Donut Joe's, Inc. v. Beiersdoerfer et al
MEMORANDUM OPINION AND ORDER GRANTING 33 MOTION to Dismiss. All claims of the plaintiff against Werner Beiersdoerfer and Michael Kenneth Flowers are hereby DISMISSED WITH PREJUDICE. Signed by Judge Virginia Emerson Hopkins on 4/24/2014. (JLC)
2014 Apr-24 PM 12:40
U.S. DISTRICT COURT
N.D. OF ALABAMA
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ALABAMA
DONUT JOE’S, INC.,
BEIERSDOERFER, WERNER, et
) Case No.: 2:13-CV-1578-VEH
MEMORANDUM OPINION AND ORDER
There are three defendants remaining in this case: Interveston Food Services,
LLC; Werner Beiersdoerfer; and Michael Kenneth Flowers. The latter two are
members of Interveston or otherwise claim an ownership interest in the company. The
plaintiff – Donut Joe’s – claims in its Amended Complaint that all three defendants
unlawfully infringed its trademark and unfairly competed with it. Mr. Beiersdoerfer
and Mr. Flowers have filed a Motion To Dismiss. They argue that Donut Joe’s may
not make these allegations against them in their individual capacities. In response,
Donut Joe’s contends that it has plausibly alleged that they committed contributory
trademark infringement – a claim that may be potentially maintained against
individual members of a limited liability company. The defendants reply that Donut
Joe’s has not pled this claim with the requisite specificity. The court agrees that the
Eleventh Circuit requires greater rigor in pleading contributory infringement than
Donut Joe’s exhibited in its Amended Complaint. Because the court already – and
explicitly – provided Donut Joe’s with an opportunity to rectify this shortcoming, the
court will GRANT the individual defendants’ Motion To Dismiss.
STANDARD OF REVIEW
Generally, the Federal Rules of Civil Procedure require only that the complaint
provide “a short and plain statement of the claim showing that the pleader is entitled
to relief.” Fed. R. Civ. P. 8(a)(2). However, to survive a motion to dismiss brought
under Rule 12(b)(6), a complaint must “state a claim to relief that is plausible on its
face.” Bell Atl. Corp. v. Twombly (Twombly), 550 U.S. 544, 570 (2007).1
A claim has facial plausibility “when the plaintiff pleads factual content that
allows the court to draw the reasonable inference that the defendant is liable for the
misconduct alleged.” Ashcroft v. Iqbal (Iqbal), 556 U.S. 662, 678 (2009) (citing
Twombly, 550 U.S. at 556). That is, the complaint must include enough facts “to raise
Donut Joe’s misstates the standard of review in its Response. It states, “A complaint may
not be dismissed unless the plaintiff can prove no set of facts which would entitle him to relief.”
Doc. 39 at 2 (citations omitted). The Supreme Court in Twombly discounted this “no set of facts”
language as an inaccurate rendition of Rule 8 pleading requirements. 550 U.S. at 560-563. The
Court instead substituted the plausibility standard outlined in this section as the proper measure
in this arena.
a right to relief above the speculative level.” Twombly, 550 U.S. at 555 (citation and
footnote omitted). Pleadings that contain nothing more than “a formulaic recitation
of the elements of a cause of action” do not meet Rule 8 standards, nor do pleadings
suffice that are based merely upon “labels or conclusions” or “naked assertion[s]”
without supporting factual allegations. Id. at 555, 557 (citation omitted).
Once a claim has been stated adequately, however, “it may be supported by
showing any set of facts consistent with the allegations in the complaint.” Id. at 563
(citation omitted). Further, when ruling on a motion to dismiss, a court must “take the
factual allegations in the complaint as true and construe them in the light most
favorable to the plaintiff.” Pielage v. McConnell, 516 F.3d 1282, 1284 (11th Cir.
2008) (citing Glover v. Liggett Group, Inc., 459 F.3d 1304, 1308 (11th Cir. 2006)).
STATEMENT OF THE CASE
Donut Joe’s commenced this action by filing a Complaint with this court on
August 27, 2013. Doc. 1. The Complaint alleged federal and state-law claims against
Werner Beiersdoerfer; Mr. Flowers; Donut Chef; Brock Beiersdoerfer; Heavenly
Donut Co.; and Kimberly Beiersdoerfer. Three defendants – Werner Beiersdoerfer,
Mr. Flowers, and Interveston – answered the Complaint on September 27, 2013. Doc.
7. Attached to their Answer was a counterclaim charging Donut Joe’s with breach of
contract and fraud. Id. at 8-17. Along with their Answer, these three defendants filed
a Motion To Dismiss. Doc. 8. On that same day, Brock and Kimberly Beiersdoerfer
separately filed a Motion To Dismiss. Doc. 10. On October 11, 2013, Donut Joe’s
filed the following documents:
An Answer to the defendants’ counterclaims;
Responses to the two Motions To Dismiss; and
A Motion To Dismiss the counterclaims.
Docs. 11-14. On October 18, 2013, the defendants separately replied to the plaintiff’s
Responses. Docs. 16-17. On October 25, 2013, Werner Beiersdoerfer, Mr. Flowers,
and Interveston filed a Response to the plaintiff’s Motion To Dismiss. Doc. 18. Donut
Joe’s replied on November 1, 2013. Doc. 19. On November 8, 2013, with the court’s
permission, Werner Beiersdoerfer, Mr. Flowers, and Interveston filed a surreply. Doc.
On December 18, 2013, the court issued a Memorandum Opinion concluding
that it lacked supplemental jurisdiction over the competing state-law claims made by
the respective parties against each other. Doc. 27. The court accordingly dismissed
without prejudice the state-law claims filed by Donut Joe’s and the state-law
counterclaims filed by Werner Beiersdoerfer, Mr. Flowers, and Interveston. Id. at 12.
This action mooted the rival Motions To Dismiss then before the court. Id.
On the same date, the court entered a Show Cause Order asking Donut Joe’s
to remedy certain deficiencies in its Complaint. Doc. 28. The court particularly noted
that the Complaint did not formally name Interveston as a party. Id. at 1. It therefore
asked Donut Joe’s to explain:
why the case should not be dismissed for failure to join a necessary
party under Federal Rule of Civil Procedure 19; and
why it was pursuing federal trademark infringement claims against
individual members of a limited liability company rather than against the
Id. at 1-2. In lieu of requiring a filing directly answering these questions, the court
provided Donut Joe’s with the alternative option of filing an Amended Complaint
addressing these concerns. Id. at 2.
Donut Joe’s exercised this option by filing an Amended Complaint on January
1, 2014. Doc. 29. On January 13, 2014, the court entered a Show Cause Order
requiring Donut Joe’s to explain why Heavenly Donut Company should not be
dismissed as a party to the action. Doc. 30. On January 15, 2014, Interveston filed its
Answer to the Amended Complaint, and Werner Beiersdoerfer and Mr. Flowers filed
the present Motion To Dismiss. Docs. 32, 33. On the same day, Donut Joe’s asked the
court to voluntarily dismiss Brock Beiersdoerfer from the action. Doc. 31. The court
dismissed Brock Beiersdoerfer as a party on January 17, 2014. On January 28, 2014,
Donut Joe’s responded in opposition to the present Motion To Dismiss. Doc. 39. The
court dismissed Heavenly Donut Company as a party the next day. Doc. 40. On
February 4, 2014, Werner Beiersdoerfer and Mr. Flowers replied to Donut Joe’s
responsive opposition. Doc. 41.
The Eleventh Circuit Has Recognized “Contributory Trademark
Infringement” As a Viable Claim Under the Lanham Act.
In their Motion To Dismiss, Mr. Beiersdoerfer and Mr. Flowers argue that
Donut Joe’s did not sufficiently plead allegations that would allow it to “pierce the
corporate veil,” such that it could hold them individually liable for the actions of
Interveston. Doc. 33 ¶¶ 7-12. In response, Donut Joe’s essentially concedes this point.
It maintains, however, that it does not seek to hold Mr. Beiersdoerfer and Mr. Flowers
liable on this basis. Doc. 39 at 3-4. Instead, Donut Joe’s claims that its Complaint
articulates an allegation of contributory trademark infringement against them. Id. at
8. Citing Eleventh Circuit authority, Donut Joe’s states that “individuals who
participate in infringing activities may be held personally liable for trademark
infringement.” Id. at 6. It also notes that this example includes corporate officers in
situations where “the officer is actively involved in the alleged infringing activities,
the company is a closely held corporation, and the individual involved is the principal
shareholder, officer, and/or director of the corporation.” Id. at 5.
Donut Joe’s is right that the Eleventh Circuit recognizes a claim of contributory
trademark infringement. “[L]iability for trademark infringement can extend beyond
those entities that actually perform the acts of infringement.” Mini Maid Servs. Co.
v. Maid Brigade Sys., Inc., 967 F.2d 1516, 1522 (11th Cir. 1992) (citing Inwood
Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 853-54 (1982)). “To be liable for
contributory trademark infringement, a defendant must have intentionally induced
another to infringe a trademark.” Suntree Techs., Inc. v. Ecosense Int’l, Inc., 693 F.3d
1338, 1345 (11th Cir. 2012) (internal alteration omitted) (quoting 4 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition § 25:18 at 25-54 (4th
ed. 2012)). “Any liability for contributory infringement will necessarily depend upon
whether or not the contributing party intended to participate in the infringement or
actually knew about the infringing activities.” Id. (internal alteration omitted) (citing
Mini Maid, 967 F.2d at 1522).
Put more specifically, “a contributory infringement claim requires, at a
minimum, both an allegation of direct infringement by a third party, and an allegation
of an intentional or knowing contribution to that infringement by the defendant.”
Optimum Techs., Inc. v. Henkel Consumer Adhesives, Inc. (Optimum Technologies),
496 F.3d 1231, 1245 (11th Cir. 2007) (citations omitted). “[A]bsent some allegation
of a ‘contribution’ to a direct trademark infringement or of a ‘knowing participation’
in a direct trademark infringement, [courts] will not construe a claim for direct
trademark infringement under 15 U.S.C. § 1114(1) as being one for contributory
trademark infringement.” Id. at 1246 (internal citation and footnote omitted).
The Amended Complaint Inadequately Pleads Contributory Trademark
This two-part pleading standard from Optimum Technologies governs in the
current action. Donut Joe’s Amended Complaint fails to meet the standard. An
immediate problem is that the Amended Complaint does not lay out formal counts.
This is an odd omission that frustrates the court’s ability to discern what claims Donut
Joe’s is precisely making against the defendants. Nevertheless, the Amended
Complaint clearly describes “an allegation of direct infringement by a third party.”
Optimum Technologies, 496 F.3d at 1245. It asserts the following:
“Defendants own and manage the ‘Donut Chef’ establishment,
marketing products and services almost identical to Plaintiff, using
similar vendors, marketing, and locations.”
“Defendants adopted the name ‘Donut Chef’ with a donut character as
its logo as a trademark for its products, with full knowledge of the prior
and extensive use by Plaintiff of the trademark ‘Donut Joe’s’ with the
“As a result of defendants’ use on its goods of the colorable imitation,
‘Donut Chef’ with the donut character logo with Plaintiff’s registered
trade mark [sic], ‘Donut Joe’s’ with the Donut Logo, defendants are
enabled to and do deceive the public into thinking that they are the same
“The name ‘Donut Chef’ is a colorable imitation of Plaintiff’s registered
trademark ‘Donut Joe’s’ and describes the function and design of the
Donut Logo and is an infringement.”
“Defendants’ design mark donut character is a colorable imitation of
Plaintiff’s registered trademark Donut Logo, and is an infringement.”
Doc. 29 ¶¶ 21-24, 27. These claims describe a plausible allegation of trademark
infringement because the stated facts, if true, permit the court “to draw the reasonable
inference that the defendant is liable for the misconduct alleged.” Iqbal, 556 U.S. at
678. The Amended Complaint thus meets the first pleading requirement established
by Optimum Technologies.
But, the Amended Complaint does not allege “intentional or knowing
contribution” to that infringement by Mr. Beiersdoerfer or Mr. Flowers. Nor does it
otherwise claim that either of these individual defendants knowingly participated in
the infringement. In fact, the Amended Complaint does not make any specific
allegations about their individual conduct whatsoever. The Amended Complaint
uniformly refers to “the Defendants” in their collective capacity. Donut Joe’s claims
it used this designation for the sake of “ease of reference.” Doc. 39 at 7 n.1.
According to Donut Joe’s, “every allegation relating to the ‘Defendants’ [sic] conduct
in the Complaint constitutes an allegation relating to Beiersdoerfer’s and Flower’s
[sic] conduct.” Id.
Donut Joe’s is perfectly free to refer to the defendants this way. But, the
Amended Complaint describes only an allegation of direct trademark infringement
– not contributory trademark infringement. It is “devoid of any mention of holding
[Mr. Beiersdoerfer and Mr. Flowers] contributorily – as opposed to directly – liable”
for Interveston’s alleged infringement. Optimum Technologies, 496 F.3d at 1245. To
permit Donut Joe’s to pursue its case against Mr. Beiersdoerfer and Mr. Flowers
would thus require the court “to convert what is plainly a direct trademark
infringement claim into one for contributory infringement.” Id. This is a step the court
is “loath to take, and one for which for there appears to be no authority in our circuit.”
Id.; see also Procter & Gamble Co. v. Haugen, 317 F.3d 1121, 1128-29 (10th Cir.
2003) (holding that plaintiff had not adequately alleged contributory infringement
under Rule 8 where it had not mentioned the term in its Complaint and only claimed
that the defendant had implicitly approved of the infringement); Ascentive, LLC v.
Opinion Corp., 842 F. Supp. 2d 450, 470 (E.D.N.Y. 2011) (“Put simply, plaintiffs are
unlikely to succeed on any contributory infringement claim against [the defendant]
because they do not sufficiently allege, let alone make, such a claim in their
Because the Court Has Already Given Donut Joe’s the Opportunity to
Correct its Complaint On This Basis, It Will Not Allow Amendment Now.
On December 18, 2013, the court entered a Show Cause Order asking Donut
Joe’s to explain why it was “pursuing federal trademark infringement claims against
individual members of a limited liability company rather than against the company
exclusively.” Doc. 28 at 1-2. The court added in that Order, “[I]f the plaintiff timely
files an Amended Complaint that addresses these problems, the court will consider
such Amended Complaint as responsive to this Order.” Id. at 2. The court thus put
Donut Joe’s on actual notice of its concerns in this arena. Yet – as described above
– the Amended Complaint filed on January 1, 2014, still reflected the very pleading
shortcomings that the court had explicitly identified in its Order. Therefore, the court
will not once again give Donut Joe’s leave to correct its complaint.
For the foregoing reasons, the court will GRANT the individual defendants’
Motion To Dismiss. All claims of the plaintiff against Werner Beiersdoerfer and
Michael Kenneth Flowers are hereby DISMISSED WITH PREJUDICE.
DONE and ORDERED this the 24th day of April, 2014.
VIRGINIA EMERSON HOPKINS
United States District Judge
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