BRYAN ASHLEY INTERNATIONAL, INC., a Florida corporation,
Plaintiff, vs. SHELBY WILLIAMS INDUSTRIES, INC., a Delaware
corporation, Defendant.
Case No. 95-6894-CIV-HIGHSMITH/JOHNSON
UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF
FLORIDA
932 F. Supp. 290; 1996 U.S. Dist. LEXIS 10824; 42
U.S.P.Q.2D (BNA) 1310; 10 Fla. L. Weekly Fed. D 131
July 24, 1996, Decided
July 25, 1996, FILED
ORDER DENYING MOTIONS FOR PARTIAL JUDGMENT ON THE PLEADINGS
THIS CAUSE came before the Court upon Plaintiff Bryan Ashley International,
Inc.'s Motion for Partial Judgment on the Pleadings, filed February 14, 1996,
and Defendant Shelby Williams Industries, Inc.'s Cross Motion for Partial
Judgment on the Pleadings, filed March 1, 1996. For the reasons set forth below,
the Court denies both motions.
I. Background
Both the plaintiff and the defendant sell furniture, including rattan and
wicker items. By letter dated September 5, 1995, defense counsel warned the
plaintiff of the plaintiff's alleged "misappropriation of [the defendant's]
intellectual property" and demanded that the plaintiff "immediately cease and
desist" from the alleged misappropriation [**2] or risk "disgorgement of
profits improperly gained . . . as well as reimbursement to [the defendant] for
attorneys' fees incurred." Complaint, at Exhibit A. On September 22, 1995, the
plaintiff filed the instant declaratory judgment action.
In its complaint, the plaintiff seeks a declaration that it has not violated
Title 17, United States Code, Section 501 ("the Copyright Act") or Title 15,
United States Code, Section 1125(a) ("the Lanham Act") and has not engaged in
any unfair competition precluded by Florida law. The defendant's counterclaim
alleges trade dress infringement and false designation of origin in violation of
the Lanham Act and copyright infringement in violation of the Copyright Act.
Pursuant to Fed.R.Civ.P. 12(c), the plaintiff has moved, and the defendant has
cross-moved, for partial judgment on the pleadings as to Count I.
II. Standard of Review
Federal district Courts have applied a "fairly restrictive standard in ruling
on motions for judgment on the pleadings." 5A Charles A. Wright & Arthur R.
Miller, Federal Practice and Procedure § 1368 (1990). To obtain a judgment on
the pleadings, the moving party must clearly establish that no material [**3]
issue of fact remains unresolved and that it is entitled to judgment as a matter
of law. Vagenas v. Continental Gin Co., 789 F. Supp. 1137, 1138 (M.D. Ala.
1992) vacated on other grounds, 988 F.2d 104 (11th Cir. 1993) cert. denied, 510
U.S. 947 (1993); Greenberg v. General Mills Fun Group, Inc., 478 F.2d 254, 256
(5th Cir. 1973). Moreover, the district court must view the facts presented in
the pleadings, and all inferences drawn thereof; in the light most favorable to
the non-moving party. Inst. for Scientific Info., Inc. v. Gordon and Breach,
931 F.2d 1002, 1004 (3rd Cir. 1991) cert. denied, 502 U.S. 909, 116 L. Ed. 2d
245, 112 S. Ct. 302 (1991). When a motion filed pursuant to Fed.R.Civ.P. 12(c)
raises a Fed.R.Civ.P. 12(b)(6) defense, the court should apply the same standard
used to evaluate a Fed.R.Civ.P. 12(b)(6) motion. n1 See Miami Herald Publishing
Co. v. Ferre, 636 F. Supp. 970, 974 (S.D. Fla. 1985); Massachusetts Candy &
Tobacco Distribs., Inc. v. Golden Distribs. Ltd., 852 F. Supp. 63, 67 (D.Mass.
1994); Crooked Lake Dev., Inc. v. [*292] Emmet County, 763 F. Supp. 1398, 1400
(W.D. Mich. 1991).
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n1 Fed.R.Civ.P. 12(h)(2) provides that "[a] defense of failure to state a
claim upon which relief can be granted . . . may be made . . . by motion for
judgment on the pleadings."
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[**4]
III. Discussion
In its motion, the plaintiff contends that it should be awarded the
declaratory relief sought in Count I with respect to the defendant's furniture
designs. The defendant opposes the plaintiff's motion and cross-moves for
judgment on the pleadings, essentially raising the Fed.R.Civ.P. 12(b)(6) defense
that the plaintiff has failed to state a claim entitling the plaintiff to
declaratory relief. n2 The defendant contends that no actual controversy exists
between the parties or, alternatively, that any controversy that existed is now
moot.
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n2 The defendant submitted the same memorandum of law in support of both its
opposition to the plaintiff's motion and its own cross motion.
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A. Defendant's Rule 12(c) Motion
Pursuant to Title 28, United States Code, Section 2201, a declaratory
judgment may issue only if there is an actual controversy between the parties
before the court. GTE Directories Publishing Corp. v. Trimen America Inc., 67
F.3d 1563, 1567 (11th Cir. 1995). The defendant contends [**5] that no actual
controversy exists because it has never asserted a claim for copyright
infringement of its furniture designs.
To determine the existence of an actual controversy in patent litigation,
courts apply a two-part test:
First, there must be an explicit threat or other action by the
patentee, which creates a reasonable apprehension on the part of the
declaratory plaintiff that it will face an infringement suit. Second,
the accused infringer or declaratory plaintiff must have actually
produced or prepared to produce an allegedly infringing product.
Hewlett-Packard Co. v. Genrad, Inc., 882 F. Supp. 1141, 1156 (D.Mass. 1995)
(citations omitted); see also Century Indus., Inc. v. Wenger Corp., 851 F. Supp.
1260, 1263 (S.D. Ind. 1994). This Court finds this test equally applicable in
the context of copyright litigation.
In the instant action, the letter from defense counsel accusing the plaintiff
of misappropriating the intellectual property of the defendant and demanding
that the plaintiff cease and desist any further misappropriation amounts to
action creating a "reasonable apprehension" of litigation, thus satisfying the
first prong of the Hewlett-Packard [**6] test. Furthermore, the continued sale
of the potentially "infringing products" satisfies the second prong of the test.
See Flint Ink Corp. v. Brower, 845 F. Supp. 404, 407 (E.D. Mich. 1994)(patentee
's letters charging infringement and demanding the cessation of such
infringement, along with alleged infringer's denial of infringement, gave rise
to actual controversy warranting issuance of declaratory judgment) The Court
further notes that the defendant has acknowledged that "a justiciable
controversy exists between the parties with respect to the right of [the
plaintiff] to continue selling its accused furniture designs under threat of
litigation." Answer, at P 10. Therefore, the plaintiff has sufficiently
demonstrated the existence of an actual controversy.
Alternatively, the defendant contends that any controversy that existed with
respect to copyrights on the furniture designs was rendered moot by its
acknowledgment that the defendant "does not assert that [the plaintiff] has
infringed copyrights of [the defendant] on specific furniture designs." Answer,
at 1112, 16, 23-25. However, absent the "filing [with the Court of] a formal
covenant . . . not to sue [and absent] [**7] a final determination of
noninfringement," the defendant's acknowledgments do not render moot the
plaintiff's declaratory judgment action. Mobil Oil Corp. v. Advanced Envtl.
Recycling Technologies, Inc., 826 F. Supp. 112, 114 (D.Del 1993); see also
Pruitt v. Wilder, 840 F. Supp. 414, 416-17 (E.D. Va. 1994)(state's voluntary
removal of its challenged ban did not render moot the action challenging the ban
because, without a determination as to the validity of the ban, the state was
free to alter its policy at any time). The Court again notes that the defendant
's [*293] answer to the complaint also acknowledges the existence of a
"justiciable controversy . . . between the parties with respect to the right of
[the plaintiff] to continue selling its accused furniture designs under threat
of litigation." Answer, at P 10. Therefore, the plaintiff has sufficiently
demonstrated that the controversy has not been rendered moot. Since the Court
has determined that the plaintiff has overcome the Fed.R.Civ.P. 12(b)(6)
defenses raised in the defendant's Fed.R.Civ.P. 12(c) motion, the Court denies
the defendant's motion.
B. Plaintiff's Rule 12(c) Motion
In its motion, the plaintiff contends [**8] that it should be awarded the
declaratory relief sought in Count I with respect to the defendant's furniture
designs because the defendant has failed to deny the salient allegations in the
complaint. However, contrary to the plaintiff's contention, the defendant has
denied those material allegations that are relevant to a determination of the
merits of any copyright infringement action, including the protectable nature of
the defendant's furniture designs and the defendant's standing to bring such an
action. In light of the existence of genuine issues of material fact, the Court
denies the plaintiff's motion for judgment on the pleadings.
ORDERED AND ADJUDGED that Plaintiff Bryan Ashley International, Inc.'s Motion
for Partial Judgment on the Pleadings, filed February 14, 1996, is DENIED. It is
further
ORDERED AND ADJUDGED that Defendant Shelby Williams Industries, Inc.'s Cross
Motion for partial Judgment on the Pleadings, filed March 1, 1996, is DENIED.
DONE AND ORDERED in Chambers, at Miami, Dade County, Florida this 24th day of
July, 1996.
SHELBY HIGHSMITH
UNITED STATES DISTRICT JUDGE