Plasticase response to invicta whining about dismissal

Case 0:10-cv-60524-WJZ Document 49

Entered on FLSD Docket 09/16/2010 Page 1 of 8

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF FLORIDA Case No.: 10-CV-60524-Zloch/Rosenbaum

PLASTICASE, INC., a Foreign corporation, Plaintiff, v.

INVICTA WATCH COMPANY OF AMERICA, INC., a Florida corporation, Defendant. __________________________________/

PLAINTIFF’S MEMORANDUM OF LAW IN OPPOSITION TO DEFENDANT’S MOTION TO DISMISS COUNTS III AND IV OF THE AMENDED COMLPAINT Plaintiff Plasticase, Inc. (hereinafter “Plaintiff” or “Plasticase”), by and through undersigned counsel, hereby submits this Memorandum of Law in Opposition to Defendant Invicta Watch Company of American, Inc.’s (hereafter “Defendant” or “Invicta”) Motion to Dismiss Counts III and IV of the Amended Complaint [DE 47], and states as follows: I. INTRODUCTION On Friday, August 6, 2010, Plasticase was granted leave to file its First Amended Complaint (“Amended Complaint”) which asserted additional claims for Federal false designation of origin and Florida common law unfair competition. The Amended Complaint was filed the next court day on Monday, August 9, 2010. See, [DE 41] & [DE 43]. Defendant has moved to dismiss Counts III and IV of the Amended Complaint, asserting that the causes of action alleged in said counts “sound in trade dress infringement and the pleadings are legally and factually insufficient to support a trade dress claim.” As is evidenced from a plain reading of the LOTT & FRIEDLAND, P.A. • 355 Alhambra Circle • Suite 1100 • Coral Gables, Florida 33134 (305) 448-7089 • (305) 446-6191 telecopier

Case 0:10-cv-60524-WJZ Document 49

Entered on FLSD Docket 09/16/2010 Page 2 of 8 Case No.: 10-CV-60524-Zloch/Rosenbaum

pleadings, the causes of action alleged in Counts III and IV of the Amended Complaint are directed to Defendant’s unlawful acts of “passing off,” not trade dress infringement.

The

Amended Complaint contains all required allegations to state a claim for “passing off” under both Federal and state law. Accordingly, Defendant’s Motion should be DENIED. II. ARGUMENT AND CITATION OF AUTHORITIES a. Legal Standard Defendant has moved to dismiss under Fed. R. Civ. P. 12(b)(6) and, therefore, the Court must construe the Amended Complaint in the light most favorable to Plasticase and accept the factual allegations therein as true. Brooks v. Blue Cross & Blue Shield of Fla., Inc., 116 F.3d 1364, 1369 (11th Cir. 1997). "To survive a motion to dismiss, a complaint must contain sufficient factual matter, accepted as true, to state a claim to relief that is plausible on its face.”

Ashcroft v. Iqbal, 129 S. Ct. 1937, 1949, 173 L. Ed. 2d 868 (2009). “To meet this plausibility standard, a plaintiff must plead factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Id. Based on the weight of the authorities cited below, Plasticase’s Amended Complaint goes well beyond pleading the necessary factual and legal allegations to state a plausible claim to relief for Defendant’s acts of “passing off” in violation of 15 U.S.C. 1125(a). b. Counts III and IV of the Amended Complaint Concern “Passing Off,” Not Trade Dress Defendant’s motion rests on the premise that Counts III and IV of the Amended Complaint are trade dress claims because Plasticase is purportedly “claiming confusion as to product design.” However, Defendant has misconstrued and mischaracterized Counts III and IV as trade dress claims. Paragraph 24 of the Amended Complaint states: 2 LOTT & FRIEDLAND, P.A. • 355 Alhambra Circle • Suite 1100 • Coral Gables, Florida 33134 (305) 448-7089 • (305) 446-6191 telecopier

Case 0:10-cv-60524-WJZ Document 49

Entered on FLSD Docket 09/16/2010 Page 3 of 8 Case No.: 10-CV-60524-Zloch/Rosenbaum

Upon information and belief, at least as early as July 2009, Invicta displayed and, offered for sale Plasticase’s NANUKTM 905 and 915 cases to customers. Invicta then sold to clients throughout the United States who placed orders as a result of such offers for sale, knockoff versions of Plasticase’s NANUK model 905 and 915 cases.

See, [DE 43] at 5. It is therefore clear that Counts III and IV concern Defendant’s acts of “passing off” Plasticase’s NANUK storage cases as its own, not trade dress infringement.

“Passing off” is one of two activities expressly prohibited under the False Designation of Origin statute, 15 U.S.C. §1125(a) (otherwise known as §43(a) of the Lanham Act). See, Del Monte Fresh Produce Co. v. Dole Food Co., 136 F. Supp. 2d 1271, 1284 (S.D. Fla. 2001)(“[§43(a)] has been interpreted by courts as prohibiting misrepresentations as to the source of a product primarily in two kinds of activities: (1) false advertising and (2) ‘palming off’ (also called ‘passing off’)”). “A passing off claim requires a showing that the defendant falsely represented that the plaintiff was the ‘source’ of the goods when it was not, that is, that it falsely suggested that the plaintiff was "the producer of the tangible product sold [by the defendant] in the marketplace." Optimum Techs., Inc. v. Henkel Consumer Adhesives, Inc., 496 F.3d 1231, 1248 (11th Cir. 2007), citing Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 28 (2003). This is precisely the behavior alleged in the Amended Complaint for which Plasticase seeks relief.

Despite Defendant’s assertion to the contrary, Plasticase need not allege nor establish that its product design or product configuration is entitled to trademark or trade dress protection to bring a claim for passing off. To wit, “§43(a) is violated if the plaintiff’s product is used to sell the defendant’s product, even if the configuration of plaintiff’s product does not qualify for trademark protection.” McCarthy on Trademarks and Unfair Competition, 27:47 (4th Ed. 2010).

The “passing off” prohibition of §43(a) of the Lanham Act is designed to protect consumers 3 LOTT & FRIEDLAND, P.A. • 355 Alhambra Circle • Suite 1100 • Coral Gables, Florida 33134 (305) 448-7089 • (305) 446-6191 telecopier

Case 0:10-cv-60524-WJZ Document 49

Entered on FLSD Docket 09/16/2010 Page 4 of 8 Case No.: 10-CV-60524-Zloch/Rosenbaum

from deceptive and unsavory businesses practices such as those of Defendant, regardless of whether the plaintiff’s products are protectable by trademark law. See, Andela v. Univ. of Miami, 692 F. Supp. 2d 1356, 1376 (S.D. Fla. 2010)(“§43 is one of the few provisions that goes beyond trademark protection.").

Defendant’s assertion that “there is no mark or symbol” involved in the Amended Complaint is irrelevant and completely misses the point of Plasticase’s passing off allegations.

Plasticase has indeed alleged more than sufficient facts and legal elements to support a claim for passing off under §43(a). As Defendant’s motion is premised on the incorrect assumption that Counts III and IV sound in trade dress, it is fatally flawed and should be denied. c. Plasticase has Pled the Necessary Elements to State a Claim under Section 43(a) of the Lanham Act To state a claim under 15 U.S.C. 1125(a) for passing off, Plasticase must allege: (1) that Defendant, in connection with “any goods or services,” uses a “false designation of origin,” “false or misleading description of fact,” or “false or misleading representation of fact”; (2) “in commercial advertising or promotion”; (3) where the description or representation “is likely to cause confusion…as to the origin, sponsorship, or approval” or “misrepresents the nature, qualities, or geographic origin of the defendant's goods, services or commercial activities”; and (4) Plasticase has been or is likely to be damaged by these acts. See, 15 U.S.C. 1125(a).1

1

The Southern District of Florida in Del Monte Fresh Produce Co. v. Dole Food Co., supra, notes: “although the Eleventh Circuit has not addressed the requirement for this cause of action, the Second Circuit has held that a plaintiff bringing a claim for reverse palming off under the Lanham Act must allege the following: (1) that the item at issue originated with the plaintiff; (2) that the origin of the work was falsely designated by the defendant; (3) that the false designation of origin was likely to cause consumer confusion; and (4) that the plaintiff was harmed by the defendant's false designation of origin.” (emphasis added). Reverse palming off is quite similar to palming off (or “passing off”) except that in engaging in "reverse palming off" the defendant sells the plaintiff's product under the defendant's name. Here , the Defendant offered for sale and displayed Plasticase’s storage cases but delivered its knock-off version to customers when it fulfilled orders based on such offers for sale. This is the prototypical passing off factual scenario.

4 LOTT & FRIEDLAND, P.A. • 355 Alhambra Circle • Suite 1100 • Coral Gables, Florida 33134 (305) 448-7089 • (305) 446-6191 telecopier

Case 0:10-cv-60524-WJZ Document 49

Entered on FLSD Docket 09/16/2010 Page 5 of 8 Case No.: 10-CV-60524-Zloch/Rosenbaum

Turning to the Amended Complaint, Plasticase’s has pled all necessary legal and factual elements, as follows: 24. Upon information and belief, at least as early as July 2009, Invicta displayed and, offered for sale Plasticase’s NANUKTM 905 and 915 cases to customers.

Invicta then sold to clients throughout the United States who placed orders as a result of such offers for sale, knockoff versions of Plasticase’s NANUK model 905 and 915 cases…. …50. Invicta displayed and offered for sale Plasticase’s NANUKTM model 905 and 915 cases. Invicta then sold to clients throughout the United States who placed orders as a result of such offer for sale, knock-off versions of Plasticase’s NANUKTM model 905 and 915 cases.

51. Invicta’s actions above constitute the misrepresentation of the nature, characteristics and qualities of knock-off cases sold by Invicta in interstate commerce.

52. Invicta’s actions above are likely to cause confusion and/or caused actual confusion as to the origin, sponsorship, or approval of knock-off cases sold by Invicta in interstate commerce.

53. Invicta’s acts constitute violations of Section 43(a) of the Lanham Act, as amended, 15 U.S.C. § 1125(a).

54. By reason of the acts of Invicta herein alleged, Plasticase has suffered and, unless Invicta is restrained from continuing its wrongful acts, will continue to suffer serious and irreparable harm for which it has no adequate remedy at law.

See, [DE 43] at 5, 8-9.

Plasticase first alleges that Defendant displayed and offered for sale Plasticase’s products and then sold its own products to customers instead. This is a factual allegation describing a classic case of “passing off.” Plasticase then pleads the required elements for “passing off” under §43(a) of the Lanham Act, each element supported by factual allegations in the Amended Complaint. In construing these allegations in the light most favorable to Plasticase, there is no doubt that Plasticase has presented sufficient allegations to at the very least “allow the court to draw the reasonable inference” that Count III is a claim that Defendant is liable for passing off 5 LOTT & FRIEDLAND, P.A. • 355 Alhambra Circle • Suite 1100 • Coral Gables, Florida 33134 (305) 448-7089 • (305) 446-6191 telecopier

Case 0:10-cv-60524-WJZ Document 49

Entered on FLSD Docket 09/16/2010 Page 6 of 8 Case No.: 10-CV-60524-Zloch/Rosenbaum

under Federal law. Ashcroft v. Iqbal, supra. Accordingly, Defendant’s motion to dismiss with respect to Count III should be denied. d. The Elements of Florida Common Law Unfair Competition, i.e. Passing Off, are Identical to a 43(a) Claim An unfair competition claim under Florida common law, like Federal false designation of origin, is often referred to as “passing off.” See, N. Atl. Marine, Ltd. v. Sealine Int'l, Ltd., 2007 U.S. Dist. LEXIS 23046 (S.D. Fla. 2007). As pointed out by Defendant, claims for unfair competition under Florida law are identical to those claims under the §43(a) of the Lanham Act, with the exception of the interstate commerce requirement. See, Investacorp, Inc. v. Arabian, inv. Banking Corp., 931 F.2d 1519 (11th Cir. 1991); Babbitt Elecs., Inc., 38 F.3d at 1182; Petmed Express, Inc. v. Medpets.com, Inc., et al., 336 F. Supp. 2d 1213, 1217-19 (S.D.Fla. 2004); American United Life Insurance Co. v. American United Insurance Co., 15 USPQ2d 1873, 1877 (S.D.Fla. 1990). Here, Plasticase’s allegations with respect to Florida common law unfair competition mirror those of its well-pled Federal passing off claim: 56. Invicta displayed and offered for sale Plasticase’s NANUKTM model 905 and 915 cases. Invicta then sold to clients throughout the State of Florida who placed orders as a result of such offer for sale, knock-off versions of Plasticase’s NANUKTM model 905 and 915 cases.

57. Invicta’s actions above constitute the misrepresentation of the nature characteristics and qualities of knock-off cases sold by Invicta in Florida.

58. Invicta’s actions above are likely to cause confusion and/or caused actual confusion as to the origin, sponsorship, or approval of knock-off cases sold by Invicta in Florida.

59. Invicta’s acts constitute unfair competition under the common law of the State of Florida.

60. By reason of the acts of Invicta herein alleged, Plasticase has suffered and, unless Invicta is restrained from continuing its wrongful acts, will continue to suffer serious and irreparable harm for which it has no adequate remedy at law.

6 LOTT & FRIEDLAND, P.A. • 355 Alhambra Circle • Suite 1100 • Coral Gables, Florida 33134 (305) 448-7089 • (305) 446-6191 telecopier

Case 0:10-cv-60524-WJZ Document 49

Entered on FLSD Docket 09/16/2010 Page 7 of 8 Case No.: 10-CV-60524-Zloch/Rosenbaum

See, [DE 43] at 9. Again, Plasticase has alleged facts concerning Defendant’s acts of “passing off,” i.e. unfair competition, and has pled the required legal elements supported by such facts.

Construing these allegations in the light most favorable Plasticase, the Amended Complaint sufficiently states a claim for relief for Florida common law unfair competition.

Defendant’s

motion to dismiss with respect to Count IV should therefore be denied.

III. CONCLUSION Counts III and IV of the Amended Complaint concern unlawful passing off, not trade dress infringement. As Plasticase has sufficiently pled the necessary legal and factual bases for passing off, Defendant has no basis to seek a dismissal of Plasticase’s false designation of origin or Florida unfair competition claims.

Accordingly, Plasticase respectfully requests that

Defendant’s Motion to Dismiss Counts III and IV of the Amended Complaint be DENIED. Dated: September 16, 2010

Respectfully submitted, LOTT & FRIEDLAND, P.A.

By:

s/Ury Fischer Ury Fischer Florida Bar No. 0048534 e-mail: ufischer@lfiplaw.com Geoffrey Lottenberg Florida Bar No. 056240 e-mail: glottenberg@lfiplaw.com 355 Alhambra Circle, Suite 1100 Coral Gables, Florida 33134 (305) 448-7089 telephone (305) 446-6191 telecopier Attorneys for Plaintiff, Plasticase, Inc.

7 LOTT & FRIEDLAND, P.A. • 355 Alhambra Circle • Suite 1100 • Coral Gables, Florida 33134 (305) 448-7089 • (305) 446-6191 telecopier

Case 0:10-cv-60524-WJZ Document 49

Entered on FLSD Docket 09/16/2010 Page 8 of 8 Case No.: 10-CV-60524-Zloch/Rosenbaum

CERTIFICATE OF SERVICE I hereby certify that on the above referenced date, I electronically filed the foregoing document with the Clerk of the Court using CM/ECF. I also certify that the foregoing document is being served this day on all counsel of record or pro se parties identified on the attached Service List in the Manner specified, either via transmission of Notices of Electronic Filing generated by CM/ECF or in some other authorized manner for those counsel or parties who are not authorized to receive electronically Notices of Electronic Filing.

s/Ury Fischer Ury Fischer Robert M. Schwartz Florida Bar No. 304018 2445 Hollywood Boulevard Hollywood, Florida 33020 litigation@patentmiami.com Attorney for Defendant Invicta Watch Company of America, Inc. Service via Notices of Electronic Filing generated by CM/ECF

8 LOTT & FRIEDLAND, P.A. • 355 Alhambra Circle • Suite 1100 • Coral Gables, Florida 33134 (305) 448-7089 • (305) 446-6191 telecopier