# WorkingFilms, Inc. v. Working Narratives, Inc.

> District Court, E.D. North Carolina · March 29, 2021

URL: https://www.frixlaw.com/law-library/cases/10251664

## Case

- **Court:** District Court, E.D. North Carolina
- **Decided:** March 29, 2021
- **Opinion:** 100trialcourt
- **Cited by:** 0 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/10251664

## How later opinions describe it (automated extraction)

- explaining that a document is “integral to the complaint” “where the complaint relies heavily upon its terms and effect’”
- finding laches, rather than a statute of limitations, provides a satisfactory vehicle for enforcement of section 43(a) claims and noting as precedential its prior decision concluding the same for infringement claims
- finding that a Rule 12(b)(6) challenge, “which tests the sufficiency of the complaint, generally cannot reach the merits of an affirmative defense, such as the defense that the plaintiff's claim is time-barred.”

## Opinion text

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF NORTH CAROLINA
WESTERN DIVISION
Case No. 7:20-CV-00139-M

WORKINGFILMS, INC., )
)
Plaintiff,
) ORDER
V. )
)
WORKING NARRATIVES, INC.,
Defendant.
)
Before the court is Defendant’s Motion for Judgment on the Pleadings [DE 15]. Defendant
seeks dismissal pursuant to Fed. R. Civ. P. 12(c) for the Plaintiff's purported failure to allege
timely claims. For the reasons that follow, the motion is denied.
1, Statement of Facts
The following are factual allegations (as opposed to statements of bare legal conclusions,
unwarranted deductions of fact, or unreasonable inferences) made by the Plaintiff in the operative
Complaint (DE 1), which the court accepts as true pursuant to King v. Rubenstein, 825 F.3d 206,
212 (4th Cir. 2016).
Plaintiff is a North Carolina non-profit corporation based in Wilmington, North Carolina
since 2000, whose mission is to use documentaries to advance social justice and environmental
protection. Compl. at §§ 7, 8, 13. Plaintiff fulfills its mission primarily through the curation and
touring of short documentary films; Plaintiff also provides consulting, funding and technical
support to documentary filmmakers and shares its methodology and best practices through training
and presentations with the nonprofit, philanthropic, and documentary film sectors, including

filmmaker, nonprofit, and foundation grantee cohorts. Jd. at 14-17.
Plaintiff has used the mark “Working Films” (the “Mark”) to promote and distribute its
services in interstate commerce—including using the Mark on its social media sites (Instagram,
Twitter, and Facebook), written communications, promotional materials, and its website—over
the last twenty years. Compl. at J§ 10-12, 29, 35-38. Plaintiff applied for and procured Trademark
Registration No. 57311102 from the United States Patent and Trademark Office (USPTO) on April
23, 2019 in International Class 36 for “Providing grants for film and video production” and in
International Class 41 for “Planning, management, and coordination of film and video screenings;
consulting, strategic planning, workshops, and educational training in the field of film and video
production; providing a website featuring information on the production and use of non-
fiction films, and non-downloadable publications in the nature of blogs, and articles involving
social justice and environmental protection.” Jd. at § 32; see also Trademark Registration, DE
1-1. The Registration shows that Plaintiff's first use in commerce of the Mark was September 14,
2000. DE 1-1 at 2.
Defendant is a non-profit corporation also based in Wilmington, North Carolina. Compl.
at §§ 18-19. According to its website at www.workingnarratives.org, Defendant “consults with
foundations and nonprofits to help (1) develop a story-based communications strategy; (2) create
and manage web platforms for social-change groups or movement; and (3) provide movements
and grantee cohorts with ongoing ‘narrative strategy’ support.” Jd. at § 26. Initially, Defendant
used several marks to promote its services (including “Nation Inside” as the entity’s name), then
began using the mark “Working Narratives” (alleged by Plaintiff as the “Infringing Mark”) more
consistently. Jd. at {§ 21, 48. Defendant’s use of the Infringing Mark, at first, did not overlap in
a substantial way with Plaintiffs. Jd. at ]49. However, Defendant’s conduct materially changed,

and Defendant is now consistently using the alleged Infringing Mark to provide services that are
substantially similar to those provided by Plaintiff. /d at J 50-51.
For example, in 2020, more than one year after Plaintiff's announcement that it would be
working on and touring short documentary films on the topic of hurricane recovery, Defendant
announced that it had created and would tour a collection of short form documentary films focused
on hurricane recovery. Compl. at f§ 15, 28. In so doing, Defendant used a “request a screening”
form that was strikingly similar to that used by Plaintiff in numerous projects. Jd. at § 28.
In addition, Defendant’s use of the alleged Infringing Mark has caused the following
instances of confusion in the marketplace: (1) at events attended by both Plaintiff and Defendant,
other attendees assumed that Working Films was the same organization as Working Narratives or
that the two organizations were otherwise affiliated or connected; (2) a consultant of one of
Plaintiff's funders confused Plaintiff and Defendant, despite Plaintiff's personnel’s direct
interview with the consultant; (3) a project collaborator confused Plaintiff and Defendant when
writing about the collaboration; (4) a foundation that has provided funding to Plaintiff and,
possibly, to Defendant, confused Plaintiff and Defendant; and (5) other third parties engaging with
Plaintiff have believed they were engaging with Defendant or that Working Films and Working
Narratives were otherwise affiliated or connected. Compl. at Jf] 54-59.
After encountering these instances of confusion, Plaintiff attempted unsuccessfully to
effectuate Defendant’s cessation of use of the Infringing Mark and to reach an amicable resolution
of this dispute. Compl. at 60-62. Defendant continues to use the alleged Infringing Mark to
identify and promote its goods and services. /d. at § 63.
Il. Procedural History
Based on these allegations, Plaintiff seeks permanent injunctive relief for Defendant’s

alleged trademark infringement in violation of 15 U.S.C. § 1114(1)(a) (first claim for relief); false
designation of origin in violation of 15 U.S.C. § 1125(a) (second claim); trademark infringement
and unfair competition in violation of North Carolina’s common law (third claim); and unfair and
deceptive trade practices in violation of N.C. Gen. Stat. § 75-1.1 (fourth claim). Compl., ECF 1.
Defendant argues that the operative Complaint should be dismissed because Plaintiffs claims are
barred by the applicable four-year statute of limitations and the doctrine of laches.
Plaintiff counters that (1) its allegations demonstrate the alleged infringement is a
“continuing wrong”; (2) courts sparingly apply the laches doctrine and the Plaintiffs allegations
do not reflect “unreasonable delay”; (3) Plaintiff plausibly alleges Defendant progressively
encroached on its Mark and, thus, did not delay in bringing suit until “the likelihood of confusion

... present[ed] a significant danger” to the Mark; (4) Plaintiff's allegations of “willfulness” may
give rise to unclean hands, which is a defense to laches; (5) the court should not consider
Defendant’s exhibits attached to the Answer and Counterclaims, because they are not central to
Plaintiff's claims; and (6) Defendant’s arguments contain factual disputes which may not be
adjudicated under Rule 12(c).
Defendant replies that its exhibits are, indeed, central to Plaintiff's allegations and are
properly considered, Plaintiff allegations do not demonstrate progressive encroachment as it is
described by the Fourth Circuit, and courts in this district “regularly” apply the doctrine of laches
to bar claims for injunctive relief.
Ill. Legal Standards
Motions brought pursuant to Rule 12(c) of the Federal Rules of Civil Procedure are
governed by the same standard as motions brought under Rule 12(b)(6). Massey v. Ojaniit, 759
F.3d 343, 347 (4th Cir. 2014) (citing Edwards v. City of Goldsboro, 178 F.3d 231, 243 (4th Cir.

1999)). When considering a Rule 12(b)(6) motion to dismiss, the court must accept as true all of
the well-pleaded factual allegations contained within the complaint and must draw all reasonable
inferences in the plaintiff's favor, Hall v. DIRECTV, LLC, 846 F.3d 757, 765 (4th Cir. 2017), but
any legal conclusions proffered by the plaintiff need not be accepted as true, Ashcroft v. Iqbal, 556
U.S. 662, 678 (2009) (“[T]he tenet that a court must accept as true all of the allegations contained
in a complaint is inapplicable to legal conclusions. Threadbare recitals of the elements of a cause
of action, supported by mere conclusory statements, do not suffice.”). The Jgbal Court made clear
that “Rule 8 marks a notable and generous departure from the hypertechnical, code-pleading
regime of a prior era, but it does not unlock the doors of discovery for a plaintiff armed with
nothing more than conclusions.” Jd. at 678-79.
To survive a Rule 12(b)(6) motion, the plaintiffs well-pleaded factual allegations, accepted
as true, must “state a claim to relief that is plausible on its face.” Bell Atl. Corp. v. Twombly, 550
U.S. 544, 570 (2007). Twombly’s plausibility standard requires that a plaintiff's well-pleaded
factual allegations “be enough to raise a right to relief above the speculative level,” i.e., allege
“enough fact to raise a reasonable expectation that discovery will reveal evidence of illegal
[conduct].” Jd. at 555-56. A speculative claim resting upon conclusory allegations without
sufficient factual enhancement cannot survive a Rule 12(b)(6) challenge. /gbal, 556 U.S. at 678-
79 (“where the well-pleaded facts do not permit the court to infer more than the mere possibility
of misconduct, the complaint has alleged--but it has not ‘show[n]’--‘that the pleader is entitled to
relief.’” (quoting Fed. R. Civ. P. 8(a)(2)); Francis v. Giacomelli, 588 F.3d 186, 193 (4th Cir. 2009)
(“‘naked assertions’ of wrongdoing necessitate some ‘factual enhancement’ within the complaint
to cross ‘the line between possibility and plausibility of entitlement to relief.’” (quoting Twombly,
550 U.S. at 557)).

“A Rule 12(c) motion tests only the sufficiency of the complaint and does not resolve the
merits of the plaintiffs claims or any disputes of fact.” Drager v. PLIVA USA, Inc., 741 F.3d 470,
474 (4th Cir. 2014) (citing Butler v. United States, 702 F.3d 749, 751 (4th Cir. 2012)). In
adjudicating Defendant’s motion, the court may consider the complaint, answer, matters of public
record, and any exhibits that are “integral to the complaint and authentic” without converting the
motion to a motion for summary judgment. Massey, 759 F.3d at 347; see also Philips v. Pitt Cty.
Mem’! Hosp., 572 F.3d 176, 180 (4th Cir. 2009) (courts may “consider documents attached to the
complaint, see Fed. R. Civ. P. 10(c), as well as those attached to the motion to dismiss, so long as
they are integral to the complaint and authentic.”’).
As noted, Defendant seeks judgment on the pleadings by raising the defenses of laches and
statute of limitations to Plaintiff's claims. The laches doctrine and statute of limitations are
affirmative defenses. Powell v. Bank of Am., N.A., 842 F. Supp. 2d 966, 978 (S.D.W. Va. 2012)
(citing Fed. R. Civ. P. 8(c)). “As such, these defenses often are not appropriate for disposition
under Rule 12(b)(6).” Jd.; see also Goodman v. Praxair, Inc., 494 F.3d 458, 464 (4th Cir. 2007)
(finding that a Rule 12(b)(6) challenge, “which tests the sufficiency of the complaint, generally
cannot reach the merits of an affirmative defense, such as the defense that the plaintiff's claim is
time-barred.”). An exception exists for the “relatively rare circumstances where facts sufficient to
rule on an affirmative defense are alleged in the complaint... .” Powell, 842 F. Supp. 2d at 978
(quoting Goodman, 494 F.3d at 464). The exception is strictly construed, requiring that all “facts
necessary to the affirmative defense ‘clearly appear [ | on the face of the complaint.’” /d.
IV. Analysis
The Fourth Circuit has recently clarified that claims under the Lanham Act are not
controlled by any statute of limitations; rather, claims alleging trademark infringement pursuant to

15 U.S.C. § 1114(1) and those alleging section 43(a) violation(s) pursuant to 15 U.S.C.A. § 1125
are subject to the doctrines of laches and acquiescence. See Belmora LLC v. Bayer Consumer
Care AG, 987 F.3d 284, 293, 294 n.7 (4th Cir. 2021) (finding laches, rather than a statute of
limitations, provides a satisfactory vehicle for enforcement of section 43(a) claims and noting as
precedential its prior decision concluding the same for infringement claims) (citing What-A-Burger
of Va., Inc. v. Whataburger, Inc. of Corpus Christi, Tx., 357 F.3d 441, 449 (4th Cir. 2004)).!
In North Carolina, however, certain state law claims are subject to statutes of limitation.
For example, claims alleging violation(s) of N.C. Gen. Stat. § 75—1.1 must be raised within four
years of the date the cause of action accrued. Jackson v. Minnesota Life Ins. Co., 275 F. Supp. 3d
712, 727 (E.D.N.C. 2017) (citing N.C. Gen. Stat. § 75-16.2). The parties do not cite, and the court
has not found, case law regarding any time limitations on a common law claim for trademark
infringement and unfair competition, but neither party disputes the application of the four-year
limitation to such claim. Therefore, for purposes of this motion, the court will apply the four-year
limitation in evaluating the common law claim.”
Accordingly, the court will first address whether Plaintiffs first and second claims, as

‘The Belmora court noted the opinion in PBM Prods., LLC v. Mead Johnson & Co., 639 F.3d 111,
121 (4th Cir. 2011), on which Defendant relies, stating that PBM Prods.’ finding that a set of
section 43(a) claims were “barred per se by the analogous state statute of limitations” “directly
conflicts with a prior precedential decision of this Court, which acknowledged that Lanham Act
claims are not controlled by any statute of limitations.” Belmora LLC, 987 F.3d at 294 n.7 (citing
What-a-Burger of Va., 357 F.3d at 449). The court determined that “without any other means of
reconciling” PBM Prods. and What-a-Burger, the court is “bound to apply the principles correctly
espoused in What-a-Burger.” Id.
? North Carolina’s statutes of limitation for common law matters are set forth in N.C. Gen. Stat. §§
1-48 through 1-54; none of these provisions mentions a claim for infringement or unfair
competition. If it were necessary, the court would find the statute most analogous to the Plaintiff's
common law claim would be the three-year limitation in § 1-52, which limits the time period in
which to bring claims for fraud and personal injury. However, because the parties assume that a
four-year limitation applies to both the statutory and common law claims in this case, and the court
finds Plaintiffs common law claim is most analogous to a claim brought under § 75-1.1, the court
will likewise assume that a four-year statute of limitations applies to the common law claim.

alleged in the operative pleading and on which Plaintiff relies for this court’s subject-matter
jurisdiction, are barred by the doctrines of laches and acquiescence; second, the court will
determine whether Plaintiffs third and fourth claims as alleged are barred by the applicable statute
of limitations.
A. Lanham Act Claims
In the trademark context, “courts may apply the doctrine of estoppel by laches to deny
relief to a plaintiff who, though having knowledge of an infringement, has, to the detriment of the
defendant, unreasonably delayed in seeking redress.” Newport News Holdings Corp. v. Virtual
City Vision, Inc., 650 F.3d 423, 438 (4th Cir. 2011) (quoting Sara Lee Corp. v. Kayser—Roth Corp.,
81 F.3d 455, 461 (4th Cir. 1996)). While § 1114(1) and § 1125 claims are not governed by statutes
of limitation, the Fourth Circuit confirms that such statutes “will continue to play an important role
in the district court’s laches analysis,” because “[l]aches is presumed to bar [Lanham Act] claims
filed outside the analogous limitations period”; however, “whether a Lanham Act claim has been
brought within the analogous state statute of limitations is not the sole indicator of whether laches
may be applied in a particular case.” Belmora, 987 F.3d at 294-95 (citations omitted). The court
instructs that, if a district court concludes the presumption applies, it should then consider the
following factors to determine whether the plaintiff can overcome the presumption: (1) whether
plaintiff knew of defendant’s adverse use of the subject mark, (2) whether plaintiff's delay in
challenging that use “was inexcusable or unreasonable,” and (3) whether defendant “has been
unduly prejudiced” by plaintiff's delay. Jd. at 295.
For its first claim, Plaintiff alleges that it owns and holds a current, valid, and protectible
federal registration for the Mark “Working Films” with the United States Patent and Trade Office
(“USPTO”) under U.S. Reg. No. 5,731,102, and Defendant is willfully using in commerce a

reproduction, copy, or colorable imitation of Plaintiff's registered Mark—i.e., “Working
Narratives”—with knowledge of Plaintiff's rights in the Mark and knowing that such use is likely
to cause and has caused actual confusion, and to cause mistake or to deceive as to the source,
affiliation, connection, or association of Defendant’s services with the services of Plaintiff.
Compl. at §§ 65-70. For its second claim, Plaintiff alleges Defendant is willfully using in
commerce, without Plaintiff's consent, a name and false designation of origin that Defendant
knows will likely cause and has caused confusion, to cause mistake or to deceive as to Defendant’s
affiliation with Plaintiff and as to the origin, sponsorship, or approval of Defendant’s services. Jd.
at J§ 77-85. Plaintiff contends that, without injunctive relief, it will continue to suffer harm,
“including loss of business that Plaintiff otherwise would have earned, and its reputation with
funders and the relevant public.” Jd. at ¥ 86.
Specifically, Plaintiff alleges (1) Defendant “knew of Working Films’ use of [its] Mark
from at least 2007 and prior to Defendant’s adoption of the Infringing Mark”; (2) Defendant is
“now using [‘Working Narratives’] to promote substantially similar services to the same class of
consumers from the same location using the same types of funding sources”; (3) Defendant’s use
of “Working Narratives” was “initially sporadic and inconsistent,” with Defendant “using several
marks to promote its services”; for example, a funding proposal prepared for a proposed
collaboration with Plaintiff referenced ‘‘Nation Inside” as Defendant’s name; (4) Defendant’s
services using “Working Narratives” “initially did not overlap in a substantial way with those of
Plaintiff,” but Defendant’s use “has materially changed”; (5) Defendant is “now consistently”
using “Wo-kinig Narratives” to “provide services that are substantially simar to those provided.
by Plaintiff’; (6) Plaintiff has encountered “instances of actual confusion” including, (a) “at events
attended by both Plaintiff and Defendant, other attendees have assumed that Working Films was

the same organization as Working Narratives or that the two organizations were otherwise
affiliated or connected”; (b) a consultant of one of Plaintiff's funders “confused Plaintiff and
Defendant, despite Working Films’ personnel interviewing directly with the consultant”; (c) a
“project collaborator confused Plaintiff and Defendant when writing about the collaboration” (d)
a “foundation that has provided funding to Plaintiff and, upon information and belief, has also
provided funding to Defendant, confused Plaintiff and Defendant”; and (e) “[o]ther third parties
engaging with Plaintiff have believed they were engaging with Defendant or that Working Films
and Working Narratives were otherwise affiliated or connected.” Compl. at □□ 45-59.
Defendant responded to the Complaint with an Answer, Defenses, and Counterclaims, in
which Defendant seeks a declaration that it has not infringed Plaintiff's Mark and requests an
award of damages for Plaintiff's alleged violations of N.C. Stat. Gen. § 75-1.1 and the common
law prohibiting unfair competition. Answer, DE 13. Defendant attached to the Answer forty-five
exhibits supporting its counterclaims against Plaintiff. See DE 13-2 through DE 13-26. Citing to
these exhibits, Defendant asserts that Plaintiff has known of Defendant’s use of “Working
Narratives” since 2013 and did nothing to challenge such use until 2020; Defendant argues that
Plaintiff's inaction constitutes “unreasonable delay,” which bars Plaintiff's Lanham Act claims.
First, in determining whether there exists a presumption that laches bars Plaintiffs claims,
the court finds that the facts necessary to support the affirmative defense, including that Plaintiff's
claims fall outside the four-year statute of limitations, do not “clearly appear on the face of the
complaint.’” Powell, 842 F. Supp. 2d at 978. Defendant does not seem to dispute this, bu: argues
that “the pleadings,” including its Counterclaims (and attached exhibits) and Plaintiff's Reply,
reflect the facts necessary to show that Plaintiff unreasonably delayed filing the present action.
Plaintiff counters that the court may not consider the exhibits attached to Defendant’s

10

Counterclaims because they are neither integral to nor incorporated into the Complaint and any
such consideration would deprive Plaintiff of the opportunity to “present evidence and be heard
on a more complete record.” Defendant contends that the documents are, in fact, central to
Plaintiff's claims and that, even if they are not, the court may consider Plaintiffs “admissions” in
its Reply to Counterclaims.
1. Consideration of Defendant’s Exhibits
At the outset, the court notes it is not persuaded by Defendant’s argument that, simply
because documents are attached to a pleading—here, to Defendant’s Counterclaims—the
substance of the documents may be considered in analyzing a Rule 12(c) motion seeking dismissal
of the Plaintiff's Complaint. Proceeding in this manner would deprive the Plaintiff of preparing
and presenting its own evidence and would contravene Rule 12(d) of the Federal Rules of Civil
Procedure. Rather, cases in the Fourth Circuit reflect that documents attached to an answer and
counterclaims are considered under Rule 12(c) only if the counterclaims are challenged or if the
documents are attached and/or “integral” to the complaint. See, e.g., Williams v. Unum Grp.
(Corp.), No. 3:17-CV-01814-CMC, 2017 WL 10756823, at *1 (D.S.C. Oct. 18, 2017) (court
considered “Covenants [ | included in documents filed as attachments to both [the] Amended
Complaint and [the] Answer and Counterclaims”); Kantsevoy v. LumenR LLC, 301 F. Supp. 3d
577, 593 (D. Md. 2018) (where parties filed cross motions for judgment on the pleadings, the court
considered only those documents that were “incorporated” into the complaint and counterclaims
and determined not to consider documents proffered merely as “evidence”).?

> Defendant cites to three cases for support of its position that documents attached to an answer
and counterclaims may be considered in analyzing a Rule 12(c) motion seeking dismissal of a
complaint. Reply at 3. The court finds these cases unpersuasive and/or distinguishable from the
instant action as follows: May v. Horton, No. 5:09-CT-3081-BO, 2010 WL 2990198, at *2
(E.D.N.C. July 29, 2010), aff'd, 403 F. App’x 850 (4th Cir. 2010) (the court considered an Offense
and Disciplinary Report attached to two defendants’ answers in analyzing both Rule 12(b)(6) and
1]

The Fourth Circuit makes clear that, to avoid converting a Rule 12(c) motion to a Rule 56
motion, a district court may consider documents “submitted by the movant that [were] not attached
to or expressly incorporated in a complaint, so long as the document[s] [were] integral to the
complaint and there is no dispute about the document|s’| authenticity.” Goines v. Valley Cmty.
Servs. Bd., 822 F.3d 159, 166 (4th Cir. 2016); see also Jones v. Penn Nat. Ins. Co., 835 F. Supp.
2d 89, 94 (W.D.N.C. 2011) (“. .. the purpose of limiting a motion for judgment on the pleadings
to the contents of the pleadings, per se, is to prevent a court from basing decisions on factual
allegations made in one party’s documents that the other has not had an opportunity to address.”).
No party disputes that the Defendant’s exhibits were neither attached to nor expressly incorporated
in the Complaint; additionally, the Plaintiff does not contest the documents’ authenticity. Thus,
the court must determine whether the documents are central (or “integral”) to Plaintiffs claims.
A document that is quoted or referenced in a complaint is not integral to a plaintiff's claims
if the claims do not turn on, nor are based on, information contained in the document. Goines, 822
F.3d at 166 (citing Sira v. Morton, 380 F.3d 57, 67 (2d Cir.2004) (“Limited quotation from or
reference to documents that may constitute relevant evidence in a case is not enough to incorporate
those documents, wholesale, into the complaint.”) and Chambers v. Time Warner, Inc., 282 F.3d
147, 153 (2d Cir. 2002) (explaining that a document is “integral to the complaint” “where the
complaint relies heavily upon its terms and effect’”)). “When the plaintiff attaches or incorporates

12(c) motions but did not explain how or whether the report was incorporated into the complaint
by reference); Williams v. Branker, No. 5:09-CT-3139-D, 2011 WL 649845, at *3 (E.D.N.C. Feb.
10, 2011), aff'd, 462 F. App’x 348, 352 (4th Cir. 2012) (the Fourth Circuit found the court erred
in relying on documents attached to the answer—’ we are troubled by the district court’s reliance
on reports from Williams’s inmate file handpicked by the defendants, because the complaint is not
dependent on such reports”—but found such error harmless where dismissal was proper based
solely on consideration of the complaint’s allegations); Jordan v. Caromont Health, Inc., No.
3:12CV798-GCM, 2013 WL 443777, at *3 (W.D.N.C. Feb. 5, 2013) (court considered documents
attached to the answer in analyzing a Rule 12(c) motion but did not explain how or whether the
documents were incorporated into the complaint by reference).
12

a document upon which his claim is based, or when the complaint otherwise shows that the plaintiff
has adopted the contents of the document, crediting the document over conflicting allegations in
the complaint is proper.” Jd. at 167.
Defendant asserts that Exhibits 7 through 45° are, in fact, central to Plaintiff Complaint as
follows: Exhibits 7 through 21 “detail the parties’ knowledge and relationship” as set forth in the
Complaint at paragraphs 41 through 44; Exhibits 22 through 27 “detail the correspondence
between the parties” as described in paragraphs 60 through 63 of the Complaint; and Exhibits 28
through 45 are “Plaintiffs detailed filings with the USPTO” as described in paragraphs 29 through
40 of the Complaint.
First, paragraphs 41 through 44 of the Complaint allege as follows:
41. | Upon information and belief, the co-founder and Executive Director of
Defendant is Nick Szuberla (“Szuberla”).
42. In February 2007, Kentucky-based Appalshop, Inc., hired Working Films
to develop and facilitate a strategy for Szuberla’s project “Thousand Kites.”
43. | Upon information and belief, in 2007, Szuberla was either an employee, a
contractor, or otherwise associated with Appalshop, Inc. (“Appalshop”).
44. Upon information and belief, it was from his work with Working Films
through Appalshop that Szuberla learned of the work and mission of Working
Films, including its use of the Mark.
Compl., DE 1. Exhibits 7 through 17 are notes and emails between Szuberla and persons at
Working Films in 2013 and 2014 regarding a possible collaboration; Exhibit 18 is a 2014 Tax
Form 990 for Working Films; Exhibit 19 is a 2012 email and attached “toolkit” sent to Szuberla
from the Center for Media Justice; Exhibit 20 is a receipt for a workshop held October 3, 2013;

‘Exhibits 1 and 2 appear to be matters of public record for which the court may take judicial
notice, and which may be considered for whatever relevancy they have to the matters at issue.
See Greene v. Mullis, 829 F. App’x 604, 605 (4th Cir. 2020). Exhibits 3 through 6 are simply
proffered as evidence and, thus, the court will not consider them. See Kantsevoy, 301 F. Supp.
3d at 593.
13

and Exhibit 21 is a 2015 email exchange between Szuberla and Betty Wu. The court finds none
of these documents is integral to Plaintiffs allegations regarding whether Szuberla was associated
with Appalshop and whether he first learned of Working Films in 2007; therefore, they will not be
considered.
Second, paragraphs 60 through 63 of the Complaint allege:
60. As instances of actual confusion occurred, Plaintiff took several actions.
61. Plaintiff demanded several times that Defendant cease use of the Infringing
Mark.
62. Plaintiff made numerous efforts to engage Defendant in conversations to
reach an amicable resolution and to stop the actual confusion. However, despite
these efforts and some communication between the parties, Defendant has not been
willing to commit to a meeting to resolve the matter.
63. Despite Plaintiff's demands and efforts to reach a resolution, Defendant
continues to use the Infringing Mark to identify and promote its goods and services.
Compl., DE 1. Exhibit 22 is a February 23, 2018 cease and desist letter from an attorney
representing Working Films to Szuberla at Working Narratives; Exhibit 23 is a March 16, 2018
letter from an attorney for Working Narratives responding to the February 23, 2018 letter; Exhibit
24 is a May 1, 2019 letter from Working Films’ attorney to Working Narratives’ attorney seeking
a meeting to discuss the trademark dispute; Exhibit 25 is an email from Working Films’ chairman
of the board to Szuberla seeking a meeting to discuss the trademark dispute; Exhibit 26 is an email
exchange between the Working Films’ chairman and a Working Narratives’ board member
regarding a meeting to discuss the trademark dispute; and Exhibit 27 is an email exchange between
the parties’ board members attempting to schedule a meeting in February and April 2020. To the
extent that Plaintiffs claims turn on, or are based on, information contained in these documents
and the documents are relevant to the matters at issue, the court may consider them.
Finally, paragraphs 29 through 40 of the Complaint allege:

14

29. Since at least 2000, Plaintiff has used the Mark consistently and
prominently in interstate commerce.
30. On February 9, 2018, Plaintiff filed an application for a federal trademark
registration for the Mark (the “Application”).
31. The United States Patent and Trademark Office (USPTO) published the
Application on February 5, 2019. No opposition was made to the Application.
32. | A United States trademark registration for the mark “Working Films” in
standard character form (Reg. No. 5731102) (the “Registration”) was issued on
April 23, 2019. The Registration is in International Class 36 for “Providing grants
for film and video production” and International Class 41 for “Planning,
management, and coordination of film and video screenings; consulting, strategic
planning, workshops, and educational training in the field of film and video
production; providing a website featuring information on the production and
use of non-fiction films, and non-downloadable publications in the nature of
blogs, and articles involving social justice and environmental protection.” A
copy of the Registration is attached as Exhibit A.
33. The Registration shows that Plaintiff ’s first use in commerce of the Mark
was September 14, 2000.
34, The Registration is valid and subsisting and constitutes prima facie evidence
of Plaintiff's ownership of the Mark, the validity of the Mark, and of Plaintiff's
exclusive rights to use the Mark in commerce on and in connection with the services
recited in the Registration.
35. In addition to the trademark registration, Plaintiff owns valid and
protectable common law rights for the Mark. Since at least 2000, Plaintiff has used
the Mark continuously in commerce to promote, distinguish and identify its
services. As a result of this long-standing and continuous use, consumers have
come to associate the Mark with Working Films and the services it provides.
36. Working Films uses the Mark on all communications, including letterhead,
emails, grant applications, invoices, etc.
37. Working Films uses the Mark on all promotional materials and in
connection with the promotion and distribution of all of its services.
38. | Working Films uses the Mark on its website at www.workingfilms.org, as
its domain name, and on all of its social media sites, including Instagram, Twitter
and Facebook.
39. Through Working Films’ long and continuous use, and_ substantial
investment and time in promoting its services using the Mark, the Mark has come

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to be known, recognized and identified as originating and affiliated with Working
Films.
40. | Working Films has acquired substantial goodwill in the Mark. Asa result,
it has become a valuable and irreplaceable asset of Working Films.
Compl., DE 1. Exhibits 28 through 45 consist of six applications for trademark registration filed
by Plaintiff in October 2015, the USPTO’s “office actions” in response to the applications, and
notices of abandonment of the applications issued by the USPTO. These documents are not
integral to Plaintiff's allegations concerning its 2018 application, 2019 registration, and Plaintiff's
use of its Mark in its business dealings. Accordingly, the court will not consider these documents
in analyzing Defendant’s Rule 12(c) arguments.
2. Plaintiff's Statements in its Reply to Counterclaims
Defendant contends that the court may consider admissions made by the Plaintiff in its
reply to the counterclaims. A reply, or answer, to a counterclaim is a “pleading.” Fed. R. Civ. P.
7(a)(3). The court finds that, just as it may consider relevant admissions in Defendant’s answer,
it may consider any relevant admissions Plaintiff made in its reply to counterclaims for a Rule
12(c) analysis. See Jones, 835 F. Supp. 2d at 95 (a Rule 12(c) motion “will result in claims being
dismissed where the material facts are not in dispute and a judgment on the merits can be rendered
by looking at the substance of the pleadings and any judicially noted facts”) (emphasis added)
(citation and internal quotation marks omitted); see also Ramos v. CMI Transportation, LLC, No.
3:18-CV-968 JD, 2019 WL 3244612, at *1 (N.D. Ind. July 19, 2019) (“In evaluating [a Rule 12(c)
motion, the Court considers the allegations in the complaint and any admissions in the answer.”
(citing N. Ind. Gun & Outdoor Shows, Inc. v. City of S. Bend, 163 F.3d 449, 452 (7th Cir. 1998)).
3. Do the Pleadings Support Dismissal Based on Laches?
The court finds the Defendant has failed to demonstrate as a matter of law that Plaintiff

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unreasonably delayed filing its Lanham Act claims. The allegations in the Complaint do not reveal
when Plaintiff first became aware of Defendant’s use of “Working Narratives,” but Defendant
contends that Plaintiff's admissions in its reply to the counterclaims demonstrate Plaintiff knew of
“Working Narratives” in at least 2014. In its Reply to Defendant’s Counterclaims (DE 22),
Plaintiff “admitted that Molly Murphy and Anna Lee with Working Films met with Nick Szuberla
on February 13, 2014” (id. at § 131) and “admitted that Molly Murphy, Anna Lee, Nick Szuberla,
Rend Smith, and Paul VanDeCarr met on May 8, 2014” (id. at § 133). Plaintiff contends that
despite when it became aware of the use of “Working Narratives,” its allegations regarding
Defendant’s changing conduct support a theory of “progressive encroachment,” which thwarts the
defense of laches.
The Fourth Circuit instructs that “courts may apply the doctrine of estoppel by laches to
deny relief to a plaintiff who, though having knowledge of an infringement, has, to the detriment
of the defendant, unreasonably delayed in seeking redress.” What-A-Burger of Va., Inc., 357 F.3d
at 448 (quoting Sara Lee Corp. v. Kayser—Roth Corp., 81 F.3d 455, 461 (4th Cir. 1996)) (emphasis
added). Through its argument, Defendant attempts to persuade the court that Plaintiff's knowledge
of the existence of “Working Narratives” is sufficient to show Plaintiff's knowledge of an
infringement in Defendant’s use of “Working Narratives.” But, demonstrating mere knowledge
of the use of a trademark is insufficient to invoke the laches doctrine. “[T]o the extent that a
plaintiffs prior knowledge may give rise to the defense of estoppel by laches, such knowledge
must be of a pre-existing, infringing use of a mark.” Jd. at 449 (quoting Sara Lee, 81 F.3d at 462)
(emphasis in original); see also Brittingham vy. Jenkins, 914 F.2d 447, 456 (4th Cir. 1990)
(explaining that, in determining whether laches applies, a court should ordinarily consider
“whether the owner of the mark knew of the infringing use”). Thus, “a court’s consideration of

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laches in the trademark context should encompass at least these questions: ‘(1) whether the owner
of the mark knew of the infringing use; (2) whether the owner’s delay in challenging the
infringement of the mark was inexcusable or unreasonable; and (3) whether the infringing user
was unduly prejudiced by the owner’s delay.’” What-A-Burger, 357 F.3d at 448-49 (quoting
Brittingham, 914 F.2d at 456).
With respect to the first question, the Fourth Circuit explains that “[m]ere use of a mark
that is similar or even identical to a registered trademark does not a fortiori establish infringement.
The ‘keystone of infringement’ is ‘the likelihood of confusion.’” Jd. at 450 (quoting Sara Lee, 81
F.3d at 462; see also 15 U.S.C.A. § 1114(1)(a) and (b) (infringement of a registered mark requires
use that “is likely to cause confusion, or to cause mistake, or to deceive”). The What-A-Burger
court suggests that “a court should consider a number of factors relating to the way in which the
competing marks operate in the workplace” and asserts that “‘similarity of [ ] conflicting names is
but one of many factors relevant to a determination of whether the concurrent use of the marks
creates a likelihood of confusion.” /d.
Thus, to succeed on its motion, Defendant must demonstrate that the pleadings reflect
Plaintiff unreasonably delayed filing its Lanham Act claims after learning (or having knowledge)
that Defendant’s use of “Working Narratives” would likely cause confusion in the marketplace.
Because the Complaint is silent with respect to when Plaintiff had knowledge of Defendant’s
alleged infringement, Defendant relies on its documents proffered in support of its Counterclaims;°
however, the court has determined that the only documents it may consider in this analysis relate
to Defendant’s LLC filings and the parties’ communications after Plaintiff's 2018 cease and desist
letter, none of which are relevant to the first question in a laches analysis. Defendant also relies

> The court may also consider any admissions or other information Defendant provides in the
Answer, but the court finds nothing relevant to this issue contained in the Answer.
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on Plaintiff's admissions in its Reply to Counterclaims, which may be relevant, but they reflect
only that Plaintiff's representatives met with Defendant’s representatives in 2014 and, as such,
they do not rebut Plaintiff's allegations that Defendant’s use of “Working Narratives” was
“initially sporadic and inconsistent,” with Defendant “using several marks to promote its services”
including, for example, the use of “Nation Inside” as Defendant’s name; that Defendant’s services
using “Working Narratives” “initially did not overlap in a substantial way with those of Plaintiff,”
but Defendant’s use “has materially changed”; and that Defendant is “now consistently” using
“Working Narratives” to “provide services that are substantially similar to those provided by
Plaintiff’ Compl. at §§ 48-51.
Defendant contends that while Plaintiff argues its allegations demonstrate “progressive
encroachment”—which describes a “fact pattern, wherein the defendant . . . ‘either gradually edges
closer and closer in trademark similarity or product line operations or else escalates its volume or
scale of operations so as to create a higher profile’” (What-A-Burger, 357 F.3d at 451 (quoting 5
McCarthy at § 31:18))—Plaintiff fails to plead facts supporting such theory in the Complaint. The
court need not address Defendant’s contention because, even if Defendant is correct, the Fourth
Circuit determined that the allegations in What-A-Burger did not “present a “progressive
encroachment’ fact pattern” and concluded, “The principles underlying our decision in Sara Lee,
however, are controlling here: (1) delay is measured from the time at which the owner knew of an
infringing use sufficient to require legal action; and (2) legal action is not required until there is a
real likelihood of confusion.” Jd.; see also Ray Commce’ns, Inc. v. Clear Channel Commc’ns, Inc.,
673 F.3d 294, 301 (4th Cir. 2012).
Here, the court finds Defendant has failed to demonstrate on the pleadings that laches
applies to bar Plaintiff's Lanham Act claims; while it is possible that Defendant has evidence

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sufficient to assist the court in determining at what point Defendant’s use of “Working Narratives”
may have created a sufficient likelihood of confusion to trigger the Plaintiff's obligation to sue,
such evidence may not be considered for a Rule 12(c) analysis.
4. Do the Pleadings Support Dismissal Based on Acquiescence?
Citing the parties’ 2018 and 2019 communications described above, Defendant argues that
Plaintiff “acquiesced” in Defendant’s use of “Working Narratives.” Specifically, Defendant
asserts that after Plaintiff initially demanded that Defendant cease and desist its use of “Working
Narratives” in early 2018, Defendant did not hear again from the Plaintiff until May 2019; during
the delay, Defendant “relied on Plaintiff's silence as an acceptance that its allegations were
improper or that it accepted that the statute of limitations had passed.” Mot. at 6-7.
‘““Acquiescence is the active counterpart to laches . . . [b]oth doctrines ‘connote consent by
the owner to an infringing use of his mark,” but ‘acquiescence implies active consent.’” What-A-
Burger, 357 F.3d at 452 (quoting Sara Lee, 81 F.3d at 462) (emphasis in original). The doctrine
is encompassed within 15 U.S.C.A. § 1115(b)(9) and provides that “[a]n infringement action may
be barred... where the owner of the trademark, by conveying to the defendant through affirmative
word or deed, expressly or impliedly consents to the infringement.” Jd “As with laches,
acquiescence assumes a ‘preexisting infringement’ that ‘requires that the trademark owner
knowingly consent—albeit actively—to the defendant’s infringing use of the mark.’” Jd.
Defendant neither cites case law nor explains how Plaintiffs inaction between February
2018 and May 2019 supports a finding that Plaintiff conveyed to Defendant “through affirmative
word or deed” its consent to Defendant’s use of “Working Narratives.” The court finds Defendant
fails to demonstrate the application of acquiescence to bar Plaintiff's Lanham Act claims, and
Defendant’s motion seeking dismissal of Plaintiff's first and second claims is denied.

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B. State Law Claims
Plaintiff's third and fourth claims seek recovery pursuant to North Carolina’s statutory and
common law; the court has determined for purposes of Defendant’s motion that these claims are
subject to the four-year statute of limitations found in the Unfair and Deceptive Trade Practices
Act, N.C. Gen. Stat. § 75-16.2 ““UDTPA”). Thus, Plaintiffs claims must have accrued on or after
July 29, 2016.
A claim under the UDTPA accrues when the alleged violation occurs. Faircloth v. □□□□□
Home Loan Corp., 313 F. Supp. 2d 544, 553 (M.D.N.C. 2003), aff'd sub nom. Faircloth v. Fin.
Asset Sec. Corp. Mego Mortg. Homeowner Loan Tr., 87 F. App’x 314 (4th Cir. 2004) (citations
omitted). In other words, the claim accrues “when a plaintiff has the ‘right to institute and maintain
suit....’” Jd (quoting Barbee v. Atl. Marine Sales & Serv., Inc., 115 N.C. App. 641, 649, 446
S.E.2d 117, 122 (1994). The parties do not cite, and the court has not found, any cases involving
allegations of trademark infringement and violations of the UDTPA, in which the court opines as
to the circumstances under which a UDTPA claim accrues.® For the instant claim, Plaintiff alleges
Defendant “is using a mark that creates a likelihood of confusion, mistake or deception,” “with
knowledge of Plaintiff's ownership and exclusive rights,” and “without Plaintiff's authorization or
consent.” Compl. §§ 100-102. For purposes of this analysis, the court construes Plaintiff's
allegations (and those supporting the common law trademark infringement claim) as similar to
claims for fraud or misrepresentation, particularly given the Plaintiffs reference to deception. In
North Carolina, when a UDTPA claim is based on fraud, “the violation occurs—and the limitations
clock starts running—“at the time that the fraud is discovered or should have been discovered with

For example, in the insurance context, ‘““a UDTP cause of action accrues when the insurer denies
the claim.” Quillen y. Allstate Corp., No. 1:14-CV-00015-MR-DLH, 2014 WL 6604897, at *4
(W.D.N.C. Nov. 20, 2014).
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the exercise of reasonable diligence.” Dreamstreet Invs., Inc. v. MidCountry Bank, 842 F.3d 825,
830 (4th Cir. 2016) (citations omitted); see also Spoor v. Barth, 244 N.C. App. 670, 679, 781
S.E.2d 627, 633 (2016); Sebastian v. Davol, Inc., No. 517CVO0006RLVDSC, 2017 WL 3325744,
at *7 (W.D.N.C. Aug. 3, 2017) (same for both fraud and misrepresentation claims).
Like the defense of laches, to succeed on a statute-of-limitations defense at this stage, all
facts necessary to show the time bar must clearly appear “on the face of the complaint.” Dickinson
v. Univ. of N. Carolina, 91 F. Supp. 3d 755, 763 (M.D.N.C. 2015); see also Ferro v. Volvo Penta
of the Americas, LLC, 731 F. App’x 208, 210 (4th Cir. 2018) (quoting Semenova v. Ma. Transit
Admin., 845 F.3d 564, 567 (4th Cir. 2017) (“Where a defendant seeks dismissal on statute of
limitations grounds, the court may dismiss under Rule 12(b)(6) ‘only if the time bar is apparent on
the face of the complaint.”)).
No party disputes that Plaintiff's common law trademark infringement and UDTPA claims
are based on the same factual allegations as the Lanham Act claims. Defendant expresses the same
arguments for dismissal of the state law claims as it does for the federal claims. The court finds
that Defendant has failed to demonstrate on the pleadings that Plaintiff discovered or should have
discovered prior to July 29, 2016 that Defendant’s use of “Working Narratives” created a
likelihood of confusion, mistake, or deception. Again, the court recognizes the possibility that
Defendant may possess evidence to support its arguments in this respect, but the court is limited
in what it may consider for a Rule 12(c) analysis. Defendant’s motion seeking dismissal of the
Plaintiff's third and fourth claims for relief is denied.
V. Conclusion
A Rule 12(c) motion “tests only the sufficiency of the complaint and does not resolve the
merits of the plaintiff's claims or any disputes of fact.” Massey, 759 F.3d at 353 (quoting Drager

22

v. PLIVA USA, Inc., 741 F.3d 470, 474 (4th Cir. 2014)). The Complaint in this case is silent with
respect to when Plaintiff knew or should have discovered that Defendant’s use of “Working
Narratives” would likely cause confusion, and Defendant’s reliance on its proffered exhibits and
Plaintiff's admissions do not persuade the court that the doctrines of laches and acquiescence or
the applicable statute of limitations apply to bar the Plaintiffs claims. Accordingly, Defendant’s
Motion for Judgment on the Pleadings [DE 15] is DENIED.

> Te
SO ORDERED this _©*__ day of March, 2021.

Videel / y 5 XL
RICHARD E. MYERS II
CHIEF UNITED STATES DISTRICT JUDGE

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/10251664. Public record. Not legal advice.