Froyoworld Licensing, LLC et al v. Lin

Filing 31

District Judge Timothy S Hillman: ORDER entered denying 23 Motion to Dismiss for Failure to State a Claim. (Castles, Martin)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
_________________________________________
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FROYOWORLD LICENSING, LLC and
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FROYOWORLD FRANCHISING, LLC
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Plaintiffs,
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v.
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)
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JACKY LIN,
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Defendant.
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_________________________________________ )

CIVIL ACTION
No. 13-40121-TSH

ORDER ON DEFENDANT’S MOTION TO DISMISS (Docket No. 23)

April 2, 2014
HILLMAN, D.J.

Background
Froyoworld Licensing, LLC and Froyoworld Franchising, LLC (collectively,
“Froyoworld” or “Plaintiffs”) have filed a Complaint (Docket No. 1) against Jacky Lin (“Lin” or
“Defendant”) under the Lanham Trademark Act of 1946, 15 U.S.C. §§ 1051-1127 (“Lanham
Act”), for trademark infringement, in violation of 15 U.S.C. § 1114(1) and false designation of
origin and unfair competition under 15 U.S.C. § 1125(a). Froyoworld alleges that Lin has,
without permission, used a mark “Froyoworld” for his self-serve frozen yogurt store in Gardner,
Massachusetts that is confusingly similar to its registered trademark.
On October 13, 2013, this Court issued a temporary restraining order (“TRO”) against
Lin which, among other relief, enjoined him from directly or indirectly using, promoting or
advertising, or in any way profiting from the mark known as “Froyoworld.” In so doing, the
Court found that Froyoworld was entitled to injunctive relief because it had established that: (1)

it was likely to succeed on the merits, (2) it would suffer irreparable harm if such relief were
denied, (3) the equities were in its favor, and (4) public policy favored the issuance of an
injunction. See Order On Pls’ Emergency Mot. For Temporary Restraining Order And
Preliminary Inj. (Docket No. 2)(Docket No. 11). The Court set a date for hearing on
Froyoworlds’ request for a preliminary injunction, however, prior to the hearing, the parties
informed the Court that they had conferred, that Lin had fully complied with the terms of the
TRO and there was nothing left to enjoin. See Assented-To Mot. For An Order Cancelling The
Hearing On Pls’ Mot. For A Preliminary Inj. (Docket No. 17).
On December 5, 2013, Lin filed his Motion To Dismiss (Docket No. 23). For the reasons
set forth below, that motion is denied.
Discussion
Froyoworlds’ Complaint alleges claims for violation of the Lanham Act. Specifically,
Froyoworld has alleged a claim of trademark infringement in violation of 15 U.S.C. § 1114,
which “ ‘proscribes the unauthorized use of a mark similar enough to a federally registered
trademark to be “likely to cause confusion, or to cause mistake, or to deceive.” ’1 Copy Cop, Inc.
v. Task Printing, Inc., 908 F. Supp. 37, 43 (D. Mass. 1995)(internal citation and citation to
quoted cases omitted). Froyoworld has also alleged a claim for “violation of the federal unfair
competition statute, 15 U.S.C. § 1125. This section ‘creates a statutory tort broader than common
law unfair competition and the law of infringement,’ … ‘Claims under either section may be
established by proving a likelihood of confusion.’ ” Copy Cop, Inc., 908 F. Supp. at 44 (internal
citation and citation to quoted case omitted).

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To make out a claim of trademark infringement, [plaintiff] must show: ‘(1) the ownership of a registered
mark entitled to trademark protection; (2) the use of that [mark] in interstate commerce; and (3) its use by another in
a manner likely to cause confusion or mistake when compared with the plaintiff's registered mark.’ ” Copy Cop,
Inc., 908 F.Supp. at 43.

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Standard Of Review
On a Rule 12(b)(6) motion to dismiss, the Court “must assume the truth of all wellplead[ed] facts and give plaintiff the benefit of all reasonable inferences therefrom.” Ruiz v.
Bally Total Fitness Holding Corp., 496 F.3d 1, 5 (1st Cir. 2007) (citing Rogan v. Menino, 175
F.3d 75, 77 (1st Cir. 1999)). To survive a motion to dismiss, the plaintiff must state a claim that
is plausible on its face. Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570, 127 S.Ct. 1955 (2007).
That is, “[f]actual allegations must be enough to raise a right to relief above the speculative level,
... on the assumption that all the allegations in the complaint are true (even if doubtful in fact).”
Id. at 555 (internal citations omitted). “The plausibility standard is not akin to a ‘probability
requirement,’ but it asks for more than a sheer possibility that a defendant has acted unlawfully.”
Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.Ct. 1937 (2009) (quoting Twombly, 550 U.S. at 556).
Dismissal is appropriate if plaintiff’s well-pleaded facts do not “possess enough heft to show that
plaintiff is entitled to relief.” Ruiz Rivera v. Pfizer Pharm., LLC, 521 F.3d 76, 84 (1st Cir. 2008)
(internal quotations and original alterations omitted). “The relevant inquiry focuses on the
reasonableness of the inference of liability that the plaintiff is asking the court to draw from the
facts alleged in the complaint.” Ocasio-Hernàndez v. Fortuño-Burset, 640 F.3d 1, 13 (1st Cir.
2011).
Whether Froyoworlds’ Complaint Satisfies the Plausibility Standard
Lin seeks to dismiss Froyoworlds’ Complaint on the grounds that even if true, the wellpleaded allegations fail to state a claim. Plaintiffs assert that the factual allegations in their
Complaint are sufficient to establish that they have a trademark that is worthy of protection and
that Lin used their mark in violation of their rights and the Lanham Act. A protracted discussion
of Defendant’s motion is not warranted. His own legal arguments and analysis in and of

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themselves are sufficient to establish that Plaintiffs have asserted plausible claims for violation
of the Lanham Act sufficient to withstand challenge under Iqbal and Twombly.
Frankly, it is unclear to the Court why Defendant chose to file a motion to dismiss based
on legal arguments which would have been more appropriately made in the context of a motion
for summary judgment. Moreover, he included over 34 Exhibits in support of his motion. See
Affidavit of Dan Booth (Docket No. 23). This Court’s rules of procedure provide that if on
motion under Rule 12(b)(6) matters outside the pleadings are presented to and not excluded by
the court, the motion must be treated as one for summary judgment under Rule 56. Fed.R.Civ.P.
12(d). However, the Defendant requests that the Court take judicial notice of all of exhibits
included with his motion without converting the motion into one for summary judgment. See
Defendant’s Request For Judicial Notice (Docket No. 23). He asserts that pursuant to
Fed.R.Evid. 201, the Court is required to take judicial notice of information “when requested by
a party who supplies the Court with the necessary information.” Id. He then assumes that
having taking judicial notice of the materials, the Court can consider them without converting the
motion to dismiss into one for summary judgment.
“Under certain ‘narrow exceptions,’ some extrinsic documents may be considered
without converting a motion to dismiss into a motion for summary judgment. These exceptions
include ‘documents the authenticity of which are not disputed by the parties; ... official public
records; ... documents central to plaintiffs’ claim; [and] ... documents sufficiently referred to in
the complaint.’” Freeman v. Town of Hudson, 714 F.3d 29, 36 (1st Cir. 2013)(emphasis added).
Rule 201 governs the judicial notice of adjudicative facts. Therefore, while the Court may take
judicial notice of the timing, filing and origin of the materials that Defendant filed as exhibits
and the fact that statements and facts are contained therein, it does not follow that the Court

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assumes the truth of such statements and facts. Moreover, before taking judicial notice of
materials pursuant to Fed.R.Evid. 201, the Court must first give all parties an opportunity to be
heard.2 In the context of a motion to dismiss, that may best be achieved by conversion of the
motion to one for summary judgment. Under the circumstances of this case, Defendant’s
inclusion of extrinsic evidence would require that his motion be treated as one for summary
judgment.
It appears that this Case is one that can and should be resolved on a short track without
the need for protracted discovery and without incurring a great deal of expense. The Court will
schedule a status conference in this case. If the parties agree with the foregoing assessment, they
should file a joint scheduling order with the Court setting forth deadlines for completing limited
discovery, if needed, and for the filing of dispositive motions.
Conclusion
Defendant’s Motion To Dismiss (Docket No. 23) is denied.

/s/ Timothy S. Hillman
TIMOTHY S. HILLMAN
DISTRICT JUDGE

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Defendant inexplicably docketed his request for judicial notice as one of the attachments to his motion to
dismiss. Since he is seeking relief, the “request” should have been docketed as a separate motion, which would have
given the Plaintiffs an opportunity to file a response and contest the authenticity of the included materials if they
chose to do so. Defendant’s counsel cannot simply attach materials, explain where he got them and deem them
authenticated.

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