A federal judge from the Eastern District of Washington has denied a sporting goods retailer’s motion to dismiss a lawsuit brought by schools in the Pac-12 athletic conference, which alleged that the defendant impermissibly used the plaintiffs’ trademarks and trade dress.
By way of background, the court noted that each of the 12 universities in the conference owns and uses trademarks and trade dress in connection with their respective institutions. Some of the marks are federally registered while others are associated with their institutions through historical use.
Meanwhile, the defendant sells and distributes sports and team merchandise on its websites, both of which are believed to be owned and operated by Chad Hartvigson, who operates out of a single office location in Seattle, Washington. The websites offer various “apparel stores” that are categorized by school mascot or geographic location. The apparel stores display merchandise options with the relevant school colors and branding. The defendant does not have licensing rights to use the plaintiffs’ trademarks or trade dress. Furthermore, the plaintiffs allege the defendant uses color schemes and logos on their merchandise that are confusingly similar to the plaintiffs’ own protected marks and trade dress.
The plaintiffs sued on January 14, 2022, which led to the defendant’s motion to dismiss.
In its analysis, the court noted that a complaint must contain “a short and plain statement of the claim showing that the pleader is entitled to relief.” Fed. R. Civ. P. 8(a)(2). A plaintiff’s “allegations of material fact are taken as true and construed in the light most favorable to the plaintiff,” however “conclusory allegations of law and unwarranted inferences are insufficient to defeat a motion to dismiss for failure to state a claim.” In re Stac Elecs. Sec. Litig., 89 F.3d 1399, 1403 (9th Cir. 1996).
In assessing whether Rule 8(a)(2) has been satisfied, a court must first identify the elements of the plaintiff’s claim(s) and then determine whether those elements could be proven on the facts pled. The court may disregard allegations that are contradicted by matters properly subject to judicial notice or by exhibit. Sprewell v. Golden State Warriors, 266 F.3d 979, 988 (9th Cir. 2001). The court may also disregard conclusory allegations and arguments which are not supported by reasonable deductions and inferences. Id.
That said, the courts do not require detailed factual allegations. In fact, the claim for relief must only be “plausible on its face.”
The defendant’s motion to dismiss was premised on four theories: Plaintiffs use “multi-level” defined terms that prevent the defendant from framing a responsive pleading; Plaintiffs fail to identify each mark that is allegedly infringed upon by the defendant, and therefore, fail to put the defendant on notice of the claims alleged against them; Plaintiffs are improperly joined because their claims do not arise from the same transaction or occurrence; and Plaintiffs fail to sufficiently plead claim for dilution.
On the first theory, the court held that the plaintiffs’ defined terms are not so ambiguous or vague that the defendant lacks a sufficient basis to frame its responsive pleadings. In fact, the defendant’s “own motion demonstrates (that it has) a firm grasp on the marks at issue and the types of claims being alleged. Not only do they comprehensively describe the plaintiffs’ terms,” but it “explicitly” acknowledges that it has “numerous affirmative defenses” that will be used against each plaintiff.
“Next, the plaintiffs’ failure to provide an exhaustive list of every mark potentially at issue in each claim is similarly insufficient for dismissal at the pleading stage. The FAC identifies many of the plaintiffs’ marks, even providing pictorial examples of how some of the marks are used on certain merchandise,” wrote the court. The complaint “provides screenshots of the infringing marks as they appear” on the defendant’s websites. The facts and allegations in the (complaint) are more than sufficient.”
As to defendant’s third theory, the plaintiffs “are not improperly joined. Rule 20(a) permits plaintiffs to join in one action if their claims arise out of the same transaction or occurrence and relate to common questions of law or fact. Fed. R. Civ. P. 20(a). Taking the claims and facts as true, the alleged infringements arise out of the same transaction or occurrence, specifically (the defendant’s) impermissible use of the plaintiffs’ marks or similar marks on merchandise sold from two websites, which are owned and operated by the same individual.”
Lastly, the complaint “sufficiently pleads a claim for trademark dilution.”
First, it alleges “the marks at issue are used in national broadcasts on the Pac-12’s own television channel, ESPN, and FOX. Second, the complaint claims the Pac-12 garnered $530 million in gross revenue in 2018-2019, which includes sales of branded merchandise and apparel, indicating a high volume and broad geographic scope of sales. Next, the complaint implies extensive actual recognition of the marks due to the notoriety of the plaintiffs’ athletic programs, famous alumni, and strong alumni networks. Finally, the complaint contains an extensive exhibit list that includes the U.S. Registration Numbers for numerous marks at issue. At the pleading stage, the plaintiffs have met the famousness element for a dilution claim.
Thus, the complaint met “the minimum pleading requirements at this stage of the litigation,” and the motion to dismiss was denied.
Arizona Board of Regents v. Sportswear Inc.; E.D. Wash.; NO. 2:21-CV-0135-TOR; 5/5/22
Attorneys of Record: (plaintiffs) Jeremy L Buxbaum, LEAD ATTORNEY, PRO HAC VICE, Perkins Coie LLP, Chicago, IL; Thomas L Holt, LEAD ATTORNEY, PRO HAC VICE, Perkins Coie LLP – IL, Chicago, IL; Javier Garcia, Perkins Coie – SEA, Seattle, WA.; Sharron Ann (Annie) Allison, LEAD (defendants) John Thomas Fetters, LEAD ATTORNEY, Stokes Lawrence, Seattle, WA; Joshua David Harms, Stokes Lawrence PS, Seattle, WA.
