Garden Meadow, Inc. v. Smart Solar, Inc.

• Decision Date: 02 June 2014
• Docket Number: Case No. 8:13–cv–1766–T–33AEP.
• Parties: GARDEN MEADOW, INC., Plaintiff, v. SMART SOLAR, INC. and John Does 1–99, Defendants.
• Court: U.S. District Court — Middle District of Florida

24 F.Supp.3d 1201

GARDEN MEADOW, INC., Plaintiff
v.
SMART SOLAR, INC. and John Does 1–99, Defendants.

Case No. 8:13–cv–1766–T–33AEP.

United States District Court, M.D. Florida, Tampa Division.

Signed June 2, 2014.

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Kyle Anne Citrynell, Seller Waterman, LLC, Louisville, KY, Zachary David Messa, Johnson, Pope, Bokor, Ruppel & Burns, LLP, Clearwater, FL, for Plaintiff.

Dineen Pashoukos Wasylik, Dineen Pashoukos Wasylik, PA, Tampa, FL, for Defendants.

ORDER

VIRGINIA M. HERNANDEZ COVINGTON, District Judge.

This matter comes before the Court pursuant to Defendant Smart Solar, Inc.'s Motion for Judgment on the Pleadings (Doc. # 31), filed on February 20, 2014. Plaintiff Garden Meadow, Inc. filed a response in opposition to the Motion (Doc. # 34) on March 19, 2014. For the reasons set forth below and for the reasons stated at the

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hearing held on May 28, 2014, the Court denies the Motion.

I. Background

Beginning in 2003, Garden Meadow, through its principal Sandy Cooper, developed its line of “distinctive solar powered animal lantern works associated with its registered GARDEN MEADOW® trademark.” (Doc. # 1 at 19). In 2009, Sandy Cooper created Garden Meadow's work known as “Solar Love Birds,” which contains:

[A]mong other unique features, a combination of certain specific elements: namely solar lighted lanterns with decorative design configurations (e.g. birds, plants, animals, insects, and fish) made from metal with a rusticated brown patina and ornate filigree decorative styling with a distinctive colored foggy film-like insert which, when illuminated, diffused color light ... emanates from within the sculpture (referred to herein as Garden Meadow's “Trade Dress”).

(Id. at ¶¶ 10, 20). According to the Complaint, Garden Meadow's Trade Dress is “unique, arbitrary, non-functional, and inherently distinctive.” (Id. at ¶ 25). Garden Meadow purports that at the time it entered into the “solar animal sculpture market,” Garden Meadow “was the first to produce a line of solar animal sculptures that incorporated the Trade Dress described herein.” (Id. at ¶ 22).

Sandy Cooper received from the United States Copyright Office Certificate of Registration VA 1–680–495 for the “Solar Love Birds” Work, with an Effective Registration Date of July 30, 2009. (Id. at ¶ 13). According to the Complaint, Garden Meadow “has been and is the sole proprietor of all right, title and interest, including copyright, in and to the ‘Solar Love Birds' Work.” (Id. at ¶ 12).

Garden Meadow submits that it has “continuously used its Trade Dress, and [Garden Meadow] was, at all times, the exclusive producer of such products and the exclusive user of its distinctive Trade Dress....” (Id. at ¶ 22). Furthermore, Garden Meadow “has extensively advertised and promoted its garden lanterns and décor accessories ... and maintain[s] a showroom in Shanghai, participat[es] in trade shows, visit[s] buyers at their offices and elsewhere, [and uses] ... brochures, catalogs, and postcards.” (Id. at ¶ 27). As a result of this advertising, promotion, and sales, Garden Meadow's Trade Dress has “acquired secondary meaning so that it identifies [Garden Meadow's] goods, and distinguishes them from goods manufactured by others.” (Id. at ¶ 28).

Garden Meadow learned that Defendants Smart Solar and John Does Number 1 through 99 “have been copying, reproducing, manufacturing, importing, distributing, displaying, transmitting, marketing and selling lanterns and other merchandise which are substantially similar to [Garden Meadow's] work.” (Id. at ¶ 11). According to the Complaint, Garden Meadow—as “the owner of all right, title and interest in and to its Trade Dress”—has not licensed or otherwise authorized Defendants to reproduce, manufacture, import, display, market, sell, or distribute Garden Meadow's work or any derivative work or to produce, publish, display, distribute, transmit or otherwise use Garden Meadow's Trade Dress in the marketing of the infringing works. (Id. at ¶ 24).

As a result, Garden Meadow initiated this action against Defendants on July 9, 2013, for injunctive relief and civil damages pursuant to 17 U.S.C. § 101 et seq., alleging Copyright Infringement. (See Doc. # 1). Garden Meadow also alleges Trade Dress Infringement and Unfair Competition in violation of § 43(a) of the

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Lanham Act. (See id. ). On October 11, 2013, Smart Solar filed its answer and alleged the following counterclaims: (1) Declaration of Non-infringement of the '495 Registration; (2) Declaration of Invalidity of ' 495 Registration; (3) Declaration of Non-infringement of Trade Dress; (4) Declaration of No Valid Trade Dress; and (5) Declaration of No Unfair Competition. (Doc. # 17).

On February 20, 2014, Smart Solar filed its Motion for Judgment on the Pleadings pursuant to Rule 12(c) of the Federal Rules of Civil Procedure seeking judgment on count I and II of Garden Meadow's Complaint, and counts I, III, IV, and V of its counterclaims. (Doc. # 31). Garden Meadow filed a response in opposition to the Motion on March 19, 2014. (Doc. # 34). Thereafter, on May 28, 2014, this Court conducted oral argument on the Motion.

This Court has reviewed the Motion, the response thereto, and the arguments set forth by the parties at oral argument, and is otherwise fully advised in the premises.

II. Legal Standard—Fed. R. Civ. P. 12(c)

Judgment on the pleadings is appropriate when “there are no material facts in dispute, and judgment may be rendered by considering the substance of the pleadings and any judicially noticed facts.” Hawthorne v. Mac Adjustment, Inc., 140 F.3d 1367, 1370 (11th Cir.1998). A fact is “material” if it “might affect the outcome of the suit under the governing [substantive] law.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).

A motion for judgment on the pleadings is governed by the same standard as a motion to dismiss for failure to state a claim upon which relief may be granted. Mergens v. Dreyfoos, 166 F.3d 1114, 1117 (11th Cir.1999). On a motion to dismiss, this Court accepts as true all of the factual allegations in the complaint and construes them in the light most favorable to the plaintiff. Jackson v. BellSouth Telecomms., 372 F.3d 1250, 1262 (11th Cir.2004). Further, this Court favors the plaintiff with all reasonable inferences from the allegations in the complaint. Stephens v. Dep't of Health & Human Servs., 901 F.2d 1571, 1573 (11th Cir.1990) (“On a motion to dismiss, the facts stated in [the] complaint and all reasonable inferences therefrom are taken as true.”). However, the Supreme Court explains that:

While a complaint attacked by a Rule 12(b)(6) motion to dismiss does not need detailed factual allegations, a plaintiff's obligation to provide the grounds of his entitlement to relief requires more than labels and conclusions, and a formulaic recitation of the elements of a cause of action will not do. Factual allegations must be enough to raise a right to relief above the speculative level.

Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) (internal citations omitted). Further, courts are not “bound to accept as true a legal conclusion couched as a factual allegation.” Papasan v. Allain, 478 U.S. 265, 286, 106 S.Ct. 2932, 92 L.Ed.2d 209 (1986).

III. Analysis

A. Count I–Copyright Infringement

Smart Solar claims that Garden Meadow's Complaint fails to state a claim for copyright infringement. (Doc. # 31 at 3). In order to state a claim for copyright infringement, a plaintiff must establish two elements: 1) ownership of a valid copyright and 2) copying by the defendants of elements of the work that are original. Feist Publ'n, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991).

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1. Ownership

Under copyright law, only the owner of a work has standing to sue for infringement. Saregama India Ltd. v. Mosley, 635 F.3d 1284, 1297 (11th Cir.2011). To prove ownership, a plaintiff must show the originality of the work and compliance with the relevant statutory formalities. Bateman v. Mnemonics, Inc., 79 F.3d 1532, 1541 (11th Cir.1996). A “certificate of registration made before or within five years after first publication of the work” is prima facie evidence of ownership of a valid copyright. Id.

Smart Solar contends that on the face of the Complaint, the owner of the alleged copyright is Sandy Cooper, not Garden Meadow. (Doc. # 31 at 4). Specifically, paragraph 13 of the Complaint alleges that an assignment of the Copyright Registration to Garden Meadow is evidenced in Exhibit C, however, Exhibit C does not include the assignment. (Id. ). Exhibit C contains only the Certificate of Registration given to Sandy Cooper. (Doc. # 1, Ex. C). Therefore, Smart Solar maintains...