Myung GA, Inc. v. Myung GA of Md, Inc.
| Decision Date | 08 August 2011 |
| Docket Number | Civil Action No. DKC 10-3464 |
| Parties | MYUNG GA, INC. v. MYUNG GA OF MD, INC., et al. |
| Court | U.S. District Court — District of Maryland |
Presently pending and ready for resolution in this trademark infringement and unfair competition action is a motion to dismiss filed by Defendants Myung Ga of MD, Inc. and Ellicott Myung Ga of MD, Inc.1 (ECF No. 18). The issues are fully briefed and the court now rules pursuant to Local Rule 105.6, no hearing being deemed necessary. For the reasons that follow, Defendants' motion will be granted in part and denied in part.
Plaintiff Myung Ga, Inc. is a New Jersey corporation that develops and licenses Korean food recipes and marketing materials. (ECF No. 8 ¶ 9). Defendant Myung Ga of MD, Inc. is a Maryland corporation that operates a Korean restaurant inRockville, Maryland. (Id. ¶ 7). Defendant Ellicott Myung Ga of MD, Inc. operates another Korean restaurant in Ellicott City, Maryland. (Id. ¶ 8).
Plaintiff alleges that it owns a trademark on certain Korean characters that display the English words "Lighthouse, B.B.Q. & Tofu" underneath. (Id. ¶ 10). The Korean characters transliterate to "Bit Go Eul Myung Ga," which translates to "Lighthouse Noble House." (Id. ¶ 11). Plaintiff also alleges that it has developed and owns trade dress consisting of traditional Korean restaurant decor, such as "ancient Korean writing on the walls, faux traditional Korean roof and shingle designs, modified Korean traditional dress uniforms for staff, and wooden benches and accents." (Id. ¶¶ 13-14). Furthermore, Plaintiff claims that it has developed and owns various specific recipes, including recipes for tofu soup, Korean barbeque, pancakes, and stir fried squid. (Id. ¶¶ 13, 16).
According to the complaint, Plaintiff has licensed these items - the trademark, trade dress, and recipes - to several entities over the last decade. (Id. ¶¶ 12, 13). In particular, from 2002 to 2010, Plaintiff licensed Myung Ga of S&S ("S&S"), Inc., as an exclusive licensee in the area of Virginia, Maryland, and Washington, D.C. (Id. ¶¶ 17, 20). That licensedid not allow for the assignment of any rights. (Id. ¶ 19). Plaintiff avers, however, that S&S provided Defendants with "access" to its intellectual property without authorization. (Id. ¶ 23). Plaintiff states that both Defendants now "use" its trademark, trade dress, and recipes. (Id. ¶¶ 24-29).
On December 13, 2010, Plaintiff filed an amended complaint against Defendants alleging four types of claims: (1) trademark infringement under the Lanham Act, 15 U.S.C. § 1114; (2) unfair competition, in connection with its trademark, trade dress, and recipes, under the Lanham Act, 15 U.S.C. § 1125(a); (3) unfair competition for trademark infringement under Maryland law; and, (4) unfair competition for misappropriation of trade secrets under Maryland law. Plaintiff seeks injunctive relief, damages, interest, costs, and attorneys' and investigative fees.
Defendants moved to dismiss Plaintiff's claims on January 2, 2011. (ECF No. 18). Plaintiffs responded on February 1, 2011. (ECF No. 19). No reply was filed.
The purpose of a motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6) is to test the sufficiency of the plaintiff's complaint. See Edwards v. City of Goldsboro, 178F.3d 231, 243 (4th Cir. 1999). Except in certain specified cases, a plaintiff's complaint need only satisfy the "simplified pleading standard" of Rule 8(a), Swierkiewicz v. Sorema N.A., 534 U.S. 506, 513 (2002), which requires a "short and plain statement of the claim showing that the pleader is entitled to relief." Fed.R.Civ.P. 8(a)(2). Nevertheless, "Rule 8(a)(2) still requires a 'showing,' rather than a blanket assertion, of entitlement to relief." Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 n.3 (2007). That showing must consist of more than "a formulaic recitation of the elements of a cause of action" or "naked assertion[s] devoid of further factual enhancement." Ashcroft v. Iqbal, 129 S.Ct. 1937, 1949 (2009) (internal citations omitted).
In its determination, the court must consider all well-pled allegations in a complaint as true, Albright v. Oliver, 510 U.S. 266, 268 (1994), and must construe all factual allegations in the light most favorable to the plaintiff. See Harrison v. Westinghouse Savannah River Co., 176 F.3d 776, 783 (4th Cir. 1999) (citing Mylan Labs., Inc. v. Matkari, 7 F.3d 1130, 1134 (4th Cir. 1993)). The court need not, however, accept unsupported legal allegations, Revene v. Charles County Comm'rs, 882 F.2d 870, 873 (4th Cir. 1989), legal conclusions couched asfactual allegations, Iqbal, 129 S.Ct. at 1950, or conclusory factual allegations devoid of any reference to actual events, United Black Firefighters v. Hirst, 604 F.2d 844, 847 (4th Cir. 1979). See also Francis v. Giacomelli, 588 F.3d 186, 193 (4th Cir. 2009). "[W]here the well-pleaded facts do not permit the court to infer more than the mere possibility of misconduct, the complaint has alleged, but it has not 'show[n] . . . that the pleader is entitled to relief.'" Iqbal, 129 S.Ct. at 1950 (quoting Fed.R.Civ.P. 8(a)(2)). Thus, "[d]etermining whether a complaint states a plausible claim for relief will . . . be a context-specific task that requires the reviewing court to draw on its judicial experience and common sense." Id.
Although the standards outlined above should now be quite familiar, Plaintiff nevertheless spends much of its opposition arguing that Iqbal should not apply here (rather than defending the sufficiency of its complaint under the present standard). None of Plaintiff's arguments are ultimately convincing.
First, Plaintiff would seem to imply that Iqbal should not apply because the Federal Rules of Civil Procedure were amended after the case was announced. (ECF No. 19 ¶ 2). The most recent amendments to the Federal Rules of Civil Procedure left Rule 8(a)(2) and Rule 12(b)(6) untouched. More importantly, nocourt has previously held that an amendment to any Federal Rule of Civil Procedure strikes all precedent pertaining to all of those rules.
Second, Plaintiff relies upon four unpublished decisions to contend that Iqbal does not reach intellectual property cases.2 (ECF No. 19 ¶¶ 5-6). Plaintiff mischaracterizes these cases. In three of them, rather than applying a distinct pleading standard to intellectual property claims, the courts used the standard as announced in Iqbal, but determined that the plaintiffs had satisfied that standard. See Softech Worldwide, LLC v. Internet Tech. Broad. Corp., No. 1:10CV651 JCC, 2010 WL 3418238, at *6 (E.D.Va. Aug. 23, 2010) (); TuneHunter, Inc. v. Samsung Telcoms. Am., LLC, 2:09-cv-148-TJW, 2010 WL 1409245, at *4 (E.D.Tex. Apr. 1, 2010) (); Elan Pharma Int'l Ltd. v. Lupin Ltd., No. 09-1008 (JAG), 2010 WL 1372316, at *4 (D.N.J. Mar. 31, 2010) (). Similarly, in the final case, the court determined that the complaint satisfied Federal Rule of Civil Procedure 8(a)(2) when it identified specific infringing product lines that the defendant had produced. Mark IV Indus. Corp. v. Transcore, L.P., C.A. No. 09-418 GMS, 2009 WL 4828661, at *3 (D.Del. Dec. 2, 2009). In its decision, the court declined to hold that Iqbal heightened the pleading standards for direct patent infringement claims because the specific issue was not before the Court. Id.
Finally, Plaintiff makes a broad argument that applying Iqbal's standard "would be fundamentally unfair, as the Plaintiff requires access to the civil discovery process." (ECFNo. 19, at 3).3 Every plaintiff, no doubt, would prefer to have access to discovery before facing the test of a motion to dismiss. But here again, Plaintiff ignores one of the central purposes of the plausibility standard: restraining unnecessary discovery. A plaintiff cannot simply file a hollow complaint and demand discovery. While "Rule 8 marks a notable and generous departure from the hyper-technical, code-pleading regime of a prior era, . . . it does not unlock the doors of discovery for a plaintiff armed with nothing more than conclusions." Iqbal, 129 S.Ct. at 1950. As the Supreme Court explained further in another context:
[I]t is self-evident that the problem of discovery abuse cannot be solved by careful scrutiny of evidence at the summary judgment stage, much less lucid instructions to juries; the threat of discovery expense will push cost-conscious defendants to settle even anemic cases before reaching those proceedings. Probably, then, it is only by taking care to require allegations that reach the level suggesting conspiracy that we can hope to avoid the potentiallyenormous expense of discovery in cases with no reasonably founded hope that the discovery process will reveal relevant evidence.
Twombly, 550 U.S. at 559 (quotation marks and citations omitted). Plaintiff's protestations about the need for discovery are no reason to suspend the Iqbal standard here.
In short, Iqbal applies to this case.
In Counts I, II, and III of the complaint, Plaintiff asserts claims for trademark infringement and unfair competition under the Lanham Act, as well as unfair competition under Maryland law. A portion of these claims is based on the Defendants' alleged use of Plaintiff's trademark.
The standards for asserting Lanham Act claims for trademark infringement and...
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