Latest battle in the War of the Roses almost results in English defeat in Texas

Things are not looking rosy for some Texan nurseries after the latest ruling in David Austin Roses Ltd. v. GCM Ranch LLC. The US District Court for the Northern District of Texas (Dallas Division) delivered its opinion and order on 28 January 2025. The Court found deficiencies in the plaintiff's pleadings for willful plant patent infringement and granted the motion to dismiss, but also gave the plaintiff the opportunity to amend its claim. The Court also found that the claims under the Lanham Act for trademark infringement, false designation of origin, and unfair competition could proceed. 

Background

Photo of 'Auslevity' rose (US
Plant Patent No. 26,365), also
known as BEATRICE®
David Austin Roses Ltd is a major British rose breeding company. The varieties bred by David Austin (1926–2018) are known as "English Roses" and have a strong global reputation. The company was established in the 1960s, around the same time as plant variety rights (PVRs) became available in the UK. The company obtains protection for its roses around the world, including under the US Plant Patent Act.

Like many breeding companies, David Austin Roses uses an intellectual property strategy that combines PVRs or plant patents with trademark protection (see previous discussion of this strategy here and here). To obtain PVRs and plant patents, the company must give its roses a generic name (called the "variety denomination"). As is typical amongst rose breeders, the denominations for David Austin's roses are prefixed by a three-letter abbreviation of his last name, "Aus". 

The company sells its roses under trademarks that are different from the variety denominations and has often registered these trademarks. For example, the 'Auspastor' rose variety (PP 19,254) is sold under the trademark PATIENCE® (Reg. No. 4821251).

In 2024, David Austin Roses initiated litigation against GCM Ranch LLC (and a few other defendants) for willful patent infringement of nine plant patents, trademark infringement, and other claims under the Lanham Act. The defendants were all based in Texas, and operated nursery and garden businesses that sold plants online using their own websites, Etsy, and social media.  

Patent infringement claim nearly outflanked on a technicality

David Austin Roses did not sufficiently plead all the elements for plant patent infringement, so the Court granted GCM Ranch's motion to dismiss. David Austin Roses plausibly alleged that GCM Ranch knew of the nine patents at issue: since David Austin Roses marks every patented rose it sells with the variety’s patent number, GCM Ranch received notice that the varieties were protected by patents.

However, the pleadings were insufficient on the issue of asexual reproduction (35 USC § 163). It was not enough to use photos demonstrating the resemblance between the roses sold by GCM Ranch and the patented varieties. David Austin Roses failed to provide any "factual allegations to explain how Defendants have produced an infringing plant that is an asexual reproduction." For example, they might have alleged that the roses were asexually reproduced through grafting, budding, or layering.

The photos and screenshots from the complaint were insufficient alone to allege plant patent infringement 

On this basis, the Court granted GCM Ranch’s motion to dismiss. But since the deficiencies in the pleadings were curable, justice required that the Court grant David Austin Roses leave to amend its willful patent infringement claim within 21 days.

Trademark infringement claim can proceed

The evidence submitted with the complaint showed that one of GCM Ranch's customers left a review that included a picture of the roses the customer purchased, which were delivered in packaging labelled with the names "Beatrice," "Miranda," and "Patience." David Austin Roses had registered trademarks for each of these three names in respect of "Live rose plants; and cut rose flowers."

GCM Ranch argued that there would be no consumer confusion because the websites "conspicuously" indicated that GCM Ranch was the seller. However, the Court found that it was still plausible that the use of the names would confuse consumers because the exact same names were being used to sell the exact same product. Therefore, the motion to dismiss was denied and David Austin Roses can proceed with its claims under the Lanham Act.

Final Thoughts

To bastardise Sun Tzu, "If you know the law and know civil procedure, you need not fear the result of a hundred battles. If you know the law but not civil procedure, for every victory gained you will also suffer a defeat. If you know neither the law nor civil procedure, you will succumb in every battle."

This is not the first time that a plant patent infringement claim has failed to set out the factual allegations in the pleadings: the same issue arose in 2021 during the Driscoll's Inc. v. California Berry Cultivars, LLC  litigation. It's not sufficient to make vague allegations of asexual reproduction, importation, or use of the protected variety. Plaintiffs need to provide factual evidence of how the allegedly infringing plants were actually derived from the patented plant, or they risk having their claims dismissed.

Hopefully plant patent owners (and their lawyers) will finally learn this important procedural lesson.

Latest battle in the War of the Roses almost results in English defeat in Texas Latest battle in the War of the Roses almost results in English defeat in Texas Reviewed by Jocelyn Bosse on Sunday, February 02, 2025 Rating: 5

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