Kenyon v. Clare et al

Filing 64

MEMORANDUM AND ORDER: Clare's motion to dismiss (Doc. No. 41 ) is GRANTED IN PART with respect to Kenyons unfair competition claim, and DENIED IN PART in all other respects. In accordance with Federal Rule of Civil Procedure 12(a)(4) (A), Cla re shall file a responsive pleading within fourteen days of the date of this Order. Signed by District Judge Waverly D. Crenshaw, Jr on 11/29/2016. (DOCKET TEXT SUMMARY ONLY-ATTORNEYS MUST OPEN THE PDF AND READ THE ORDER.)(eh)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF TENNESSEE
NASHVILLE DIVISION
SHERRILYN KENYON,
Plaintiff,
v.
CASSANDRA CLARE and DOES
1 THROUGH 50,

)
)
)
)
)
)
)
)
)

NO. 3:16-cv-00191
JUDGE CRENSHAW

Defendants.
MEMORANDUM AND ORDER
Sherrilyn Kenyon brought this action against Cassandra Clare and Does 1 through 50,
alleging multiple federal copyright violations arising from Clare’s books, the “Shadowhunter
Series.” (Doc. No. 30.) Before the Court is Clare’s Motion to Dismiss (Doc. No. 41), arguing that
the Court does not have personal jurisdiction over her, and even if it did, Kenyon’s claims are
time-barred. For the following reasons, Clare’s motion is GRANTED IN PART and DENIED
IN PART.
I.

ALLEGATIONS
Beginning in 1998, Kenyon published the “Dark-Hunter Series,” a series of books, short

stories, and other original material. (Doc. No. 30 at 1.) Kenyon owns the trademark rights to certain
marks, such as “Dark-Hunter,” “Dream-Hunter,” and “Were-Hunter.” (Id. at 4.) In or around 2000,
Kenyon registered and began using the website domain name “dark-hunter.com” to promote her
Dark-Hunter Series and provide additional content regarding the Dark-Hunter world. (Id. at 5.)
Kenyon also produced several television commercials and videos, broadcast on major television
networks and streaming sites, including “darkhunter.tv.” (Id.) There is also a variety of Dark-

Hunter merchandise, such as a line of Ashton-Drake collectible dolls, clothing, coloring books,
jewelry, and novelty items. (Id. at 6.)
In 2006, Clare began marketing a work that incorporated one of Kenyon’s Dark-Hunter
trademarks as the name of one of Clare’s protagonists. (Id.) Kenyon demanded that Clare remove
the term “Darkhunter,” and Clare replaced the term with “Shadowhunters.” (Id.) Clare and her
publishers assured Kenyon that “Shadowhunters” would be used solely for the name of Clare’s
protagonists and that they would not expand the use of the “Shadowhunters” term or adopt it as a
trademark. (Id.) In 2007, Clare published the book, “The Mortal Instruments: City of Bones.” (Id.)
In 2009, Clare again assured Kenyon that she would not expand her use of the term
“Shadowhunters.” (Id.)
In late-2008 or early-2009, Clare’s publisher printed approximately 100,000 copies of a
Shadowhunters book, mistakenly referring to the story’s protagonists as “Darkhunters” instead of
“Shadowhunters” on the back cover. (Id.) When Kenyon became aware of the mislabeled
Shadowhunters books, she demanded that Clare correct the mislabeling, recall the mislabeled
books that have been sold, and make an announcement on her website regarding her mislabeling.
(Id. at 8-9.) Clare’s publisher destroyed some of the mislabeled books, but refused to recall the
books already in stores or sold. (Id. at 9.) The non-recalled books were sold across the country,
including in Franklin, Tennessee. (Id.) These books led to confusion in the marketplace, where
some purchasers thought that Clare was one of Kenyon’s pennames. (Id. at 10.) The confusion
exists today, where readers searching for one of Kenyon’s books may be led to Clare’s books in
libraries and elsewhere. (Id. at 11.)
Recently, Clare began using the website domain name “shadowhunters.com” to promote
her novels, which the website describes as “Cassandra Clare’s Shadowhunters.” (Id. at 7.) Clare

2

wrote a motion picture called “Mortal Instruments: City of Bones,” which was released in 2013.
(Id.) This motion picture was primarily promoted and discussed through the use of the term
“Shadowhunters.” Clare also wrote a television series, titled “Shadowhunters: The Mortal
Instruments,” which was released in 2015. (Id.) This television show is promoted on a website
called, “shadowhunterstv.com.” Also in 2015, Clare released redesigned book covers that printed
the words “A Shadowhunters Novel” along the right side or bottom of the covers. (Id. at 8.)
The confusion is intensified by the similarities between the books. (Id. at 11-12.) Both
series are derivative works and are “promoted, discussed, and celebrated in similar online forums
and at similar conventions.” (Id. at 12.) The books have similar themes and are marketed to similar
audiences. (Id.) Both series share a similar origin story. (Id. at 13.) Further, Kenyon uses a creed
and tagline that includes the term “shadow,” stating: “We are Darkness. We are Shadow. We are
Rulers of the Night. We are the Dark-Hunters.” (Id.) The visual representations of the
Shadowhunters are similar to the visual representations of the Dark-Hunters, including the
representations on the book covers, marketing material, graphic novels, website, on the television
show and movie, and on marketing materials and merchandise. (Id. at 14.)
II.

PROCEDURAL HISTORY
On February 5, 2016, Kenyon filed the instant Complaint against Clare. (Doc. No. 1.) On

February 19, 2016, Clare’s attorneys entered a Notice of Appearance, stating that they “enter their
appearance as counsel of record for Defendant Cassandra Clare . . . .” (Doc. No. 3.) On February
26, 2016, Clare waived service of the summons on her, but reserved “all defenses or objections to
the lawsuit, the court’s jurisdiction, and the venue of the action . . . .” (Doc. No. 12.) On April 8,
2016, the Magistrate Judge issued the Initial Case Management Order, which stated that Clare

3

wished to contest personal jurisdiction. (Doc. No. 16 at 2.) On April 25, 2016, Clare filed a timely
motion to dismiss for lack of personal jurisdiction. (Doc. No. 17.)
III.

STANDARD OF REVIEW
Rule 12(b)(2) allows a defendant to file a motion to dismiss for lack of personal

jurisdiction. “In a diversity action, the law of the forum state dictates whether personal jurisdiction
exists, subject to constitutional limitations.” Intera Corp. v. Henderson, 428 F.3d 605, 615 (6th
Cir. 2005). Tennessee’s long-arm statute, Tennessee Code Annotated § 20-2-214, provides that a
Tennessee court may exercise jurisdiction over an out-of-state defendant on “[a]ny basis not
inconsistent with the constitution of this state or of the United States.” Id. at (6). Accordingly, the
long-arm statute has been consistently construed to extend to the limits of federal due
process. Gordon v. Greenview Hosp., Inc., 300 S.W.3d 635, 645 (Tenn. 2009).
For purposes of a motion to dismiss under Rule 12(b)(6), the Court must take all the factual
allegations in the complaint as true. Ashcroft v. Iqbal, 556 U.S. 662, 677 (2009). To survive a
motion to dismiss, a complaint must contain sufficient factual matter, accepted as true, to state a
claim for relief that is plausible on its face. Id. 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. Threadbare recitals of the elements of a cause of action,
supported by mere conclusory statements, do not suffice. Id. 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. at 679. A legal conclusion couched as a factual allegation need
not be accepted as true on a motion to dismiss, nor are recitations of the elements of a cause of
action sufficient. Fritz v. Charter Township of Comstock, 592 F.3d 718, 722 (6th Cir. 2010).

4

IV.

ANALYSIS
Clare moves to dismiss the Complaint for lack of personal jurisdiction and because Kenyon

fails to state a claim upon which she is entitled relief. (Doc. No. 43.)
A. PERSONAL JURISDICTION
Clare contends that the Court lacks personal jurisdiction over her. (Doc. No. 43 at 12.)
Kenyon argues that Clare waived this argument by entering a general Notice of Appearance. (Doc.
No. 45 at 2.)
A defendant waives her personal jurisdiction defense if “submissions, appearances and
filings . . . give ‘[the p]laintiff a reasonable expectation that [the defendant] will defend the suit on
the merits or . . . cause the court to go to some effort that would be wasted if personal jurisdiction
is later found lacking.’” Means v. United States Conference of Catholic Bishops, --- F.3d ---, 2016
WL 4698275, at *3 (6th Cir. 2016) (quoting Gerber v. Riordan, 649 F.3d 514, 519 (6th Cir. 2011)).
When a defendant files a “general appearance with the district court,” it constitutes “a voluntary
acceptance of the district court’s jurisdiction, and therefore, a waiver of [the d]efendant[‘s]
personal jurisdiction defense.” Gerber, 649 F.3d at 520.
Here, Clare entered a general notice of appearance on February 19, 2016, thereby
consenting to the Court’s jurisdiction. (Doc. No. 3.) Her arguments that Gerber, by discussing
other filings that could consent to a district court’s jurisdiction in its dicta, announced a different
standard for analyzing waiver does not hold up with the Sixth Circuit’s recent
decisions. Compare M & C Corp. v. Erwin Behr GmbH & Co., KG, 508 Fed. Appx. 498, 502 (6th
Cir. Dec. 17, 2012) (“Rather than finding that the defendants waived personal jurisdiction by
participating in the litigation for two and a half years without raising [their personal jurisdiction
defense], we instead held that they waived it by virtue of the general appearance.”) with Means, -

5

-- F.3d ---, 2016 WL 4698275, at *3 (finding that a defendant did not waive its personal jurisdiction
defense by filing a special appearance, rather than a general appearance). Similarly, her argument
that the Court’s Local Rules require her to file a notice of appearance is not persuasive because
they do not specify the form of the notice of appearance, leaving it open whether the defendant
wishes to file a special or general appearance. The Court is bound by precedent, and finds that
Clare waived her personal jurisdiction defense. As such, the Court does not reach the much closer
question of whether it would have personal jurisdiction over Clare had she not waived that defense.
B. FAILURE TO STATE A CLAIM
Clare moves to dismiss the case for failure to state a claim because the trademark claims
are time-barred and, as a matter of law, there is no trademark confusion. (Doc. No. 43 at 3.)
1. Doctrine of Laches
Clare first moves to dismiss the trademark claims because Lanham Act cases are governed
by a three-year doctrine of laches. (Doc. No. 43 at 17-18.) She claims that Kenyon learned about
the alleged-infringement in 2006 and unreasonably delayed bringing this action. (Id. at 18.) She
further contends that she has been prejudiced by this delay. (Id. at 20.) Clare argues that the
doctrine of laches is necessarily an intensive fact-based inquiry that is not appropriate to analyze
on a motion to dismiss. (Doc. No. 45 at 19-20.)
When deciding whether a suit is time-barred under the doctrine of laches, a court should
consider “(1) whether the owner of the mark knew of the infringing use; (2) whether the owner’s
delay in challenging the infringement of the mark was inexcusable or unreasonable; and (3)
whether the infringing user was unduly prejudiced by the owner’s delay.” Audi AG v. D’Amato,
469 F.3d 534, 545-46 (6th Cir. 2006) (quoting Kellogg Co. v. Exxon Corp., 209 F.3d 562, 569
(6th Cir. 2000)). “Unlike statutes of limitations, ‘laches is not . . . a mere matter of time; but

6

principally a question of the inequity of permitting the claim to be enforced.’” Ford Motor Co. v.
Catalanotte, 342 F.3d 543, 550 (6th Cir. 2003) (quoting Holmberg v. Armbrecht, 327 U.S. 392,
396 (1946)). The doctrine of laches is an affirmative defense that the defendant must
prove. D’Amato, 469 F.3d at 546. “Courts generally cannot grant motions to dismiss on the basis
of an affirmative defense unless the plaintiff has anticipated the defense and explicitly addressed
it in the pleadings.” Pfeil v. State Street Bank & Trust Co., 671 F.3d 585, 599 (6th Cir. 2012)
(citing Hecker v. Deere & Co., 556 F.3d 575, 588 (6th Cir. 2009)) (overruled on other grounds).
Here, as there is no evidence in the record, the Court cannot dismiss the case on the doctrine
of laches. See Fed. Exp. Corp. v. U.S. Postal Serv., 75 F. Supp. 2d 807, 814 (W.D. Tenn.) (“As
evaluation of a claim of laches is dependent upon the submission of evidence, Federal Rule of
Civil Procedure 12(b)(6) is not the proper vehicle for bringing such a request.”). While there is
certainly delay, Kenyon has not had the opportunity to present evidence regarding the
reasonableness of the delay, and Clare has not presented evidence of prejudice. 1 The motion to
dismiss on this ground is denied.
2. Confusion
Clare contends that, as a matter of law, there is no confusion between the marks because
the proper author’s name is on the cover of her books. (Doc. No. 43 at 21.) She further contends
that Kenyon cannot hold a “trademark monopoly” on the word “hunter” in the supernatural creative
works context. (Id. at 22.) Third, she contends that “Shadowhunters” and “Dark-Hunters,” as a
matter of law, are not confusingly similar. (Id. at 23.) Kenyon again contends that the issue of
confusion involves matters outside the pleadings, which is not proper on a motion to dismiss. (Doc.
No. 45 at 21.)

1

Clare argues that the prejudice is “obvious.” (Doc. No. 43 at 20.) However, as this is an affirmative
defense, Kenyon is entitled the opportunity to present evidence on the issue of prejudice.
7

In assessing the likelihood of confusion, the Court considers eight non-exhaustive factors:
(1) the strength of the plaintiff’s mark; (2) the relatedness of the goods; (3) the similarity of the
marks; (4) evidence of actual confusion; (5) marketing channels used; (6) the likely degree of
purchaser care; (7) defendant’s intent in selecting the mark; and (8) the likelihood of expansion of
the products line. General Motors Corp. v. Keystone Automotive Industries, Inc., 453 F.3d 351,
354 (6th Cir. 2006) (citing Tumblebus Inc. v. Cranmer, 399 F.3d 754, 764 (6th Cir. 2005)). The
Court only must balance the relevant factors in each case when evaluating likelihood of confusion,
“not all of them are necessarily helpful in any given case.” Id. at 355 (citing Daddy’s Junky Music
Stores, Inc. v. Big Daddy’s Family Music Ctr., 109 F.3d 275, 280 (6th Cir. 1997)).
The fact that each author’s name is on the book is not dispositive of the likelihood of
confusion analysis. While there can be no likelihood of confusion at the point-of-sale “where a
defendant conspicuously and unequivocally informs buyers that the defendant, and not the
plaintiff, is the source of the product,” the likelihood of confusion inquiry extends beyond the point
of sale. Id. Clare does not evaluate downstream likelihood of confusion, id. at 356, so the Court
declines to grant the motion to dismiss on this ground. Further, Kenyon’s claims go beyond just
the books—they encompass Clare’s television shows, movie, and merchandise. The likelihood of
confusion regarding these items are not discussed, and there is insufficient evidence for the Court
to evaluate these claims. The Court denies the motion to dismiss on this ground.
There is no evidence in the record for the Court to evaluate Clare’s second claim that
Kenyon is seeking a “trademark monopoly” for any word in the field of supernatural creative
works including the suffix “hunter.” Clare cites a case from the United States District Court for
the Western District of Arkansas that held, after a bench trial that the word “hunter” in the animal
hunting context is descriptive and has not acquired a secondary meaning. Arkansas Trophy

8

Hunters Ass’n v. Texas Trophy Hunters Ass’n, Ltd., 506 F. Supp. 2d 277, 281-82 (W.D. Ark.
2007). Clare argues that Kenyon did not allege that “hunter” has acquired a secondary meaning,
but that is the crux of the Complaint. With all reasonable inferences in Kenyon’s favor, the motion
to dismiss on this ground is denied.
Clare’s argument that the words “Shadowhunters” and “Dark-Hunters” are not confusingly
similar as a matter of law is not dispositive at the motion to dismiss stage. The case upon she
relies, AutoZone, Inc. v. Tandy Corp., 737 F.3d 786 (6th Cir. 2004), analyzed multiple facts placed
in the record on a motion for summary judgment in order to determine that the marks were not
confusingly similar. Here, the Court has no evidence. Instead, the only allegations are that
consumers have confused the marks, which weighs in favor of finding confusion. The motion to
dismiss on this ground is also denied.
3. False Advertising/Unfair Competition
Clare asserts, without any analysis, that Kenyon’s false advertising/unfair competition
claims should be dismissed because they rely on the same facts as the trademark
infringement. See McPherson v. Kelsey, 125 F.3d 989, 995-96 (6th Cir. 1997) (“[I]ssues adverted
to in a perfunctory manner, unaccompanied by some effort at developed argumentation, are
deemed waived.”). As Clare offers no analysis, the Court denies the motion to dismiss on this
ground.
4. Contributory Infringement
Clare argues that the contributory infringement claim should be dismissed because
Kenyon has failed to join necessary parties for the Court to grant her the relief requested. Kenyon
alleges that “Clare contributed as a writer, via contract and potentially otherwise to the use of
‘Shadowhunters’ by others—including those parties involved in the infringement found in the

9

Shadowhunters [television] show and motion picture—which Kenyon alleges constitutes
infringement of her marks.” (Doc. No. 45 at 18.) Clare does not respond to this argument in her
reply brief (Doc. No. 57), so the motion to dismiss this claim is denied.
5. Common Law Unfair Competition
Clare argues that an unfair competition claim under Tennessee law has a one-year statute
of limitations, and Clare’s allegations of actual confusion are beyond one year. (Doc. No. 43 at
25.) Kenyon does not respond to this argument. (Doc. No. 45.) The Court finds that the one year
statute of limitations is applicable to this claim, under Tennessee Code Annotated § 47-18-110,
and dismisses Kenyon’s unfair competition claim as time-barred.
V.

CONCLUSION
For the foregoing reasons, Clare’s motion to dismiss (Doc. No. 41) is GRANTED IN

PART with respect to Kenyon’s unfair competition claim, and DENIED IN PART in all other
respects. In accordance with Federal Rule of Civil Procedure 12(a)(4)(A), Clare shall file a
responsive pleading within fourteen days of the date of this Order.
IT IS SO ORDERED.

____________________________________
WAVERLY D. CRENSHAW, JR.
UNITED STATES DISTRICT JUDGE

10