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Inc. v. Sweetwater Sound, Inc.

United States District Court, D. New Hampshire

April 18, 2019

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


          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 alleges that Sweetwater used a copyrighted photograph of D'Pergo's trademarked custom guitar necks to promote and sell Sweetwater products on Sweetwater's website.

         On January 14, 2019, the court granted in part and denied in part both parties' motions to compel. See doc. no. 76. Sweetwater moves for reconsideration of “two distinct issues” within that order, which it argues the court determined incorrectly. D'Pergo objects.

         Separately, D'Pergo moves to withdraw and amend its responses to Sweetwater's Request for Admission, asserting that it has recently learned that its responses to three specific requests were incorrect. Sweetwater objects to D'Pergo's motion.


         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.

         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.” 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.” Sweetwater admits that it used the photograph as early as August 5, 2004 and claims that it discontinued using the photograph within two days of receiving notice from D'Pergo on January 4, 2016.[1] See doc. no. 63 at 5.

         D'Pergo asserts five claims in its amended complaint: (1) copyright infringement in violation of the Copyright Act (Count I); (2) unfair competition in violation of the CPA (Count II); (3) deceptive business practices in violation of the CPA (Count III); (4) false designation of origin and unfair competition in violation of the Lanham Act (Count IV); and (5) trademark infringement in violation of the Lanham Act (Count V).


         I. Sweetwater's Motion for Reconsideration

         Reconsideration of an order “is an extraordinary remedy which should be used sparingly.” Palmer v. Champion Mortg., 465 F.3d 24, 30 (1st Cir. 2006) (internal quotation marks omitted). To succeed, a movant must “demonstrate that the order was based on a manifest error of fact or law . . . .” LR 7.2(d). Reconsideration is not “a vehicle for a party to undo its own procedural failures” or a means to “advance arguments that could and should have been presented to the district court prior to” its decision. Iverson v. City of Boston, 452 F.3d 94, 104 (1st Cir. 2006). As such, the court will not grant reconsideration based on arguments that were not previously made or based on arguments that were rejected in the prior order. Biltcliffe v. CitiMortgage, Inc., 772 F.3d 925, 930 (1st Cir. 2014).

         Sweetwater takes issue with two aspects of the court's order on the parties' motions to compel. Sweetwater contends that the court erred when it stated in that order: (1) D'Pergo is not asserting trade dress infringement claims in this case;[2]and (2) Sweetwater included the image in its Electric Guitar Buying Guide to aid purchasers in choosing the appropriate electric guitar. According to Sweetwater, the court should reconsider these statements because the court “cites no authority or record evidence to support its statements” and both statements were “clear legal error” that would result in manifest injustice if allowed to stand. Doc. no. 78 at 1.

         A. Trade Dress

         The amount of time and energy the parties have devoted to litigating the issue of whether D'Pergo is asserting a trade dress infringement claim in this case borders on the absurd. First, in response to D'Pergo's motion to amend its complaint, Sweetwater objected, arguing that permitting D'Pergo to amend its complaint to assert the “trademark or trade dress” claims contained in Counts IV and V would be futile. Doc. no. 30-1 at 7. D'Pergo made it clear in its reply to the objection that it was asserting trademark, and not trade dress, infringement claims in those counts. See doc. no. 38 at 8 (classifying its claims as based on “trademark infringement”). The court granted D'Pergo's motion.

         Next, Sweetwater moved to dismiss Counts IV and V of the amended complaint, arguing that those claims were based on trade dress infringement and failed to state a viable claim for relief. D'Pergo objected, stating that it “has not however alleged in these counts (or any counts) that Defendant has infringed Plaintiff's trade dress.” Doc. no. 49-1 at 10 (emphasis in original). D'Pergo reiterated that Counts IV and V assert claims based on trademark, and not trade dress, infringement.[3]

         Finally, Sweetwater moved to compel D'Pergo to produce documents that were “critically relevant” to D'Pergo's trade dress claims. Doc. no. 62 at 4. In response, D'Pergo stated that it “again asserts that it has not asserted a trade dress claim. Plaintiff has informed Defendant of this several times.” Doc. no. 65 at 7 (emphasis in original). Sweetwater did not file a reply to D'Pergo's objection. The court denied Sweetwater's motion to the extent it sought information related to a trade dress infringement claim because, as D'Pergo represented, D'Pergo had not asserted any trade dress infringement claim in this case. The court held that, therefore, Sweetwater had failed to carry its burden to show that the discovery it sought was relevant. See Rutledge v. Elliot Health Sys., No. 17-cv-110-JD, 2018 WL 1187406, at *1 (D.N.H. Mar. 7, 2018) (“Initially, the party moving to compel bears the burden of showing that the discovery it seeks is relevant.”).

         Sweetwater did not file a response to D'Pergo's objection to its motion to compel, in which D'Pergo again represented to the court that it was not asserting a trade dress infringement claim. Nevertheless, Sweetwater now argues that the court committed “clear legal error” by “rel[ying] on no authority” in support of its statement that D'Pergo has not asserted a trade dress infringement claim in this case. Doc. no. 78 at 4. Sweetwater contends that absent reconsideration, it will be significantly prejudiced and unable to mount a defense.

         Sweetwater is mistaken in all respects. In reaching its conclusion as to the absence of a trade dress infringement claim in this case, the court relied on D'Pergo's repeated representations to Sweetwater and the court that Counts IV and V are not trade dress claims. Sweetwater appears to be under the misimpression that it is a defendant's prerogative to define a plaintiff's claim in whatever manner best lends itself to an adequate defense. That is not the way the law works. See Oldja v. Warm Beach Christian Camps & Conference Ctr., No. C09-0122, 2011 WL 13100726, at *1 (W.D. Wash. Oct. 25, 2011) (rejecting defendant's motion for reconsideration which argued that the plaintiff's general negligence claim “was merely a duty to disclose claim in disguise, ” stating that the “Court is unwilling to permit Defendant to recharacterize Plaintiff's claim out of existence”).

         To the extent Sweetwater argues that it will be prejudiced absent reconsideration because it cannot mount a defense to D'Pergo's claims, that is simply not the case. Sweetwater will not be prejudiced because no trade dress infringement claims exist in this case.

         To the extent after discovery Sweetwater believes that it is entitled to judgment on D'Pergo's trademark infringement claims asserted in Counts IV and V, Sweetwater may move for summary judgment on those claims. But to claim legal error entitling Sweetwater to relief on reconsideration is pure folly. Sweetwater's motion is denied to the extent it requests reconsideration of the court's order as to whether D'Pergo has asserted a trade dress infringement claim in this case.

         B. Purpose of Image in Electric Guitar Buying Guide

         D'Pergo moved to compel Sweetwater to produce information related to Sweetwater's sales of electric guitars. Sweetwater objected to requests to produce that information, arguing that the requests were overbroad “because the image depicts only guitar necks” and, therefore, “D'Pergo is limited to ...

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