Professional Documents
Culture Documents
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11 DON HENLEY,
Plaintiff,
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vs.
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Trial Date:
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None Set
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LEWIS
BRISBOIS
BISGAARD
& SMITH LLP
ATTORNEYS AT LAW
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DEFENDANT DULUTH HOLDINGS, INC.S NOTICE OF MOTION AND MOTION TO DISMISS THE FOURTH
AND FIFTH CAUSES OF ACTION
1 or Plaintiff) Fourth and Fifth Causes of Action for alleged violations of his
2 statutory and common law rights of publicity. The basis of the motion to dismiss is
3 that the Fourth and Fifth Causes of Action fail to state viable claims for relief under
4 Federal Rules of Civil Procedure Rule 12(b)(6). This motion follows the Local Rule
5 7-3 meeting of counsel which took place on November 25, 2014.
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The allegations in the Complaint and specifically the allegations related to the
7 Fourth and Fifth Causes of Action relate to the accused advertisement which is
8 attached as Exhibit B to the Complaint and which is replicated at page 5, lines 179 28 of the Complaint. As will be set forth in this motion, the facts alleged fail to
10 establish a viable cause of action because the alleged use of the Plaintiffs name is a
11 permitted transformative use and thus is protected by the First Amendment of the
12 United States Constitution.
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14 Authorities submitted herewith, the records and files in this case, the Request for
15 Judicial Notice filed contemporaneously herewith, and any other evidence or
16 argument offered at the time of the hearing.
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18 DATED: December 4, 2014
LLP
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By:
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LEWIS
BRISBOIS
BISGAARD
& SMITH LLP
ATTORNEYS AT LAW
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4849-1252-1760.1
DEFENDANT DULUTH HOLDINGS, INC.S NOTICE OF MOTION AND MOTION TO DISMISS THE FOURTH
AND FIFTH CAUSES OF ACTION
TABLE OF CONTENTS
Page
INTRODUCTION ............................................................................................. 1
5 II.
A.
B.
C.
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11 III.
CONCLUSION ............................................................................................... 12
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LEWIS
BRISBOIS
BISGAARD
& SMITH LLP
ATTORNEYS AT LAW
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4849-1252-1760.1
DEFENDANT DULUTH HOLDINGS, INC.S NOTICE OF MOTION AND MOTION TO DISMISS THE FOURTH
AND FIFTH CAUSES OF ACTION
TABLE OF AUTHORITIES
CASES
3 Ashcroft v. Iqbal,
556 U.S. 662 (2009) ......................................................................................... 2
4
Bd. of Trustees of the State University of New York v. Fox,
492 U.S. 469 (1989) ......................................................................................... 8
5
6 Beliveau v. Caras,
873 F.Supp. 1393 (C.D. Cal. 1995) .................................................................. 2
7
Bell Atlantic Corp. v. Twombly,
550 U.S. 544 (2007) ......................................................................................... 2
8
9 Central Hudson Gas and Electric Corp. v. Pub. Serv. Commn of New York,
447 U.S. 557 (1980) ......................................................................................... 8
10
Cervantes v. City of San Diego,
5 F.3d 1273 (9th Cir. 1993) .............................................................................. 2
11
12 City of Cincinnati v. Discovery Network, Inc.,
507 U.S. 410 (1993) ......................................................................................... 8
13
Comedy III Productions, Inc. v. Gary Saderup, Inc.
25 Cal. 4th 387(2001) ....................................................................................... 7
14
15 Conley v. Gibson,
355 U.S. 41 (1957) ........................................................................................... 2
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Eastwood v. Superior Court
149 Cal.App.3d 409 (1983) .............................................................................. 6
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18 Edgar Winter v. D.C. Comics,
30 Cal.4th 881 (2003) ..................................................................................... 10
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Hilton v. Hallmark Cards,
599 F. 3d. 894 (9th Cir. 2010) ........................................................................ 12
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21 Kirby v. Sega of America, Inc.,
144 Cal. App. 4th 47 (Cal. App. 2d Dist. 2006) .......................................... 3, 8
22
Ricky Ross v. WilliamthLeonard Roberts,
222 Cal.App.4 677 (2013) .............................................................................. 3
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LEWIS
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& SMITH LLP
ATTORNEYS AT LAW
DEFENDANT DULUTH HOLDINGS, INC.S NOTICE OF MOTION AND MOTION TO DISMISS THE FOURTH
AND FIFTH CAUSES OF ACTION
LEWIS
BRISBOIS
BISGAARD
& SMITH LLP
ATTORNEYS AT LAW
28
4849-1252-1760.1
iii
DEFENDANT DULUTH HOLDINGS, INC.S NOTICE OF MOTION AND MOTION TO DISMISS THE FOURTH
AND FIFTH CAUSES OF ACTION
2 I.
INTRODUCTION
Plaintiff contends that Duluth has violated his rights of publicity by creating
4 an advertisement with a clever pun aimed at poking fun of the fact that Don
5 Henleys name is made up of a verb and a type of shirt. This is not a violation of
6 Mr. Henleys rights of publicity, but rather is an expression of free speech which
7 uses portions of Mr. Henleys name in a transformative nature invoking the
8 protection of the First Amendment of the United States Constitution.
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First, it should be noted that while the Plaintiffs name is Don Henley, his
10 middle initial is not A but is rather H for Hugh. (See Request for Judicial
11 Notice No. 1) As such, DON A HENLEY as used in the accused advertisement is
12 therefore not a literal depiction of Plaintiffs name. Obviously, if the advertisement
13 used Mr. Henleys literal name (DON H HENLEY or DON HUGH HENLEY) the
14 advertisement would not only have lost its humor, but it would have made no sense.
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16 even Mr. Henley disputes) which is why A is used in lieu of Mr. Henleys actual
17 middle initial. The use of A, coupled with the reference to the Eagles hit Take It
18 Easy, solidifies the paradoxical and humorous nature of the advertisement. In this
19 regard, encouraging recipients of the accused advertisement to DON A HENLEY
20 and further to Take it easy is akin to saying, relax and wear an ultra comfortable
21 and casual henley shirt and it will only cost you $19.50!
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Putting aside the fact that plaintiffs literal name is not being used, it is self
23 evident that the use that was made of Mr. Henleys name was a joke intended to
24 highlight the coincidence that Mr. Henley shares his last name with a ubiquitous
25 casual shirt and that his first name means to wear. Unfortunately for Duluth, Mr.
26 Henley does not appreciate the humor and instead contends that the accused
27 advertisement violates both his common law and statutory rights of publicity.
LEWIS
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& SMITH LLP
ATTORNEYS AT LAW
28 Fortunately for Duluth, the law protects its right to engage in this very type of
4849-1252-1760.1
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DEFENDANT DULUTH HOLDINGS, INC.S NOTICE OF MOTION AND MOTION TO DISMISS THE FOURTH
AND FIFTH CAUSES OF ACTION
1 speech notwithstanding the fact that a well known recording artist is the subject of
2 that humor.
3 II.
LEGAL ANALYSIS
A.
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A motion to dismiss tests the legal sufficiency of the claim stated in the
7 complaint. Fed. R. Civ. P. 12(b)(6); Conley v. Gibson, 355 U.S. 41, 45-56 (1957).
8 To survive a motion to dismiss under Fed. R. Civ. P. 12(b)(6) a complaint must
9 contain sufficient factual matter, accepted as true, to state a claim to relief that is
10 plausible on its face. Ashcroft v. Iqbal, 556 U.S. 662 (2009). Although a
11 complaint need not include detailed factual allegations, the Plaintiff must plead
12 more than labels and conclusions or a formulaic recitation of the elements of a
13 cause of action. Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007). The
14 Court need not accept as true conclusory allegations or legal characterizations. Nor
15 need it accept unreasonable inferences or unwarranted deductions of fact. Beliveau
16 v. Caras, 873 F.Supp. 1393, 1395-1396 (C.D. Cal. 1995). In addition to the facts
17 pled, a court may rely on facts which can be judicially noticed pursuant to Federal
18 Rules of Evidence 201. Id. As such, dismissal under Fed. R. Civ. P. 12(b)(6) for
19 the failure to state a claim is proper where it is clear that no relief can be granted
20 under any set of facts that could be proven consistent with the allegations. Cervantes
21 v. City of San Diego, 5 F.3d 1273, 1274 (9th Cir. 1993).
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B.
25 defenses resolved quickly. Several points lead us to conclude that deciding the
26 effect of defendants First Amendment argument here is appropriate. First, such an
27 issue can often be resolved as a matter of law and is usually appropriate for
LEWIS
BRISBOIS
BISGAARD
& SMITH LLP
ATTORNEYS AT LAW
DEFENDANT DULUTH HOLDINGS, INC.S NOTICE OF MOTION AND MOTION TO DISMISS THE FOURTH
AND FIFTH CAUSES OF ACTION
1 Roberts, (2013) 222 Cal.App.4th 677, 684. In cases involving free speech, a speedy
2 resolution is desirable because protracted litigation may chill the exercise of First
3 Amendment rights. Kirby v. Sega, (2006) 144 Cal.App.4th 47, 54.
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Based on these standards, Defendant requests that the Court dismiss the
5 Fourth and Fifth Causes of Action because the accused advertisement and in
6 particular, the alleged wrongful use of a Plaintiffs name in the accused
7 advertisement is, as a matter of law, protected by the First Amendment as the use is
8 transformative. The applicable facts as articulated in the Complaint and Defendants
9 Request for Judicial Notice are as follows:
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BISGAARD
& SMITH LLP
ATTORNEYS AT LAW
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use Mr. Henleys name . . . and Mr. Henley did not grant the
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BRISBOIS
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LEWIS
The Eagles are one of the United States most successful bands,
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Eagles has released since 1972 has been certified platinum, three
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DEFENDANT DULUTH HOLDINGS, INC.S NOTICE OF MOTION AND MOTION TO DISMISS THE FOURTH
AND FIFTH CAUSES OF ACTION
selling album of all time in the United States with sales in excess
was the lead track on the Eagles self-titled debut album and on
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(Complaint 13)
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Given the timeless nature of the many hits by the Eagles and
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LEWIS
BRISBOIS
BISGAARD
& SMITH LLP
ATTORNEYS AT LAW
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4849-1252-1760.1
DEFENDANT DULUTH HOLDINGS, INC.S NOTICE OF MOTION AND MOTION TO DISMISS THE FOURTH
AND FIFTH CAUSES OF ACTION
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(Complaint Exhibit B)
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BRISBOIS
BISGAARD
& SMITH LLP
ATTORNEYS AT LAW
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4849-1252-1760.1
DEFENDANT DULUTH HOLDINGS, INC.S NOTICE OF MOTION AND MOTION TO DISMISS THE FOURTH
AND FIFTH CAUSES OF ACTION
C.
5 pleaded by alleging, (1) the defendant's use of the plaintiff's identity; (2) the
6 appropriation of plaintiff's name or likeness to defendant's advantage, commercially
7 or otherwise; (3) the lack of consent; and (4) resulting injury." Eastwood v. Superior
8 Court (1983) 149 Cal.App.3d. 409, 417. The statutory right of publicity is
9 somewhat narrower as it requires a knowing use and it states in relevant part:
Any person who knowingly uses anothers name, voice, signature,
photograph or likeness, in any manner or in products, merchandise, or goods,
or for purposes of advertising or selling, or soliciting purchases of, products,
merchandise, goods or services, without such persons prior consent . . . shall
be liable for any damages sustained by the person or1 persons injured as a
result thereof. California Civil Code section 3344.
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LEWIS
BRISBOIS
BISGAARD
& SMITH LLP
ATTORNEYS AT LAW
Not all knowing commercial uses of anothers name, even if that use is not
protected by the First Amendment, are actionable under the statute. Specifically, the
statute also provides: the use of a namein a commercial medium shall not
constitute a use for which consent is required under subdivision (a) solely because
the material containing such use is commercially sponsored or contains paid
advertising. Rather it shall be a question of fact whether or not the use of the
persons name, voice, signature, photograph, or likeness was so directly connected
with the commercial sponsorship or with the paid advertising as to constitute a use
for which consent is required under subdivision (a). (California Civil Code section
3344(e))
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DEFENDANT DULUTH HOLDINGS, INC.S NOTICE OF MOTION AND MOTION TO DISMISS THE FOURTH
AND FIFTH CAUSES OF ACTION
1 meaning, the appropriation of their likeness may have important uses in uninhibited
2 debates on public issues, particularly debates about culture and values. And because
3 celebrities take on personal meanings to many individuals in the society, the creative
4 appropriation of celebrity images can be an important avenue of individual
5 expression. Id.
The accused advertisement pokes fun, (arguably at Mr. Henleys expense) by
7 amusingly encouraging Duluths customer base to buy a henley shirt and relax.2
8 While Duluth, of course, (and we believe Duluths customers as well) appreciates
9 the humor employed by the accused advertisement, it is not necessary to evaluate
10 qualitatively the artistic or humorous value in the accused advertisement. In other
11 words, it doesnt matter if the accused advertisement is funny or not as the First
12 Amendment protects even inartful efforts at free speech including, we would
13 suggest, unfunny attempts at humor. Moreover, the United States Supreme Court
14 has made it clear that a work of art is protected by the First Amendment even if it
15 conveys no discernable message... Id. at 399. The California Supreme Court
16 settled on the transformative use test to assess when the First Amendment
17 trumped an individuals right of publicity.3
This inquiry into whether a work is transformative appears to us to be
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LEWIS
BRISBOIS
BISGAARD
& SMITH LLP
ATTORNEYS AT LAW
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DEFENDANT DULUTH HOLDINGS, INC.S NOTICE OF MOTION AND MOTION TO DISMISS THE FOURTH
AND FIFTH CAUSES OF ACTION
1 necessarily at the heart of any judicial attempt to square the right of publicity with
2 the First Amendment. Id. at 404. The California Supreme Court then went on to
3 explain that there must be something more than a literal use of an individuals right
4 of publicity to qualify as a transformative use protected by the First Amendment.
5 When artistic expression takes the form of a literal depiction or imitation of a
6 celebrity for commercial gain, directly trespassing on the right of publicity without
7 adding significant expression beyond that trespass, the state law interest in
8 protecting the fruits of artistic labor outweighs the expressive interests of the
9 imitative artist. Id., at 405. In summing up this concept, the California Supreme
10 Court stated:
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LEWIS
BRISBOIS
BISGAARD
& SMITH LLP
ATTORNEYS AT LAW
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DEFENDANT DULUTH HOLDINGS, INC.S NOTICE OF MOTION AND MOTION TO DISMISS THE FOURTH
AND FIFTH CAUSES OF ACTION
1 following:
1.
7 expression as long as that expression is something other than the likeness of the
8 celebrity. Professor McCarthy notes that this factor required an examination of
9 whether a likely purchasers primary motivation is to buy a reproduction of the
10 celebrity, or to buy the expressive work of that artist;
3.
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12 contribution. The court should conduct an inquiry more quantitative than qualitative
13 and ask whether the literal and imitative or the creative elements predominate in the
14 work;
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16 whether the marketability and economic value of the challenged work derive
17 primarily from the fame of the celebrity depicted;
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(J. Thomas McCarthy, The Rights of Publicity and Privacy, Section 8:72, 2nd
23 Edition 2012).
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While obviously not all the factors outlined above apply to this case
25 (principally because the challenged work here uses a name as opposed to an image)
26 applying the overall test and the factors that do apply, we would suggest, illustrates
27 that the challenged work here -the accused advertisement- is transformative. Of
LEWIS
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& SMITH LLP
ATTORNEYS AT LAW
28 significance, the artistic elements outweigh the literal elements. The accused
4849-1252-1760.1
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DEFENDANT DULUTH HOLDINGS, INC.S NOTICE OF MOTION AND MOTION TO DISMISS THE FOURTH
AND FIFTH CAUSES OF ACTION
Consistent with the above, in a subsequent case the California Supreme Court
Further, that Mr. Henleys first name means to wear and that Duluth created
27 an advertisement that incorporates that amusing fact in a way that plays off of Mr.
LEWIS
BRISBOIS
BISGAARD
& SMITH LLP
ATTORNEYS AT LAW
28 Henleys name is exactly the type of creative element that supports the
4849-1252-1760.1
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DEFENDANT DULUTH HOLDINGS, INC.S NOTICE OF MOTION AND MOTION TO DISMISS THE FOURTH
AND FIFTH CAUSES OF ACTION
1 transformative use test.4 Duluth sells clothing, including henley shirts. Duluth then
2 identified that this clever juxtaposition could be made in a humorous manner to
3 impart upon the viewer of the advertisement, not that Mr. Henley was somehow
4 endorsing a $19.50 shirt, but rather that Duluth is a funny company and is selling a
5 $19.50 shirt. There is no literal depiction of Mr. Henley either via image or even
6 name as Duluth specifically does not use his actual middle initial H because to do
7 so would completely undermine the humor and indeed the very point of the accused
8 advertisement. Duluth combined the synonymous and mixed nature of Mr.
9 Henleys name into an amusing advertisement that constitutes a protected
10 transformative use.
In the final analysis, it must be kept at the forefront that the right of publicity
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12 is not absolute and that it is essentially an economic right. What the right of
13 publicity holder possesses is not a right of censorship, but a right to prevent others
14 from misappropriating the economic value generated by the celebritys fame
15 through the merchandising of the name, voice, signature, photograph or likeness of
16 the celebrity. Winter, supra at 890. Duluth is not merchandising Mr. Henleys
17 name -quite the contrary- it is making a joke and Duluths right to make a joke at
18 Mr. Henleys expense (whether that joke is funny or not) must be protected under
19 the First Amendment. While it is ultimately a question of fact whether the accused
20 advertisement trespasses on Mr. Henleys rights of publicity5, we suggest that all of
21 the facts necessary for the court to conclude the issue in Duluths favor are before
22 the court now. We submit that there is no means to interpret the accused
23 advertisement as interfering with the type of economic interest protected by right of
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LEWIS
BRISBOIS
BISGAARD
& SMITH LLP
ATTORNEYS AT LAW
Would Neal Diamond have a basis to complain if a jewelry company invoked his
25 name in a humorous advertisement that encouraged diamond shoppers to remember
to kneel when proposing? Would Donna Summer have cause to complain if a
26 clothier invoked her name in an advertisement somehow pitching summer dresses
(don a summer dress this year)?
27 5
Hilton v. Hallmark Cards, 599 F. 3d. 894, 910 (9th Cir. 2010).
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DEFENDANT DULUTH HOLDINGS, INC.S NOTICE OF MOTION AND MOTION TO DISMISS THE FOURTH
AND FIFTH CAUSES OF ACTION
1 publicity, whether under the common law or the statutory right. The accused
2 advertisement is not an endorsement by Don H. Henley, but rather it is an
3 advertisement that is infused with Duluths own humorous and artistic expression of
4 the incongruent notion that a well known American musician shares his last name
5 with a casual shirt.
6 III.
CONCLUSION
For the above referenced reasons, Duluth respectfully requests that the court
8 dismiss without leave to amend, Plaintiffs fourth and fifth causes of action.
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10 DATED: December 4, 2014
LLP
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By:
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LEWIS
BRISBOIS
BISGAARD
& SMITH LLP
ATTORNEYS AT LAW
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DEFENDANT DULUTH HOLDINGS, INC.S NOTICE OF MOTION AND MOTION TO DISMISS THE FOURTH
AND FIFTH CAUSES OF ACTION