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Weber Luke Alliance, LLC v. Studio 1C, Inc.

United States District Court, D. Utah, Central Division

February 8, 2017

STUDIO 1C INC. dba EO USAGE GUIDE dba EO TOOLS; and dba DOES 1-20, Defendant.


          Clark Waddoups United States District Court Judge


         Weber Luke Alliance, LLC (Weber Luke) alleges trademark and copyright claims against Studio 1C. Studio 1C challenges Weber Luke's trademark and state law claims in a motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6), or in the alternative motion for summary judgment.[1] (Dkt. No. 10.) Studio 1C challenges Weber Luke's copyright claims in a motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6).[2] (Dkt. No. 12.) The court has carefully considered the memoranda and other materials submitted by the parties, the arguments of counsel, as well as the law and facts relating to the motions. For the reasons stated below, the court GRANTS both the motion for summary judgment, (Dkt. No. 10), and the motion to dismiss, (Dkt. No. 12).


         Weber Luke alleges it has commercially promoted, distributed, and sold its Rollerball Make & Take Workshop Kits since May 2014. (Compl. ¶ 6, Dkt. No. 2.) Weber Luke's kits are a collection of printed materials that include recipes for mixing oils, labels for marking oil roller bottle applicators, marketing materials for distributors, and instructions on how to use the kits. (Id. at ¶ 14.) The kits are sold by Weber Luke's vendors on websites and at brick and mortar stores. Weber Luke also sells its kits online. (Id. at ¶ 19.) The kits do not include the bottle applicators or essential oils. Roller ball (or rollerball) applicators are glass or plastic bottles with a ball at the top that controls the flow of oils when applied and have been used in the essential oil industry for many years. (Id. at ¶ 15.) Weber Luke claims it coined the term “Rollerball” to describe and distinguish its kits, and through advertising, promotion, and sale of its goods, has acquired common law trademark rights in the name. (Id. at ¶¶ 15-20.) In addition to claiming a trademark in the term “Rollerball, ” Weber Luke also claims copyright protection for its artwork, designs, and instructional materials. (Id. at ¶¶ 23-24.)

         Studio 1C allegedly began selling its “make and take kits” in or about June 2015. (Id. at ¶ 10.) Weber Luke claims that Studio 1C copied and distributed Weber Luke's copyrighted artwork, designs, and instructional materials in a manner that creates the likelihood a potential buyer will confuse or misunderstand the source of the goods. (Id. at ¶¶ 25, 28.) Specifically, Weber Luke claims that Studio 1C: (1) uses the same purple/mauve color scheme, (2) uses a dividing bar in the top 1/4 of the display sheet, (3) uses an instruction sheet that is substantially similar to Weber Luke's, (4) uses a table tent display, (5) uses similar quantities of ingredients within the packaging, (6) uses the same size of generic plastic bag, and (7) uses the term “Rollerball.” (Id. at ¶¶ 29-35.) Based on the alleged similarities between the products, Weber Luke brings claims for trade dress infringement, trademark infringement, copyright infringement, and other various state law claims. (Id. at ¶¶ 36-82.)

         I. Trademark Claims

         A. Standard of Review

         Studio 1C challenges Weber Luke's trade dress and trademark claims in a motion to dismiss, or in the alternative, a motion for summary judgment. Having considered Studio 1C's motion and supporting evidence and Weber Luke's opposition to the motions and its supporting evidence, the court concludes that the motion on the trademark and trade dress claims is most appropriately considered under the summary judgment standard of review.

         Fed. R. Civ. P. 12(d) states that “[i]f, on a motion under Rule 12(b)(6) . . . 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.” Furthermore, “[a] court is not required to give notice of its intention to convert a Rule 12(b)(6) motion into a summary judgment motion when the motion was styled in the alternative.” Marquez v. Cable One, Inc., 463 F.3d 1118, 1121 (10th Cir. 2006). Moreover, when a plaintiff responds to a motion that raises matters outside the pleading, it has demonstrated it is aware that the motion may be converted to a Rule 56 motion for summary judgment. Id. See also Scott v. Graphic Communs. Int'l Union, Local 97-B, 92 Fed.Appx. 896, 903 (3d Cir. 2004) (holding that parties are placed on notice that the court may consider a motion to dismiss as a motion for summary judgment if the motion is entitled in the alternative).

         Because Studio 1C's motion was entitled alternatively as a motion to dismiss or a motion for summary judgment, the parties have been placed on notice that the court may exercise review of the motion under a summary judgment standard. Studio 1C attached exhibits and other evidence not in the pleadings to support the conclusion that Weber Luke's trademark causes of action fail because there is no genuine dispute of material fact. (Dkt. Nos. 10-1 through 10-40.) Weber Luke responded with an opposition supported by declarations and attached exhibits outside the pleadings. (Dkt. Nos. 15, 16, and 17.) All parties were on notice that the court had before it matters outside the pleadings and argued the merits of the motion on that basis. The court is therefore within its discretion to view this motion as one for summary judgment.

         Summary judgment is appropriate “if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). When considering a motion for summary judgment, the court views “all facts [and evidence] in the light most favorable to the party opposing summary judgment.” S.E.C. v. Smart, 678 F.3d 850, 856 (10th Cir. 2012). The movant must prove that no genuine issue of material fact exists for trial. See Fed. R. Civ. P. 56(a); Nahno-Lopez v. Houser, 625 F.3d 1279, 1283 (10th Cir. 2010). Accordingly, to survive summary judgment, “the nonmoving party must come forward with specific facts showing there is a genuine issue for trial.” S.E.C., 678 F.3d at 858.

         B. Discussion

         Although trademark infringement and trade dress infringement are separate causes of action, both require plaintiff to prove that its allegedly protected mark is inherently distinctive or has acquired distinctiveness through secondary meaning. Because both Weber Luke's trade dress and common law trademark claims fail to satisfy the common and necessary element of secondary meaning, the court analyzes these causes of action together.

         The Lanham Act provides trademark protection under two separate sections. First, under § 2 of the Act, 15 U.S.C. § 1052, a party can seek protection of its trademark by registering it with the United States Patent and Trademark Office. See Wal-Mart Stores, Inc. v. Samara Bros., Inc.,529 U.S. 205, 209 (2000). Registering the trademark entitles the owner to a presumption that its mark is valid. Id. A trademark that is unregistered, however, may still be protectable under § 43(a) of the Lanham Act. 15 U.S.C. § 1125. It is uncontested that Weber ...

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