United States District Court, D. Massachusetts
MEMORANDUM AND ORDER GRANTING MOTION TO DISMISS IN
PART AND DENYING IN PART
ALLISON D. BURROUGHS U.S. DISTRICT JUDGE
reasons set forth in this order, and as more fully discussed
at the scheduling conference held on July 18, 2017, Defendant
Daniel D'Onfro's motion to dismiss [ECF No. 18] is
GRANTED in part and DENIED in part. Counts
Two, Three, and Four are dismissed, but Plaintiff Kam IV is
granted leave to amend the complaint to address the
deficiencies identified below.
motion to dismiss is denied as to Counts One and Five.
Plaintiff has sufficiently pleaded that its trademarks are
used in interstate commerce where Plaintiff is a California
corporation that licenses the use of its trademarks to six
karate studios in Massachusetts. With alleged Lanham Act
violations, “if a plaintiff establishes that its
business is interstate, there is no need for it to prove that
the defendant's business is also interstate.”
Boustany v. Bos. Dental Grp., Inc., 42 F.Supp.2d
100, 107 (D. Mass. 1999). The Court will also allow Count
Five to proceed because it is based on the same allegations
as Count One. See, e.g., R.J. Toomey Co. v.
Toomey, 683 F.Supp. 873, 879 (D. Mass. 1988) (finding
violation of Mass. Gen. Laws ch. 93A, § 11 based on same
conduct that constituted Lanham Act violation).
motion to dismiss is granted as to Counts Two, Three, and
Four. As to Count Two, which alleges a violation of 15 U.S.C.
§ 1125(a)(1)(A) (Unfair Competition), the complaint does
not adequately allege that Plaintiff suffered concrete injury
to its commercial interests or reputation as a result of the
alleged infringement, pursuant to the test set forth by
Lexmark Int'l, Inc. v. Static Control Components,
Inc., 134 S.Ct. 1377, 1388-91 (2014). See Ahmed v.
Hosting.com, 28 F.Supp.3d 82, 91 (D. Mass. 2014)
(holding claim did not survive Lexmark test because
plaintiff “state[d] no facts establishing . . . a
commercial injury caused by the alleged infringement”).
Three, which alleges a violation of 17 U.S.C. § 501
(Copyright Infringement), does not provide sufficient factual
detail to support a plausible inference that Defendant
infringed on a copyright held by Plaintiff. Thus, Count Three
as currently pleaded does not survive the
Twombly/Iqbal standard and must be dismissed.
Count Four, which asserts a state law claim pursuant to Mass.
Gen. Laws ch. 214, § 3A) (Unauthorized Use of Names and
Pictures), Plaintiff fails to sufficiently allege that Ed
Parker, Sr.'s name and likeness were used for
commercially gainful purposes. “[T]he crucial distinction
under G.L. c. 214, § 3A, must be between situations in
which the defendant makes an incidental use of the
plaintiff's name, portrait or picture and those in which
the defendant uses the plaintiff's name, portrait or
picture deliberately to exploit its value for advertising or
trade purposes.” Tropeano v. Atl. Monthly Co.,
400 N.E.2d 847, 850 (Mass. 1980). “[E]ven a use leading
to some profit for the publisher is not a use for advertising
or trade purposes unless the use is designed to
‘appropriat[e] to the defendant's benefit the
commercial or other values associated with the name or
likeness.'” Jane Doe No. 1 v. Backpage.com,
LLC, 817 F.3d 12, 27 (1st Cir. 2016), cert.
denied, 137 S.Ct. 622 (2017) (quoting Tropeano,
400 N.E.2d at 850).
Defendant's motion to dismiss [ECF No. 18] is
GRANTED as to Counts Two, Three, and Four, and
DENIED as to Counts One and Five. Plaintiff is
granted leave to amend.
 The Court reads Mass. Gen. Laws ch.
214, § 3A as allowing Plaintiff to bring a claim,
although the Court need not resolve the question at this
time. That statute allows “[a]ny person whose name,
portrait or picture is used within the commonwealth for
advertising purposes or for the purposes of trade without his
written consent” to bring a civil action for damages.
Mass. Gen. Laws ch. 214, § 3A. Mass. Gen. Laws ch. 4,
§ 7, which provides definitions for terms used
throughout the Massachusetts General Laws defines
“person” to “include corporations,
societies, associations and partnerships, ”
“unless a contrary intention clearly appears” in
the applicable statute. The Court does not see a clear