Opinion
2:10-CV-1574 JCM (LRL)
08-04-2011
MGM GRAND HOTEL, LLC, Plaintiff, v. DONALD SULTAN, et al., Defendants.
ORDER
Presently before the court is plaintiff MGM Grand Hotel, LLC's ("MGM") motion to dismiss count II of defendant's counterclaim pursuant to Federal Rule of Civil Procedure 12(b)(6). (Doc. #14). Defendant responded (doc. #15), and plaintiff replied (doc. #22).
"To survive a motion to dismiss, a complaint must contain sufficient factual matter, accepted as true, to 'state a claim for relief that is plausible on its face.'" Ashcroft v. Iqbal, 129 S. Ct. 1937, 1949 (2009) (quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007)). "Where a complaint pleads facts that are 'merely consistent' with a defendant's liability, it 'stops short of the line between possibility and plausibility of entitlement to relief.'" Id. (citing Twombly, 550 U.S. at 557). However, where there are well pled factual allegations, the court should assume their veracity and determine if they give rise to relief. Id. at 1950.
Count II of defendant's counterclaim alleges a claim for trade dress infringement under the Lanham Act. "The Lanham Act was intended to make 'actionable the deceptive and misleading use of marks,' and 'to protect persons engaged in . . . commerce against unfair competition." Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 28 (2003) (citing 15 U.S.C. § 1127). In Dastar, the court was forced to "decide what § 43(a)(1)(A) of the Lanham Act [meant] by the 'origin' of 'goods'." Id. at 31. The court in Dastar reasoned that the "natural understanding of the 'origin' of 'goods' -- the source of wares -- is the producer of the tangible product sold in the marketplace." Id. Specifically, the court found that "the phrase 'origin of goods" is . . . incapable of connoting the person or entity that originated the ideas or communication that 'goods' embody or contain." Id. at 32.
Applying the law to the facts presented, count II of defendant's counterclaim must fail. In his pleading, defendant alleges that "the unique and innovative perspective consistently and boldly conveyed by Sultan in his artworks constitutes a distinct and recognizable signature of Sultan authorship [and that] the use by the plaintiff of Sultan's characteristic expressions create a likelihood of confusion as to the source of authorship of products produced by plaintiff." (Doc. 12, p.8). However, pursuant to the Dastar decision, confusion of authorship is not actionable under the Lanham Act. Id. at 32.
The defendant attempts to mold the pleading to comply with Dastar in his opposition to the motion to dismiss, stating that his claim does not rely on misrepresentation of authorship, but rather seeks to allege that "plaintiff has wrongfully infringed the trade dress of the Sultan Works and related works." (Doc. # 15, p.9). This is inapposite, however, because the court is bound to consider the four corners of the pleading on a motion to dismiss, see Iqbal, 129 S. Ct. 1947, rather than statements made in conjunction with an opposition to a motion. The counterclaim shall therefore be dismissed for failure to allege a claim upon which relief may be granted.
Accordingly,
IT IS HEREBY ORDERED, ADJUDGED AND DECREED that plaintiff's motion to dismiss count II of defendant's counterclaim (doc. # 14) be, and the same hereby is, GRANTED.
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UNITED STATES DISTRICT JUDGE