Munro v. Lucy Activewear, Inc.

Decision Date29 September 2016
Docket NumberCivil No. 16-79 (JRT/KMM)
CourtU.S. District Court — District of Minnesota

and VF CORPORATION, Defendants.

Civil No. 16-79 (JRT/KMM)


September 29, 2016


Carl F. Schwenker, LAW OFFICES OF CARL F. SCHWENKER, 1101 East Eleventh Street, Austin, TX 78702; Steven L. Theesfeld, YOST & BAILL, LLP, 220 South Sixth Street, Suite 2050, Minneapolis, MN 55402, for plaintiffs.

Lora Mitchell Friedemann and Nikola L. Datzov, FREDRIKSON & BYRON, PA, 200 South Sixth Street, Suite 4000, Minneapolis, MN 55402, for defendants.

Plaintiffs Bruce Munro and Bruce Munro Studio (collectively "Munro") bring this action alleging trademark, trade dress, and various state law claims against Defendants Lucy Activewear, Inc., Lucy Apparel, LLC, VF Outdoor, Inc., and VF Corporation. Munro's claims stem from a light display Defendants created in Boston and used in Lucy Activewear marketing campaigns nationally, and which Munro alleges copied his work. Defendants move to dismiss all claims, and Munro moves to amend his complaint. Because the Court finds that, even considering Munro's amended complaint, each of Munro's claims is either preempted by the Copyright Act or not sufficiently pleaded, the Court will grant Defendants' motion to dismiss and deny Munro's motion to amend his

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complaint as futile. However, the Court will dismiss Munro's fraud claim and his trademark claim, to the extent it is based on the similarity in name between the light displays, without prejudice because he could theoretically state a claim on those bases.


Munro alleges that he is "a globally acclaimed and internationally recognized artist" and that he is "best known for large-scale, immersive, light-based works, sculptures, installations, and exhibitions." (Notice of Removal, Ex. D ("Compl.") ¶ 31, Sept. 2, 2015, Docket No. 1; see also Pls.' Ex. Index, Ex. 1 ("Am. Compl.") ¶¶ 1, 13, Mar. 10, 2016, Docket No. 51.) He has sold and exhibited his works in the United States and Europe, and Field of Light and Forest of Light are his best-known works. (Compl. ¶¶ 34, 38-39; Am. Compl. ¶¶ 14, 16, 18.) Based on those works, Munro claims trade dress in "large-scale, immersive, light-based design utilizing arrays of thousands of short, end-lighted stems with variably lit bulbs traversably laid out upon a predominantly green space." (Compl. ¶ 82.)2

Defendants Lucy Activewear, Inc., Lucy Apparel, LLC, VF Outdoor Inc., and VF Corp., are all involved in the Lucy brand and Lucy Activewear products. (Compl. ¶¶ 14-18.) Munro's amended complaint would keep as a defendant VF Outdoor Inc., the

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subsidiary of VF Corporation allegedly responsible for Lucy's day-to-day operations, but would replace the rest of the current defendants with Mono Advertising, LLC ("Mono"), the company that managed the advertising campaign at issue. (Am. Compl. ¶¶ 49-52.)

Munro alleges that Mono contacted him through its employee Melissa Rothman and proposed a Lucy advertising and promotional campaign involving Munro's work. (Compl. ¶¶ 62-63; Am. Compl. ¶¶ 54-55.) Munro alleges that Rothman requested additional information about Munro's prior work, including the Field of Light and Forest of Light exhibitions, such as "attendance figures, achieved online/multi-media traffic, and promotional methods used for the exhibitions," which she agreed to keep confidential. (Compl. ¶ 64; Am. Compl. ¶ 56.) Munro allegedly disclosed illustrations of his Field of Light and Forest of Light works and marketing and business techniques to promote his works. (Compl. ¶ 65; Am. Compl. ¶ 57.) Munro also disclosed to Mono that "public officials in Boston's Mayor's Office of Arts, Tourism & Special Events were also courting and had contacted Munro" about creating a public exhibition in Boston. (Compl. ¶ 66; see also Am. Compl. ¶¶ 57-58.) According to Munro, Rothman and Mono then stopped contacting him, and communications from Boston officials ceased soon thereafter. (Compl. ¶¶ 67-68; Am. Compl. ¶¶ 59-60.) Munro assumed that the project was abandoned. (Compl. ¶ 67; Am. Compl. ¶¶ 62.)

Defendants and Mono in fact launched a Lucy light exhibition and advertising campaign in Boston in October 2013, titled Light Forest. (Compl. ¶ 75; Am. Compl. ¶¶ 63-64.) Munro alleges that in making Light Forest, Defendants relied on the confidential information Munro provided about his works, including his marketing methods for an exhibit of that style. (Compl. ¶¶ 70-71; Am. Compl. ¶ 111.) Munro

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contends that Light Forest copied elements of his prior works, "including but not limited to the large-scale, immersive, light-based design utilizing arrays of thousands of short, end-lighted stems with variably lit bulbs traversably laid out upon a predominantly green space." (Compl. ¶ 82; see also Am. Compl. ¶ 65.) Mono's webpage discussing the exhibit states that the Light Forest was "a unique, interactive light and sound installation that responds to participants' movement," was "larger than a football field[,] and consist[ed] of more than 10,000 movement-activated, solar-powered LED lights." lucy light forest, (last visited Sept. 21, 2016); (see also Am. Compl. ¶ 73 (citing the website).)

The advertising campaign included "national TV and web spots, print, in-store mock-up displays, and extensive experiential, online, and social media promotion and engagement, [and was] an immense success." (Compl. ¶ 77; see also Am. Compl. ¶ 70.) According to Munro, Mono has reported the campaign led to more than 100,000 in-person visitors, more than 307 million "PR media impressions," and increased interest and web traffic for Lucy's brand. (Compl. ¶ 77; Am. Compl. 70.) The exhibit remains visible online both to promote the Lucy brand and as an example of Mono's advertising work, and Defendants have suggested they intend to set up another Light Forest in the future. (Compl. ¶ 78; Am. Compl. ¶¶ 72-73.)

Munro alleges that the similar name and elements of the exhibit will confuse attendees and venues seeking exhibits, and they will be led to believe Munro is connected to the exhibit. (Compl. ¶ 132-34; Am. Compl. ¶ 77.) Munro also alleges that Defendants usurped his prospective business opportunity in the Boston area. (Compl. ¶ 111; Am. Compl. ¶ 80.)

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Munro filed this action in Texas state court, and Defendants removed on September 2, 2015. (Notice of Removal.) On September 18, 2015, Defendants filed a motion to dismiss for lack of personal jurisdiction, or in the alternative to transfer venue, and a motion to dismiss for failure to state a claim. After a hearing, the court transferred the case to Minnesota on January 14, 2016, so that Mono could be added as a party and because Mono's conduct occurred in Minnesota.

On February 1, 2016, Defendants renewed their motion to dismiss for failure to state a claim, which the prior court dismissed as moot. Munro's 3-page response to this motion primarily requests to amend his complaint, which he argues would avoid many of the issues raised in Defendants' motion to dismiss.3 (Pls.' Mem. in Opp'n to Mot. to Dismiss ("Pls.' Mem. in Opp'n") at 1-2, Feb. 22, 2016, Docket No. 44.) He also adopts the arguments made in his brief before the Western District of Texas. (Id. at 3; Pls.' Combined Resp. to Defs.' Mot. to Dismiss, Oct. 20, 2015, Docket No. 17.)

On March 10, 2016, Munro filed a motion to amend his complaint, stating that doing so would render Defendants' motion to dismiss moot. (Pls.' Mot. for Leave to Amend, Mar. 10, 2016, Docket No. 49.) Both Munro's original complaint and his proposed amended complaint allege the following claims: trademark and trade dress infringement, trademark and trade dress dilution under the Lanham Act, false designation

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of origin and unfair competition under the Lanham Act, misappropriation, fraud, tortious interference with prospective business opportunities, and unfair competition. Munro's initial complaint also alleged claims titled conspiracy, unjust enrichment, constructive trust, and accounting, but he has abandoned those claims by not including them in his proposed amended complaint, and therefore, the Court will not consider them here.



Faced with Defendants' renewed motion to dismiss, Munro has moved to amend his complaint. Defendants argue that the Court should deny Munro's motion to amend the complaint because it is futile and demonstrates bad faith. Under Federal Rule of Civil Procedure 15(a), courts "should freely give leave" to amend "when justice so requires." "A district court may appropriately deny leave to amend 'where there are compelling reasons such as undue delay, bad faith, or dilatory motive, repeated failure to cure deficiencies by amendments previously allowed, undue prejudice to the non-moving party, or futility of the amendment.'" Sec., Inc. v. Comprehensive Software Sys., Inc., 406 F.3d 1052, 1065 (8th Cir. 2005) (quoting Hammer v. City of Osage Beach, 318 F.3d 832, 844 (8th Cir. 2003)). The court does not err in denying a motion to amend due to futility where the amended complaint would not survive a motion to dismiss for failure to state a claim. Briscoe v. Cty. of St. Louis, 690 F.3d 1004, 1015 (8th Cir. 2012); Zutz v. Nelson, 601 F.3d 842, 850-51 (8th Cir. 2010). Because the Court finds that Munro

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has failed to state a claim even considering his proposed amended complaint, as discussed below, the Court will deny his motion to amend as futile.4


A. Standard of Review

In reviewing a motion to dismiss brought under Federal Rule of Civil Procedure 12(b)(6), the Court considers all facts alleged in the complaint as true to determine if the complaint states a "claim to relief that is plausible on its face." Gomez v. Wells Fargo Bank, N.A., 676 F.3d 655, 660 (8th Cir. 2012) (quoting ...

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