United States District Court, W.D. North Carolina, Charlotte Division
J. Conrad, Jr. United States District Judge
MATTER comes before the Court on Defendants Belk,
Inc., Belk International, Inc., and Belk eCommerce, LLC's
(collectively, “Belk”) Motion to Dismiss, (Doc.
No. 33), and the parties' associated briefs and exhibits.
the factual allegations of the First Amended Complaint, (Doc.
No. 29: First Amended Complaint (“FAC”)), as
true, Plaintiff Mud Pie, LLC (“Mud Pie” or
“Plaintiff”) created a line of casual dishware
products around June 2012 that would become known as Mud
Pie's “Circa” line. (Doc. No. 29: FAC ¶
13). Some of the products in the Circa line, and those at
issue in this case, are “comprised generally of white
ceramic embossed with a humorous pun or phrase in a black
American Typewriter font and paired with an antique-style
silver utensil also containing a humorous pun or
phrase” (“Mud Pie Trade Dress”). (FAC
¶ 14). Sometime on or before 2013, Belk and Mud Pie
entered into a relationship wherein Belk purchased Mud Pie
products, including those from Mud Pie's Circa line, and
sold those products directly to consumers. (See FAC
¶ 17). Belk sold Mud Pie products, about 25% of which
were from the Circa line, from 2013 until 2017. (FAC
around November 2017, Mud Pie terminated its relationship
with Belk. (FAC ¶ 20). At some unspecified point, Belk
hired TRIRAF, Inc. f/k/a Thirstystone Resources, Inc.
(“Thirstystone”) to create a “casual
whiteware private label line” for Belk under Belk's
“Modern. Southern. Home.” brand
(“MSH”). (FAC ¶ 21). Thirstystone supplied
Belk with dishware products that Mud Pie alleges copy and
incorporate the Mud Pie Trade Dress and Mud Pie's
copyrights, which Belk began selling in April 2018,
less than six months after Mud Pie pulled its products from
Belk stores. (FAC ¶¶ 22-23). Mud Pie did not
authorize Belk to make copies or derivative works of the
Circa line, and Belk has not compensated Mud Pie for sales of
any of its MSH products. (FAC ¶¶ 26-28).
initiated this action on November 13, 2018 by filing a
Complaint, (Doc. No. 1), and a Motion for Temporary
Restraining Order and Preliminary Injunction, (Doc. No. 6),
against Belk. After a hearing on November 19, 2018, the Court
denied Plaintiff's Motion. (Doc. No. 28). On December 3,
2018, Plaintiff filed its FAC, in which it added Thirstystone
as a defendant to this action based on Thirstystone's
alleged role in designing and supplying Belk with the
products at issue in this suit. (Doc. No. 29). In its FAC,
Plaintiff alleges four causes of action against Defendants:
(1) trade dress infringement in violation of the Lanham Act,
15 U.S.C. § 1125(a); (2) copyright infringement in
violation of the Copyright Act, 17 U.S.C. §§ 101
et seq.; (3) violation of North Carolina's
Unfair and Deceptive Trade Practices Act (“ N.C.
UDTPA”) as codified in N.C. Gen. Stat. § 75-1.1;
and (4) violation of North Carolina's Unfair Competition
standard at common law. On December 17, 2018, Belk filed a
Motion to Dismiss First Amended Complaint Pursuant to
Fed.R.Civ.P. 12(b)(6). (Doc. No. 33).
STANDARD OF REVIEW
standard of review for a motion to dismiss under 12(b)(6) for
failure to state a claim is well known. Fed.R.Civ.P.
12(b)(6). It tests the “legal sufficiency of the
complaint” but “does not resolve contests
surrounding the facts, the merits of a claim, or the
applicability of defenses.” Republican Party of
N.C. v. Martin, 980 F.2d 943, 952 (4th Cir. 1992). A
complaint attacked by a Rule 12(b)(6) motion to dismiss will
survive if it contains enough facts “to state a claim
to relief that is plausible on its face.” Ashcroft
v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell
Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). Facial
plausibility means allegations that allow the court to draw
the reasonable inference that the defendant is liable for the
misconduct alleged. Id. “Threadbare recitals
of the elements of a cause of action, supported by mere
conclusory statements, do not suffice.” Id.
Rule of Civil Procedure 8(a)(2) requires only “a short
and plain statement of the claim showing that the pleader is
entitled to relief.” Fed.R.Civ.P. 8(a)(2). Specific
facts are not necessary; the statement need only
“‘give the defendant fair notice of what the . .
. claim is and the grounds upon which it rests.'”
Twombly, 550 U.S. at 545 (quoting Copperweld
Corp. v. Independence Tube Corp., 467 U.S. 752, 775
(1984)). Additionally, when ruling on a defendant's
motion to dismiss, a court must accept as true all of the
factual allegations contained in the complaint. Erickson
v. Pardus, 551 U.S. 89, 93-94 (2007) (quoting
Twombly, 550 U.S. at 555-56). Nonetheless, a court
is not bound to accept as true legal conclusions couched as
factual allegations. Papasan v. Allain, 478 U.S.
265, 286 (1986). Courts cannot weigh the facts or assess the
evidence at this stage, but a complaint entirely devoid of
any facts supporting a given claim cannot proceed.
Potomac Conference Corp. of Seventh-Day Adventists v.
Takoma Acad. Alumni Ass'n, Inc., 2 F.Supp.3d 758,
767-68 (D. Md. 2014). Furthermore, the court “should
view the complaint in the light most favorable to the
plaintiff.” Mylan Labs, Inc. v. Matkar, 7 F.3d
1130, 1134 (4th Cir. 1993).
Motion to Dismiss, Belk asks this Court to dismiss
Plaintiff's claims because “the FAC fails to
provide adequate factual allegations to put Belk on notice
either of what exactly it is accused of infringing, or which
Belk products are at issue in this matter.” (Doc. No.
33 at 2). The Court is not persuaded by Belk's lack of
notice argument. Nonetheless, the Court finds that
Plaintiff's FAC fails to meet the minimum pleading
standards required to survive a 12(b)(6) motion as
established by Twombly and Iqbal in regard
to its trade dress claim (Count I). But the Court determines
that Plaintiff has sufficiently pleaded its copyright and
state-law claims (Counts II-IV).
Federal Trade Dress Claim
claim of trade dress infringement requires proof of three
elements: (1) the trade dress is primarily non-functional;
(2) the trade dress is inherently distinctive or has acquired
a secondary meaning; and (3) the alleged infringement creates
a likelihood of confusion.” Tools USA & Equip.
Co. v. Champ Frame Straightening Equip. Inc., 87 F.3d
654, 657 (4th Cir. 1996). As stated above, a court is
“not bound to accept as true a legal conclusion couched
as a factual allegation.” Twombly, 550 U.S. at
555 (quoting Papasan, 478 U.S. at 286). Here,
Plaintiff makes the mistake of relying on a conclusory
statement to establish the first element of its trade dress
claim: that the Mud Pie Trade Dress is primarily
product feature is functional if it is essential to the use
or purpose of the article or it affects the cost or quality
of the article.” Tools USA, 87 F.3d at 658
(quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456
U.S. 844 (1982)). “In other words, a feature is
functional ‘if exclusive use of the feature would put
competitors at a significant nonreputation-related
disadvantage.'” Id. (quoting Qualitex
Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995)).
“The law of functionality is further divided into
‘utilitarian' functionality and
‘aesthetic' functionality.” Baughman Tile
Co. v. Plastic Tubing, Inc., 211 F.Supp.2d 720, 722
(E.D. N.C. 2002) (quoting TrafFix Devices, Inc. v. Mktg.
Displays, Inc., 532 U.S. 23, 33 (2001)). Here, Plaintiff
simply states that “[t]he Mud Pie Trade Dress is
non-functional” without any further explanation or
supporting factual allegations. (FAC ¶ 33). While the
Court notes that functionality is a question of fact,
McAirlaids, Inc. v. Kimberly-Clark Corp., 756 F.3d
307, 310 (4th Cir. 2014), a plaintiff still must plead some
minimum baseline of accompanying factual allegations to
support an assertion of non-functionality. Here, the FAC is
devoid of any factual assertions to support Plaintiff's
conclusion that the Mud Pie Trade Dress is primarily
non-functional. Accordingly, Plaintiff's statement is
nothing more than a threadbare, formulaic recitation of an
element of its federal trade dress claim-something which
Twombly and Iqbal prohibit.
the other two elements of Plaintiff's trade dress
infringement claim, Plaintiff provides factual allegations to
support an inference that (1) Mud Pie's Trade Dress has
acquired secondary meaning and (2) Belk's infringement
creates a likelihood of confusion. To plausibly allege a
claim for trade dress infringement, Plaintiff must allege
that Mud Pie's trade dress has attained distinctiveness
through a showing of secondary meaning. Secondary meaning
“occurs, when, ‘in the minds of the public, the
primary significance of a [mark] is to identify the source of
the product rather than the product itself.'”
Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205,
211, (2000) (quoting Inwood Labs., 456 U.S. at
851)). “‘Proof of secondary meaning entails
vigorous evidentiary requirements,' and thus
‘secondary meaning is factual in nature and typically
ill-suited for a motion to dismiss.'” Camco
Mfg., 2019 WL 2176331, at *2 (quoting Rothy's,
Inc. v. JKM Techs., LLC, 360 F.Supp.3d 373, 387 (W.D.
of intentional direct copying establishes a prima facie case
of secondary meaning.” Osem Food Indus. Ltd. v.
Sherwood Foods, Inc., 917 F.2d 161, 163 (4th Cir. 1986)
(quoting Kramer Mfg. Co. v. Andrews, 783 F.2d 421,
448 (4th Cir. 1986)). Additionally, “[c]ourts in the
Fourth Circuit consider four factors to determine if
purported trade dress has acquired secondary meaning:
‘(1) long use; (2) advertising; (3) sales volume; and
(4) identity of service or origin in the minds of the
purchasing public.'” Ca ...