United States District Court, E.D. Missouri, Eastern Division
MEMORANDUM AND ORDER
G. FLEISSIG UNITED STATES DISTRICT JUDGE.
copyright and unfair competition matter is before the Court
on the motion of Defendant Onyx Enterprises, International
Corporation (“Onyx”), to dismiss Plaintiff
etrailer Corporation's (“etrailer”)
complaint. For the reasons set forth below, the motion to
dismiss will be denied in part as to etrailer's copyright
claims, and granted as to etrailer's unfair competition
is an online vendor of motor vehicle accessories such as
trailer hitches, trailer parts, and towing accessories.
Etrailer uses its own high-quality photographs
(“Photos”) and videos to advertise and market the
products it sells. Onyx, which does business on the Internet
as CARiD.com, is a direct competitor of etrailer in the
online car accessories sales market. Etrailer and Onyx sell
many of the same products made by third parties.
complaint states that its Photos and videos either have
copyright registrations approved by the United States
Copyright Office (“actual registrations”), or are
the subject of pending, completed copyright registration
applications filed with the Copyright Office
(“applied-for registrations”). Etrailer claims
that Onyx engaged in willful copyright infringement in
violation of the federal Copyright Act, 17 U.S.C. § 501,
by illegally copying and displaying thousands of
etrailer's Photos on CARiD.com to sell the products
depicted in the photos (Count I).
additionally alleges that Onyx altered some of the Photos by
removing etrailer's name or marks that originally
appeared in the Photos on or near the products depicted.
Etrailer claims that this constituted false designation of
origin in violation of § 43(a) of the Lanham Act, 15
U.S.C. § 1125(a) (Count II), and Missouri statutory and
common law (Count III).
copyright infringement claims, etrailer seeks an entry of
judgment finding that Onyx has infringed on etrailer's
rights; an order directing Onyx to provide proof of
destruction of unlawful copies of the Photos, or to allow
etrailer to effect the same; a permanent injunction against
Onyx; monetary damages, pursuant to 17 U.S.C. § 504(c),
of $150, 000 per infringement, or disgorgement of Onyx's
profits in an amount to be proven at trial; and costs and
false designation of origin claims, etrailer seeks an entry
of judgment; reimbursement for advertising and other expenses
necessary to dispel the public confusion caused by Onyx's
unlawful acts; monetary damages in an amount to be proven at
trial, trebled, pursuant to 15 U.S.C. § 1117, on account
of Onyx's willfulness; and attorney's fees and costs.
support its claims, etrailer attached to the complaint an
exemplar list of 27 of its actually registered “photo
groups, ” which contain Photos of vehicle accessories.
Also attached are side-by-side comparisons of 80 Photos, as
posted on etrailer.com, and Onyx's posting of the
identical, or slightly modified, Photos on CARiD.com or
eBay.com. Of the 80 Photos included, 69 have actual
registrations, and 11 are listed as “pending
registration.” In 21 of the Photos, the name
“etrailer” appears on the product itself;
etrailer's name has been removed in the allegedly
OF THE PARTIES
support of its motion to dismiss the federal copyright
claims, Onyx initially argued that the court lacked subject
matter jurisdiction over claims based on Photos with only
applied-for registrations. Onyx additionally asserts that etrailer
failed to state a claim with regards to false designation of
origin under either federal or state law, as etrailer is not
the source of the products depicted in the Photos, and thus
removing etrailer's marks from the Photos does not
falsely designate the products' origin.
opposing Onyx's motion to dismiss, etrailer notes that
Onyx's position on the Court's lack of subject matter
jurisdiction relied on an incorrect statement of the law.
Etrailer cites Reed Elsevier, Inc. v. Muchnick, 559
U.S. 154, 157 (2010), which held that registration of a
copyright is not a jurisdictional issue, but rather a
“precondition” to suit under the Copyright Act.
With respect to Counts II and III, etrailer first asserts
that there is no support in the complaint for Onyx's
argument that etrailer is not the origin of the underlying
products depicted. Etrailer further argues that its
protectable interest in the Photos is not dependent on
etrailer being the source of the products depicted, and cites
cases to support the proposition that a defendant's use
of a plaintiff's photographs in advertising certain
products is a false designation of origin. In addition,
etrailer argues that the Photos themselves are the products
being falsely designated, and Onyx's removal of
etrailer's marks “from many of the [Photos]”
is likely to cause confusion regarding the Photos'
origin. ECF No. 18 at 7.
reply, Onyx concedes that the Court has subject matter
jurisdiction over the infringement claims, but argues that
Count I fails to state a claim based on any Photos for which
etrailer did not obtain actual registration. Regarding Counts
II and III, Onyx points to numerous references in the
complaint to etrailer's status as a vendor, and not the
manufacturer or producer, of the products etrailer sells.
Onyx distinguishes the cases etrailer relies on, as those
cases involved photographs of products that were, in fact,
the plaintiff's own goods. Onyx also asserts that the
Photos cannot be “products” within the definition
of the Lanham Act or Missouri law on false designation, as
the Photos are not marketed to consumers.
means of a sur-reply, filed with leave of Court, etrailer
posits that Onyx waived its opportunity to move to dismiss
Count I for failure to state a claim by initially attacking
that count on subject matter jurisdiction grounds. Etrailer
further argues that it has satisfied any precondition to suit
for infringement of Photos with either actual registration or
applied-for registration, based on Action Tapes, Inc. v.
Mattson, 462 F.3d 1010 (8th Cir. 2006), which stated
that infringement is actionable under the Copyright Act once