United States District Court, D. Minnesota
N. ERICKSEN United States District Judge
matter is before the Court on Defendant ICM Controls
Corp.'s (“ICM”) Motion for Express Dismissal
of Count XIX (“Motion”) [Dkt. No. 454]. In ruling
on the parties' cross-Daubert motions in January
2017, the Court noted a dispute running in the background and
invited the parties to bring it to the forefront:
The magistrate judge declined to rule on ICM's argument
that some of [an expert witness's] proposed testimony was
irrelevant given what ICM contended was the scope of the
remaining claims. The magistrate judge explicitly chose not
to comment on whether Honeywell's claim under the
Minnesota Deceptive Trade Practices Act (Count XIX) remains
alive . . . . The Court granted summary judgment against
Honeywell on its Lanham Act trade dress infringement, false
advertising, and false designation of origin claims (Counts
XIII through XVIII). Whether Count XIX, which relies on the
same factual allegations as those claims by incorporating
them by reference, remains viable is a question that has not
been reached . . . . ICM may file a motion  addressing this
question . . . .
Dkt. No. 447, at 2 n.1 (citations omitted). ICM took up the
invitation and filed the Motion, which Plaintiff Honeywell
International Inc. (“Honeywell”) opposes.
Resolving this question now will assist the parties'
preparation for trial.
the parties are necessarily familiar with the history of this
case, the Court recounts it briefly for context. Honeywell
filed its original complaint in 2011 and an amended complaint
(“Amended Complaint”) in 2012, which ICM
answered. Following active discovery efforts, Honeywell moved
in 2013 to amend its complaint again, proposing alterations
related solely to its patent claims; that motion was denied.
See Dkt. Nos. 161, 164-1, 202, 208. In 2014, the
parties litigated Daubert and other dispositive
motions. The Court granted ICM's motions for summary
judgment on Honeywell's Lanham Act trade dress claims
under 15 U.S.C. § 1125(a)(1)(A) (Counts XIII - XVI) and
Lanham Act false designation of origin claim (Count XVIII).
Dkt. No. 338, at 26, 42. The Court then, after further
briefing, dismissed Honeywell's Lanham Act 15 U.S.C.
§ 1125(a)(1)(B) false advertising claim (Count XVII).
Dkt. No. 359. Progress toward trial was then interrupted by
the death of one of Honeywell's expert witnesses. The
Court allowed Honeywell to substitute an expert witness and
the parties to submit related reports, and heard and decided
related Daubert motions. See Dkt. No. 447.
claim now under consideration is Count XIX of the Amended
Complaint, naming a cause of action under the Minnesota
Deceptive Trade Practices Act (“MDTPA”), Minn.
Stat. § 325D.44. This is the entire count:
199. Honeywell hereby restates and re-alleges the allegations
set forth in preceding paragraphs and incorporates them by
200. The acts herein described also constitute violation of
Minn. Stat. § 325D.44.
201. As a result of the infringing acts herein described,
Honeywell has sustained damages in an amount in excess of
$75, 000 to be determined at trial, and will continue to
sustain damages in the future, including irreparable harm.
asserts three grounds for dismissal of Count XIX.
See ICM Br. 1-3, Dkt. No. 452. First, to the extent
Honeywell's MDTPA claim is based on the same underlying
conduct as its Lanham Act counts, it cannot survive their
demise at summary judgment. Second, to the extent Honeywell
argues that the scope of its MDTPA claim is broader than the
Lanham Act claims and includes allegations of confusion
relating to copying the labels and manuals of Honeywell's
products, those allegations were not pleaded in the Amended
Complaint. Third, even if such conduct had been pleaded, it
would be preempted by the Copyright Act.
concedes that its MDTPA claim fails with its Lanham Act
claims “to the extent they both rely on the same
factual allegations.” Honeywell Opp. 5, Dkt. No. 457.
It does not argue that its allegations about product
configuration copying, which formed the basis of its
now-defunct Lanham Act claims, can still form the basis of a
viable MDTPA claim. Honeywell instead asserts that it has
alleged other facts in the Amended Complaint that
independently support Count XIX and keep it alive:
“Honeywell clearly alleges that ICM's use of
Honeywell's copyrighted materials and misrepresentations
regarding patented features-in addition to product shape-have
allowed ICM to unfairly trade off of Honeywell's goodwill
by knocking off several Honeywell product lines.”
Id. at 1. Honeywell also points to authorities for
its argument that a claim for “passing off” under
a state law like MDTPA, even if based on alleged copying of a
work, is not preempted by the Copyright Act because it has an
extra, qualitatively different element. Id. at
15-17; see also 1-1 Melville B. Nimmer and David
Nimmer, Nimmer on Copyright § 1.01[B][e]
(2016) (with regard to preemption, noting that
“concrete cases can pose difficult issues whether the
alleged violation of the  Uniform Deceptive Trade Practices
Act arises out of confusion or from copying”).
Court does not reach the preemption question because it
concludes that Honeywell did not plead its newly asserted
theory in the Amended Complaint. As Honeywell has previously
acknowledged, see Dkt. No. 339, at 7, the Court has
the power to sua sponte dismiss a complaint or cause
of action for failure to state a claim. Smith v.
Boyd, 945 F.2d 1041, 1043 (8th Cir. 1991); cf. N.
States Power Co. v. Fed. Transit Admin., 358 F.3d 1050,
1056-57 (8th Cir. 2004) (affirming district court's
refusal at the summary judgment stage to recognize a claim
that the plaintiff had failed to adequately plead in its
deciding whether to dismiss for failure to state a claim, a
court accepts the facts alleged in the complaint as true and
grants all reasonable inferences in favor of the plaintiff.
Varga v. U.S. Bank Nat'l Ass'n, 764 F.3d
833, 838 (8th Cir. 2014). Although a complaint need not
contain detailed factual allegations, “[a] pleading
that offers ‘labels and conclusions' or ‘a
formulaic recitation of the elements of a cause of action
will not do.'” Ashcroft v. Iqbal, 556 U.S.
662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly,
550 U.S. 544, 555 (2007)). To survive dismissal, “a
complaint must contain sufficient factual matter, accepted as
true, to ‘state a claim to relief that is plausible on
its face.'” Id. (quoting Twombly,
550 U.S. at 570). The court may consider exhibits attached to
a complaint as well as the pleading itself. Mills v. City
of Grand Forks, 614 F.3d 495, 498 (8th Cir.2010).
Court begins its analysis by considering the pleadings
specific to Count XIX, quoted above. These bare-bones
recitations or “naked assertion[s]” do not
suffice. Iqbal, 556 U.S. at 678. Indeed, they do not
even provide a “formulaic recitation” of the
specific elements of MDTPA that Honeywell asserts ICM has
violated. Id. MDTPA has no fewer than 13 different
subsections, including some that mirror Lanham Act elements.
E.g., Phoenix Entm't Partners, LLC v.
Lapadat, 123 F.Supp.3d 1114, 1122-23 (D. Minn. 2015).
But Honeywell did not articulate in its Amended Complaint any
particular theories for how ICM violated MDTPA, or identify
any particular facts that supported any theory. Instead, it
cited the whole statutory provision and incorporated 198
previous paragraphs of allegations with no further
explanation. A reasonable reading of those 198
paragraphs gives the overwhelming impression that Honeywell
alleges that ICM's copying of Honeywell's product
configurations, and its marketing depictions of those
similar-looking products, causes confusion in the
marketplace. Those factual allegations formed the basis of
the Lanham Act claims that did not survive summary judgment.
Honeywell now argues that it also incorporated by reference
its allegations that ICM “knocked off” the
products' technical manuals and labels, and that this
copying also was deceptive and likely to cause confusion.
This new assertion is an after-the-fact attempt to remedy the
harm caused by the dismissal of its trade dress and false
advertising allegations. Although Honeywell filed its Amended
Complaint in 2012, it appears that the first time Honeywell
ever articulated this theory was ...