts III through VI are all Lanham Act claims, for, respectively, trademark infringement
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`(Count III), false advertising (Count IV), trade dress infringement and “trade name infringement”
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`(Count V), and false designation of origin (Count VI). (Id. ¶¶ 73–110.) Count VI also appears to
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`have been intended to include a Tennessee Consumer Protection Act (“TCPA”) claim, which
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`should have been pleaded pursuant to Tenn. Code Ann. § 47-18-104(b).3 (Id. ¶¶ 106–10.) Count
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`VII is for conversion. (Id. ¶¶ 111–15.)
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`B. The Plaintiffs’ Registrations
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`In support of their claims, the plaintiffs have filed four certificates of federal registration
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`for pieces of intellectual property, as well as some supporting documentation.
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`
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`1. The COLOR COPPER.COM Design Mark
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`On January 12, 2021, the United States Patent and Trademark Office (“USPTO”) granted
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`CC registration of a design mark “consist[ing] of the stylized wording ‘COLOR COPPER.COM”,
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`3 The plaintiffs cite “40 T.C.A. § 104,” which is incorrect, as well as “47 T.C.A. §104(b),” which appears
`to be an attempt to cite the correct section but which uses a citation form that omits the chapter number of
`the cited statute, a necessary piece of information under the Tennessee Code Annotated’s codification
`practices.
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`
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`5
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`[with] a diamond shape between the wording ‘COLOR’ and ‘COPPER’ made up of four smaller
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`diamonds, each diamond having a pattern inside of it.” (Doc. No. 37-1 at 1.)
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`The registration of the COLOR COPPER.COM design mark includes the disclaimer that “[n]o
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`claim is made to the exclusive right to use the following apart from the mark as shown:
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`‘COPPER.COM.’” (Id.) The registration includes a claimed first use in commerce of February 16,
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`
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`2010. (Id.)
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`
`
`
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`2. The Color Copper Website
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`On June 15, 2021, the United States Copyright Office granted Chiusa a copyright
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`registration for a “Color Copper Website.” (Doc. No. 37-4 at 1.) According to the Certificate of
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`Registration, the author of the underlying copyright-protected work was Chiusa, who created the
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`“[n]ew and revised text and photographs” included on the website. (Id.) The certificate expressly
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`states that the “[p]revious version of the website” is excluded from the registration, but that
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`language is not accompanied by any clarification regarding which elements were new, and
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`therefore (at least potentially) covered by the registration, and which were old, and therefore
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`subject to the disclaimer. (Id.) The copy of the website deposited with the Copyright Office appears
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`to consist of 7 pages of printouts from the http://www.colorcopper.com website. (Doc. No. 37-5.)
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`
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`3. The UltraClear Epoxy Website
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`Also on June 15, 2021, the Copyright Office granted Chiusa a registration for an
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`“UltraClear Epoxy Website.” (Doc. No. 37-6 at 1.) This registration, similarly to the other website
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`registration, identifies Chiusa as the creator of “text, photograph(s), [and] artwork” in the
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`registered work and includes a disclaimer excluding the undefined “previous version” of the
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`
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`6
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`website. (Id.) The copy deposited with the Copyright Office appears to be five pages of printouts
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`of a website with the URL of http://www.bestbartopepoxy.com/epoxy/. (Doc. No. 37-7.)
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`4. The Color Copper Brochure
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`On June 17, 2021, the Copyright Office granted Chiusa a copyright registration for a “Color
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`Copper Brochure.” (Doc. No. 37-2 at 1.) The registration identifies Chiusa as the author of the
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`copyrighted work, stating that he created “text, photograph(s), [and] artwork on p.1” therein. (Id.)
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`The copy of the brochure deposited with the copyright office is 50 pages long and consists
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`primarily of photographs depicting products and product features purportedly available from
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`“ColorCopper.com.” (Doc. No. 37-3.)
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`II. LEGAL STANDARD
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`In deciding a motion to dismiss for failure to state a claim under Rule 12(b)(6), the court
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`will “construe the complaint in the light most favorable to the plaintiff, accept its allegations as
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`true, and draw all reasonable inferences in favor of the plaintiff.” Directv, Inc. v. Treesh, 487 F.3d
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`471, 476 (6th Cir. 2007); Inge v. Rock Fin. Corp., 281 F.3d 613, 619 (6th Cir. 2002). The Federal
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`Rules of Civil Procedure require only that a plaintiff provide “a short and plain statement of the
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`claim that will give the defendant fair notice of what the plaintiff’s claim is and the grounds upon
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`which it rests.” Conley v. Gibson, 355 U.S. 41, 47 (1957). The court must determine only whether
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`“the claimant is entitled to offer evidence to support the claims,” not whether the plaintiff can
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`ultimately prove the facts alleged. Swierkiewicz v. Sorema N.A., 534 U.S. 506, 511 (2002) (quoting
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`Scheuer v. Rhodes, 416 U.S. 232, 236 (1974)).
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`The complaint’s allegations, however, “must be enough to raise a right to relief above the
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`speculative level.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007). To establish the
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`“facial plausibility” required to “unlock the doors of discovery,” the plaintiff cannot rely on “legal
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`conclusions” or “[t]hreadbare recitals of the elements of a cause of action,” but, instead, the
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`plaintiff must plead “factual content that allows the court to draw the reasonable inference that the
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`defendant is liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678-79 (2009).
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`“[O]nly a complaint that states a plausible claim for relief survives a motion to dismiss.” Id. at
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`679; Twombly, 550 U.S. at 556.
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`A. Copyright Infringement
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`III. ANALYSIS
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`Included in a copyright holder’s rights are the right to reproduce the copyright-protected
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`work and the right to make “derivative works” that are not identical to, but are derived from, the
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`original work. 17 U.S.C. § 106(1)–(2). Generally speaking, a person becomes liable for copyright
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`infringement if he engages in a protected use of a copyright-protected work without either
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`permission from the owner or, in the alternative, some legally recognized automatic right of use—
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`such as the right to engage in fair use4 or the right to an automatic statutory license.5 Based on
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`those principles, a claim of copyright infringement typically “requires proof of ‘(1) ownership of
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`a valid copyright, and (2) copying of constituent elements of the work that are original.’” ATC
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`Distribution Grp., Inc. v. Whatever It Takes Transmissions & Parts, Inc., 402 F.3d 700, 705 (6th
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`Cir. 2005) (quoting Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991)).
`
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`4 The fair use doctrine “permits [and requires] courts to avoid rigid application of the copyright statute
`when, on occasion, it would stifle the very creativity which that law is designed to foster.” Princeton Univ.
`Press v. Mich. Document Servs., Inc., 99 F.3d 1381, 1385 (6th Cir. 1996) (quoting Campbell v. Acuff–Rose
`Music, Inc., 510 U.S. 569, 577 500 (1994)) (alteration in original).
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`
` 5
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` For example, Congress has created “statutory licenses [that] enable digital audio services to perform
`copyrighted sound recordings by paying predetermined royalty fees, without separately securing a
`copyright holder’s permission.” SoundExchange, Inc. v. Copyright Royalty Bd., 904 F.3d 41, 46 (D.C. Cir.
`2018).
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`
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`8
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`The defendants argue first that the plaintiffs have not sufficiently identified which elements
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`of the underlying websites and brochure they consider to be copyright-protected. The copyright
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`registration certificates make clear that Chiusa claims ownership of rights to only some
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`components of the underlying works, but the certificates provide little, if any, guidance for sorting
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`the claimed elements from the non-claimed elements. Moreover, there are likely some elements of
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`the underlying works that are not only not Chiusa’s, but are not protectable by copyright at all.
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`Copyright protection is not available to any and all printed materials, websites, or other pieces of
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`communication without exception. Rather, “[t]he United States Constitution requires that,” for a
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`work to qualify for copyright protection, “the work [must] be ‘original.’” Tomaydo–Tomahhdo,
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`LLC v. Vozary, 629 F. App’x 658, 660 (6th Cir. 2015) (citing U.S. Const. art. I, § 8, cl. 8; Feist,
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`499 U.S. at 346). Purely factual information, in contrast, is “free to the world.” Stromback v. New
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`Line Cinema, 384 F.3d 283, 296 (6th Cir. 2004) (quoting Taylor v. Metro–Goldwyn–Mayer
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`Studios, 115 F. Supp. 156, 157 (S.D. Cal. 1953)). Similarly, courts have held that copyright
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`protection does not prevent the use of “incidents, characters or settings which are as a practical
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`matter indispensable, or at least standard, in the treatment of a given topic.” Stromback, 384 F.3d
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`at 296 (quoting Atari, Inc. v. N. Am. Philips Consumer Elecs. Corp., 672 F.2d 607, 616 (7th Cir.
`
`1982)). Accordingly, simple facts and common turns of phrase that appear in marketing
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`materials—for example, about the features of a material or technology—are not protected by
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`copyright.
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`Marketing materials such as these may also implicate the limitation that copyright is
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`unavailable for the purely “utilitarian aspects of” a creation—that is, its “functionality,” as opposed
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`to its aesthetic content. Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468, 481 (6th Cir.
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`2015) (quoting 17 U.S.C.§ 101), aff’d sub nom. Star Athletica, L.L.C. v. Varsity Brands, Inc., 137
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`S. Ct. 1002 (2017). The creative, non-functional aspects of a useful design may be independently
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`protectable, but only insofar as they “can be separately identified from, and exist independently
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`of, [the] useful article.” Star Athletica, 137 S. Ct. at 1008. The functionality itself, however, is not
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`copyright’s concern. For example, two competitors may have identical functional features of their
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`websites without implicating copyright law, as long as there is no infringement on any expressive
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`element. Drawing the line between functional and non-functional features can, of course,
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`sometimes be difficult.
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`The defendants argue that many elements of the underlying websites are purely functional
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`and/or factual and are not entitled to copyright protection, and that may well be true. However,
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`other elements, such as the visual depictions and creative verbal descriptions included on the
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`websites and in the brochure, are plausibly entitled to protection. While the plaintiffs could have
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`been more precise in breaking down all of the constituent elements for which they are asserting
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`protection, the court is required to construe the First Amended Complaint favorably to their
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`position and only to dismiss their claims if they have failed to plead any plausibly actionable
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`infringement. Doing so, the court finds that the plaintiffs have specifically identified at least some
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`plausibly protected elements in the websites and brochure that were replicated in some of the
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`defendants’ materials.
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`For example, the defendants have reused specific photos from
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`the plaintiffs’
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`http://www.colorcopper.com website. (See Doc. No. 37 at 9.) Moreover, the Subject Epoxy
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`Website includes a number of full sentences that appear verbatim (or nearly so) on the plaintiffs’
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`site, such as the following passage, with the differences between the websites noted in brackets:
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`[UltraClear epoxy/DuraClear™ epoxy] boasts the most advanced level of shine,
`gloss, reflectivity, clarity and depth, and it locks in those optical qualities forever.
`The most sophisticated system of synthetic polymeric-based protection available.
`
`
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`Our Commercial-grade epoxy is engineered specifically for Bar Tops, Tabletops &
`Countertops.
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`(Doc. No. 37 at 11 (emphasis omitted).) While the protection available to that text and/or the
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`reproduced photos may be somewhat limited, given that they convey factual information, they do
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`contain some creative elements that are plausibly entitled to protection, such that outright copying
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`would be prohibited.6
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`The defendants argue next that, insofar as the plaintiffs have sufficiently identified the
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`allegedly protected elements of the websites and brochure, the plaintiffs have failed to plead, with
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`sufficient detail, that they actually own the rights to those elements.7 The defendants point out that,
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`while the plaintiffs’ certificates of registration might ordinarily provide prima facie evidence that
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`they own the relevant copyrights, the plaintiffs’ delay in registering at least some of the materials
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`should prevent them from relying on such a presumption. A certificate of registration is only prima
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`facie evidence of validity if it was “made before or within five years after first publication of the
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`work”; otherwise, “[t]he evidentiary weight to be accorded the certificate of a registration . . . shall
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`be within the discretion of the court.” 17 U.S.C. § 410(c). The certificate of registration for the
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`brochure, for example, describes the brochure as having been first published in 2013, but not
`
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`6 With regard to the issue of functionality in particular, the defendants argue that the overlapping website
`text from the epoxy websites is unprotected because the language was selected for the purpose of supporting
`positive search engine results, not conveying information to the human reader directly. The court need not
`wholly resolve, at this juncture, whether that argument might be viable for some aspects of the underlying
`website language, because the plaintiffs have sufficiently pleaded infringement of other elements. The court
`notes, however, that the cited text is neither an unintelligible list of keywords nor separate from the user-
`facing portions of the websites, and the defendants identify no caselaw suggesting that such language
`becomes exempt from copyright protection merely because its author had search engine results in mind,
`among the other functions of the text, when writing it.
`
` 7
`
` The plaintiffs have sought to introduce additional evidence, outside the four corners of the Complaint,
`addressing this issue. “If, on a motion under Rule 12(b)(6) or 12(c), matters outside the pleadings are
`presented to and not excluded by the court, the motion must be treated as one for summary judgment under
`Rule 56,” and “[a]ll parties must be given a reasonable opportunity to present all the material that is
`pertinent to the motion.” Fed. R. Civ. P. 12(d). The court, in its discretion, elects not to consider the
`additional materials and therefore will not convert the motion.
`
`
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`11
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`registered until 2021, meaning that the defendants appear to be correct that no automatic
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`presumption of validity is available. The lack of that presumption, however, is primarily a
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`hindrance to a plaintiff’s ability to make his case, not his ability to plead it. Regardless of any delay
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`in seeking registration, a plaintiff can state a claim by sufficiently pleading actual ownership.
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`The First Amended Complaint alleges that the “copyrighted pictures, images, text, and
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`artwork embodied” in the websites and brochure were “either created, taken, bought by, or
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`assigned to” the plaintiffs, but it does not provide any more detail. (Doc. No. 37 ¶ 23.) That bare-
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`bones assertion does test the boundaries of sufficient pleading. That said, the plaintiffs’ broad
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`language makes more sense when one considers that they are discussing works with multiple
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`components, some of which they may have come to hold the rights for through different means. A
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`given section of the brochure, for example, could include one purchased photograph, one
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`photograph made as a work-for-hire, and a piece of text written by Chiusa himself. Tracing the
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`accumulation of every right involved would be a substantial undertaking. In any event, the
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`governing standard here is not what the plaintiffs could have pleaded, but what Rule 8 requires.
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`Ultimately, as much as it may seem like the plaintiffs should be able to plead more detail—after
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`all, how can they know that they do own the materials at issue if they do not know how they own
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`them?—that does not mean that they were required to do so. The court will only grant a Rule
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`12(b)(6) motion if the complaint actually falls short of pleading a plausible claim.
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`If the plaintiffs are ultimately unable to establish their actual ownership of the copyrights—
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`which seems likely to require considerably more detail than they have pleaded—it will be fatal to
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`their copyright claims. The Federal Rules of Civil Procedure, however, require only that the
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`plaintiffs state a plausible claim for relief, not that they outline all of the foundational facts that
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`they will ultimately need to prove. The defendants have not identified any caselaw suggesting that,
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`in order to state a plausible claim for relief for copyright infringement, a plaintiff must plead not
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`only ownership itself but also the detailed story of how the plaintiff obtained that ownership. It is
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`sufficient that these plaintiffs have alleged that they held the underlying rights, which the
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`defendants infringed. The court therefore will not dismiss the claims for copyright infringement.
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`B. Lanham Act and Related State Claims8
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`
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`1. Trademark Infringement
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`The elements of a claim for trademark infringement under the Lanham Act are: (1) the
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`plaintiff’s ownership of the rights to a valid trademark; (2) the defendant’s use of the mark or a
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`similar mark in commerce; and (3) a likelihood that the defendant’s use would cause confusion.
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`Hensley Mfg. v. ProPride, Inc., 579 F.3d 603, 610 (6th Cir. 2009); see also 15 U.S.C. § 1114(1).
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`The defendants argue that the plaintiffs cannot satisfy the first element because their registered
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`trademark, COLOR COPPER.COM, is not valid, or at least does not include any valid rights that
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`would support the plaintiffs’ claims. The defendants argue that “color copper” is just an ordinary
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`and straightforward way to describe copper that has been treated to have a striking color—precisely
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`what the defendants sell—and therefore they should be free to use that phrase or any similar phrase
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`in association with their wares without implicating the Lanham Act.
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`As a preliminary matter, there is some confusion in the briefing regarding the nature of the
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`plaintiffs’ claims. The defendants suggest that the plaintiffs “purport to assert two different
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`trademarks”: the registered COLOR COPPER.COM trademark and an unregistered word mark
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`
`8 Although the Lanham Act is most commonly thought of in connection with trademarks, it also generally
`addresses the topic of “unfair competition.” As one commonly cited treatise has observed, “[p]erhaps no
`term of art in this field of law has over the years provoked such a confusion of definitions as ‘unfair
`competition.’”1 McCarthy on Trademarks and Unfair Competition § 1:8. Because the “broad umbrella of
`‘unfair competition’” can be confusing, Veteran Med. Prod., Inc. v. Bionix Dev. Corp., No. 1:05-CV-655,
`2009 WL 891724, at *7 (W.D. Mich. Mar. 31, 2009), the court will discuss the various Lanham Act causes
`of action chiefly in terms of their narrower, more specific formulations, such as trademark infringement
`and false advertising.
`
`
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`Case 3:21-cv-00545 Document 62 Filed 07/15/22 Page 13 of 29 PageID #: 439
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`consisting solely of the phrase “color copper.” (Doc. No. 47 at 11–12.) The First Amended
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`Complaint itself, however, states that the trademark infringement claim is based on “Plaintiffs’
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`Mark,” which is defined to include “ the registered trademark COLOR COPPER.COM . . . as well
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`as the common law [trademark] colorcopper.com and the corresponding URL.” (Doc. No. 37 ¶¶
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`5, 74.) It is therefore not clear that the plaintiffs actually assert any rights to the phrase “color
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`copper,” independently from that phrase’s use with the design mark and/or the “.com” suffix.
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`Ultimately, though, the court finds these distinctions largely beside the point—at least at
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`this stage. Whether or not the plaintiffs have any separate, independent rights in the phrase “color
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`copper” or “colorcopper.com,” they do have a registered design mark that includes those phrases
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`(or a slight variation thereon). The COLOR COPPER.COM mark is a “composite mark”
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`containing both pictorial and verbal elements, and, as such, it is evaluated as a whole for the
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`purposes of trademark protection. See 4 McCarthy on Trademarks and Unfair Competition § 23:47.
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`The description accepted by the USPTO for the registration of the mark, moreover, makes clear
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`that CC, as the registrant, has disclaimed only the exclusive rights to “copper.com,” not the right
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`to protection for the verbal elements of the mark altogether:
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`The mark consists of the stylized wording “COLOR COPPER.COM”, a diamond
`shape between the wording “COLOR” and “COPPER” made up of four smaller
`diamonds, each diamond having a pattern inside of it.
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`No claim is made to the exclusive right to use the following apart from the mark as
`shown: “COPPER.COM[.]”
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`(Doc. No. 1-1 at 1.) The plaintiffs, accordingly, do not necessarily need to establish separate rights
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`in a pure word mark to have at least some of the protection they seek. Any use of the phrase “color
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`copper,” “colorcopper.com,” or similar phrase that actually creates a likelihood of confusion with
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`the registered mark is potentially actionable based on the registered mark, as long as the registered
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`
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`Case 3:21-cv-00545 Document 62 Filed 07/15/22 Page 14 of 29 PageID #: 440
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`mark, at least, is valid. The court, accordingly, will turn to the degree of protection to which the
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`registered mark is entitled. 9
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`Because it was registered only recently, COLOR COPPER.COM is not incontestable;
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`rather, it possesses a rebuttable presumption of validity. Leelanau Wine Cellars, Ltd. v. Black &
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`Red, Inc., 502 F.3d 504, 513–14 (6th Cir. 2007) (citing Packman v. Chicago Tribune Co., 267 F.3d
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`628, 638 (7th Cir. 2001)). The defendants argue that the registered mark, or at least a significant
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`portion of it, suffers from the same issue as the alleged unregistered word mark. In order to be a
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`protectable trademark, a mark must be capable of signaling the origin of a good or service, and, in
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`order to do that, the mark “must be distinctive.” Papa Ads, LLC v. Gatehouse Media, Inc., 485 F.
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`App’x 53, 55 (6th Cir. 2012) (citing Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters,
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`Inc., 280 F.3d 619, 635 (6th Cir. 2002)). The defendants argue that “color copper” is simply a
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`description of the product they sell and is therefore incapable of suggesting that the plaintiffs were
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`the source of a product. Under that interpretation, the plaintiffs would, at most, have protection for
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`the purely pictorial and design elements of the logo, with the equivalent of a disclaimer of all
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`verbal rights, not merely the exclusive right to “copper.com.” The plaintiffs, however, dispute the
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`defendants’ interpretation of their rights and argue that they have the right to prevent competitors,
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`such as the defendants, from using the term “color copper” or a similar term in a manner likely to
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`create confusion.
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`As the Supreme Court has noted, “[m]arks are often classified in categories of generally
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`increasing distinctiveness; following the classic formulation . . . , they may be (1) generic; (2)
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`descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful.” Two Pesos, Inc. v. Taco Cabana, Inc.,
`
`
`9 As the defendants point out, the fact that the USPTO did not require a disclaimer for a particular aspect
`of a mark does not necessarily establish that that element is protectable. See Humboldt Wholesale, Inc. v.
`Humboldt Nation Distribution, LLC, No. C-11-4144 EMC, 2011 WL 6119149, at *3 (N.D. Cal. Dec. 8,
`2011).
`
`
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`505 U.S. 763, 768 (1992). (citing Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9
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`(2nd Cir. 1976)). The latter three categories are considered inherently distinctive and are entitled
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`to protection without showing any additio