Addressing the denial of a motion to amend a complaint, the US Court of Appeals for the Eighth Circuit affirmed the district court’s dismissal of trade dress infringement, fraud and tortious interference claims as futile, but reversed the district court’s dismissal of a trademark infringement claim. Munro v. Lucy Activewear, Inc. et al., Case No. 16-4483, (8th Cir. Aug. 9, 2018) (Shepherd, J).
Bruce Munro is known around the world for designing and installing large-scale outdoor light exhibitions, two of which are entitled “Field of Light” and “Forest of Light.” Lucy Activewear contacted Munro and proposed featuring one of his light exhibitions in an advertising campaign in Boston. Munro provided Lucy with confidential information relating to his light exhibitions, including attendance numbers, online and social media traffic, and promotional methods for his exhibitions. Munro also informed Lucy that he was in separate discussions with the city of Boston for an exhibition.
In 2013, Lucy launched “Light Forest,” an interactive light exhibition in Boston and a multi-media advertising campaign featuring the exhibition. Munro filed suit against Lucy in Texas state court in 2015 alleging trademark infringement, trade dress infringement and usurpation of a prospective business opportunity. In 2016 the case was transferred to the district court in Minnesota, where Munro moved to a file an amended complaint, and Lucy renewed a Rule 12(b)(6) motion to dismiss for failure to state a claim. The district court denied Munro’s motion to amend his complaint as futile and granted Lucy’s motion to dismiss. Munro appealed.
Munro argued that the district court erred when it denied his motion to amend his claims for trade dress and trademark infringement, fraud and tortious interference. Starting with the trade dress claims, the Eighth Circuit found that Munro’s trade dress claim sought to protect his creative designs for light exhibitions from being “knocked off.” However, copyright law, not trademark law, protects creative designs. As a result, Munro’s trade dress allegations were improper, and amending the complaint would not salvage the claim.
The Eighth Circuit next addressed the fraud claim, noting that in order to withstand a motion to dismiss, fraud allegations must be pleaded with specificity. Munro alleged that Lucy made promises to keep the information he provided during their discussions confidential, but made those promises knowing that it would use the information for its own light exhibition. Munro made general allegations in the amended complaint relating to the time of the promises, the person making the promises and the substance of the promises. The Court concluded that the amended complaint did not provide sufficient facts to support the allegations that Lucy intended to defraud Munro when it made the promises. Therefore, it found the proposed amendment relating to fraud futile.
Turning to the tortious interference claims, the Eighth Circuit did not address the merits of the claim, but rather analyzed whether copyright law preempted the claim. The Copyright Act preempts state law claims if the work at issue is copyrightable subject matter and the state law rights are equivalent to rights granted under the Copyright Act. The Court held that Munro’s light exhibitions were sculptural works, which clearly fall within the scope of copyrightable subject matter. The Court further held that Munro’s state law claim was based on Lucy’s copying or reproduction of Munro’s light exhibitions, which is within the general scope of, or equivalent to, rights granted under copyright law. As a result, Munro’s tortious interference claim was preempted by copyright law, and the denial of the motion to amend the complaint was proper.
Addressing the trademark infringement claim, the Eighth Circuit noted that the district court had rejected the claim for trademark infringement because Munro failed to allege facts that the names of his exhibitions, “Field of Light” and “Forest of Light,” served as source identifiers for goods or services. On this claim the Eighth Circuit reversed, finding that Munro was the source of the goods, and “Field of Light” and “Forest of Light” were capable of identifying Munro as the source of his light exhibitions. Therefore, Munro stated a viable claim for trademark infringement.