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UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF FLORIDA CASE NO. 12-21705-CIV-COOKE/TURNOFF LUIGI J. CHINETTI, Plaintiff, Vs. FERRARI, S.p.A., Defendant. ___________________________/ DEFENDANT’S MOTION TO DISMISS PLAINTIFF’S COMPLAINT PURSUANT TO FED. R. CIV. P. 12(b)(6) AND INCORPORATED MEMORANDUM OF LAW Defendant, Ferrari S.p.A. (“Ferrari”), by and through its undersigned counsel and pursuant to Fed. R. Civ. P. 12(b)(6) files this Motion to Dismiss Plaintiff Luigi J. Chinetti’s Complaint (Dkt. 1) and, in support, states as follows: I. OVERVIEW OF THE PRESENT MOTION Plaintiff fails to state claims for relief that are plausible on their face as required by Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 662 (2009). Plaintiff alleges numerous interesting facts but none of those facts give rise to any duty or obligation on the part of Ferrari to Plaintiff. There is just no basis for the Court to draw the requisite reasonable inference that Ferrari is liable to Plaintiff. Iqbal, 556 U.S. at 678 (citing Twombly, 550 U.S. at 556)

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Reduced to its essence, Plaintiff asks this Court to certify that three of his automobiles1 are “unchanged from when they left the factory.” Plaintiff’s attempt to force Ferrari S.p.A., the world-renowned manufacturer of high performance luxury automobiles, to modify its business practice to comply with Plaintiff’s wishes and whims should be refused. Plaintiff has no contract with Ferrari. Plaintiff never alleges any obligation on the part of Ferrari to certify any

automobile. Plaintiff never alleges any obligation of any kind on the part of Ferrari. Plaintiff does not plead that it followed the Ferrari procedure to obtain certification of his automobiles, that Ferrari accepted the certification fee and that Ferrari thereafter failed to certify the car without justification. No reading of the facts would allow the Court to draw the requisite reasonable inference that Ferrari has any obligation or duty to Plaintiff or that Ferrari could be liable to Plaintiff. II. PLAINTIFF’S FACTS AND CLAIMS DO NOT WITHSTAND SCRUTINY A. Factual Basis For The Complaint

Plaintiff owns numerous Ferrari automobiles. (Complaint Dkt. 1, ¶ 12) Plaintiff confirms that Ferrari automobiles are frequently modified (Id. ¶ 18), that upon inspection Ferrari will certify automobiles “as being basically unchanged from when the left the factory,” (Id. ¶ 24) for a fee (Id. ¶ 30) and that many race cars are modified and will not meet Ferrari’s certification standards (Id. ¶ 25). Plaintiff claims that Ferrari will not certify three of his automobiles – a Ferrari 365P on loan to a museum in Philadelphia (Id. ¶¶ 14, 32), a Ferrari 275P2 (Id. ¶¶ 15, 32-33) and a Ferrari

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One automobile which Plaintiff wants “certified” apparently has been sold.

Plaintiff alleges that a Court in Italy confirmed his ownership of the Ferrari 275 P and his right to complete the modification/restoration of that automobile. However, Plaintiff does not cite any Court ruling that Ferrari must certify Plaintiff’s car.
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312PB (Id. ¶¶ 16, 32, 34). Plaintiff also asserts that the latter of these three automobiles has been sold. (Id. ¶ 44) Accepting these allegations as true for the purpose of the present Motion to Dismiss, it is immediately apparent that the Complaint is long on rhetoric but short on operative facts sufficient to meet the heightened pleading requirements of Twombly and Iqbal. B. Plaintiff’s Misguided Theories For Relief

Plaintiff bases this Court’s jurisdiction on the Lanham Act, 15 U.S.C. § 1051 et seq, diversity under 28 U.S.C. § 1332, and the Declaratory Judgment Act, 28 U.S.C. § 2201. Plaintiff seeks to have the Court certify his cars. (Count I) As if that were not sufficient, Plaintiff seeks to have the Court cancel the registration of Ferrari’s iconic “Prancing Horse” Trademark as well as the registration of Ferrari’s “Classiche” Trademark (which includes use of the iconic “Prancing Horse” Trademark) (shown below) in Count II.

Finally, Plaintiff seeks money damages as a separate and distinct count (Count III) not as a remedy under any other claim. III. A PLAIN READING OF THE COMPLAINT REVEALS THAT A PLETHORA OF CRITICAL FACTS ARE MISSING FROM THE COMPLAINT -- THE MISSING FACTS MAKE PLAINTIFF’S CLAIMS IMPLAUSIBLE

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Plaintiff does not allege that he has shipped his automobiles to the Ferrari factory and paid Ferrari a certification fee yet Plaintiff acknowledges these requirements. (Id. ¶ 30) Plaintiff does not and cannot allege that Ferrari accepted the certification fee and that Ferrari thereafter failed to certify the car without justification because Plaintiff neither delivered the automobile nor paid the fee. Plaintiff does not allege any contractual obligation on the part of Ferrari to certify Plaintiff’s automobiles because no such obligation exists. Plaintiff does not allege any contractual obligation on the part of Ferrari to certify any automobiles. Plaintiff does not allege that any statute requires Ferrari to certify automobiles because there no such statute is on the books, anywhere. Plaintiff does not allege that any Court has issued any decree requiring Ferrari to certify any automobiles because no court anywhere has ever made such a ruling. Plaintiff does not allege that any governmental body has issued any decree, rule or regulation requiring Ferrari to certify automobiles because no such decree, rule or regulation exists anywhere. Plaintiff does not allege any breach of any obligation, contract, statute, decree, law, rule, regulation, international treaty or any other legal authority whatever as the basis for its demand that the Court certify his automobile. The one and only basis Plaintiff can find to support his claim is inapplicable. Specifically, Plaintiff alleges that Ferrari objected to a third party’s use of the famous Ferrari trademark on a coupe that was modified to become a convertible. Plaintiff concedes that

Ferrari’s objection admittedly was based on safety, handling, quality and image. (Complaint, ¶ 20) Indeed, Plaintiff supports Ferrari’s position by acknowledging that some modified

automobiles do not meet the certification standards (Complaint ¶ 25). Furthermore, there is no allegation that Ferrari has threatened Plaintiff with trademark infringement based on Plaintiff’s modifications of his automobiles. There is no allegation that Ferrari’s statements about safety,

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handling, quality or image were untrue or unwarranted. There is no allegation that Plaintiff has a reasonable apprehension of being sued for trademark infringement. In the automotive world, Plaintiff’s complaint is running on “empty”.

IV.

THE LEGAL STANDARDS FOR THIS COURT’S REVIEW OF THE COMPLAINT A. The Basic Requirements For Review Of All Complaints

A complaint should be dismissed under Fed. R. Civ. P. Rule 12(b)(6) “only if it is clear that no relief could be granted under any set of facts that could be proved consistent with the allegations.” Blackston v. Alabama, 30 F.3d 117, 120 (11th Cir. 1994). In order to survive a Rule 12(b)(6) motion to dismiss, a complaint must contain factual allegations that are “enough to raise a right to relief above the speculative level, on the assumption that all the allegations in the complaint are true.” Twombly, 550 U.S. at 555. In reviewing a motion to dismiss, the Court accepts the allegations in the complaint as true and construes them in the light most favorable to the plaintiff” ADA v. Cigna Corp., 605 F.3d 1283, 1288 (11th Cir. 2010). Moreover, the facts supporting the claim must be “consistent with the allegations in the complaint.” Twombly, 550 U.S. at 562; see also Wilchombe v. TeeVee Toons, Inc., 555 F.3d 949 (11th Cir. 2009) (discussing the application of the Twombly standard to a Rule 12(b)(6) motion in a copyright infringement case) (emphasis added). While a court will accept well-pled allegations as true for the purposes of considering a Rule 12(b)(6) motion, the Court will not accept bald assertions, unsupported conclusions, unwarranted inferences, or sweeping legal conclusions cast in the form of factual allegations. Ashcroft v. Iqbal, 556 U.S. 662 (2009) In Iqbal, the Court explained that there are two “working principles” on a motion to dismiss. First, “the tenet that a court must accept as true all of the allegations contained in a

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complaint is inapplicable to legal conclusions. Threadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice.” Id. (citing Twombly, 550 U.S. at 555 (“a plaintiff's obligation to provide the ‘grounds’ of his ‘entitle[ment] to relief’ requires more than labels and conclusions, and a formulaic recitation of the elements of a cause of action will not do”) (citation omitted) (alteration in original)). The second principle of Iqbal is that “only a complaint that states a plausible claim for relief survives a motion to dismiss.” Id. at 678. “A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Id. at 678 (citing Twombly, 550 U.S. at 556). The Court explained that determining plausibility is “a context-specific task that requires the reviewing court to draw on its judicial experience and common sense.” Id. at 679 B. Additional Requirements for Declaratory Judgment Complaints

The Declaratory Judgment Act, 28 U.S.C. § 2201 does not create an independent cause of action, Aetna Life Ins. Co. v. Haworth, 300 U.S. 227, 240 (1937). The Declaratory Judgment complaint must comply with the well-pleaded complaint rule, City of Huntsville v. City of Madison, 24 F.3d 169, 172 and n.4 (11th Cir. 1994) and thus must comply with Twombly and Iqbal. Furthermore, there must be an actual case or controversy, Maryland Cas. Co. v. Pacific Coal & Oil Co., 312 U.S. 270, 273 (1941). Finally, the decision to grant declaratory relief is discretionary, Reno v. Catholic Soc. Servs. 509 U.S. 43, 57 (1993). Against this background, Ferrari demonstrates that as to each cause of action or “claim”, Plaintiff fails to meet the requisite pleading requirements. Plaintiff fails to establish a cognizable case or controversy. Plaintiff fails to demonstrate why this Court should exercise its discretion

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and grant declaratory relief. Plaintiff fails to demonstrate that Ferrari is liable for the alleged conduct.

V.

COUNT I FOR “DECLARATORY JUDGMENT” FAILS TO STATE A CLAIM AND MUST BE DISMISSED Count I fails to allege any obligation or duty on the part of Ferrari. Count I fails to allege

that Ferrari failed to do something which it was obligated to do. Count I asks the court to “determine and declare that the four [sic] vehicles listed above are authentic Ferraris”. (Dkt 1, page 9, prayer for relief following paragraph 39)3 (Emphasis added). The complaint

acknowledges that Plaintiff must ship his car(s) to Italy and prepay the certification fee (Complaint, ¶¶ 24, 28, 30) in order to obtain certification but does not allege that Plaintiff has, in fact, done so. There is no present case or actual controversy. Evers v. Dwyer, 358 U.S. 202 (1958) Even if Plaintiff ships his remaining car(s) to Italy and tenders the certification fee, the Complaint alleges no duty or obligation on the part of Ferrari to accept the certification fee, inspect Plaintiff’s car(s) and certify them. Thus there cannot be a future case or controversy. There is no basis on which the court can certify the cars, yet that is precisely what Plaintiff seeks. (Complaint, prayer for relief following paragraph 39) Plaintiff’s allegations, viewed most favorably to Plaintiff but in context of the missing allegations noted above demonstrate that Ferrari is not, and cannot be liable for the alleged

As noted above, only three vehicles are listed but even if four were listed the result would be the same. Also as noted above, it appears that one of the vehicles has been sold.

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“misconduct” and that the complaint fails to meet the plausibility requirement under Twombly and Iqbal. Stripped of rhetoric, Plaintiff merely complains that he cannot control how Ferrari does business even though he pleads no right to exercise such control. Plaintiff does not have a

cognizable claim for relief in Count I. As noted above, the Declaratory Judgment Act does not create an independent basis for relief. “In all cases arising under the Declaratory Judgment Act, 28 U.S.C. § 2201 . . . the threshold question is whether a justiciable controversy exists.” Atlanta Gas Light Co. v. Aetna Cas. & Sur. Co., 68 F.3d 409, 414 (11th Cir. 1995). “The party who invokes a federal court’s authority must show, at an ‘irreducible minimum,’ that at the time the complaint was filed, he has suffered some actual or threatened injury resulting from the defendant’s conduct, that the injury fairly can be traced to the challenged action, and that the injury is likely to be redressed by favorable court disposition.” Id. The Declaratory Judgment Act also provides: “In a case of actual controversy within its jurisdiction ... any court of the United States ... may declare the rights and other legal relations of any interested party seeking such declaration, whether or not further relief is or could be sought.” 28 U.S.C. §2201(a) (Emphasis added). This section vests district courts with substantial discretion in determining whether or not to exercise jurisdiction under the Declaratory Judgment Act. Cardinal Chemical Co. v. Morton Int’l, Inc., 508 U.S. 83, 95, n. 17 (1993) (district court has discretion to withhold the exercise of jurisdiction under the Declaratory Judgment Act, “even when it has been established”). No basis has been alleged for the Court to exercise its discretion and accept the present Declaratory Judgment complaint. For each of the above reasons, Count I should be dismissed.

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VI.

COUNT II – FOR CANCELLATION OF TRADEMARK REGISTRATIONS BASED ON ALLEGED TRADEMARK MISUSE -- FAILS TO STATE A CLAIM AND MUST BE DISMISSED Count II seeks cancellation of two of Ferrari’s federal trademark registrations based on

alleged trademark misuse. Count II is procedurally improper and legally insufficient. Count II fails to state a cognizable claim and should be dismissed under Fed. R. Civ. P. 12(b)(6). Plaintiff does not even allege how he selected for cancellation the two trademark registrations among the many owned by Ferrari. Those registrations were not alleged to have been asserted against him nor are they even referred to in the letter attributed to Ferrari’s counsel as being asserted against a third party. (Complaint ¶ 20). A. Misuse Is Not A Basis For Relief – Count II Is Procedurally Improper

The purported trademark misuse appears to be based on the theory that Ferrari refused to certify Plaintiff’s car(s) on terms acceptable to Plaintiff. Accepting that absurdity as true for the purpose of a Rule 12(b)(6) motion, the Complaint fails because trademark misuse is not a cognizable claim. Trademark misuse is an affirmative defense to trademark infringement claim, not a basis for an affirmative claim for relief, and the authorities are uniform in that regard. Exxon Corp. v. Oxxford Clothes, Inc., 109 F.3d 1069 (5th Cir. 1997) (per curiam); Helene Curtis Indus. Inc. v. Church & Dwight Co, Inc., 560 F.2d 1325, 1336 (7th Cir. 1977); People for the Ethical Treatment of Animals v. Doughney, 113 F. Supp. 2d 6915, 921 (E.D. Va. 2000); Dunn Computer Corp. v. Loudcloud, Inc., 133 F. Supp. 2d 823 (E.D. Va. 2001). Since Ferrari has not brought a claim for trademark infringement, there is no case or controversy and no basis for an affirmative defense/counterclaim. Plaintiff has no standing to challenge the Ferrari trademarks because Ferrari is not asserting its trademarks against Plaintiff. International Order of Job’s Daughters v. Lindeburg & Co., 727 F.2d 1087, 1091-92 (Fed. Cir.

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1984). Thus even accepting all of Plaintiff’s allegations as true, there is no independent cause of action for which relief can be granted under Count II of the Complaint. Count II is procedurally improper.

B.

Misuse Is Not A Basis For Cancellation – Count II Is Legally Insufficient

Count II of the Complaint fails for an additional reason. The allegation is that Ferrari somehow is extending the use of its trademarks to the certification and aftermarket. “[T]he federal statute concerning grounds for cancellation of a registered mark, 15 U.S.C. § 1064(c), does not include knowingly overextending a right in a mark as a ground for the mark’s cancellation.” Helene Curtis Indus. Inc v. The Milo Corporation, 1985 U.S. Dist. LEXIS 23870 *10 (N.D. Ill, May 2, 1985) Thus Count II is both procedurally improper and substantively legally insufficient. Count II should be dismissed for failure to state a claim for which relief can be granted under Rule 12(b)(6).

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VII.

COUNT III FOR “MONEY DAMAGES” FAILS TO STATE A CLAIM FOR WHICH RELIEF MAY BE GRANTED AND MUST BE DISMISSED Count III alleges that Plaintiff sold one of his Ferrari cars at a lower price compared to

what he believed was the true market value. Plaintiff seeks to recover the unspecified difference between what Plaintiff received and what Plaintiff might have received in a perfect world. Once again, Plaintiff fails to plead that Ferrari owed him any duty or obligation followed by a breach of that duty or obligation. Once again, Plaintiff fails to plead that he delivered the car to Ferrari in Italy and paid the certification fee, that Ferrari accepted the certification fee and that Ferrari thereafter failed to certify the car without justification. If all that occurred, then Count III might be a potential measure of damages. But Count III, in and of itself, is not a cause of action. In addition, since the Declaratory Judgment Act does not create an independent cause of action, the Act does not create a cause of action for “money damages”.

VIII. CONCLUSION Plaintiff fails to meet the pleading requirements of Fed. R.Civ. P. 12(b)(6). Plaintiff fails to plead cognizable claims. Plaintiff fails to demonstrate a case or controversy sufficient to support a Declaratory Judgment claim let alone a discretionary Declaratory Judgment claim. Plaintiff fails to demonstrate a basis to seek cancellation of Ferrari’s trademark registrations. For each of the foregoing reasons, Defendant, Ferrari requests that this Court enter an Order dismissing Plaintiff’s Complaint.

Respectfully submitted, ARNSTEIN & LEHR LLP Attorneys for Defendant

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515 North Flagler Dr., Suite 600 West Palm Beach, FL 33401 Telephone: 561-833-9800 Facsimile: 561-655-5551 By:/s/ Jerold I. Schneider Jerold I. Schneider Florida Bar No. 26975 jischneider@arnstein.com Joel B. Rothman Florida Bar No. 98220 jrothman@arnstein.com

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CERTIFICATE OF SERVICE I HEREBY CERTIFY that on the 15th day of June, 2012, I electronically filed the foregoing document with the Clerk of the Court using CM/ECF. I also certify that the foregoing document is being served this day on all counsel of record or pro se parties identified on the attached Service List in the manner specified, either via transmission of Notices of Electronic Filing generated by CM/ECF or in some other authorized manner for those counsel or parties who are not authorized to received electronically Notices of Electronic Filing. Respectfully submitted, ARNSTEIN & LEHR LLP Attorneys for Defendant 515 North Flagler Dr., Suite 600 West Palm Beach, FL 33401 Telephone: 561-833-9800 Facsimile: 561-655-5551 By:/s/ Jerold I Schneider Jerold I. Schneider Florida Bar No. 26975 jischneider@arnstein.com

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SERVICE LIST LUIGI J. CHINETTI, Plaintiff v. FERRARI, S.p.A., Defendant CASE NO. 12-21705-CIV-COOKE/TURNOFF United States District Court, Southern District of Florida

Gary S. Phillips, Esq. Florida Bar No. 339814 gphillips@phillipslawyers.com Jeffrey B. Shalek Florida Bar No. 996221 jshalek@phillipslawyers.com Phillips, Cantor & Shalek, P.A. Presidential Circle, Suite 500-N 4000 Hollywood Boulevard Hollywood, Florida 33021 Telephone: 954-966-1820 Facsimile: 954-414-9309 (Counsel for Plaintiff)

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