United States: Judge Ross Examines Morass Of Pleadings And Refines Dispute To Supported Claims Of Patent, Copyright, And Trade Dress Infringement

In an earlier post today we reported on the Third Amended Complaint filed by Lisa Duer ("Duer"), a resident of Woodstock, Georgia, alleging patent infringement, trademark infringement, copyright infringement, and trade dress infringement action against Bensussen Deutsch & Associates, Inc. ("BDA"), a Washington corporation, and Eli Lilly and Company ("Lilly"), an Indiana corporation (collectively the "Defendants"). This post addresses Judge Eleanor L. Ross's Order of July 8, 2015, which gave rise to that filing.

On July 8, Judge Ross ruled on three motions, one filed by Defendants and two by Plaintiffs. The Court granted in part and denied in part the motion to dismiss of the Defendants and the motion to allow a Second Amended Complaint by Duer and denied Duer's motion to file the Third Amended Complaint "as currently submitted." However, the Court allowed a more limited Third Amended Complaint – "limited to the inclusion of Plaintiff's additional trademark infringement claim."

The procedural history of the case includes an original motion to dismiss and a response which included a Proposed Second Amended Complaint to cure deficiencies, which Defendants contended remained uncured. This gave rise to Plaintiff's request for leave to file a Third Amended Complaint. In denying the motion to file the Third Amended Complaint as submitted, the Court addressed the issues that remained for decision in the Second Amended Complaint. The Court assumed the facts alleged by Plaintiff were true and those facts, as contained in the Third Amended Complaint filed in accordance with the Court's Order, were set forth in our prior post. The picture of Plaintiff's product is repeated here, and the facts as alleged by Plaintiff can be reviewed in our prior post.

In reviewing the motion to dismiss the Court referred to the so-called "plausibility standard" and distinguished that standard from a "probability requirement" citing Bell Atl. Corp. v. Twombly, 550 U.S. 544, 556 (2007): "Even if it is extremely unlikely that a plaintiff will recover, a complaint may nevertheless survive a motion to dismiss for failure to state a claim, and a court reviewing such a motion should bear in mind that it is testing the sufficiency of the complaint and not the merits of the case." P. 5.

The Court first addressed trade dress infringement as alleged in Count III of the Second Amended Complaint. In order to state a trade dress infringement claim, the following elements must be alleged:

  1. that the product design of the two products is confusingly similar;
  2. the features of the produce design are primarily non-functional; and
  3. the product design is inherently distinctive or has acquired secondary meaning.

Pp. 6-7, quoting RMS Titanic, Inc. v. Zaller, 978 F. Supp. 2d 1275, 1293 (N.D. Ga. 2013) ( discussed in a prior post).

Defendants contended that the second and third elements were not adequately plead. In disagreeing, Judge Ross found with regard to the second element that the Plaintiff alleged the trade dress was non-functional and "the Court was not prepared to find that" . . . "the particular shape of the product, the vertical arrangement of the days of the week, and the chosen color scheme" were all functional. P. 7. While the existence of a utility patent claiming these features "is strong evidence that the features" . . . "are functional," Duer is entitled to "the opportunity to 'carry the heavy burden of showing that the feature[s are] not functional.'" P. 7, quoting TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 30 (2001). With regard to the third element, Judge Ross also found that whether or not the Plaintiff's product has gained secondary meaning was a question of fact. P. 9, citing Conagra, Inc. v. Singleton, 743 F.2d 1508, 1513 (11th Cir. 1984).

The Court noted five factors to be reviewed in determining acquisition of secondary meaning:

  1. length and manner of use;
  2. nature and extent of advertising and promotion;
  3. efforts to promote a conscious connection between the public mind and the product;
  4. identification of name with product or venture; and
  5. existence of intentional copying.

P. 9, citing Conagra at 1513 and Brooks Shoe Mfg. Co. v. Suave Shoe Corp., 716 F.2d 854, 860 (11th Cir. 1983) (for the fifth factor). The Court found these factors in sufficient abundance to survive the motion to dismiss.

The Court found Duer's false advertising claim under the Lanham Act failed to state a claim because it only addressed a product insert, which by definition could not materially effect a purchase decision. P. 11 The Court dismissed the unfair competition claim under the Lanham Act because Duer did not allege that she was the "actual source of the physical goods distributed by BDA. P. 12.

Judge Ross found that Duer's assertion of Georgia Uniform Deceptive Trade Practice Act and tortious interference with contract claims relied upon the identical facts relied upon for federal claims of copyright, patent and trade dress infringement and were preempted by the federal claims. Preemption by federal Copyright law is explicit, while the Court found at pages 13-14 that the claims were conflicting and stood"as an obstacle to the accomplishment and execution of the full purposes and objectives of Congress." Hunter Douglas, Inc. v. Harmonic Design, Inc., 153 F.3d 1318, 1332 (Fed. Cir. 1998) [additional internal cites omitted].

The Court found Duer's allegations amounted to a "reverse passing off claim," where Defendants sold Duer's product as if the product belonged to Defendants. This claim was of a nature preempted by the Copyright Act. P. 14, citing Gary Friedrich Enters., LLC v. Marvel Enters., Inc., 713 F. Supp. 2d 215, 220 (S.D.N.Y. 2010). Judge Ross was unpersuaded by Duer's argument that an additional element of deception beyond copyright infringement was involved (as the Court found this element an implicit part of the copyright infringement claim). The analysis of the tortious interference claim followed the same reasoning and was not saved from preemption by the existence of a breached license to which Duer was not a party.

Judge Ross dismissed Duer's allegations of fraud for failing to plead with particularity (1) the falsity of the representations made or that statements as to future performance were known not to be true when made; (2) allegations of Defendants' gains from the fraud; and (3) allegations of fraud on customers are not actionable as not being made to Duer. Because Duer's punitive damage claim was premised only on fraud, it too must be dismissed.

The Court agreed with Defendants that Duer had been on notice of the deficiencies in the false and deceptive advertising, unfair competition, deceptive trade practices, tortious interference, and fraud claims before submitting its final proposed amendment and therefore those claims were dismissed with prejudice. The punitive damages claim was also dismissed, though not with prejudice.

The case is Lisa Duer v. Bensussen Deutsch & Associates, Inc., and Eli Lilly and Company, No. 1:14-cv-01589-ELR, Dkt. 110, decided July 8, 2015, by Judge Eleanor L. Ross in the U.S. District Court for the Northern District of Georgia, Atlanta Division.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement

    Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of www.mondaq.com

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at enquiries@mondaq.com.

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions