Brain Pharma, LLC v. Scalini
2012 U.S. Dist. LEXIS 64295
S.D. Fla.2012Background
- Plaintiff Brain Pharma, LLC filed a complaint on January 25, 2012 against Allstarhealth (Javier Scalini and Fernando Scalini) and Advantis Nutrition (ADF, Inc.).
- Plaintiff alleges Lanham Act violations (Counts I-III) and Florida law equivalents (Counts IV-VI) based on use of the BPI mark.
- Plaintiff contends defendants sold and marketed BPI products as if authorized, without BPI quality control, leading to non-genuine products.
- Defendants moved to dismiss under Rule 12(b)(6) for failure to state a claim.
- Court applies Twombly/Iqbal pleading standards, liberal inferences but requires plausible claims.
- Court grants motion to dismiss, with opportunity to amend by a fixed deadline.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether first sale doctrine bars Count I and whether pleadings show authority or quality-control issues. | BPI alleges misrepresentation as authorized dealer and beyond first-sale protection. | Resale of genuine goods generally barred by first sale doctrine; pleadings lack quality-control specifics. | Count I dismissed; leave to re-plead with specifics. |
| Whether Count II unfair competition/false designation of origin survives under § 1125(a). | Defendants misrepresented affiliation and sold at deep discounts. | First sale doctrine applies; conclusory allegations fail to show confusion. | Count II dismissed; leave to re-plead. |
| Whether Count III dilution under § 1125(c) is viable given fame, post-fame use, and dilution nature. | BPI mark is famous and defendants diluting it through discounted resale. | Plaintiff failed to plead fame, post-fame adoption, or dilution factual basis. | Count III dismissed; leave to re-plead. |
| Whether state-law claims (Counts IV-VI) fail due to failure of federal claims. | Common-law claims should proceed alongside federal claims. | If federal claims fail, state claims must fail too. | Counts IV-VI dismissed; leave to re-plead. |
Key Cases Cited
- Davidoff & CIE, S.A. v. PLD Int’l Corp., 263 F.3d 1297 (11th Cir.2001) (first sale doctrine; material differences can create confusion)
- Crystal Entm’t & Filmworks, Inc. v. Jurado, 643 F.3d 1313 (11th Cir.2011) (plausibility standard for Lanham Act claims)
- Polymer Tech. Corp. v. Mimran, 37 F.3d 74 (2d Cir.1994) (quality-control theory requires concrete procedures and nonconforming goods)
- Osawa & Co. v. B & H Photo, 589 F. Supp. 1163 (S.D.N.Y.1984) (discounted resale does not state dilution unless other factors)
- Australian Gold, Inc. v. Hatfield, 436 F.3d 1228 (10th Cir.2006) (use of marks beyond display can defeat first-sale defense)
- PACCAR Inc. v. TeleScan Technologies, LLC, 319 F.3d 243 (6th Cir.2003) (domain/branding use can create confusion beyond resale)