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Inc. v. Sweetwater Sound, Inc.

United States District Court, D. New Hampshire

December 11, 2018

D'Pergo Custom Guitars, Inc.
v.
Sweetwater Sound, Inc.

          ORDER

          Landya McCafferty, United States District Judge

         D'Pergo 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.

         STANDARD OF REVIEW

         Under 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).

         BACKGROUND

         The 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. 44-2, 44-4.

         Sweetwater 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.

         In 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).

         DISCUSSION

         Sweetwater 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 claims.

         I. New Hampshire Consumer Protection Act Claims (Counts II and III)

         Counts 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, 52.[1]

         Sweetwater 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.

         The CPA 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 ...

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