United States District Court, D. Maine
DECISION AND ORDER ON PARTIAL MOTION TO DISMISS AND
MOTION TO AMEND COMPLAINT
Brock Hornby, United States District Judge.
trademark case, the defendant moved to dismiss the
plaintiff's state law and punitive damages claims. The
plaintiff resisted the motion and moved for leave to amend
the complaint. The defendant then argued that the amendment
did not cure the deficiencies. I now Grant
the plaintiff's motion to amend its complaint under
Fed.R.Civ.P. 15(a)(1). But the amended complaint fails to
state a claim under Maine law for commercial
disparagement/slander of title, and I Grant
the motion to dismiss the Third Claim for Relief. I require
further briefing on the Fourth Claim, the civil conspiracy
claim, and therefore defer ruling on that Claim and the Fifth
Claim, a punitive damages claim.
to the amended complaint,  the plaintiff Spyderco, Inc. designs,
manufactures, and distributes knives and knife accessories.
Am. Compl. ¶ 11 (ECF No. 16-1). Among its products are
what it calls the Military and ParaMilitary knives.
Id. ¶¶ 12-16. Spyderco owns a variety of
federally registered and common law trademarks, many of which
are visible on or in its products, including the Military and
Para-Military knives. Id. ¶¶ 17-25.
defendant Kevin, Inc. operates retail stores that buy and
sell new and used sporting goods, including Spyderco products
such as the Military and ParaMilitary knives. Id.
¶¶ 26-27. Kevin has sold two knives identified on
their price tags as “CLONE MILITARY” and
“CLONE PARAMILITARY, ” id. ¶ 28-30,
which bear some of Spyderco's trademarks. Id.
¶ 33. Based on sale price, metallurgical testing, and
other indicia, Spyderco claims that these are not authentic
Spyderco knives, id. ¶ 31, but counterfeit
knives of inferior quality. Id. ¶¶ 32-34.
claims that Kevin's advertising, offering, and selling
the Clones constitutes willful counterfeiting and
infringement of its marks under the Lanham Act (First and
Second Claims), and commercial disparagement (Third Claim)
and common law civil conspiracy (Fourth Claim) under Maine
law; and that it is entitled to punitive damages (Fifth
Claim). Kevin moved to dismiss the Third and Fourth Claims
and argued that if those state law claims are dismissed, the
punitive damages (Fifth Claim) must also be dismissed,
because the only remaining claims are under the Lanham Act,
which does not allow punitive damages. Kevin also filed a
third party complaint against Joseph Connors, alleging that
Connors supplied it with the knives Spyderco complains of.
Def.'s Third-Party Compl. ¶¶ 10-14 (ECF No.
Disparagement/Slander of Title
amended complaint restyles the commercial disparagement count
as “commercial disparagement by slander of
title.” Am. Compl. ¶ 52-57. Kevin asserts that
slander of title does not extend to trademarks and applies
only to interests in real property. Def.'s Reply at 1-2
(ECF No. 19).
disparagement and slander of title are distinct torts.
Slander of title “protects a person's property
interest against words or conduct which bring or tend to
bring the validity of that interest into
question.” Colquhoun v. Webber, 684 A.2d 405,
409 (Me. 1996) (emphasis added); see also Restatement
(Second) of Torts § 624 (1977). That is, slander of
title protects against false statements that cast doubt on
whether someone in fact has a valid property
interest in the relevant property. By contrast,
commercial disparagement (also known as trade libel,
belittlement, and slander of goods, FBR v. St. Paul
Marine and Fire Ins. Co., 1999 ME 87, ¶ 10 n.1, 730
A.2d 175, 179) protects against injurious falsehoods that
disparage the quality of the property in question.
See Restatement (Second) of Torts § 626. But
this tort is not recognized in Maine. FBR, 1999 ME
87, ¶ 11 n.2, 730 A.2d at 180; see also Town and
Country Motors, Inc. v. Bill Dodge Automotive Group,
Inc., 115 F.Supp.2d 31, 33 (D. Me. 2000) (“The Law
Court has not adopted the common law tort of trade
of title is recognized in Maine. It has four
elements, the first of which is that there must have been
“a publication of a slanderous statement disparaging
claimant's title.” Colquhoun, 684 A.2d at
Even if slander of title applies to trademarks,
Spyderco has not alleged any statements by Kevin that cast
doubt on Spyderco's ownership of its trademarks or that
otherwise disparage its title to them. The amended
complaint's Third Claim for Relief is therefore
now recognizes that Spyderco has adequately alleged two or
more conspirators, Def.'s Reply at 3, but argues that the
amended complaint does not adequately allege the specifics of
an illegal agreement between Kevin and Connors. It also
points out that Kevin “has sued Connors for deceiving
it with respect to the provenance of the knives.”
Id. at 4. What Kevin states in its third party
complaint does not affect my assessment of whether
Spyderco's amended complaint is itself adequate.
parties have not addressed another requirement of Maine's
civil conspiracy law-that civil conspiracy in Maine “is
not a separate tort but rather a rule of vicarious
liability.” Vincent v. Town of Scarborough,
No. 02-239-PH, 2003 WL 22757940 (D. Me. Nov. 20, 2003)
(quoting McNally v. Mokarzel, 386 A.2d 744, 748 (Me.
1978)); see also Cohen v. Bowdoin, 288 A.2d 106, 111
(Me. 1972) (“Although . . . Maine law generally denies
that there is a separate and independent tort of ‘civil
conspiracy, ' allegations of concerted action do [result
in] all of the named defendants averred to have acted in
combination [being] vicariously liable to plaintiff for its
commission.”); Franklin v. Erickson, 146 A.
437, 438 (Me. 1929) (“Conspiracy is a convenient form
of declaration against two or more joint tort-feasors. The
averment of conspiracy adds nothing to the nature or gravity
of the offense charged. It is but a convenient mode of
declaring for a joint tort against two or more
persons.”). As far as I can tell from the amended
complaint, Spyderco has not asserted vicarious liability
against anyone based upon the alleged conspiracy. It has sued
only Kevin, and has not asserted that Kevin is liable via
conspiracy for someone else's tortious
conduct. Put simply, the civil conspiracy count
does not seem to do any work. See Fiacco v. Sigma Alpha
Epsilon Fraternity, 484 F.Supp.2d 158, 176 (D. Me. 2007)
(“[I]f any of the tort claims survive . . . that tort,
and not civil conspiracy, will serve as the basis for
liability. Consequently, summary judgment in favor of [the
movant] is appropriate on [the civil conspiracy
count].”). I direct the parties to address this issue
before I rule on the adequacy of the Fourth Claim of the
amended complaint. Kevin shall file its legal memorandum by
December 29, 2017, and Spyderco shall respond by January 12,
2018. The Fourth ...