United States District Court, D. Connecticut
RULING ON MOTION TO DISMISS
A. BOLDEN, UNITED STATES DISTRICT JUDGE
AJB Enterprises, LLC d/b/a Body Back Company
(“AJB”), brought this action against Defendant,
BackJoy Orthotics, LLC (“BackJoy”), alleging
federal and state claims of unfair competition, trade dress
infringement, breach of contract and unjust enrichment.
Compl., ECF No. 1. BackJoy has moved to dismiss all counts
for failure to state a claim under Rule 12(b)(6). Def. Mot.
to Dismiss, ECF No. 22. For the reasons outlined below,
BackJoy's Motion to Dismiss is GRANTED, and AJB's
claims are dismissed without prejudice.
in the business of manufacturing and selling massage and
fitness products, including back massagers. Compl. at ¶
2. AJB is the successor in interest to a company named Body
Back Company, Inc. (“Body Back”), created and
owned by Paul Nash. Id. Paul Nash designed an
S-shaped cane massager, and since around 1996, that massager
was sold to the public by Body Back and now AJB under the
name “Trigger Point Massager.” Id. Body
Back was awarded a patent for that design; however, the
patent has since expired. Id. at ¶ 9.
markets chiropractic and related products, id. at
¶ 3, and entered into discussions with Paul Nash
regarding the possibility of selling a version of the Trigger
Point Massager to retailers, such as Bed Bath & Beyond.
Id. at ¶ 21. In November 2013, the parties
entered into a non-disclosure agreement in which Body Back
agreed to disclose relevant confidential information related
to its product, and BackJoy agreed to maintain the
confidentiality of that information and cease all use of the
information upon Body Back's written request.
Id. at ¶ 23; Confidentiality Agreement, Compl.
Ex. D, ECF No. 1-5.
2014, the parties considered entering into a licensing
agreement permitting BackJoy to sell the S-shaped cane
massager product in exchange for royalty payments to Body
Back. Draft Agreement, Compl. Ex. G, ECF No. 1-8. The draft
agreement provided that BackJoy would pay Body Back
“royalties in the amount offive [sic] percent (5%) of
Net Sales” as the “sole compensation” for
its services. Id. at § 3. Body Back did not
object to this 5% compensation arrangement, but it did object
to several other terms in the proposed agreement and
suggested several revisions. Sep.-Oct. 2014 E-mails, Compl.
Ex. H, ECF No. 1-9. The original draft consulting agreement
was never signed, and BackJoy told Body Back that it would
work on a revised agreement incorporating Body Back's
concerns. Id.; Draft Agreement at 5; Compl. at
meantime, Body Back provided BackJoy with the information
needed to make the proposed cane massager. Id. at
¶¶ 26-27. Body Back also set up production at an
injection molding facility to enable test marketing of the
product, and the parties conducted successful sales of the
product at Bed Bath & Beyond. Id. at
¶¶ 27-28. Discussions regarding the consulting
agreement continued by e-mail, and BackJoy represented to
Body Back that it would be sending along an updated
consulting agreement for review and signature, indicating
that it did not “see any issues really” with Body
Back's revisions and that it would “back date the
sales of course for the fee” to compensate Body Back
for the work performed so far. Sep.-Oct. 2014 Emails at 2-3.
However, BackJoy never provided a revised draft agreement.
Instead, in December 2016, BackJoy informed Body Back that
the fee structure of the agreement no longer worked, and that
an alternate “consulting” arrangement for past
and ongoing work would be preferable. Compl. at ¶¶
28, 37; Dec. 2016 E-mails, Compl. Ex. J, ECF No. 1-11.
BackJoy continued selling the cane massager product through
Bed Bath & Beyond, and the parties were never able to
agree on a written contract providing compensation to Body
Back in connection with the product. Compl. at ¶¶
STANDARD OF REVIEW
considering a motion to dismiss under Fed R. Civ. P.
12(b)(6), the Court must accept as true all factual
allegations in the complaint and draw all possible inferences
from those allegations in favor of the plaintiff. See
York v. Ass'n of the Bar of the City of New York,
286 F.3d 122, 125 (2d Cir.), cert. denied, 537 U.S.
1089 (2002). The proper consideration is not whether the
plaintiff ultimately will prevail, but whether the plaintiff
has stated a claim upon which relief may be granted such that
it should be entitled to offer evidence to support its claim.
See id. (citation omitted). Although courts
considering motions to dismiss under Rule 12(b)(6) generally
“must limit [their] analysis to the four corners of the
complaint, ” they may also consider documents that are
“incorporated in the complaint by reference.”
Kermanshah v. Kermanshah, 580 F.Supp.2d 247, 258
reviewing a complaint under Rule 12(b)(6), the court applies
“a ‘plausibility standard, '” which is
guided by “two working principles.” Ashcroft
v. Iqbal, 556 U.S. 662, 678 (2009). First, the
requirement that the Court accept as true the allegations in
a complaint “is inapplicable to legal
conclusions.” Id. “Threadbare recitals
of the elements of a cause of action, supported by mere
conclusory statements, do not suffice.” Id.
Although “detailed factual allegations” are not
required, a complaint must offer more than “labels and
conclusions, ” or “a formulaic recitation of the
elements of a cause of action” or “naked
assertions]” devoid of “further factual
enhancement.” Bell Atl. Corp. v. Twombly, 550
U.S. 544, 555, 557 (2007). Second, to survive a motion to
dismiss, the complaint must state a plausible claim for
relief. Iqbal, 556 U.S. at 679. Determining whether
the complaint states a plausible claim for relief is
“‘a context-specific task that requires the
reviewing court to draw on its judicial experience and common
sense.'” Harris v. Mills, 572 F.3d 66, 72
(2d Cir. 2009) (quoting Iqbal, 556 U.S. at 679).
Complaint includes six counts against BackJoy: (1) federal
unfair competition and trade dress infringement; (2) unfair
competition based on “multiple
misrepresentations”; (3) unfair competition based on
“confusion”; (4) unfair competition based on
“disclosure of trade secrets”; (5) breach of
contract; and (6) unjust enrichment. Compl. at ¶¶
46-65. Each type of claim is addressed in turn.
Trade Dress Infringement
argues that BackJoy infringed its trademark rights by
diluting the trade dress of its Trigger Point Massager in
violation of § 43 of the Lanham Act (15 U.S.C. §
1125). Compl. ¶¶ 46-55. Section 43 of the Lanham
Act prohibits the use of “any word, term, name, symbol,
or device, or any combination thereof that is “likely
to cause confusion, or to cause mistake, or to deceive
… as to the origin, sponsorship, or approval of his or
her goods, services, or commercial activities[.]” 15
U.S.C. § 1125(a)(1)(A). A product's trade dress is
protected even where there is no registered trademark, and a
trade dress “encompasses the overall design and
appearance that make the product identifiable to
consumers.” Nora Beverages, Inc. v. Perrier Grp. of
Am., Inc., 269 F.3d 114, 118 (2d Cir. 2001).
are three core elements to a trade dress infringement claim:
a plaintiff must allege that “(1) the claimed trade
dress is non-functional; (2) the claimed trade dress has
secondary meaning; and (3) there is a likelihood of
confusion” between the products. Sherwood 48
Assocs. v. Sony Corp. of Am., 76 F.Appx. 389, 391 (2d
Cir. 2003). A viable trade dress infringement claim also
requires the plaintiff to “offer a ‘precise
expression of the character and scope of the claimed trade
dress.'” Id. (quoting Landscape Forms,
Inc. v. Columbia Cascade Co., 113 F.3d 373, 381 (2d Cir.
1997)) When the claimed trade dress goes beyond a
product's packaging to encompass its design,
“courts have been reluctant to extend trade dress
protection[.]” Carson Optical, Inc. v. Prym
Consumer USA, Inc., 11 F.Supp.3d 317, 340 (E.D.N.Y.
2014) (citing ID7D Co. v. Sears Holding Corp., No.
3:11-CV-1054 (VLB), 2012 WL 1247329, at *6 (D.Conn. Apr. 13,
2012)); see also Yurman Design, Inc. v. PAJ, Inc.,
262 F.3d 101, 114 (2d Cir. 2001) (“We exercise
particular caution, when extending protection to product
designs” (citing Landscape Forms, 113 F.3d at
380 (2d Cir. 1997)).
outset, the Court recognizes the limited Second Circuit case
law on trade dress claims at the motion to dismiss stage. The
vast majority of the Second Circuit cases referenced by the
parties involved trade dress infringement claims that were
permitted to proceed to later stages of litigation. See,
e.g., Yurman,262 F.3d 373 (dismissing trade dress claim
on Rule 50 motion); Bristol-Myers Squibb Co. v.
McNeil-P.P.C., Inc., 973 F.2d 1033 (2d Cir. 1992)
(dismissing trade dress claim on motion for preliminary
injunction); Louis Vuitton Malletier v. Dooney &
Bourke, Inc., 454 F.3d 108 (2d Cir. 2006) (dismissing
trade dress claim on motion for preliminary injunction).
Nonetheless, each of these cases provides the Court with