Redmond v. Willow Creek Salt et al

Filing 35

MEMORANDUM DECISION denying 19 Motion to Dismiss for Failure to State a Claim ; denying 22 Motion for Summary Judgment is denied as being premature. The court grants Defendants 30 days to amend its third and fifth counterclaims as stated in the Memorandum Decision. Signed by Judge David Sam on 4/26/18. (jmr)

THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF UTAH
CENTRAL DIVISION
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REDMOND, INCORPORATED, a Utah
corporation
Plaintiff,
vs.

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WILLOW CREEK SALT, INC., a Utah
corporation; and JESSE P. NIELSEN, an
individual;
Defendants.

Case No. 2:17CV00943 DS

MEMORANDUM DECISION

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This case arises from a claim of copyright and trademark infringement, false advertising,
trademark dilution and violations of the Utah Deceptive and Unfair Trade Practices Act. There are
two motions before the court: Plaintiff’s Motion for Partial Dismissal of Counterclaims filed on
November 30, 2017 and Defendants’ Motion for Summary Judgment filed on January 2, 2018.
Plaintiff is claiming that the second, third, fifth, and sixth counterclaims fail and should be
dismissed. Defendants’ summary judgment motion seeks dismissal of Plaintiff’s complaint
stating they are not in violation of any of Plaintiff’s trademarks or protected copyrights.
BACKGROUND
Utah has an extensive rock-salt formation in Sanpete and Sevier Counties. The open-cut
salt mines near Redmond, Utah have produced rock salt on a commercial basis for many years.
Plaintiff Redmond Inc. (“Redmond”) and its predecessors in interest have been in the salt and
mineral business for fifty years. Redmond owns the registered trademark “REDMOND” on the

Principal Register of the U.S. Patent and Trademark Office for various salt-based agricultural feed
products, nutritional supplements for animals and table salt. Defendant Willow Creek (“Willow
Creek”) is a corporation organized and existing under the laws of the State of Utah, and states its
principal place of business is in Redmond, Utah. Defendants developed a website, business
cards, and advertisements containing information which included a logo for Willow Creek Salt
Co., which had “REDMOND, UT” in red lettering beneath it. After Redmond complained of the
similarity to their alleged Trademark, Willow Creek changed the coloring of the lettering to tan.
Willow Creek states they are only demonstrating the geographic location and origin of their
business and products. Redmond objects to Willow Creek’s use of “Redmond” in any capacity
under their logos and on their website.
MOTION FOR PARTIAL DISMISSAL OF CLAIMS
Redmond filed a motion for an order dismissing the second, third, fifth and sixth
counterclaims filed by Willow Creek against Redmond pursuant to Rule 12(b)(6) of the Federal
Rules of Civil Procedure. Willow Creek has voluntarily withdrawn its sixth counterclaim.
Redmond claims that Willow Creek has failed to set forth actionable facts to support each claim.
A pleading 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). “To 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.’” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)(quoting Bell Atlantic Corp. V. Twombly, 550
U.S. 544, 570 (2007)). The plausibility standard requires “more than a sheer possibility that a
defendant has acted unlawfully. Where a complaint pleads facts that are ‘merely consistent with’
a defendant’s liability, it ‘stops short of the line between possibility and plausibility of entitlement
to relief.’” Id. (Quoting Twombly, 550 U.S. at 557).
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Willow Creek alleges in its second counterclaim that Redmond has engaged in “naked
licensing” practices and thus abandoned any valid trademark. This court finds that Willow Creek
has plead sufficient facts to overcome a motion to dismiss and that genuine questions of fact exist
as to this claim.
In counterclaim three, Willow Creek alleges that Redmond has engaged in unfair
competition and false advertising under the Lanham Act § 43(a). This court finds that there are
sufficient facts alleged to overcome a motion to dismiss but that there are additional facts alleged
in their response. The court therefore grants Willow Creek leave to amend its counterclaim to
include additional facts that are alleged.
Willow Creek’s fifth counterclaim is for declaratory judgment of invalidity and
unenforceability of copyrights. This court finds that there are not sufficient facts alleged to show
any invalidity or unenforceability of copyrights and therefore also grants Willow Creek leave to
amend its fifth counterclaim or voluntarily withdraw it.
MOTION FOR SUMMARY JUDGMENT
Defendants have filed a motion for summary judgment seeking dismissal of Plaintiff’s
Complaint arguing that their use of “Redmond” and all associated references thereto is a protected
geographic exception to any alleged Trademark violation and that their business and advertising
materials do not infringe on any protected copyright. Summary judgment is appropriate “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 a judgment as a matter of law.” Fed.R.Civ.P. 56(c). Given the state of the case
and that discovery has yet to be conducted, the summary judgment motion is denied as premature

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to allow discovery with leave for the parties to file additional motions as deemed appropriate at a
later time.
CONCLUSION
For the foregoing reasons, Plaintiff’s Motion for Partial Dismissal of Counterclaims is
denied and the court grants Defendants 30 days to amend its third and fifth counterclaims as stated
above and Defendants’ Motion for Summary Judgment is denied as being premature.

SO ORDERED.

DATED this

26th

day of

April

, 2018.

BY THE COURT:

DAVID SAM
SENIOR JUDGE
U.S. DISTRICT COURT

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