Submitted: May 16, 2018.
from United States District Court for the District of
Minnesota - Minneapolis.
SHEPHERD, MELLOY, AND GRASZ, CIRCUIT JUDGES.
SHEPHERD, CIRCUIT JUDGE.
Munro and Bruce Munro Studio (collectively
"Munro") appeal the district
court's dismissal of his complaint against Lucy
Activewear, Inc., Lucy Apparel, LLC, VF Outdoor, Inc., and VF
Corporation (collectively "Lucy")
and the denial of his motion to amend his complaint based on
a finding of futility. Munro argues that the district court
erred when it found that his tortious interference claim was
preempted by the Copyright Act and that his proposed amended
trade dress, trademark, and fraud claims were futile. We
disagree with Munro except as to his trademark claim. Thus,
we affirm in part and reverse and remand in part.
is an artist best known for his works "Field of
Light" and "Forest of
Light"-"large-scale, immersive, light-based
installations, and exhibitions." Proposed Amend. Compl.
¶ 1. Munro alleges that Lucy contacted him and proposed
a Lucy advertising and promotional campaign featuring
Munro's work. He further claims that, relying on a
promise of confidentiality, he shared additional information
with Lucy about his prior work, including "attendance
figures, achieved online/multi media traffic, and promotional
methods used for the exhibitions." He further disclosed
that he was in talks with public officials in Boston,
Massachusetts about creating a public exhibition in the city.
Following these disclosures, Munro says that Lucy stopped
contacting him and that communications with Boston officials
ceased soon thereafter as well.
October 2013, Lucy launched a light exhibition and
advertising campaign for Lucy in Boston. The exhibition,
titled "Light Forest," was an interactive light
installation that responded to the participants'
movements. An advertising campaign associated with the
exhibit crossed several media platforms, including
television, print, internet, and in-store displays.
2015, Munro filed a complaint against Lucy in Texas state
court alleging that, by presenting the "Light
Forest" exhibition and advertising campaign in Boston,
Lucy infringed on Munro's trademark and trade dress and
usurped a prospective business opportunity. In September
2015, Lucy removed the case to federal court and then filed a
motion to dismiss for lack of personal jurisdiction, or, in
the alternative, to transfer venue. Lucy also filed a
separate Fed.R.Civ.P. Rule 12(b)(6) motion to dismiss for
failure to state a claim. In January 2016, the case was
transferred to the federal district court in Minnesota. The
following month, Lucy renewed its Rule 12(b)(6) motion. Munro
responded, but in March 2016, he also moved to amend his
complaint. In his proposed amended complaint, Munro alleged:
trademark and trade dress infringement, trademark and trade
dress dilution, false designation of origin and unfair
competition, misappropriation, fraud, tortious interference
with prospective business opportunities, and unfair
competition. The district court found that Munro's
proposed amended complaint was futile and denied his motion
to amend. It also granted Lucy's motion to dismiss
Munro's complaint for failure to state a claim. The court
dismissed without prejudice Munro's fraud claim as well
as his trademark claim-to the extent it is based on the
similarity of the names of the two exhibitions- but it
dismissed all remaining claims with prejudice. Munro appeals.
usually review the district court's "denial of leave
to amend a complaint under an abuse of discretion standard;
however, when the district court bases its denial on the
futility of the proposed amendments, we review the underlying
legal conclusions de novo." Jackson v. Riebold,
815 F.3d 1114, 1122 (8th Cir. 2016) (internal quotation marks
omitted). Federal Rule of Civil Procedure 15(a)(2) states
"a party may amend its pleading only with the opposing
party's written consent or the court's leave[, ]
[and] [t]he court should freely give leave when justice so
requires." However, "[f]utility is a valid basis
for denying leave to amend." Jackson, 815 F.3d
at 1122. "[W]hen the court denies leave on the basis of
futility, it means the district court has reached the legal
conclusion that the amended complaint could not withstand a
motion to dismiss under Rule 12(b)(6) of the Federal Rules of
Civil Procedure." Cornelia I. Crowell GST Tr. v.
Possis Med., Inc., 519 F.3d 778, 782 (8th Cir. 2008).
When reviewing "a motion to dismiss an action for
failure to state a claim under Rule 12(b)(6), [we] tak[e] the
factual allegations in the complaint as true and afford the
non-moving party all reasonable inferences from those
allegations." Butler v. Bank of Am., N.A., 690
F.3d 959, 961 (8th Cir. 2012). A plaintiff's motion to
amend the complaint will be granted if he "show[s] that
such an amendment would be able to save an otherwise
meritless claim." Jackson, 815 F.3d at 1122.
argues that the district court erred when it denied his
motion for leave to amend four of his claims: (1) trade dress
infringement; (2) fraud; (3) tortious interference; and (4)
trademark infringement. We address each claim in turn.
Dastar Corp. v. Twentieth Century Fox Film Corp.,
the Supreme Court held that "[t]he Lanham Act was
intended to make 'actionable the deceptive and misleading
use of marks,' and 'to protect persons engaged in . .
. commerce against unfair competition.'"
Dastar, 539 U.S. 23, 28 (2003) (quoting 15 U.S.C.
§ 1127). The Court found, however, that the Lanham Act
was not designed to protect originality or creativity and it
does not create a cause of action for plagiarism.
Id. at 36-37. "Trade dress is the total image
of a product, the overall impression created, not the
individual features." Aromatique, Inc. v. Gold Seal,