Druyan-Sagan Assocs. v. Saganworks Inc.

• Decision Date: 25 January 2023
• Docket Number: 22-10810
• Parties: DRUYAN-SAGAN ASSOCIATES, INC., Plaintiff, v. SAGANWORKS INC., Defendant.
• Court: U.S. District Court — Eastern District of Michigan

DRUYAN-SAGAN ASSOCIATES, INC., Plaintiff,
v.
SAGANWORKS INC., Defendant.

No. 22-10810

United States District Court, E.D. Michigan, Southern Division

January 25, 2023

OPINION AND ORDER DENYING DEFENDANT'S MOTION TO DISMISS

Sean F. Cox United States District Judge

This is a trademark infringement and dilution case. Plaintiff, Druyan-Sagan Associates, Inc. (“Druyan-Sagan”), alleges that Defendant, Saganworks Inc. (“SWI”), through its repeated use of the word SAGAN, and repeated attempts to associate with the famous scientist Carl Sagan, has infringed on and diluted two trademarks Druyan-Sagan owns. This case is before the Court on SWI's Motion to Dismiss Druyan-Sagan's trademark dilution claim. The Court conducted a hearing on this Motion on January 12, 2023.

For the reasons set forth below, the Court DENIES SWI's Motion. Druyan-Sagan has plead sufficient facts to make a plausible claim that its trademarks are sufficiently famous to sustain a trademark dilution claim.

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BACKGROUND

A. Procedural Background

Plaintiff filed a complaint against Defendant on April 15, 2022. (ECF No. 1). On June 28, 2022, Defendant filed a “Motion to dismiss Counts Two and Three of Plaintiff Druyan-Sagan Associates, Inc.'s Complaint.” (ECF No. 11).

Rather than rule on Defendant's Motion, this Court entered an Order, on August 10, 2022, granting Plaintiff leave to amend its Complaint. (ECF No. 13).

On August 30, 2022, Plaintiff filed a First Amended Complaint, which is the operative Complaint in this matter. (Compl., ECF No. 14).

Plaintiff's Complaint contains three counts: (1) “Trademark Infringement” in violation of 15 U.S.C. § 1125(a)(1)(A); (2) “Trademark Dilution” in violation of 15 U.S.C. § 1125(c); and (3) Violation of Michigan's Consumer Protection Act, Mich. Comp. Laws § 445.900 et seq. (Compl. at 22, 25, 28).

Plaintiff's “Trademark Dilution” claim, the only relevant claim for this Motion, alleges that SWI's unauthorized use of Druyan-Sagan's trademarks, “CARL SAGAN” and “SAGAN,” has caused consumer confusion and continues to harm Druyan-Sagan by diluting the value of its trademarks. (Compl. ¶¶ 72-85).

On September 27, 2022, Defendant filed a “Motion to Dismiss Count Two of Plaintiff Druyan-Sagan Associates Inc.'s First Amended Complaint,” which is the Motion currently before this Court. (Def.'s Mot., ECF No. 18).

B. Factual Background

Druyan-Sagan is a company aimed at preserving and protecting the legacy of Dr. Carl Sagan. (Pl.'s Resp. 1, ECF no. 21). Dr. Sagan is a famous astronomer, cosmologist, and

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astrophysicist. He is best known for his book, COSMOS, and the accompanying television series, COSMOS, which won three Primetime Emmy awards in 1981. (Compl. ¶ 11, ECF No. 14).

Since June 1977, Druyan-Sagan has marketed, promoted, and sold products and services related to Dr. Sagan under the CARL SAGAN mark and the SAGAN mark (“SAGAN marks”). (Compl. ¶ 20). Druyan-Sagan promotes and sells Dr. Sagan's expansive collection of works and also licenses the SAGAN marks to attach to goods and services that align with Carl Sagan's legacy and brand. (Compl. ¶ 19).

Druyan-Sagan formalized its right to the “CARL SAGAN” mark on October 22, 2019. (Compl. ¶ 30); U.S. Trademark Registration No. 5891655. Druyan-Sagan is still in the process of formalizing its rights to the mark “SAGAN.” (Compl. ¶ 32); U.S. Trademark Application No. 90056789.

Defendant, SWI, is a software company that creates interactive virtual spaces or rooms. (Compl. ¶ 6). Druyan-Sagan has never given SWI permission to use any of its SAGAN marks, or Carl Sagan's name, image, or likeness. (Compl. ¶ 41).

Nonetheless, on October 11, 2019, SWI filed a trademark application seeking to register the mark “SAGANWORKS.” (Compl. ¶ 42); U.S Trademark Application No. 88651722. Druyan-Sagan has timely and continuously opposed SWI's application for registration of the “SAGANWORKS” mark. (Compl. ¶ 44, 49).

Despite Druyan-Sagan's opposition, SWI continues using “SAGANWORKS” and the SAGAN marks in connection with its business. (Compl. ¶ 49). For example, SWI's logo includes the word “SAGAN” and the company's only good or service that it markets to consumer is called a “Sagan.” (Compl. ¶ 39, 52).

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SWI claims that SAGAN is an acronym that stands for “Spatially Accessible, Gallery of Archived kNowledge.” (Compl. ¶ 59). Druyan-Sagan alleges that SWI's acronym is a rouse because SWI has consistently marketed its product as sponsored by Carl Sagan. (Compl. ¶ 6069).

For example, SWI's website, at one time, included a page giving subscribers a chance to “win the Carl Sagan book of your choice.” (Compl. ¶ 62; Ex. 5). SWI has also posted pictures of Carl Sagan on its Facebook with the words “Saganworks” and “Sagan.” (Compl. ¶ 66; Ex. 9). SWI's CEO further stated that the company's software, “SAGAN,” pays tribute to Carl Sagan. (Compl. ¶ 62; Ex. 6).

SWI's continued alleged use of the SAGAN marks in connection with its business is the reason for this suit. SWI now moves to dismiss Count Two - trademark dilution - of Druyan-Sagan's Complaint pursuant to Fed.R.Civ.P. 12(b)(6).

STANDARD OF DECISION

Rule 12(b)(6) provides for the dismissal of a case where the complaint fails to state a claim upon which relief can be granted. The Court must construe the complaint in the light most favorable to the plaintiff and accept its allegations as true. DirectTV, Inc. v. Treesh, 487 F.3d 471, 476 (6th Cir. 2007). To survive a motion to dismiss, the complaint must offer sufficient factual allegations that make the asserted claims plausible on their face. Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007). Legal conclusions couched as factual allegations will not suffice. Rondigo, LLC v. Township of Richmond, 641 F.3d 673, 670 (6th Cir. 2011). Rather, “[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.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).

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“When a court is presented with a Rule 12(b)(6) motion, it may consider the complaint and any exhibits attached thereto, public records, items appearing in the record of the case and exhibits attached to defendant's motion to dismiss so long as they are referred to in the Complaint and are central to the claims contained therein. See Amini v. Oberlin Coll., 259 F.3d 493, 502 (6th Cir.2001).” Bassett v. National Collegiate Athletic Ass'n, 528 F.3d 426, 430 (6th Cir. 2008).

Here, Druyan-Sagan attached nine exhibits to its First Amended Complaint. (Compl., ECF No. 14). The Court may consider those documents when analyzing SWI's Motion to Dismiss.

ANALYSIS

The Court holds that Druyan-Sagan has plead sufficient facts to make a plausible claim of trademark dilution.

Trademark dilution is governed by The Lanham Act. The...