iMerchandise LLC v. TSDC, LLC

Filing 35

ORDER granting 16 Motion to Dismiss; denying 29 Motion for Plaintiff's Renewed Request For Leave To Amend Complaint Order. See attached Ruling and Order for details. Signed by Judge Robert N. Chatigny on 3/31/2021. (Taylor, L.)

UNITED STATES DISTRICT COURT
DISTRICT OF CONNECTICUT
iMERCHANDISE LLC,
Plaintiff,
v.
TSDC, LLC,
Defendant.

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CASE NO. 3:20-cv-248(RNC)

RULING AND ORDER
iMerchandise, LLC (“iMerchandise”) is an online retailer
that has used the Amazon.com marketplace to sell its products.
It brings this diversity action against TSDC, LLC (“TSDC”), for
injunctive relief and damages claiming that TSDC’s submission of
a complaint of trademark infringement to Amazon led to Amazon’s
deactivation of plaintiff’s account.

Plaintiff alleges that it

tried unsuccessfully to get TSDC to retract the complaint so its
storefront on Amazon could be restored but TSDC failed to
respond.

Plaintiff claims that TSDC’s conduct makes it liable

for tortious interference with business expectancies, tortious
interference with contractual relations, and violations of the
Connecticut Unfair Trade Practices Act (“CUTPA”).

Pending are

defendant’s motion to dismiss the action in its entirety and
plaintiff’s motion to amend the complaint.

For reasons set

forth below, the motion to dismiss is granted and the motion to
amend is denied.

I.

Background

The following summary of facts is drawn from the
allegations in the proposed amended complaint (“PAC”), except as
otherwise noted.

The allegations of the PAC are accepted as

true, and liberally construed, unless there is a conflict
between an allegation in the PAC and a document submitted by
plaintiff, in which case, I rely on the document.

See Broder v.

Cablevision Systems Corp., 418 F.3d 187, 196 (2d Cir. 2005). 1
Plaintiff sells merchandise online, including but not
limited to t-shirts.

For some period of time, plaintiff made

use of Amazon’s platform to sell merchandise.

Under plaintiff’s

service agreement with Amazon, revenues from sales of
plaintiff’s merchandise over Amazon’s platform were split
between the two companies.

The service agreement required

The PAC alleges that plaintiff made numerous unsuccessful
attempts to contact defendant in order to try to get the
complaint withdrawn. In the course of these attempts, which
began November 23, 2019, plaintiff notified defendant that it
had immediately removed the allegedly infringing items from its
Amazon storefront, it had made no sales of the allegedly
infringing item, Amazon had shut down plaintiff’s storefront
over the alleged infringement, and plaintiff was suffering
significant harm as a result of the shutdown. Plaintiff also
invited defendant to document any losses it claimed to have
incurred. In short, plaintiff alleges, it tried repeatedly to
“resolve the problem and to work out a procedure to adequately
address the Parties’ respective interests and concerns and, to
date, the Defendant has wholly failed to cooperate in this good
faith effort.”
1

plaintiff to refrain from selling products that infringed a
valid trademark.
Defendant is an LLC that operates in partnership with the
Fight Like a Girl Foundation, a charitable foundation that
focuses on women experiencing medical hardship.

Declaration of

Sandy Ellis, Def. Mem., ECF No. 16-2, at ¶ 1-2.

Defendant holds

the “Fight Like a Girl” trademark, id., and it uses the
trademark on its merchandise.

Id. at ¶ 3-4.

On November 23, 2019, defendant filed a complaint with
Amazon alleging that plaintiff was selling a product that
infringed defendant’s trademark: a shirt design with the phrase
“Fight Like a Girl” over the word “Vote,” with the “o” in vote
replaced by the symbol ♀.

Immediately upon receiving the

complaint, Amazon issued a notice to plaintiff stating that it
had received a report of trademark infringement from defendant.
The notice stated, “We removed the content listed at the end of
the email.

We may let you list this content again if we receive

a retraction from the rights owner.”

Plf. Mem., ECF No. 18, Ex.

2.
Plaintiff immediately attempted to contact defendant to
negotiate a retraction.

This was the first in a series of

communications sent by plaintiff to defendant in an effort to
avoid difficulties with its Amazon account.

Plaintiff wanted to

“resolve the problem and to work out a procedure to adequately

address the Parties’ respective interests and concerns.”

In its

communications to defendant, plaintiff stated that the allegedly
infringing item had been removed from Amazon.com before any
sales of the item had taken place.

Plaintiff also invited

defendant to document any losses it may have incurred.
Defendant never responded to plaintiff’s communications.
On January 20, 2020, Amazon sent plaintiff an email
stating:
Your account has been temporarily deactivated.
listings have been removed. . . .

Your

Why is this happening? We have not received a valid
plan of action addressing the listings below. . . .
To reactivate your account, please send us the
following information:
Proof of non-infringement (e.g. invoice, Order ID,
letter of authorization, licensing agreement or court
order) for all affected listings.
The steps you have taken to ensure that you are no
longer infringing and will not infringe in the future.
Other relevant information.
Supporting details should you believe the notice was
submitted in error or the notices are incorrect.
Plf. Mem., ECF No. 12, Ex. D.
Plaintiff continued to try to get defendant’s
cooperation without success.

As a result, plaintiff’s

Amazon storefront remains shut down. 2
In giving plaintiff the benefit of all possible inferences, I
assume for present purposes that retraction of defendant’s
complaint to Amazon would result in reinstatement of plaintiff’s
storefront on Amazon’s platform. I also assume that defendant
2

II.

Legal Standard

“The function of a motion to dismiss under Rule 12(b)(6) is
to determine whether the plaintiff has stated a legally
cognizable claim that, if proven, would entitle her to relief.”
Abuhamdan v. Blyth, Inc., 9 F. Supp. 3d 175, 187 (D. Conn.
2014).

Accordingly, to survive a motion to dismiss, “a

complaint must contain sufficient factual matter, accepted as
true, to ‘state a claim to relief that is plausible on its
face.’”

Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting

Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)).

A claim

satisfies the plausibility standard if it is supported by
“factual content that allows the court to draw the reasonable
inference that the defendant is liable for the misconduct
alleged.”

Id.;

see Dominguez v. Taco Bell Corp., -- F. Supp.

3d --, 2020 WL 3263258, at *2 (S.D.N.Y. 2020) (“It is not enough
for a plaintiff to allege facts that are consistent with
liability; the complaint must ‘nudge[]’ claims ‘across the line
from conceivable to plausible.’”) (quoting Twombly, 550 U.S.
544, 570 (2007)).

“Determining whether a complaint states a

plausible claim for relief [is] a context-specific task that
requires the reviewing court to draw on its judicial experience
and common sense.”

Iqbal, 556 U.S. at 679.

could retract the complaint without detriment to its interests
in the trademark.

III.
A.

Discussion

Tortious Interference
The first two counts of the PAC allege tortious

interference with business expectancies and contractual
relations.
similar.”
2014).

In Connecticut, these two torts are “substantially
Kopperl v. Bain, 23 F. Supp. 3d 97, 109 (D. Conn.

“A claim for intentional interference with contractual

relations requires the plaintiff to establish: (1) the existence
of a contractual or beneficial relationship; (2) the defendant’s
knowledge of that relationship; (3) the defendant’s intent to
interfere with the relationship; (4) that the interference was
tortious; and (5) a loss suffered by the plaintiff that was
cause[d] by the defendant’s tortious conduct.”
283 Conn. 338, 351, 927 A.2d 304 (2007).

Rioux v. Barry,

The elements of a

claim for tortious interference with business expectancies are
“(1) a business relationship between the plaintiff and another
party; (2) the defendant’s intentional interference with the
business relationship while knowing of the relationship; and (3)
as a result of the interference, the plaintiff suffers actual
loss.”

Brown v. Otake, 164 Conn. App. 686, 710-11, 138 A.3d 951

(2016).
The facts alleged in the PAC plausibly establish the
existence of a contractual or business relationship between
plaintiff and Amazon and the defendant’s knowledge of the

relationship.

However, the PAC fails to allege facts supporting

a plausible conclusion that the defendant’s conduct was
tortious.
“[N]ot every act that disturbs a contract or business
expectancy is actionable.”

Robert S. Weiss & Assocs., Inc. v.

Wiederlight, 208 Conn. 525, 535-36, 546 A.2d 216 (1988).
Rather, to be considered tortious, interference must be
“wrongful by some measure beyond the fact of interference
itself.”

Id.

This element of the tort may be satisfied by

proof “that the defendant was guilty of fraud,
misrepresentation, intimidation or molestation; or that the
defendant acted maliciously.”

Sportsmen’s Boating Corp. v.

Hensley, 192 Conn. 747, 753-54, 474 A.2d 780 (1984) (citations
omitted).

“Malice” in this formulation is used “not in the

sense of ill will,” but rather to signify that the interference
was “without justification.”

Daley v. Aetna Life & Casualty

Co., 249 Conn. 766, 806, 734 A.2d 112 (1999).

Courts

interpreting similar requirements in other jurisdictions have
held that interference is actionable only when done solely to
injure the plaintiff.

See, e.g., RFP LLC v. SCVNGR, Inc., 788

F. Supp. 2d 191, 196-98 (S.D.N.Y. 2011).
The PAC alleges that the defendant “is guilty of fraud,
misrepresentation, intimidation or molestation and/or acted
maliciously, with improper motive or improper means.”

PAC ¶ 43.

But these “legal conclusion[s], couched in the form of an
allegation of fact,” may be “disregard[ed].”

Kopperl, 23 F.

Supp. 3d at 114; see also Ashcroft v. Iqbal, 556 U.S. 662, 67879 (2009) (“[T]he tenet that a court must accept as true all of
the allegations contained in a complaint is inapplicable to
legal conclusions.

Threadbare recitals of the elements of a

cause of action, supported by mere conclusory statements, do not
suffice.”).

What matters are the factual allegations.

The PAC relies on the following allegations:
(a)
(b)

(c)

(d)

(e)

(f)

Defendant knew or should have known that Amazon
allowed for retractions of complaints without
admitting the complaint was in error, PAC ¶ 26;
Defendant habitually or typically preceded
legal/administrative/institutional action with prior
notice to the alleged infringer, such as a cease and
desist letter, ¶ 27;
Defendant knew or should have known from a past
incident with plaintiff that plaintiff would be
forthcoming in efforts to resolve the alleged
infringement, ¶ 28-32;
Defendant has failed to bring any judicial action for
trademark infringement, “which demonstrates the nonexistence or frailty of any mark infringement claim,”
¶ 34;
Defendant ran up the infringement score against
plaintiff by alleging 18 violations for a single
design, by counting each t-shirt size/color as a
separate violation, ¶35-36;
Plaintiff made timely efforts to resolve the dispute
and defendant failed to deal with plaintiff in good
faith, ¶ 38.

These allegations, accepted as true, do not support a
plausible inference of fraud, misrepresentation, intimidation,
molestation, or malice, for reasons discussed below.

1.

Defendant’s Failure to Contact Plaintiff Prior to

Submitting Its Complaint To Amazon
Plaintiff contends that a plausible inference of fraud or
malice may be drawn from defendant’s conduct in submitting a
complaint to Amazon without first contacting plaintiff.
However, defendant had an interest in protecting its trademark,
which would be served by promptly submitting the complaint.

See

Godinger Silver Art Ltd. v. Hirschkorn, 433 F. Supp. 3d 417, 427
(E.D.N.Y. 2019) (plaintiff failed to plead tortious interference
under New York law because there was no plausible allegation
that defendant submitted take down notices to Amazon for any
reason other than a desire to protect his patents); RFP, 788 F.
Supp. 2d at 196 (defendant’s actions in protecting trademark
were self-interested and thus not done for sole purpose of
harming plaintiff as required to support claim under New York
law); Am. Diamond Exchange, Inc. v. Alpert, 101 Conn. App. 83,
93, 920 A.2d 357 (2007) (noting that no tortious interference
will be found when “the defendant’s actions can be justified by
obviously proper motives”).
Plaintiff contends that a plausible inference of fraud or
malice is available to it here, notwithstanding defendant’s
obvious interest in protecting its trademark, because
defendant’s conduct in submitting a complaint to Amazon without
first contacting plaintiff was a departure from defendant’s

prior practice of contacting infringers before taking other
action.

No authority has been cited or found suggesting that

engaging in otherwise lawful conduct to protect a trademark
(such as submitting an infringement complaint to Amazon) may
give rise to liability in tort if the trademark holder engaged
in less aggressive conduct in response to previous instances of
alleged infringement.

Moreover, plaintiff does not allege that

submission of a trademark infringement complaint to Amazon
without giving prior notice to an infringer violates business
norms.

Accordingly, I conclude that defendant’s conduct in

submitting the complaint without first contacting plaintiff
cannot be considered tortious.

See Homes of Westport, LLC v.

Wilton Bank, No. CV060403842S, 2007 WL 3010796, at *5 (Conn.
Super. Ct. Oct. 2, 2007) (rejecting tortious interference claim
when defendant’s behavior was “within banking norms”). 3
2.

Defendant’s Failure to Initiate Legal Action to

Enforce Its Trademark
Plaintiff contends that a plausible inference of fraud or
malice may also be drawn from defendant’s failure to sue

Plaintiff refers to the duty of good faith and fair dealing
under Connecticut law but plaintiff and defendant were not
parties to a contract with one another so no such duty existed.
Deutsche Bank Nat’l Tr. Co. v. Becroft, No. NHSP-105846, 2014 WL
7641283, at *2 (Conn. Super. Ct. Dec. 30, 2014) (“The duty of
good faith and fair dealing does not exist in the air – it is a
term implied in a contract . . . .”).
3

plaintiff for trademark infringement.

Defendant’s failure to

bring suit, plaintiff argues, reflects its awareness of the
“non-existence or frailty” of any infringement claim.

On this

basis, plaintiff would have me conclude that defendant knew its
complaints to Amazon were groundless.
The inference plaintiff asks me to draw from defendant’s
failure to sue is implausible.

The PAC and underlying documents

establish that (a) plaintiff made no sales of the allegedly
infringing product, and (b) defendant’s complaint to Amazon
resulted in removal of the allegedly infringing product from
Amazon’s marketplace.

In these circumstances, it is hardly

surprising that defendant has thus far refrained from incurring
the considerable expense of suing plaintiff for infringement. 4
3.

Defendant’s Complaint to Amazon

Plaintiff alleges that defendant is liable for tortious
interference because it complained to Amazon in a manner that
“ran up the infringement score against plaintiff” in that
The Lanham Act contains no statute of limitations, so actions
for trademark infringement are subject only to the equitable
defense of laches under state law. Excelled Sheepskin & Leather
Coat Corp. v. Ore. Brewing Co., 897 F.3d 413, 419 (2d Cir.
2018). In Connecticut, the most closely analogous statute of
limitations is three years. Gibson v. Metropolis of CT LLC, No.
19-cv-00544, 2020 WL 956981, at *4 (D. Conn. Feb. 27, 2020).
Because defendant is under no time pressure to decide whether or
not to sue plaintiff for infringement, I cannot infer that its
failure to initiate a suit before now reflects an awareness of
the “non-existence or frailty” of any infringement claim.
4

defendant alleged 18 violations by counting each t-shirt size
and color plaintiff undertook to sell as a separate violation.
Defendant responds that it treated each permutation of shirt
size and color as a separate violation because that is the way
Amazon’s report system operates.

Judicially noticeable

information confirms defendant’s explanation.

FAQs, Merch by

Amazon (accessed July 24, 2020),
https://merch.amazon.com/resource/201846470 (“Each
size/color/fit combination is a separate product in Amazon’s
system . . . .”). 5

Because the manner in which defendant

complained to Amazon conformed to Amazon’s system, defendant’s
conduct does not support a plausible inference of fraud or
malice.

See Stancuna v. Schaffer, No. CV085018031S, 2008 WL

5511271, at *2 (Super. Ct. Conn. Dec. 15, 2008) (dismissing
tortious interference claim because allegations did not support
inference that defendant acted maliciously or was guilty of
fraud).
4.

Defendant’s Failure to Cooperate

See Threshold Ents. Ltd. v. Pressed Juicery, Inc., -- F. Supp.
3d --, 2020 WL 1694361, at *3 (N.D. Cal. 2020) (“In general,
websites and their contents may be judicially noticed.”); id.
(taking judicial notice of third-party websites and social media
posts in a trademark infringement action); Hendrickson v. eBay,
Inc., 165 F. Supp. 2d 1082, 1084 n.2 (C.D. Cal. 2001) (taking
judicial notice of information on eBay’s website and of the
nature of eBay’s business operations).
5

Finally, plaintiff alleges that a plausible inference of
malice can be drawn from defendant’s failure to respond to
plaintiff’s repeated attempts to reach out to defendant to
negotiate a mutually satisfactory resolution.

I agree with

plaintiff that the law should provide incentives to people to
cooperate in resolving business disputes.

However, “to

substantiate a claim of tortious interference with a business
expectancy, there must be evidence that the interference
resulted from the defendant’s commission of a tort.”

Benchmark

Muni. Tax Servs., Ltd. v. Greenwood Manor, LLC, 194 Conn. App.
432, 440, 221 A.3d 501 (2019).

“In an ostensibly practical and

sensible world, it could not be otherwise.

Our relations and

expectancies in life are constantly interfered with by others.
That is an inevitable consequence of living in a competitive
world, among people whose ambitions, hopes or purposes may match
or conflict with our own.”

Kopperl, 23 F. Supp. 3d at 110.

As

a consequence, “[w]here a tortious interference claim stems from
the defendant’s passive conduct, ‘common sense dictates that a
court should inquire whether the defendant was under any
obligation to do what it refrained from doing.’”

PMG Land

Assocs., L.P. v. Harbour Landing Condo. Ass’n, Inc., 172 Conn.
App. 688, 694, 161 A.3d 596 (2017) (quoting Downes-Patterson
Corp. v. First Nat’l Supermarkets, Inc., 64 Conn. App. 417, 427,
780 A.2d 967 (2001)).

The facts of Downes-Patterson are closely analogous.

The

plaintiff in that case, an owner of real property, sought to
lease its property to a supermarket.

But the defendant property

owner held a restrictive covenant barring the plaintiff from
using its property to operate a supermarket.

The plaintiff made

repeated attempts to convince the defendant to release the
covenant.

After a jury found in plaintiff’s favor on its CUTPA

and tortious interference claims, the trial court set aside the
verdicts.

The Appellate Court affirmed the trial court’s

decision.

The Appellate Court concluded that “the plaintiffs

showed only that the defendant declined to release a property
right that it was under no obligation to release.

No evidence

was put forth that tended to show that the defendant was acting
maliciously.”
A.2d 967.

Downes-Patterson, 64 Conn. App. at 431-32, 780

“[T]he plaintiffs' bare assertion that there was no

reason for the defendant to refuse to sign the form” was
insufficient to support the jury’s verdicts.
A.2d 967.

Id. at 432, 780

Similar claims have failed because the defendant had

no legal duty to act in accordance with the plaintiff’s wishes.
See, e.g., Gerrish v. Hammick, No. CV166070583S, 2018 WL
3060082, at *4 (Super. Ct. Conn. May 31, 2018) (rejecting
tortious interference claim because “there [was] insufficient
evidence to show [defendant] had a statutory or contractual
obligation” to accede to plaintiff’s wishes).

In this case, plaintiff’s allegations similarly fail to
establish that defendant had a legal duty to retract its
complaint to Amazon or engage in negotiations with plaintiff
at plaintiff’s behest.

Plaintiff contends that defendant had a

duty to act fairly and in good faith.

As noted earlier,

however, there was no contract between plaintiff and defendant
to support the existence of such a legal duty under state law.
See Becroft, 2014 WL 7641283, at *2.

Therefore, the claims for

tortious interference must be dismissed.
B.

CUTPA Claim
Plaintiff’s CUTPA claim is based on the same allegations as

the tortious interference claims.

Tortious interference and

CUTPA claims are not judged “in the same light.”
Boating Corp., 192 Conn. at 756, 474 A.2d 780.

Sportsmen’s
“Conduct that

might be actionable under CUTPA may not rise to a level
sufficient to invoke tort liability.”

Id.

“[L]iability in tort

is imposed only if the defendant maliciously or deliberately
interfered with a competitor’s business expectancies.”
755.

Id. at

CUTPA liability, in contrast, “is premised on a finding

that the defendant engaged in unfair competition and unfair or
deceptive trade practices.”

Id.

Though the bar for pleading a

CUTPA claim may therefore be somewhat lower than the one that
applies to claims for tortious interference, plaintiff’s CUTPA
claim fails for essentially the same reasons already discussed.

To state a claim for relief under CUTPA, plaintiff’s
allegations must allow a plausible inference that defendant’s
actions “offend[] public policy,” were “immoral, unethical,
oppressive, or unscrupulous,” or otherwise “cause[d] substantial
injury to consumers.”

Id. at 756.

Like claims for tortious

interference, a CUTPA claim based on passive conduct (such as
failure to withdraw a complaint) will be dismissed unless the
plaintiff can establish that the defendant had a legal duty to
act.

E.g., Downes-Patterson, 64 Conn. App. at 426-27, 780 A.2d

967 (“The plaintiffs argue that the court improperly imputed a
duty requirement to a CUTPA cause of action.

We disagree. . . .

Where a plaintiff alleges that a defendant’s passive conduct
violates CUTPA, . . . common sense dictates that a court should
inquire whether the defendant was under any obligation to do
what it refrained from doing.”); see also id. (citing cases).
As discussed above, plaintiff cannot establish that
defendant had a legal duty to retract its complaint to Amazon.
Nor can I conclude that defendant’s conduct in counting each
shirt size and color as a separate violation was violative of
CUTPA.

Defendant’s conduct was “in accordance with common

business norms,” or, at worst, “nothing more than aggressive
business practices.”
983.

Landmark, 141 Conn. App. at 55, 60 A.3d

Accordingly, the CUTPA claim must be dismissed as well.
IV.

Conclusion

For the foregoing reasons, the motion to dismiss the
complaint is granted and the motion to amend the complaint is
denied as futile.
So ordered this 31st day of March 2021.

_______
/s/ RNC___________
Robert N. Chatigny
United States District Judge