Who Dat Yat Chat, LLC v. Who Dat, Inc., CIVIL ACTION NO: 10-1333

• Decision Date: 08 June 2012
• Docket Number: CIVIL ACTION NO: 10-1333,c/w 10-2296
• Parties: WHO DAT YAT CHAT, LLC v. WHO DAT, INC.
• Court: U.S. District Court — Eastern District of Louisiana

WHO DAT YAT CHAT, LLC

v.WHO DAT, INC.

CIVIL ACTION NO: 10-1333

c/w 10-2296

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF LOUISIANA SECTION: "J"(4)

Dated: June 8, 2012

ORDER AND REASONS

Before the Court are (1) Storyville Apparel LLC ("Storyville")'s Motion to Strike and for a More Definite Statement Under Rule 12 (Rec. Doc. 304), Who Dat, Inc. ("WDI")'s opposition to same (Rec. Doc. 317), and Storyville's reply (Rec. Doc. 327); (2) Fleurty Girl, LLC ("Fleurty Girl")'s Motion to Dismiss Counts 1 and 2 of Who Dat?, Inc.'s Fourth Amended Complaint (Rec. Doc. 309) and WDI's opposition to same (Rec. Doc. 323); and (3) WDI's Motion for Partial Summary Judgment Dismissing Affirmative Defenses of Functionality and Abandonment (Rec. Doc. 312), oppositions filed by Monogram Express (Rec. Doc. 316), Storyville (Rec. Doc. 318), Fleurty Girl (Rec. Doc. 320), and Who Dat Yat Chat, LLC ("WDYC") (Rec. Doc. 315), replies by WDI (Rec. Docs. 339, 340, & 341), and a sur-reply by Fleurty Girl (Rec. Doc. 345). Having considered the motions, the legal memoranda, the record, and the applicable law, the Court is prepared to rule on the motions.

FACTUAL AND PROCEDURAL BACKGROUND

The Court has previously summarized in detail the facts and procedural history pertaining to this civil action involving alleged trademark rights in the phrase "Who Dat" in connection with certain goods and services, chiefly, restaurant services and apparel.¹ This litigation includes two consolidated cases. The first is a declaratory judgment action filed by WDYC in 2010. The second is the lawsuit filed by WDI, who alleges various trademark-related claims with respect to the phrase "Who Dat." The Court has previously had occasion to rule on a number of dispositive motions in this case: motions to remand, to transfer, to dismiss, and for summary judgment. In its most recent ruling on the several defendants' motions for summary judgment, the Court held and/or otherwise found as follows:

The Court does not decide that WDI has a protectable trademark. It only decides that the movants have not carried their summary judgment burden of demonstrating the absence of a genuine issue of any material fact regarding whether or not WDI has a protectable mark or marks in the phrase "Who Dat."²

***

Pretermitting the issue of intent, the Court finds that there is sufficient evidence of use for WDI to survive summary judgment on the movants' abandonment defense.³

***The Fifth Circuit's decision in Smack Apparel leaves no room for this Court to countenance Storyville's functionality argument. . . . [T]his court is bound by precedent suggesting that a consumer's desire to express his identity with a mark does not make it functional. "Who Dat" does not make a t-shirt work better. Therefore, it is not functional.⁴

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[With respect to state law trademark infringement claims,] [t]he movants do not carry their summary judgment burden, largely for the reasons previously discussed in the context of the federal infringement claims.⁵

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The record is not sufficiently developed for the Court to rule as a matter of law on the federal dilution claim.⁶

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[Several claims conceded by WDI must be dismissed, and] WDI is ordered to amend its complaint to remove allegations regarding claims against parties that have been dismissed and to clarify the causes of action it presses forward.⁷

Since the ruling on the defendants' motions for summary judgment, the Court conducted a pretrial conference. During the pretrial conference, the Court ordered the parties to pare down the exhibit and witness lists and generally attempt to reduce the volume of evidence to be submitted at trial.⁸ Thereafter, theCourt continued the jury trial to October 29, 2012.⁹ The Court instructed WDI to submit a revised, restated complaint.¹⁰ The parties submitted amended exhibit and witness lists. The Court granted defendant Monogram Express's motion to set aside the default.¹¹ With leave of Court, WDI filed its Fourth Amended Complaint on April 26, 2012.¹² Subsequently, the parties have filed several motions that are the subject of the instant order: a Motion to Strike, Motion to Dismiss, and Motion for Partial Summary Judgment.¹³

THE PARTIES' ARGUMENTS

A. Motion to Strike

Storyville moves to strike, and in the alternative, for a more definite statement. It argues that WDI's Fourth Amended Complaint fails to comply with this Court's order mandating amendment of the complaint. Specifically, Storyville argues, first, that the references to the Saints and the NFL and any agreements with them are immaterial and should either be stricken or clarified with a more definite statement of what Saints-derived rights are asserted against Storyville. Second,Storyville argues that the allegations concerning its infringing or diluting activities and the allegations concerning disparagement are too vague for it to form a reasonable response, and thus the complaint should be clarified with a more definite statement. Third, Storyville argues that the alleged trademark owned by WDI is vaguely presented as applying to almost everything but apparel, and thus should also be clarified with a more definite statement.

WDI's response initially states that most of the portions of the complaint objected to by Storyville are identical to those that were in WDI's previous, third amended complaint. WDI also avers that because Storyville refused to agree to WDI's offer to amend the complaint without court intervention, Storyville brought the motion to strike in bad faith for purposes of harassment, delay, or vexation. WDI addresses Storyville's arguments with respect to individual paragraphs of the Fourth Amended Complaint. For example, WDI argues: Paragraphs 7 and 42 adequately describe Storyville's allegedly infringing conduct; Paragraphs 14, 30-33, and 37 make proper references to the Saints; Paragraph 23 clearly refers not to the WDI-Saints settlement agreement, but a 1988 licensing agreement; and Paragraph 45 is the subject of WDI's voluntary offer to Storyville to delete the paragraph, which offer Storyville rejected. In conclusion, WDI argues that the specific factualmatter that Storyville requests WDI include in the complaint is not mandated by Rule 8.

In reply, Storyville reiterates its arguments and makes several other points. With respect to what it views as WDI's effort to get Storyville to withdraw its motion to strike, Storyville avers that its response was that as long as WDI was trying to assert the Saints' rights re-labeled as WDI's rights, the complaint would still be objectionable. It argues that the Fourth Amended Complaint does not differentiate which actions are alleged to be attributable to which defendants. Storyville further states that it did not file its motion for purposes of delay.

B. Motion to Dismiss

Fleurty Girl moves to dismiss Counts 1 and 2 of the Fourth Amended Complaint. With respect to Count 1, Fleurty Girl argues that the request for a permanent injunction does not allege a legal cause of action because there is no injunctive cause of action under federal law. It states that WDI would not be prejudiced by the dismissal of Count 1 because WDI prays for injunctive relief in other counts of the complaint. In the alternative, Fleurty Girl moves for Count 1 to be stricken as redundant. With respect to Count 2, Fleurty Girl argues that its allegation of deceptive advertising under state law fails to state a claim because it does not specify which Louisiana lawforms the basis for the claim, the Louisiana false advertising statute does not provide a private right of action, and WDI fails to make any allegations of specific statements or representations that were made by Fleurty Girl. Fleurty Girl states that WDI would suffer no prejudice from the dismissal of Count 2 because other counts ask for relief that is coterminous with the relief requested in Count 2.

WDI's response initially states that the objected-to counts in the Fourth Amended Complaint are substantively identical to counts that were in the third amended complaint. WDI also states that Fleurty Girl refused to agree to WDI's offer to amend the complaint without court intervention. With respect to the request for a permanent injunction in Count 1, WDI argues that it properly requested injunctive relief. It states that while it previously attempted to agree with Fleurty Girl to amend its complaint to remove Count 1, the Federal Rules do not require that the count be stricken. With respect to Count 2, WDI argues that it has pled sufficient facts in support of its deceptive advertising claim. It argues that Fleurty Girl's willful infringement, combined with Fleurty Girl's repeated encouragement to third parties to sell infringing merchandise, constitutes deceptive advertising. WDI also argues that the Federal Rules do not require it to plead the specific statutory basis for its claim. It alleges that it has a cause of action under theLouisiana Unfair Trade Practices Act ("LUTPA"). Finally, WDI states that if Count 2 fails to meet the mandatory pleading standard, the appropriate remedy is for leave to be granted for WDI to state more specific facts.

C. Motion for Partial Summary Judgment

WDI moves for dismissal of the defendants' affirmative defenses of functionality and abandonment. With respect to abandonment, WDI avers that the undisputed facts, based upon the affidavits, declarations, and exhibits submitted with its motion, demonstrate continuous use of its marks from 1983 until the present. WDI submits with its motion several affidavits as well as licensing agreements. It argues that there is no genuine dispute that there has been no cessation of use of its Who Dat marks in commerce from 1983 until the present, but even if there was a cessation of use, there is no evidence that WDI intended not to resume use. Specifically, as evidence of its intent to continue use, WDI avers that it has continuously taken steps to register its trademarks, has policed...