SPYDERCO INC v. KEVIN INC
2:17-cv-00309
| D. Me. | Dec 12, 2017Background
- Spyderco, a knife manufacturer, alleges Kevin, Inc. sold two knives labeled “CLONE MILITARY” and “CLONE PARAMILITARY” that bear Spyderco trademarks and are counterfeit and inferior.
- Spyderco brought Lanham Act claims (willful counterfeiting and trademark infringement) and Maine state-law claims for commercial disparagement/slander of title, civil conspiracy, and punitive damages.
- Kevin moved to dismiss the state-law claims (Third and Fourth Claims) and argued punitive damages depend on those claims.
- Kevin filed a third-party complaint against Joseph Connors as the alleged supplier of the knives; the court did not treat that pleading as conclusive for the motion to dismiss.
- The court granted Spyderco leave to amend the complaint but dismissed the commercial disparagement/slander-of-title claim for failure to allege statements casting doubt on Spyderco’s title to the marks.
- The court reserved ruling on the civil conspiracy and punitive damages claims and ordered supplemental briefing on whether Spyderco has alleged vicarious liability support for a civil-conspiracy theory under Maine law.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether commercial disparagement / slander of title claim survives | Spyderco alleged Kevin published statements/actions disparaging the authenticity/quality of Spyderco products (i.e., sold counterfeit “clones”) | Kevin argued slander of title does not extend to trademarks and, in any event, no statements were alleged to challenge Spyderco’s title | Dismissed: amended complaint fails to allege statements casting doubt on Spyderco’s ownership/title to its marks |
| Whether Maine recognizes trade libel/commercial disparagement | Spyderco treated claim as commercial disparagement by slander of title | Kevin argued trade libel is not recognized in Maine and slander-of-title applies only to real property | Court noted Maine has not adopted trade libel; declined to decide whether slander of title extends to trademarks because pleading failed on the ownership element |
| Adequacy of civil conspiracy claim | Spyderco alleged concerted action between Kevin and Connors in supplying/selling counterfeit knives | Kevin argued complaint lacks specifics of an illegal agreement and that Kevin has sued Connors — undermining conspiracy theory | Deferred: court found conspiracy in Maine is vicarious-liability doctrine and ordered briefing because complaint does not allege vicarious liability or which independent tort(s) would support conspiracy-based liability |
| Availability of punitive damages | Spyderco sought punitive damages tied to state-law torts | Kevin argued punitive damages must be dismissed if state-law claims are dismissed because Lanham Act does not allow punitive damages | Deferred: court dismissed disparagement claim (weakening punitive claim) and held punitive damages depend on survival of Fourth Claim (civil conspiracy) and related briefing |
Key Cases Cited
- Colquhoun v. Webber, 684 A.2d 405 (Me. 1996) (defines slander of title and its elements)
- FBR v. St. Paul Marine & Fire Ins. Co., 730 A.2d 175 (Me. 1999) (discusses commercial disparagement/trade libel and Maine’s treatment)
- McNally v. Mokarzel, 386 A.2d 744 (Me. 1978) (civil conspiracy is a vicarious-liability rule, not a separate tort)
- Cohen v. Bowdoin, 288 A.2d 106 (Me. 1972) (conspiracy averment leads to vicarious liability for jointly tortious actors)
- Lougee Conservancy v. CitiMortgage, Inc., 48 A.3d 774 (Me. 2012) (characterizes Colquhoun as adopting Restatement comment on slander of title)
- Elec. Corp. of Am. v. Honeywell, Inc., 358 F. Supp. 1230 (D. Mass. 1973) (punitive damages not available under the Lanham Act)