Clearline Technologies Ltd. v. Cooper B-Line, Inc. et al

Filing 77

MEMORANDUM AND ORDER granting 59 MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM in Plaintiff's Second Amended Complaint, granting 47 MOTION for Partial Summary Judgment on Plaintiff's Fraud Claim.(Signed by Judge Keith P Ellison) Parties notified.(arrivera, )

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION
CLEARLINE TECHNOLOGIES LTD.,
Plaintiff,
v.
COOPER B-LINE, INC., et al.,
Defendants.

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§ CIVIL ACTION NO. H-11-1420
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MEMORANDUM AND ORDER
Pending before the Court are Cooper B-Line Inc.’s Motion for Partial Summary
Judgment on Plaintiff’s Fraud Claim (“Motion for Partial Summary Judgment”) (Doc. No. 47)
and Cooper Industries plc’s Motion to Dismiss for Failure to State a Claim in Plaintiff’s Second
Amended Complaint (“Motion to Dismiss”) (Doc. No. 59).

After considering the parties’

arguments and the applicable law, the Court finds that Defendants’ Motions must be granted.
I.

BACKGROUND1
Plaintiff Clearline Technologies Ltd. (“Plaintiff” or “Clearline”)2 brings this action

against Defendants Cooper B-Line, Inc. (“Cooper B-Line”)3 and Cooper Industries plc (“Cooper
plc”)4 (collectively, “Defendants”)5 for claims arising out of Defendants’ alleged
misrepresentations and infringement of Plaintiff’s trademark and trade dress.
1

Clearline’s

The following facts are drawn from Clearline’s Third Amended Complaint (“Amended Complaint”) (Doc. No. 67)
and are accepted as true for purposes of the Motion to Dismiss. Clearline filed this Amended Complaint after
agreeing to drop certain claims made the subject of Defendants’ Motions to Dismiss. However, Cooper plc stated
that the allegations at issue in Cooper plc’s Motion to Dismiss and Motion for Partial Summary Judgment are
identical in both the Second and Third Amended Complaints. (Mot. Dismiss ¶ 2 n.1; Mot. Partial Summ. J. at 1
n.1.)
2
Clearline is a Canadian limited company with a principal place of business in Winnipeg, Canada. (Am. Compl. ¶
1.)
3
Cooper B-Line is a Delaware corporation with a principal place of business in Highland, Illinois. (Id. ¶ 2.)
4
Cooper plc is incorporated under the laws of Ireland and is believed to have a principal place of business and
administrative headquarters in Houston, Texas. (Id. ¶ 4.)
5
The parties stipulated to a dismissal of the third defendant, Cooper Technologies Company. (Doc. No. 32.)

1

trademark and trade dress claims arise out of its C-PORT® trademark, which is used in
connection with the sale of its rooftop support products. (Am. Compl. ¶ 9.) Clearline filed an
application to register this mark in November 2005, and it was registered on the United States
Patent and Trademark Office’s (USPTO) principal register on April 17, 2007. (Id.) Clearline
also has acquired protectable rights in the trade dress of the distinctive C-PORT® products,
which includes “their non-functional shape, dimensions, color, and yellow striping.” (Id. ¶ 11.)
In April 2003, Clearline entered into a Proprietary Information Agreement with Cooper
B-Line, which provided that Clearline and Cooper B-Line “would evaluate and negotiate the
prospect of Clearline supplying strut supports, bridge supports, and other related rooftop support
products to Cooper B-Line.” (Id. ¶ 8.) They also reached an oral agreement that granted Cooper
B-Line exclusive rights to sell Clearline’s products within the United States. (Id.) Clearline first
sold its C-PORT® products to Cooper B-Line for distribution in the United States in December
2005, and over 70% of its C-PORT® sales were made to Cooper B-Line in 2006 and 2007. (Id.
¶ 10.)
In July 2007, Dave Rice and Chris Peeler of Cooper B-Line represented to Clearline
founder Neil Krovats that Cooper B-Line wished to enter into a contract to distribute 700,000
units of C-PORT® products over the next year; however, Clearline would need to increase its
capacity first. (Id. ¶ 12.) Based on that request, Clearline increased its capacity by moving to a
larger facility, and expended $10,000 in legal fees to prepare a new contract for Cooper B-Line.
(Id.) Without warning, Dave Rice, Dave Cibula, and Chris Peeler of Cooper B-Line informed
Neil Krovats in April 2008 that, effective immediately, Cooper B-Line would no longer
distribute C-PORT® products for Clearline in the United States. (Id. ¶ 13.)

2

Clearline became aware that Defendants were selling confusingly similar roof-top
support products under the trademark DURA-BLOK™ in July 2008.

(Id. ¶ 14.)

Cooper

Technologies Company filed the application to register the trademark on December 15, 2008,
and it was registered on the USPTO’s principal register on September 14, 2010. (Id. ¶ 15.) The
DURA-BLOK™ products have the same non-functional shape, dimensions, color, and yellow
striping as the C-PORT® products. (Id. ¶ 14.) They are sold through a catalogue that is virtually
identical to the catalogue developed and used by Clearline, and they bear product identifiers and
specifications that are very similar to those of Clearline. (Id.) The websites of both Cooper BLine and Cooper plc advertise the DURA-BLOK™ products. (Id. ¶¶ 16–17.) Clearline asserts
that, because of Cooper plc’s indirect ownership of Cooper B-Line, Cooper plc exerts control
over Cooper B-Line, and such control extends to the operation of Cooper B-Line’s website. (Id.
¶ 19.) Furthermore, together with former defendant Cooper Technologies, Plaintiff believes that
Defendants exercise joint control over the use of the DURA-BLOK™ mark, including the
advertisements and operation of the websites. (Id. ¶ 20.) Cooper B-Line and Cooper plc also
continue to use Clearline’s C-PORT® mark in meta-tags6 associated with their websites, with
intent to trade on the reputation and goodwill of Clearline. (Id. ¶ 21.)
Clearline’s Amended Complaint contains various claims for relief labeled as Counts 1–5:
(1) false designation of origin or sponsorship and trade dress infringement under 15 U.S.C. §
1125(a); (2) common law trade dress infringement; (3) violations of the Illinois Deceptive Trade

6

A meta-tag is “a special HTML tag that is used to store information about a Web page but is not displayed in a
Web browser. . . . Many search engines use the information stored in meta tags when they index web pages.” (Am.
Compl. ¶ 21 (citing TechTerms.com, http://www.techterms.com/definition/metatag).) Therefore, Clearline urges
that “[t]he Court may reasonably infer that a consumer who uses a search engine to find Clearline’s C-Port products
will be directed to Cooper Industries’ website, where the consumer will find support blocks that appear confusingly
similar to Clearline’s products.” (Id.)

3

Practices Act (815 ILCS 510/1 et seq.)7; (4) trademark infringement under 15 U.S.C. § 1114(a);
and (5) fraud, against Cooper B-Line only.
Defendant Cooper B-Line, Inc. (“Cooper B-Line”) moves for summary judgment on
Clearline’s fraud claim against it. (Mot. Partial Summ. J.) Defendant Cooper Industries plc
(“Cooper plc”) moves to dismiss Counts 1–3 against it, to the extent the claims are based on
vicarious liability. (Mot. Dismiss ¶¶ 12–14.)8
II.

MOTION FOR PARTIAL SUMMARY JUDGMENT
A. Legal Standard
A motion for summary judgment requires the Court to determine whether the moving

party is entitled to judgment as a matter of law based on the evidence thus far presented. Fed. R.
Civ. P. 56(c).

Summary judgment is proper “if the pleadings, depositions, answers to

interrogatories, and admissions on file, together with the affidavits, if any, show that there is no
genuine issue as to any material fact and that the moving party is entitled to judgment as a matter
of law.” Kee v. City of Rowlett, 247 F.3d 206, 210 (5th Cir. 2001) (quotations omitted). A
genuine issue of material fact exists if a reasonable jury could enter a verdict for the non-moving
party. Crawford v. Formosa Plastics Corp., 234 F.3d 899, 902 (5th Cir. 2000).
The Court views all evidence in the light most favorable to the non-moving party and
draws all reasonable inferences in that party’s favor. Id. “[T]he court should give credence to

7

Although Clearline’s Third Amended Complaint still contains this claim, the joint stipulation filed by the parties
states that “Plaintiff Clearline Technologies Ltd.’s commercial disparagement claim under the Illinois DTPA, 815
ILCS 510/2(a)(8), is withdrawn as to Defendants Cooper B-Line, Inc. and Cooper Industries plc, and Plaintiff
Clearline Technologies Ltd. shall amend its Second Amended Complaint to remove this claim.” (Joint Stipulation
on Dismissal of Certain Claims and Amendment of Complaint (“Joint Stipulation”), Doc. No. 64, ¶ 2.) Thus, it
appears this claim should not have been included in the Third Amended Complaint. The Court will not dismiss this
claim in this Order, and the parties may file a separate motion to resolve this issue if necessary.
8
This is the only remaining issue in Cooper plc’s Motion to Dismiss, as the parties’ agreed stipulation “resolves all
issues pending in the respective motions to dismiss filed by Defendants Cooper B-Line, Inc. and Cooper Industries
plc, except for Defendant Cooper Industries plc’s motion to dismiss Plaintiff Clearline Technologies Ltd.’s vicarious
liability claims against it.” (Joint Stipulation ¶ 6.)

4

the evidence favoring the nonmovant as well as that ‘evidence supporting the moving party that
is uncontradicted and unimpeached, at least to the extent that that evidence comes from
disinterested witnesses.’” Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 151 (2000).
The Court may not make credibility determinations or weigh the evidence. Harvill v. Westward
Communications, L.L.C., 433 F.3d 428, 436 (5th Cir. 2005). Hearsay, conclusory allegations,
unsubstantiated assertions, and unsupported speculation are not competent summary judgment
evidence. Fed. R. Civ. P. 56(e)(1); see, e.g., McIntosh v. Partridge, 540 F.3d 315, 322 (5th Cir.
2008); Eason v. Thaler, 73 F.3d 1322, 1325 (5th Cir. 1996); see also Little v. Liquid Air Corp.,
37 F.3d 1069, 1975 (5th Cir. 1994) (noting that a non-movant’s burden is “not satisfied with
‘some metaphysical doubt as to the material facts’”) (citing Matsushita Elec. Indus. Co., Ltd. v.
Zenith Radio Corp., 475 U.S. 574, 586 (1986)). Additionally, any “affidavit or declaration used
to support or oppose a motion must be made on personal knowledge, set out facts that would be
admissible in evidence, and show that the affiant or declarant is competent to testify on the
matters stated.” Fed. R. Civ. P. 56(c)(4).
B. Analysis
Under Illinois law, a plaintiff asserting a claim for fraud must show “that defendants,
with the intent to induce plaintiffs to act, made a false statement of material fact which
defendants knew or believed to be false. Plaintiffs must also show they justifiably relied on the
statement and suffered damages resulting from that reliance.” Association Benefit Svcs., Inc. v.
Caremark RX, Inc., 493 F.3d 841, 852–53 (7th Cir. 2007) (quoting Williams v. Chicago
Osteopathic Health Sys., 654 N.E.2d 613, 619 (Ill. App. Ct. 1995)).
“The general standard for fraud refers to a false statement of material fact; promissory
fraud, involving a false statement of intent regarding future conduct, is generally not actionable

5

under Illinois law unless the plaintiff also proves that the act was a part of a scheme to defraud.”
Id. at 853 (citing Bradley Real Estate Trust v. Dolan Assocs. Ltd., 640 N.E.2d 9, 12-13 (Ill. App.
Ct. 1994); Gen. Elec. Credit Auto Lease v. Jankuski, 532 N.E.2d 361, 363-64 (Ill. App. Ct.
1988)). Such a scheme is actionable where a defendant either “(1) lied repeatedly to a single
promisee, or (2) lied at least once to multiple promisees.” In re Polo Builders, Inc., 388 B.R.
338, 380 (Bankr. N.D. Ill. 2008) (citing Calvin v. The Leitner Thomas Group, No. 00–C–8055,
2003 WL 1720008, at *4 (N.D. Ill. Mar. 31, 2003)).

“The distinction between a mere

promissory fraud and a scheme of promissory fraud is elusive, and has caused, to say the least,
considerable uncertainty.” Desnick v. Am. Broad. Companies, Inc., 44 F.3d 1345, 1354 (7th Cir.
1995)
Clearline alleges that “Dave Rice and Chris Peeler of Cooper B-Line represented to Neil
Krovats of Clearline that Cooper B-Line wished to enter into a contract to distribute 700,000
units of C-PORT® products over the next year, but that Clearline would need to increase its
capacity in order for that to occur.” (Am. Compl. ¶ 45; Plaintiff Clearline Technoligies [sic]
LTD.’s First Amended Answers to Defendant Cooper B-Line, Inc.’s First Set of Interrogatories
(“Interrogatory Responses”), Doc. No. 47-1, at 13.) Clearline also asserts that, on the same day
and at the same location, Bob Houlhouser asked whether Clearline would be able to produce
enough to meet Cooper’s sales projections. (Interrogatory Resp. at 13.)
Cooper B-Line contends that Mr. Rice’s and Mr. Peeler’s representations of a “wish[] to
enter into a contract” are nothing more than statements of desire, and do not rise to the level of a
promise that would satisfy the promissory fraud exception.

Additionally, Mr. Houhouser’s

statement was only a question rather than a promise or misrepresentation.

6

In its previous Memorandum and Order in this case (Doc. No. 48), the Court did not
consider whether these statements were proper expressions of promises under Illinois law, as the
Court raised the scheme exception sua sponte. Upon closer examination of Clearline’s recitation
of the statements made by Cooper B-Line representatives, and with the benefit of Clearline’s
sworn interrogatory answers as summary judgment evidence, the Court must grant summary
judgment on this claim.
As the Seventh Circuit has stated:
A great many promises belong to the realm of puffery, bragging, “mere words,”
and casual bonhomie, rather than to that of serious commitment. They are not
intended to and ordinarily do not induce reliance; a healthy skepticism is a better
protection against being fooled by them than the costly remedies of the law. In
any event it is not our proper role as a federal court in a diversity suit to read
“scheme” out of Illinois law; we must give it some meaning. Our best
interpretation is that promissory fraud is actionable only if it either is particularly
egregious or, what may amount to the same thing, it is embedded in a larger
pattern of deceptions or enticements that reasonably induces reliance and against
which the law ought to provide a remedy.
Desnick, 44 F.3d at 1354. See also Bower v. Jones, 978 F.2d 1004, 1012 (7th Cir. 1992) (stating
that “a claimant must be able to point to specific, objective manifestations of fraudulent intent—
a scheme or device”) (quoting Hollymatic Corp. v. Holly Systems, Inc., 620 F. Supp. 1366, 1369
(N.D. Ill. 1985)). “The disfavor that Illinois courts have expressed toward promissory fraud
leads us to conclude that a claimant must allege at least explicit promises of future performance
and cannot rely on implied promises to bring the action within the scheme or device exception to
otherwise nonactionable promissory fraud.” Hindley v. Seltel, Inc., 672 F. Supp. 1093, 1096
(N.D. Ill. 1987).
The fraud alleged here was not based on explicit promises, nor were the statements
expressions of a “serious commitment.” Desnick, 44 F.3d at 1354. The allegations of fraud
consist of only two statements, in one day, about Clearline increasing its capacity. These

7

statements are insufficient to satisfy the scheme exception.

Cooper B-Line is entitled to

summary judgment on this claim.
III.

MOTION TO DISMISS
A. Legal Standard
A court may dismiss a complaint for “failure to state a claim upon which relief can be

granted.” Fed. R. Civ. P. 12(b)(6). “To survive a Rule 12(b)(6) motion to dismiss, a complaint
‘does not need detailed factual allegations,’ but must provide the plaintiff’s grounds for
entitlement to relief—including factual allegations that when assumed to be true ‘raise a right to
relief above the speculative level.’” Cuvillier v. Taylor, 503 F.3d 397, 401 (5th Cir. 2007) (citing
Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007)). That is, 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, 129 S. Ct. 1937, 1949 (2009) (quoting Twombly, 550 U.S. at
570). 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. (citing Twombly, 550 U.S. at 556). The plausibility standard is not akin to a “probability
requirement,” but asks for more than a sheer possibility that a defendant has acted unlawfully.
Id. A pleading need not contain detailed factual allegations, but must set forth more than “labels
and conclusions, and a formulaic recitation of the elements of a cause of action will not do.”
Twombly, 550 U.S. at 555 (citation omitted).
Ultimately, the question for the court to decide is whether the complaint states a valid
claim when viewed in the light most favorable to the plaintiff. The court must accept wellpleaded facts as true, but legal conclusions are not entitled to the same assumption of truth.
Iqbal, 129 S. Ct. at 1950 (citation omitted). The court should not “‘strain to find inferences

8

favorable to the plaintiffs’” or “accept ‘conclusory allegations, unwarranted deductions, or legal
conclusions.’” R2 Investments LDC v. Phillips, 401 F.3d 638, 642 (5th Cir. 2005) (quoting
Southland Sec. Corp. v. Inspire Ins. Solutions, Inc., 365 F.3d 353, 362 (5th Cir. 2004)). A
district court can consider the contents of the pleadings, including attachments thereto, as well as
documents attached to the motion, if they are referenced in the plaintiff’s complaint and are
central to the claims. Collins v. Morgan Stanley Dean Witter, 224 F.3d 496, 499 (5th Cir. 2000).
Importantly, the court should not evaluate the merits of the allegation, but must satisfy itself only
that plaintiff has adequately pled a legally cognizable claim. United States ex rel. Riley v. St.
Luke’s Episcopal Hosp., 355 F.3d 370, 376 (5th Cir. 2004). “Motions to dismiss under Rule
12(b)(6) are viewed with disfavor and are rarely granted.” Lormand v. US Unwired, Inc., 565
F.3d 228, 232 (5th Cir. 2009) (citation omitted); Duke Energy Intern., L.L.C. v. Napoli, 748 F.
Supp. 2d 656 (S.D. Tex. 2010). The Court should generally “afford plaintiffs at least one
opportunity to cure pleading deficiencies before dismissing a case, unless it is clear that the
defects are incurable or the plaintiffs advise the court that they are unwilling or unable to amend
in a manner that will avoid dismissal.” Great Plains Trust Co. v. Morgan Stanley Dean Witter &
Co., 313 F.3d 305, 329 (5th Cir. 2002).
Under Federal Rule of Civil Procedure 12(d), a motion to dismiss must be treated as a
Rule 56 motion for summary judgment if the court considers matters outside the pleadings in
deciding the motion. Before a Rule 12(b)(6) motion may be converted to a Rule 56 motion, a
court must be satisfied that “the nonmoving party has . . . had the opportunity to discover
information that is essential to [its] opposition.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
250 n.5 (1986) (citing Fed. R. Civ. P. 56(f)).

9

B. Analysis
Cooper plc moves to dismiss Counts 1–3 to the extent they are based on vicarious
liability.9 Liability for trademark infringement extends beyond those who actually sell infringing
goods. Courts have found defendants liable on indirect liability theories, including contributory
trademark infringement and vicarious liability.
Courts have imported common law concepts of agency, including vicarious liability, into
the § 1125(a) analysis. See, e.g., Am. Tel. and Tel. Co. v. Winback and Conserve Program, Inc.,
42 F.3d 1421, 1441 n.22 (3d Cir. 1994) (“AT&T”); Proctor & Gamble Co. v. Haugen, 222 F.3d
1262, 1277 (10th Cir. 2000).

Both parties agreed, in the briefings on Cooper plc’s original

motion to dismiss, that the test for vicarious liability requires “a finding that the defendant and
the infringer have an apparent or actual partnership, have authority to bind one another in
transactions with third parties or exercise joint ownership or control over the infringing
product.” Hard Rock Cafe Licencing Corp. v. Concession Servs., Inc., 955 F.2d 1143, 1150 (7th
Cir. 1992); see also Perfect 10, Inc. v. Visa Int’l Serv. Ass’n, 494 F.3d 788, 807 (9th Cir. 2007).
Courts have strictly applied the test for vicarious trademark liability based on agency principles,
and, unlike vicarious copyright liability, “courts do not recognize vicarious liability in the
trademark context based on ability to supervise in combination with a financial interest.” United
States v. Washington Mint, LLC, 115 F. Supp. 2d 1089, 1106 (D. Minn. 2000).
In its previous Memorandum and Order in this case (Doc. No. 48), the Court dismissed
this claim because it “cannot infer, solely on the basis that Cooper plc ‘indirectly owns’ Cooper
B-Line, that an actual or apparent partnership exists.” (Doc. No. 48 at 15.) A partnership is

9

As the Court stated in its first Memorandum and Order (Doc. No. 48), Clearline’s Amended Complaint does not
specifically identify any secondary liability claims. However, both parties have asserted throughout this case that
Clearline is using vicarious liability to assert claims against Cooper plc under Counts 1–3. Cooper plc does not
challenge Clearline’s allegations of direct liability in this Motion. (See Resp. to Cooper plc.’s Mot. at 2.)

10

distinct from an ownership relationship. See Coach, Inc. v. Asia Pacific Trading Co., 676 F.
Supp. 2d 914, 926 (C.D. Cal. 2009) (“Plaintiffs cite no authority—and the Court is unaware of
any—to support their contention that such evidence, by itself, tends to establish that two
companies who otherwise maintain separate corporate identities nevertheless share a single
identity for purposes of imposing liability for trademark rights violations.”) The Court directed
Clearline to provide additional allegations supporting their assertion that Defendants’
relationship was like a partnership. See Gucci America, Inc. v. Frontline Processing Corp., 721
F. Supp. 2d 228, 247 (S.D.N.Y. 2010) (“Though Gucci has raised a number of factual allegations
that indicate that Defendants’ services were crucial to a website like TheBagAddiction.com’s
sale of infringing goods, there is insufficient evidence to plausibly infer an actual or apparent
partnership. The vague, puffery-like references to a “partnership” between these companies and
website merchants are not enough to support vicarious liability.”); Broadvision Inc. v. Gen. Elec.
Co., No. 08 Civ. 1478(WHP), 2009 WL 1392059, at *4 (S.D.N.Y. May 5, 2009) (for copyright
infringement,10 plaintiff “must show more than just a legal relationship between the parent and
the subsidiary” to “state a claim for vicarious liability against [the] parent for the actions of its
subsidiary.”); see also Caligiuri v. First Colony Life Ins. Co., 742 N.E.2d 750, 756 (Ill. App. Ct.
2000) (“[S]tock ownership alone in one corporation by another is common in a parent-subsidiary
relationship and does not create the relation of principal and agent.”).
Clearline’s Third Amended Complaint adds allegations regarding Cooper plc’s
relationship with Cooper B-Line and its control over the allegedly infringing products. Clearline
asserts that Cooper plc’s Electronic Data Interchange (“EDI”) facility allows customers to buy
DURA-BLOK™ products, and its Cooper Customer Care (“C3”) web portal provides real-time
10

The tests for secondary trademark infringement are more difficult to satisfy than those required to find secondary
copyright infringement. See Sony Corp. v. Universal City Studios, 464 U.S. 417, 439 n.19 (1984); Perfect 10, 494
F.3d at 806.

11

product availability, net pricing, order status, tracking, and other services to buyers of products
offered by Cooper plc subsidiaries. (Am. Compl. ¶ 23.) Clearline alleges that “the EDI and C3
facilities provided by Cooper plc have the authority to bind its subsidiary Cooper B-Line in
transactions with third parties.”

(Id.)11

Rather than describing an “actual or apparent

partnership,” however, these allegations show only that Cooper plc is authorized to advertise and
sell the Cooper B-Line products at issue in this case. There is no indication that Cooper plc has
any broader authority to bind Cooper B-Line in transactions with third parties, or that Cooper BLine has such an authority with respect to Clearline. Moreover, Clearline fails to show that
Cooper plc had joint control over the products at issue, as the only allegations relate to Cooper
plc’s sale of Cooper B-Line products. See Rosetta Stone Ltd. v. Google, Inc., 730 F.Supp.2d
531, 550 (E.D. Va. 2010) (finding Google was not liable under a vicarious liability theory
because the plaintiff failed to show that Google “controls the appearance and content” of the
infringing products or the use of the marks in those products), rev’d in part on other grounds,
676 F.3d 144, 2012 WL 1155143 (4th Cir. Apr. 9, 2012).12 The additional allegations linking
Cooper plc to the products at issue may provide support for Clearline’s claim of direct
infringement against Cooper plc, but do not support a theory of vicarious liability for the actions
of Cooper B-Line.

11

Clearline also attaches the Declaration of Robert D. Katz, which contains brochures describing the EDI interface
and C3 web portal. The Court does not consider these documents in evaluating the Motion to Dismiss. Clearline
identifies no relevant information from the brochures that it did not incorporate into its Third Amended Complaint.
(See Resp. at 3–4 & nn.5–6.)
12
In affirming the district court’s opinion on vicarious infringement, the Fourth Circuit noted that there was no
evidence that “Google acts jointly with any of the advertisers to control the counterfeit ROSETTA STONE
products.” Rosetta Stone, 2012 WL 1155143, at *16. Control over the appearance of the advertisements or internet
links was insufficient. Id.

12

Clearline also alleges that counsel for Cooper Industries13 responded to a letter sent to
Cooper B-Line, using letterhead with the address for Cooper plc’s administrative headquarters.
(Am. Compl. ¶ 24.) However, this shows nothing more than the parent-subsidiary relationship
that the Court found insufficient in the previous Memorandum and Order. Clearline has failed to
add the allegations necessary to find that Defendants’ relationship was an actual or apparent
partnership, and thus Counts 1–3 against Cooper plc must be dismissed to the extent they are
based on vicarious liability.
IV.

CONCLUSION
Based on the foregoing, Cooper B-Line’s Motion for Partial Summary Judgment is

GRANTED. Cooper plc’s Motion to Dismiss is also GRANTED.

IT IS SO ORDERED.
SIGNED in Houston, Texas, on this the 9th day of May, 2012.

KEITH P. ELLISON
UNITED STATES DISTRICT JUDGE

13

The Court assumes that “Cooper Industries” is equivalent to “Cooper plc”; however, Clearline uses both names in
the same paragraph. (See Am. Compl. ¶ 24.)

13