Bill FitzGibbons, LLC v. REV Birmingham, Inc. et al
MEMORANDUM OPINION AND ORDER GRANTING 42 MOTION to Strike, DENYING WITHOUT PREJUDICE 22 MOTION to Dismiss, DENYING WITHOUT PREJUDICE 33 MOTION to Dismiss. Plaintiff's 36 40 MOTIONS to Amend the Complaint are GRANTED. The plaintiff shall file a complete Amended Complaint within 14 days which addresses the issues identified in this Opinion. Signed by Judge Virginia Emerson Hopkins on 5/12/2014. (JLC)
2014 May-12 PM 05:20
U.S. DISTRICT COURT
N.D. OF ALABAMA
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ALABAMA
BILL FITZGIBBONS, LLC,
REV BIRMINGHAM, INC., et al,
) Case No.: 2:14-CV-268-VEH
MEMORANDUM OPINION AND ORDER
This civil action was originally filed in the United States District Court for the
Western District of Texas, San Antonio Division, by the plaintiff, Bill Fitzgibbons,
LLC, against the defendants, REV Birmingham, Inc. (“REV”), Mayer Electric Supply
Company, Inc. (“Mayer”), and Nancy Collat Goedecke. (Doc. 1). Against Goedecke
and Mayer, the complaint alleges tortious interference with a business relationship
(Count One), federal unfair competition (Count Two), and unjust enrichment (Count
Three). Against REV, the complaint alleges federal unfair competition (Count Two),
and unjust enrichment (Count Three). Against all three defendants, the complaint
alleges a civil conspiracy “to commit a substantive tort against FitzGibbons.” (Doc.
1 at 15) (Count Four). All claims arise out of the parties’ involvement with the
creation of “light sculptures” to be installed in several railroad underpasses in
The case was transferred to this court pursuant to 28 U.S.C. § 1404(a). It now
comes before the court on a motion to dismiss filed by Mayer and Goedecke (doc.
22), and a motion to dismiss filed by REV (doc. 33). Both motions argue that the
complaint should be dismissed, pursuant to Rule 12(b)(6) of the Federal Rules of
Civil Procedure, for failure to state a claim upon which relief can be granted. The
plaintiff has filed two opposition briefs in response to the motions and, in both,
moves the court to allow it to amend the complaint should the court deem the
complaint to be insufficient. (Doc. 36 at 11; doc. 40 at 10). In the reply brief it filed
to its motion to dismiss, REV has moved the court to strike “Exhibit A” to the
plaintiff’s brief in opposition to its motion to dismiss. (Doc. 42 at 2, 6-7).
For the reasons stated herein, REV’s motion to strike will be GRANTED, the
motions to dismiss will be DENIED without prejudice, and the plaintiff’s motion
to amend will be GRANTED.
“[A] court should only grant a motion to dismiss [under Rule 12(b)(6)] where
the defendant demonstrates that the plaintiff cannot prove any set of facts in support
of his claim which would entitle him to relief.” Am. United Life Ins. Co. v. Martinez,
480 F.3d 1043, 1057 (11th Cir. 2007). “Moreover, when ruling on a motion to
dismiss, a court must view the complaint in the light most favorable to the plaintiff
and accept all of the plaintiff's well-pleaded facts [and reasonable inferences drawn
from those facts] as true.” Id. (emphasis added). A court looks to the facts alleged in
the plaintiff’s complaint, and not its merely conclusory statements, when ruling on
a motion to dismiss. Thus, to survive a motion to dismiss for failure to state a claim,
“a plaintiff's obligation to provide the grounds of his entitlement to relief requires
more than labels and conclusions, and a formulaic recitation of the elements of a
cause of action will not do.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 127 S. Ct.
1955, 1964–65, 167 L. Ed. 2d 929 (2007) (quotations omitted). “Factual allegations
must be enough to raise a right to relief above the speculative level.” Id. at 1965.
Mere conclusory statements in support of a threadbare recital of the elements of a
cause of action will not suffice. Ashcroft v. Iqbal, 556 U.S. 662, 129 S. Ct. 1937,
1949, 173 L. Ed. 2d 868 (2009).
ALLEGATIONS IN THE COMPLAINT
The complaint alleges, in pertinent part:
10. FitzGibbons is an internationally known light artist that creates
unique light sculptures that are site-specific for physical structures. His
artwork is normally large scale lighting of a public structure to enhance
the entire area to make the area a very desirable place for the public.
11. In addition to being internationally known as a light artist creating
light sculptures, FitzGibbons has completed numerous public art
projects throughout the United States, and in foreign countries.
12. Some examples of the awards received by FitzGibbons for his work
as a light artist creating light sculptures includes the following:
(a) Being named “Texas State Artist” by the Texas
Legislature in 2012;
(b) Being a visiting Fulbright Scholar in Hungary;
(c) Recognition of his Day Star Arch in Art in Americas –
2000-2001 Public Art Review;
(d) Forthcoming spring cover story in National Art
Magazine Art Voices;
(e) Cover story in LEDs Magazine for the LightRails
(f) Will be featured in the next issue of Du Coté Chez
Vous, a design magazine published in Paris, France.
13. Because of FitzGibbons’ international reputation as a light artist
providing light sculptures, in October 2012, Atticus Rominger, Chief
Public and Investor Relations Officer of REV Birmingham, contacted
FitzGibbons in San Antonio, Texas about providing a light sculpture for
one of the underpasses in Birmingham. In addition to providing a
Google map link of the particular underpass, Rominger stated the
I think there is great potential for future projects if we can
get this one off the ground.
14. After reviewing the proposed underpass to receive the light
sculpture, FitzGibbons responded, indicating that such a light sculpture
“would be a dynamic transformative public art installation that would
receive national attention.”
15. After a conference call with FitzGibbons in San Antonio, Texas that
included employees of the City of Birmingham and REV Birmingham,
a site inspection of the underpass was arranged. Immediately prior to the
site inspection, Rominger sent out an email dated January 28, 2013
indicating that “Light Artist” FitzGibbons will be coming from San
Antonio, Texas to Birmingham, Alabama for a tour of potential sites for
light installations. A notice was also sent to employees of the City of
16. On January 31, 2013, FitzGibbons flew from San Antonio to
Birmingham and met with the following people, plus others:
(a) David Fleming, Chief Executive Officer of REV
(b) Kate Nielson, President of the Community
Foundation of Greater Birmingham; and
(c) Bonner Wagnon, Public Director of the
17. Four underpasses were inspected for what was later named the
“LightRails” project. FitzGibbons was told by Rominger if the project
on the first underpass was successful, REV Birmingham would like to
do the other three underpasses, which had similar structural elements to
be equipped with similar LightRails.
18. On February 8, 2013, FitzGibbons sent a proposal for a light
sculpture on the 18th Street underpass. On February 11, 2013, Rominger
requested FitzGibbons to think about proposals for all four underpasses.
19. The proposal submitted to REV Birmingham by FitzGibbons on
February 8, 2013 stated:
It is understood that this artwork will come on line as pilot
project with the goal of creating similar artworks at the
14th, 19th and 20th Street underpasses.
20. After some discussion of a timeline, REV Birmingham and
FitzGibbons entered into a contract.
21. On March 15, 2013, the City of Birmingham was contacted by REV
Birmingham to get the City to provide dedicated electrical circuits to
power to the soon-to-be installed light sculpture at the 18th Street
underpass. The City of Birmingham subsequently provided the
dedicated circuits, which were paid for by the taxpayers of Birmingham.
22. The timeline proposed for the light sculpture at the 18th Street
underpass was very tight. FitzGibbons put aside other paying work to be
able to complete the LightRails project on the schedule requested by
23. During the completion of the project at the 18th Street underpass,
various names were suggested for the light sculpture until settling on the
24. While FitzGibbons was completing the light sculpture at the 18th
Street underpass, FitzGibbons was asked by Rominger of REV
Birmingham to donate his lights and his services for a one-night
fundraiser event in Birmingham for the Red Cross called Paint the Town
Red. FitzGibbons complied with the request.
25. REV Birmingham wanted the LightRails project completed in four
months by June 27, 2013, which was a very difficult schedule to meet.
Typically, such a project would take 12 to 15 months to complete.
26. In May 2013, Rominger suggested to FitzGibbons that the lighting
fixtures be purchased from Nancy Goedecke and/or her company Mayer
Electric. Rominger stated Goedecke owned Mayer Electric, a large
electrical supply company in the State of Alabama.
27. FitzGibbons informed Rominger/REV Birmingham that he
purchased the ColorKinetics fixtures he used directly from the
manufacturer. Because the ColorKinetics fixtures were sold directly by
the manufacturer to FitzGibbons, the price FitzGibbons paid for the
fixtures was the same price that would have been paid by Mayer
Electric. There was no markup in the price of the ColorKinetics light
fixtures provided by FitzGibbons.
28. At the time that Rominger suggested the light fixtures be purchased
from Mayer Electric, Goedecke was (a) a member of the Board of
Directors of REV Birmingham and (b) Chairman and CEO of Mayer
29. Rominger ignored Goedecke’s conflict of interest . . . when
attempting to get FitzGibbons to buy the light fixtures from Goedecke’s
company, Mayer Electric.
30. Despite the statements by FitzGibbons that he purchased directly
from the factory, Chris Hatcher with REV Birmingham sent an email to
Someone with S and W [Electric] will be call [sic] Mayer
within the next few days to discuss the supply list with you.
31. The grand opening of the light sculpture created by FitzGibbons at
the 18th Street underpass occurred on July 27, 2013. The light sculpture
project was branded and promoted as “LightRails[.]” Thousands of
invitations were sent by REV Birmingham, inviting people to the Grand
Opening of “LightRails” on July 27, 2013.
32. At the grand opening of “LightRails,” the Mayor of Birmingham,
city officials from Birmingham, REV Birmingham and other dignitaries
spoke lavishly about “LightRails”. [sic] The “LightRails” project was
reported widely in the media in Birmingham and throughout the United
33. As a result of the “LightRails” project designed, built and installed
by FitzGibbons, numerous glowing reports have appeared, not only
throughout the United States, but throughout the world. Just some of the
many favorable articles are attached hereto.
34. After the grand opening of “LightRails” on June 27, 2013, hundreds
(maybe even thousands) of items have appeared on the Internet praising
the “LightRails” project.
35. The “LightRails” project designed, created and installed by light
artist FitzGibbons gives a very favorable image of the City of
Birmingham. That favorable impression of the City of Birmingham
created by LightRails could not have been purchased with advertising
dollars. The “LightRails” project designed by light artist FitzGibbons is
a very fundamental part of the revitalization of downtown Birmingham.
36. While REV Birmingham promotes itself as a “private-public
partnership,” the “LightRails” project was paid for at least in part by the
taxpayers of the City of Birmingham.
37. On June 26, 2013, one day before the grand opening of the
“LightRails” project, Rominger requested FitzGibbons in San Antonio,
Texas to begin preparation for a “LightRails” project at the 14th Street
underpass in Birmingham, a similar type structure. Pursuant to that
request, extensive measurements and photographs were made of the 14th
Street underpass. FitzGibbons recommended interactive components for
pedestrians at the 14th Streed underpass. . . . Rominger and Chris
Hatcher of REV Birmingham responded that this was a great idea.
Therefore, FitzGibbons began to investigate an interactive component.
38. On July 10, 2013, Rominger asked FitzGibbons to do a proposal for
the 14th Street underpass. Also, Rominger asked what particular fixtures
to use, how much they would cost, and what kind of switches
FitzGibbons would specify for the other “LightRails” projects, including
the 14th Street underpass. FitzGibbons provided the requested
information on the LED fixtures and continued research for appropriate
switches for REV Birmingham.
39. Rominger, on behalf of REV Birmingham, also asked FitzGibbons
for media contacts that would help REV Birmingham in their
fundraising efforts. FitzGibbons provided REV Birmingham with the
40. During the grand opening of the “LightRails” project, Hatcher of
REV Birmingham, set up a meeting between Nancy Goedecke and
FitzGibbons at his hotel shortly before leaving Birmingham, Alabama
for a flight back to San Antonio, Texas.
41. The meeting occurred on the morning of June 28, 2013 and was
attended by Rominger of REV Birmingham, Nancy Goedecke, a
Director of REV Birmingham and Chairman of the Board of Mayer
Electric, one of Mayer Electric’s employees and FitzGibbons.
42. At the meeting, Goedecke was upset because FitzGibbons did not
purchase the light fixtures from Mayer Electric. FitzGibbons explained
to Goedecke that he purchased the light fixtures directly from the
manufacturer at the same price the fixtures could be purchased by
Goedecke and/or Mayer Electric. Additionally, FitzGibbons
(individually) is a sole employee of Bill FitzGibbons, LLC and, hence,
has lower overhead costs than Mayer Electric. The meeting concluded
with Goedecke stating, “It looks like we are competitors,” or words to
43. Goedecke ignored the conflict of interest that she had between her
position as (a) a Director of REV Birmingham and (b) as Chairman of
the Board and Chief Executive Officer of Mayer Electric when she
demanded to know why the ColorKinetics light fixtures had not been
purchased from her company.
44. Based upon information and belief, the conduct of Goedecke, Mayer
Electric and/or REV Birmingham violates the Alabama Ethics Act.
45. To prove FitzGibbons was supplying the light fixtures at
FitzGibbons’ cost, invoices reflecting those costs were confidentially
provided by FitzGibbons to REV Birmingham.
46. Based upon information and belief, everything provided to REV
Birmingham, including, but not limited to, (a) cost of the light fixtures,
(b) proposals for the 14th Street underpass, and (c) designs and
programs of the 18th Street underpass were all provided to Goedecke
and/or Mayer Electric with the objections of FitzGibbons.
47. On November 21, 2013, Rominger called FitzGibbons and informed
him that REV Birmingham was not going to hire FitzGibbons for the
next three underpasses previously discussed, but REV Birmingham was
going to go local.
48. Based upon information and belief, because Mayer Electric has an
exclusive area distributorship in Alabama for ColorKinetics fixtures.
Hence, going local means that Goedecke and/or Mayer Electric will be
providing the ColorKinetics light fixtures for the remaining three
49. Based upon information and belief, information received from
FitzGibbons, some of which was confidential, has been provided to
Goedecke so that Goedecke and/or Mayer Electric with others (currently
unknown) will be able to install the other proposed “LightRails”
50. Further, based upon information and belief, the other “LightRails”
projects are going to be copying FitzGibbons’ artistic creation for the
18th Street underpass to provide similar LightRails for the other three
51. Based upon information and belief, the public is being misled, and
will continue to be misled, into believing that FitzGibbons designed,
created and installed all four underpasses, when such is not true.
52. The designing and creation of the LightRails project by FitzGibbons
occurred in San Antonio, Texas. Communications concerning the
LightRails project were received in, or sent from, San Antonio, Texas.
FitzGibbons signed the contract in San Antonio, Texas and was paid in
San Antonio, Texas.
(Doc. 1 at 3-11).
Choice of Law
As noted above, against Goedecke and Mayer, the complaint alleges the
Alabama state law claim of tortious interference with a business relationship (Count
One), federal unfair competition (Count Two), and the Alabama state law claim of
unjust enrichment (Count Three). Against REV, the complaint alleges federal unfair
competition (Count Two), and the Alabama state law claim of unjust enrichment
(Count Three). Against all three defendants, the complaint alleges a civil conspiracy,
under Alabama law, “to commit a substantive tort against FitzGibbons.” (Doc. 1 at
15) (Count Four). All defendants move to dismiss all counts. The court will address
both motions to dismiss at the same time.
Since this case was transferred from a federal court sitting in Texas, this court
uses Texas choice-of-law rules to determine whether Texas or Alabama law applies
to the state law claims. Am. Family Life Assur. Co. of Columbus, Ga. v. U.S. Fire Co.,
885 F.2d 826, 832 (11th Cir. 1989) (“The substantive law that applies in a suit
originally brought in Missouri and transferred by the defendant or by the court under
28 U.S.C.A. § 1404(a) to Georgia should be determined according to Missouri's
choice-of-law rules.”). “Texas uses the Restatement's ‘most significant relationship’
test to decide choice-of-law issues.” Ins. Co. of State of Pennsylvania v. Neese, 407
S.W.3d 850, 853 (Tex. App. 2013) (internal quotations omitted).1 The parties agree
The Texas Supreme Court has noted:
For tort suits, the “most significant relationship” test involves at least two levels of
analysis. The first level, as stated in section 6 of the Restatement (Second) of Conflict of Laws,
involves a general test: the weighing of the competing policy interests of the different
jurisdictions. Vanderbilt Mortg. & Fin., Inc. v. Posey, 146 S.W.3d 302, 314 (Tex.App.Texarkana 2004, no pet.). Section 6 requires consideration of
(a) the needs of the interstate and international systems,
(b) the relevant policies of the forum,
(c) the relevant policies of other interested states and the relative
interests of those states in the determination of the particular issue,
(d) the protection of justified expectations,
(e) the basic policies underlying the particular field of law,
(f) certainty, predictability and uniformity of result, and
(g) ease in the determination and application of the law to be
Restatement (Second) of Conflict of Laws § 6(2).
The second level of analysis provides additional guidance concerning a
specific area of law. Posey, 146 S.W.3d at 314. Section 6 “sets out the general
principles by which the more specific rules are to be applied.” Gutierrez, 583
S.W.2d at 318–19. In a tort case, section 145 provides a more specific rule. Id. at
319. Section 145 emphasizes the four factors:
(a) the place where the injury occurred,
(b) the place where the conduct causing the injury occurred,
(c) the domicil[e], residence, nationality, place of incorporation
and place of business of the parties, and
(d) the place where the relationship, if any, between the parties is
that Alabama has the most significant relationship to this case. (Doc. 22 at 9; doc. 33
at 5; doc. 36 at 3; doc. 40 at 3). The court agrees as well.2 Alabama substantive law
applies to the state law claims.
Count One – Tortious Interference with a Business Relationship
(Goedecke and Mayer)
Count One alleges that Goedecke and Mayer, tortiously interfered with the
business relationship between the plaintiff and REV. To establish the tort of
interference with contractual or business relationships a plaintiff must prove: “(1) the
Restatement (Second) of Conflict of Laws § 145(2).
Another level of analysis may be directed by other sections of the
Restatement where there is a specific context within the area of law. Posey, 146
S.W.3d at 315. Texas courts have often applied more specific sections of the
Restatement to address particular choice of law issues. Hughes, 18 S.W.3d at 206
n. 2 (holding section 184 of the Restatement provides the “standards by which a
court is to determine immunity from a tort suit when an employee is covered by
workers' compensation insurance”).
Ins. Co. of State of Pennsylvania v. Neese, 407 S.W.3d 850, 853-54 (Tex. App. 2013).
As noted by Goedecke and Mayer in their motion:
All of [the Section 145] factors counsel in favor of application of Alabama
law on [p]laintiff’s state law claims--all defendants reside in Alabama; the
relationship between the parties is centered in Alabama; the Project is located in
Alabama; future projects, if any, will be located in Alabama; and any alleged
conduct causing [p]laintiff injury occurred, if anywhere, in Alabama. Moreover,
[p]laintiff’s “injury” occurred, if at all, in Alabama since the “business
relationship” at issue was centered there, and, according to [p]laintiff, it was
where the defendants allegedly conspired against it and became unjustly enriched.
It follows that Alabama law should be applied to [p]laintiff’s claims.
(Doc. 22 at 9).
existence of a protectible business relationship; (2) of which the defendant knew; (3)
to which the defendant was a stranger; (4) with which the defendant intentionally
interfered; and (5) damage.” White Sands Grp., L.L.C. v. PRS II, LLC, 32 So. 3d 5,
14 (Ala. 2009) (emphasis added); see also, Alabama Psychiatric Servs., P.C. v. A Ctr.
for Eating Disorders, L.L.C., 1110703, 2014 WL 272338 at * 4 (Ala. Jan. 24, 2014)
(same). The defendants argue that this claim must be dismissed because they are not
“strangers” to the business relationship between the plaintiff and REV.
The Standard for Determining Whether a Party Is a
“Stranger” to the Business Relationship
Parsons & Whittemore Enterprises Corp. v. Cello Energy, LLC (“Cello”), 613
F. Supp. 2d 1271, 1281-85 (S.D. Ala. 2009) provides an excellent summary and
discussion of the standard, and cases which have applied it. In Cello, Judge Granade
In Alabama, a “party to a particular contract3 cannot, as a matter
The opinion in Cello, and many other cases discussing this Alabama tort, use the word
“contract”, and the phrase “contractual relations” when discussing the “stranger” issue. It is
noted that the same cases, while discussing this issue, will sometimes also use the word
“business” and the phrase “business relations.” No inference should be drawn therefrom as, since
1986, there has been but one “combined” tort in Alabama for intentional interference with
business or contractual relations. See, Gross v. Lowder Realty Better Homes & Gardens, 494 So.
2d 590, 597 (Ala. 1986) overruled on other grounds by White Sands Grp., L.L.C. v. PRS II, LLC,
32 So. 3d 5 (Ala. 2009) (“[W]e announce a new rule in this state broad enough to encompass
both interference with business relations and interference with contractual relations[.]”); see also,
Orrin K. Ames III, Tortious Interference with Business Relationships: The Changing Contours of
This Commercial Tort, 35 Cumb. L. Rev. 317, 327 (2005). The “stranger” rules apply in both the
contract and business relations contexts. No party argues otherwise.
of law, be liable for tortious interference with that contract.” Bama
Budweiser v. Anheuser–Busch, 611 So.2d 238, 247 (Ala.1992).
Likewise, a party to “[interdependent] contractual relations” with
different “rights and duties between different sets of parties to a
multiparty contract” cannot be liable for interference. Ex parte Blue
Cross & Blue Shield, 773 So.2d 475, 480 (Ala.2000). The party
asserting the tortious interference claim bears the burden of establishing
that the party defending the claim “is a ‘third party’ or ‘stranger’ to the
contract or business relationship with which the defendant allegedly
interfered.” Waddell & Reed, 875 So.2d at 1154.
The Waddell & Reed case explains various ways a defendant may
be a party in interest to a business relationship. “A defendant is a party
in interest to a relationship if the defendant has any beneficial or
economic interest in, or control over, that relationship.” Id.
One is not a stranger to the contract just because one
is not a party to the contract, as it has been held that the
alleged interferer is not a stranger to the contract and thus
not liable for tortious interference where the alleged
interferer was the agent for one of the parties to the
contract of insurance (i.e., the underwriter), and all the
purported acts of interference were done within the scope
of the interferer's duties as agent.
Id. (quotations omitted).
Further narrowing the category of parties that are subject to
liability for this tort,  Waddell & Reed went on to explain:
that all parties to a comprehensive interwoven set of
contracts which provided for the financing, construction,
and transfer of ownership were not strangers, i.e., the
purchaser of a radio station was not a stranger to the
contractual relations between the radio station's seller and
the seller's lenders. Thus, in order for a defendant to be
liable for tortious interference with contractual relations,
the defendant must be a stranger to both the contract and
the business relationship giving rise to and underpinning
Id. at 1154–55. (quotations omitted, emphasis in original). The court
summarized as follows:
“[A] defendant is not a ‘stranger’ to a contract or business
relationship when: (1) the defendant is an essential entity
to the purported injured relations; (2) the allegedly injured
relations are inextricably a part of or dependent upon the
defendant's contractual or business relations; (3) the
defendant would benefit economically from the alleged
injured relations; or (4) both the defendant and the plaintiff
are parties to a comprehensive interwoven set of contracts
Id. at 1156 (citations omitted, alteration in original).
After setting out the foregoing summary, the court reiterated that
a party cannot be liable for interference unless it is “a stranger to both
the contract and the business relationship giving rise to and
underpinning the contract.” Id. at 1157. It further explained that “[a]
person with a direct economic interest in the contract is not a stranger to
the contract. Parties to an interwoven contractual arrangement are not
liable for tortious interference with any of the contracts or business
relationships.” Id. at 1157 (emphasis omitted). A defendant cannot be
found liable for interfering with a contract as long as the defendant is
essential to the allegedly injured relation “arising from interwoven
contractual arrangements that include the contract.” Id.
Alabama courts have applied this elaborate rule of law to find that
Anheuser–Busch was a party to a contract between a party that
purchased a beer distributorship and the party that sold the
distributorship because the buyer and seller could not have completed
the sale without Anheuser–Busch's approval, Bama Budweiser, 611
So.2d at 247; that an insurance company was a party to multiparty
contractual relations between a dentist and his insured patients because
the dentist and his patients contracted together in reliance on the
insurer's interdependent contractual obligation to pay for dental services,
Blue Cross & Blue Shield, 773 So.2d at 480; and that a business-owner's
father, who had no job title at the business, was not an owner or
employee of the business, did not regularly work at the business, was
not paid by the business, but who helped the business owner interview
employees, fired at least two employees, helped his son find financing
to purchase the business, described himself as the “agent” of the
business, and informed employees that the business was not going to
provide them with an agreed-upon equity interest in the business, could
not be liable for interfering with the contract between the business and
an employee he fired because he was acting as the agent of his son or of
his son's business when he fired the employee, Parsons v. Aaron, 849
So.2d 932 (Ala.2002).
In Bellsouth Mobility, Inc. v. Cellulink, Inc., 814 So.2d 203
(Ala.2001), the court found that a cell phone service and equipment
supplier was a party to the contractual relationship between its sales
agent and a retail store where the sales agent set up sales kiosks. The
supplier and the sales agent entered into an agreement specifically
addressing the sales agent's agreement with the retail store in which the
supplier agreed to furnish the kiosks and to pay the rent due the retail
store for the kiosks. Id. at 208–09. The sales agent agreed with the
supplier that the sales agent would execute a lease with the retailer and
assign the lease to the supplier if the sales agent ceased operating at the
location covered by the lease. Id. at 209. Also, the agreement between
the supplier and the sales agent included a clause in which the supplier
agreed to pay the retailer a percentage of the sales that were made at the
kiosk in the retailer's store. Id. at 209. The lease agreement that the sales
agent executed with the retailer specifically provided that the supplier
would pay the fixed rent and percentage commission due on the kiosks.
After the agreement between the supplier and the sales agent was
signed and the lease between the sales agent and the retailer was signed,
the supplier entered into a separate agreement with the retailer which
allowed the supplier to staff kiosks at the retailer's stores with the
supplier's own employees. Id. at 209–10. In the meanwhile, the sales
agent was having trouble making its quotas with the supplier. Id. at 210.
The retailer ordered the sales agent to vacate its kiosks at the retailer's
stores pursuant to a 90–day cancellation clause in the lease. Id. at
209–10. The sales agent sued the supplier for interfering with the sales
agent's relationship with the retailer. Id. at 210.
Although the supplier was not a party to the lease agreement
between the sales agent and the retailer, the court found that the supplier
could not be liable for interference based on the theory that, “[w]hen
tripartite relationships exist and disputes arise between two of the three
parties, then a claim alleging interference by the third party that arises
from conduct by the third party that is appropriate under its contract
with the other two parties is not recognized.” Id. at 212 (quotations and
citation omitted). Relying in particular on the Bama Budweiser case, the
court held that the sales agent and the retailer could not have entered
into their lease agreement without the supplier's approval, that the
supplier was a party to every cell phone subscription that the sales agent
sold from its kiosk at the retailer's store, and that the lease agreement
with which the supplier allegedly interfered set out rights and
obligations between the supplier and the retailer. Id. at 214. As a
consequence, the supplier was not a stranger to the relationship between
the sales agent and the retailer. Id.
More recently, the Supreme Court of Alabama applied the rule in
Tom's Foods, Inc. v. Carn, 896 So.2d 443 (Ala.2004). In that case, a
company called “Tom's Foods” had agreements with a company called
“Dixie” for Dixie to distribute Tom's Foods products in vending
machines. Id. at 446. Dixie financed some of its vending machines
through Tom's Foods, pledging all of Dixie's vending machines, office
equipment, trucks, inventory, and cash proceeds as collateral. Id. Tom's
Foods assigned the notes and security agreements to Stephens
Diversified Leasing, Inc., which eventually changed its name to “STI.”
Id. at 446–47. The assignment gave STI a right of recourse against
Tom's Food if Dixie defaulted. Id. Later, Dixie leased additional vending
machines from STI, which gave STI a right to repossess the equipment
if Dixie defaulted and precluded Dixie from transferring the machines
without STI's consent. Id. at 447. Dixie acknowledged that Tom's Foods
was STI's agent for enforcing the terms of the lease. Id.
Dixie defaulted on its obligations in late 1996. Id. STI asked
Tom's Foods to repossess the vending machines, which Tom's Foods
began to do on February 19, 1997. Id. 447–48. Duke learned about
Dixie's problems and negotiated an oral agreement in February 1997
with Dixie to purchase Dixie's accounts and equipment. Id. at 448. Duke
began servicing Dixie's customers while Duke was working to obtain
financing in order to maintain the accounts. Id. at 448–49. Tom's Foods
opposed Duke's activities, expressed its intent to repossess Dixie's
vending machines, and began its repossession efforts. Id. at 449–50.
Duke accused Tom's Foods of interfering with its agreement with
Dixie to purchase the vending machines. The Supreme Court of
Alabama held that Tom's Foods was not a stranger to the agreement
between Duke and Dixie. First, Tom's Foods, Dixie, and STI were
parties to comprehensive, interwoven contracts that gave Tom's Foods
an economic interest in the relationship between STI and Dixie. Id. at
455. Second, Tom's Foods was acting as STI's agent when it was
repossessing Dixie's vending machines. Id. Third, Tom's Foods was not
a stranger to the business relationship between Dixie and STI because
Tom's Foods helped create that relationship. Id. Finally, Duke was
acting as Dixie's agent when it was servicing Dixie's accounts with the
vending machines at issue and “stood in Dixie's shoes and had no more
right to retain the vending machines than did Dixie.” Id. Based on “these
facts, Tom's Foods, STI, Dixie, and Duke were all parties to an
interwoven set of contracts and business relationships,” precluding
Tom's Foods' liability for interference. Id.
[In] Peacock v. Merrill, Civ. A. 05–377BHC, 2005 WL 2739138
(S.D.Ala. Oct. 24, 2005), . . . the court denied a Federal Rule of Civil
Procedure 12(b)(6) motion to dismiss an intentional interference with a
business relationship claim. The plaintiff accused the defendants, who
were “Directors, Managing Members, Officers, Members, and
Shareholders and/or Interest Holders” of certain companies of acting in
“their individual capacities for their own benefit and on their own
behalf” when they “fraudulently and improperly” purchased the
plaintiff's interest in those companies, thereby “divesting [the plaintiff]
of her interest in those companies.” Id. at *1. The court found that,
assuming the defendants were acting in their individual capacities when
they committed their alleged misdeeds, they could be strangers to the
plaintiff's relationship with the companies because “[a] shareholder's
relationship with the company in which they maintain an interest ... is
not inextricably intertwined or necessarily dependent on another
individual's similar relationship with that company.” Id. at *2.
Cello, 613 F. Supp. 2d at 1281-84.
The One Sentence from the Complaint which the
Defendants Cite Does Not Establish that the Defendants
Are Parties to the Contract/Business Relationship
between the Plaintiff and REV
The complaint alleges that “Nancy Goedecke ignored a conflict of interest she
had and unethically used her position on the Board of REV Birmingham to divert
future LightRails projects to her company, Mayer Electric Supply Company, Inc., for
her personal gain.” (Doc. 1 at 2). The defendants argue only that this allegation
defeats the plaintiff’s claim, citing to the statement in Waddell & Reed that “‘[a]
defendant is a party in interest to a relationship if the defendant has any beneficial or
economic interest in, or control over, that relationship.’” (Doc. 22 at 10 quoting
Waddell & Reed, 875 So. 2d at 1154 (emphasis in document 22) (citing Parsons, 849
So.2d at 937; BellSouth, 814 So.2d at 214; Colonial Bank v. Patterson, 788 So. 2d
134, 139 (Ala. 2000) overruled by White Sands Grp., L.L.C. v. PRS II, LLC, 32 So.
3d 5 (Ala. 2009); Blue Cross, 773 So.2d at 480); doc. 39 at 2).
It is undisputed that Goedecke and Mayer were not parties to the contract
between the plaintiff and REV. Of course, that alone does not mean that they are
necessarily strangers to the business relationship between the plaintiff and REV.
However, the vague allegation that Goedecke “used her position on the board of
REV” does not, alone, show that she was a party to the business relationship. The
court notes that the statement provides the court with no facts as to what specifically
was done.4 The court also notes the following:
– unlike in BellSouth or in Bama Budweiser, here there are no facts alleged
indicating that the plaintiff and REV could not have entered into the agreement
without Goedecke or Mayer’s permission or approval.5
– there are no facts alleged indicating that Goedecke and Mayer are essential
entities to the purported injured relations;
– unlike in Blue Cross & Blue Shield, here there are no facts alleged indicating
that the plaintiff and REV contracted in reliance on some other duty to be
The absence of facts is a problem throughout the complaint, and, while it appears to
help the plaintiff as to this argument, as noted below, such absence ultimately dooms the
intentional interference count as a whole, as well as the other counts of the complaint. However,
at this point, the court limits its discussion to the narrow issue raised by the defendants.
The court is aware of the allegation that Goedecke is a Board member of REV.
However, there is no allegation that she had to approve of the arrangement or it would not have
performed by Goedecke and/or Mayer, or that the allegedly injured relations
are inextricably a part of or dependent upon Goedecke and Mayer’s contractual
or business relations with any party;
– there are no facts alleged indicating that Goedecke and/or Mayer benefitted
economically from the relationship between the plaintiff and REV;
– unlike in Tom’s Foods, here there are no facts alleged indicating that
Goedecke, Mayer, the plaintiff, and/or REV are parties to “a comprehensive
interwoven set of contracts or relations;” and
– there are no facts alleged indicating that Goedecke and/or Mayer were the
agents of any party to the contract, and/or that they acted within the scope of
any such agency.
For the reasons cited above, the court determines that Goedecke and Mayer are
incorrect in their assertion that the one sentence they cited establishes that they are
parties to the business relationship.
As to This Claim, the Twombly and Iqbal Minimum Pleading
Standards Have Not Been Met
Despite the court’s findings in the previous section, the court notes that the
burden is on the plaintiff to establish that the party defending the claim “is a ‘third
party’ or ‘stranger’ to the contract or business relationship with which the defendants
allegedly interfered.” Waddell & Reed, 875 So.2d at 1154. Although this may only
be an evidentiary burden,6 it should be considered along with the requirements of
Twomby and Iqbal.7 In making its finding in the previous section, the court does not
shift the burden to the defendants to prove that they are parties to the relationship.
However, the posture of the one argument made by the defendants in their original
motion constrained the court to what was alleged and was relevant to that argument.
The defendants did not argue that Count Two failed to allege sufficient facts under
Twombly and Iqbal. The court notes, however, that the count is deficient in that
An example of one such deficiency is illuminated by the response the plaintiff
made to the motion to dismiss. There, the plaintiff argues that Goedecke was not a
party to the business relationship, even though she was a member of the board of
REV, because she “acted outside the scope of her duties as a board member of REV
Birmingham.” (Doc. 36 at 4). The plaintiff points to allegations that:
(1) REV Birmingham arranged a meeting between FitzGibbons,
Goedecke, and an unnamed employee of Mayer Electric.
The Supreme court has cautioned against confusing evidentiary burdens with pleading
requirements. See, Swierkiewicz v. Sorema N. A., 534 U.S. 506, 510, 122 S. Ct. 992, 997, 152 L.
Ed. 2d 1 (2002) (“The prima facie case under McDonnell Douglas, however, is an evidentiary
standard, not a pleading requirement.”).
Indeed, the plaintiff acknowledges the burden on it in its opposition brief. (Doc. 36 at 4).
(2) At that meeting, Goedecke was upset because FitzGibbons did not
purchase supplies from Mayer Electric for the first of the four LightRails
(3) Goedecke ignored a conflict of interest between her position with
REV Birmingham and her position as an officer of Mayer Electric.
(4) Goedecke stated, “It looks like we [i.e., Mayer Electric and
FitzGibbons, LLC] are competitors.”
(Doc. 36 at 4-5) (citing doc. 1 at ¶¶ 40-41, 42, 43). The plaintiff then writes:
Because the Complaint has sufficiently pleaded that Goedecke acted
outside the scope of her duties as a REV Birmingham board member,
and she was therefore a stranger to the relationship between
FitzGibbons, LLC and REV Birmingham, the motion should be denied
with respect to this claim.
(Doc. 36 at 5).8
The court does not agree that the complaint “has sufficiently pleaded that
Goedecke acted outside the scope of her duties as a REV Birmingham board
member.” First, the complaint contains no fact which describes the nature of those
duties, so it is impossible to say that it has pled facts which show that she acted
outside the scope of them. Second, even if the complaint had pled the nature of
Goedecke’s duties as a member of the board, it does not say what she did that was
outside the scope of those duties other than to vaguely state that she “ignored a
conflict of interest.” Accordingly, the court cannot say that she was not an agent of
This is the entire argument the plaintiff makes as to this count.
REV when she did whatever it is that she is supposed to have done.
The failure to allege that Goedecke did anything is fatal both to this argument
and to Count One as a whole. “[A] plaintiff's obligation to provide the grounds of his
entitlement to relief requires more than labels and conclusions, and a formulaic
recitation of the elements of a cause of action will not do.” Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 127 S. Ct. 1955, 1964–65, 167 L. Ed. 2d 929 (2007)
(quotations omitted). “Factual allegations must be enough to raise a right to relief
above the speculative level.” Id. at 1965. Mere conclusory statements in support of
a threadbare recital of the elements of a cause of action will not suffice. Ashcroft v.
Iqbal, 556 U.S. 662, 129 S. Ct. 1937, 1949, 173 L. Ed. 2d 868 (2009). However,
Goedecke and Mayer did not include this as a reason that this count should be
dismissed, and so the plaintiff has not had an opportunity to respond to it.9 In any
event, the point is moot as the court will allow the plaintiff an opportunity to amend
Count Two – Unfair Competition (REV, Goedecke, and Mayer)
Against all three defendants, the plaintiff attempts to make a claim for “passing
They discussed this reason in their reply, but only in connection with the agency issue.
See, doc. 39 at 3.
off” under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A).10 The
Eleventh Circuit has explained:
[A] false designation of origin claim, which proscribes the behavior of
“passing off” or “palming off,” . . . “occurs when a producer
misrepresents his own goods or services as someone else's.” Dastar
Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 28 n. 1, 123
S.Ct. 2041, 2045, 156 L.Ed.2d 18 (2003). To establish a prima facie case
under § 1125(a), a plaintiff must show (1) that the plaintiff had
enforceable trademark rights in the mark or name, and (2) that the
defendant made unauthorized use of it “such that consumers were likely
to confuse the two.” Lone Star Steakhouse & Saloon, Inc. v. Longhorn
Steaks, Inc., 106 F.3d 355, 358 (11th Cir.1997); see SunAmerica Corp.
v. Sun Life Assurance Co. of Canada, 77 F.3d 1325, 1334 (11th
Custom Mfg. & Eng'g, Inc. v. Midway Servs., Inc., 508 F.3d 641, 647-48 (11th Cir.
There Is No Allegation of Enforceable Trademark Rights
That statute provides:
(a) Civil action
(1) Any person who, on or in connection with any goods or services, or any
container for goods, uses in commerce any word, term, name, symbol, or device,
or any combination thereof, or any false designation of origin, false or misleading
description of fact, or false or misleading representation of fact, which-(A) is likely to cause confusion, or to cause mistake, or to deceive as to the
affiliation, connection, or association of such person with another person, or as to
the origin, sponsorship, or approval of his or her goods, services, or commercial
activities by another person[.]
15 U.S.C.A. § 1125 (a)(1)(A).
Nowhere in the complaint is there even a conclusory allegation that the plaintiff
has “enforceable trademark rights” in anything. No facts are alleged from which an
inference of such rights can be made. The plaintiff’s responses to the motions to
dismiss make no attempt to argue that the plaintiff has any such rights. For those
reasons, the count fails to state a claim upon which relief may be granted.11
To the extent that his initial contribution to the LightRails project is the “thing”
in which the plaintiff has enforceable trademark rights, and the alleged violation is
“copying,” the contract in this case12 reveals that the plaintiff may not have any such
rights. It provides that REV “shall have ownership and possession” of the project, and
may “make any and all reproductions or derivatives in whatever form,” for “any . . .
On April 24, 2014, the plaintiff filed a two page “supplement” to its responses to the
motions to dismiss to which it attached a copy of the United States Supreme Court’s recent
decision in Lexmark Int'l, Inc. v. Static Control Components, Inc., 134 S. Ct. 1377 (2014). (Doc.
44 at 1). The Court issued the decision after the plaintiff responded to the motions. The plaintiff
does so purportedly in an attempt, for the first time, to respond to the claim that it has no
enforceable trademark interest. (Doc. 44 at 1). First, Lexmark is clear that “[s]ection 1125(a) . . .
creates two distinct bases of liability: false association, § 1125(a)(1)(A), and false advertising, §
1125(a)(1)(B).” Lexmark, 134 S. Ct. at 1384. In that case, the Supreme Court addressed only the
issue of standing, and then only in the context of a false advertising claim. Id. at 1390 (“[T]o
come within the zone of interests in a suit for false advertising under § 1125(a), a plaintiff must
allege an injury to a commercial interest in reputation or sales.”). The instant case deals with only
false association, and the issue is not one of standing. Other than to note that Lexmark “appears
to overrule many years of precedent” (doc. 44 at 2), the plaintiff does not explain how Lexmark is
helpful. In summary, the complaint still does not allege enforceable trademark rights.
The contract may be considered in deciding the Rule 12(b)(6) motions because it is an
attachment to the complaint and is also central to the plaintiff’s claims. Starship Enterprises of
Atlanta, Inc. v. Coweta Cnty., Ga., 708 F.3d 1243, 1253 n. 13 (11th Cir. 2013).
purpose.” (Doc. 1-3 at 7, at § 11.0). Although this point was raised by the defendants,
the plaintiff has failed to address it in its opposition briefs.
None of the Defendants Can Be Liable under the Lanham Act
for Misappropriation of Confidential Information
Count Two alleges:
60. . . . The LightRails project contained confidential information of
FitzGibbons that was provided to REV Birmingham, who in turn
provided the confidential information to Goedecke and/or Mayer
61. The confidential information includes the details on the structure and
programming of the light fixtures on the 18th Street underpass,
including, but not limited to, how much each of the fixtures cost, the
switches to be used, and the lighting sequence. All of this was provided
by FitzGibbons to REV Birmingham under an expectation of privacy.
62. The information provided by FitzGibbons to REV Birmingham is
not generally known in the trade or by the public, and cannot be derived
from publically available information. The information provided by
FitzGibbons to REV Birmingham was provided under circumstances to
reasonably expect REV Birmingham to maintain its confidentiality.
Also, the information provided to REV Birmingham has economic value
63. Based upon information and belief, the confidential information
provided by FitzGibbons to REV Birmingham was in turn provided to
Goedecke, who has a conflict of interest between her positions (a) on the
Board of Directors of REV Birmingham and (b) as Chairman and CEO
of Mayer Electric.
(Doc. 1 at 12).
These paragraphs seem to allege13 a Lanham Act claim based on REV
improperly giving to Goedecke and Mayer, and Goedecke and Mayer improperly
accepting, confidential information which the plaintiff gave to REV. However, the
plaintiff has not cited, and this court has not found, any authority for the proposition
that there is a cause of action under the Lanham Act for misappropriation of
confidential information. At least one court which has considered the issue has
determined that there is not. See, Del Monte Fresh Produce Co. v. Dole Food Co.,
Inc., 136 F. Supp. 2d 1271, 1287 (S.D. Fla. 2001) (“[T]he Lanham Act does not
concern itself with the question of whether an item is in the public domain or with the
related question of whether the item is a trade secret.” ); Potucek v. Taylor, 738
F.Supp. 466, 469–70 (M.D.Fla.1990).
Even if the Lanham Act provides a remedy for misappropriation of confidential
information, the complaint does not allege that the information was in fact given to
Goedecke and Mayer. It states only that “[b]ased upon information and belief,” it was
given to them. (Doc. 1 at ¶46 (“Based upon information and belief, everything
provided to REV Birmingham, including, but not limited to, (a) cost of the light
fixtures, (b) proposals for the 14th Street underpass, and (c) designs and programs of
The exact basis of the Lanham Act claim is unclear, as this count appears to set out
many different types of conduct. The court will address each different allegation of conduct
the 18th Street underpass were all provided to Goedecke and/or Mayer Electric with
the objections of FitzGibbons.”), ¶ 49 (“Based upon information and belief,
information received from FitzGibbons, some of which was confidential, has been
provided to Goedecke so that Goedecke and/or Mayer Electric with others (currently
unknown) will be able to install the other proposed “LightRails” projects.”), ¶ 63
(“Based upon information and belief, the confidential information provided by
FitzGibbons to REV Birmingham was in turn provided to Goedecke[.]”)). It has been
noted, and this court agrees, that:
[t]he Twombly plausibility standard . . . does not prevent a plaintiff from
“pleading facts alleged ‘upon information and belief’ “ where the belief
is based on factual information that makes the inference of culpability
plausible. See Iqbal, 556 U.S. at 678 (“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.”) The Twombly Court stated that “[a]sking for plausible
grounds to infer an agreement does not impose a probability requirement
at the pleading stage; it simply calls for enough fact to raise a reasonable
expectation that discovery will reveal evidence of illegal[ity].” 550 U.S.
Associated Indus. Ins. Co., Inc. v. Advanced Mgmt. Servs., Inc., 12-80393-CIV, 2013
WL 1176252 at * 3 (S.D. Fla. Mar. 20, 2013). However, here there is no inference
based upon facts in the complaint, only a conclusion that the information was given
by REV to Goedecke and Mayer.14
The Lanham Act Creates No Cause of Action for Copying
Count Two also alleges in part:
64. Based on information and belief, REV Birmingham, Mayer
Electric and/or Goedecke are continuing the “LightRails” project for
three additional underpasses essentially duplicating the efforts of
internationally-known light artist FitzGibbons. Each of the underpasses
is similar in structure, and REV Birmingham/Mayer Electric/Goedecke
have all of the information about the first LightRails completed by
This issue may be moot however, because, in its response to the motion, the plaintiff
implies that the claim is not based on the misappropriation. It states:
The inducement of FitzGibbons by REV Birmingham to provide the design
information is a critical element to the story, underscoring the lengths to which the
Goedecke Defendants went to ensure the public still perceives the remaining
underpasses as FitzGibbons, LLC LightRails projects.
(Doc. 36 at 7). If this issue is moot, and the plaintiff wishes the court to treat this argument as if
it were a fact alleged in the complaint (the complaint contains no such allegation), the court
cannot do so. A complaint may not be amended by briefs in opposition to a motion to dismiss.
Fleming v. Dowdell, 434 F. Supp. 2d 1138, 1148 (M.D. Ala. 2005) aff'd, 182 F. App'x 946 (11th
Cir. 2006) (citing Gilmour v. Gates, McDonald and Co., 382 F.3d 1312, 1315 (11th Cir.2004)
(“A plaintiff may not amend her complaint through argument in a brief opposing summary
judgment.”) and Thomason v. Nachtrieb, 888 F.2d 1202, 1205 (7th Cir.1989) (“It is a basic
principle that the complaint may not be amended by the briefs in opposition to a motion to
Even if the court did treat this “fact” as if it were part of the complaint, this “fact” does
not show that any of the defendants used the information to make others believe that the new
projects were done by the plaintiff. While the “fact” might be “consistent” with such a purpose,
the court is obliged to consider “more likely explanations.” Ashcroft v. Iqbal, 556 U.S. 662, 681,
129 S. Ct. 1937, 1951, 173 L. Ed. 2d 868 (2009). In this case, it is more likely that, if the
information was given to Goedecke, it was because she was a member of the REV board. In that
context, it would have been used possibly to evaluate costs and other aspects of the project only
as it related to whether REV should engage the plaintiff or not. Regardless, assuming that REV
gave the information to Goedecke and Mayer, there are no facts alleged that it did so in order that
the project could be “passed off” as the plaintiff’s.
FitzGibbons at the 18th Street underpass.
65. Based on information and belief, REV Birmingham, Mayer Electric
and/or Goedecke will be duplicating the work of internationally-known
light artist Fitzgibbons.
(Doc. 1 at 13). The defendants argue that these paragraphs allege only “copying” of
the plaintiff’s work, and that copying alone is not a violation of the Lanham Act.
(Doc. 22 at 14; doc. 39 at 5-6). The plaintiff does not respond to this argument.
“In general, unless an intellectual property right such as a patent or copyright
protects an item, it will be subject to copying.” TrafFix Devices, Inc. v. Mktg.
Displays, Inc., 532 U.S. 23, 29, 121 S. Ct. 1255, 1260, 149 L. Ed. 2d 164 (2001).
“The Lanham Act does not exist to reward manufacturers for their innovation in
creating a particular device; that is the purpose of the patent law and its period of
exclusivity.” Id. at 34; see also, Groeneveld Transp. Efficiency, Inc. v. Lubecore Int'l,
Inc., 730 F.3d 494, 511 (6th Cir. 2013) (“[T]rademark law does not prohibit copying
as such; that is the province of copyrights and patents.”) (citing TrafFix Devices, Inc.,
532 U.S. at 34).15
Although REV is responsible for hiring out new LightRails projects, the
Also, 17 U.S.C. § 301 (the Copyright Act) broadly preempts “all legal or equitable
rights that are equivalent to any of the exclusive rights within the general scope of copyright.” 17
U.S.C.A. § 301(a). Further, even if copying was a violation of the Lanham Act, under the terms
of the plaintiff’s contract, the plaintiff gave REV the right “to make any and all reproductions or
derivatives in whatever form,” of the plaintiff’s part of the project. (Doc. 1-3 at 7).
complaint does not say that more LightRails projects have been completed, or even
contracted out. Further, there are no facts that Goedecke did anything other than: meet
with the plaintiff (doc. 1 at ¶ 41), express that she was upset that the plaintiff did not
purchase light fixtures from her company (doc. 1 at ¶ 42), and tell the plaintiff “[i]t
looks like we’re competitors,” or words to that effect (doc. 1 at ¶ 42). From these
bare allegations, a plausible leap that new projects have been done, much less that
Goedecke and Mayer were involved, cannot be made.16
The complaint alleges that Rominger told Fitzgibbons that the plaintiff would not be
hired for the remaining projects because REV was “going local.” The complaint then states:
Based upon information and belief, because [sic] Mayer Electric has an exclusive
area distributorship in Alabama for ColorKinetics fixtures. Hence, going local
means that Goedecke and/or Mayer Electric will be providing the ColorKinetics
light fixtures for the remaining three LightRails projects.
(Doc. 1 at ¶ 48). This language also does not establish a plausible claim. First, the plaintiff is
again merely speculating “upon information and belief” that Mayer has such an exclusive area
distributorship. There are no facts in the complaint to support that conclusion. Second, as noted,
the complaint does not allege that a contract has been awarded, or that any more work has been
done. Therefore, even if Rominger has said that REV was “going local,” and even if Mayer was
REV’s only option in that regard, there is no allegation that they actually did “go local.”
The court notes that, in its response to the motion to dismiss, the plaintiff cites to
evidence outside the pleadings in an attempt to show that Mayer has “‘been selected to provide
LED lighting fixtures for the 20th Street underpass lighting project,’” and “‘Mayer . . . has since
been selected as the lighting supplier for two additional REV Birmingham underpass lighting
projects.’” (Doc. 36 at 6, n. 23) (quoting Goedecke and Mayer’s response to interrogatories, doc.
40-2 at 9). Document 40-2 is the subject of REV’s motion to strike. That motion will be
GRANTED, and the court declines to consider this extrinsic evidence as “courts generally do not
consider allegations outside of the complaint itself.” U.S. ex rel. Wilson v. Crestwood
Healthcare, L.P., CV-11-S-3361-NE, 2012 WL 1886351 at *9 (N.D. Ala. May 18, 2012) (Smith,
J.) (citing St. George v. Pinellas County, 285 F.3d 1334, 1337 (11th Cir.2002)). Regardless, even
if the court considered the evidence, it shows only that Mayer supplied lighting for the project,
not that it somehow was passing off the new projects as the plaintiff’s.
Also, the complaint does not provide any facts from which it could be
determined that the work has, or will be, duplicated by any of the defendants. The
complaint does not identify any specific features, other than lights which are placed
in an underpass, which would be common to the work of both the plaintiff and these
defendants. Further, even if the project was duplicated, there are no facts indicating
that any of the defendants has represented to anyone that the plaintiff was involved,
so that they could “pass off” the new projects as the plaintiff’s.
There Are No Facts Alleged which Show how the New Work
Could Be Confused with the Work of the Plaintiff.
Count Two alleges:
66. As a result of the acts complained of hereinabove, REV
Birmingham/Mayer Electric/Goedecke have created a false designation
of origin, false or misleading description of fact, or a false or misleading
representation of fact, which:
(a) is likely to cause confusion, or to cause mistake, or to deceive;
(1) as to the affiliation, connection, or association of
Defendants with FitzGibbons; or
(2) as to the origin, sponsorship or approval of FitzGibbons
of the goods, services or commercial activities of
67. Further, Defendants created a false or misleading representation that
misrepresents the “LightRails” projects on the remaining three
underpasses as being goods or services that originate with FitzGibbons.
68. More specifically, Defendants’ acts are likely to cause confusion, to
cause mistake or to deceive others into believing the remaining three
“LightRails” projects for underpasses have an affiliation, connection or
association with FitzGibbons, or the remaining three underpasses
originate from, are sponsored by, or are approved by, FitzGibbons.
(Doc. 1 at 13). These conclusory statements also do not establish how there might be
confusion, and there are no other facts in the complaint which support these claims.17
Count Three – Unjust Enrichment (REV, Goedecke, and Mayer)
Count II alleges:
71. REV Birmingham has knowingly accepted the services performed
by FitzGibbons. As a result of knowingly accepting the services
provided by FitzGibbons, REV Birmingham accepted those services
with knowledge of their value, and with the reasonable expectation to
pay FitzGibbons for such services.
The court also notes that the light sculptures at issue are a form of public art. There is
no allegation that they are “sold” to the public, or that money is otherwise made off the 18th
Street project or any new project. The second element of a passing off claim requires that the
defendant made unauthorized use of the enforceable trademark “such that consumers were likely
to confuse the two.” Custom Mfg. & Eng'g, Inc. v. Midway Servs., Inc., 508 F.3d 641, 647-48
(11th Cir. 2007) (emphasis added) (internal citations omitted). With respect to this element, the
Eleventh Circuit has stated that courts should consider “the similarity of the parties' retail outlets,
trade channels, and customers (‘consider[ing] where, how, and to whom the parties' products are
sold’).” Custom Mfg. & Eng'g, Inc. v. Midway Servs., Inc., 508 F.3d 641, 648 (11th Cir. 2007).
The plaintiff does not explain how a passing off claim under the Lanham Act could be had where
the art is public and not “sold” to “consumers.” Of course, since this issue was first raised in
REV’s reply brief (doc. 42 at 3), the plaintiff has not had a chance to respond to it. Accordingly,
the court will not rule on the merits of this argument.
72. FitzGibbons had a reasonable expectation to be compensated for the
services provided when REV Birmingham asked for and received
information on other prospective “LightRails” projects. REV
Birmingham knew that FitzGibbons expected to be paid for those
73. Further, Goedecke and/or Mayer Electric, by receiving such
information through REV Birmingham, knew that FitzGibbons expected
to be paid for his services.
74. As a result of Defendants accepting the services of FitzGibbons and
the benefits thereof, Defendants accepted those services with knowledge
that FitzGibbons should be paid a reasonable value for the services
(Doc. 1 at 14). In its response to the motion to dismiss, the plaintiff writes:
The Alabama Supreme Court has stated:
In order for a plaintiff to prevail on a claim of unjust enrichment,
the plaintiff must show that“the ‘ “defendant holds money which, in
equity and good conscience, belongs to the plaintiff or holds money
which was improperly paid to defendant because of mistake or fraud.”
’ Dickinson v. Cosmos Broad. Co., 782 So.2d 260, 266 (Ala.2000)
(quoting Hancock–Hazlett Gen. Constr. Co. v. Trane Co., 499 So.2d
1385, 1387 (Ala.1986)).... ‘The doctrine of unjust enrichment is an old
equitable remedy permitting the court in equity and good conscience to
disallow one to be unjustly enriched at the expense of another.’ Battles
v. Atchison, 545 So.2d 814, 815 (Ala.Civ.App.1989).”Avis Rent A Car
Sys., Inc. v. Heilman[,] 876 So.2d 1111, 1123 (Ala.2003). “ ‘One is
unjustly enriched if his retention of a benefit would be unjust.’ ” Welch
v. Montgomery Eye Physicians, P.C., 891 So.2d 837, 843 (Ala.2004)
(quoting Jordan v. Mitchell, 705 So.2d 453, 458 (Ala.Civ.App.1997)).
The retention of a benefit is unjust if“ ‘(1) the donor of the benefit ...
acted under a mistake of fact or in misreliance on a right or duty, or (2)
the recipient of the benefit ... engaged in some unconscionable conduct,
such as fraud, coercion, or abuse of a confidential relationship. In the
absence of mistake or misreliance by the donor or wrongful conduct by
the recipient, the recipient may have been enriched, but he is not deemed
to have been unjustly enriched.’ ”Welch, 891 So.2d at 843 (quoting
Jordan, 705 So.2d at 458). The success or failure of an
unjust-enrichment claim depends on the particular facts and
circumstances of each case. Heilman, supra.
Mantiply v. Mantiply, 951 So. 2d 638, 654-55 (Ala. 2006);18 see also, Hardy v. Smith,
2110726, 2013 WL 1490611 at * 3 (Ala. Civ. App. Apr. 12, 2013) reh'g denied,
2110726, 2013 WL 4291698 (Ala. Civ. App. Aug. 16, 2013) (same). “‘To prevail on
a claim of unjust enrichment under Alabama law, a plaintiff must show that: (1) the
defendant knowingly accepted and retained a benefit, (2) provided by another, (3)
who has a reasonable expectation of compensation.’” Matador Holdings, Inc. v. HoPo
Realty Investments, L.L.C., 77 So. 3d 139, 145 (Ala. 2011) (quoting Portofino
The plaintiff’s responses (doc. 36 at note 27; doc. 40 at note 20) also cite to the
following from Mantiply:
Recovery on a theory of quantum meruit arises when a contract is implied.
Brannan & Guy, P.C. v. City of Montgomery, 828 So.2d 914 (Ala.2002).“There
are two kinds of implied contracts—those implied in fact and those implied in
law. Contracts implied in law are more properly described as quasi or constructive
contracts where the law fictitiously supplies the promise [to pay for the labor or
services of another] to prevent a manifest injustice or unjust enrichment,
etc.”Green v. Hospital Bldg. Auth. of Bessemer, 294 Ala. 467, 470, 318 So.2d
701, 704 (1975). This Court has stated:“It is the settled law of this State that
where one knowingly accepts services rendered by another, and the benefit and
the result thereof, the law implies a promise on the part of the one accepting with
knowledge the services rendered by another to pay the reasonable value of such
services rendered.”Hendrix, Mohr & Yardley, Inc. v. City of Daphne, 359 So.2d
792, 795 (Ala.1978).
Mantiply, 951 So. 2d at 656. See doc. 36 at 8, n. 27. The section referenced by the plaintiff
specifically addressed only quantum meruit.
Seaport Vill., LLC v. Welch, 4 So.3d 1095, 1098 (Ala.2008)).
The “benefit” which the plaintiff claims it gave to REV was the preparation,
and proposal, at REV’s request for a LightRails project at the 14th Street underpass
in Birmingham. (Doc. 1 at ¶ 37). The plaintiff alleges that
Pursuant to that request, extensive measurements and photographs were
made of the 14th Street underpass. FitzGibbons recommended
interactive components for pedestrians at the 14th Streed underpass.
Rominger and Chris Hatcher of REV Birmingham responded that this
was a great idea. Therefore, FitzGibbons began to investigate an
38. On July 10, 2013, Rominger asked FitzGibbons to do a proposal for
the 14th Street underpass. Also, Rominger asked what particular fixtures
to use, how much they would cost, and what kind of switches
FitzGibbons would specify for the other “LightRails” projects, including
the 14th Street underpass. FitzGibbons provided the requested
information on the LED fixtures and continued research for appropriate
switches for REV Birmingham.
39. Rominger, on behalf of REV Birmingham, also asked FitzGibbons
for media contacts that would help REV Birmingham in their
fundraising efforts. FitzGibbons provided REV Birmingham with the
(Doc. 1 at 8-9). The defendants argue that the plaintiff cannot prevail because it had
no reasonable expectation that it would be compensated.
The plaintiff’s responses refer to the above allegations and argue that they
“clearly” show that the plaintiff had a reasonable expectation that it would be paid for
these services. (Doc. 36 at 9; doc. 40 at 6-7). The court does not agree. It is
undisputed that the plaintiff had no contract for the other projects. The one contract
the plaintiff did have covered the 18th Street project alone. The allegations to which
the plaintiff points show only that the plaintiff was asked to prepare a proposal for the
other projects and did so. The Alabama Supreme Court has held that the plaintiff need
not be compensated for “efforts in attempting to secure [a] contract,” even if someone
else gets the contract. Utah Foam Products, Inc. v. Polytec, Inc., 584 So. 2d 1345,
1350-51 (Ala. 1991).
Further, the parties’ course of dealing, as outlined elsewhere in the complaint,
belies any inference that the plaintiff reasonably expected to be paid. The complaint
states that before the plaintiff received the contract for the 18th Street project,
Fitzgibbons reviewed the 18th Street underpass (doc. 1 at ¶ 14), inspected the four
underpasses which comprise the entire LightRails project (doc. 1 at ¶17), and
eventually sent a proposal for the 18th Street project (doc. 1 at ¶18). Only then did the
plaintiff and REV enter into the contract for the 18th Street project. (Doc. 1 at ¶20).
The contract into which the parties entered does not provide for payment for the work
performed prior to the date on which it was executed. (Doc. 1-3 at 9-10). Further, the
contract clearly states that the plaintiff “shall not commence . . . services until this
Agreement is fully executed and [REV] issues a Notice to Commence Work” (doc.
1-3 at 9), language which implies that REV would not pay for work done before such
time. Finally, the complaint does not allege that the plaintiff expected to be paid, or,
more importantly, was paid for the work it performed prior the date the 18th Street
contract was executed.
The plaintiff points to no facts in the complaint establishing why it should have
expected to be paid for the work done in an attempt to secure the new LightRails
Count Four – Civil Conspiracy (REV, Goedecke, and Mayer)
Count Four reads:
77. As a result of the acts complained of herein above, all of the
Defendants (REV Birmingham, Mayer Electric and/or Goedecke) have
conspired together, and with others currently unknown, to commit a
substantive tort against FitzGibbons. As a result, the Defendants have
combined to do (a) something that is unlawful or (b) something that is
lawful by an unlawful means.
78. Further, the acts of the co-conspirators (REV Birmingham,
Mayer Electric and/or Goedecke) are attributable to each other.
79. As a result of the civil conspiracy, FitzGibbons has been
damaged in an amount yet to be determined, but in excess of the
jurisdictional minimums of this Court.
(Doc. 1 at 15). The allegation, without any facts in support, that the defendants have
combined to do “something,” simply does not rise to the pleading level required by
Twombly and Iqbal.19
The Plaintiff’s Motion to Amend
As noted, the plaintiff asked for leave to amend in the event that this court
found its complaint to be deficient. (Doc. 36 at 11; doc. 40 at 10). The Eleventh
Circuit has noted:
Under Federal Rule of Civil Procedure 15(a), a party may amend
its pleading only with the opposing party's written consent or the court's
leave, if a Federal Rule of Civil Procedure 12(b) motion has been filed.
Fed.R.Civ.P. 15(a). Although Rule 15(a)(2) instructs that leave of the
court to amend pleadings should be given freely, when justice so
requires; a district court may deny a motion to amend on “numerous
grounds, such as undue delay, undue prejudice to the defendants, and
futility of the amendment.”
Mitchell v. Thompson, 12-12774, 2014 WL 1647350 (11th Cir. Apr. 25, 2014)
(quoting Carruthers v. BSA Adver., Inc., 357 F.3d 1213, 1218 (11th Cir.2004)
(citation and internal quotation marks omitted in original)). The defendants do not
object to (or even respond to) the motion to amend in their reply briefs. There has
been no showing, nor is it clear from the pleadings or posture of this case, that the
defendants would be prejudiced as a result of allowing the amendment. Further, the
The defendants also argue that this claim is due to be dismissed because the other
counts are due to be dismissed, and, absent an underlying tort, a conspiracy claim cannot lie. Avis
Rent A Car Sys., Inc. v. Heilman, 876 So. 2d 1111, 1124 (Ala. 2003) (“[L]iability for civil
conspiracy rests upon the existence of an underlying wrong and if the underlying wrong provides
no cause of action, then neither does the conspiracy.”). The plaintiff agrees with this proposition.
Because the court will allow the plaintiff to amend, this issue is moot.
case was filed relatively recently, in December of 2013. Finally, the court cannot say
that an amendment would be futile. The plaintiff will be allowed to amend the
complaint to add additional facts in support of its claim.
Based on the foregoing, it is ORDERED, ADJUDGED, and DECREED as
REV’s motion to strike “Exhibit A” to the plaintiff’s brief opposition the
motion to dismiss (doc. 42 at 2, 6-7) is GRANTED.
The motion to dismiss filed by Mayer and Goedecke (doc. 22) is
DENIED without prejudice;
The motion to dismiss filed by REV (doc. 33) is DENIED without
The plaintiff’s motions to amend the complaint (doc. 36 at 11; doc. 40
at 10) are GRANTED. The plaintiff shall file a complete amended
complaint within 14 days which addresses the issues identified in
DONE and ORDERED this 12th day of May, 2014.
VIRGINIA EMERSON HOPKINS
United States District Judge
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