Git-R-Done Productions, Inc. v. Giterdone C Store, LLC

Filing 52

Memorandum Opinion and Order granting 32 Second MOTION for Judgment on the Pleadings. Defendant's request to amend its Counterclaim is granted. Defendant is ordered to file a Second Amended Counterclaim complying with the directives discu ssed herein within fourteen (14) days of the date of this Order. Failure to comply with the Court's directives may result in immediate dismissal of the Second Amended Counterclaim. Signed by Chief District Judge Louis Guirola, Jr on 4/5/16 (PKS)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF MISSISSIPPI
SOUTHERN DIVISION
GIT-R-DONE PRODUCTIONS, INC.

PLAINTIFF/
COUNTERCLAIM DEFENDANT

v.

CAUSE NO. 1:15CV386-LG-RHW

GITERDONE C STORE, LLC

DEFENDANT/
COUNTERCLAIM PLAINTIFF

MEMORANDUM OPINION AND ORDER GRANTING
SECOND MOTION FOR JUDGMENT ON THE PLEADINGS AND
GRANTING LEAVE TO FILE SECOND AMENDED COUNTERCLAIM
BEFORE THE COURT is the [32] Second Motion for Judgment on the
Pleadings filed by Plaintiff/Counterclaim Defendant Git-R-Done Productions, Inc.
(“Plaintiff”) pursuant to Federal Rule of Civil Procedure 12(c). Plaintiff requests
dismissal of the Amended Counterclaim brought by Defendant/Counterclaim
Plaintiff Gitderdone C Store, LLC (“Defendant”). The Court has considered the
submissions of the parties and the applicable law and finds that the Motion should
be granted, but will allow Defendant Giterdone C Store one last opportunity to
amend its Counterclaim.
BACKGROUND
This is an action for federal trademark infringement and related claims. On
November 18, 2015, Plaintiff Git-R-Done Productions, Inc., sued Defendant
Giterdone C Store, LLC, the owner of Giterdone gas station and convenience store
located in Diamondhead, Mississippi. Plaintiff contends that “Defendant has
purposefully misappropriated” the well-known Git-R-Done “tagline and trademark
of the famous comedian and actor, Daniel Lawrence Whitney, known by his stage

name, Larry the Cable Guy.” (Compl. 1 (¶1), ECF No. 1). It further alleges that
“Defendant’s actions are infringing [Plaintiff]’s trademark rights and causing it
damages.” (Id.).
On December 21, 2015, Defendant filed its [18] Amended Answer and
Counterclaim against Plaintiff, including a purported claim for federal trademark
infringement. Plaintiff moved to dismiss the Counterclaim, which Motion the Court
granted. Nonetheless, the Court allowed Defendant to amend its Counterclaim to
attempt to correct the deficiencies therein. Defendant then filed its [27] Amended
Counterclaim, which Plaintiff has now moved to dismiss.
In its current Motion, Plaintiff argues that Defendant lacks standing and
otherwise cannot state a claim for federal trademark infringement. Defendant has
opposed the Motion, and has requested in the alternative that the Court allow it to
amend its Counterclaim once again. It has also argued that its claims other than
federal trademark infringement should proceed because Plaintiff did not address
those claims.
THE LEGAL STANDARD
“After the pleadings are closed – but early enough not to delay trial – a party
may move for judgment on the pleadings.” Fed. R. Civ. P. 12(c). “‘The standard for
dismissal under Rule 12(c) is the same as that for dismissal for failure to state a
claim under Rule 12(b)(6).’” Bosarge v. Miss. Bureau of Narcotics, 796 F.3d 435, 439
(5th Cir. 2015) (citation and brackets omitted). The Court “‘accept[s] all wellpleaded facts as true, viewing them in the light most favorable to the plaintiff.’” Id.
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(citation omitted). “[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) (citation and quotation marks omitted). “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.”
Id.
“While legal conclusions can provide the framework of a complaint, they must
be supported by factual allegations.” Id. at 679. “When there are well-pleaded
factual allegations, a court should assume their veracity and then determine
whether they plausibly give rise to an entitlement to relief.” Id. However, “[a]
pleading that offers labels and conclusions or a formulaic recitation of the elements
of a cause of action will not do.” Bosarge, 796 F.3d at 439 (citation and quotation
marks omitted). “Nor does a complaint suffice if it tenders naked assertions devoid
of further factual enhancement.” Id. (citation, quotation marks, and brackets
omitted).
While the Court will generally not consider matters outside the pleadings in
deciding a 12(b)(6) motion, see Fed. R. Civ. P. 12, the Fifth Circuit has stated that
“it is clearly proper in deciding a 12(b)(6) motion to take judicial notice of matters of
public record.” Norris v. Hearst Trust, 500 F.3d 454, 461 n.9 (5th Cir. 2007); see
also Tellabs, Inc. v. Makor Issues & Rights, Ltd., 551 U.S. 308, 322 (2007) (“[C]ourts
must consider the complaint in its entirety, as well as other sources courts

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ordinarily examine when ruling on Rule 12(b)(6) motions to dismiss, in particular,
documents incorporated into the complaint by reference, and matters of which a
court may take judicial notice.”).
DISCUSSION
Defendant states that Federal Rule of Civil Procedure 8 “provides liberal
notice pleading standards[,]” (Def.’s Opp. 5, ECF No. 41), which it believes it has
met. It further argues that Plaintiff’s Motion is inappropriate since the
Counterclaim “has a legitimate legal basis which will be supplemented with more
factual details once a proper discovery process has been” permitted. (Id. at 5).
Rule 8 states in pertinent part that “[a] pleading that states a claim for relief
must contain . . . a short and plain statement of the claim showing that the pleader
is entitled to relief . . . .” As recognized by the United States Supreme Court, while
the tenets of notice pleading embodied in Rule 8 mark “a notable and generous
departure from the hyper-technical, code-pleading regime of a prior era, [they] do[]
not unlock the doors of discovery for a p[arty] armed with nothing more than
conclusions.” See Iqbal, 556 U.S. at 678-79.
As discussed below, the Court is of the opinion that Defendant’s Amended
Counterclaim contains the exact type of conclusory allegations that the Supreme
Court has found insufficient or that are otherwise insufficient under the applicable
law, including standing issues at issue here. Accordingly, the Court rejects
Defendant’s contention that the Court should deny Plaintiff’s Motion and allow for
discovery to proceed.
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Defendant’s Alleged Claims Other Than Federal Trademark Infringement
Much of the confusion created by the Amended Counterclaim is based on
Defendant’s disregard of the Court’s directives. Specifically, both the Court and
Plaintiff were unable to discern from the original Counterclaim whether Defendant
was trying to state claims beyond federal trademark infringement, including state
law claims and a claim pursuant to 17 U.S.C. § 512(f). Regardless, the Court found
that Defendant’s allegations with respect to any additional claims “were the type of
‘labels and conclusions’ that ‘will not do.’” (See Order 4, n.1, ECF No. 26) (quoting
Bosarge, 796 F.3d at 439). It then stated that “[a]ny Amended Counterclaim should
specifically set out each cause of action – including the applicable statute, if any –
Defendant is attempting to state against Plaintiff.” (Id.).
Instead of doing so, Defendant’s Amended Counterclaim fails to identify any
causes of action, and at least with respect to the purported claims beyond federal
trademark infringement, contains the same labels and conclusions that the Court
has already rejected. Defendant’s argument that Plaintiff has failed to address its
claims with respect to “Plaintiff’s business constituting unfair trade practices under
Mississippi state law” and claims “arising under 17 U.S.C. §512(f) and other similar
claims[,]” (see Def.’s Opp. 2-3, ECF No. 41) is disingenuous. Indeed, Defendant’s
contention that it has brought “other similar claims” leads the Court to conclude
that Defendant itself is unsure of what claims it is stating.
However, the Court will give Defendant a final chance to amend its
Counterclaim to define its claims and to state supporting facts, including
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complying with the Court’s previously ignored directives.1 To be clear, a Second
Amended Counterclaim should include separate headings for each Count Defendant
is attempting to state against Plaintiff so that both the Court and Plaintiff can
discern what the actual claims are. Allegations of “other similar claims” will not
suffice, and future amendments likely will not be permitted. See, e.g., U.S. ex rel.
Willard v. Humana Health Plan of Tex. Inc., 336 F.3d 375, 387 (5th Cir. 2003).
Defendant’s Claim For Federal Trademark Infringement
Defendant also alleges that Plaintiff has infringed upon its federally
registered GitErDone trademark “by using confusingly similar imitations to [that]
trademark in violation of Section 31(1) of the Lanham Act, 15 U. S. C. §1114(1).”
(Am. Counterclaim 4 (¶11), ECF No. 27; see also id. at 7 (¶¶ 18-19)). Defendant
identifies its registered trademark as Registration No. 3,794,096. (See id. at 2 (¶4)).
Plaintiff argues that dismissal is warranted because Defendant does not own
the Registration, but, rather, the registered owner is 443-B Yacht Club Drive LLC.
In support, it has attached to its Motion a United States Patent and Trademark
Office (USPTO) registration record showing the owner of the GitErDone trademark
as 443-B Yacht Club Drive LLC, a Mississippi limited liability company.

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17 U.S.C. § 512(f) pertains to copyright infringement, and there is no
mention of any copyright in any of Defendant’s filings with the Court. Should
Defendant’s attorneys choose to submit a Second Amended Counterclaim, they are
reminded of Federal Rule of Civil Procedure 11, which states, inter alia, that “[b]y
presenting to the court a pleading, . . . an attorney . . . certifies that to the best of
the person’s knowledge, information, and belief, formed after an inquiry reasonable
under the circumstances[,] the claims, defenses, and other legal contentions are
warranted by existing law . . . .”
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Defendant’s sole response is that its is inappropriate for the Court to consider
the USPTO record in ruling on the Motion. (See Def.’s Opp. 3, ECF No. 41).
However, the court may take judicial notice of trademark registrations. See, e.g.,
Flu Shots of Tex., Ltd. v. Lopez, No. 3:13-cv-144-O, 2014 WL 1327706, at *5 (N.D.
Tex. Apr. 3, 2014); Govango, Inc. v. Malabar Bay, LLC, No. 11-1600, 2012 WL
1836178, at *2 (E.D. La. May 21, 2012); Burkitt v. Flawless Records, Inc., No. 032483, 2005 WL 6225822, at *2 (E.D. La. June 13, 2005); Island Software &
Computer Serv., Inc. v. Microsoft Corp., 413 F.3d 257, 261 (2d Cir. 2005).
Defendant has cited no binding authority and the Court has found none that
it may not or should not take judicial notice of the registration which conclusively
shows that Defendant is not the owner of the trademark at issue.2 Absent
ownership of the registered mark at issue, the Court concludes that Defendant lacks
standing to assert its federal trademark claim based on a registered trademark
pursuant to 15 U.S.C. § 1114.3 See Flu Shots of Tex., 2014 WL 1327706, at *5; see
also Ass’n of Co-ope Members, Inc. v. Farmland Indus., Inc., 684 F.2d 1134, 1139 n.4
(5th Cir. 1982) (“Although federal law does recognize a cause of action for

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The Court’s own review of documents available from the United States
Patent and Trademark Office also show that the Registration is, in fact, registered
to an entity identified as 443-B Yacht Club Drive LLC, and not Defendant
Gitderdone C Store, LLC. See, e.g., March Madness Athletic Ass’n, L.L.C. v. Netfire,
Inc., 310 F. Supp. 2d 786, 803 n.65 (N.D. Tex. Aug. 28, 2003) (taking judicial notice
of documents available at uspto.gov).
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Because the Court finds that Defendant does not have standing to assert its
federal trademark infringement claim, the Court need not consider the additional
arguments raised by Plaintiff in its Motion for dismissal of this claim.
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trademark infringement, 15 U.S.C. s 1114(1), relief is available only to owners of
federally registered trademarks . . . .”).
Nevertheless, Defendant states that it can state a claim “even if this
infringement is of an unregistered mark.” (Def.’s Opp. 3, ECF No. 41). “Trademark
infringement pursuant to 15 U.S.C. § 1114 requires registration.” Burkitt, 2005 WL
6225822, at *11 n.69 (emphasis added). The primary case cited by Defendant,
Alpha Kappa Alpha Sorority, Inc. v. Converse, Inc., 175 F. App’x 672 (5th Cir. 2006),
discussed a claim made pursuant to Section 43(a) of the Lanham Act, 15 U.S.C. §
1125(a), which does not require registration. See also Flu Shots of Tex., 2014 WL
1327706, at *6 (“Under Section 43(a) of the Lanham Act, standing is conferred more
broadly than under 15 U.S.C. § 1114 . . . .”); Burkitt, 2005 WL 6225822, at *11.
“Specifically, Section 43(a) . . . confers standing on any person who ‘believes
that he or she is or is likely to be damaged by’ a violation of the provisions of 15
U.S.C. § 1125(a).” Flu Shots of Tex., 2014 WL 1327706, at *6. “Section 1125(a)
creates two distinct bases of liability: false association, § 1125(a)(1)(A), and false
advertising, § 1125(a)(1)(B).” Id. (citation and quotation marks omitted); see also
Lexmark Int’l, Inc. v. Static Control Components, Inc., 134 S. Ct. 1377, 1384 (2014).
Again, the confusion herein lies in Defendant’s failure to follow the Court’s
directives. The Court offers no opinion as to whether Defendant can state a claim
under § 1125, but will allow Defendant to amend its Counterclaim as discussed
above. See, e.g., U.S. ex rel. Willard, 336 F.3d at 387.

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CONCLUSION
For the reasons discussed herein, the Court finds that the Plaintiff/
Counterclaim Defendant’s Motion for Judgment on the Pleadings is well-taken, but
will allow the Defendant/Counterclaim Plaintiff a final opportunity to amend its
Counterclaim to attempt to state a claim or claims.
IT IS THEREFORE ORDERED AND ADJUDGED that the [32] Second
Motion for Judgment on the Pleadings Motion filed by Plaintiff/Counterclaim
Defendant Git-R-Done Productions, Inc. is GRANTED.
IT IS FURTHER ORDERED AND ADJUDGED that Defendant’s request
to amend its Counterclaim is GRANTED. Defendant is ordered to file a Second
Amended Counterclaim complying with the directives discussed herein within
fourteen (14) days of the date of this Order. Failure to comply with the Court’s
directives may result in immediate dismissal of the Second Amended Counterclaim.
SO ORDERED AND ADJUDGED this the 5th day of April, 2016.

s/

Louis Guirola, Jr.

LOUIS GUIROLA, JR.
CHIEF U.S. DISTRICT JUDGE

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