Clark v. Walt Disney Co., 2:08-cv-982.
| Decision Date | 19 June 2009 |
| Docket Number | No. 2:08-cv-982.,2:08-cv-982. |
| Parties | Aaron CLARK, Plaintiff, v. The WALT DISNEY CO., et al., Defendants. |
| Court | U.S. District Court — Southern District of Ohio |
Brian Edward Dickerson, The Dickerson Law Group, Upper Arlington, OH, Kevin R. Conners, Sharlene I. Chance, The Dickerson Law Group, Columbus, OH, for Plaintiff.
Michael Charles Lueder, Foley & Lardner, Milwaukee, WI, Grant Edward Kinsel, Lori V. Minassian, Michael J. Song, Foley & Lardner LLP, Los Angeles, CA, for Defendants.
Plaintiff Aaron Clark filed suit against The Walt Disney Company, Jakks Pacific, Inc., Play Along Toys, KB Toys, Amazon.com, and Toys R Us, alleging patent infringement, false designation of origin, and deceptive trade practices.1 This matter is currently before the Court on two motions filed by Defendants Jakks Pacific, Inc., Play Along Toys and Toys R Us: (1) a motion to dismiss for failure to state a claim upon which relief can be granted (Doc. 11); and (2) a motion to take judicial notice of certain documents submitted in support of the motion to dismiss (Doc. 12). For the reasons stated below, both of those motions are granted in part.
According to the Second Amended Complaint, Plaintiff Aaron Clark is the sole owner of U.S. Patent No. 5,548,272 ("the 272 Patent"), issued by the United States Patent and Trademark Office on August 20, 1996. (Sec. Am. Compl. ¶¶ 24, 28).2 His invention is entitled "Talking Poster." Essentially, by pushing a button attached to the surface of the poster, one can activate a pre-recorded message or song. Plaintiff obtains licenses from various entertainment companies and then produces Talking Posters featuring various entertainers, cartoon characters and movie characters. These Talking Posters are then sold in a variety of retail establishments. Plaintiff has also licensed his technology to other companies so that they can manufacture and market their own Talking Posters. (Id. at ¶¶ 25-27).
Plaintiff alleges that Defendants have participated in the manufacturing, distribution, and licensing of Hannah Montana Talking Posters and Cheetah Girls Talking Posters, and have sold, offered to sell or imported Talking Posters which embody the subject matter claimed in the 272 Patent. Plaintiff further alleges that because Defendants have done so without a licensing agreement, Defendants' conduct infringes on his 272 Patent. (Id. at ¶¶ 31-34). Plaintiff filed suit against Defendants alleging patent infringement, false designation of origin under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and a violation of the Ohio Deceptive Trade Practices Act, Ohio Revised Code § 4165.02.
Pursuant to Federal Rule of Civil Procedure 12(b)(6), Defendants Jakks Pacific, Inc., Play Along Toys and Toys R Us have filed a motion to dismiss for failure to state a claim upon which relief can be granted. Defendants also ask the Court to take judicial notice of certain documents submitted in support of that motion.
Rule 12(b)(6) of the Federal Rules of Civil Procedure provides that a complaint may be dismissed if it fails to state a claim upon which relief can be granted. Because a motion under Rule 12(b)(6) is directed solely to the complaint itself, Roth Steel Prods. v. Sharon Steel Corp., 705 F.2d 134, 155 (6th Cir.1983), the focus is on whether the plaintiff is entitled to offer evidence to support the claims, rather than on whether the plaintiff will ultimately prevail. Jackson v. Birmingham Bd. of Educ., 544 U.S. 167, 184, 125 S.Ct. 1497, 161 L.Ed.2d 361 (2005) (citing Scheuer v. Rhodes, 416 U.S. 232, 236, 94 S.Ct. 1683, 40 L.Ed.2d 90 (1974)). The purpose of a motion to dismiss under Rule 12(b)(6) "is to allow a defendant to test whether, as a matter of law, the plaintiff is entitled to legal relief even if everything alleged in the complaint is true." Mayer v. Mylod, 988 F.2d 635, 638 (6th Cir.1993).
The function of the complaint is to afford the defendant fair notice of what the plaintiff's claim is and the grounds upon which it rests. See Conley v. Gibson, 355 U.S. 41, 47, 78 S.Ct. 99, 2 L.Ed.2d 80 (1957); Lewis v. ACB Business Serv., Inc., 135 F.3d 389, 405 (6th Cir.1998). A complaint need not set down in detail all the particularities of a plaintiff's claim. Rule 8(a)(2) of the Federal Rules of Civil Procedure requires only a "short and plain statement of the claim showing that the pleader is entitled to relief." However, the complaint "must contain either direct or inferential allegations respecting all the material elements to sustain a recovery under some viable legal theory." Scheid v. Fanny Farmer Candy Shops, Inc., 859 F.2d 434, 436 (6th Cir.1988) (emphasis in original). Bare assertions of legal conclusions are insufficient. See id.; Allard v. Weitzman (In re DeLorean Motor Co.), 991 F.2d 1236, 1240 (6th Cir.1993). Likewise, "a formulaic recitation of the elements of a cause of action" is not enough. Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007); Ashcroft v. Iqbal, ___ U.S. ___, 129 S.Ct. 1937, 1949-50, 173 L.Ed.2d 868 (2009).
When considering a motion to dismiss pursuant to Rule 12(b)(6), the Court must construe the complaint in the light most favorable to the plaintiff and accept all well-pleaded material allegations in the complaint as true. See Scheuer, 416 U.S. at 236, 94 S.Ct. 1683; Arrow v. Federal Reserve Bank of St. Louis, 358 F.3d 392, 393 (6th Cir.2004); Mayer, 988 F.2d at 638. The Court will indulge all reasonable inferences that might be drawn from the pleading. See Saglioccolo v. Eagle Ins. Co., 112 F.3d 226, 228 (6th Cir.1997). However, it will not accept conclusions of law or unwarranted inferences cast in the form of factual allegations. See Gregory v. Shelby County, 220 F.3d 433, 446 (6th Cir.2000); Lewis, 135 F.3d at 405.
The Court will grant a motion for dismissal under Rule 12(b)(6) if there is an absence of law to support a claim of the type made, or of facts sufficient to make a valid claim, or if on the face of the complaint there is an insurmountable bar to relief indicating that the plaintiff does not have a claim. Little v. UNUMProvident Corp., 196 F.Supp.2d 659, 662 (S.D.Ohio 2002) (citing Rauch v. Day & Night Mfg. Corp., 576 F.2d 697 (6th Cir.1978)).
Defendants Jakks Pacific, Inc., Play Along Toys and Toys R Us have moved to dismiss Plaintiff's claims of patent infringement, false designation of origin, and deceptive trade practices for failure to state a claim upon which relief can be granted. For the reasons stated below, the Court grants the motion to dismiss the false designation of origin and deceptive trade practices claims. However, with respect to the patent infringement claim, the Court converts the motion to dismiss into a motion for summary judgment and will give the parties the opportunity to supplement the record.
Federal law provides that "whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent therefor, infringes the patent." 35 U.S.C. § 271(a). Plaintiff alleges that Defendants have infringed the 272 Patent by "manufacturing, distributing, importing, selling and/or offering for sale the Hannah Montana Talking Poster and Cheetah Girls Talking Poster and/or other Posters which embody the subject matter claimed in the 272 Patent." (Sec. Am. Compl. ¶ 40). More specifically, Plaintiff maintains that Defendants have infringed Claims 1 and 5 of the 272 Patent. Those Claims read as follows:
What is claimed is:
1. An assembly, comprising:
a poster comprised of a first material, said poster having a first surface, said first surface including poster art thereon;
a housing comprised of a second material, said housing attached to a portion of said first surface of said poster;
a speaker concealed between said housing and said first surface of said poster;
an electric circuit including a sound production component, operatively connected to said speaker and concealed between said housing and said first surface of said poster;
a trigger attached to said electric circuit and concealed within said housing, said trigger adapted to be actuated through said housing to produce said sound;
wherein a surface of said housing is prepared with a matching art which is substantially the same as that area of said poster art which appears on said portion of said poster that said housing covers when said housing is attached to said poster, such that said housing artistically blends in with the surrounding poster art that is not covered by said housing.
* * *
5. A method for making a talking poster, comprising the steps of:
providing a poster with poster art on a first surface thereof;
providing human actuatable sound components adapted to be contained on said poster;
providing a housing adapted to be secured onto a portion of said first surface of said poster;
applying matching art to said housing which is substantially the same as that area of said poster art which appears on said portion of said poster that said housing covers when said housing is attached to said poster, such that said housing artistically blends in with the surrounding poster art that is not covered by said housing; and
securing said housing onto said portion of said first surface of said poster, such that said housing conceals said sound components.
(Claims 1 and 5 of the 272 Patent; Ex. J to Sec. Am. Compl.).
In order to succeed on a claim of patent infringement, a plaintiff must prove that the accused product contains "elements identical or equivalent to each claimed element of the patented invention." Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 40, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997)...
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