The opinion of the court was delivered by: Hon. John W. Darrah.
MEMORANDUM OPINION AND ORDER
Defendant, H. Ty Warner, moves, pursuant to Federal Rule of Civil
Procedure 12(b)(6), to dismiss Plaintiffs, Peaceable Planet, Inc.'s,
complaint. For the reasons set forth below, Warner's Motion to Dismiss
[14-1] is denied.
When considering a motion to dismiss, well-pleaded allegations in the
complaint are accepted as true. Turner/Ozanne v. Hyman/Power,
111 F.3d 1312, 1319 (7th Cir. 1997). Any ambiguities in the complaint are
construed in favor of the plaintiff. Kelly v. Crosfield Catalysts,
135 F.3d 1202, 1205 (7th Cir. 1998). Dismissal is proper only when it
appears beyond doubt that Plaintiff can prove no set of facts to support
the allegations in his or her claim., Strasburger v. Board of Education,
143 F.3d 351, 359 (7th Cir. 1998).
"Although the Federal Rules of Civil Procedure do not require a
plaintiff `to set out in detail the facts upon which he bases his claim'"
[citation omitted], he must "set out sufficient factual matter to outline
the elements of his cause of action or claim, proof of which is essential
to his recovery.'" Benson v. Cady, 761 F.2d 335, 338 (7th Cir. 1985). A
complaint will not avoid dismissal if it contains "bare legal
conclusions" absent facts outlining the basis of the claims. Perkins v.
Silverstein, 939 F.2d 463, 467 (7th Cir. 1991).
Plaintiff, Peaceable Planet ("Peaceable Planet"), has filed a six-count
complaint against Defendants, Ty, Inc. ("Ty") and H. Ty Warner
("Warner"), alleging claims for trademark infringement, false designation
of origin, false description or representation, false advertising, and
related unfair competition under the Lanham Act, 15 U.S.C. § 1114,
1117, 1125 (2001) (Counts I and II); two claims for violations of the
Illinois Deceptive Trade Practices Act, 815 Ill. Comp. Stat 510, et seq.
(Count III), and the Illinois Consumer Fraud and Deceptive Business
Practices Act, 815 Ill. Comp. Stat. 505, et seq. (Count IV); and two
claims for common law trademark infringement (Count V) and disparagement
(Count VI). For purposes of this Motion to Dismiss, the following
allegations are taken as true.
Peaceable Planet, a Georgia corporation with its principal place of
business in Savannah, Georgia, sells a line of plush bean bag animals
under the trademark PEACEABLES. Each bean bag animal in the PEACEABLES
line has a character name which is printed on tags connected to the bean
bag animal. This name is used to distinguish Peaceable Planet's bean bag
animals from those of other companies and functions as a trademark.
Peaceable Planet is the exclusive owner of the NILES mark. It began
shipping in interstate commerce a plush bean bag camel bearing the mark
PEACEABLE PLANET'S NILES ("Niles the camel") no later than May 1999.
Peaceable Planet has been using this mark continuously in interstate
commerce since that time.
Ty, a Delaware corporation with its principal place of business in
Westmont, Illinois, sells a line of plush bean bag animals under the mark
BEANIE BABIES ("Beanie Babies"). Each Beanie Baby has a character name
that is printed on the tag attached to the toy. The character name is
followed by the symbol TM. These character names function as trademarks,
distinguishing Ty's plush bean bag animals from plush bean bag animals
sold by other companies.
Warner is the founder, President and Chief Executive Officer (CEO) of
Ty. He is also Ty's sole shareholder. Warner is responsible for
overseeing all aspects of Beanie Baby development, marketing and sales.
Warner personally authorizes, directs and approves the final design and
name of each Beanie Baby. He personally participates in the process of
naming the Beanie Babies. He is the principal decision-maker and has the
"final say" in the naming process.
Ty also makes a plush bean bag camel. Ty's plush bean bag camel is also
named Niles ("Ty's Niles the camel"). Ty has used the name NILES in
association with its bean bag camel in interstate commerce. Ty promoted
and advertised Ty's Niles the camel through various media, including but
not limited to catalogs and the internet. Ty's internet website has been
visited billions of times by consumers. Ty has achieved widespread sales
of Ty's Niles the camel throughout the United States in specialty
retailer stores, toy stores and gift stores.
Warner participated, authorized and approved the final design and name
of Ty's Niles the camel. He personally promoted, offered for ...