UNITED STATES DISTRICT COURT SOUTHERN ... - Nymag

Case 1:09-cv-21893-WMH Document 16 Entered on FLSD Docket 07/31/2009 Page 15 of 24
Were such a claim of “conversion” viable, it would mean that the
tort of conversion could largely displace the [intellectual property]
laws traditionally defining what is an infringement of patents,
trademarks and copyrights. For example, could a plaintiff avoid
the traditional trademark infringement test of likelihood of
confusion and instead simply claim that defendant “converted” its
trademark? If so, over 100 years of trademark law would be
discarded. Thus, I believe that there is not, and should not be, such
a thing as a viable claim that a trademark has been “converted.”
4 McCarthy on Trademarks and Unfair Competition § 25:9.50 (emphasis added). Indeed,
“[t]rademark law was specifically constructed to balance the private and public interests inherent
in commercial symbols: the tort of conversion was not. It is the wrong tool for the job.” Id.
Courts faced with a claim that a trademark has been “converted” have rejected the
concept outright. Id. citing Richmond v. Nat’l Inst. of Certified Estate Planners, 2006 WL
2375454 (N.D. Ill. 2006) (dismissing counts for conversion of trademark and trespass to chattel
because they failed to state a claim); Liebowitz v. Maxwell, 1994 WL 517456 (S.D.N.Y. 1994),
related reference, 927 F. Supp. 688 (S.D.N.Y. 1996) (dismissing claim for conversion of
trademark); Big Time Worldwide Concert & Sport Club at Town Ctr., LLC. v. Marriott Intern.,
Inc., 236 F. Supp. 2d 791, 806-07 (E.D. Mich. 2003); Metro Sanitation, L.L.C. v. C & R Maint.,
Inc., 2005 WL 1861931 (E.D. Mich. 2005) (a claim for “conversion” of a service mark is not
recognized); Neles-Jamesbury, Inc. v. Bill's Valves, 974 F. Supp. 979 (S.D. Tex. 1997) (rejecting
claim for conversion of trademark); Express One Int’l, Inc. v. Steinbeck, 53 S.W. 3d 895 (Tex.
App. 2001) (same).
Here, Plaintiffs allege in Count IX for Conversion that “Defendants have wrongfully and
unlawfully asserted dominion over the intellectual property of Mr. Chow and the MR CHOW
Restaurants, and . . . [a]s a result of Defendants’ wrongful conversion of the property of Mr.
Chow and/or the MR CHOW Restaurants, Plaintiffs are entitled to damages in an amount to be
determined at trial.” (Compl. 150 & 154). Using intellectual property as the sole basis of their
conversion claim, Plaintiffs fail to state a claim for relief and Count IX should be dismissed. 6
6
Additionally, Plaintiffs’ conversion count is deficient in as much as they failed to allege that
they made a demand for the return of the property or allege the futility of doing so. See Ginsberg
v. Lennar Fla. Holdings, Inc., 645 So. 2d 490, 500 (Fla. 3d DCA 1994), rev. denied, 659 So. 2d
272 (Fla. 1995).
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RICHMAN GREER, P.A.
Miami • West Palm Beach