Curtis v. Herb Chambers I-95, Inc.

• Decision Date: 03 November 2009
• Docket Number: No. 08-P-283.,08-P-283.
• Citation: 75 Mass. App. Ct. 662,915 N.E.2d 1121
• Court: Appeals Court of Massachusetts
• Parties: Susan M. CURTIS, executrix,<SMALL><SUP>1</SUP></SMALL> v. HERB CHAMBERS I-95, INC.,<SMALL><SUP>2</SUP></SMALL> & others.<SMALL><SUP>3</SUP></SMALL>

915 N.E.2d 1121

75 Mass. App. Ct. 662

Susan M. CURTIS, executrix,¹ v. HERB CHAMBERS I-95, INC.,² & others.³

No. 08-P-283.

Appeals Court of Massachusetts, Essex.

Argued January 16, 2009.

Decided November 3, 2009.

Robert S. Wolfe for the plaintiff.

Edward C. Cooley, Quincy, for Herb Chambers I-95, Inc., & others.

Carol E. Head, Boston, for Globe Specialty Products, Inc.

Present: TRAINOR, GRAHAM, & RUBIN, JJ.

RUBIN, J.

The plaintiff, Susan Curtis (plaintiff), as executrix of the estate of Harold Curtis (Curtis), appeals from the dismissal of her complaint alleging four counts against the defendants, five automobile dealerships (collectively, the Chambers defendants), and Globe Specialty Products, Inc. (Globe).

I.

The complaint alleges that Curtis, while doing business as Curtis & Associates, conceived an idea for advertising to be used by automobile dealerships and, as an original expression of that idea, designed and produced distinctive promotional materials. Curtis sold these materials to dealerships and provided, for a fee, marketing services such as direct mail campaigns. Specifically, Curtis designed, produced, and sold a particularly successful and distinctive advertisement that dealerships used as a direct mailer and/or newspaper insert. Curtis avoided using his promotional materials for competing dealerships in the same marketing area at the same time. This allowed his customers to distinguish themselves from one another and also insured the value of Curtis's promotional materials. Similarly, Curtis limited the frequency of use of his promotional materials to preserve their impact.

During 2000, Curtis contracted with the Chambers defendants to provide marketing services using his promotional materials. In late 2000, Globe approached and solicited Curtis for printing business. Curtis declined to do business with Globe.

Beginning in early 2001 and continuing at least until Curtis brought suit, Globe began printing and distributing promotional materials for the Chambers defendants. These promotional materials, which were substantially similar to those designed and produced by Curtis, were distributed by hand and through direct mailers and newspaper inserts. The Chambers defendants ceased doing business with Curtis.

Globe's promotional materials, which appeared in the same marketing areas at the same times as Curtis's promotional materials, confused Curtis's other customers, namely competing dealerships. Customers of these dealerships were similarly confused, and Curtis's promotional materials lost their impact, and value, due to the frequency of use of Globe's promotional materials. The complaint alleges that the defendants knew or should have known that their conduct would interfere with and impair Curtis's business. Curtis demanded in writing that the defendants cease their conduct, but the defendants ignored this demand. Curtis consequently lost both his credibility and the ability to sell his promotional materials and marketing services to dealerships in the same marketing areas as the Chambers defendants, sustaining damages.⁴

Curtis first filed a complaint in late 2001 in the United States District Court for the District of Massachusetts. That complaint contained two Federal and four State claims. The Federal claims alleged copyright infringement under the Federal Copyright Act, 17 U.S.C. §§ 101 et seq. (1976), and violation of the Lanham Act, the Federal trade dress statute, 15 U.S.C. § 1125 (1999). The State claims were for violation of common law trade dress, breach of the implied covenant of good faith and fair dealing, interference with advantageous business relations, and unfair and deceptive trade practices in violation of G.L. c. 93A.

The Federal District Court granted summary judgment on the two Federal claims. The court found that Curtis had not registered a copyright for the advertisement materials at issue. Copyright registration is a condition precedent to bringing a Federal copyright claim. 17 U.S.C. § 411(a). The court also granted the defendants' motion with respect to the statutory trade dress claim because Curtis failed to introduce sufficient evidence that his product had acquired "secondary meaning." See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000). Trade dress develops "secondary meaning" when, although it is not inherently distinctive, it has acquired distinctiveness in that in the minds of the public it identifies the source of the product rather than the product itself. See ibid. The court concluded that it lacked jurisdiction to hear Curtis's remaining State claims and said, "Accordingly the Court will transfer this case to the Essex Superior Court."

The Superior Court clerk subsequently opened a docket in the matter. The docket indicates that the case was "[t]ransferred from U.S. District Court of Massachusetts to Essex." The docket also indicates receipt of the first amended complaint in the Federal action, the defendants' answers to it, and an attested copy of the docket entries from the Federal District Court. Curtis did not file a new complaint, but he did pay the filing fee.

The defendants moved to dismiss the State claims in the Superior Court on the basis that the Federal District Court lacked the authority to transfer a case originally filed in the Federal District Court to the Superior Court. The motion judge found that procedural defects indeed required dismissal and dismissed the case without prejudice. That first motion judge noted that "Massachusetts law provides a procedure for the refiling of an action dismissed for any matter of form (if originally commenced within the applicable period of limitations) within one year after the dismissal." See G.L. c. 260, § 32.

By this time Curtis had died, and the plaintiff, his wife, as executrix of his estate, filed the instant complaint in Superior Court. This complaint alleges four State claims: count I for violation of common law trade dress; count II for breach of the implied covenant of good faith and fair dealing; count III for interference with advantageous business relations; and count IV for unfair and deceptive trade practices in violation of G.L. c. 93A. The defendants' motion to dismiss was allowed by a second judge of the Superior Court.

II.

The defendants brought their motion to dismiss the present complaint under both Mass.R.Civ.P. 12(b)(1), 365 Mass. 754 (1974), for lack of subject matter jurisdiction, and under Mass.R.Civ.P. 12(b)(6), 365 Mass. 754 (1974), for failure to state a claim upon which relief could be granted. We review the allowance of a motion to dismiss under rule 12(b)(6) de novo. Okerman v. VA Software Corp., 69 Mass.App. Ct. 771, 774, 871 N.E.2d 1117 (2007). See Iannacchino v. Ford Motor Co., 451 Mass. 623, 635-636, 888 N.E.2d 879 (2008) (articulating the standard for reviewing the adequacy of complaints). We accept as true all the allegations in the complaint and draw every reasonable inference in favor of the plaintiff. Warner-Lambert Co. v. Execuquest Corp., 427 Mass. 46, 47, 691 N.E.2d 545 (1998). In reviewing the allowance of a motion to dismiss under rule 12(b)(1), we review questions of law de novo. See id. at 47-50, 691 N.E.2d 545. See also Valentin v. Hospital Bella Vista, 254 F.3d 358, 365 (1st Cir.2001). A judge must "dispose[ ] of a Rule 12(b)(1) sufficiency challenge on the basis of the plaintiff's version of the relevant events, taking the well-pleaded facts as true and drawing all reasonable inferences in favor of the pleader." Id. at 365 (construing the parallel Federal rule). See Callahan v. First Congregational Church of Haverhill, 441 Mass. 699, 709, 808 N.E.2d 301 (2004). While "a judge may consider documents and other materials outside the pleadings," id. at 710, 808 N.E.2d 301, where no relevant fact is "in issue, the court's determination engenders de novo review." Valentin v. Hospital Bella Vista, supra at 365. See Wooten v. Crayton, 66 Mass.App.Ct. 187, 190 n. 6, 845 N.E.2d 1213 (2006) (addressing the treatment of disputed facts in a rule 12[b][1] motion).

III.

As an initial matter, we address the defendants' argument that dismissal under rule 12(b)(6) was appropriate because the statute of limitations had run by the time the plaintiff filed the instant complaint in the Superior Court. Curtis originally brought suit in the Federal District Court within the statute of limitations. The Federal District Court did not purport to dismiss the State claims in that case, but rather to "transfer" the "case" to the Superior Court. The Superior Court concluded that the Federal District Court lacked the authority to transfer the State claims under these circumstances and dismissed those claims without prejudice.

Within one year of that first Superior Court dismissal, the plaintiff filed the instant complaint.

General Laws c. 260, § 32, provides in relevant part that "[i]f an action duly commenced within the time limited in this chapter is dismissed ... for any matter of form, the plaintiff ... may commence a new action for the same cause within one year after the dismissal ... of the original action." The defendants argue that the "original action" was the Federal action and that it was "dismissed" by the Federal District Court in the transfer order. They argue as a corollary to this that the first action dismissed by the Superior Court was not the "original action."

The procedural steps taken in this case present an extremely unusual circumstance. The Federal District Court purported to "transfer" the timely-filed Federal action, not to dismiss it. The "transferred" action was placed on the Superior Court docket. We think that, in light of the Federal District Judge's explicit order that the case be "transferred" to the Superior Court, the first Superior Court dismissal was a dismissal of the original action for a matter of form within the meaning of the statute. The filing of the instant...