Case 2:05-cv-01801-JPD Document 45 Filed 01/11/06 Page 1 of 9
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF WASHINGTON
`AT SEATTLE
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`Case No. C05-1801-JPD
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`ORDER GRANTING IN PART AND
`DENYING IN PART DEFENDANTS’
`MOTION TO DISMISS
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`))))))))))
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`CHIHULY, INC., et al.,
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`Plaintiffs,
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`v.
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`ROBERT KAINDL, et al.,
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`Defendants.
`____________________________________
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`INTRODUCTION AND SUMMARY CONCLUSION
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`Mr. Dale Chihuly is an artist who has achieved recognition for his work in the
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`medium of blown glass. Plaintiffs Chihuly, Inc. and Portland Press, Inc. are alleged to be
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`corporations that represent the work of Mr. Chihuly and produce fine blown-glass artwork
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`designed by Mr. Chihuly, glass sculptures, and books and DVDs about Mr. Chihuly and
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`glassmaking. Plaintiffs Chihuly, Inc. and Portland Press, Inc. (collectively “plaintiffs”) allege
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`that glass sculptures made by defendant Bryan Rubino and distributed by defendants Robert
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`Kaindl, Art Glass Productions, Lakeshore Gallery, Ltd., Kenneth Behm Galeries, Ltd.,
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`Trammell-Gagne, LLC, and Unik! LLC infringe their copyrights, trademarks, and trade dress.
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`Plaintiffs also claim that defendants’ sale of such works violates the Washington Consumer
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`Protection Act (“CPA”), and that defendants have engaged in a civil conspiracy to mislead
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`consumers as to the origin of their works. Finally, plaintiffs assert breach of contract claims
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`against defendant Rubino and intentional interference with contractual relationships against
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`ORDER
`PAGE -1
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`Case 2:05-cv-01801-JPD Document 45 Filed 01/11/06 Page 2 of 9
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`defendant Kaindl.
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`This matter is before the Court upon a motion by defendants Kaindl, Rubino, and Art
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`Glass Productions to dismiss plaintiffs’ complaint and for the award of attorneys’ fees. Dkt.
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`No. 17. The Court heard oral argument on this matter on January 5, 2006. Dkt. No. 43.
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`Having carefully reviewed the parties’ papers, the Court DENIES defendants’ motion
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`to dismiss as to plaintiffs’ copyright, false designation of origin, breach of contract,
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`intentional interference with contract, and the civil conspiracy claims. The motion to dismiss
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`is GRANTED as to plaintiffs’ trademark dilution claim, because none of the named plaintiffs
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`owns the trademark in question. Plaintiffs, however, are granted leave to file an amended
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`complaint within the time frame specified in the Court’s scheduling order, Dkt. No. 44, to
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`address this issue if they choose to pursue the dilution claim. As to the CPA claim, the Court
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`agrees with the parties that, to the extent the CPA claim is premised on actions that are
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`governed by the Copyright Act, the claim is preempted by the Copyright Act and any such
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`claim is dismissed. To the extent that the claim is premised on conduct other than that related
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`to or governed by the Copyright Act, the CPA claim will remain.
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`MOTION TO DISMISS STANDARD
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`Federal Rule of Civil Procedure 12(b)(6) permits dismissal of an action for “failure to
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`state a claim upon which relief can be granted[.]” Fed. R. Civ. P. 12(b)(6). A court faced with
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`such a motion must accept all facts alleged in the complaint as true and construe them in the
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`light most favorable to the plaintiff. Karam v. City of Burbank, 352 F.3d 1188, 1192 (9th Cir.
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`2003) (citing Zimmerman v. City of Oakland, 255 F.3d 734, 737 (9th Cir. 2001)). Generally,
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`the Court will not dismiss a complaint unless a defendant shows that the plaintiff can
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`demonstrate “no set of facts in support of [its] claim which would entitle [it] to relief.” Id.
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`Rule 12(b)(6) must be read in conjunction with Rule 8(a). 2 James W. Moore,
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`Moore’s Federal Practice § 12.34[1][b] (3d ed. 2005). Rule 8(a) requires only that a
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`complaint provide “a short and plain statement of the claim showing that the pleader is
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`ORDER
`PAGE -2
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`Case 2:05-cv-01801-JPD Document 45 Filed 01/11/06 Page 3 of 9
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`entitled to relief.” Fed. R. Civ. P. 8(a). The complaint must therefore “give the defendant
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`fair notice of what the plaintiff's claim is and the grounds upon which it rests.” Swierkiewicz
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`v. Sorema N.A., 534 U.S. 506, 512 (2002) (quoting Conley v. Gibson, 355 U.S. 41, 47
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`(1957)). This simplified pleading standard applies to all civil actions, with limited exceptions
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`for cases involving, for example, fraud and mistake. Id. at 512-13 (discussing Federal Rule of
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`Civil Procedure 9).
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`ANALYSIS
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`A.
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`The Court Has Subject Matter Jurisdiction Over Plaintiffs’ Copyright
`Claims.
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`17 U.S.C. § 411(a) provides that “no action for [copyright] infringement . . . shall be
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`instituted until preregistration or registration of the copyright claim has been made in
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`accordance with this title.” Therefore, the Court “does not have subject matter jurisdiction
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`over an infringement claim until the Copyright Office grants the registration application and
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`issues a certificate of registration.” See, e.g., Corbis Corp. v. Amazon.com, Inc., 351 F. Supp.
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`2d 1090, 1111-13 (W.D. Wash. 2004) (collecting cases). Here, plaintiffs have alleged
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`infringement of approximately forty registered copyrights. Dkt. No. 1 at ¶¶ 116-17,
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`Attachments A-F. The Court has subject matter jurisdiction.
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`B.
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`Defendants’ Motion to Dismiss is Denied as To Plaintiffs’ Claims for
`Copyright Infringement.
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`In their motion, the defendants have argued that the complaint fails to specifically
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`identify which of plaintiffs’ many works are at issue. This raises two issues. First, as
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`indicated in the complaint, many of the plaintiffs’ works have not been registered. As a
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`result, the defendants argue, there can be no assurance that the Court has subject matter
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`jurisdiction. Second, the failure to identify specific works at issue necessitates an expensive
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`process of winnowing the works at issue, and, it is argued, is indicative of a failure to engage
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`in the necessary pre-litigation investigation required by Fed. R. Civ. P. 11.
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`No heightened pleading standard applies to complaints for copyright infringement.
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`ORDER
`PAGE -3
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`Case 2:05-cv-01801-JPD Document 45 Filed 01/11/06 Page 4 of 9
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`See Swierkiewicz, 534 U.S. at 513. Rather, “complaints simply alleging present ownership by
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`plaintiff, registration in compliance with the applicable statute and infringement by defendant
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`have been held sufficient under the rules.” Perfect 10, Inc. v. Cybernet Ventures, Inc., 167 F.
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`Supp. 2d 1114, 1120 (C.D. Cal. 2001) (internal citations omitted); see also Kelly v. Arriba
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`Soft Corp., 336 F.3d 811, 817 (9th Cir. 2003) (indicating that claims for copyright
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`infringement must allege ownership of a copyright and that defendant copied its protected
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`elements). Plaintiffs are not required to attach copies of the allegedly infringed and infringing
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`works. 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright, § 12.09[B], 12-169-
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`170 (2005).
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`The plaintiffs have adequately stated a claim for copyright infringement. The
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`complaint alleges that “[p]laintiffs own valid copyrights” for approximately forty glass
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`sculptures and that “[w]ithout authorization, [d]efendants have willfully copied, sold and
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`distributed [p]laintiffs’ copyrighted work.” Dkt. No. 1 at ¶¶ 116-17. It further states that the
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`sculptures sold by defendants under the name “Lestat” and on defendant Kaindl’s web site are
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`among the infringing works. Id. at ¶¶ 118-19. Plaintiffs have attached copies of
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`approximately forty certificates of registration to the complaint. Id. at Attachments A-F.
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`These allegations are sufficient to “give the defendant fair notice of what the plaintiff[s’]
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`claim is and the grounds upon which it rests” and thus adequately state a claim for copyright
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`infringement.
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`The specificity sought by defendants is not necessary, or even completely possible, at
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`this stage of the litigation. Rather, discovery and summary judgment may be used to “define
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`disputed facts and issues and to dispose of unmeritorious claims.” Swierkiewicz, 534 U.S. at
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`513 (citing Leatherman v. Tarrant County Narcotics Intelligence and Coordination Unit, 507
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`U.S. 163, 168-69 (1993)). Even if the plaintiffs thought they could identify all of the works
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`at issue at the time of drafting the complaint, any such list at the complaint stage would likely
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`be amended by adding or subtracting works once the plaintiffs became fully aware of the
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`ORDER
`PAGE -4
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`Case 2:05-cv-01801-JPD Document 45 Filed 01/11/06 Page 5 of 9
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`library of defendants’ works.
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`Nevertheless, the Court is sensitive to delay, notice issues, and the desire to avoid
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`unnecessary cost to the parties in prosecuting a case potentially involving many copyrights.
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`At the hearing on the motion, the Court directed the parties to cooperate so that the plaintiffs
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`would be in a position to identify the universe of plaintiffs’ copyrighted works at issue in this
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`litigation and notify defendants of that universe by February 13, 2006.1
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`C.
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`Defendants’ Motion to Dismiss Is Granted as To Plaintiffs’ Allegations
`of Trademark Dilution, But Denied As to Plaintiffs’ Other Trademark
`Claims.
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`Plaintiffs’ complaint also alleges that defendants have violated 15 U.S.C. §§ 1125(a)
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`and 1125(c) of the Lanham Act by using false designations of origin, misrepresenting the
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`nature, characteristics and qualities of their work, and diluting the “CHIHULY” trademark.
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`Dkt. No. 1 at ¶¶ 127-33. Defendants argue that plaintiffs’ Lanham Act claims should be
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`dismissed because none of the named plaintiffs owns the trademark at issue. Dkt. No 17 at
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`10. Defendants also argue plaintiffs’ trade dress claims are too vague for them to be on notice
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`as to which of their works actually infringe upon plaintiffs’ rights.
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`Section 43(a) of the Lanham Act provides a cause of action for trademark
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`infringement to “any person who believes that he or she is or is likely to be damaged” by a
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`defendants’ false designation of origin or use of false or misleading descriptions. 15 U.S.C. §
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`1125(a)(1). Ownership is not a prerequisite for standing in a § 43(a) claim. 4 J. Thomas
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`McCarthy, McCarthy on Trademarks and Unfair Competition § 27:21 (2005). Rather “to
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`1 This will require cooperation by the parties. At the hearing, the Court suggested that
`within a very short period of time defendants start by providing plaintiffs with access to glass
`sculptures remaining in defendants’ possession for inspection and photographing, as well as
`photographs of those works previously sold by the defendants. This will enable the plaintiffs
`to designate the works at issue, and help to streamline the litigation and avoid unnecessary
`expense. The Court notes that the parties are represented by able intellectual property
`attorneys, and so it will rely upon counsel to determine the best way to achieve this result.
`However it is accomplished, absent good cause, the plaintiffs will inform the defendants of the
`works at issue in this litigation not later than February 13, 2006.
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`ORDER
`PAGE -5
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`Case 2:05-cv-01801-JPD Document 45 Filed 01/11/06 Page 6 of 9
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`have standing, a non-owner must have some cognizable interest in the allegedly infringed
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`trademark.” Id.
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`Although the complaint asserts that the plaintiffs own the “CHIHULY” mark, Id. at
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`¶ 28, the defendants submitted evidence establishing that the mark is owned by Mr. Dale
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`Chihuly, who is not a party to this action.2 Dkt. No. 18, Ex. D. Nevertheless, the complaint
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`does indicate plaintiffs have a “cognizable interest” in the mark. Plaintiff Chihuly, Inc. is Mr.
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`Chihuly’s glass-blowing studio, which produces the glass sculptures he designs. Dkt. No. 1 at
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`¶¶ 23-26. Similarly, plaintiff Portland Press, Inc., at the direction of Mr. Chihuly, reproduces
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`certain limited edition glass pieces from various sculpture series designed by Mr. Chihuly. Id.
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`at ¶¶ 30-31. It also produces books, videos, DVDs, and other print products about Mr.
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`Chihuly and his work. Id. at ¶ 29. Though less than artfully pleaded, at the motion to
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`dismiss stage, when construing the complaint in a light most favorable to plaintiffs, it is
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`reasonable to conclude that the complaint alleges that the plaintiffs have a sufficient interest
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`in the “CHIHULY” mark to advance a Section 43(a) claim.
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`The complaint also satisfies the requirement of placing defendants on notice of the
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`nature of the Section 43(a) claims against them. The complaint alleges that defendants’
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`marketing and sales activities “have used false designations of origin, false or misleading
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`descriptions of fact, and false or misleading misrepresentations of fact” that are likely to lead
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`consumers to believe their glass sculptures are plaintiffs’. Dkt. No. 1 at ¶¶ 127-28. Among
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`other things, plaintiffs allege that defendant Kaindl has used plaintiffs’ “name and registered
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`trademark, as well as images of [p]laintiffs’ copyrighted work” to sell infringing works
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`2 The trademark certificate, which is prima facie evidence of the ownership of the
`mark at issue, 15 U.S.C. § 1057(b), was not attached to the complaint. However, because the
`Complaint identifies U.S. Trademark No. 2,418,821 as owned by one of the plaintiffs, Dkt.
`No. 1 at ¶ 28, the Court can consider the trademark certificate on a motion to dismiss. See In
`Re: Stac Electronics Securities Litigation, 89 F.3d 1399, 1405 n.4 (9th Cir. 1996) (internal
`citations omitted) (noting that the Court may consider documents referenced in a complaint
`whose authenticity is not in question).
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`ORDER
`PAGE -6
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`Case 2:05-cv-01801-JPD Document 45 Filed 01/11/06 Page 7 of 9
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`produced by Rubino through his Art Glass Productions web site. Id. at ¶¶ 93-108.
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`Of more concern are the trade dress allegations in the complaint. The complaint
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`asserts that some “CHIHULY” glass sculptures are made in various series reflecting a
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`common theme, such as “Navajo Blanket Cylinders,” “Basket Series,” “Seaform Series,”
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`“Macchia Series,” and “Persian Series.” Dkt. No. 1 ¶¶ 33-57. Each of these series has,
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`according to the complaint, its own “aesthetic.” Id. at ¶ 25. The complaint further asserts that
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`the plaintiffs’ “trade dress is protectable under the Lanham Act because it is inherently
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`distinctive and has achieved secondary meaning in the market.” Dkt. 1 at ¶ 130.
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`The defendants argue that this pleading fails to identify what constitutes the
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`protectable trade dress and also fails to describe how it is distinctive and non-functional. Dkt.
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`No. 17 at 11-16. As a result, they argue, this places them at a disadvantage in knowing what
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`is actually at issue and what they will have to defend against. However, as established in
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`Swierkiewicz , there is no heightened pleading requirement in trade dress cases. Moreover,
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`interrogatories or other discovery directed to the plaintiffs requiring identification of all
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`claimed elements of protectable trade dress and then dealing with these issues and the issues
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`of distinctiveness and non-functionality on a more complete record is a more efficient and less
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`expensive way to proceed than to require a more definite identification of trade dress in the
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`complaint itself.
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`Plaintiffs’ final trademark claim is for dilution of the “CHIHULY” mark. Plaintiffs
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`allege that the mark is famous and that the actions of defendants are diluting the mark. Dkt.
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`No. 1 at ¶ 129. Remedies for trademark dilution under the Lanham Act are available only to
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`the “owner of a famous mark.” 15 U.S.C. § 1125(c)(1); Bosley Medical Institute, Inc. v.
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`Kremer, 403 F.3d 672, 676 (9th Cir. 2005) (discussing the ownership requirement of 15
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`U.S.C. § 1125(c) in connection with trademark infringement suit brought by trademark
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`owner). Thus, plaintiffs’ dilution claim under 15 U.S.C. § 1125(c) must be dismissed.
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`Plaintiffs, however, are granted leave to file an amended complaint to deal with the defects of
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`ORDER
`PAGE -7
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`Case 2:05-cv-01801-JPD Document 45 Filed 01/11/06 Page 8 of 9
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`the presently asserted dilution claim, but must do so within the time set forth in the Court’s
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`scheduling order. Dkt. No. 44.
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`D.
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`Plaintiffs’ Washington Consumer Protection Act Claims are Preempted
`To the Extent They Arise Out of Their Copyright Infringement Claims.
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`Section 301(a) of the Copyright Act provides that
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`all legal or equitable rights that are equivalent to any of the exclusive rights
`within the general scope of copyright . . . are governed exclusively by this title.
`Thereafter, no person is entitled to any such right or equivalent right in any
`such work under the common law or statutes of any State.
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`17 U.S.C. § 301(a) (1998). The Ninth Circuit has held that the Copyright Act preempts state
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`law claims when plaintiffs assert (1) state law rights equivalent to those protected by the
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`Copyright Act and (2) that the work falls within the subject matter of the Copyright Act
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`described in 17 U.S.C. §§ 102-03. Kodadek v. MTV Networks, Inc., 152 F.3d 1209, 1212 (9th
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`Cir. 1998).
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`Paragraph 135 of the complaint states that defendants are “creating and/or selling
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`unauthorized replications” of plaintiffs’ works. Because the Copyright Act provides
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`exclusive rights to reproduce the copyrighted works, plaintiffs’ CPA claims are effectively
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`asserting state law rights equivalent to those protected by the Copyright Act. Thus, the first
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`prong of the Kodadek test is satisfied. Additionally, the copyrighted glass sculptures at issue
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`in this case fall within the subject matter of Sections 102 and 103 of the Copyright Act. Thus,
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`plaintiffs’ CPA claims are preempted to the extent they stem from their copyright claims.
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`E.
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`Defendants’ Motion to Dismiss Is Denied As to Plaintiffs’ Breach of
`Contract Claim.
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`Defendants argue that plaintiffs have failed to allege facts that state a claim for breach
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`of contract. Dkt. No. 17 at 17-20. To state a claim for a breach of contract under Washington
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`law, a complaint need only allege (1) the existence of a contract, (2) breach thereof, and (3)
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`damages resulting from the breach. Hofto v. Blumer, 74 Wash. 2d 321, 326, 444 P.2d 657,
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`660 (Wash. 1968). The complaint meets this standard by alleging that defendant Rubino
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`ORDER
`PAGE -8
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`Case 2:05-cv-01801-JPD Document 45 Filed 01/11/06 Page 9 of 9
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`breached a variety of agreements he had with plaintiffs by producing and selling allegedly
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`infringing sculptures. Dkt. No. 1 at ¶¶ 143-46. Although defendants have attached copies of
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`two agreements and urged the Court to interpret them, the Court declines to do so at the
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`motion to dismiss stage of this litigation. Dkt. No. 19. Based upon the complaint and
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`testimony at the hearing, it is possible that additional agreements may be at issue and that
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`external evidence may be required to interpret them.
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`F.
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`Defendants’ Motion to Dismiss is Denied as To Plaintiffs’ Civil
`Conspiracy and Intentional Interference With Contract Claims.
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`Finally, defendants argue that plaintiffs’ CPA claim, civil conspiracy claim, and
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`claims for injunctive and declaratory relief should be dismissed because they are based on
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`“the same inadequate factual allegations [as] . . . their copyright and trademark claims[.]”
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`Dkt. No. 17 at 16. As discussed above, however, the copyright and trademark allegations in
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`plaintiffs’ complaint are largely sufficient for purposes of the present motion to dismiss. The
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`motion is therefore denied as to these claims.
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`CONCLUSION
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`The issues addressed above are before the Court as the subject of a motion to dismiss.
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`As such, the Court has accepted all facts alleged in the complaint as true and construed them in
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`a light most favorable to the plaintiff. Karam, 352 F.3d at 1192. A motion to dismiss is not to
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`be granted unless “it appears beyond doubt that the plaintiff can prove no set of facts in
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`support of his claim which would entitle him to relief.” Conley, 355 U.S. at 45-46. The Court
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`is unable to conclude that plaintiffs could prove no set of facts that would entitle them to relief
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`as to most claims in the complaint. Therefore, the Court DENIES defendants’ motion as to all
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`claims, except for the trademark dilution claim, and that portion of the CPA claim which is
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`otherwise governed by the Copyright Act.
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`DATED this 11th day of January, 2006. A
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`JAMES P. DONOHUE
`United States Magistrate Judge
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`ORDER
`PAGE -9