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Car-Freshner Corp.; and Julius Samann, Ltd v. Getty Images

September 27, 2011

CAR-FRESHNER CORP.; AND JULIUS SAMANN, LTD., PLAINTIFFS,
v.
GETTY IMAGES, INC.; AND GETTY IMAGES (US), INC., DEFENDANTS,



The opinion of the court was delivered by: Hon. Glenn T. Suddaby, United States District Judge

MEMORANDUM-DECISION and ORDER

Currently before the Court, in this trademark and unfair competition action filed by Car-Freshner Corporation ("CFC") and Julius Samann Ltd. ("JSL") (collectively "Plaintiffs") against Getty Images, Inc. and Getty Images (U.S.) Inc. ("Defendants"), are the following two motions: (1) Defendants' motion to dismiss Plaintiffs' Amended Complaint for failure to state a claim upon which relief can be granted pursuant to Fed. R. Civ. P. 12(b)(6) or, in the alternative, for summary judgment pursuant to Fed. R. Civ. P. 56 (Dkt. No. 14); and (2) Plaintiffs' cross-motion requesting that the Court reserve its decision on Defendants' motion pending Plaintiffs' receipt of further discovery, and/or their ability to further brief the issues, pursuant to Fed. R. Civ. P. 56(d) (Dkt. No. 16).*fn1 For the reasons set forth below, Defendants' motion is granted in part and denied in part; and Plaintiffs' cross-motion is granted in part and denied in part.

I. RELEVANT BACKGROUND

A. Plaintiffs' Claims

Generally, liberally construed, Plaintiffs' Amended Complaint alleges as follows. Plaintiffs are engaged in the business of manufacturing and marketing products, such as air fresheners, using distinctive Tree designs as trademarks and corporate identifiers. (Dkt. No. 28 at ¶ 14 [Plfs.' Am. Compl.].) In addition to owning federal registrations for the famous Tree design Marks (collectively the "Tree Marks"), Plaintiffs have common law trademark rights to the famous Tree Marks, which are used in commerce in connection with various goods. (Id. at ¶¶15-18, 21.)

Defendants are engaged in the business of licensing digital media through their website to customers. (Id. at ¶ 9.) Defendants have infringed on Plaintiffs' Tree Marks by "promoting and licensing digital media for commercial use through [their] Web Site(s) that included one or more tree designs which are identical to, virtually indistinguishable from and/or confusingly similar to Plaintiffs' distinctive Tree . . . Marks." (Id. at ¶ 23.) In addition, "Defendants engaged in their unauthorized and complained of conduct with full knowledge of the value and fame of the Tree . . . Marks, and long after the Tree . . . Marks had become famous." (Id. at ¶ 26.)

Based on these (and other) factual allegations, Plaintiffs' Amended Complaint asserts the following eight claims: (1) federal trademark infringement; (2) federal false designation of origin; (3) common law trademark infringement; (4) common law unfair competition; (5) contributory trademark infringement, unfair competition and dilution; (6) vicarious trademark infringement, unfair competition and dilution; (7) federal dilution; and (8) dilution under New York State law. (Id. at ¶¶ 43-75.)

Familiarity with the remaining factual allegations supporting these claims in Plaintiffs' Amended Complaint is assumed in this Decision and Order, which is intended primarily for review by the parties. (Id.)

B. Defendants' Motion and Plaintiffs' Opposition/Cross-Motion

Generally, in support of their motion to dismiss for failure to state a claim or, in the alternative, for summary judgment, Defendants asserts the following three arguments: (1) Plaintiffs have not alleged facts plausibly suggesting, or adduced admissible record evidence establishing, that Defendants have "used" the Tree Marks as trademarks to identify their source or sell their own goods (through their descriptive and expressive fair use of those Tree Marks);

(2) even assuming that Plaintiffs have alleged such facts and adduced such evidence, Defendants are protected from liability as a matter of law by the "nominative fair use" doctrine essentially because Defendants are not capitalizing on consumer confusion (through their incidental and purely descriptive use of the Tree Marks); and (3) even assuming that Defendants are not so protected, Plaintiffs' claims of contributory infringement and vicarious liability must be dismissed, because they have not alleged facts plausibly suggesting, or adduced admissible record evidence establishing, a claim for either contributory infringement or vicarious liability. (See generally Dkt. No. 14, Attach. 1 [Defs.' Memo. of Law].)

Generally, in opposition to Defendants' motion, and in support of their cross-motion pursuant to Fed. R. Civ. P. 56(d),*fn2 Plaintiffs argue as follows: (1) Defendants' motion to dismiss for failure to state a claim should be denied, because Plaintiffs have adequately pled each of their eight claims; (2) in the alternative, Defendants' motion to dismiss for failure to state a claim should be denied, because each of the factually based defenses asserted by Defendants (i.e., the defenses of non-trademark use, descriptive fair use, expressive fair use, and nominative fair use) rely on record evidence (i.e., facts and materials asserted through Defendants' counsel's affidavit), which may not be considered by the Court without treating Defendants' motion as one for summary judgment; and (3) the Court should reserve its decision on Defendants' alternative motion for summary judgment pending Plaintiffs' receipt of further discovery, and/or their ability to further brief the issues. (See generally Dkt. No. 16, Attach. 6 [Plfs.' Response Memo. of Law].)*fn3

Generally, in their reply to Plaintiffs' response, in addition to reiterating previously advanced arguments, Defendants argue that the Court may fairly decide (and grant) their alternative motion for summary judgment without affording Plaintiffs an opportunity to conduct discovery, because Plaintiffs have not submitted an affidavit showing (1) what facts are sought to resist the motion and how they are to be obtained, (2) how those facts are reasonably expected to create a genuine issue of material fact, (3) what effort Plaintiffs have made to obtain them, and

(4) why Plaintiffs have been unsuccessful in those efforts. (Dkt. No. 17.)*fn4

II. RELEVANT LEGAL STANDARDS

A. Legal Standard Governing Motions to Dismiss for Failure to State a Claim

Because the parties to this action have demonstrated, in their memoranda of law, an accurate understanding of the legal standard governing motions to dismiss, the Court will not recite that well-known legal standard in this Decision and Order, but will direct the reader to the Court's recent decision in Bridgeforth v. Popovics, 09-CV-0545, 2011 WL 2133661, at *2-4 (N.D.N.Y. May 25, 2011) (Suddaby, J.), which accurately recites that legal standard.

However, a few words are appropriate regarding what documents are considered on a motion to dismiss for failure to state a claim upon which relief can be granted, pursuant to Fed. R. Civ. P. 12(b)(6). Generally, when contemplating a dismissal pursuant to Fed. R. Civ. P. 12(b)(6) or Fed. R. Civ. P. 12(c), a court may consider the following matters outside the four corners of the complaint without triggering the standard governing a motion for summary judgment: (1) documents attached as an exhibit to the complaint or answer, (2) documents incorporated by reference in the complaint (and provided by the parties), (3) documents that, although not incorporated by reference in the complaint, are "integral" to the complaint (and are provided by the parties), or (4) any matter of which the court can take judicial notice for the factual background of the case.*fn5

B. Legal Standard Governing Motions for Summary Judgment

Rule 12(d) of the Federal Rules of Civil Procedure provides that, "[i]f, on a motion under Rule 12(b)(6) or 12(c), matters outside the pleadings are presented to and not excluded by the court, the motion must be treated as one for summary judgment under Rule 56[, and] [a]ll parties must be given a reasonable opportunity to present all the material that is pertinent to the motion." Fed. R. Civ. P. 12(d). "[T]he conversion of a Rule 12(b)(6) motion into one for summary judgment under Rule 56 when the court considers matters outside the pleadings is strictly enforced and mandatory." Global Network Commc'ns, Inc., 458 F.3d at 155. Ordinarily, before converting a motion to dismiss under Fed. R. Civ. P. 12(b)(6) into one for summary judgment under Fed. R. Civ. P. 56, formal notice is not required where a party "should reasonably have recognized the possibility that the motion might be converted into one for summary judgment [and] was [neither] taken by surprise [nor] deprived of a reasonable opportunity to meet facts outside the pleadings." Villante v. Dep't of Corr. of City of New York, 786 F.2d 516, 521 (2d Cir. 1986) (internal quotation marks and citation omitted).

C. Legal Standard Governing a Cross-Motion for Discovery, in Opposition to a Motion for Summary Judgment ...


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