Case 2:19-cv-10619-SFC-MKM ECF No. 34, PageID.

247 Filed 02/23/21 Page 1 of 33

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION

CONSTRUCTIVE EATING, INC.,

Plaintiff,
Civil Action No. 2:19-cv-10619
v.
Honorable Sean F. Cox
MASONTOPS, INC.,

Defendant.

OPINION AND ORDER DENYING DEFENDANT’S MOTION TO DISMISS ALL

CLAIMS OF PLAINTIFF’S FIRST AMENDED COMPLAINT (ECF NOS. 23, 26, 27)

This is an intellectual property case in which Plaintiff Constructive Eating, Inc.

(“Constructive Eating”) alleges that Defendant Masontops, Inc. (“Masontops”) violates its

intellectual property rights on its designs for construction vehicle-themed eating utensils.

This case is before the Court on Masontops’ motion under Rule 12(b)(6) to dismiss all of

Constructive Eating’s claims (the “Motion”). The parties have submitted written briefs explaining

their positions on whether the Court should dismiss Constructive Eating’s claims. ECF Nos. 23

(Def.’s Mot. Br.), 26 (Pls.’ Resp. Br.), 27 (Def.’s Reply Br.). Pursuant to E.D. Mich. LR 7.1(f)(2),

the Court will decide the Motion without a hearing. For the reasons set forth below, the Court will

deny the Motion.

I. PROCEDURAL HISTORY

Constructive Eating filed this case on March 1, 2019. Compl., ECF No. 1. Constructive

Eating later filed an amended complaint on April 12, 2019 (the “Complaint”). Am. Compl., ECF

No. 4. In the Complaint, Constructive Eating alleges that Masontops violates its intellectual

property rights on its designs for construction vehicle-themed eating utensils under both federal

and state law. Under federal law, Constructive Eating asserts claims of trade dress infringement

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and unfair competition under the Lanham Act, design patent infringement under the Patent Act,

and copyright infringement under the Copyright Act. Id. ¶¶ 44-87, ECF No. 4. at PageID.62-71.

Under state law, Constructive Eating asserts claims of common law unfair competition and

violation of the Michigan Consumer Protection Act (“MCPA”). Id. ¶¶ 88-105, ECF No. 4. at

PageID.71-74.

On June 29, 2020, in lieu of answering the Complaint, Masontops filed the instant Motion.

ECF No. 23. In the Motion, Masontops asks the Court to dismiss all of Constructive Eating’s

claims under Rule 12(b)(6). Masontops argues that the Court should grant the Motion because

Constructive Eating’s claims are not plead with sufficient particularity, seek to protect

unprotectable subject matter, and are facially implausible.

II. PLEADING STANDARDS

Rule 8(a)(2) requires a complaint to include “a short and plain statement of the claim

showing that the pleader is entitled to relief.” Fed. R. Civ. P. 8(a)(2). A complaint that fails to

make such a showing may be dismissed pursuant to Rule 12(b)(6) for “failure to state a claim upon

which relief can be granted.” Fed. R. Civ. P. 12(b)(6).

When deciding a motion to dismiss under Rule 12(b)(6), the Court must construe the

complaint in the light most favorable to the plaintiff and accept all the factual allegations contained

in the complaint as true. See Lambert v. Hartman, 517 F.3d 433, 439 (6th Cir. 2008). In order to

survive a Rule 12(b)(6) motion, a complaint need contain only “enough facts to state a claim for

relief that is plausible on its face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). “A claim

has facial plausibility when 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. 662, 678 (2009) (citing Twombly, 550 U.S. at 556). “Where a complaint pleads facts that are

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merely consistent with a defendant’s liability, it ‘stops short of the line between possibility and

plausibility of entitlement to relief.’” Id. (quoting Twombly, 550 U.S. at 557). “Determining

whether a complaint states a plausible claim for relief will . . . be a context-specific task that

requires the reviewing court to draw on its judicial experience and common sense.” Id. at 679.

III. FACTUAL BACKGROUND

The facts of this case are largely undisputed.

A. Constructive Eating’s Factual Allegations

For purposes of this Opinion and Order, the Court accepts as true the following factual

allegations set forth by Constructive Eating in the Complaint. Lambert, 517 F.3d at 439.

Constructive Eating was founded in 2006 by two parents who, motivated to make mealtime

more enjoyable for their children, created designs for construction vehicle-themed eating utensils.

Am. Compl. ¶¶ 6-7, ECF No. 4 at PageID.53. Constructive Eating introduced its eating utensils

into the marketplace in 2007. Id. ¶ 18, ECF No. 4 at PageID.56. In the years that followed, after

investing substantial time and resources developing, manufacturing, marketing, promoting and

building a distribution network for its eating utensils, Constructive Eating achieved significant

commercial success, including generating millions of dollars in sales on nearly a million eating

utensils. Id. ¶¶ 10, 17-20, ECF No. 4 at PageID.54-56. In addition, Constructive Eating achieved

numerous awards, national recognition, national publicity, favorable customer reviews, and large

social media followings. Id. ¶¶ 21-25, ECF No. 4 at PageID.56-57.

This case arose in 2018 when Constructive Eating learned that Masontops had introduced

construction vehicle-themed eating utensils into the marketplace with similar designs. Id. ¶¶ 28,

33, ECF No. 4 at PageID.59, 61. Masontops marketed its eating utensils to Constructive Eating’s

customers, and began to compete with Constructive Eating for sales. Id. ¶¶ 28-29, 32, ECF No. 4

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at PageID.59-60. Constructive Eating sent Masontops a letter demanding that it “cease and desist,”

but Masontops declined. Id. ¶ 33, ECF No. 4 at PageID.61.

As shown in Constructive Eating’s images of the parties’ eating utensils, reproduced below,

the designs at issue in this case involve the combination of construction vehicles with the handles

and food-manipulating portions of eating utensils. Id. ¶¶ 7, 28, ECF No. 4 at PageID.53, 59.

Constructive Eating’s three-piece set of eating utensils is shown at left, and Masontops’ two-piece

set of eating utensils is shown at right.

Among other similarities between the parties’ designs, the construction vehicles are

“integrated” with both the handles and the food-manipulating portions. Id. ¶ 8, ECF No. 4 at

PageID.53-54. This integration includes the way the construction vehicles “morph” into the food-

manipulating portions. Id. For instance, as seen in Constructive Eating’s eating utensils, in the

“front loader utensil” at left, the front loader’s bucket morphs into a spoon, in the “bulldozer utensil”

at top right, the bulldozer’s blade morphs into a pusher, and in the “forklift utensil” at bottom right,

the forklift’s tines morphs into a fork. Similarly, as seen in Masontops’ eating utensils, in the “front

loader utensil” at left, the front loader’s bucket morphs into a spoon, and in the “bulldozer utensil”

at right, the bulldozer’s blade morphs into a fork. Additional similarities between the parties’

designs include the use of two-tone color schemes, and the use of two different materials. Id. ¶ 9,

ECF No. 4 at PageID.54.

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To further illustrate the similarities between the parties’ designs, Constructive Eating

contrasts them with the designs of a third-party competitor. As shown in Constructive Eating’s

images of the competitor’s construction vehicle-themed eating utensils, reproduced below, the

competitor’s designs, like the parties’ designs, involve the combination of construction vehicles

with the handles and food-manipulating portions of eating utensils. Id. ¶ 30, ECF No. 4 at

PageID.59-60. However, the competitor’s eating utensils “look nothing like” the parties’ eating

utensils. Id.

Constructive Eating alleges that the similarities between the parties’ designs has caused

confusion as to the source of Masontops’ eating utensils. Id. ¶ 43, ECF No. 4 at PageID.62. For

example, Constructive Eating cites its interactions with prospective buyers at a trade show where

both parties displayed their eating utensils. Id. ¶¶ 34-37, 41, ECF No. 4 at PageID.61-62. At the

trade show, individuals approached Constructive Eating at its booth and, in reference to Masontops’

booth, asked if Constructive Eating had another booth. Id. ¶ 39, ECF No. 4 at PageID.62. Moreover,

individuals informed Constructive Eating that Masontops’ eating utensils look “just like” or

“exactly like” its eating utensils, and that Masontops was “ripping off,” “knocking off” or “copying”

its designs. Id. ¶ 40, ECF No. 4 at PageID.62. As another example of confusion, Constructive

Eating cites a communication it received from a store owner who, after receiving Masontops’

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eating utensils from a distributor, initially thought that they originated from Constructive Eating.

Id. ¶ 42, ECF No. 4 at PageID.62.

B. Constructive Eating’s Intellectual Property Rights

Constructive Eating has both design patents and copyrights on its designs. In particular,

Constructive Eating owns the “D’440 Patent” and the “’404 Copyright,” which cover its design

for the front loader utensil, and the “D’441 Patent” and the “’223 Copyright,” which cover its

design for the bulldozer utensil. Id. ¶¶ 11-16, ECF No. 4 at PageID.54-55; Ex. A, ECF No. 4-1

(Spoon With Integrated Construction Machine, U.S. Patent No. D554,440 (issued Nov. 6, 2007));

Ex. B, ECF No. 4-2 (Pusher With Integrated Construction Machine, U.S. Patent No. D554,441

(issued Nov. 6, 2007)); Ex. C, ECF No. 4-3 (BULL DOZER PUSHER, U.S. Copyright

Registration No. VA 1-704-223 (registered July 6, 2009)); Ex. D, ECF No. 4-4 (FRONT LOADER

SPOON, U.S. Copyright Registration No. VA 1-704-404 (registered July 6, 2009)).

Constructive Eating also alleges that it has “product design” trade dress rights on its designs

— i.e., trade dress rights in the “overall look and appearance” of its construction vehicle-themed

eating utensils. Id. ¶ 27, ECF No. 4 at PageID.58-59. In particular, Constructive Eating alleges that

by virtue of its long-running position as the sole source of eating utensils embodying its

“distinctive” designs, it has created “significant source-identifying and valuable goodwill.” Id. ¶

26, ECF No. 4 at PageID.58.

Constructive Eating’s trade dress “articulation” — i.e., the elements of the alleged trade

dress — is reproduced below, with reformatting by the Court to list each element in its own

paragraph, group the elements by type, and label the elements in brackets for later reference:

27. . . . Constructive Eating has protectable product design trade

dress rights in the overall look and appearance of its Construction
Utensils, including but not limited to the overall combination of the
non-functional design aspects such [as]

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[1. Eating Utensils]

[1a] design, style, appearance, visual connection and visual flow of
the handle portion to the construction vehicle portion to the food
manipulating portion;
[1b] the design, appearance, placement and location of the
construction-themed vehicle on the utensil;
[1c] the shape, angle and extension of the handle out of the back end
of the construction vehicle;
[1d] the integration of the construction vehicle with the food
manipulating portion without interfering with the design of the
construction vehicle;
[1e] the overall shape, proportions, widths, heights, size and
dimensions of the utensils;
[1f] the use of two different materials to create a look of different
textures on different portions of the utensil;
[1g] . . . a taper from the proximal end of the handle to the integrated
construction vehicle[;]
[1h] the two-tone color scheme which can include a yellow or other
color base and black accents and features;
[1i] the yellow or other color handle with black overlay;

[2. Construction Vehicles]

[2a] the distinctive projection for the exhaust pipe in the rear portion
of the construction vehicle;
[2b] the shape, relative dimensions and color of the front and side
windows in the cab;
[2c] the general shape and configuration of the Front Loader Utensil
construction vehicle with heightened cab and trapezoidal profile;
[2d] the black wheels with yellow or other color circular centers on
the Front Loader Utensil;
[2e] formed steps in the sides of the construction vehicle leading up
to the cab;
[2f] general shape and configuration of the Bulldozer Utensil
construction vehicle, including a higher tread back portion that
converges to a lower front tread portion; [and]
[2g] the black bulldozer treads framing an oblong yellow or other
color rounded trapezoidal shaped interior on the Bulldozer Utensil[.]

Id. ¶ 27, ECF No. 4 at PageID.58-59; see also id. ¶ 77, ECF No. 4 at PageID.69-70.

C. Additional Facts

In a point Masontops emphasizes throughout the Motion, Constructive Eating’s claims

raise issues concerning the protectability of its designs. In particular, whatever intellectual property

rights might be recognized on its designs, Constructive Eating cannot appropriate the likes of

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concepts and ideas for construction vehicle-themed eating utensils, and functional, standard,

essential, and unoriginal elements and features in the field of construction vehicle-themed eating

utensils, from the public domain. To inform its consideration these issues, the Court notes:

First, the concept of construction vehicle-themed eating utensils was known long before

Constructive Eating created its designs. Masontops points out that in the 1970s, an earlier inventor,

Pearson, obtained a utility patent coving the concept of construction vehicle-themed eating utensils.

See Def.’s Mot. Br. Ex. A, ECF No. 23-2 (Combined Spoon & Toy, U.S. Patent No. 3,968,591

(issued July 13, 1976)) (“Pearson”). Similar to Constructive Eating’s motivation for creating its

designs, Pearson teaches that then-known spoons did not attract children’s attention or incentivize

children to enjoy eating. Pearson, abstract, 1:6-16, ECF No. 23-2 at PageID.167, 170. Pearson

claims a “combined spoon and toy” in which a “portion simulating a truck” is “integrally”

interposed between a “handle portion” and a “ladle like portion.” Id. 2:41-50 (claim 1), ECF No.

23-2 at PageID.170. For example, as shown in figures 1 and 9, reproduced below, among other

embodiments, Pearson covers a combined spoon and truck, in which a truck (4) is integrally

interposed between a handle (2) and a ladle (3), and a combined spoon and bulldozer, in which a

bulldozer (16) is integrally interposed between a handle (2) and a scoop (17). Id. figs.1 & 9, ECF

No. 23-2 at PageID.168-169. Pearson teaches that although the embodiments include the ladle (3),

the scoop (17) and the like, “it will be readily apparent that a fork may be used instead.” Id. 2:26-

28, ECF No. 23-2 at PageID.170.

Correspondingly, when Constructive Eating, through its founders, applied for a utility

patent on its designs, it was denied concept-level protection on construction vehicle-themed eating

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utensils in light of Pearson. See Eating Utensil With Integrated Construction Machine, U.S. Pat.

Application Publication No. 2009/0077812 (published Mar. 26, 2009) (corresponding to U.S. Pat.

Application Serial No. 11/903,214 (filed Sept. 21, 2007)). In the application, Constructive Eating

maintained that then-known prior art did not “integrate the machines in a manner in which the

functional aspects of the eating utensils are synonymous with the functional aspects of the

machines.” Id. ¶ [0009]. On this premise, Constructive Eating presented an independent claim

broadly directed to this integration, and dependent claims more particularly directed to a machine’s

bucket acting as a spoon, a machine’s blade acting as a pusher, and a machine’s tines acting as a

fork. See id. claims 1-4. The Examiner, however, citing Pearson, rejected all of the claims. See

USPTO Public Patent Application Information Retrieval, https://portal.uspto.gov/pair/PublicPair

(search for “Application Number” 11/903,214 and select “Image File Wrapper” tab) (rejecting

claims 1-3 under 35 U.S.C. § 102(b) as being “anticipated” by Pearson, and rejecting claim 4 under

35 U.S.C. § 103(a) as being “obvious” over Pearson). Constructive Eating did not respond the

Examiner’s rejections, and its application lapsed into abandonment. Id.

Second, with respect to the construction vehicles in Constructive Eating’s eating utensils,

it is apparent that when Constructive Eating created its designs, it included generally true-to-life

renditions of actual construction vehicles. For example, as shown in Masontops’ images of a front

loader and a bulldozer, reproduced below, the front loader and bulldozer in Constructive Eating’s

front loader and bulldozer utensils are recognizable as such by their overall configurations and

color schemes. See Def.’s Mot. Br. 13, ECF No. 23 at PageID.153 (citing DOZERS,

https://www.cat.com/en_US/products/new/equipment/dozers.html, and 14 Most Popular Types Of

Construction Vehicles, https://www.fueloyal.com/14-popular-types-construction-vehicles/).

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IV. ANALYSIS

For the reasons set forth below, having found that Constructive Eating has satisfied the

relevant pleading requirements and plausibly alleged the elements of its claims, the Court will

deny the Motion.

A. Trade Dress Infringement and Unfair Competition under the Lanham Act

Constructive Eating asserts a claim of trade dress infringement and unfair competition

under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), alleging that Masontops infringes

the alleged trade dress by using it on Masontops’ eating utensils and unfairly competes with

Constructive Eating by misappropriating the alleged trade dress. Am. Compl. ¶¶ 74-87 (Count IV),

ECF No. 4. at PageID.68-71.

For the reasons set forth below, the Court will deny the Motion as to Constructive Eating’s

claim of trade dress infringement and unfair competition under the Lanham Act.

1. Legal Standards

Section 43(a) provides that:

(a) (1) Any person who, on or in connection with any goods or

services, or any container for goods, uses in commerce any word,
term, name, symbol, or device, or any combination thereof, or any
false designation of origin, false or misleading description of fact,
or false or misleading representation of fact, which —

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(A) is likely to cause confusion, or to cause mistake,

or to deceive as to the affiliation, connection, or
association of such person with another person, or as
to the origin, sponsorship, or approval of his or her
goods, services, or commercial activities by another
person . . .
shall be liable in a civil action by any person who believes that he
or she is or is likely to be damaged by such act.
* * *
(3) In a civil action for trade dress infringement under this
chapter for trade dress not registered on the principal register,
the person who asserts trade dress protection has the burden
of proving that the matter sought to be protected is not
functional.

15 U.S.C. § 1125(a).

Concluding that it qualifies as a “symbol” or “device,” the Supreme Court recognizes that

Section 43(a) “embrace[s] . . . ‘trade dress’ — a category that originally included only the

packaging, or ‘dressing,’ of a product, but . . . has been expanded . . . to encompass the design of

a product.” Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 209 (2000). As explained

by the Sixth Circuit, trade dress “refers to the image and overall appearance of a product. It

embodies that arrangement of identifying characteristics or decorations connected with a product,

whether by packaging or otherwise, that makes the source of the product distinguishable from

another and promotes its sale.” Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 280

F.3d 619, 629 (6th Cir. 2002) (quotation, alteration and citation omitted) (hereinafter “Am. Eagle”).

“Trade dress ‘involves the total image of a product and may include features such as size, shape,

color or color combinations, texture, graphics, or even particular sales techniques.’” Id. at 629-30

(quoting Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1 (1992)).

Constructive Eating’s alleged trade dress is (a) unregistered and (b) “product design” trade

dress. For unregistered product design trade dress, the Supreme Court holds that a claim for trade

dress infringement has three elements: (1) that pursuant to Section 43(a)(3), the alleged trade dress

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is not functional; (2) that the alleged trade dress has acquired distinctiveness through secondary

meaning; and (3) that pursuant to Section 43(a)(1)(A), the use of the alleged trade dress is likely

to cause confusion as to the source of the accused product. Wal-Mart, 529 U.S. at 210 (noting the

statutory non-functionality and likelihood of confusion requirements); ibid (“Distinctiveness is . . .

an explicit prerequisite for registration of trade dress under § 2, and ‘the general principles

qualifying a mark for registration under § 2 of the Lanham Act are for the most part applicable in

determining whether an unregistered mark is entitled to protection under § 43(a).’”) (citing 15

U.S.C. § 1052 and quoting Two Pesos, 505 U.S. at 768); id. at 216 (holding that a product’s design

can never be inherently distinctive and therefore “is distinctive, and therefore protectible, only

upon a showing of secondary meaning”).

In addition to satisfying the non-functionality, distinctiveness and likelihood of confusion

requirements, the Sixth Circuit imposes a duty to articulate the elements of the alleged trade dress.

In particular, despite describing trade dress in terms of “overall appearance” and “total image,” the

Sixth Circuit holds that “[w]hatever may be claimed as the combination of elements making up

the product or its packaging and presentation, it will not do to solely identify in litigation a

combination as ‘the trade dress.’ Rather, the discrete elements which make up that combination

should be separated out and identified in a list.” Am. Eagle, 280 F.3d at 634 (quoting MCCARTHY

ON TRADEMARKS § 8:3) (alteration omitted). See also Mike Vaughn Custom Sports, Inc. v. Piku,

15 F. Supp. 3d 735, 746 (E.D. Mich. 2014) (Lawson, J.) (“A plaintiff must offer a precise

expression of the character and scope of the claimed trade dress and articulate the elements of their

product design with specificity to be afforded trade dress protection.”) (quotation, alteration and

citation omitted).

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Non-functionality and distinctiveness are “ordinary legal trademark requirements” — i.e.,

a functional product feature cannot serve as a trademark, and a trademark must indicate the source

of goods. Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995). Although the Supreme

Court’s Qualitex opinion concerned whether a color could be registered as a trademark, its

discussion of non-functionality and distinctiveness informed its later application of these

requirements to product design trade dress.

With respect to non-functionality, the Supreme Court in Qualitex explained that: “The

functionality doctrine prevents trademark law, which seeks to promote competition by protecting

a firm’s reputation, from instead inhibiting legitimate competition by allowing a producer to

control a useful product feature.” Id. at 164. “‘[I]n general terms, a product feature is functional,’

and cannot serve as a trademark, ‘if it is essential to the use or purpose of the article or if it affects

the cost or quality of the article.’” Id. at 165 (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456

U.S. 844, 850 n.10 (1982)). “The functionality doctrine thus protects competitors against a

disadvantage (unrelated to recognition or reputation) that trademark protection might otherwise

impose, namely, their inability reasonably to replicate important non-reputation-related product

features.” Id. at 169.

The Supreme Court’s subsequent TrafFix opinion involved the application of the non-

functionality requirement to product design trade dress. TrafFix Devices, Inc. v. Mktg. Displays,

Inc., 532 U.S. 23 (2001). The question in TrafFix was “the effect of an expired patent on a claim

of trade dress infringement.” Id. at 29. As to the effect of a prior patent, the Supreme Court held

that:

A prior patent . . . has vital significance in resolving the trade dress

claim. A utility patent is strong evidence that the features therein
claimed are functional. If trade dress protection is sought for those
features the strong evidence of functionality based on the previous

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patent adds great weight to the statutory presumption that features

are deemed functional until proved otherwise by the party seeking
trade dress protection. Where the expired patent claimed the features
in question, one who seeks to establish trade dress protection must
carry the heavy burden of showing that the feature is not functional,
for instance by showing that it is merely an ornamental, incidental,
or arbitrary aspect of the device.

Id. at 29-30.

With respect to distinctiveness, the Supreme Court in Qualitex found that “a product’s

color is unlike ‘fanciful,’ ‘arbitrary,’ or ‘suggestive’ words or designs, which almost automatically

tell a customer that they refer to a brand.” Qualitex, 514 U.S.at 162-63 (quoting Abercrombie &

Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2nd Cir. 1976)). “But, over time, customers may

come to treat a particular color on a product or its packaging . . . as signifying a brand. And, if so,

that color would have come to identify and distinguish the goods — i.e., ‘to indicate’ their ‘source’

— much in the way that descriptive words on a product . . . can come to indicate a product’s origin.”

Id. at 163 (quoting Section 45, 15 U.S.C. § 1127).

The Supreme Court’s subsequent Wal-Mart opinion involved the application of the

distinctiveness requirement to product design trade dress. The question in Wal-Mart was “under

what circumstances a product’s design is distinctive, and therefore protectible, in an action for

infringement of unregistered trade dress” under Section 43(a). Wal-Mart, 529 U.S. at 207. The

Supreme Court pointed out its holding in Qualitex that no color trademark can ever be inherently

distinctive, and found that:

In the case of product design, as in the case of color, we think

consumer predisposition to equate the feature with the source does
not exist. Consumers are aware of the reality that, almost invariably,
even the most unusual of product designs — such as a cocktail
shaker shaped like a penguin — is intended not to identify the source,
but to render the product itself more useful or more appealing.

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Id. at 212-13. The Supreme Court thus held that a product’s design is distinctive, and therefore

protectable as trade dress under Section 43(a), “only upon a showing of secondary meaning.” Id.

at 216.

2. Analysis

Masontops argues that the Court should dismiss Constructive Eating’s trade dress

infringement claim for five reasons. First, Masontops argues that the trade dress articulation fails

for lack of particularity. Second, Masontops argues that Constructive Eating has not plausibly

alleged that the alleged trade dress is not functional. Third, Masontops argues that the trade dress

articulation is a “laundry list” of functional elements. Fourth, Masontops argues that Constructive

Eating has not plausibly alleged that the alleged trade dress has acquired distinctiveness through

secondary meaning. Fifth, Masontops argues that Constructive Eating has not plausibly alleged a

likelihood of confusion as to the source of Masontops’ eating utensils.

With respect to its particularity argument, Masontops argues that the trade dress

articulation impermissibly includes hedge language. As examples, Masontops points to the

“including but not limited to,” “such as,” “which can include,” and “or other color” language.

However, contradictory to its argument, Masontops cites one case where the trade dress

articulation was insufficient despite the absence of hedge language, and another case where the

trade dress articulation was sufficient despite the presence of hedge language. See Mike Vaughn,

15 F. Supp. 3d at 746 (“signature trade dress feature” for various products was insufficient); Gen.

Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405, 415 (6th Cir. 2006) (“exterior appearance and

styling of the vehicle design which includes [various features], etc.” was sufficient). It is clear that

in both cases, the courts were focused on the substance of the trade dress articulations, not the

permissibility of hedge language. In fact, in General Motors, the Sixth Circuit directly addressed

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the “etc.” language, finding that it “must be ignored in such a listing as it does not define any

further element to be included in the trade dress.” Gen. Motors, 468 F.3d at 415.

In this case, as in General Motors, the “including but not limited to” and “such as” language,

which appears in the introductory description of the trade dress articulation, can simply be ignored.

See Gen. Motors, 468 F.3d at 415. The remaining “which can include” and “or other color”

language appears in the body of the trade dress articulation, where it permissibly sets forth

examples of the two-tone color scheme and the color schemes of the construction vehicles.

Masontops also argues that the trade dress articulation impermissibly includes generalities

that “hide the ball” as to the alleged trade dress. As examples, Masontops points to the “design,

style, appearance, visual connection and visual flow” and “overall shape, proportions, widths,

heights, size and dimensions” language. Constructive Eating, however, points out that the

Complaint includes not only the trade dress articulation, but also images of its eating utensils.

Constructive Eating argues that on a Rule 12(b)(6) motion, the trade dress articulation, when

combined with the images, does not fail for lack of particularity. Constructive Eating, moreover,

cites cases that persuasively support its argument. See, e.g., Dayco Prods., LLC v. Dorman Prods.,

Inc., 2010 WL 3855221, at *4 (E.D. Mich. Sept. 28, 2010) (Murphy, J.) (“The Sixth Circuit, and

district courts within it, agree that including photographs of the relevant trade dress in the

complaint satisfies, at least during the early stages of the litigation before discovery has

commenced, the general requirement that the elements of trade dress be specifically identified and

articulated in a list.”) (citing, inter alia, Am. Eagle, 280 F.3d at 635 (“A complaint . . . merely puts

the defendant on notice of the plaintiff’s claims. . . . Had the case proceeded further, Abercrombie

would have been expected to list the elements of the designs and the unique combinations it sought

to protect . . . .”) (emphasis added)).

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In this case, Constructive Eating has satisfied its duty to articulate the elements of the

alleged trade dress. See Am. Eagle, 280 F.3d at 634 (“the discrete elements which make up that

combination should be separated out and identified in a list”). Moreover, construing the Complaint

in the light most favorable to Constructive Eating, the trade dress articulation, when combined

with the images, can be read as setting forth [the exact] “design, style, appearance, visual

connection and visual flow” and [the exact] “overall shape, proportions, widths, heights, size and

dimensions” [seen in Constructive Eating’s eating utensils]. Cf. Dayco, 2010 WL 3855221, at *4.

Accordingly, and with due regard to the thoroughness of the trade dress articulation, the trade dress

articulation does not fail for lack of particularity.

In fact, the trade dress articulation, if anything, suffers from over-particularity. As opposed

to focusing on one or more core features of its designs, the trade dress articulation reads as an

exhaustive list of every feature seen in Constructive Eating’s eating utensils.

Accordingly, with respect to Masontops’ functionality arguments, the Court inevitably

agrees that the trade dress articulation includes seemingly functional elements. For instance,

element [1b] is directed, in part, to the placement and location of the construction vehicles.

However, Pearson, a prior utility patent, claims a “combined spoon and toy” in which a “portion

simulating a truck” is “integrally” interposed between a “handle portion” and a “ladle like portion.”

Pearson 2:41-50 (claim 1), ECF No. 23-2 at PageID.170. Because Pearson “claimed the features

in question,” the prior utility patent is “strong evidence” that this element is functional in the field

of construction vehicle-themed eating utensils. TrafFix, 532 U.S. at 29-30. Similarly, element [1d]

is directed to the non-interfering integration of the construction vehicles with the food

manipulating portions. However, the Complaint itself suggests that this element is functional in

the field of construction vehicle-themed eating utensils. See Am. Compl. ¶ 8, ECF No. 4 at

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Case 2:19-cv-10619-SFC-MKM ECF No. 34, PageID.264 Filed 02/23/21 Page 18 of 33

PageID.53-54 (explaining that Constructive Eating morphed the construction vehicles into the

food-manipulating portions to create the impression that the food-manipulating portions are part

of the construction vehicles, making for a more original, life-like and fun user experience for

children).

Moreover, elements [1f], [1h], and [1i] are directed to the two-tone color scheme and the

use of two different materials. Once again, the Complaint itself suggests that these elements are

functional in the field of construction vehicle-themed eating utensils. See id. ¶ 9, ECF No. 4 at

PageID.54 (explaining that Constructive Eating used the two-tone color schemes to make its eating

utensils distinctive and attractive to customers, and used two different materials to provide the

appearance of different textures on different portions of its eating utensils). Similarly, element [1b]

is directed, in part, to the design and appearance of the construction vehicles, and elements [2a]-

[2e] are directed to the overall configurations and color schemes of the construction vehicles.

However, Constructive Eating included generally true-to-life renditions of actual construction

vehicles, suggesting that these elements are standard and essential, and therefore functional, in the

field of construction vehicle-themed eating utensils.

Although Constructive Eating does not dispute, as a factual matter, that the trade dress

articulation includes functional elements, it points out that the Complaint includes allegations that

the alleged trade dress is non-functional. Constructive Eating argues that on a Rule 12(b)(6) motion,

the non-functionality allegations must be accepted as true, and for this reason, the Court cannot

decide “contested” issues of functionality. Initially, it bears emphasis that the Court is not making

functionality determinations. Instead, the Court is simply determining whether Constructive Eating

has plausibly alleged non-functionality. Relevant to the plausibility determination, Section

43(a)(3) creates a statutory presumption of functionality. TrafFix, 532 U.S. at 29-30 (noting the

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“statutory presumption that features are deemed functional until proved otherwise by the party

seeking trade dress protection”). In the Complaint, the non-functionality allegations appear, in

their entirety, as conclusory introductory and summary descriptions of the trade dress articulation.

See Am. Compl. ¶¶ 27, 77, ECF No. 4 at PageID.58-59, 69-70 (introducing the alleged trade dress

as an “overall combination of . . . non-functional design aspects”); ¶ 78, ECF No. 4 at PageID.70

(summarizing the alleged trade dress as “non-functional, made up of design features that are not

essential to the use or purpose of the article” and as “an arbitrary combination of features not

necessary for the products to work”). Because the non-functionality allegations are “bare assertions”

that “amount to nothing more than a formulaic recitation” of the non-functionality requirement,

they are “not entitled to be assumed true.” Iqbal, 556 U.S. at 681.

Constructive Eating also argues that because they are not part of the Complaint, Pearson

and actual construction vehicles should not be considered. On this point, the Court disagrees. With

respect to Pearson, it is “well-established that a court may take judicial notice of patents or patent

applications.” Anderson v. Kimberly-Clark Corp., 570 F. App’x 927, 930 (Fed. Cir. 2014) (citing

Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 954 n.27 (Fed. Cir. 1993)). With respect to actual

construction vehicles, where, as here, the trade dress articulation includes elements directed to the

overall configurations and color schemes of the construction vehicles, Constructive Eating does

not offer any persuasive reason why the Court should not take judicial notice of the undisputable

fact that Constructive Eating included generally true-to-life renditions of actual construction

vehicles.

On the other hand, as to what is part of the Complaint, Constructive Eating points out that

the Complaint includes images of a competitor’s construction vehicle-themed eating utensils.

Constructive Eating argues that the contrast between the parties’ designs and the competitor’s

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designs (and Pearson’s design, for that matter) supports the non-functionality allegations. It

appears that Constructive Eating is asking the Court to consider evidence of alternative non-

infringing designs. See Pls.’ Resp. Br. 13-14, ECF No. 26 at PageID.210-211 (“There are a myriad

of ways to integrate a construction-themed vehicle with an eating utensil, and a myriad of designs

for the construction-themed vehicle.”). However, following the Supreme Court’s TrafFix opinion,

there are two forms of functionality — traditional and aesthetic – and evidence of alternative non-

infringing designs has exclusive applicability to aesthetic functionality. See, e.g., Am. Eagle, 280

F.3d at 641-42 (explaining the different tests and evidence for the “two forms of functionality”

identified in TrafFix) (citing TrafFix, 532 U.S. at 32-33). At least at this stage of the case, the

parties’ functionality and non-functionality arguments are framed in terms of traditional

functionality. Accordingly, the Court declines to consider evidence of alternative non-infringing

designs. Id.; see also Antioch Co. v. Western Trimming Co., 347 F.3d 150, 157 (6th Cir. 2003)

(affirming the district court’s rejection of such evidence in a traditional functionality case).

Constructive Eating also asks the Court to consider the D’440 and D’441 Patents, arguing

that they are presumptive evidence of non-functionality. See Fuji Kogyo Co. v. Pac. Bay Int’l, Inc.,

461 F.3d 675, 683 (6th Cir. 2006) (“A design patent, counter to a utility patent, is presumptive

evidence of non-functionality, evidence that may support a similar trademark claim.”). With

respect to the D’440 and D’441 Patents, it bears emphasis, first, that the patented designs cover a

totality of features, and second, that the above elements are some, but not all, of the elements of

the trade dress articulation. With respect to the above elements individually, because they do not

correspond to the totality of features covered by the patented designs, the D’440 and D’441 Patents

are not plausibly presumptive evidence of non-functionality. Moreover, in Fuji Kogyo, the Sixth

Circuit pointed out that in that case the design patents at issue did “little to help resolve the merits”

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because competing evidence, including a utility patent, suggested functionality. Id. at 684.

Likewise, in this case, Pearson, the Complaint, and actual construction vehicles suggest that the

above elements are functional. Accordingly, Constructive Eating has not plausibly alleged non-

functionality of the above elements individually.

However, other elements of the trade dress articulation more generally represent the alleged

trade dress as a whole. For instance, element [1a] is directed to the design, style, appearance, visual

connection and visual flow of the handles to the construction vehicles to the food manipulating

portions, element [1c] is directed to the shape, angle, and extension of the handles from the

construction vehicles, and element [1e] is directed to the overall shapes, proportions, widths,

heights, sizes, and dimensions of the eating utensils. With respect to these elements in combination,

because they more closely correspond to the totality of features covered by the patented designs,

the D’440 and D’441 Patents are plausibly presumptive evidence of non-functionality.

Accordingly, Constructive Eating has plausibly alleged non-functionality of the alleged trade dress

as a whole.

With respect to its secondary meaning and likelihood of confusion arguments, Masontops

identifies what it contends are standard, essential, and otherwise functional elements in the field

of construction vehicle-themed eating utensils, and what it contends are minutiae. With respect to

the functional elements, Masontops argues that Constructive Eating cannot, as a matter of law,

establish secondary meaning and likelihood of confusion. With respect to the minutiae, Masontops

argues that Constructive Eating has not plausibly alleged secondary meaning and likelihood of

confusion.

Although Constructive Eating does not dispute, as a factual matter, that the trade dress

articulation includes functional elements and minutiae, it points out that the Complaint includes

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factual allegations that support reasonable inferences of secondary meaning and likelihood of

confusion. For instance, with respect to secondary meaning, the Sixth Circuit considers seven

factors: “(1) direct consumer testimony, (2) consumer surveys, (3) exclusivity, length, and manner

of use, (4) amount and manner of advertising, (5) amount of sales and number of customers, (6)

established place in the market, and (7) proof of intentional copying.” Groeneveld Transp.

Efficiency, Inc. v. Lubecore Int’l, Inc., 730 F.3d 494, 528 (6th Cir. 2013). Constructive Eating

points out that, in correspondence with these factors, the Complaint details examples of secondary

meaning. See Am. Compl. ¶¶ 10, 17-20, ECF No. 4 at PageID.54-56 (detailing that after investing

substantial time and resources developing, manufacturing, marketing, promoting and building a

distribution network for its eating utensils, Constructive Eating achieved significant commercial

success, including generating millions of dollars in sales on nearly a million eating utensils); ¶¶

21-25, ECF No. 4 at PageID.56-57 (detailing that Constructive Eating achieved numerous awards,

national recognition, national publicity, favorable customer reviews, and large social media

followings). Moreover, with respect to likelihood of confusion, Constructive Eating points out that

the Complaint details not only the similarities between the parties’ designs, but also examples of

actual confusion as to the source of Masontops’ eating utensils. See id. ¶¶ 34-37, 39, 41, ECF No.

4 at PageID.61-62 (detailing that at a trade show where both parties displayed their eating utensils,

individuals approached Constructive Eating at its booth and, in reference to Masontops’ booth,

asked if Constructive Eating had another booth); ¶ 42, ECF No. 4 at PageID.62 (detailing that

Constructive Eating received a communication from a store owner who, after receiving Masontops’

eating utensils from a distributor, initially thought that they originated from Constructive Eating).

To be clear, the Court appreciates the logic of Masontops’ secondary meaning and

likelihood of confusion arguments. See, e.g., TrafFix, 532 U.S. at 34-35 (“The Lanham Act . . .

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does not protect trade dress in a functional design simply because an investment has been made to

encourage the public to associate a particular functional feature with a single manufacturer or

seller.”). However, as discussed above, Constructive Eating has plausibly alleged non-

functionality of the alleged trade dress as a whole. While it remains to be seen whether the issues

involved in functionality determinations will foreclose findings of secondary meaning and

likelihood of confusion, these issues are more properly addressed on a full record at later stages of

this case. At this stage of the case, Constructive Eating has plausibly alleged that the alleged trade

dress has acquired distinctiveness through secondary meaning, and that there a likelihood of

confusion as to the source of Masontops’ eating utensils.

Having found that the trade dress articulation does not fail for lack of particularity, and that

Constructive Eating has plausibly alleged non-functionality of the alleged trade dress as a whole,

that the alleged trade dress has acquired distinctiveness through secondary meaning, and that there

a likelihood of confusion as to the source of Masontops’ eating utensils, the Court denies the

Motion as to Constructive Eating’s claim of trade dress infringement and unfair competition under

the Lanham Act.

B. Design Patent Infringement

Constructive Eating asserts claims of design patent infringement under the Patent Act, 35

U.S.C. § 1 et seq., alleging that Masontops infringes the D’440 Patent in connection with its front

loader utensil and infringes the D’441 Patent in connection with its bulldozer utensil. Am. Compl.

¶¶ 44-52 (D’440 Patent (Count I)), 53-61 (D’441 Patent (Count II)), ECF No. 4. at PageID.62-66.

For the reasons set forth below, the Court will deny the Motion as to Constructive Eating’s

claims of design patent infringement.

1. Legal Standards

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A design patent covers the “new, original, and ornamental design for an article of

manufacture.” 35 U.S.C. § 171(a). A design patent is claimed according to its drawing figures.

Crocs, Inc. v. ITC, 598 F.3d 1294, 1302-03 (Fed. Cir. 2010). “No description of the design in the

specification beyond a brief description of the drawing is generally necessary, since as a rule the

illustration in the drawing views is its own best description.” Manual of Patent Examining

Procedure § 1503.01.

For a design patent, the infringement determination involves two steps: (1) the court

construes the claims; and (2) the factfinder compares the properly construed claims to the accused

product. Lanard Toys Ltd. v. Dolgencorp LLC, 958 F.3d 1337, 1341 (Fed. Cir. 2020). However, a

design patent “only protects the novel, ornamental features of the patented design.” OddzOn Prods.,

Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997). Accordingly, it can be helpful when

construing the claims to “distinguish[] between those features of the claimed design that are

ornamental and those that are purely functional.” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d

665, 680 (Fed. Cir. 2008) (en banc).

To compare the patented design to the accused product, the factfinder applies the “ordinary

observer” test. Gorham Co. v. White, 81 U.S. 511, 528 (1871). The ordinary observer test asks

whether an ordinary observer, familiar with prior art designs, would be deceived into believing

that the accused product is the same as the patented design. See Egyptian Goddess, 543 F.3d at

681. “The ordinary observer test applies to the patented design in its entirety, as it is claimed.”

Crocs, 598 F.3d at 1303. “Minor differences between a patented design and an accused article’s

design cannot, and shall not, prevent a finding of infringement.” Id. (quotation, alteration and

citation omitted).

2. Analysis

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Masontops argues that the Court should dismiss Constructive Eating’s design patent

infringement claims for two reasons. First, Masontops argues that the infringement allegations fail

for lack of side-by-side comparisons between all views of the patented designs and images of

Masontops’ eating utensils. Second, Masontops argues that once the functional features of the

patented designs are disregarded, Constructive Eating has not plausibly alleged infringement.

Masontops’ all views argument is unfounded. The Complaint includes side-by-side

comparisons between the front-page figures of the D’440 and D’441 Patents and Masontops’

eating utensils. See Am. Compl. ¶¶ 46, 55, ECF No. 4. at PageID.63, 65. As to why these side-by-

side comparisons are insufficient, Masontops places undue reliance on cases involving

infringement determinations. See, e.g., Crocs, 598 F.3d at 1304 (“The proper comparison requires

a side-by-side view of the drawings of the [design patent] and the accused products.”). At the

pleading stage, the Federal Circuit outlines five pleading requirements that provide “enough detail

to allow the defendants to answer”: “to (i) allege ownership of the patent, (ii) name each defendant,

(iii) cite the patent that is allegedly infringed, (iv) state the means by which the defendant allegedly

infringes, and (v) point to the sections of the patent law invoked.” Hall v. Bed Bath & Beyond, Inc.,

705 F.3d 1357, 1362 (Fed. Cir. 2013). In this case, the infringement allegations satisfy the relevant

pleading requirements.

With respect to its non-infringement argument, Masontops identifies what it contends are

the relevant functional features of the patented designs. In addition to the concept of construction

vehicle-themed eating utensils, Masontops identifies the entire “configuration and integration” of

the handles, the construction vehicles and the food manipulation portions. Turning to what it

contends are the relevant differences between the patented designs and Masontops’ eating utensils,

Masontops particularly emphasizes the D’441 Patent and Masontops’ bulldozer utensil.

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Masontops points out that the D’441 Patent covers Constructive Eating’s design for the bulldozer

utensil, in which the bulldozer’s blade morphs into a pusher, while in Masontops’ bulldozer utensil,

the bulldozer’s blade morphs into a fork. Masontops argues that as a matter of law, a patented

design involving a pusher cannot be infringed by an accused product involving a fork. To illustrate

further differences, Masontops attaches two exhibits, one for the D’440 Patent and one for the

D’441 Patent. See Def.’s Mot. Br. Ex. B, ECF No. 23-3 (D’441 Patent); Ex. C, ECF No. 23-4

(D’440 Patent). In the exhibits, Masontops includes side-by-side comparisons between all figures

of the D’440 and D’441 Patents and Masontops’ eating utensils. In connection with the side-by-

side comparisons, Masontops sets forth descriptions of what it contends the D’440 and D’441

Patents claim, and points out how Masontops’ eating utensils do not match the descriptions.

Referring to the exhibits, Masontops argues that after disregarding the functional features and

considering the differences between the patented designs and Masontops’ eating utensils, an

ordinary observer would not find infringement.

Constructive Eating disputes Masontops’ non-infringement argument, arguing that because

the patented designs and Masontops’ eating utensils are “very similar,” an ordinary observer would

find infringement. With respect to the D’441 Patent and Masontops’ bulldozer utensil,

Constructive Eating argues that in the patented design, the pusher should be disregarded as a

functional feature. In any event, Constructive Eating argues that where, as here, they are both

directed to construction vehicle-themed eating utensils, a patented design involving a pusher can

be infringed by an accused product involving a fork.

The Court agrees with Constructive Eating’s main argument, namely, that an infringement

determination, at least in this case, is improper on a Rule 12(b)(6) motion. Masontops asks the

Court to consider the exhibits attached to the Motion, which are not part of the Complaint. More

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importantly, as revealed by the parties’ non-infringement and infringement arguments, the

infringement determination in this case will be fairly involved, requiring identifying functional

features, claim constructions, identifying differences between the patented designs and Masontops’

eating utensils, and applying the ordinary observer test, all in the face of disputes between the

parties. And, compounding the issues involved in the infringement determination, there is, simply

put, a lot going on in the patented designs. In particular, the patented designs involve not only

features of the combination of the construction vehicles with the handles and the food-

manipulating portions, but also features of the handles, the construction vehicles and the food-

manipulating portions individually.

While it remains to be seen whether the issues involved in the infringement determination

will foreclose a finding of infringement, these issues are more properly addressed on a full record

at later stages of this case. At this stage of the case, the Court simply recognizes that the patented

designs and Masontops’ eating utensils are both directed to construction vehicle-themed eating

utensils, and are plainly similar from a high-level design standpoint. Accordingly, while it is a

closer call with respect to the D’441 Patent and Masontops’ bulldozer utensil, Constructive Eating

has plausibly alleged infringement.

Having found that the infringement allegations satisfy the relevant pleading requirements

and that Constructive Eating has plausibly alleged infringement, the Court denies the Motion as to

Constructive Eating’s claims of design patent infringement.

C. Copyright Infringement

Constructive Eating asserts claims of copyright infringement under the Copyright Act, 17

U.S.C. § 101 et seq., alleging that Masontops infringes the ’404 Copyright in connection with its

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front loader utensil and infringes the ’223 Copyright in connection with its bulldozer utensil. Am.

Compl. ¶¶ 62-73 (Count III), ECF No. 4. at PageID.66-68.

For the reasons set forth below, the Court will deny the Motion as to Constructive Eating’s

claims of copyright infringement.

1. Legal Standards

Under the Copyright Act, copyright protection may be afforded to “works of authorship

fixed in any tangible medium of expression.” 17 U.S.C. § 102(a). “In no case,” however, “does

copyright protection for an original work of authorship extend to any idea, procedure, process,

system, method of operation, concept, principle, or discovery.” Id. § 102(b). Among other

categories, works of authorship include “pictorial, graphic, and sculptural works,” id. § 102(a)(5),

defined to include “two-dimensional and three-dimensional works of fine, graphic, and applied

art,” id. § 101.

Constructive Eating’s designs are registered as sculptural works. See ’223 Copyright, ECF

No. 4-3 at PageID.91; ’404 Copyright, ECF No. 4-4 at PageID.94. Under this category, the

Copyright Act provides separate treatment for the design of a “useful article” — i.e., “an article

having an intrinsic utilitarian function that is not merely to portray the appearance of the article or

to convey information.” 17 U.S.C. § 101. In particular, the design “shall be considered a pictorial,

graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial,

graphic, or sculptural features that can be identified separately from, and are capable of existing

independently of, the utilitarian aspects of the article.” Id. Interpreting the provisions concerning

useful articles, the Supreme Court holds that:

. . . a feature incorporated into the design of a useful article is eligible

for copyright protection only if the feature (1) can be perceived as a
two- or three-dimensional work of art separate from the useful
article and (2) would qualify as a protectable pictorial, graphic, or
sculptural work — either on its own or fixed in some other tangible

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medium of expression — if it were imagined separately from the

useful article into which it is incorporated.

Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S.Ct. 1002, 1007 (2017).

To establish infringement, two elements must be proven: (1) ownership of a valid

copyright; and (2) copying of constituent elements of the work that are original to the author. Feist

Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991). Relevant to the first element, a

registered copyright is entitled to a presumption of validity. 17 U.S.C. § 410(c).

2. Analysis

Masontops argues that the Court should dismiss Constructive Eating’s copyright

infringement claims for two reasons. First, Masontops argues that the infringement allegations fail

to allege separable sculptural works eligible for copyright protection. Second, Masontops argues

that once the standard, essential, and unoriginal features of the copyrighted designs are disregarded,

Constructive Eating has not plausibly alleged infringement.

Initially, it is unclear where Masontops is going with its separable sculptural works

argument. To the extent Masontops argues that Constructive Eating’s designs are ineligible for

copyright protection, its argument is unfounded at the pleadings stage because the ’404 and ’223

Copyrights are entitled to a presumption of validity. To the extent Masontops argues that

identifying separable sculptural works is a pleading requirement, it has not offered any authority

for its argument. Absent contrary authority, the Court presumes that the infringement allegations

are adequately plead.

With respect to its non-infringement argument, Masontops identifies what it contends are

the relevant standard, essential, and unoriginal features of the copyrighted designs. In addition to

the concept of construction vehicle-themed eating utensils, Masontops identifies the overall

configurations and color schemes of the construction vehicles. Turning to what it contends are the

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relevant differences between the copyrighted designs and Masontops’ eating utensils, Masontops

attaches two exhibits, one for the ’404 Copyright and one for the ’223 Copyright. See Def.’s Mot.

Br. Ex. D, ECF No. 23-5 (’223 Copyright); Ex. E, ECF No. 23-6 (’404 Copyright). In the exhibits,

Masontops identifies what it contends are the separable sculptural works of the ’404 and ’223

Copyrights, and includes side-by-side comparisons between the separable sculptural works and

Masontops’ eating utensils. In connection with the side-by-side comparisons, Masontops sets forth

descriptions of the separable sculptural works, and points out how Masontops’ eating utensils do

not match the descriptions. Referring to the exhibits, Masontops argues that after disregarding the

standard, essential, and unoriginal features, the copyrighted designs and Masontops’ eating

utensils are “fundamentally different.”

Constructive Eating disputes Masontops’ non-infringement argument, arguing that the

exhibits highlight the “substantial similarity” between the copyrighted designs and Masontops’

eating utensils.

The Court agrees with Constructive Eating’s secondary argument, namely, that an

infringement determination, at least in this case, is improper on a Rule 12(b)(6) motion. Masontops

asks the Court to consider the exhibits attached to the Motion, which are not part of the Complaint.

More importantly, as revealed by the parties’ non-infringement and infringement arguments, the

eligibility and infringement determinations in this case will require identifying standard, essential,

and unoriginal features, identifying separable sculptural works, and considering the similarity of

the copyrighted designs and Masontops’ eating utensils, all in the face of disputes between the

parties.

While it remains to be seen whether the issues involved in the eligibility and infringement

determinations will foreclose findings of eligibility and infringement, these are issues more

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properly addressed on a full record at later stages of this case. At this stage of the case, the Court

simply recognizes that the copyrighted designs and Masontops’ eating utensils are plainly similar

from a high-level design standpoint. Accordingly, Constructive Eating has plausibly alleged

infringement.

Having found that the infringement allegations are presumably adequately plead and that

Constructive Eating has plausibly alleged infringement, the Court denies the Motion as to

Constructive Eating’s claims of copyright infringement.

D. State Law Claims

Constructive Eating asserts a claim of common law unfair competition, alleging that

Masontops unfairly competes with Constructive Eating by, inter alia, misappropriating its

“proprietary” designs, and causing confusion as to the source of Masontops’ eating utensils. Am.

Compl. ¶¶ 88-100 (Count V), ECF No. 4. at PageID.71-73. Constructive Eating also asserts a claim

of violation of the MCPA, MICH. COMP. LAWS § 445.901 et seq., alleging that Masontops has

engaged in unfair and deceptive activities by, inter alia, causing confusion as to the source of

Masontops’ eating utensils. Id. ¶¶ 101-105 (Count VI), ECF No. 4. at PageID.73-74.

Masontops argues that the Court should dismiss Constructive Eating’s state law claims for

three reasons. First, Masontops argues that Constructive Eating’s state law claims are preempted

by the Copyright Act. Second, and third, with respect to the MCPA, Masontops argues that

Constructive Eating has not alleged fraud with particularity under Rule 9(b) and that Constructive

Eating does not have standing under the statute because it is not a consumer.

None of Masontops’ arguments are persuasive. Masontops’ preemption argument amounts

to a conclusory statement that Section 301(a) of the Copyright Act applies to Constructive Eating’s

state law claims. In Section 301(a), the Copyright Act expressly preempts “all legal or equitable

rights that are equivalent to any of the exclusive rights within the general scope of copyright . . .

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and come within the subject matter of copyright.” 17 U.S.C. § 301(a). However, Constructive

Eating points out that its state law claims are not preempted by the Copyright Act because they

include “extra elements” such as unfair competition, confusion and deception. See, e.g., Wrench

LLC v. Taco Bell Corp., 256 F.3d 446, 456 (6th Cir. 2001) (explaining that there is no equivalency

for a state law that has an “extra element” that “changes the nature of the action so that it is

qualitatively different from a copyright infringement claim”). Cf. Excel Homes, Inc. v. Locricchio,

7 F. Supp. 3d 706, 713 (E.D. Mich. 2014) (Cox, J.) (dismissing common law unfair competition

claim where the plaintiff’s complaint “makes clear that its injury derives solely from Defendants’

alleged copying of Plaintiff’s copyrighted drawings”).

As to the MCPA, with respect to its particularly argument, Masontops does not point out

any fraud allegations in the Complaint. Moreover, Masontops’ standing argument amounts to a

conclusory statement that the statute does not afford standing to non-consumers. However,

Constructive Eating points out that the statute allows an action by a “person,” defined as “an

individual, corporation, limited liability company, trust, partnership, incorporated or

unincorporated association, or other legal entity.” See MICH. COMP. LAWS § 445.902(d); see also

Action Auto Glass v. Auto Glass Specialists, 134 F. Supp. 2d 897, 903 (W.D. Mich. 2001) (citing

the “person” definition and concluding that “business competitors have standing under the MCPA

because it must presume that the legislature intended the meaning expressed in the statute”). Cf.

Zine v. Chrysler Corp., 236 Mich. App. 261, 275 (1999) (explaining, in holding that the statute

does not apply to an item “purchased primarily for business or commercial rather than personal

purposes,” that the relevant focus is “the primary use to which the consumer puts the product”).

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Having found that Masontops has not offered any persuasive reason why the Court should

dismiss the state law claims, the Court denies the Motion as to Constructive Eating’s claims of

common law unfair competition and violation of the MCPA.

V. CONCLUSION

For the reasons set forth above, having found that Constructive Eating has satisfied the

relevant pleading requirements and plausibly alleged the elements of its claims, the Court denies

the Motion.

Dated: February 23, 2021 s/Sean F. Cox

Sean F. Cox
U. S. District Judge

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