Metrokane, Inc. v. Wine Enthusiast

• Decision Date: 08 February 2002
• Docket Number: No. 01 CIV 1058 (WCC).,01 CIV 1058 (WCC).
• Citation: 185 F.Supp.2d 321
• Parties: METROKANE, INC., Plaintiff, v. The WINE ENTHUSIAST, a New York Corporation, Adam Strum, Cybil Strum and Cisco Sales Corporation, a California Corporation, Defendants.
• Court: U.S. District Court — Southern District of New York

185 F.Supp.2d 321

METROKANE, INC., Plaintiff, v. The WINE ENTHUSIAST, a New York Corporation, Adam Strum, Cybil Strum and Cisco Sales Corporation, a California Corporation, Defendants.

No. 01 CIV 1058 (WCC).

United States District Court, S.D. New York.

February 8, 2002.

COPYRIGHT MATERIAL OMITTED

Seward & Kissel LLP, New York City (Mark D. Kotwick, Esq., Jeffrey M. Dine, Esq., Of Counsel), Husch & Eppenberger, LLC, St. Louis, MO (Michael H. Wetmore, Esq., Dutro E. Campbell II, Esq., Of Counsel), for Plaintiff.

Levisohn, Lerner, Berger & Langsman, New York City (Peter L. Berger, Esq., Marilyn Neiman, Esq., Of Counsel), for Defendants.

OPINION AND ORDER

WILLIAM C. CONNER, Senior District Judge.

Plaintiff Metrokane, Inc. ("Metrokane") filed the original Complaint in this action on February 13, 2001 against defendants The Wine Enthusiasts, Inc. ("TWE"), Adam Strum, Cybil Strum (collectively, the "Strums") and Cisco Sales Corporation ("Cisco" or "defendant"), alleging, inter alia, copyright infringement, trade dress infringement and unfair competition. On May 18, 2001, plaintiff filed an Amended Complaint adding two counts of design patent infringement. In an Opinion and Order dated August 8, 2001, this Court granted defendants' motion to dismiss plaintiff's trade dress and unfair competition claims. Metrokane, Inc. v. The Wine Enthusiast, 160 F.Supp.2d 633 (S.D.N.Y. 2001) ("Metrokane I"). On November 19, 2001, pursuant to a stipulation of settlement, this Court dismissed with prejudice all claims by plaintiff against defendants TWE and the Strums, leaving Cisco as the only defendant. Cisco now moves to dismiss the design patent infringement claims pursuant to FED R. CIV. P. 12(b)(6), and alternatively, asks this Court to convert the motion to one for summary judgment and to grant summary judgment pursuant to FED. R. CIV. P. 56. For the reasons stated below, defendant's motion to dismiss is denied, and the converted motion for summary judgment is granted.

BACKGROUND¹

Plaintiff, a New York corporation, owns United States Patent No. Des. 441,265 (the "'265 patent") and United States Patent No. Des. 442,045 (the "'045 patent"), designed by Edward Kilduff, which depict "ornamental designs" for separate portions of a lever-operated corkscrew device. (Am.Complt.¶¶ 66-67, 75-76, Def.Mem.Supp.Mot.Dismiss, Exs.9,10.) These patented designs are, at least in part, incorporated in plaintiff's commercial, lever-operated corkscrew device, which is marketed under the trademark "Rabbit." Defendant Cisco, a California corporation, manufactures and sells its own lever-operated corkscrew device called "Insta-Pull."² (Id. ¶¶ 6, 23.) According to plaintiff, the design of the Insta-Pull infringes both the '265 and '045 patents. (Id. ¶¶ 69, 78.)

DISCUSSION

I. Defendant's Alternative Motion

A. Standard for Motion to Dismiss Under Rule 12(b)(6)

Defendant initially moves to dismiss the Amended Complaint pursuant to Rule 12(b)(6). On a motion to dismiss pursuant to Rule 12(b)(6), the court must accept as true all of the well pleaded facts and consider those facts in the light most favorable to the plaintiff. See Scheuer v. Rhodes, 416 U.S. 232, 236, 94 S.Ct. 1683, 40 L.Ed.2d 90 (1974), overruled on other grounds, Davis v. Scherer, 468 U.S. 183, 104 S.Ct. 3012, 82 L.Ed.2d 139 (1984); Hertz Corp. v. City of New York, 1 F.3d 121, 125 (2d Cir.1993); In re AES Corp. Sec. Litig., 825 F.Supp. 578, 583 (S.D.N.Y. 1993) (Conner, J.). Additionally, "the Court can consider documents referenced in the complaint and documents that are in the plaintiffs' possession or that the plaintiffs knew of and relied upon in their suit." United States Fidelity and Guaranty Co. v. Petroleo Brasileiro, No. 98 Civ. 3099, 2001 WL 300735, at *2 (S.D.N.Y. Mar. 27, 2001). On such a motion, the issue is "whether the claimant is entitled to offer evidence to support the claims." Scheuer, 416 U.S. at 236, 94 S.Ct. 1683. A complaint should not be dismissed for failure to state a claim "unless it appears beyond doubt that the plaintiff can prove no set of facts in support of his claim which would entitle him to relief." Padavan v. United States, 82 F.3d 23, 26 (2d Cir.1996) (quoting Hughes v. Rowe, 449 U.S. 5, 10, 101 S.Ct. 173, 66 L.Ed.2d 163 (1980)). Generally, "[c]onclusory allegations or legal conclusions masquerading as factual conclusions will not suffice to prevent a motion to dismiss." 2 JAMES WM. MOORE ET AL., MOORE'S FEDERAL PRACTICE § 12.34[1][b] (3d ed.1997); see also Hirsch v. Arthur Andersen & Co., 72 F.3d 1085, 1088 (2d Cir.1995). Allegations that are so conclusory that they fail to give notice of the basic events and circumstances of which the plaintiff complains, are insufficient as a matter of law. See Martin v. New York State Dep't of Mental Hygiene, 588 F.2d 371, 372 (2d Cir.1978).

Dismissal of the Amended Complaint pursuant to Rule 12(b)(6) is inappropriate. In the Amended Complaint, plaintiff sufficiently states claims for design patent infringement. Plaintiff alleges that it owns two valid United States Patents (Am.Complt.¶¶ 66, 75), that defendant manufactured an infringing corkscrew with a design substantially the same as the patented designs (Id. ¶¶ 70, 79), and that the infringing corkscrew appropriates the novelty of the patented designs which distinguish them from the prior art. (Id. ¶¶ 71, 80.) Contrary to defendant's contention, plaintiff's allegations are not "conclusory", but are supported by facts, drawings and documents contained or incorporated by reference in the Amended Complaint. Therefore, the Court concludes that the Amended Complaint alleges facts sufficient to support a claim for design patent infringement, so that defendant's motion to dismiss must be denied.

B. Conversion to Rule 56 Motion Summary Judgment

In the alternative, defendant requests that this Court convert the motion to one for summary judgment pursuant to Rule 56. In general, a district court should give parties notice of its intent to convert a motion to dismiss into a motion for summary judgment. Green v. Doukas, No. 99 Civ. 7733, 2000 WL 236471, at *2, 205 F.3d 1322 (2d Cir.2000). However, under certain circumstances, a court may convert a motion without giving explicit notice. Id. "The essential inquiry is whether the [opposing party] should reasonably have recognized the possibility that the motion might be converted to one for summary judgment or was taken by surprise and deprived of a reasonable opportunity to meet facts outside the pleading." Id. (quoting In re G. & A. Books, Inc., 770 F.2d 288, 294-95 (2d Cir.1985)). In the motion to dismiss, defendant makes an explicit request to this Court to convert the motion to one for summary judgment in the event that the Court finds dismissal under 12(b)(6) inappropriate. (Def. Mem. Supp. Mot. Dismiss at 1.) Plaintiff's direct response to this request (Pl. Mem. Opp. Mot. Dismiss at 4), and its subsequent argument opposing summary judgment (Id. at 4-7), show that plaintiff reasonably recognized that the motion might be converted to one for summary judgment. Furthermore, "[i]f both parties submit extrinsic material — or even if the moving party alone submits extrinsic material — the opposing party may be deemed to have adequate notice that the motion might be converted." Green, 2000 WL 236471, at *2, 205 F.3d 1322. In the instant action, plaintiff submitted an extensive expert report in opposition to defendant's motion. Because plaintiff had adequate notice of defendant's alternative motion, and presented evidence in response, see, e.g., United States ex rel. Phipps v. Comprehensive Cmty. Dev. Corp., 152 F.Supp.2d. 443, 449 n. 2 (S.D.N.Y.2001), the motion to dismiss will be converted to one for summary judgment pursuant to Rule 56.³

Summary judgment may be granted "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." FED. R. CIV. P. 56(c). The burden rests on the moving party to demonstrate the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Ticali v. Roman Catholic Diocese of Brooklyn, 41 F.Supp.2d 249, 254 (E.D.N.Y.1999). A genuine factual issue exists if there is sufficient evidence favoring the nonmovant for a reasonable jury to return a verdict in his favor. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Ticali, 41 F.Supp.2d at 254. In deciding whether summary judgment is appropriate, the court should resolve all ambiguities and draw all permissible factual inferences against the movant. See Anderson, 477 U.S. at 255, 106 S.Ct. 2505. Summary judgment is warranted when the nonmovant has no evidentiary support for an essential element on which it bears the burden of proof. Celotex, 477 U.S. at 322-23, 106 S.Ct. 2548; Silver v. City Univ. of N.Y., 947 F.2d 1021, 1022 (2d Cir.1991).

The Court of Appeals for the Federal Circuit has repeatedly stated that, "summary judgment is as appropriate in a patent case as in any other." Rockport Co. v. Deer Stags, Inc., 65 F.Supp.2d 189, 192 (S.D.N.Y.1999) (quoting Avia Group Int'l, Inc. v. L.A. Gear Ca., Inc., 853 F.2d 1557, 1561 (Fed.Cir.1988)); see also Barmag Barmer Maschinenfabrik AG v. Murata Mach., Ltd., 731 F.2d 831, 835 (Fed.Cir. 1984); Naso v. Ki Park, 856 F.Supp. 201, 204 (S.D.N.Y.1994) (Conner, J.) (a summary judgment of non-infringement may be appropriate where there are no genuine issues of material fact). This applies to design patent as well as utility patent cases. Avia, 853 F.2d at 1561.

II. Design Patent Infringement

A design patent protects the non-functional aspects of an ornamental design as shown in the patent. Elmer v. ICC Fabricating Inc., 67 F.3d 1571, 1577 (Fed.Cir.1995). Determining whether a design patent has been...