United States District Court, D. New Hampshire
D'Pergo Custom Guitars, Inc.
Sweetwater Sound, Inc.
McCafferty, United States District Judge
Custom Guitars, Inc. (“D'Pergo”) brings this
suit against Sweetwater Sound, Inc.
(“Sweetwater”), alleging claims of copyright and
trademark infringement and violations of the New Hampshire
Consumer Protection Act (“CPA”). D'Pergo
claims that Sweetwater used a copyrighted photograph of
D'Pergo's trademarked custom guitar necks to promote
and sell Sweetwater products on Sweetwater's website.
Pursuant to Federal Rule of Civil Procedure 12(b)(6),
Sweetwater moves to dismiss Counts II through V of the first
amended complaint-the CPA claims and the trademark
infringement claims. Sweetwater also moves to strike
D'Pergo's request for attorney's fees under Count
I (copyright infringement). D'Pergo objects. For the
following reasons, Sweetwater's motion to dismiss is
denied and its motion to strike is granted.
Rule 12(b)(6), the court must accept the factual allegations
in the complaint as true, and draw all reasonable inferences
from those facts in the plaintiff's favor. Foley v.
Wells Fargo Bank, N.A., 772 F.3d 63, 71, 75 (1st Cir.
2014). In addition to the complaint, the court may consider
documents attached to it or expressly incorporated into it.
Id. at 72. It must then “determine whether the
factual allegations in the plaintiff's complaint set
forth ‘a plausible claim upon which relief may be
granted.'” Id. at 71 (internal quotation
marks omitted). A claim is facially plausible “when the
plaintiff pleads factual content that allows the court to
draw the reasonable inference that the defendant is liable
for the misconduct alleged.” Ashcroft v.
Iqbal, 556 U.S. 662, 678 (2009).
following facts are taken from D'Pergo's first
amended complaint and the attached documents. D'Pergo
manufactures and sells custom guitars. In 2003, D'Pergo
created a photograph showcasing a number of its unique guitar
necks, which it published to its website. D'Pergo later
registered the copyright for the photograph and registered
its signature guitar neck headstock as a trademark. Doc. nos.
is a retailer that sells musical instruments, including
guitars, through its website. D'Pergo alleges that
Sweetwater copied D'Pergo's photograph and published
it on Sweetwater's website. More specifically, Sweetwater
used the photograph in an “Electric Guitar Buying
Guide, ” in the section titled “Guitar necks
explained.” Doc. no. 44-3 at 2, 5. The end of the
Buying Guide features a number of guitars from various
manufacturers for purchase, as well as a hyperlink to
“Shop for Electric Guitars.” Id. at 7-8.
December 2017, D'Pergo brought this action alleging
claims of copyright infringement (Count I), unfair
competition in violation of the CPA (Count II), and deceptive
business practices in violation of the CPA (Count III) based
upon Sweetwater's use of the photograph on its website.
D'Pergo's first amended complaint added two
additional counts: false designation of origin and unfair
competition in violation of 15 U.S.C. § 1125(a)(1)
(Count IV) and trademark infringement in violation of 15
U.S.C. § 1114(1)(a) (Count V).
moves to dismiss Counts II through V. The court will first
address Sweetwater's arguments concerning the two state
law claims, and then turn to the two trademark infringement
Hampshire Consumer Protection Act Claims (Counts II and III)
II and III allege that Sweetwater's use of
D'Pergo's photograph constituted unfair competition
and a deceptive business practice in violation of the CPA,
New Hampshire Revised Statutes Annotated (“RSA”)
chapter 358-A. Specifically, D'Pergo alleges that, by
using the photograph, Sweetwater has “passed off [its]
goods, specifically guitars, for purchase and sale” as
D'Pergo's goods, and that Sweetwater's use of the
photograph is likely to cause confusion as to the source or
origin of Sweetwater's goods and their affiliation with
D'Pergo. Doc. no. 44 at ¶¶ 47-48,
contends that Counts II and III should be dismissed for many
of the same reasons it argues that the trademark infringement
claims, Counts IV and V, should be dismissed. See doc. no. 45
at 7, 11-12. Its arguments are based on the premise that, in
order to state a viable CPA claim, D'Pergo must allege
that it used the photograph itself as a trademark or
otherwise successfully allege a trademark infringement claim.
See Id. at 11-12, doc. no. 53 at 4. The court
disagrees with this premise.
makes it “unlawful for any person to use any unfair
method of competition or any unfair or deceptive act or
practice in the conduct of any trade or commerce within this
state.” RSA 358-A:2. Prohibited acts include, but are
not limited to:
I. Passing off goods or services as those of another;
II. Causing likelihood of confusion or of misunderstanding as
to the source, sponsorship, approval, or certification of
goods or services;
III. Causing likelihood of confusion or of misunderstanding
as to affiliation, connection or association with, or