United States District Court, W.D. Texas, Austin Division
PITMAN, UNITED STATES DISTRICT JUDGE.
the Court is a motion to dismiss filed in the lead case,
1:18-CV-978-RP, by Defendants Dryshod International, LLC
(“Dryshod”) and James Donohue
(“Donohue”) (together, “Defendants”).
(Dkt. 129). Plaintiff Haas Outdoors, Inc.
(“Haas”) filed a response, (Dkt. 134), and
Defendants replied, (Dkt. 136). Having considered the
parties' briefs, the record, and the relevant law, the
Court will grant the motion.
alleges the following background facts. Haas is a relatively
sizable outdoor-goods company that has designed and
manufactured camouflage patterns, clothing, and accessories
since 1986. (Am. Compl., Dkt. 126, at 3-4). Earlier in his
career, Donohue founded a boot manufacturing company, Muck
Boot Company (“Muck Boot”), that licensed
Haas's “MOSSY OAK” patterns, including its
“NEW BREAK-UP” pattern. (Id. at 5).
Donohue set up distributor groups to sell his Muck Boot
products, which included MOSSY OAK branded products.
(Id.). Donohue left Muck boot in 2004, but when Muck
Boot took its distribution in-house in 2017, its former
distributors approached Donohue about creating a new set of
boot products. (Id.). Setting out to do so, Donohue
founded Dryshod and introduced several hunting boot models.
(Id.). His distributors asked that the boots feature
MOSSY OAK patterns. (Id.).
then contacted Haas to negotiate a license to use MOSSY OAK
patterns; he allegedly said that Dryshod boots would
“have a better chance of achieving mass appeal”
if they featured MOSSY OAK patterns. (Id. at 6).
After several months of negotiations, however, Donohue
decided not to license Haas's patterns and to instead use
patterns that he designed himself. (Id.). Donohue
called his design “MOBU” and has sought to
register MOBU as a trademark. (Id. at 7). According
to Haas, Donohue's choice to use MOBU is no accident:
Haas customers and distributors, including Muck Boot, have
colloquially referred to MOSSY OAK BREAK-UP patterns as
“MOBU” for years. (Id. at 7). Defendants
allegedly claim their MOBU mark stands for “My Own
believing that the MOBU pattern infringes its copyrighted NEW
BREAK-UP pattern and that the MOBU mark infringes its MOSSY
OAK and BREAK-UP trademarks, sued Defendants in February 2018
in the Northern District of Mississippi. (Dkt. 1). The case
has since been transferred to this district, (Dkts. 96, 97),
and consolidated with Defendants' countersuit, (Dk. 111).
In its action against Defendants, Haas asserts five causes of
action: (1) copyright infringement in violation of 17 U.S.C.
§ 501; (2) trademark violation in violation of 15 U.S.C.
§ 1114; (3) trademark dilution in violation of 15 U.S.C.
§ 1125; (4) trademark infringement and dilution in
violation of Texas and Mississippi law; and (5) trademark
denial or cancellation under 15 U.S.C. § 1052(d).
(Id. at 7-14). Defendants filed a motion to dismiss
the first three of these claims against them under Federal
Rule of Civil Procedure 12(b)(6). (Mot., Dkt. 129).
to Rule 12(b)(6), a court may dismiss a complaint for
“failure to state a claim upon which relief can be
granted.” Fed.R.Civ.P. 12(b)(6). In deciding a 12(b)(6)
motion, a “court accepts ‘all well-pleaded facts
as true, viewing them in the light most favorable to the
plaintiff.'” In re Katrina Canal Breaches
Litig., 495 F.3d 191, 205 (5th Cir. 2007) (quoting
Martin K. Eby Constr. Co. v. Dallas Area Rapid
Transit, 369 F.3d 464, 467 (5th Cir. 2004)). “To
survive a Rule 12(b)(6) motion to dismiss, a complaint
‘does not need detailed factual allegations,' but
must provide the plaintiff's grounds for entitlement to
relief-including factual allegations that when assumed to be
true ‘raise a right to relief above the speculative
level.'” Cuvillier v. Taylor, 503 F.3d
397, 401 (5th Cir. 2007) (citing Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 555 (2007)). That is, “a
complaint must contain sufficient factual matter, accepted as
true, to ‘state a claim to relief that is plausible on
its face.'” Ashcroft v. Iqbal, 556 U.S.
662, 678 (2009) (quoting Twombly, 550 U.S. at 570).
has facial plausibility “when the plaintiff pleads
factual content that allows the court to draw the reasonable
inference that the defendant is liable for the misconduct
alleged.” Id. “The tenet that a court
must accept as true all of the allegations contained in a
complaint is inapplicable to legal conclusions. Threadbare
recitals of the elements of a cause of action, supported by
mere conclusory statements, do not suffice.”
Id. A court ruling on a 12(b)(6) motion may rely on
the complaint, its proper attachments, “documents
incorporated into the complaint by reference, and matters of
which a court may take judicial notice.” Dorsey v.
Portfolio Equities, Inc., 540 F.3d 333, 338 (5th Cir.
2008) (citations and internal quotation marks omitted). A
court may also consider documents that a defendant attaches
to a motion to dismiss “if they are referred to in the
plaintiff's complaint and are central to her
claim.” Causey v. Sewell Cadillac-Chevrolet,
Inc., 394 F.3d 285, 288 (5th Cir. 2004). But because the
court reviews only the well-pleaded facts in the complaint,
it may not consider new factual allegations made outside the
complaint. Dorsey, 540 F.3d at 338. “[A]
motion to dismiss under 12(b)(6) ‘is viewed with
disfavor and is rarely granted.'” Turner v.
Pleasant, 663 F.3d 770, 775 (5th Cir. 2011) (quoting
Harrington v. State Farm Fire & Cas. Co., 563
F.3d 141, 147 (5th Cir. 2009)).
motion pertains to Haas's federal copyright-infringement
claim, its federal trademark-infringement claim, and its
federal trademark-dilution claim. (Mot., Dkt. 129, at 4;
Reply, Dkt. 136). The Court will address each in turn.
prove copyright infringement, a plaintiff must establish
“(1) ownership of a valid copyright; (2) factual
copying; and (3) substantial similarity.” Nola
Spice Designs, L.L.C. v. Haydel Enterprises, Inc., 783
F.3d 527, 549 (5th Cir. 2015) (quoting Armour v.
Knowles, 512 F.3d 147, 152 (5th Cir. 2007)). Defendants
contest only the final prong: substantial similarity. (Mot.,
Dkt. 129, at 5-16).
support a claim of copyright infringement, a purported copy
“must bear a substantial similarity to the protected
aspects of the original.” Peel & Co., Inc. v.
The Rug Mkt., 238 F.3d 391, 398 (5th Cir. 2001). When a
copyrighted work contains unprotectable elements, the first
step is to “distinguish between protectable and
unprotectable elements of the copyrighted work.”
Nola Spice, 783 F.3d at 550. Afterward, the question