IP Law Daily, COPYRIGHT—S.D. Ohio: Slovakian entrepreneur's copyright and trademark claims against U.S. tumbler business dismissed, (Sep 18, 2024)

By Saurabh Kashyap, B.A., LL.B., LL.M.

Plaintiff failed to allege her product's non-functionality and protectability adequately.

A federal district court in Ohio largely granted a tumbler tool business's motion to dismiss multiple claims brought by a Slovakian entrepreneur who designs and sells a competing product. The court dismissed the claims for copyright, trademark, and trade dress infringement and unfair competition because the plaintiff failed to adequately allege that her product was non-functional and protectable under U.S. law. The claims of defamation and deceptive trade practices were dismissed due to the lack of actionable statements, as the defendants' remarks were deemed opinions rather than verifiable facts. However, the court denied the dismissal regarding the defendants' corporate capacity, finding that, under Ohio law, actions can proceed against trade names, even if the business is dissolved or fictitious. Furthermore, the court granted the plaintiff sua sponte leave to amend her complaint, allowing her the opportunity to address the deficiencies identified in the ruling (Molnarova v. Swamp Witches Inc. LLC, No. 2:23-cv-2157 (S.D. Ohio Sept. 16, 2024)).

Background. The plaintiff, Jana Molnarova, is a resident of Slovakia and the creator of a product called “Tumblerone,” which is used to decorate tumblers or cups without direct contact. Molnarova markets and sells her products through her Etsy shop, “CrystalyneShop.” Using a 3D printer, she manufactures the product and ships it to customers worldwide. The defendants, SWI LLC and SWI are operated by the co-defendant Michael Moore. These companies market and sell a similar product called the “Manual Tumbler Turner.” SWI uses its website and social media accounts, including TikTok and Instagram, to promote the Manual Tumbler Turner.

The dispute arose when Molnarova discovered that the defendants were marketing a product that resembled her Tumblerone. Defendants began promoting the Manual Tumbler Turner as an “affordable alternative” to the Tumblerone and, allegedly, made derogatory statements regarding Molnarova’s pricing, calling it “insane.” Defendants also posted several videos mocking Molnarova and her intellectual property claims. In response, Molnarova sent cease-and-desist letters and initiated Digital Millennium Copyright Act (DMCA) takedown requests to remove the infringing content from online platforms.

The case was initiated on July 6, 2023, with Molnarova alleging seven counts, including copyright infringement, unfair competition under the Lanham Act, defamation, and deceptive trade practices under Ohio law. The defendants filed the instant dismissal motion seeking to dismiss SWI LLC and SWI, arguing these entities do not legally exist. The defendants further requested the dismissal of Molnarova's claims, arguing that each failed to state a valid legal claim.

Corporate capacity argument. The court first addressed the defendants’ argument that SWI LLC and SWI should be dismissed from the suit because these entities were either non-existent or had their corporate status canceled. The defendants argued that SWI never existed as a corporate entity, while SWI LLC had its status canceled by the Ohio Secretary of State shortly after the case was filed.

The court, however, found that Ohio law permits a plaintiff to maintain an action against a company operating under a trade or fictitious name, regardless of its corporate status. Relying on Ohio Rev. Code § 1329.10(C) and referencing Bob's Beverage, Inc. v. ACME, Inc., 169 F. Supp. 2d 695, 719 (N.D. Ohio 1999), aff'd, 264 F.3d 692 (6th Cir. 2001), the court ruled that SWI LLC's cancellation did not prevent Molnarova from proceeding with her claims, as the relevant cause of action accrued before the company’s dissolution. As a result, the court denied the motion to dismiss SWI LLC and SWI, allowing them to remain in the case.

Copyright infringement claim. Molnarova’s claim for copyright infringement under the Copyright Act and the Berne Convention was dismissed. The defendants argued that Molnarova’s Tumblerone product lacked copyright protection under U.S. law because it was a functional product rather than an artistic work. Citing Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991), the court noted that copyright protection only extends to original works of authorship and does not cover functional designs.

The court found that Molnarova failed to allege how the Tumblerone’s design was non-functional and thus eligible for copyright protection. The court emphasized the doctrine of separability, which limits copyright protection for designs that serve a utilitarian purpose. As Molnarova’s complaint did not sufficiently distinguish the artistic elements of her product from its utilitarian function, the court dismissed her copyright infringement claim without prejudice, allowing her the opportunity to amend the complaint.

Trademark and unfair competition claims. Plaintiff’s claims of trade dress infringement and unfair competition under the Lanham Act were also dismissed. The court reiterated the importance of proving non-functionality for trade dress protection, as outlined in TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 32 (2001), and Bliss Collection, LLC v. Latham Companies, LLC, 82 F.4th 499, 515 (6th Cir. 2023). The court found that Molnarova’s allegations tied the aesthetic features of the Tumblerone to its functional purpose and did not provide sufficient factual detail to establish non-functionality. Consequently, both the trademark infringement and unfair competition claims were dismissed.

State law claims. The court addressed several state law claims under the Ohio Deceptive Trade Practices Act (DTPA) and found that they were insufficiently pleaded. Specifically, Molnarova’s claims of product disparagement, based on the defendants' statements about her pricing and legal efforts, were deemed statements of opinion rather than verifiable facts. Similarly, her claims of fictitious business names under the DTPA were dismissed because she failed to allege any false listing in a local directory or database, as required by Ohio law.

Molnarova’s defamation claim was also dismissed. Though offensive, the court found that the defendants' social media posts constituted opinions and hyperbolic commentary rather than actionable defamation. The court noted that statements on platforms like TikTok are often associated with exaggerated, non-literal speech. As a result, the court concluded that a reasonable viewer would not interpret the defendants' statements as factual assertions.

Dismissal of other claims. All other claims were dismissed due to insufficient factual allegations to meet the required legal standards. Molnarova’s tortious interference with business relationships claim failed because she did not provide enough evidence that the defendants had actual knowledge of her business relationships. Additionally, the court dismissed the telecommunications harassment claim under Ohio Revised Code § 2917.21. Although the court recognized that the defendants’ conduct was offensive, it concluded that the social media posts did not rise to the level of criminal harassment required under the statute. The court found that the defendants’ conduct, while annoying, did not demonstrate the persistent or pervasive nature necessary to cause substantial emotional distress.

Leave to amend. While dismissing Molnarova’s claims, the court granted her leave to amend the complaint. The court noted that Rule 15 of the Federal Rules of Civil Procedure encourages amendments to ensure that claims are decided on their merits. Molnarova was allowed to refile her claims with additional factual detail to address the deficiencies identified by the court.

The Case is No. 2:23-cv-2157.

Judge: Marbley, A.

Attorneys: Arlene Levine Boruchowitz (Dinsmore & Shohl LLP) for Jana Molnarova. Jeanette M. Braun (Braun IP Law, LLC) for Swamp Witches Inc.

Companies: Swamp Witches Inc.

Cases: Copyright TechnologyInternet Trademark OhioNews