National Entertainment Collectibles Association, Inc. v. Meadwestvaco Corporation

Filing 17

DECISION AND ENTRY DENYING DEFENDANT'S MOTION TO DISMISS AMENDED COMPLAINT (DOC. 10 ). Signed by Judge Timothy S. Black on 12/19/12. (mr1)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF OHIO
WESTERN DIVISION
NATIONAL ENTERTAINMENT
COLLECTIBLES ASSOCIATION, INC.,

:
Case No. 3:12-cv-106
:
:
Judge Timothy S. Black
Plaintiff,
:
:
vs.
:
:
MEADWESTVACO CORPORATION,
:
:
Defendant.
:
________________________________________________________
DECISION AND ENTRY DENYING DEFENDANT’S
MOTION TO DISMISS AMENDED COMPLAINT (DOC. 10)
________________________________________________________
This civil case is before the Court on Defendant MeadWestvaco Corporation’s
(“MWV”) Motion to Dismiss the Amended Complaint. (Doc. 10). Plaintiff National
Entertainment Collectibles Association, Inc. (“NECA”) filed a Memorandum in
Response. (Doc. 13). Thereafter, MWV filed a Reply. (Doc. 16). MWV’s Motion is
now ripe for decision by the Court.
I. FACTS ALLEGED
For purposes of this motion to dismiss, the Court must: (1) view the Complaint in
the light most favorable to Plaintiff, and (2) take all well-pleaded factual allegations as
true. Tackett v. M&G Polymers, 561 F.3d 478, 488 (6th Cir. 2009); Gunasekera v. Irwin,
551 F.3d 461, 466 (6th Cir. 2009).
NECA is a designer, marketer, and worldwide distributor of licensed entertainment
consumer goods based on some of America’s most established and beloved properties,

providing products across all consumer categories. NECA is the primary worldwide
merchandising rights licensee from Lions Gate Films, Inc. to manufacture and distribute
certain products, across all consumer product categories, including stationery and other
paper products bearing trademarks, copyrights, characters, characterizations, designs
and/or visual representations as they appear in The Hunger Games motion picture
franchise. NECA has not authorized MWV to produce or distribute any products.
NECA alleges that one or more MWV sales representatives have made false
representations of fact to buyers at retailers, including but not limited to Target stores,
that MWV is a manufacturer authorized by NECA for The Hunger Games stationery
program. NECA alleges that such misrepresentations are false, misleading, likely to
cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or
association of MWV with NECA, or as to NECA’s sponsorship or approval of MWV’s
offering of stationery products for the Picture. According to NECA, MWV was aware of
NECA’s merchandising rights for the Picture at the time such misrepresentations were
made, having previously contacted NECA seeking rights to produce and distribute
products for The Hunger Games stationery program.
NECA alleges injury as a result of these misrepresentations and that such
misrepresentations constitute unfair competition under Lanham Act, § 43(a), 15 U.S.C.
§ 1125(a) and deceptive trade practices under Ohio Rev. Stat. § 4165.02(A)(2) and (3).
NECA asserts causes of action under the Lanham Act, Ohio’s Deceptive Trade Practices
Act, and Ohio common law for unfair competition. NECA seeks damages, injunctive
relief, attorney fees, costs, and expenses.
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II. STANDARD OF REVIEW
A motion to dismiss pursuant to Fed. R. Civ. P. 12(b)(6) operates to test the
sufficiency of the complaint and permits dismissal of a complaint for “failure to state a
claim upon which relief can be granted.” To show grounds for relief, Fed. R. Civ. P. 8(a)
requires that the complaint contain a “short and plain statement of the claim showing that
the pleader is entitled to relief.”
While Fed. R. Civ. P. 8 “does not require ‘detailed factual allegations,’ . . . it
demands more than an unadorned, the-defendant-unlawfully-harmed-me accusation.”
Ashcroft v. Iqbal, -- U.S. --, 129 S.Ct. 1937, 1949 (2009) (citing Bell Atl. Corp. v.
Twombly, 550 U.S. 544 (2007)). Pleadings offering mere “‘labels and conclusions’ or ‘a
formulaic recitation of the elements of a cause of action will not do.” Id. (citing
Twombly, 550 U.S. at 555). In fact, in determining a motion to dismiss, “courts ‘are not
bound to accept as true a legal conclusion couched as a factual allegation[.]’” Twombly,
550 U.S. at 555 (citing Papasan v. Allain, 478 U.S. 265 (1986). Further, “[f]actual
allegations must be enough to raise a right to relief above the speculative level[.]” Id.
Accordingly, in order “[t]o 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.’” Iqbal, 129 S.Ct. at 1949. A claim is plausible where “plaintiff pleads factual
content that allows the court to draw the reasonable inference that the defendant is liable
for the misconduct alleged.” Id. Plausibility “is not akin to a ‘probability requirement,’
but it asks for more than a sheer possibility that a defendant has acted unlawfully.” Id.

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“[W]here the well-pleaded facts do not permit the court to infer more than the mere
possibility of misconduct, the complaint has alleged—but it has not ‘show[n]’—‘that the
pleader is entitled to relief.’” Id. (citing Fed. Rule Civ. Proc. 8(a)(2)).
III. ANALYSIS
With regard to the substantive claims in the Amended Complaint, MWV argues
that NECA fails to adequately plead a viable Lanham Act claim or claim under Ohio law
because NECA does not specifically allege that MWV actually manufactured Hunger
Games stationery. NECA suggests that MWV merely representing itself as commercially
affiliated, associated or approved by NECA to manufacture Hunger Games stationery is
sufficient to support a Lanham Act claim.
Section 43(a) of Lanham Act, 15 U.S.C. § 1125(a), “provides broad federal
remedies beyond simple trademark protection.” Romero v. Buhimschi, 396 Fed. Appx.
224, 231 (6th Cir. 2010) (citing Dastar Corp. v. Twentieth Century Fox Film Corp., 539
U.S. 23 (2003)); see also Gnesys, Inc. v. Greene, 437 F.3d 482, 489 (6th Cir. 2005).
Specifically, § 43 of the Lanham Act, provides, in relevant part, that:
Any person who, on or in connection with any goods or services, or
any container for goods, uses in commerce any . . . false or
misleading representation of fact, which -(A) is likely to cause confusion, or to cause mistake, or to deceive as
to the affiliation, connection, or association of such person with
another person, or as to the origin, sponsorship, or approval of his or
her goods, services, or commercial activities by another person . . .
...
shall be liable in a civil action by any person who believes that he or
she is or is likely to be damaged by such act.
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15 U.S.C. § 1125(a)(1)(A).
Here, the Amended Complaint alleges that MWV falsely represented to retailers
that it is authorized by NECA to manufacture Hunger Games stationery. It is plausible on
the face of the allegations that such false representations could deceive, confuse or cause
mistake as to NECA’s approval of MWV’s purported goods, or at the least, MWV’s
commercial activities. See Proctor & Gamble Co. v. Haugen, 222 F.3d 1262, 1273 (10th
Cir. 2000) (stating that the Lanham Act permits “actions based on misrepresentations
about commercial activities as well as goods and services”).
MWV suggests that the term “goods” in § 1125(a) is limited and refers only to
then-existing goods, i.e., goods that have actually been manufactured. MWV cites no
authority for such a proposition. Nevertheless, even accepting such a conclusion, the
Court can reasonably infer that MWV manufactured Hunger Games stationery products
from NECA’s allegation that MWV offered Hunger Games stationery products to
retailers. Thus, the Amended Complaint sufficiently alleges a Lanham Act aim under 15
U.S.C. § 1125(a)(1)(A).
With regard to NECA’s claims asserted under Ohio Rev. Code §§ 4165.02(A)(2)
and (3), and Ohio common law, courts note generally that “[t]he same analysis that
applies to an unfair competition claim under the Lanham Act also applies to an unfair
competition claim under Ohio law.” Leisure Systems, Inc. v. Roundup, LLC, No.
1:11–cv–384, 2012 WL 5378302, *21 (S.D. Ohio Oct. 31, 2012) (citations omitted).
Thus, the Court’s “discussion of the Lanham Act claim encompasses the Ohio unfair
competition claim as well.” Id. (citations omitted).
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Finally, MWV moves to dismiss NECA’s prayer for injunctive relief arguing that
NECA fails to plead irreparable injury. “In the Sixth Circuit, ‘[i]njunctive relief is the
remedy of choice for trademark and unfair competition cases, since there is no adequate
remedy at law for the injury caused by a defendant's continuing infringement.’” Maker's
Mark Distillery, Inc. v. Diageo North America, Inc., 703 F. Supp.2d 671, 700 (W.D. Ky.
2010) (citations omitted).
To obtain a permanent injunction, a plaintiff must demonstrate “that (1) it has
suffered irreparable injury, (2) there is no adequate remedy at law, (3) a remedy in equity
is warranted when considering the balance of hardships between the parties, and (4) it is
in the public's interest to issue the injunction.” Id. (citations omitted). “Generally,
irreparable injury . . . is presumed from a showing of success on the merits[.]” Id. (citing
DaimlerChrysler v. The Net Inc., 388 F.3d 201, 208 (6th Cir.2004); Circuit City Stores,
Inc. v. CarMax, Inc., 165 F.3d 1047, 1056 (6th Cir.1999)). Here, because NECA
plausibly pleads a Lanham Act claim, the Court declines to dismiss a remedy that NECA
seeks in conjunction with such claim.
IV. CONCLUSION
Accordingly, based on the foregoing, Defendant MeadWestvaco Corporation’s
Motion to Dismiss the Amended Complaint is DENIED. (Doc. 10).
IT IS SO ORDERED.

Date: December 19, 2012

s/ Timothy S. Black
Timothy S. Black
United States District Judge

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