United States District Court, E.D. Virginia, Norfolk Division
G. DOUMAR UNITED STATES DISTRICT JUDGE
matter came before the Court upon the motions to dismiss
filed by Figures Toy Company ("Figures"), and by
Ring of Honor Wrestling Entertainment, LLC ("ROH")
(collectively "Defendants"). ECF Nos. 27, 39.
Immediately following the hearing held November 27, 2017,
this Court granted those motions in part and denied those
motions in part. ECF No. 46. This Memorandum Opinion sets
forth the Court's reasoning behind its November 27, 2017
PROCEDURAL AND FACTUAL HISTORY
Millican & Mann, LLC ("Plaintiff) filed its
Complaint against Figures on September 2, 2016. ECF No. 1. On
November 15, 2016, Plaintiff filed an Amended Complaint
against Figures and Ring of Honor Wrestling Entertainment,
LLC. ECF No. 6. On December 1, 2016, Figures filed a Motion
to Dismiss, ECF No. 11, which Plaintiff opposed, ECF No. 15.
Following a hearing, this Court ordered that Plaintiff and
Figures file supplemental briefs regarding whether the
Copyright Act preempts Count III, breach of contract and
ordered that Plaintiff file a second amended complaint by May
2, 2017. ECF No. 17. Plaintiff and Figures filed their
supplemental briefs on April 18, 2017. ECF Nos. 19, 20.
filed its Second Amendment Complaint on May 2, 2017. ECF No.
21. Figures moved to dismiss the Second Amended Complaint on
May 17, 2017. ECF Nos. 27-29. Plaintiff opposed the motion on
May 31, 2017, ECF No. 32, and Figures replied on June 9,
2017, ECF No. 38. After being served and appearing in the
case, on June 15, 2017, ROH moved to dismiss the Second
Amended Complaint. ECF No. 39. Plaintiff opposed that motion
on June 28, 2017, ECF No. 42, and ROH replied on July 5,
2017, ECF No. 43.
November 27, 2017, this Court held a hearing concerning
Defendants' motions to dismiss. Immediately following
that hearing, the Court issued a brief order granting
Defendants' motions in part and denying them in part. ECF
Facts Alleged in the Second Amended Complaint
to Plaintiffs Second Amended Complaint,  Ring of Honor
Wrestling Entertainment is a "form of fighting/wrestling
competition that 'incorporates wrestling, mixed martial
arts and high-flying'" and is "broadcast on
television, pay-per-view, and at live events." ECF No.
21, at 1. Plaintiff is the designer and creator of ROH
championship belts, which are custom-designed and
custom-crafted belts given to the winners of ROH wrestling
matches; each belt costs approximately $1, 000. Id.
at 2, 4. ROH commissioned Plaintiff to design and craft these
championship belts, including but not limited to the three
• The 2012 World Tag Team Championship Belt, for
which PMM holds a U.S. copyright registration (the
"Registered Tag Team Belt"). ECF No. 21-1.
• The 2012 World Heavyweight Championship Belt,
for which PMM applied for copyright registration in August
2016 (the "Unregistered Heavyweight Belt"). ECF No.
• The 2012 6 Man Style TV Wrestling Championship
Belt, for which PMM applied for copyright
registration in August 2016 (the "Unregistered 6 Man
Style Belt"). ECF No. 21-3.
also notes it "has not sold or licensed its design or
product . . . other than providing the original championship
belts to ROH." ECF No. 21¶16.
to Plaintiff, ROH recognized a potential demand for replicas
of the championship belts and approached Plaintiff about
manufacturing and selling such replica belts through an
agreement with Figures, a company that manufactures and sells
collectible action figures, toys, and merchandise based on
sports and entertainment properties. ECF No. 21 at 2. Figures
and Plaintiff began negotiating an agreement concerning the
production and design of the replicas but "never came to
a final resolution of the terms of such a deal."
Id. According to Plaintiff, it "provided the
designs for each championship belt to Figures so that Figures
could set up production and obtain accurate cost estimates
for the production runs." Id. ¶ 24. Then,
"without consultation with [Plaintiff] and while
[Plaintiff] and Figures were still negotiating, "
Figures instead entered into a licensing agreement with ROH
to produce the replica belts with Plaintiffs designs.
Id. ¶19. The agreement was announced on October
28, 2014. Id. ¶ 37.
and ROH next began, pursuant to the terms of their agreement,
manufacturing and selling full-size championship belts,
rings, and action figure belts. Id. ¶ 34.
According to Plaintiff, the production of these items
involved the use of Plaintiff s designs without Plaintiffs
authorization or approval. Id. ¶ 39. In
addition, Plaintiff advises that in June 2015 Plaintiff
discovered that Figures and ROH had removed Plaintiffs
copyright notice from the belts and replaced it with a
copyright notice for ROH. Id. ¶ 43. According
to Plaintiff, Figures has now sold more than $60, 000 of
copyright merchandise and holds approximately $100, 000 or
more of full-size replica championship belts in its warehouse
that infringe on Plaintiffs copyrighted designs.
alleges six counts in its Second Amended Complaint:
Intentional Violation of Copyright (Count I), ECF No.
21¶¶ 58-61, Breach of Contract (Count III), id
¶¶ 62-68, Tortious Interference with
Contract/Business Expectancy (Count IV), id. ¶¶
69-77, Business Conspiracy Under Va. Code Ann. §
18.2-500 (Count V), id. ¶ 78-81, Fraudulent Inducement
(Count VI), id ¶¶ 82-91, Violation of the Digital
Millennium Copyright Act ("DMCA"), 17 U.S.C. §
1202 (Count VII), Id. ¶¶ 92-99. In
addition to damages, Plaintiff asks the Court to enjoin
Defendants from selling or distributing any replicas that do
not prominently display Plaintiffs copyright notice.
Id. ¶¶ 100-105.
function of a motion to dismiss under Rule 12(b)(6) is to
test "the sufficiency of a complaint." Occupy
Columbia v. Haley. 738 F.3d 107, 116 (4th Cir. 2013).
"[I]mportantly, it does not resolve contests surrounding
the facts, the merits of a claim, or the applicability of
defenses." Republican Party of N.C. v. Martin.
980 F.2d 943, 952 (4th Cir. 1992). "To survive such a
motion, the complaint must contain facts sufficient 'to
raise a right to relief above the speculative level' and
'state a claim to relief that is plausible on its
face.'" Haley, 738 F.3d at 116. When
reviewing the legal sufficiency of a complaint, the Court
must accept "all well-pleaded allegations in the
plaintiffs complaint as true" and draw "all
reasonable factual inferences from those facts in the
plaintiffs favor." Edwards v. City of
Goldsboro. 178 F.3d 231, 244 (4th Cir. 1999). Legal
conclusions, on the other hand, are not entitled to the
assumption of truth if they are not supported by factual
allegations. Ashcroft v. Iqbal. 556 U.S. 662, 678