United States District Court, N.D. Georgia, Atlanta Division
OPINION AND ORDER
WILLIAM S. DUFFEY, JR. UNITED STATES DISTRICT JUDGE.
matter is before the Court on the Motion of Defendants ADG
Design Studio, LLC, Atlanta Design Group, Inc. (collectively
“ADG”), Chandra Cherry and Mark Darnell
(collectively “Defendants”) to Dismiss Count I of
the Complaint and Dismiss All Remaining State Law Claims
The Preston Partnership, LLC's (“Plaintiff”
or “Preston”) is an architectural and interior
design firm located in Atlanta, Georgia. ( ¶ 9).
Preston has a nationwide portfolio of mid- to large-scale
multifamily and mixed-use projects. (Id.).
Chandra Cherry (“Ms. Cherry”) is an interior
designer. From March 1, 2006, to March 31, 2017, Ms. Cherry
worked at Preston as a Principal of Interior Design.
(Id. ¶ 10).
April 2017, Ms. Cherry and three (3) other former Preston
employees joined ADG Design Studio, LLC (“ADG
Studio”), a newly-created division of Defendant Atlanta
Design Group, Inc. (“Atlanta Design Group”).
(Id. ¶ 11). Ms. Cherry is a Managing Partner of
ADG Studio and Atlanta Design Group. (Id. ¶
11). Defendant Mark Darnell is the Managing Member of ADG
Studio and the President of Atlanta Design Group.
(Id. ¶ 5).
2017, ADG Studio launched its website,
studio.atldesigngroup.com (the “Website”).
(Id. ¶ 12). The Website contains photographs of
interior design projects that were completed by Ms. Cherry,
along with other Preston employees, while Ms. Cherry worked
at Preston (the “Photographs”). (Id.
¶ 13). The Photographs appear on the Website: (1) on the
homepage, as sliding images moving across the screen; (2) as
a collection of thumbnail images under the main
“Portfolio” page; and (3) individually, in larger
format, when selected from the “Portfolio” page.
(Id. ¶ 13) In small, white letters on the
bottom right corner of the Photographs is a statement which
reads: “Work done while Principal at The Preston
Partnership.” (Id. ¶ 14). Plaintiff
asserts that this statement is false because neither ADG
Studio nor Atlanta Design Group was ever a Principal at
Preston. Plaintiff asserts further that the small text,
coupled with the images sliding across the screen, make the
statement “indecipherable.” ( ¶ 15).
also alleges that the design of the Website is misleading
because the Website does not contain a section highlighting
Ms. Cherry's personal portfolio of work. Rather, the
Photographs are represented as showing ADG Studio's
portfolio of work, when in fact ADG Studio-a newly created
company-does not have a portfolio of work. ( ¶ 16).
12, 2017, Robert Preston (“Mr. Preston”),
President of The Preston Partnership, sent Ms. Cherry an
email, asserting that the Photographs on the Website were
misleading and asking that they be removed. (Id.
21, 2017, Preston's counsel sent Ms. Cherry a letter
demanding that ADG Studio “cease and desist the
unauthorized representation of Preston's work on the ADG
Studio website.” (Id. ¶ 20). Mr. Darnell
and three other ADG Studio employees were copied on the
letter. Plaintiff alleges that Defendants failed to respond
to Plaintiff's communications. (Id. ¶ 21).
27, 2017, Plaintiff filed its Complaint , asserting claims
for violation of the Lanham Act, 15 U.S.C. § 1125(a),
for false designation of origin of services (Count I);
violation of the Georgia Deceptive Trade Practices Act,
O.C.G.A. § 10-1-372 (Count II); injunctive relief (Count
III); and attorneys' fees (Count IV).
28, 2017, Plaintiff filed a Motion for Temporary Restraining
Order (“TRO”) under its Lanham Act claim, seeking
to enjoin Defendants: (1) from displaying any photographs on
the Website depicting Plaintiff's interior design work;
and (2) from misrepresenting the origin of the Photographs in
a way that is likely to cause confusion as to the origin of
August 9, 2017, the Court conducted a hearing on
Plaintiff's Motion for TRO. At the hearing, Mr. Preston
stated that having photographs of Preston projects on ADG
Studio's Website “is very deceiving because it
gives the impression that ADG has a history very similar to
what our history is. It gives the clear impression that those
projects were done . . . by ADG when obviously they were not.
And I think it gives them a false portfolio of work when
really they obviously don't have a portfolio of work
because they are a start-up company.” ( at 8). Mr.
Preston testified that he “think[s] there will
inevitably be confusion that those projects [in the
Photographs on the Website] were done by ADG and not by
Preston.” ( at 20). Mr. Preston admitted, however,
that he is not aware of any complaints from prospective or
existing clients that the projects depicted in the
Photographs on the Website were completed by ADG, and not
Preston, and he does not expect to know of clients that have
engaged ADG because of their portfolio of work. ( at
19-20). Mr. Preston also stated that he has not lost any
business as a result of people seeing the Photographs on the
Website and being drawn to ADG for design work. ( at
Court denied Plaintiff's Motion for a TRO on August 18,
2017. (). The Court found that “Plaintiff fails to
allege facts to support that Defendants' allegedly false
designation is likely to cause consumer confusion.”
( at 7, 12). The Court also found that “Plaintiff
further fails to allege facts to support that it was harmed
by Defendants' allegedly false designation.”
(Id. at 10, 12). Based on those deficiencies, the
Court concluded that “Plaintiff is not likely to
succeed on the merits of its Lanham Act claim.”
(Id. at 12).
days later, on August 21, 2017, Defendants filed the instant
Motion to Dismiss . Defendants argue that “Preston
failed to sufficiently allege any of the four elements
necessary for a false designation of origin claim.”
([17-1] at 1). In particular, Defendants maintain: (1) that
the “goods” Preston seeks to protect, i.e. the
Photographs, are owned by Defendants and the Supreme
Court's decision in Dastar Corp. v. Twentieth Century
Fox Film Corp., 539 U.S. 23 (2003) bars Lanham Act
protection for the ideas embodied in the photographs; (2)
that Preston failed to sufficiently allege how the
photographs were falsely designated; (3) that Preston failed
to sufficiently allege that consumer confusion is likely; and
(4) that Preston failed to sufficiently allege specific
instances of harm resulting from the alleged false