D'Pergo Custom Guitars, Inc. v. Sweetwater Sound, Inc.
ORDER denying 45 Motion to Dismiss for Failure to State a Claim. Sweetwater's motion to dismiss Counts II through V of the first amended complaint is denied. Sweetwater's motion to strike D'Pergo's reque st for attorney's fees under Count I of the first amended complaint is granted. D'Pergo's request for attorney's fees incurred in responding to the pending motion is denied. So Ordered by Chief Judge Landya B. McCafferty.(gla)
UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW HAMPSHIRE
D’Pergo Custom Guitars, Inc.
Civil No. 17-cv-747-LM
Opinion No. 2018 DNH 243
Sweetwater Sound, Inc.
O R D E R
D’Pergo Custom Guitars, Inc. (“D’Pergo”) brings this suit
against Sweetwater Sound, Inc. (“Sweetwater”), alleging claims
of copyright and trademark infringement and violations of the
New Hampshire Consumer Protection Act (“CPA”).
that Sweetwater used a copyrighted photograph of D’Pergo’s
trademarked custom guitar necks to promote and sell Sweetwater
products on Sweetwater’s website.
Pursuant to Federal Rule of
Civil Procedure 12(b)(6), Sweetwater moves to dismiss Counts II
through V of the first amended complaint—the CPA claims and the
trademark infringement claims.
Sweetwater also moves to strike
D’Pergo’s request for attorney’s fees under Count I (copyright
For the following reasons,
Sweetwater’s motion to dismiss is denied and its motion to
strike is granted.
STANDARD OF REVIEW
Under Rule 12(b)(6), the court must accept the factual
allegations in the complaint as true, and draw all reasonable
inferences from those facts in the plaintiff’s favor.
Wells Fargo Bank, N.A., 772 F.3d 63, 71, 75 (1st Cir. 2014).
addition to the complaint, the court may consider documents
attached to it or expressly incorporated into it.
Id. at 72.
It must then “determine whether the factual allegations in the
plaintiff’s complaint set forth ‘a plausible claim upon which
relief may be granted.’”
Id. at 71 (internal quotation marks
A claim is facially plausible “when the plaintiff
pleads factual content that allows the court to draw the
reasonable inference that the defendant is liable for the
Ashcroft v. Iqbal, 556 U.S. 662, 678
The following facts are taken from D’Pergo’s first amended
complaint and the attached documents.
sells custom guitars.
D’Pergo manufactures and
In 2003, D’Pergo created a photograph
showcasing a number of its unique guitar necks, which it
published to its website.
D’Pergo later registered the
copyright for the photograph and registered its signature guitar
neck headstock as a trademark.
Doc. nos. 44-2, 44-4.
Sweetwater is a retailer that sells musical instruments,
including guitars, through its website.
D’Pergo alleges that
Sweetwater copied D’Pergo’s photograph and published it on
More specifically, Sweetwater used the
photograph in an “Electric Guitar Buying Guide,” in the section
titled “Guitar necks explained.”
Doc. no. 44-3 at 2, 5.
end of the Buying Guide features a number of guitars from
various manufacturers for purchase, as well as a hyperlink to
“Shop for Electric Guitars.”
Id. at 7-8.
In December 2017, D’Pergo brought this action alleging
claims of copyright infringement (Count I), unfair competition
in violation of the CPA (Count II), and deceptive business
practices in violation of the CPA (Count III) based upon
Sweetwater’s use of the photograph on its website.
first amended complaint added two additional counts: false
designation of origin and unfair competition in violation of 15
U.S.C. § 1125(a)(1) (Count IV) and trademark infringement in
violation of 15 U.S.C. § 1114(1)(a) (Count V).
Sweetwater moves to dismiss Counts II through V.
will first address Sweetwater’s arguments concerning the two
state law claims, and then turn to the two trademark
New Hampshire Consumer Protection Act Claims (Counts II and
Counts II and III allege that Sweetwater’s use of D’Pergo’s
photograph constituted unfair competition and a deceptive
business practice in violation of the CPA, New Hampshire Revised
Statutes Annotated (“RSA”) chapter 358-A.
alleges that, by using the photograph, Sweetwater has “passed
off [its] goods, specifically guitars, for purchase and sale” as
D’Pergo’s goods, and that Sweetwater’s use of the photograph is
likely to cause confusion as to the source or origin of
Sweetwater’s goods and their affiliation with D’Pergo.
44 at ¶¶ 47-48, 52.1
Sweetwater contends that Counts II and III should be
dismissed for many of the same reasons it argues that the
trademark infringement claims, Counts IV and V, should be
See doc. no. 45 at 7, 11-12.
Its arguments are
based on the premise that, in order to state a viable CPA claim,
D’Pergo must allege that it used the photograph itself as a
trademark or otherwise successfully allege a trademark
has twice unsuccessfully tried to dismiss the
CPA claims. See doc. nos. 18 (denying Sweetwater’s motion to
dismiss Counts II and III as preempted by federal law), 30-1 at
7 (Sweetwater’s objection to D’Pergo’s motion to amend
complaint, arguing state claims were futile).
See id. at 11-12, doc. no. 53 at 4.
court disagrees with this premise.
The CPA makes it “unlawful for any person to use any unfair
method of competition or any unfair or deceptive act or practice
in the conduct of any trade or commerce within this state.”
Prohibited acts include, but are not limited to:
I. Passing off goods or services as those of another;
II. Causing likelihood of confusion or of
misunderstanding as to the source, sponsorship,
approval, or certification of goods or services;
III. Causing likelihood of confusion or of
misunderstanding as to affiliation, connection or
association with, or certification by, another.
RSA 358-A:2, I-III.
By its plain language, the CPA does not
require proof of an underlying trademark or trademark
infringement claim in order to bring a CPA claim.
358-A:2, with RSA 350-A:11 (authorizing cause of action for
infringement of state registered trademark).
Instead, the CPA
prohibits a broader range of unlawful activity than federal
See Ne. Lumber Mfrs. Assoc. v. N. States Pallet
Co., 710 F. Supp. 2d 179, 188 (D.N.H. 2010).
It may well be
that conduct that constitutes federal trademark infringement is
also prohibited by the CPA.
See RSA 358-A:2, II-III
(prohibiting causing likelihood of consumer confusion as to
source or affiliation of goods); 15 U.S.C. § 1125(a)
(authorizing civil action for use of trademark in commerce that
is likely to cause confusion as to the affiliation or
association of user with another person).
But that does not
make the opposite true—conduct need not necessarily constitute
trademark infringement in order to be prohibited by the CPA.
Thus, even assuming that the complaint fails to allege that
Sweetwater used the photograph as a trademark or otherwise fails
to state a claim for trademark infringement, that deficiency is
not necessarily fatal to D’Pergo’s CPA claims.
motion to dismiss Counts II and III is therefore denied.
Trademark Infringement Claims (Counts IV and V)
D’Pergo’s first amended complaint added two claims related
to Sweetwater’s alleged infringement of D’Pergo’s trademark,
which is a distinctive design for its guitar necks:
Doc. nos. 44-4 at 2, 44-5 at 2 (resized from originals).
claims allege that Sweetwater’s display of the photograph
depicting D’Pergo’s trademarked guitar necks on Sweetwater’s
website is likely to cause confusion and mislead customers into
believing that Sweetwater’s goods are affiliated or connected
Count IV appears to rest on the fact that
D’Pergo’s guitar neck trademark is unregistered, while Count V
appears to rest on the fact that the trademark is federally
See Borinquen Biscuit Corp. v. M.V. Trading Corp.,
443 F.3d 112, 117 (1st Cir. 2006) (“Both registered and
unregistered trademarks may be eligible for protection against
These distinct claims exist because
Sweetwater allegedly engaged in infringement both prior to and
after the official registration of D’Pergo’s trademark.
doc. nos. 44-3 at 2 (Sweetwater’s Electric Guitar Buying Guide
featuring the allegedly infringing photograph, published in May
2013), 44-4 at 2 (D’Pergo’s trademark registration, effective
Despite this distinction, most of Sweetwater’s
arguments apply to both Counts IV and V.
The court therefore
addresses those claims together, unless otherwise noted.
Sweetwater advances four arguments in support of its motion
to dismiss Counts IV and V.
The court addresses each in turn.
Use as a Trademark
Sweetwater argues that the complaint fails to state viable
claims for trademark infringement because it does not allege
that Sweetwater engaged in a “trademark use” of D’Pergo’s
signature guitar necks.
Doc. nos. 45 at 4-6, 53 at 4-6.
other words, Sweetwater contends that it used the photograph
depicting the trademarked guitar necks in a “non-trademark way,”
i.e. in an informational capacity that did not suggest an
association between Sweetwater and D’Pergo.
The court is not
The fact that a defendant engaged in a “trademark use” of
the plaintiff’s trademark is not a separate element of a
trademark infringement claim in the First Circuit.
a claim for trademark infringement, a plaintiff must demonstrate
that: (1) its mark merits protection; and (2) the allegedly
infringing use is likely to cause consumer confusion.
Biscuit, 443 F.3d at 116.
In assessing the likelihood of
consumer confusion, the First Circuit considers eight nonexclusive factors, none of which carries dispositive weight.
See id. at 120; see also Beacon Mut. Ins. Co. v. OneBeacon Ins.
Grp., 376 F.3d 8, 15 (1st Cir. 2004).
Notwithstanding this controlling authority, Sweetwater does
not address the eight-factor test and instead relies primarily
on Sixth Circuit precedent in support of its position.
Sixth Circuit, the “likelihood of consumer confusion” analysis
“involves a preliminary question: whether the defendants are
using the challenged mark in a way that identifies the source of
Hensley Mfg. v. ProPride, Inc., 579 F.3d 603, 610
(6th Cir. 2009) (internal quotation marks omitted); see also
Interactive Prod. Corp. v. a2z Mobile Office Sols., Inc., 326
F.3d 687, 695 (6th Cir. 2003).
If defendants are not, then the
mark is being used in a “non-trademark” way and the eight-factor
analysis applicable in the First Circuit does not even apply.
See Hensley, 579 F.3d at 610.
The First Circuit has not ruled on this approach.2
Accordingly, the court will neither apply that approach here nor
dismiss Counts IV and V because the complaint fails to allege
that Sweetwater engaged in a “trademark use” of D’Pergo’s
trademarked guitar neck design.
Timing of Registration of Trademark
Sweetwater next argues that Count V fails to state a valid
claim of trademark infringement because the complaint does not
allege any instances of Sweetwater’s infringing use occurring
after the issuance of the federal trademark registration in
least one Circuit Court of Appeals has rejected the
Sixth Circuit’s “use as a trademark” rule, and commentators have
criticized it. See Kelly-Brown v. Winfrey, 717 F.3d 295, 307-08
(2d Cir. 2013) (declining to adopt Sixth Circuit’s “use as a
trademark” requirement); 4 McCarthy on Trademarks and Unfair
Competition § 23:11.50 (5th ed.) (expressing view that Sixth
Circuit’s “use as a trademark” rule “finds no support either in
the Lanham Act or in precedent”).
See doc. nos. 45 at 7-8, 53 at 6-7.
reasonable inferences from the facts alleged, however, the first
amended complaint alleges Sweetwater’s ongoing use of the
federally registered trademark.
25-27, 56-60, 66-70.
See doc. no. 44 at ¶¶ 14-18,
Although the complaint could be more
precise about the timing of Sweetwater’s alleged infringement,
the allegations suffice to withstand a Rule 12(b)(6) motion.
Sweetwater also contends that the complaint is deficient in
that it does not specifically allege that Sweetwater continued
its infringing use after receiving D’Pergo’s notice to take down
the photograph (“takedown notice”).
Doc. no. 45 at 6.
argument appears to be based on Sweetwater’s assertion that it
took the infringing photograph down from its website on January
6, 2016—two days after D’Pergo issued a takedown notice and
eight months prior to the date D’Pergo registered its trademark
(August 23, 2016).
See doc. no. 30-1 at 4.
At this phase of
the proceedings, however, the court may not consider those
facts, drawn from outside the complaint.
See Foley, 772 F.3d at
Examining the allegations in the complaint, one could
Sweetwater asserts this argument as to both Counts
IV and V, the court considers it only as to Count V. As
explained above, the court construes Count IV as a claim for
infringement of an unregistered trademark. Therefore, the
timing of trademark registration is not germane to that claim.
reasonably infer that Sweetwater did not take down the
photograph: it alleges that D’Pergo notified Sweetwater of its
improper use in January 2016, Sweetwater admitted it had used
the photograph on its website, and Sweetwater claimed its use
was “fair use,” implying that it thought the use was legal.
Doc. no. 44 at ¶¶ 17-18.
Trade Dress or Trademark Infringement
Sweetwater characterizes Counts IV and V as based on a
claim of “trade dress” infringement rather than trademark
A “trademark” is “any word, name, symbol, or
device, or any combination thereof” used to identify and
distinguish goods “from those manufactured or sold by others and
to indicate the source of the goods.”
15 U.S.C. § 1127.
contrast, “trade dress” is “the design and appearance of a
product together with the elements making up the overall image
that serves to identify the product presented to the consumer.”
Yankee Candle Co. v. Bridgewater Candle Co., LLC, 259 F.3d 25,
38 (1st Cir. 2001) (internal quotation marks omitted).
dress has two varieties: product packaging and “product
Both trademarks and trade dress are eligible for federal
See id. at 37-38.
infringement claims, like trademark infringement claims, require
proof that the mark is “distinctive.”
See id. at 38 (as to
trade dress); Borinquen Biscuit, 443 F.3d at 116 (stating that,
in order to meet the first requirement of meriting protection,
trademark must be “distinctive”).
“Distinctiveness” may be
established in two ways: a mark is “considered distinctive (and,
thus, eligible for trademark protection) if it either is
inherently distinctive or exhibits acquired distinctiveness
gained through secondary meaning.”
Borinquen Biscuit, 443 F.3d
at 116-17; see also Yankee Candle, 259 F.3d at 38.
Supreme Court has held that trade dress of “product design” can
never be “inherently distinctive,” and therefore is only
deserving of protection if plaintiff shows that the trade dress
has acquired distinctiveness through secondary meaning.
Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 21416 (2000).
It is upon this legal principle that Sweetwater
attempts to capitalize.
Sweetwater argues that viewing Counts
IV and V as claims for trade dress protection of product design,
the complaint fails to allege that the trade dress acquired
distinctiveness through secondary meaning prior to Sweetwater’s
Doc. no. 45 at 11.
Even assuming for the sake of argument that Counts IV and V
are premised upon product design “trade dress” rather than
trademark, the complaint contains an allegation that the guitar
neck design acquired distinctiveness through secondary meaning.
The complaint alleges that D’Pergo has used its unique guitar
neck design since 2002.
Doc. no. 44 at ¶ 23.
asserts that D’Pergo guitars are known nationally and
internationally for their “unique and distinctive headstock” and
that the headstock has “become exclusively identified” with
Id. at ¶¶ 19, 67; see Boston Duck Tours, LP v. Super
Duck Tours, LLC, 531 F.3d 1, 13 (1st Cir. 2008)(defining
acquisition of “secondary meaning” as when a mark “becomes
associated with a single commercial source”).
Although the complaint does not specify the time of
Sweetwater’s first alleged infringing use, the Electric Guitar
Buying Guide was published in 2013, over a decade after D’Pergo
began using the guitar neck design.4
See doc. no. 44-3 at 2.
Drawing all reasonable inferences in D’Pergo’s favor, the
complaint alleges that D’Pergo’s guitar neck design acquired
distinctiveness through secondary meaning prior to Sweetwater’s
first infringing use.
Thus, even assuming Counts IV and V
assert trade dress infringement claims, the court is not
Based upon ongoing discovery, Sweetwater maintains that
its first use of the photograph occurred between August 2003 and
August 2004. See doc. no. 45 at 11. The court must, however,
confine its analysis to the allegations in the complaint and
attached documents. See Foley, 772 F.3d at 71-72.
persuaded that they should be dismissed for the reasons asserted
Fair Use Defense
Sweetwater also argues that Counts IV and V should be
dismissed because it engaged in “fair use” of D’Pergo’s
“Fair use” is a statutory affirmative defense to a
trademark infringement claim.
See 15 U.S.C. § 1115(b)(4); KP
Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S.
111, 114 (2004).
An affirmative defense like fair use may be
adjudicated on a Rule 12(b)(6) motion if certain conditions are
In re Colonial Mortg. Bankers Corp., 324 F.3d 12, 16 (1st
It is appropriate to dismiss an action based on an
affirmative defense only if: “the facts that establish the
defense [are] definitively ascertainable from the allegations of
the complaint, the documents (if any) incorporated therein,
matters of public record, and other matters of which the court
may take judicial notice” and those facts “conclusively
establish the affirmative defense.”
The fair use defense allows a defendant to use the
plaintiff’s trademark for descriptive purposes, usually to
describe the defendant’s own product.
See Int’l Ethical Labs.,
Inc. v. Advance Generic Corp., No. CV 10-1381 (ADC), 2011 WL
13232287, at *6 (D.P.R. Mar. 31, 2011).
To successfully assert
this affirmative defense, the defendant must prove that the use
was made: (1) other than as a mark; (2) in a descriptive sense;
and (3) in good faith.
305 (2d Cir. 2013).
Kelly-Brown v. Winfrey, 717 F.3d 295,
Addressing the third element (good faith)
first, the complaint does not conclusively establish it.
Indeed, the complaint alleges the opposite.
A defendant’s “intent to trade on the good will of the
trademark holder by creating confusion as to source or
sponsorship” is evidence of bad faith.
Id. at 312 (internal
quotation marks omitted); see also Int’l Stamp Art, Inc. v. U.S.
Postal Serv., 456 F.3d 1270, 1274-75 (11th Cir. 2006).
the complaint alleges that Sweetwater used D’Pergo’s trademark
guitar headstock in the Electric Guitar Buying Guide “to
capitalize off the significant goodwill associated with”
Doc. no. 44 at ¶ 72.
It also alleges that
Sweetwater’s infringement of D’Pergo’s trademark “is knowing,
willful, deliberate, fraudulent, and intentional, and was made
with knowledge that such violation would enhance [Sweetwater’s]
image, sales, and reputation by association with [D’Pergo].”
Id. at ¶ 76.
In light of these allegations, it cannot be said
that the complaint conclusively establishes the element of good
faith, or the defense of fair use.
In sum, the court is unpersuaded by Sweetwater’s arguments
in support of its motion to dismiss Counts IV and V.
to dismiss those counts is denied.
III. Punitive Damages
The complaint includes a general request in the prayer for
relief for “an award of exemplary or punitive damages in an
amount to be determined by the Court.”
Doc. no. 44 at ¶ G.
Sweetwater imputes this general request to each of D’Pergo’s
five claims and argues that the request must be dismissed
because punitive damages are not an available remedy for any of
Doc. no. 45 at 8-10.
The court is not convinced.
A general request for punitive damages is not a “claim for
relief” within the meaning of Federal Rule of Civil Procedure
8(a)(2), but a request for a remedy.
See Murphy v. Wal-Mart
Stores, Inc., No. CIV. 00-117-B, 2001 WL 253426, at *4 (D. Me.
Mar. 13, 2001)(“‘Punitive damages’ is not a claim but a
As such, the court will not dismiss D’Pergo’s
request for punitive damages at this stage of the proceedings.
See, e.g., Douglas v. Miller, 864 F. Supp. 2d 1205, 1220 (W.D.
Okla. 2012) (“[W]hether [punitive] damages are recoverable is
not a proper subject for adjudication in a Rule 12(b)(6) motion,
as the prayer for relief is not a part of the cause of
action.”); Elias v. Navasartian, No. 115CV01567LJOGSAPC, 2017 WL
1013122, at *4 (E.D. Cal. Feb. 17, 2017) (collecting cases
supporting same proposition).
Motion to Strike
Sweetwater does not move to dismiss the copyright
infringement claim (Count I), but moves to strike D’Pergo’s
request for attorney’s fees on that claim.
Doc. no. 45 at 3-4.
D’Pergo concedes that, pursuant to the court’s prior order, see
doc. no. 43 at 9, its request for attorney’s fees associated
with that claim must be stricken from the first amended
complaint, see doc. no. 49-1 at 2.
motion to strike D’Pergo’s request for attorney’s fees under
Count I of the first amended complaint is granted.
See doc. no.
44 at ¶ 45.
D’Pergo’s Request for Attorney’s Fees as Sanction
Finally, D’Pergo requests attorney’s fees for having to
respond to Sweetwater’s motion to dismiss.
Doc. no. 49-1 at 13.
It argues that Sweetwater has previously unsuccessfully moved to
dismiss its state law and trademark infringement claims and that
the present motion “recycle[s] many of its failed arguments.”
Sweetwater’s conduct does not warrant sanctions.
Sweetwater previously moved to dismiss the state law claims on
different legal grounds, and the court specifically left open
the possibility that Sweetwater could raise some of its
trademark infringement arguments in later motion practice.
doc. nos. 18 (court order denying motion to dismiss state law
claims as preempted by federal law), 43 at 7 (refusing to
address one of Sweetwater’s arguments in objection to D’Pergo’s
motion to amend complaint as insufficiently developed, but
noting that Sweetwater was “free to raise [it] in the future”).
D’Pergo’s request for attorney’s fees incurred in responding to
the present motion to dismiss is denied.
Cf. Mariani v. Doctors
Assocs., Inc., 983 F.2d 5, 8 (1st Cir. 1993) (affirming
imposition of sanctions for filing of second motion that
“consisted of virtually verbatim argumentation from the first
motion” on which party had not prevailed).
For the foregoing reasons, Sweetwater’s motion to dismiss
Counts II through V of the first amended complaint is denied.
Sweetwater’s motion to strike D’Pergo’s request for attorney’s
fees under Count I of the first amended complaint is granted.
See doc. no. 44 at ¶ 45.
Additionally, D’Pergo’s request for
attorney’s fees incurred in responding to the pending motion is
United States District Judge
December 11, 2018
Counsel of record
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?