Lopez v. BigCommerce, Inc. et al

Filing 27

OPINION AND ORDER: re: 18 MOTION to Dismiss the First Amended Complaint filed by Google, Inc., 13 MOTION to Amend/Correct 3 Amended Complaint filed by Robert G. Lopez. For the foregoing reasons, Google's motion to dismiss is GRANTED an d Plaintiff's motion to amend is DENIED. The Clerk of Court is directed to close the motions at Docket Number 13 and Docket Number 18, and to close the case. SO ORDERED. (Signed by Judge J. Paul Oetken on 8/01/2017) Copies Mailed By Chambers. (ama)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
ROBERT G. LOPEZ,

Plaintiff,

16-CV-8970 (JPO)

-vBIGCOMMERCE, INC. and GOOGLE, INC.,
Defendants.

OPINION AND ORDER

J. PAUL OETKEN, District Judge:
Robert G. Lopez, proceeding pro se, brings this action against Defendants BigCommerce,
Inc. (“BigCommerce”) and Google, Inc. (“Google”), asserting six causes of action arising from
the alleged infringement of his intellectual property. (Dkt. No. 3 (First Amended Complaint or
“FAC”).) Lopez seeks leave to file a second amended complaint, adding a seventh cause of
action against Google’s counsel for fraudulent misrepresentation. (Dkt. No. 13.) Google moves
to dismiss all of Lopez’s claims and opposes Lopez’s request to amend. (Dkt. No. 18; Dkt. No.
15.) For the reasons that follow, Google’s motion to dismiss is granted and Lopez’s motion to
file a second amended complaint is denied.
I.

Background
The following facts are taken from the operative complaint and are presumed true for the

purposes of this motion.
This action was initially commenced against both BigCommerce 1 and Google. (FAC
¶¶ 9-10.) Lopez now indicates that he is no longer pursuing any claims against BigCommerce,

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According to the FAC, “BigCommerce is an ecommerce website provider that
provides hosting, shopping cart and other similar services to businesses in the apparel industry
and is an online company that hosts, exploits and publishes photographs and other images of
clothing products.” (FAC ¶ 21.)
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since BigCommerce took corrective action after being notified by Lopez of its allegedly
infringing activity. (Dkt. No. 21 at 3.) Google, therefore, is now the sole Defendant in this case.
According to the FAC, Google is “an online search engine provider” that “receives
money and compensation through Google Adwords and in other ways from the search of
products by keywords and publishes and exploits photographs and other images on the
worldwide internet.” (FAC ¶ 23.)
Lopez alleges that he, through his clothing business L.E.S. Clothing Co., is the owner of
a stylized “HUSTLE” trademark, registered with New York State, which is printed on hats and
other clothing items and sold from retail stores in New York, New Jersey, and Connecticut. (Id.
¶¶ 2, 11-20.) Lopez is also the owner of a federally registered copyright in the design of a cap
bearing the stylized HUSTLE mark, titled the “Hustle Snapback Design.” (Id. ¶¶ 2, 19.) Lopez
alleges that Google “published and exploited a photograph and image of a cap which was a copy
of Plaintiff’s registered copyright and which also violates Plaintiff’s trademark.” (Id. ¶ 26.)
Lopez alleges that use of his intellectual property occurred without his consent, for commercial
gain, and has resulted in actual confusion in the marketplace. (Id. ¶¶ 27-28, 30.) Google moves
to dismiss. (Dkt. No. 18.)
II.

Motion to Dismiss
A.

Legal Standard

In considering a motion to dismiss for failure to state a claim, the Court accepts as true all
allegations in the complaint and draws all reasonable inferences in Plaintiff’s favor. Cleveland v.
Caplaw Enters., 448 F.3d 518, 521 (2d Cir. 2006). To survive a motion to dismiss, the
complaint must plead “enough facts to state a claim to relief that is plausible on its face.” Bell
Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). “A claim has facial plausibility when the
plaintiff pleads factual content that allows the court to draw the reasonable inference that the
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defendant is liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).
“Moreover, ‘[a] document filed pro se is to be liberally construed, and a pro se complaint,
however inartfully pleaded, must be held to less stringent standards than formal pleadings drafted
by lawyers.’” Henning v. N.Y.C. Dep’t of Correction, No. 14 Civ. 9798, 2016 WL 297725, at *1
(S.D.N.Y. Jan. 22, 2016) (alteration in original) (internal quotation marks omitted) (quoting
Erickson v. Pardus, 551 U.S. 89, 94 (2007)).
B.

Discussion

Lopez asserts six causes of action: (1) trademark infringement under the Lanham Act; (2)
unfair competition and false designation of origin under the Lanham Act; (3) trademark
infringement and unfair competition under New York common law; (4) copyright infringement
under the Digital Millennium Copyright Act (“DMCA”), 17 U.S.C. § 101, et seq.; (5) unjust
enrichment; and (6) conversion. (FAC ¶¶ 31-56.)
Google moves to dismiss all of Lopez’s claims for failure to make specific allegations of
misconduct as to Google. (Dkt. No. 19 at 6-7.) Google also moves to dismiss Lopez’s
trademark infringement, unfair competition, and copyright infringement claims for failure to
state a claim and Lopez’s claims for unjust enrichment and conversion for either failure to state a
claim or as preempted by the Copyright Act. (Id. at 7-17.) The Court addresses each argument
before turning to Lopez’s motion to file a Second Amended Complaint.
1.

Specific Allegations

Federal Rule of Civil Procedure 8 requires 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.” Fed. R. Civ. P. 8(a)(2). Rule 8 does not require “that a complaint be a model of clarity
or exhaustively present the facts alleged,” Atuahene v. City of Hartford, 10 F. App’x 33, 34 (2d
Cir. 2001), but it should give the opposing party “fair notice” of the claim to enable that party to
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answer and prepare for trial, id. (quoting Ferro v. Ry. Express Agency, Inc., 296 F.2d 847, 851
(2d Cir. 1961)). A complaint may fail to meet this standard if it does not sufficiently distinguish
between multiple defendants, making it impossible for any particular defendant to know what
alleged conduct it is liable for. See id. Google argues that all of Lopez’s claims must be
dismissed for failure to make specific allegation of misconduct as to Google. (Dkt. No. 19 at 67.)
Here, the FAC frequently refers to “Defendants” without distinguishing between Google
and BigCommerce (see, e.g., FAC ¶¶ 1-4, 27-30); and none of the six causes of action expressly
distinguishes between the two originally named defendants (see id. ¶¶ 31-56). Nevertheless, as
regards Google’s liability under the six causes of action, Lopez has pleaded enough to put
Google on notice of the factual bases of the pleaded claims.
Lopez specifically alleges that “Defendant Google, Inc. published and exploited a
photograph and image of a cap which was a copy of Plaintiff’s registered copyright and which
also violates Plaintiff’s trademark.” (Id. ¶ 26.) Lopez also attached an exhibit to the FAC, which
displays “[o]ne of the cap design images and photographs copied, published and exploited by
Defendants.” (Id. ¶ 29, Ex. D.) The exhibit, in turns, displays a photograph of a cap along with
a Google web address. 2 (Id. Ex. D.) Unlike in Atuahene, Lopez provides some factual basis for
liability. And unlike in Spinelli, only two Defendants are named in the Complaint (though Lopez
is no longer pursuing claims against BigCommerce), not thirty-two. Construed liberally, in
accordance with Lopez’s pro se status, Lopez’s complaint satisfies the Rule 8 pleading
requirement to provide the opposing party “fair notice” of the claim to enable that party to
answer and prepare for trial.

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The web address shown on the exhibit is https://www.google.com/blank.html.
(FAC, Ex. D.) This link directs the user to a blank webpage.
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2.

Trademark Claims

Counts One through Three of the FAC allege: (1) trademark infringement under Section
32(1) of the Lanham Act, 15 U.S.C. §§ 1114-16; (2) unfair competition and false designation of
origin under Section 43 of the Lanham Act, 15 U.S.C. § 1125(a); and (3) trademark infringement
and unfair competition under New York common law. (FAC ¶¶ 31-42.)
As to Count One, “[r]egistration of a mark under § 2 of the Lanham Act, 15 U.S.C.
§ 1052, enables the owner to sue an infringer under § 32, 15 U.S.C. § 1114.” Wal-Mart Stores,
Inc. v. Samara Bros., Inc., 529 U.S. 205, 209 (2000). Here, Lopez has alleged registration of the
stylized HUSTLE mark with New York State (FAC ¶ 20; id. Ex. C), but has not demonstrated
registration in compliance with Section 2 of the Lanham Act, 15 U.S.C. § 1052. See Globalaw
Ltd. v. Carmon & Carmon Law Office, 452 F. Supp. 2d 1, 25 (D.D.C. 2006) (holding that where
a party does not “hold a mark . . . that has been successfully registered on the United States
Principal Register of Trademarks,” it “is not a ‘registrant’ under the parameters of Section 32(1)
and cannot bring a claim pursuant to that section.”). Accordingly, Count One must be dismissed.
Count Two of the FAC alleges unfair competition and false designation of origin under
Section 43 of the Lanham Act, 15 U.S.C. § 1125(a), which protects unregistered trademarks. See
Matal v. Tam, 137 S. Ct. 1744, 1752 (2017). Section 43 requires that the owner of any registered
or non-registered mark demonstrate, among other things, that the mark was “use[d] in
commerce.” 3 15 U.S.C. § 1125(a). “‘[U]se’ must be decided as a threshold matter because,
while any number of activities may be ‘in commerce’ or create a likelihood of confusion, no

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Lopez mistakenly asserts that “it is not a Plaintiff’s burden or obligation in a
trademark infringement action to show that the accused mark is used in a trademark sense and
only to show that the accused mark creates a likelihood of confusion.” (Dkt. No. 21 at 4.) See
Kelly-Brown v. Winfrey, 717 F.3d 295, 305 (2d Cir. 2013) (“Plaintiffs are required to show ‘use
in commerce’ as an element of an infringement claim.”).
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such activity is actionable under the Lanham Act absent the ‘use’ of a trademark.” 1-800
Contacts, Inc. v. WhenU.Com, Inc., 414 F.3d 400, 412 (2d Cir. 2005). In the case of an operator
of a search engine, such as Google, a mark is used in commerce where “Google displays, offers,
and sells [the] mark to Google’s advertising customers when selling its advertising services.”
Rescuecom Corp. v. Google Inc., 562 F.3d 123, 129 (2d Cir. 2009).
Here, the FAC alleges that Google “published and exploited a photograph and image of a
cap” that displayed Lopez’s mark. (FAC ¶ 26.) And while the FAC generally describes Google
as a company that “receives money and compensation through Google Adwords and in other
ways from the search of products by keywords” (id. ¶ 23), Lopez does not allege that Google has
ever offered or sold his mark. Instead, his theory of Google’s alleged infringement is premised
on the appearance of his images in organic search results, not paid advertisements. (See id, Ex.
D (displaying an image of Plaintiff’s mark on a webpage with a Google web address); Dkt. No.
23 (describing “additional acts of infringement” discovered by “conducting a Google search of
the hashtag #rrhustle”).) “The mere appearance of Plaintiff’s name or image as part of the search
results displayed in response to a user-generated query does not mean that the relevant company
used Plaintiff’s name for advertising or trade purposes.” Obado v. Magedson, No. 13 Civ. 2382,
2014 WL 3778261, at *7 (D.N.J. July 31, 2014), aff’d, 612 F. App’x 90 (3d Cir. 2015). See also
Stayart v. Yahoo! Inc., No. 10 Civ. 43, 2011 WL 3625242, at *3 (E.D. Wis. Aug. 17, 2011).
Lopez has not alleged facts sufficient to demonstrate use in commerce and “has not identified
any advertisements using his marks from which [Google] received monetary benefit.”
Manchanda v. Google, No. 16 Civ. 3350, 2016 WL 6806250, at *4 n.5 (S.D.N.Y. Nov. 16,
2016). Cf. Gov’t Emps. Ins. Co. v. Google, Inc., 330 F. Supp. 2d 700, 703-04 (E.D. Va. 2004)
(holding that Google’s sale to advertisers of right to use specific trademarks as “keywords” to
trigger their ads as “sponsored links” in Google search results constituted “use in commerce”).
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Because Lopez does not sufficiently allege that Google used his mark in commerce, Count Two
of the FAC must be dismissed.
As to Count Three, which asserts trademark infringement and unfair competition under
New York common law, the legal standards are “virtually identical” to the standards for
trademark infringement and unfair competition under the Lanham Act, except that the New York
common law claims “require[] an additional showing of bad faith.” TechnoMarine SA v. Jacob
Time, Inc., No. 12 Civ. 0790, 2012 WL 2497276, at *5 (S.D.N.Y. June 22, 2012). Because
Lopez has failed to prove his Lanham Act claims, his New York common law trademark and
unfair competition claims must also be dismissed. See Tiffany (NJ) Inc. v. eBay, Inc., 576 F.
Supp. 2d 463, 519 (S.D.N.Y. 2008) (“Since Tiffany has failed to prove its Lanham Act claims, it
follows a fortiori that it has failed to prove its common law claims as well.”), aff’d in relevant
part, 600 F.3d 93, 101 n.6 (2d Cir. 2010).
3.

Copyright Claims

Count Four of the FAC alleges that Google is liable for copyright infringement under the
DMCA. As described above, Lopez’s theory of infringement is premised on allegations that his
intellectual property is displayed when certain searches are performed on Google’s search
engine. (See FAC ¶ 26 (Lopez “is informed and believes and thereon alleges that [Google]
published and exploited a photograph and image of a cap which was a copy of Plaintiff’s
registered copyright.”).) However, because a search engine’s display of thumbnail images in
search results is a non-infringing fair use, this theory of copyright infringement fails. See
Authors Guild v. Google, Inc., 804 F.3d 202, 229 (2d Cir. 2015) (holding that “Google’s
unauthorized digitizing of copyright-protected works, creation of a search functionality, and
display of snippets from those works are non-infringing fair uses”); Perfect 10, Inc. v.

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Amazon.com, Inc., 508 F.3d 1146, 1168 (9th Cir. 2007) (holding that Google’s display of
thumbnail images in search results is likely to be a fair use).
In any event, the FAC does not provide sufficient specificity to properly plead copyright
infringement, as it fails to identify any specific instances of infringement. See Ritani, LLC v.
Aghjayan, 880 F. Supp. 2d 425, 440–41 (S.D.N.Y. 2012). Indeed, Google indicates that were
Lopez to identify a specific URL or location where infringing material is found, it would remove
any allegedly infringing materials from its search results. (Dkt. No. 19 at 12 n.4.)
Accordingly, Count Four must be dismissed.
4.

Unjust Enrichment Claims

Lopez alleges in Count Five that Google is liable for unjust enrichment because it has
“unjustly retained profits from the sale, order processing and advertising of clothing goods and
accessories bearing Plaintiff’s HUSTLE™ mark as well as Plaintiff’s copyrighted Hustle
Snapback Design.” (FAC ¶ 51.)
“‘[T]he theory of unjust enrichment lies as a quasi-contract claim’ and contemplates ‘an
obligation imposed by equity to prevent injustice, in the absence of an actual agreement between
the parties.’” Georgia Malone & Co. v. Rieder, 19 N.Y.3d 511, 516 (2012) (quoting IDT Corp.
v. Morgan Stanley Dean Witter & Co., 12 N.Y.3d 132, 142 (2009)). “[T]here are no indicia of
an enrichment that was unjust where the pleadings fail[] to indicate a relationship between the
parties that could have caused reliance or inducement.” Mandarin Trading Ltd. v. Wildenstein,
16 N.Y.3d 173, 182 (2011). Here, Lopez does not allege any connection or relationship to
Google that could have caused any reliance or inducement. As such, Count Five must be
dismissed. 4

4

Google also points out that any claim for unjust enrichment is expressly
preempted by Section 301 of the Copyright Act. (Dkt. No. 19 at 14-15.) Section 301 preempts
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5.

Conversion Claim

Count Six alleges that Google is liable for conversion because it has “continued and [is]
presently using Plaintiff’s HUSTLE™ copyright and trademark” and because it has
“continuously introduced, sold and/or offered for sale products bearing Plaintiff’s trademarks
and copyright and [is] continuing to profit off of Plaintiff[’s] intellectual property.” (FAC ¶¶ 5455.) “Under New York law, ‘[a] conversion takes place when someone, intentionally and
without authority, assumes or exercises control over personal property belonging to someone
else, interfering with that person’s right of possession.’” Woolcott v. Baratta, No. 13 Civ. 2964,
2014 WL 1814130, at *10 (E.D.N.Y. May 7, 2014) (second alteration in original) (quoting
Colavito v. N.Y. Organ Donor Network, Inc., 8 N.Y.3d 43, 49-50 (2006)). A plaintiff fails to
state a claim for conversion where there is no interference with his right of possession and he
maintains access to the allegedly converted intangible intellectual property. See Stanacard, LLC,
2016 WL 462508, at *20 (noting that while “misappropriation of intangible property, such as
electronic records stored on a computer, can give rise to a claim for conversion, an action for
conversion of intangible property must still satisfy the requirement of unauthorized dominion
and control to the complete exclusion of the rightful possessor” (citations omitted)). 5

“those state law rights that ‘may be abridged by an act which, in and of itself, would infringe one
of the exclusive rights’ provided by federal copyright law.” Computer Assocs. Int’l v. Altai, Inc.,
982 F.2d 693, 716 (2d Cir. 1992) (quoting Harper & Row, Publishers, Inc. v. Nation Enters., 723
F.2d 195, 200 (2d Cir. 1983)). Where, as here, Plaintiff’s claim for unjust enrichment is based
entirely on the alleged unauthorized use of his copyrighted design, it is preempted. See
Stanacard, LLC v. Rubard, LLC, No. 12 Civ. 5176, 2016 WL 462508, at *22 (S.D.N.Y. Feb. 3,
2016) (“Where the gravamen of an unjust enrichment claim is that defendants ‘unjustly
benefitted from unauthorized use’ of a work within the scope of the Copyright Act—precisely
what Plaintiff alleges here—the claim is preempted.” (quoting Einiger v. Citigroup, Inc., No.
1:14–CV–4570–GHW, 2014 WL 4494139, at *6 (S.D.N.Y. Sept. 12, 2014))).
5

Google points out that, even if conversion were properly pleaded, it would be
preempted by Section 301 of the Copyright Act. See Kakizaki v. Riedel, 811 F. Supp. 129, 133
(S.D.N.Y. 1992) (“Although conversion is actually a claim based on the physical taking of the
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Lopez’s claim of conversion is based on the notion that Google used his copyrighted
design and trademark—intangible intellectual property—without authorization. (FAC ¶¶ 54-55.)
And while New York courts have held that the misappropriation of intangible property, such as
electronic records stored on a computer, can give rise to a claim for conversion, Thyroff v.
Nationwide Mut. Ins. Co., 8 N.Y.3d 283, 292 (2007), an action for conversion of intangible
property must still satisfy the requirement of unauthorized dominion and control to the complete
exclusion of the rightful possessor, Vigilant Ins. Co. of Am. v. Hous. Auth. of City of El Paso,
Tex., 87 N.Y.2d 36, 44 (1995). Here, Lopez does not allege that Google alleged infringement
interfered with Plaintiff’s use of his copyright and trademark. Accordingly, Count Six must be
dismissed.
For the reasons discussed above, all of Lopez’s claims must be dismissed as they fail to
state a claim or are preempted by the Copyright Act.
III.

Motion to Amend
Also pending before this Court is Lopez’s motion to file a second amended complaint.

(Dkt. No. 13.) The proposed amendment does not address any of the issues discussed in the
preceding analysis, but instead seeks to add a new claim, which alleges that Google’s counsel is
liable for fraud resulting from certain alleged misrepresentations made in submissions to the
Court. (See Dkt. No. 13-1 ¶¶ 62-65.)
In particular, on January 10, 2017, counsel for Google filed a letter motion with the Court
requesting a 30-day extension of time to answer or otherwise respond to the FAC. (Dkt. No. 6.)

property of another, plaintiff alleges that defendant’s use of the photo by reproducing copies of it
amounts to misappropriation and conversion. Thus, plaintiff is actually alleging that defendant
infringed his copyright in his expression as embodied in the photo. Such an act on defendant’s
part is covered by the Copyright Act of 1976 and plaintiff’s claim is therefore preempted.”).
Because Lopez’s claim for conversion is coextensive with an exclusive right already protected
by the Copyright Act, it is preempted.
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Google represented in that submission that (1) even though Google had agreed to accept a
service waiver under Federal Rule of Civil Procedure 4(d), Lopez formally served Google on
January 4, 2017; (2) Lopez refused to consent to a 30-day extension on the ground that Google
was provided a courtesy copy of the FAC prior to service; and (3) Lopez wrote to Google to
indicate that he “will not be extending any courtesies at all to Google” throughout the litigation.
(Id.) Lopez characterized these as false statements meant to deceive the Court. (Dkt. No. 9.)
In the proposed Second Amended Complaint, Lopez alleges that Wilson Sonsoni
Goodrich & Rosati, PC and Brian M. Willen, while acting as Google’s counsel in this case,
“submitted a Letter Motion Pleading to the Court in this action containing materially false
representations of fact in an effort to deceive and persuade the Court into granting it an extension
of time to file an Answer to the First Amended Complaint filed in this action.” (Dkt. No. 13-1
¶ 34; see also id. ¶¶ 5, 64.) Accordingly, Plaintiff seeks to add a seventh count to the complaint,
alleging fraud against Google’s counsel. (Id. ¶¶ 62-65.)
Pursuant to Rule 15(a)(2) of the Federal Rules of Civil Procedure, leave to amend should
be given “freely . . . when justice so requires.” Fed. R. Civ. Proc. 15(a)(2). “Under this
standard, courts grant leave to amend unless the proposed amendment is futile, the amendment
would unduly prejudice the opposing party, or the movant has unduly delayed, acted in bad faith,
or repeatedly failed to cure deficiencies in previous pleadings.” Danaher Corp. v. The Travelers
Indem. Co., No. 10 Civ. 121, 2016 WL 1255739, at *3 (S.D.N.Y. Mar. 30, 2016). “For pro se
litigants, broad leave to replead is generally appropriate, since they lack the legal acumen and
experience to differentiate successful claims from unsuccessful ones.” Moriates v. City of N.Y.,
No. 13 Civ. 4845, 2016 WL 3566656, at *2 (E.D.N.Y. June 24, 2016). Google opposes
Plaintiff’s motion to amend on the ground that it is both futile and frivolous. (Dkt. No. 15 at 1.)

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Under New York law, “[t]he elements of a fraud cause of action consist of ‘a
misrepresentation or a material omission of fact which was false and known to be false by [the]
defendant, made for the purpose of inducing the other party to rely upon it, justifiable reliance of
the other party on the misrepresentation or material omission, and injury.’” Pasternack v. Lab.
Corp. of Am. Holdings, 27 N.Y.3d 817, 827 (2016) (second alternation in original) (quoting
Mandarin Trading Ltd. v. Wildenstein, 16 N.Y.3d 173, 178 (2011)). The proposed Second
Amended Complaint (Dkt. No. 13-1) does not identify any particular statement made by
Google’s counsel. Nor does it allege that the Plaintiff relied upon any statement made by
Google’s counsel or provide any allegation of injury. For these reasons, the motion to amend to
add allegations of fraud must be denied.
IV.

Conclusion
For the foregoing reasons, Google’s motion to dismiss is GRANTED and Plaintiff’s

motion to amend is DENIED.
The Clerk of Court is directed to close the motions at Docket Number 13 and Docket
Number 18, and to close the case.
SO ORDERED.
Dated: August 1, 2017
New York, New York
____________________________________
J. PAUL OETKEN
United States District Judge
COPY MAILED TO PRO SE PARTY BY CHAMBERS

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