Dupart v. Roussell, CIVIL ACTION NO. 20-1406

• Decision Date: 28 October 2020
• Docket Number: CIVIL ACTION NO. 20-1406
• Citation: 497 F.Supp.3d 102
• Parties: Jesseca DUPART, et al. v. Rodney ROUSSELL, et al.
• Court: U.S. District Court — Eastern District of Louisiana

497 F.Supp.3d 102

Jesseca DUPART, et al.

v.Rodney ROUSSELL, et al.

CIVIL ACTION NO. 20-1406

United States District Court, E.D. Louisiana.

Signed October 28, 2020

Sharonda R. Williams, Fishman Haygood, LLP, New Orleans, LA, for Jesseca Dupart, Shawntae Harris.

Rodney J. Roussell, Belle Rose, LA, pro se.

SECTION "R" (5)

ORDER AND REASONS

SARAH S. VANCE, UNITED STATES DISTRICT JUDGE

The Court ordered plaintiffs to show cause for why their Lanham Act claim should not be dismissed for failure to state a claim.¹ Plaintiffs and pro se defendant, Rodney Roussell, filed memoranda in response.² For the following reasons, the Court finds that plaintiffs Dupart and Harris fail to state a claim for trademark infringement under the Lanham Act. The Court also finds that plaintiff Dupart states a claim for false advertising and false designation of geographic origin under the Act, but plaintiff Harris does not.

I. BACKGROUND

Plaintiffs allege that defendant Roussell produces YouTube videos and Instagram posts that discuss plaintiffs’ personal lives and Dupart's cosmetics brand—"Kaleidoscope."³ The complaint alleges that, in his videos and social-media posts, Roussell goes by the moniker "M.C. Shakie."⁴ According to the complaint, Roussell's YouTube videos are part of an ongoing series called "Address the Mess with M.C. Shakie."⁵ Plaintiffs allege that Roussell has over 40,700 subscribers on YouTube and over 81,500 followers on Instagram.⁶ The complaint also alleges that Roussell has received 716,089 views for the YouTube videos in which he mentions plaintiffs.⁷ In addition, plaintiffs allege that Roussell owns and operates his own cosmetics business called "Sip Cosmetics."⁸

The complaint alleges that Dupart and Harris each hold trademarks.⁹ For example, Dupart alleges that she holds a registered design mark for the Kaleidoscope logo,¹⁰ as well as a number of word marks associated with the Kaleidoscope brand, including "Kaleidoscope Miracle Drops" and "Kaleidoscope Miracle Edges."¹¹ In addition, the complaint alleges that plaintiff Shawntae Harris has a registered trademark in "Da Brat," which she has used since 1993.¹² Harris also alleges she has a common-law trademark in her social-media handle, "@sosobrat."¹³ Importantly, the complaint does not allege that Harris has any ownership of or interest in Kaleidoscope or its associated trademarks.¹⁴

Plaintiffs allege that on February 10, 2020, Roussell uploaded a video to YouTube in which he claims that plaintiffs are in a same-sex relationship.¹⁵ Plaintiffs allege that on February 13, 2020, Roussell uploaded another video in which he repeats that assertion, and adds negative comments about Dupart's Kaleidoscope products.¹⁶ Specifically, plaintiffs allege that Roussell claims Kaleidoscope products are made with "canola oil" and are "laced with cayenne pepper."¹⁷ In another video, plaintiffs allege that Roussell falsely asserts that Dupart's Kaleidoscope products are "Chinese concoctions"¹⁸ which Dupart orders "directly from China."¹⁹ According to the complaint, Roussell also asserts that Dupart's products "brought Corona over [to the United States]."²⁰

Plaintiffs sued Roussell in federal court, seeking relief under the Lanham Act. In their complaint, plaintiffs assert claims for trademark infringement, unfair competition, and false designation of origin.²¹ Plaintiffs also bring numerous state-law claims, including defamation and violation of the Louisiana Unfair Trade Practices Act (LUTPA), La. Rev. Stat. § 51:1401, et seq. After they filed the complaint, plaintiffs moved for a temporary restraining order in which plaintiffs argue their Lanham Act claim solely on a theory of trademark infringement.²² The Court denied the motion.²³ Plaintiffs then filed a revised motion for a preliminary injunction, in which plaintiffs again rely exclusively on a theory of trademark infringement for their Lanham Act claim.²⁴

The Court ordered plaintiffs to show cause as to why the Lanham Act claim should not be dismissed for failure to state a claim.²⁵ Plaintiffs filed a memorandum in response in which they argue that Roussell is liable for false advertising²⁶ and dilution-by-tarnishment under the Lanham Act.²⁷ Neither the phrase "false advertising" nor "dilution by tarnishment" appeared in this proceeding before the Court ordered plaintiffs to show cause. Although the complaint cites the relevant portion of the Lanham Act for a false-advertising claim,²⁸ 15 U.S.C. § 1125(a), the complaint does not even mention 15 U.S.C. § 1125(c), the proper provision for a dilution-by-tarnishment claim. Accordingly, the Court will not consider whether plaintiffs have stated a claim for dilution-by-tarnishment, as plaintiffs have not pleaded the claim in their complaint. See Fed. R. Civ. P. 8 ; see also Land v. Dollar , 330 U.S. 731, 735 n.4, 67 S.Ct. 1009, 91 L.Ed. 1209 (1947) (writing that when "the complaint fails to state a cause of action, the facts set forth in the complaint ... may not be considered"); Phase II Transportation, Inc. v. Carolina Cas. Ins. , 228 F. Supp. 3d 999, 1008 (C.D. Cal. 2017) ("It is elementary that a party cannot recover on a cause of action not in the complaint.").

Roussell, who remains pro se , filed a nine-page memorandum in response to the Court's show cause order.²⁹ Because the memorandum is in substance a motion to dismiss under Federal Rule of Civil Procedure 12(b)(6), the Court will consider his arguments in this Order.

II. LEGAL STANDARD

When considering a motion to dismiss under Rule 12(b)(6), the Court must accept all well-pleaded facts as true and view the facts in the light most favorable to the plaintiff. See Baker v. Putnal , 75 F.3d 190, 196 (5th Cir. 1996). The Court must resolve doubts as to the sufficiency of the claim in the plaintiff's favor. Vulcan Materials Co. v. City of Tehuacana , 238 F.3d 382, 387 (5th Cir. 2001).

But to survive a Rule 12(b)(6) motion, a party must plead "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, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009) (quoting Bell Atl. Corp. v. Twombly , 550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) ). Courts must dismiss the claim if there are insufficient factual allegations to raise the right to relief above the speculative level, Twombly , 550 U.S. at 555, 127 S.Ct. 1955, or if it is apparent from the face of the complaint that there is an insuperable bar to relief, Jones v. Bock , 549 U.S. 199, 215, 127 S.Ct. 910, 166 L.Ed.2d 798 (2007). The Court is not bound to accept as true legal conclusions couched as factual allegations. Iqbal , 556 U.S. at 679, 129 S.Ct. 1937.

On a Rule 12(b)(6) motion, the Court must limit its review to the contents of the pleadings, including attachments thereto. Brand Coupon Network, L.L.C. v. Catalina Mktg. Corp. , 748 F.3d 631, 635 (5th Cir. 2014). The Court may also consider documents attached to a motion to dismiss or an opposition to that motion when the documents are referred to in the pleadings and are central to a plaintiff's claims. Id. Courts have held that videos are incorporated by reference when they are attached to the complaint. See, e.g. , Bogie v. Rosenberg , 705 F.3d 603, 608 (7th Cir. 2013) ("[Plaintiff] incorporated the video recording into her original complaint both by reference and by physically attaching the video recording to the amended complaint.").

Finally, courts construe briefs submitted by pro se litigants liberally, and a court will "apply less stringent standards to parties proceeding pro se than to parties represented by counsel." Grant v. Cuellar , 59 F.3d 523, 524 (5th Cir. 1995) (per curiam); see also Abdul-Alim Amin v. Universal Life Ins. Co. of Memphis, Tenn. , 706 F.2d 638, 640 n.1 (5th Cir. 1983). This does not mean, however, that a court "will invent, out of whole cloth, novel arguments on behalf of a pro se plaintiff in the absence of meaningful, albeit imperfect, briefing." Jones v. Alfred , 353 F. App'x 949, 951-52 (5th Cir. 2009). When construing pro se pleadings, it is their substance rather than title, that controls. See Hernandez v. Thaler , 630 F.3d 420, 426 (5th Cir. 2011) ("It is the substance of the relief sought by a pro se pleading ... that determines the true nature and operative effect ....").

III. DISCUSSION

A. Trademark Infringement

Plaintiffs fail to state a claim for trademark infringement under the Lanham Act. The relevant provision, 15 U.S.C. § 1125(a)(1)(A), forbids "false or misleading representation[s] of fact" that "are likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship or approval of his or her goods ...." 15 U.S.C. § 1125(a)(1)(A). To prevail on a trademark-infringement claim, a plaintiff must show (1) a protectable right in a mark, and (2) that the defendant's use of the marks creates a likelihood of confusion as to the mark's source, affiliation, or sponsorship. See Paulsson Geophysical Services, Inc. v. Sigmar , 529 F.3d 303, 309 (5th Cir. 2008).

As to the first factor, plaintiffs have sufficiently alleged protectable rights in marks. "Registration of a mark with the PTO constitutes prima facie evidence of the mark's validity and the registrant's exclusive right to use the registered mark." Amazing Spaces, Inc. v. Metro Mini Storage , 608 F.3d 225, 237 (5th Cir. 2010). The complaint states that plaintiff Dupart holds a registered design mark for her Kaleidoscope logo,³⁰ as well as several word marks associated with the Kaleidoscope brand.³¹ The complaint also alleges that plaintiff Harris's holds a registered mark in "Da Brat."³² Thus, plaintiffs are entitled to the presumption of ownership for these registered marks. See Kythera Biopharmaceuticals, Inc. v. Lithera, Inc. , 998 F. Supp. 2d 890, 899 (C.D. Cal. 2014).

But as to the second factor, the complaint does not allege any facts...