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Woman's Newspapers, LLC v. Cavanagh

December 29, 2005

THE WOMAN'S NEWSPAPERS, LLC AND STEPHEN J. FISKE, PLAINTIFFS,
v.
THOMAS CAVANAGH, LAURA CAVANAGH, TRI-COUNTY WOMAN'S PAPERS, INC., AND THOMAS AND LAURA CAVANAGH D/B/A NORTHWEST CHICAGO SUBURBAN WOMAN AND THE SUBURBAN WOMAN OF THE NORTHWEST SUBURBS AND THE SUBURBAN WOMAN OF DUPAGE COUNTY AND THE SUBURBAN WOMAN OF KANE COUNTY, DEFENDANTS.



The opinion of the court was delivered by: John F. Grady, United States District Judge

MEMORANDUM OPINION

Before the court is defendants' motion to dismiss the amended complaint. For the following reasons, the motion is denied.

BACKGROUND

Plaintiffs, Stephen J. Fiske and his Illinois limited liability company, The Woman's Newspapers, LLC ("TWN"), brought this action against defendants Thomas Cavanagh and Laura Cavanagh and their corporation, Tri-County Woman's Papers, Inc. ("Tri-County"). The amended complaint alleges the following facts, which we take as true for purposes of this motion.

Plaintiff TWN is a company that publishes advertising papers in the Chicago area. Its publications, among them the "Northwest Indiana Woman Newspaper," are geared toward women in various communities and are available free of charge at display stands in local private and public establishments. Plaintiff Fiske "has acquired trademark and service rights to the mark 'WOMAN'S NEWSPAPERS' and the distinctive 'pink' trade-dress, marketing techniques and layout of the Woman's Newspapers, both at common law prior to and after the year 1989 and further by virtue of registrations with the Illinois Secretary of State." (Amended Complaint, ¶ 11.) Fiske has registered two marks with the Illinois Secretary of State: one for "WOMAN NEWSPAPER--THE #1 WOMAN'S EDUCATIONAL NEWSPAPER" and one for "WOMAN NEWSPAPER." (Complaint, Exs. C, D.)*fn1 Plaintiffs also have an extensive "WOMAN NEWSPAPER" "family of marks" using the "WOMAN NEWSPAPER" "stem work or phrase." (Amended Complaint, ¶ 13.)

On January 23, 2003, Fiske entered into a "Letter of Agreement" (the "First Agreement") with defendants Thomas and Laura Cavanagh.*fn2 Pursuant to the First Agreement, the Cavanaghs would pay $65,000.00 (in a series of payments) in exchange for "the exclusive use in a geographical area to be designated as Northwest Chicago (Exhibit A attached) of the concept, format, trademark, identity, and marketing techniques used by The Woman's Newspapers and the trade name Northwest Chicago Woman's Newspaper in Cook County, IL. When paid in full, the Buyer receives the exclusive irrevocable royalty-free license for the trade name, Northwest Chicago Woman's Newspaper." (Complaint, Ex. A, First Agreement at 1.) On April 16, 2004, Fiske and the Cavanaghs entered into another agreement entitled "Trademark and Trade Dress License Agreement" (the "Second Agreement"). The Second Agreement provided that Fiske was the exclusive owner of "various common and registered law trademarks, service marks, and other words and design marks," deemed the "Property." (Complaint, Ex. B, Second Agreement at 1.) In exchange for $35,000.00, Fiske granted the Cavanaghs "an exclusive right, license, and permission to use and utilize the Property solely in connection with the distribution, sale or offering for sale of" a newspaper called the "Kane County Woman's Newspaper" in a specified area and the "nonexclusive right to the unrestricted sale of advertising in any geographical area for" the Newspaper. (Id.)

In mid-2004, Fiske and the Cavanaghs evidently had a falling-out. Plaintiffs allege that defendants "have been in breach of the Agreements since at least June of the year 2004" by failing to comply with several different provisions of each Agreement. (Amended Complaint, ¶¶ 15-17.) It is alleged that since June 2004, defendants have "commenced and continued use in commerce of confusingly similar 'WOMANS NEWSPAPERS' marks and trade-dress" by publishing papers such as the "Northwest Chicago Suburban Woman Newspaper" (later re-named the "Suburban Woman of the Northwest Suburbs"), as well as the "Suburban Woman of Kane County" and the "Suburban Woman of DuPage County." (Id., ¶ 18; Complaint, Ex. H.) In plaintiffs' view, defendants "seek to trade off the good will and recognition of the WOMANS NEWSPAPERS system without acknowledging the ownership of the WOMANS NEWSPAPERS marks by the Plaintiffs." (Amended Complaint, ¶ 19.) Plaintiffs assert that defendants' "use in commerce of the Plaintiffs' marks, and their operation of the WOMANS NEWSPAPERS as a unifying theme, is likely to cause confusion, to cause mistake, or to deceive members of the public into believing that the Plaintiffs have sponsored or authorized Defendants' use of the WOMANS NEWSPAPERS marks." (Id., ¶ 21.)

Plaintiffs filed this action on April 4, 2005 and filed an amended complaint on June 27, 2005. The amended complaint contains a single federal claim in Count I for unfair competition, false designation of origin, passing off, and false advertising in violation of the Lanham Act, 15 U.S.C. § 1125(a). Several state-law claims are also asserted: fraudulent registration, trademark infringement, and injury to business reputation in violation of the Illinois Trademark Registration and Protection Act, 765 ILCS 1036/1 et seq. (Count II); violation of the Illinois Consumer Fraud and Deceptive Business Practices Act, 815 ILCS 505/1 et seq. (Count III); violation of the Illinois Deceptive Trade Practices Act, 815 ILCS 510/1 et seq. (Count IV); trespass to chattels (Count V); conversion (Count VI); and breach of contract (Count VII). Plaintiffs seek compensatory damages, punitive damages, injunctive and other equitable relief, declaratory relief, interest, and attorney's fees.

Defendants move to dismiss the amended complaint pursuant to Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim.

DISCUSSION

The purpose of a 12(b)(6) motion to dismiss is to test the sufficiency of the complaint, not to resolve the case on the merits. 5B Charles Alan Wright & Arthur R. Miller, Federal Practice and Procedure § 1356, at 354 (3d ed. 2004). When evaluating such a motion, the court must accept as true all factual allegations in the complaint and draw all reasonable inferences in the plaintiff's favor. Hentosh v. Herman M. Finch Univ. of Health Sciences, 167 F.3d 1170, 1173 (7th Cir. 1999); Jang v. A.M. Miller & Assocs., 122 F.3d 480, 483 (7th Cir. 1997). Dismissal is appropriate only if "'it is clear that no relief could be granted under any set of facts that could be proved consistent with the allegations.'" Ledford v. Sullivan, 105 F.3d 354, 356 (7th Cir. 1997) (quoting Hishon v. King & Spalding, 467 U.S. 69, 73 (1984)).

Before discussing defendants' arguments for dismissal, we will address the matter of the defendants who appear in the caption of the amended complaint. Plaintiffs have sued the Cavanaghs and Tri-County, as well as "Thomas and Laura Cavanagh d/b/a Northwest Chicago Suburban Woman and the Suburban Woman of the Northwest Suburbs and the Suburban Woman of DuPage County and the Suburban Woman of Kane County." The latter defendant is duplicative and will be dismissed to eliminate confusion. The Cavanaghs have already been named, and the titles of their publications are not business entities separate from Tri-County.

Defendants' first argument is that all of TWN's claims should be dismissed because it is alleged that only Fiske, and not TWN, owns the two marks registered with the Illinois Secretary of State. We reject this argument because defendants overlook the additional allegation that plaintiffs, plural, "additionally have an extensive 'WOMAN NEWSPAPER' family of marks using the 'WOMAN NEWSPAPER' stem work or phrase." (Amended Complaint, ¶ 13.)

Defendants also assert that plaintiffs' infringement claims should be dismissed because plaintiffs fail "to adequately articulate with any degree of particularity the design elements of what actually constitutes" their trade dress. (Defs.' Mem. at 5.) According to defendants, "a precise description of what a plaintiff claims as their trade dress is required to 'determine whether that trade dress is valid and if what the accused is doing is an infringement.'" (Id. at 5-6.) Defendants state in their reply brief that they do not seek a more definite statement and that their argument ...


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