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
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.
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.
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
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.
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. See doc. no. 63 at 5.
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).
Sweetwater's Motion for 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).
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;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.
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.
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.
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.”).
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.
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
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.
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.
Purpose of Image in Electric Guitar Buying Guide
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 ...