Rfp LLC v. Scvngr, Inc.
788 F. Supp. 2d 191
S.D.N.Y.2011Background
- RFP LLC owns the trademark Race for the Rock and sponsored scavenger hunts 2003–2008; no use in 2009–2010.
- SCVNGR promoted a 'Race for the Rock' contest including Bloomington, Illinois on Oct 9, 2010, through Bremer Jewelry.
- RFP asserted trademark rights in September 2010 and sent cease-and-desist letters to SCVNGR and Bremer.
- Bremer informed SCVNGR of the cease-and-desist and removed materials, but SCVNGR did not remove the Mark from Bloomington materials.
- SCVNGR filed counterclaims against RFP and a third-party claim against Rosenbloom; Counter-Defendants moved to dismiss two claims.
- Court granted motion to dismiss tortious interference and Section 349 claims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether tortious interference requires wrongful purpose or means | SCVNGR alleges sole purpose to harm the plaintiff. | Counter-Defendants acted to protect trademark rights and advance legitimate interests. | Dismissed; no plausible wrongful purpose or improper means shown. |
| Whether alleged misrepresentations and threats constitute wrongful means | Counter-Defendants knowingly misrepresented RFP ownership and threatened litigation to injure SCVNGR. | Counter-Defendants did not know RFP lacked rights and acted to protect valid rights. | Dismissed; no plausible knowledge of lack of rights and no improper conduct shown. |
| Whether injury element is established for tortious interference | Bremer's removal of the Mark and related actions injured SCVNGR's relationship. | The Bloomington relationship remained intact and no breach or severance occurred. | Dismissed; injury not established. |
| Whether Section 349 claim is consumer-oriented and actionable | Misrepresentation to Bremer affects the public in New York via the Bloomington event. | Deceptive act was directed at a single non-New York consumer and did not affect New York consumers. | Dismissed; no consumer-oriented conduct affecting New York consumers shown. |
Key Cases Cited
- PPX Enters. v. Audiofidelity Enters., 818 F.2d 266 (2d Cir. 1987) (elements of tortious interference require improper purpose or means and injury)
- Scutti Enters., LLC v. Park Place Entm't Corp., 322 F.3d 211 (2d Cir. 2003) (wrongful means include raising questions of misconduct and harassment; omitted valid evidence)
- Universal City Studios, Inc. v. Nintendo Co., Ltd., 797 F.2d 70 (2d Cir. 1986) (litigation or threat of litigation can be a wrongful means in bad faith)
- Shapiro & Son Bedspread Corp. v. Royal Mills Assocs., 764 F.2d 69 (2d Cir. 1985) (informing others of potential infringement is not tortious where rights are plausible)
- City of New York v. Smokes-Spirits.com, Inc., 541 F.3d 425 (2d Cir. 2008) (consumer-oriented requirement for Section 349 enforcement)
- Maurizio v. Goldsmith, 230 F.3d 521 (2d Cir. 2000) (Section 349 claim failed where conduct did not deceive the public at large)
- Ashcroft v. Iqbal, 556 U.S. 662 (U.S. 2009) (plausibility standard for pleading)
- Premium Mortgage Corp. v. Equifax, Inc., 583 F.3d 103 (2d Cir. 2009) (pleading standards for unlawful conduct and plausible claim)