AJB Enterprises, LLC v. Backjoy Orthotics, LLC
Filing
52
ORDER granting in part and denying in part 39 Motion to Dismiss. Signed by Judge Victor A. Bolden on 9/29/2017. (Williams, C)
UNITED STATES DISTRICT COURT
DISTRICT OF CONNECTICUT
AJB ENTERPRISES, LLC,
Plaintiff,
v.
BACKJOY ORTHOTICS, LLC,
Defendant.
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Case No. 3:16-cv-00758 (VAB)
RULING ON MOTION TO DISMISS
AJB Enterprises, LLC d/b/a Body Back Company (“AJB” or “Plaintiff”), brought this
action against Defendant, BackJoy Orthotics, LLC (“BackJoy” or “Defendant”), alleging federal
and state claims of trade dress infringement, unfair competition, breach of contract and unjust
enrichment. Compl., ECF No. 1. On December 16, 2016, the Court granted BackJoy’s [22]
Motion to Dismiss all claims under Rule 12(b)(6) and allowed AJB to file an Amended
Complaint addressing the deficiencies outlined in the Court’s ruling. Mot. to Dismiss Ruling,
ECF No. 35.
AJB filed an Amended Complaint on January 17, 2017. Am. Compl., ECF No. 36.
BackJoy moved to dismiss AJB’s Amended Complaint on February 7, 2017 under Rule 12(b)(6),
arguing that the Amended Complaint suffers from the same deficiencies as the original
Complaint and seeking dismissal, with prejudice, of all claims. Def. Mot. to Dismiss, ECF No.
39.
For the reasons outlined below, BackJoy’s Motion to Dismiss is GRANTED IN PART
AND DENIED IN PART. BackJoy’s motion is denied as to AJB’s federal claims, and those
claims will be permitted to proceed at this time. BackJoy’s motion is granted, however, as to
AJB’s state law claims. All state law claims are dismissed without prejudice to refiling, provided
that AJB specifies, in accordance with the Court’s previous ruling, which state’s substantive law
applies to its claims.
I.
FACTUAL AND PROCEDURAL BACKGROUND
The factual allegations in this case are clearly laid out in the Court’s previous ruling on
BackJoy’s [22] Motion to Dismiss. See Mot. to Dismiss Ruling, ECF No. 35. The Court assumes
familiarity with AJB’s factual claims for purposes of this opinion.
A. AJB’s Original Complaint and the Court’s Motion to Dismiss Ruling
In its original Complaint, AJB alleged two federal claims: (1) federal unfair competition
based on trade dress infringement; and (2) federal unfair competition based on “multiple
misrepresentations.” Compl., ECF No. 1. The Complaint also alleged numerous state law claims,
including various forms of unfair competition as well as breach of contract and unjust
enrichment claims, without specifying which state’s common law would govern those claims. Id.
In support of its claims, AJB alleged that BackJoy impermissibly copied its S-shaped trigger
point massager (“Body Back massager”), duplicating several design features that constitute
AJB’s claimed trade dress, and sold that device on the market as its own. Id. In the Court’s [35]
Motion to Dismiss ruling, the Court dismissed all federal claims asserted in AJB’s original
Complaint, without prejudice, for failure to state a claim under Rule 12(b)(6). Mot. to Dismiss
Ruling, ECF No. 35.
As to AJB’s first federal claim of trade dress infringement, the Court noted in its ruling
that the Complaint lacked the requisite specificity regarding the alleged distinctiveness of the
claimed trade dress. Id. at 6-7. The Court also found that AJB failed to allege specifically two of
the three elements required for a viable trade dress infringement claim: (1) that the claimed trade
dress was not “functional,” and (2) that the claimed trade dress has acquired a secondary
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meaning. Id. at 7-11. As to AJB’s second federal claim of unfair competition, the Court found
that, without a protectable trade dress in connection with the product at issue, AJB could not
state a plausible unfair competition claim. Id.
The Court dismissed both federal claims accordingly. Id. The Court also declined to
exercise supplemental jurisdiction over AJB’s state law claims, having dismissed all federal
claims. Id. The Court’s ruling was without prejudice to filing an Amended Complaint within 30
days. Id. In connection with AJB’s state law claims, the Court specifically ordered that, “[s]hould
AJB choose to file an Amended Complaint in this matter, it is also instructed to include specific
allegations regarding the applicable state substantive law in connection with its state common
law claims.” Id.
B. AJB’s Amended Complaint
AJB filed an Amended Complaint on January 17, 2017, within the time period specified
the Court in its motion to dismiss ruling. Am. Compl., ECF No. 36. In its Amended Complaint,
AJB brings the same federal and state law claims that it attempted to assert in the original
Complaint and sets forth the same general allegations against BackJoy. Id. at ¶¶ 91-100. In light
of the deficiencies described in the Court’s ruling, however, AJB supplemented its Amended
Complaint with additional detail. Id.
While a significant portion of this additional detail does not relate directly to the reasons
given by the Court for dismissal, the Amended Complaint does add some substance in three key
areas with respect to AJB’s federal claims. First, the Amended Complaint adds specific
allegations regarding how the claimed trade dress is distinctive. In its Amended Complaint, AJB
focuses the description of its claimed trade dress, emphasizing the appearance of the device:
“which, by virtue of its S-shaped frame, in combination with an arm supporting a massage nub,
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is distinctive from other cane massage tool products on the market....” Id. at ¶ 2; see also id. at ¶
14 (defining “Trade Dress” as “[t]he appearance of the Body Back Original, more particularly,
its shape defining a frame supporting massage nubs, including an S-shaped frame portion and at
least one substantially straight frame arm”). AJB also submits numerous images of other cane
massagers available on the market, see id. at ¶ 17, alleging that its Body Back massager is visibly
distinct from all these other products, thus confirming the distinctiveness of its trade dress.
Second, citing these images and allegations regarding other products, the Amended
Complaint specifically alleges that its claimed trade dress – namely, the product’s shape and the
specific positioning of its massage nubs – is non-functional. Id. The Amended Complaint
describes several other cane massagers available on the market and specifically confirms that the
described “alternative configurations of other tools on the market perform the same function as
the Body Back Original.” Id. at 8.
Finally, the Amended Complaint specifically asserts that “Plaintiff and its predecessor
have incurred great expense and have devoted substantial resources to make the Body Back
Original extremely well known and readily recognizable to customers.” Id. at ¶ 31. In support of
this allegation, AJB includes various details regarding its alleged marketing and advertising
efforts. See id. at ¶¶ 32-33 (“Body Back spent approximately $500,000 in advertising the Body
Back Buddy trigger point massage tool on Amazon, Google and Facebook... Body Back and its
Predecessor have also advertised the Body Back Buddy on Pinterest, Instagram and Twitter.”);
id. at ¶ 34 (“There are very many popular videos featuring the Body Back Original ... available
on You Tube and the Body Back website, all of which have acted to build the goodwill of the
business of Plaintiff in the Body Back Buddy and increase the recognizability and iconic nature
of the Body Back Original and its Trade Dress.”); id. at ¶ 45 (“Facebook cofounder Dustin
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Moscovitz... provided an unsolicited, unpaid and enthusiastic testimonial for ‘the strangely
shaped massage device he swears by....’”).
With respect to AJB’s state law claims, the Amended Complaint does not specify a
particular state substantive law under which the claims are brought. Instead, AJB includes
reference to three different states – Connecticut, Oregon and Colorado – asserting that AJB
would be entitled to recovery under the laws of any of those three states. Id. at ¶¶ 101-118.
II.
STANDARD OF REVIEW
When considering a motion to dismiss under Fed R. Civ. P. 12(b)(6), the Court must
accept as true all factual allegations in the complaint and draw all possible inferences from those
allegations in favor of the plaintiff. See York v. Ass’n of the Bar of the City of New York, 286
F.3d 122, 125 (2d Cir.), cert. denied, 537 U.S. 1089 (2002). The proper consideration is not
whether the plaintiff ultimately will prevail, but whether the plaintiff has stated a claim upon
which relief may be granted such that it should be entitled to offer evidence to support its claim.
See id. (citation omitted).
This requirement that the Court accept as true the allegations in a complaint “is
inapplicable to legal conclusions.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). Although
“detailed factual allegations” are not required, a complaint must offer more than “labels and
conclusions,” or “a formulaic recitation of the elements of a cause of action” or “naked
assertion[s]” devoid of “further factual enhancement” in order to survive dismissal. Bell Atl.
Corp. v. Twombly, 550 U.S. 544, 555, 557 (2007).
III.
DISCUSSION
For the second time, BackJoy seeks dismissal of all AJB’s claims. Def. Mot. to Dismiss,
ECF No. 39. BackJoy specifically argues that AJB’s federal claims should be dismissed because:
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(1) the Amended Complaint fails to adequately remedy the deficiencies in AJB’s original
description of the claimed trade dress; (2) the Amended Complaint fails to adequately plead nonfunctionality; and (3) the Amended Complaint fails to adequately plead that the claimed trade
dress has acquired a secondary meaning. See Def. Mem. in Supp. at 3, ECF No. 39-1. With
respect to AJB’s state law claims, BackJoy argues that all state law claims are appropriately
dismissed based on AJB’s failure to identify the particular state law applicable to those claims.
Id. at 18. Alternatively, BackJoy argues that the Court should decline supplemental jurisdiction
over the state law claims after dismissing all federal claims. Id.
For the reasons outlined below, the Court disagrees with BackJoy with respect to AJB’s
federal claims, but agrees with respect to AJB’s state law claims.
A. Count One: Federal Trade Dress Infringement
As noted in the Court’s [35] Ruling on BackJoy’s original motion to dismiss, three main
elements are needed in order to state a claim for federal trade dress infringement under the
Lanham Act: a plaintiff must allege that “(1) the claimed trade dress is non-functional; (2) the
claimed trade dress has secondary meaning; and (3) there is a likelihood of confusion” between
the products. Sherwood 48 Assocs. v. Sony Corp. of Am., 76 F.Appx. 389, 391 (2d Cir. 2003).
Additionally, a plaintiff must “offer a ‘precise expression of the character and scope of the
claimed trade dress.’” Id. (quoting Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d
373, 381 (2d Cir. 1997)).
The Court’s ruling specified three key problems with the Complaint’s allegations in
connection with AJB’s federal trade dress infringement claim: the description provided “fail[ed]
to describe the trade dress with the level of detail required to survive a motion to dismiss”; AJB
“failed to specifically plead that its claimed trade dress is non-functional”; and the Complaint
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failed to show secondary meaning by failing to “include any factual allegations that would
connect the claimed dress to Body Back as the source of the trade dress, rather than simply
connecting the trade dress to this particular genre of cane massager....” Mot. to Dismiss Ruling at
7, 9, 11, ECF No. 35. The Court finds that AJB’s Amended Complaint, under the generous
standard of review applicable at the pleading stage, includes sufficient factual allegations to
survive dismissal on these three grounds.
1. Description of Distinctive Trade Dress
BackJoy argues that the Amended Complaint fails to adequately describe the claimed
trade dress because it includes only “vague, conclusory, and general descriptions that denote
ideas, concepts and generalized types of appearance.” Def. Mem. in Supp. at 8, ECF No. 39-1.
The Court disagrees.
When determining that AJB’s original description of the claimed trade dress lacked the
requisite specificity to survive dismissal, the Court explained that, while the Complaint
“specified six distinct features that make up the trade dress of the Trigger Point Massager,” it did
not “provide additional details regarding how those features are distinctive.” Id. at 6; see also
Carson Optical, Inc. v. Prym Consumer USA, Inc., 11 F. Supp. 3d 317, 347 (E.D.N.Y. 2014)
(noting that, in order to survive dismissal of a trade dress infringement claim, “the plaintiff must
provide a description of which of plaintiff's trade dress design elements are distinctive and how
they are distinctive”) (internal quotations and marks omitted); Nat'l Lighting Co. v. Bridge Metal
Indus., LLC, 601 F. Supp. 2d 556, 562 (S.D.N.Y. 2009) (noting that a trade dress infringement
claim lacks the requisite specificity when it contains a “laundry list of the elements that
constitute [the type of product]’s design rather than a description of which of plaintiff's trade
dress design elements are distinctive and how they are distinctive”). According to the Court’s
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ruling, therefore, the key deficiency of the original pleadings was AJB’s failure to include
allegations regarding the distinctiveness of its claimed trade dress, rather than the specificity with
which it described the particular features of the claimed trade dress. See Mot. to Dismiss Ruling
at 7 (noting that the “description provided in the Complaint” was “specific in its description of
the features that constitute the claimed trade dress”).
In its earlier ruling, the Court recognized AJB’s arguments that cane massagers took on
other shapes and designs in the market as potentially indicating the distinctiveness of the claimed
trade dress. Id. at 6. The Court noted, however, that AJB mentioned these arguments “for the
first time in its memorandum in opposition to BackJoy’s motion to dismiss” rather than including
them as factual allegations in the Complaint. Accordingly, the Court was unable to consider
those allegations at the time of its ruling. Id. (citing Kermanshah v. Kermanshah, 580 F. Supp.
2d 247, 258 (S.D.N.Y. 2008) (requiring courts to “limit [their] analysis to the four corners of the
complaint” when considering motions to dismiss)).
Unlike the original Complaint, the Amended Complaint incorporates detailed allegations
regarding the variety of configurations of cane massagers that are available on the market. Am.
Compl. ¶ 17 (listing photographs of cane massagers in various shapes that are distinct from the
S-shape that constitutes most of AJB’s claimed trade dress, including the “Q Flex,” the
“MyoTool,” the “Thera Cane,” the “PT Fit,” and the “Nayoya Back Hook Massager”). These
additional factual allegations sufficiently address the distinctiveness of the claimed trade dress at
this stage. Thus, dismissal is no longer warranted on this basis.
2. Non-Functionality
BackJoy also argues that dismissal of AJB’s federal trade dress infringement claim is
appropriate because AJB does not allege “non-functionality” as required by the Second Circuit in
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unregistered trade dress infringement claims. See Mem. in Supp. at 10; Yurman Design, Inc. v.
PAJ, Inc., 262 F.3d 101, 116 (2d Cir. 2001) (“A final doctrinal hurdle is the congressionallyimposed requirement that a plaintiff prove that an unregistered trade dress is ‘not functional’”).
The Court disagrees.
According to BackJoy, despite AJB’s assertions to the contrary, the images included in
the Amended Complaint suggest that the shape and placement of massage nubs on the Body
Back massager are functional. Def. Mem. in Supp. at 12. BackJoy argues that those design
elements are sufficiently similar to the other available cane massagers to suggest that they are
“dictated by function, namely performing trigger point massage in and around the shoulder
blade.” Id.
BackJoy, however, is seeking dismissal at the pleadings stage under Rule 12(b)(6), not at
the summary judgment stage under Rule 56. At the 12(b)(6) stage, this Court is required to
“construe the complaint in the light most favorable to the plaintiff, accepting the complaint’s
allegations as true.” York, 286 F.3d at 125. While “[t]hreadbare recitals of the elements of a
cause of action, supported by mere conclusory statements, do not suffice[,]” see Iqbal, 556 U.S.
at 678, “[t]he proper consideration is not whether the plaintiff ultimately will prevail, but
whether the plaintiff has stated a claim upon which relief may be granted such that it should be
entitled to offer evidence to support its claim.” York, 286 F.3d at 125.
The Amended Complaint unequivocally states that the claimed trade dress “is not
essential to the use or purpose of a cane massage tool, as illustrated by the numerous products in
various configurations which perform the identical self-massage functions as the Body Back
Buddy.” Am. Compl. at ¶ 18. Drawing all inferences in favor of AJB, as is required at this stage,
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the Amended Complaint sufficiently alleges functionality for 12(b)(6) purposes, and dismissal is
not warranted on this ground.
3. Secondary Meaning
Finally, BackJoy argues that the allegations in the Amended Complaint “fail to support a
plausible inference of secondary meaning[,]” justifying the dismissal of AJB’s federal trade dress
infringement claim. Def. Mem. in Supp. at 15, ECF No. 39-1. The Court disagrees.
BackJoy cites to the six-factor test outlined in Carson Optical, 11 F. Supp. 3d at 343,
which invites courts to consider “the following factors: ‘(1) advertising expenditures, (2)
consumer studies linking the mark to a source, (3) unsolicited media coverage of the product, (4)
sales success, (5) attempts to plagiarize the mark, and (6) the length and exclusivity of the mark’s
use.’” Id. (quoting Cartier, Inc. v. Sardell Jewelry, Inc., 294 F. App'x 615, 618 (2d Cir. 2008)).
The Amended Complaint, unlike the original Complaint, includes specific factual allegations as
to most of the factors identified in Carson Optical. See Am. Compl. at ¶¶ 32-45. In connection
with each of those factors, AJB repeatedly alleges that its marketing efforts and market
recognition have served to “increase the recognizability and iconic nature of the Body Back
Original and its Trade Dress.” Id. at ¶ 34.
AJB need only plausibly allege that the Body Back massager’s S-shaped configuration
and the placement of its massage nubs have acquired a secondary meaning in order to plead this
particular element of a trade dress infringement claim at the motion to dismiss stage. The Court
finds that the Amended Complaint contains sufficient allegations regarding this element to
survive dismissal at this stage. Accordingly, BackJoy’s motion to dismiss is denied on this
ground.
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Having remedied the deficiencies identified in the Court’s motion to dismiss ruling as to
the trade dress infringement, AJB’s federal trade dress infringement claim will be allowed to
proceed at this time.1
B. Count Two: Federal Unfair Competition
In order to state an unfair competition claim under the Lanham Act, the moving party
must “demonstrate ‘(1) that it has a valid trademark entitled to protection under the Act, and (2)
defendant's actions are likely to cause confusion.’” Estate of Ellington ex rel. Ellington v.
Harbrew Imports, Ltd., 812 F. Supp. 2d 186, 192 (E.D.N.Y. 2011) (citing Phillip Morris USA
Inc. v. Marlboro Express, No. 03-CV-1161, 2006 WL 2076921, at *4 (E.D.N.Y. Aug. 26,
2005)). According to BackJoy, the Amended Complaint has failed to adequately plead a
protectable trade dress in connection with its Body Back massager product, and AJB cannot
otherwise plausibly claim trademark protection through the product’s relatively generic name
(“Trigger Point Massager”); thus, AJB’s unfair competition claim must be dismissed under Rule
12(b)(6). Def. Mem. in Supp. at 16-17, ECF No. 39-1.
As explained above, however, AJB has stated a plausible claim for trade dress
infringement, thus satisfying the first element of an unfair competition claim. See Estate of
Ellington, 812 F. Supp. 2d at 192. Furthermore, the Court recognized in its prior ruling that
AJB’s allegations have sufficiently established confusion for purposes of the second element this
claim. See Mot. To Dismiss Ruling at 12-15, ECF No. 35. Thus, dismissal is not warranted on
this basis, and AJB’s federal unfair competition claim is permitted to proceed at this time.
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The Court reiterates the concerns expressed in its prior ruling regarding the lack of Second Circuit case law
analyzing trade dress infringement claims at the motion to dismiss stage. Mot. to Dismiss Ruling at 5-6. In light of
the absence of binding authority requiring dismissal based on the arguments advanced by BackJoy, the Court finds
that AJB’s allegations are at least minimally adequate at this early stage of the litigation.
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C. Counts Three through Six: State Law Claims
Finally, BackJoy seeks dismissal of all remaining state law claims, noting that AJB has
failed to comply with Court’s clear instruction to “include specific allegations regarding the
applicable state substantive law in connection with its state common law claims.” See id. at 17.
AJB contends that it appropriately cited the “laws of Connecticut, Oregon and Colorado” in
connection with its state law claims based on “Plaintiff’s presence in Connecticut... Defendant’s
presence and operations in Colorado... and Plaintiff’s predecessor’s business in Ashland,
Oregon....” Pl. Mem. in Opp. at 4, ECF No. 42.
The Court was clear in its instructions to AJB, which required AJB to specify the
“applicable state substantive law in connection with its state common law claims.” Mot. To
Dismiss Ruling at 17, ECF No. 35. AJB did not follow those instructions in its Amended
Complaint, instead referencing the potential applicability of the laws of three different states.
Am. Compl. at ¶¶ 101-118.
Under Rule 8 of the Federal Rules of Civil Procedure, a party’s pleadings must “give[]
the defendant fair notice of what the plaintiff’s claim is and the grounds upon which it rests” in
order to “facilitate a proper decision on the merits.” Green v. Greene, No. 9:07 CV 0351 (GTS) /
(DEP), 2010 WL 455456, at *2 (N.D.N.Y. Feb. 2, 2010) (quoting Jackson v. Onondaga Cty.,
549 F. Supp. 2d 204, 212 n. 17-18 (N.D.N.Y. 2008). Not only does AJB’s Amended Complaint
fail to comply with the Court’s orders; by claiming relief under three distinct standards from the
common law of three alternative states, AJB fails to provide BackJoy with fair notice of the
claims against which it must defend, thus violating the requirements of Rule 8.
Accordingly, BackJoy’s motion to dismiss is granted with respect to AJB’s state law
claims. This dismissal is without prejudice to re-filing a Second Amended Complaint detailing
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which state common law governs. If AJB fails to comply with this requirement, the Court will
dismiss all state law claims with prejudice.
IV.
CONCLUSION
BackJoy’s [39] Motion to Dismiss is GRANTED IN PART AND DENIED IN PART.
BackJoy’s motion is denied as to AJB’s federal claims, and those claims will be permitted to
proceed at this time. BackJoy’s motion is granted without prejudice as AJB’s state law claims.
AJB may file a Second Amended Complaint within 30 days specifying, in accordance with the
Court’s previous ruling, which state substantive law applies to its state law claims. If AJB’s
subsequent filing does not comply with the Court’s instructions, all state law claims will be
dismissed with prejudice.
SO ORDERED this 29th day of September, 2017 at Bridgeport, Connecticut.
/s/ Victor A. Bolden
VICTOR A. BOLDEN
UNITED STATES DISTRICT JUDGE
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