Weinacker v. PetFriendly, Inc.

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CHARLES WEINACKER, Plaintiff, v. PETFRIENDLY, INC., et al., Defendants.

No. CA 22-0028-TFM-MU

United States District Court, S.D. Alabama, Southern Division

May 2, 2023

REPORT AND RECOMMENDATION

P BRADLEY MURRAY, UNITED STATES MAGISTRATE JUDGE

This cause is before the undersigned Magistrate Judge for issuance of a report and recommendation, pursuant to 28 U.S.C. § 636(b)(1) and S.D. Ala. GenLR 72(a)(2)(S), on Defendants' Motion to Dismiss (Doc. 31), Plaintiff's response in opposition (Doc. 33), and the movants' reply (Doc. 34). Based on the contents of these pleadings and for the reasons set forth below, the Magistrate Judge RECOMMENDS that Defendants' motion be GRANTED, in part, and DENIED, in part, as set out below.

This is a trademark infringement action, and Plaintiff Charles Weinacker's second attempt to overcome dismissal at the pleading stage. Previously, on June 1, 2022, the undersigned entered a Report and Recommendation (R&R) informing Plaintiff that his Amended Complaint (Doc. 14) was a “shotgun” pleading, lacking sufficiency to proceed beyond the pleading stage into discovery. (See Doc. 20, adopted in part, at Doc. 27). Plaintiff was instructed in the R&R of the essential elements of each claim and his requirement to plead facts sufficient to put Defendants on notice of the claims alleged against them. In attempt to cure the deficiencies laid out in the R&R, Plaintiff has now filed a Second Amended Complaint alleging eight (8) claims against Petfriendly Inc., Pet Friendly Direct, and www.petfriendlydirct.com (a/k/a www.petfriendlybox.com) (collectively, “Defendants”) arising out of Defendants' purported misappropriation and use of Plaintiff's “PET FRIENDLY” Mark. (Doc. 28).

Defendants have, again, filed a motion to dismiss asserting: (1) Plaintiff's failure to separate out and make his allegations clear, including which Defendants did what; (2) Plaintiff's failure to allege facts supporting this Court's personal jurisdiction; (3) Plaintiff's failure to plead claims of infringement under 15 U.S.C. § 1441(1); (4) Plaintiff's failure to plead sufficient facts for claim of copyright infringement; and (5) Plaintiff's failure to plead sufficient facts for claims of common law trademark infringement, trademark dilution, contributory trademark infringement, unjust enrichment, and reputational damage. (See Docs. 31, 34).

This motion is ripe for consideration, and the Court hereby incorporates the required pleading standard and elements of each claim which were thoroughly laid out and discussed at length in this Court's June 1, 2022 Report and Recommendation. (See Doc. 20).

Discussion

In determining the sufficiency of a complaint, a court must take three steps: (1) he court must take note of the elements a plaintiff must plead to state a claim; (2) the court should identify allegations that, because they are no more than conclusions, are not entitled to the assumption of truth; and (3) when there are well-pleaded factual allegations, a court should assume their veracity and then determine whether they plausibly give rise to an entitlement for relief. Malleus v. George, 641 F.3d 560, 563 (3d Cir. 2011).

While courts in the Eleventh Circuit generally afford the pleadings of pro se litigants liberal construction those pleadings must nonetheless conform to procedural rules, Albra v. Advan, Inc., 490 F.3d 826, 829 (11th Cir. 2007), and courts may not act as de facto counsel for a pro se plaintiff and rewrite a deficient pleading. GJR Invs., Inc. v. Cnty. of Escambia, Fla., 132 F.3d 1359, 1369 (11th Cir. 1998), overruled on other grounds as recognized in Randall v. Scott, 610 F.3d 701, 709 (11th Cir. 2010) (“[E]ven in the case of pro se litigants this leniency does not give a court license to serve as de facto counsel for a party. . . or to rewrite an otherwise deficient pleading in order to sustain an action.”).

Under this liberal standard, the undersigned finds Plaintiff has meagerly carried his burden of establishing this Court's personal jurisdiction over the Defendants, Lujan v. Defenders of Wildlife, 504 U.S. 555, 561 (1992), with his allegations that through Defendants' website(s), Defendants have marketed, distributed, offered for sale, and/or sold the infringing products to persons within the State of Alabama, that Defendants regularly transact and conduct business within the State of Alabama, and/or that Defendants have made or established contacts within the State of Alabama. (Docs. 28 at 3-6; 33 at 4-5). Alabama's long-arm provision permits its courts to exercise personal jurisdiction to the full extent permitted by the Due Process Clause of the Fourteenth Amendment. See Mutual Service Ins. Co. v. Frit Industries, Inc., 358 F.3d 1312, 1319 (11th Cir.2004) (“Alabama's long-arm statute authorizes Alabama courts to assert jurisdiction to the fullest extent constitutionally permissible,” such that the sole issue is whether exercise of jurisdiction would violate due process). Due process authorizes the exercise of personal jurisdiction when “(1) the nonresident defendant has purposefully established minimum contacts with the forum;” and “(2) the exercise of jurisdiction will not offend traditional notions of fair play and substantial justice.” Francosteel Corp., Unimetal-Normandy v. M/V Charm, Tiki, Mortensen & Lange, 19 F.3d 624, 627 (11th Cir. 1994). Notably, Plaintiff has provided no actual evidence of sales to Alabama; however, Defendants have yet to deny such alleged sales and/or contacts in Alabama. Future Technology Today, Inc. v. OSF Healthcare Systems, 218 F.3d 1247, 1249 (11th Cir. 2000) (Plaintiff bears the initial burden of alleging personal jurisdiction, then the burden shifts to the defendant to make a prima facie evidentiary showing, by affidavits or otherwise that jurisdiction does not exist.). Furthermore, review of Petfriendlybox.com reveals that the site sells “pet wellness” products for dogs and cats and ships products to door fronts across the country.^[1] This act of seeking business across the nation, including in the State of Alabama, arguably reflects purposeful activity directed toward the forum State, such that Defendants should reasonably anticipate being brought into court in Alabama. See Asahi Metal Indus. Co. v. Superior Court of California, 480 U.S. 102, 112 (1987). For these reasons, personal jurisdiction is established.

Additionally, though not the model of clarity, Plaintiff's complaint does put Defendants on notice of the claims against them. Marsh v. Butler Cnty, 212 F.3d 1318, 1321 (11th Cir. 2000) (The complaint must simply “give the defendant fair notice of what the Plaintiff's claim is and the grounds upon which it rests.”). Plaintiff has identified the “PET FRIENDLY” mark subject of the suit and has indicated that Defendants are using the mark in question to sell “a variety of products” through a specific, articulated website. (See Doc. 28 at 2). As asserted by Defendants, Plaintiff fails to specifically describe what these “infringing products” are; however, Plaintiff maintains that for over three decades he has manufactured, advertised, marketed, promoted, distributed and sold “pet products” bearing the PET FRIENDLY Mark. (Doc. 28 at 2, 4). Plaintiff alleges the parties “are in the same industry.” Id. Notably, as previously discussed, Defendants' website(s) indicates they too sell pet products. (See, supra, n.1). As to which Defendant is liable for the alleged actions, Plaintiff has demonstrated the Defendants share legal connections which are indistinguishable at the pleading stage, and the Court agrees. (Docs. 28 at 3; 33 at 4). The Court, after reviewing the complaint, finds that the allegations are not so vague or ambiguous that Defendants cannot frame a responsive pleading. Accordingly, Plaintiff's complaint cannot be viewed as a shotgun pleading.

The Court turns now to Plaintiff's claims.

1. Claim 1 -- Federal Trademark Infringement

Plaintiff alleges Defendants are utilizing a mark “confusingly similar to PET FRIENDLY's registered marks in violation of the Lanham Act, codified at 15 U.S.C. § 1051 et seq.” (Doc. 28 at 6) (emphasis added). Admittedly, however, Plaintiff's formally registered PET FRIENDLY mark was not renewed and is considered abandoned by the United States Patent and Trademark Office. (See Id. at 5, 6). While Plaintiff may own a valid common law mark and not have it registered, it is similarly true that a past registration that has lapsed or was not renewed is not a valid registered mark. Because Plaintiff has no valid, registered mark, it is RECOMMENDED that to the extent Claim 1 is an attempt to sue under 15 U.S.C. § 1114(1), such claim be dismissed. It is further RECOMMENDED that any claims for infringement of a registered mark be dismissed with prejudice.

However “even if a trademark is not federally registered, it may still be enforceable under § 43(a) of the Lanham Act, codified at 15 U.S.C. § 1125(a), which creates a federal cause of action for trademark infringement.” Matal v. Tam, 582 U.S. 218, 225 (2017). Plaintiff has made only general allegations of violations of the Lanham Act, thus including claims pursuant to § 1125. Importantly, the protections of § 1125(a) apply to “qualifying” unregistered trademarks, Two Pesos, Inc., v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). To pursue a claim for an unregistered mark, a plaintiff first bears the burden of showing his own right to use the mark in question, ITC Ltd. V. Punchgini, Inc., 482 F.3d 135, 154 (2d Cir. 2007), that is, that he “made the first use of the mark to identify his goods or service and continues to use the mark commercially.” Id. at 147. Next, a plaintiff must demonstrate that he has a valid trademark entitled to protection, and the defendant's use of a similar...