Vision Quest Industries, Inc. v. Ortho Systems

Filing 14

ORDER Re Motion to Dismiss [Doc. No. #10 ]. Signed by Judge Cathy Ann Bencivengo on 9/20/2017. (jjg)

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UNITED STATES DISTRICT COURT

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SOUTHERN DISTRICT OF CALIFORNIA

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VISION QUEST INDUSTRIES, INC.
d/b/a OrthoCare,

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ORDER RE MOTION TO DISMISS

Plaintiff,

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Case No.: 17-CV-1395-CAB-NLS

v.

[Doc. No. 10]

ORTHO SYSTEMS d/b/a Ovation
Medical,
Defendant.

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Defendant Ortho Systems d/b/a Ovation Medical (“OM”) has filed a motion to

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dismiss the second through fourth claims in the complaint for failure to state a claim under

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Federal Rule of Civil Procedure 12(b)(6). Plaintiff Vision Quest Industries (“VQ”) does

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not oppose the motion with respect to claim 3 for federal unfair competition and false

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designation of origin and claim 4 for dilution. Accordingly the motion is granted with

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respect to claims 3 and 4 and those claims are dismissed without prejudice. VQ opposes

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the motion with respect to claim 2 for trade dress infringement. The motion as been fully

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briefed and the Court deems it suitable for submission without oral argument. For the

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following reasons, the motion is denied with respect to claim 2.

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I.

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VQ is the owner of United States Patent No. D787,076 S (the “’D076 Patent”) for

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an ornamental design entitled “Orthotic Device,” and sells a low profile knee brace related

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to that patent called the OActive 2. [Doc. No. 1 at ¶¶ 8, 12.] The OActive 2 “has a

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distinctive shape and design such that it is recognized in the orthotics industry by

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prescribers and consumers of osteoarthritis braces.” [Id. at ¶ 9.] According to the

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complaint, “[t]he shape and/or ornamental design of [VQ’s] OActive 2 product is

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nonfunctional.” [Id. at ¶ 11.] The complaint also alleges that “the shape and/or ornamental

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design of the OActive 2 product . . . is distinctive in that it has come to be associated with

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Allegations in the FAC

Vision Quest in the minds of consumers.” [Id. at ¶ 28.]

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On June 15, 2017, OM began marketing and selling a product called “The Game

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Changer, Premium Universal Osteoarthritic Knee Brace” (the “Game Changer”). [Id. at ¶

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13.] The Game Changer is a “low profile knee brace with a shape, design and look that is

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virtually identical to [the OActive 2] and the embodied ornamental design covered by the

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‘D076 Patent.” [Id. at ¶ 13.] The complaint alleges that the “shape, design and look of

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Defendant’s The Game Changer product is the same or similar to [VQ’s] OActive 2

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product, and incorporates distinctive features of the OActive 2 product,” and that the

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“Game Changer product has an overall appearance that is confusingly similar and

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substantially the same as Vision Quest’s OActive 2 product.” [Id. at ¶¶ 16, 31.]

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complaint also includes the following side-by-side comparison of the Game Changer to the

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OActive 2:

The

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Game Changer1

OActive 2

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Based on these allegations, the complaint asserts a claim for infringement of the

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‘D787 Patent that is not at issue in the instant motion. In addition, the complaint asserts

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claims for trade dress infringement, federal unfair competition and false designation, and

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dilution. As discussed above, VQ contests dismissal of the trade dress infringement claim

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but does not oppose dismissal of the unfair competition and dilution claims.

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II.

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The familiar standards apply here. To survive a motion to dismiss under Rule

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12(b)(6), “a complaint must contain sufficient factual matter, accepted as true, to ‘state a

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claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)

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(quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007)). Thus, the Court

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“accept[s] factual allegations in the complaint as true and construe[s] the pleadings in the

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light most favorable to the nonmoving party.” Manzarek v. St. Paul Fire & Marine Ins.

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Co., 519 F.3d 1025, 1031 (9th Cir. 2008). On the other hand, the Court is “not bound to

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accept as true a legal conclusion couched as a factual allegation.” Iqbal, 556 U.S. at 678

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(quoting Twombly, 550 U.S. at 555). Nor is the Court “required to accept as true allegations

Legal Standards

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The photo of the Game Changer did not have a black background in the complaint. The background
appeared when the Court pasted the photo into this opinion.
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that contradict exhibits attached to the Complaint or . . . allegations that are merely

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conclusory, unwarranted deductions of fact, or unreasonable inferences.” Daniels-Hall v.

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Nat’l Educ. Ass’n, 629 F.3d 992, 998 (9th Cir. 2010). “In sum, for a complaint to survive

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a motion to dismiss, the non-conclusory factual content, and reasonable inferences from

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that content, must be plausibly suggestive of a claim entitling the plaintiff to relief.” Moss

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v. U.S. Secret Serv., 572 F.3d 962, 969 (9th Cir. 2009) (quotation marks omitted).

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III.

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“Trade dress refers to the overall appearance of the product design, rather than its

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mechanics or a specific logo.” Glob. Mfg. Grp., LLC v. Gadget Universe.Com, 417 F. Supp.

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2d 1161, 1164 (S.D. Cal. 2006) (citing Wal–Mart Stores, Inc. v. Samara Brothers, Inc.,

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529 U.S. 205, 209–10 (2000)). To state a claim for trade dress infringement under section

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43(a) of the Lanham Act, a plaintiff must allege: “(1) that its claimed trade dress is

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nonfunctional; (2) that its claimed trade dress serves a source-identifying role either

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because it is inherently distinctive or has acquired secondary meaning; and (3) that the

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defendant’s product or service creates a likelihood of consumer confusion.” Clicks

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Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1258 (9th Cir. 2001) (citing Disc Golf

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Ass'n, Inc. v. Champion Discs, Inc., 158 F.3d 1002, 1005 (9th Cir. 1998)).

Discussion

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Here, the complaint alleges that OActive 2’s design is nonfunctional and “distinctive

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in that it has come to be associated with Vision Quest in the minds of consumers.” The

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complaint also alleges that the Game Changer is confusingly similar to OActive 2, and

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includes photographs comparing OActive 2 with the Game Changer. OM takes issue with

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these allegations, but its motion reads more like a motion for summary judgment than a

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motion to dismiss, arguing essentially that VQ cannot prove that the Game Changer

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infringes VQ’s trade dress because OActive 2’s design is functional and has not acquired

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secondary meaning.

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appropriate for summary judgment or a jury. At this stage, although the complaint is

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austere and somewhat conclusory, upon consideration of the allegations along with the

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photographs, the Court is satisfied that it gives OM “fair notice of what the [trade dress

OM may very well be correct, but these arguments are more

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infringement] claim is and the grounds upon which it rests.” Twombly, 550 U.S. at 555

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(internal ellipses and citation omitted); see generally Toyo Tire & Rubber Co. v. CIA Wheel

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Grp., No. SACV150246DOCDFMX, 2016 WL 6138416, at *3 (C.D. Cal. May 6, 2016)

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(“An image of the trade dress and of the allegedly infringing marks greatly assists courts

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in clarifying what design or mark a plaintiff seeks to protect.”); Dynamic Fluid Control

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(PTY) Ltd. v. Int'l Valve Mfg., LLC, 790 F. Supp. 2d 732, 737 (N.D. Ill. 2011) (noting that

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although the allegations in the complaint were “somewhat conclusory,” they were

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“sufficient to put Defendants on notice as to what [the plaintiff believes is protected]” when

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viewed in connection with “attached photographs of products allegedly exhibiting its

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protectable trade dress”). OM will be able to obtain more information about the specifics

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of VQ’s trade dress infringement claim through discovery.

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IV.

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In light of the foregoing, it is hereby ORDERED that OM’s motion to dismiss is

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GRANTED IN PART and DENIED IN PART. The motion is granted with respect to

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claim 3 for unfair competition and false designation of origin and claim 4 for dilution.

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Claims 3 and 4 are therefore DISMISSED WITHOUT PREJUDICE. The motion is

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denied with respect to claim 2 for trade dress infringement.

Conclusion

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It is SO ORDERED.

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Dated: September 20, 2017

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