United States District Court, N.D. Indiana, South Bend Division
OPINION AND ORDER
L. Miller, Jr. Judge United States District Court
Signs, Inc. brought suit against ICU Outdoor Advertising and
Lawrence Yurko (collectively referred to as “ICU”
for purposes of this order) alleging various violations of
federal and state law, including claims of unfair competition
under the Lanham Act, 15 U.S.C. § 1125(a)(1)(A) and (B),
(Counts 1 and 2), breach of fiduciary duty (Count 3), unfair
competition and tortious interference with a business
relationship under Indiana law (Count 4); tortious
interference with a prospective economic advantage (Count 5);
deceptive trade practices under Illinois law (Count 6);
trademark infringement in violation of 15 U.S.C. § 1114
(Count 7), and trademark infringement under Illinois and
Indiana law (Count 8). ICU moved to dismiss the unfair
competition claims asserted in Counts 1 and 2 under
Fed.R.Civ.P. 12(b)(6), and contends that the remaining claims
should be dismissed for lack of subject matter jurisdiction.
For the following reasons, the court denies the motion.
Standard of Review
considering a Rule 12(b)(6) motion to dismiss, the court
construes the complaint “in the light most favorable to
the nonmoving party, accept[s] well-pleaded facts as true,
and draw[s] all inferences” in the nonmoving
party's favor. Reynolds v. CB Sports Bar, Inc.,
623 F.3d 1143, 1146 (7th Cir. 2010). But Fed.R.Civ.P. 8(a)(2)
“demands more than an unadorned,
Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)(citing
Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555
(2007)). “To survive a motion to dismiss, a complaint
must contain sufficient factual matter, accepted as true, to
‘state a claim to relief that is plausible on its
face.'” Ashcroft v. Iqbal, 556 U.S. at 678
(quoting Bell Atlantic v. Twombly, 550 U.S. at 570);
see also Morrison v. YTB Int'l, Inc., 649 F.3d
533, 538 (7th Cir. 2011); Brooks v. Ross, 578 F.3d
574, 581 (7th Cir. 2009). A claim is plausible if “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. at 678 (citing Bell Atlantic v.
Twombly, 550 U.S. at 556); Mann v. Vogel, 707
F.3d 872, 877 (7th Cir. 2013). “[L]egal conclusions or
conclusory allegations that merely recite a claim's
elements” are not entitled to any presumption of truth.
Munson v. Gaetz, 673 F.3d 630, 632 (7th Cir. 2012).
See also Ashcroft v. Iqbal, 556 U.S. at 678
(“Threadbare recital of the elements of a cause of
action, supported by mere conclusory statements, do not
suffice.”). Twombly and Iqbal
“require the plaintiff to ‘provid[e] some
specific facts' to support the legal claims asserted in
the compliant.” McCauley v. City of Chicago,
671 F.3d 611, 616 (7th Cir. 2011)(quoting Brooks,
578 F.3d at 581)). The plaintiff “must give enough
details about the subject-matter of the case to present a
story that holds together.” Swanson v. Citibank,
N.A., 614 F.3d 400, 404 (7th Cir. 2010). The plaintiff
“may elaborate on his factual allegations so long as
the new elaborations are consistent with the
pleadings.” Geinosky v. City of Chicago, 675
F.3d 743, 751 n.1 (7th Cir. 2012); see Chavez v. Illinois
State Police, 21 F.3d 612, 650 (7th Cir. 2001).
summarized, the complaint alleges that Mr. Yurko was employed
by Landmark Signs when he (and another Landmark employee,
Jerry Lefere) formed a competing business (ICU Outdoor
Advertising, LLC), used Landmark Sign's trademarks and
images of its facilities, employees, and signs to solicit
business for ICU Outdoor Advertising, without Landmark's
consent, and falsely represented that those facilities,
employees, and signs belonged to ICU, to the detriment of
Landmark. Although Landmark asserted three claims under the
Lanham Act - two for unfair competition in violation 15
U.S.C. §§ 1125(a)(1)(A) and (B) (Counts 1 and 2),
and one for trademark infringement in violation of 15 U.S.C.
§ 1114 (Count 7) - ICU moved to dismiss only the unfair
competition claims, contending that Landmark hasn't
pleaded sufficient facts to state a plausible claim under
either § 1125(a)(1)(A) or § 1125(a)(1)(B). The
court, accordingly, limits its discussion to those claims.
Lanham Act was designed to prevent unfair competition and to
protect against fraud “by the use of reproductions,
copies, counterfeits, or colorable imitations of registered
trademarks.” 15 U.S.C. § 1127; Packman v.
Chicago Tribune Co., 267 F.3d 628, 638 (7th
Cir. 2001); Eli Lilly & Co. v. Natural Answers,
Inc., 233 F.3d 456, 461 (7th Cir. 2000). In
Counts 1 and 2 of its complaint, Landmark alleges that ICU
violated the Act's prohibitions against unfair
competition, 15 U.S.C. §§ 1125(a)(1)(A) and
state a plausible claim under § 1125(a)(1)(A) for false
designation of origin, false or misleading description of
fact, or false or misleading representation of fact, Landmark
must allege facts, which if true, would show: “(1) that
the work at issue originated with the plaintiff; (2) that
origin of the work was falsely designated by the defendant;
(3) that the false designation of origin was likely to cause
consumer confusion; and (4) that the plaintiff was harmed by
the defendant's false designation of
origin.” Syngenta Seeds, Inc. v. Delta Cotton
Co-op., Inc., 457 F.3d 1269, 1277 (Fed. Cir. 2006).
elements of a false advertising claim under §
1125(a)(1)(B) are similar. Landmark must show that ICU:
“(1) made a false or misleading statement, (2) that
actually deceives or is likely to deceive a substantial
segment of the advertisement's audience, (3) on a subject
material to the decision to purchase the goods, (4) touting
goods entering interstate commerce, (5) and that results in
actual or probable injury to the plaintiff.” B.
Sanfield, Inc. v. Finlay Fine Jewelry Corp., 168 F.3d
967, 971 (7th Cir. 1999).
contends that Landmark only provided a “threadbare
recital of the elements” in its complaint, and
didn't allege any facts from which the court could infer
that ICU made any false representations to consumers
regarding the origin of the products and services referenced
in its promotional materials or provided to customers, or
that consumers would likely be confused by the statements it
made. The court disagrees.
devoted more than 88 paragraphs to the facts in this case,
and attached 62 exhibits to support those facts. It alleges
• Landmark has been designing, fabricating, installing,
and repairing illuminated and non-illuminated signs
throughout the United States for over thirty years. (Cmplt.
• It has marketed, advertised, and sold its products and
services in connection with the trademark
“Landmark” since October 1983, and in connection
with the trademarks “Landmark Sign, ”
“Landmark Sign Group, ” and a stylized
“Landmark Sign Group” since March 1, 1999
(collectively the “Landmark Trademarks”). (Cmplt.
¶ 9; Exhibit A).
• Landmark has expended, and continues to expend,
significant time, energy, and money designing, fabricating,
installing, and maintaining signs identified by the Landmark
Trademarks, advertising the Landmark Trademarks, and