`
`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
`
` WILLIAMS-SONOMA, INC.,
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`
`
`Plaintiff,
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`
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`v.
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`WAYFAIR INC.,
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`Defendant.
`
`Civil Action
`No. 1:21-12063-PBS
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`
`
`
`Saris, D.J.
`
`MEMORANDUM AND ORDER
`
`January 24, 2022
`
`
`INTRODUCTION
`
`Plaintiff Williams-Sonoma, Inc. (“WSI”) alleges that Defendant
`Wayfair, Inc. (“Wayfair”) “deliberately infringes the intellectual
`property of WSI and unlawfully imitates the West Elm Brand,” in violation
`of federal, Massachusetts, and California state law. WSI states thirteen
`causes of action: infringement of nine separate patents in violation of
`35 U.S.C. § 271 (Count I-IX), false advertising in violation of Section
`43 of 15 U.S.C. § 1125 (“Lanham Act”) (Count X), unfair competition in
`violation of Mass. Gen. Laws ch. 93A (Count XI), unfair competition in
`violation of California Business & Professions Code § 17200, et seq. (Count
`XII), and false advertising in violation of California Business &
`Professions Code § 17500, et seq. (Count XIII). Wayfair moves to dismiss
`Plaintiff’s false advertising (Counts X and XIII) and unfair competition
`claims (Counts XI and XII) (Dkt. 10).
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`[1]
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`After hearing, the Court ALLOWS the motion to dismiss as to the Lanham
`Act claim (Count X) and the California state law claims for lack of
`standing (Count XII and XIII) and DENIES the motion to dismiss the Mass.
`G. L. ch. 93A claim (Count XI).
`FACTUAL BACKGROUND
`The Complaint alleges the following facts.
`A.
`The Parties
`Plaintiff WSI is a Delaware corporation with a principal place of
`business in San Francisco, California. West Elm is one of several brands
`owned by WSI and has a principal place of business in Brooklyn, New York.
`West Elm designs and develops products, furniture, lighting, and
`collections.
`Defendant Wayfair is a company incorporated in Delaware with a
`principal place of business in Boston, Massachusetts. Defendant promotes
`and sells goods in Massachusetts, including the goods at issue here.
`B.
`The Designs and Products
`
`WSI retains an “extensive design patent portfolio” within its several
`brands, including West Elm. Dkt. 73 ¶ 22, at 12. WSI was granted nine
`design patents for various West Elm designs, including chairs, lamps,
`tables, and nightstands. WSI alleges that Wayfair offers “products that
`are identical or virtually identical” to WSI’s products, including some
`offered under Wayfair’s Foundstone collection (“Foundstone”). Id. ¶ 41,
`at 20. WSI claims that “Wayfair has made, marketed, offered for sale, and
`sold numerous products which infringe WSI’s design patent rights and are
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`[2]
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`so highly similar to West Elm’s patented products that an ordinary observer
`would be confused by the imitation.” Id. ¶ 3, at 2. WSI offers numerous
`side-by-side comparisons of those similar products in its Complaint; one
`such example is copied below.
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`West Elm Product
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`West Elm Patent
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`Infringing Wayfair
`Product
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`False Advertising Allegations
`C.
`In a video advertisement for Foundstone, Wayfair included images of
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`a designer sketching products, which WSI claims would lead consumers to
`believe that Wayfair designed the products copied from Plaintiff’s
`patented designs. Multiple third parties have noted the similar nature
`of Wayfair’s and WSI’s products. One website referred to Wayfair’s
`products as “look-alikes” of WSI’s designs. Id. ¶ 46, at 27. Other
`websites described Foundstone as “identical” or “mirroring” West Elm, a
`“West-Elm-Inspired Collection,” and that it “could easily be confused for
`West Elm. Again, it’s not a knock-off, but it’s fair to call it a dead
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`[3]
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`ringer.” Id. ¶ 47, at 27-28.
`
` WSI also describes Wayfair’s alleged misleading promotion of the
`alleged copied products. On its website, Wayfair states that products
`from Foundstone are available “only at Wayfair.” Id. ¶¶ 51, 60, at 28,
`32. Similarly, on Wayfair’s Instagram page, the company referred to
`Foundstone as “a Wayfair exclusive collection.” Id. ¶ 52, at 28. Finally,
`another webpage described Wayfair’s products, including two disputed
`chairs, as “looks you’ll only find at Wayfair.” Id. ¶ 54, at 29.
`LEGAL STANDARD
`
`Rule 12(b)(6)
`A.
`To survive a motion to dismiss, a complaint must allege “a plausible
`entitlement to relief.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 559
`(2007). “While a complaint attacked by a Rule 12(b)(6) motion does not
`need detailed factual allegations, 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 a cause of action’s elements
`will not do.” Id. at 555; see also Rodriguez Ortiz v. Margo Caribe, Inc.,
`490 F.3d 92, 95-96 (1st Cir. 2007). The plausibility standard requires
`the Court to approach the motion in two steps. First, the Court must
`“separate the complaint’s factual allegations (which must be accepted as
`true) from its conclusory legal allegations (which need not be credited).”
`Morales-Cruz v. Univ. of P.R., 676 F.3d 220, 224 (1st Cir. 2012). The
`Court must then determine whether the factual allegations allow it “to
`draw the reasonable inference that the defendant is liable for the
`misconduct alleged.” Id. (quoting Ashcroft v. Iqbal, 556 U.S. 662, 678
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`[4]
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`(2009)).
`Rule 9(b)
`B.
`Wayfair argues WSI must also meet the “heightened pleading standard”
`of Federal Rule of Civil Procedure 9(b) because its complaint alleges
`“fraudulent statements” or “willful misrepresentation or deceit.” Dkt.
`11 at 6 (citing Hadley v. Kellogg Sales Co., 243 F. Supp. 3d 1074, 1090
`(N.D. Cal. 2017); Bezdek v. Vibram USA Inc., 2013 WL 639145, at *3 n.3 (D.
`Mass. Feb. 20, 2013)).
`Under Rule 9(b), a plaintiff must state with particularity “the who,
`what, where, and when of the allegedly [false or misleading]
`representation.” Kaufman v. CVS Caremark Corp., 836 F.3d 88, 91 (1st Cir.
`2016) (quoting Alt. Sys. Concepts, Inc. v. Synopsys, Inc., 374 F.3d 23,
`29 (1st Cir. 2004)). While the First Circuit has not addressed whether
`Rule 9(b) applies to a Lanham Act false advertising claim, Pegasystems,
`Inc. v. Appian Corp., 424 F. Supp. 3d 214, 221 (D. Mass. 2019), it has
`presumed that Rule 9(b) applies in Chapter 93A claims involving fraud.
`See Dumont v. Reily Foods Co., 934 F.3d 35, 38-39 (1st Cir. 2019)
`(involving claimant that presumed her 93A claim must meet 9(b) standard);
`Mulder v. Kohl’s Dep’t Stores, Inc., 865 F.3d 17, 21-22 (1st Cir. 2017)
`(applying 9(b) standard where false advertising claim under 93A involved
`"core allegations [that] effectively charge fraud”) (internal quotation
`omitted).
`Consistent with this caselaw, the Court concludes that WSI must meet
`the heightened pleading standard of Rule 9(b). It has met this burden for
`the claims of fraudulent statements and false statements. WSI has pleaded
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`[5]
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`the “who” (Wayfair and its subsidiaries), “what” (statements about the
`origin and exclusive availability of the products at issue), “where”
`(Wayfair’s website and social media), and “when” (within the last two
`years and up to today) of the allegedly fraudulent statements. Kaufman,
`836 F.3d at 91. Now the Court addresses whether there is a plausible claim
`of false advertising under the Lanham Act and State Law.
`
`
`ANALYSIS
`Lanham Act False Advertising Claim
`A.
`WSI alleges that Wayfair is liable for false advertising in violation
`of Section 43 of the Lanham Act. WSI argues that “Wayfair’s factual
`statements regarding the origin of its designs or that its products are
`‘only at Wayfair,’ ‘exclusive’ to Wayfair or ‘looks you’ll only find at
`Wayfair’ constitute false or misleading representations.” Dkt. 73 ¶ 151,
`at 45. In WSI’s view, these “false and misleading representations are
`material because they are likely to influence the purchasing decisions of
`the target consumers” and they “have a tendency to deceive target
`consumers.” Id. ¶¶ 155-56, at 45. The Lanham Act prohibits “commercial
`advertising or promotion” that “misrepresents the nature, characteristics,
`[or] qualities” of a product. 15 U.S.C. § 1125(a)(1)(B). To prevail on a
`claim brought under that section, a plaintiff must prove:
`(1) the defendant made a false or misleading description of fact
`or representation of fact in a commercial advertisement about
`[its] own or another’s product; (2) the misrepresentation is
`material, in that it is likely to influence the purchasing
`decision; (3) the misrepresentation actually deceives or has the
`tendency to deceive a substantial segment of its audience; (4)
`the defendant placed the false or misleading statement in
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`[6]
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`interstate commerce; and (5) the plaintiff has been or is likely
`to be injured as a result of the misrepresentation, either by
`direct diversion of sales or by a lessening of goodwill
`associated with its products.
`
`Cashmere & Camel Hair Mfrs. Inst. v. Saks Fifth Ave., 284 F.3d 302, 310–
`11 (1st Cir. 2002).
`A defendant can be liable under the Lanham Act both for claims that
`are “literally false” and those that are “true . . . [yet] misleading.”
`Clorox Co. P.R. v. Proctor & Gamble Commercial Co., 228 F.3d 24, 33 (1st
`Cir. 2000). A literally false claim can be made “either explicitly or by
`necessary implication.” Id. at 35. A claim is “conveyed by necessary
`implication when, considering the advertisement in its entirety, the
`audience would recognize the claim as readily as if it had been explicitly
`stated.” Id. “Commercial claims that are implicit, attenuated, or merely
`suggestive usually cannot fairly be characterized as literally false,”
`though such claims may still be misleading. Id. (citation omitted).
`The Lanham Act claim turns on three disputed phrases: “only at
`Wayfair,” “exclusive,” and “looks you’ll only find at Wayfair.” Dkt. 73
`¶ 151, at 45. Wayfair contends that these statements (i) are true, (ii)
`do not mislead customers, and alternatively (iii) are mere puffery.
`Moreover, Wayfair avers that these phrases cannot be read in isolation,
`as WSI focuses on the products, when the phrases read in the entirety of
`the advertisement, Wayfair contends, focus on the collections.
`This distinction matters because if a challenged claim is “literally
`false,” the third element of consumer deception is presumed. Clorox, 228
`F.3d at 33. Consumer deception is also presumed if a statement is merely
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`[7]
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`misleading, but “there is evidence that defendants intentionally deceived
`the consuming public.” Cashmere, 284 F.3d at 311 n.8. Otherwise, the
`plaintiff must “show how consumers have actually reacted to the challenged
`advertisement rather than merely demonstrating how they could have
`reacted.” Clorox, 228 F.3d at 33.
`Wayfair is correct that “context is crucial.” Fink v. Time Warner
`Cable, 714 F.3d 739, 742 (2d Cir. 2013); id. (“A plaintiff who alleges
`that he was deceived by an advertisement may not misquote or misleadingly
`excerpt the language of the advertisement in his pleadings and expect his
`action to survive a motion to dismiss or, indeed, to escape
`admonishment.”). Therefore, here are the three statements in full:
` “Foundstone” followed by the text “Only at Wayfair.”
` Wayfair’s “exclusive brands team has been hard at work on
`Foundstone a Wayfair-exclusive collection of attainable and
`updated mid-century furniture and décor.”
` Wayfair’s “hand-curated collections are filled with the best in
`popular pieces, timeless designs, and looks you’ll find only at
`Wayfair—all at prices that fit your budget.”
`Dkt. 11 at 15.
`Wayfair contends that certain brands and collections, such as
`Foundstone, “are available only at Wayfair,” and therefore none of these
`statements are false. Id. Because WSI has alleged that products within
`these collections are infringing, WSI responds that they cannot be said
`to be available only at Wayfair. WSI alleges that “Wayfair’s statements
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`[8]
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`mislead consumers as to the origin of their designs as well as where such
`designs are available for sale.” Dkt. 22 at 17.
`Wayfair makes a persuasive argument that the argument that there is
`false advertising with respect to the origin of the products is
`precluded by Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S.
`23 (2003). Dastar explained that the phrase “‘origin of goods’ in the
`Lanham Act referred to the producer of the [goods], and not the producer
`of the (potentially) copyrightable or patentable designs that the
`[goods] embodied.” 539 U.S. at 37. Therefore, to have a viable claim
`regarding the goods’ origin, the plaintiff must allege that the
`defendant did not manufacture the goods in question. “As Dastar makes
`plain, an entity makes a false designation of origin sufficient to
`support a reverse passing off claim only where it falsely represents the
`product’s geographic origin or represents that it has manufactured the
`tangible product that is sold in the marketplace when it did not in fact
`do so.” Kehoe Component Sales Inc. v. Best Lighting Prods., Inc., 796
`F.3d 576, 587 (6th Cir. 2015). The First Circuit noted in Zyla v.
`Wadsworth, Div. of Thomson Corp., that “[t]he Court in Dastar left open
`the possibility that some false authorship claims could be vindicated
`under the auspices of § 43(a)(1)(B)’s prohibition on false advertising.”
`360 F.3d 243, 252 n.8 (1st Cir. 2004). In that case, the plaintiff had
`not shown that the disputed text was “commercial advertising or
`promotion.” Id. In Photographic Illustrators Corp. v. Orgill, Inc.,
`118 F. Supp. 3d 398, 411 (D. Mass. 2015), this Court rejected attempts
`to “slot [plaintiff’s] claim into Section 43(a)(1)(B) of the Lanham Act,
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`[9]
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`which prohibits the misrepresentation of the ‘nature, characteristics,
`qualities, or geographic origin of . . . goods’ in connection with
`‘commercial advertising or promotion.’” Id. at 411 (quoting 15 U.S.C.
`1125(a)(1)(B)). This Court explained that “[w]hile the First Circuit
`has noted that Dastar ‘left open the possibility that some false
`authorship claims could be vindicated’ under subsection (B), it did not
`resolve that question, and other courts have held that authorship does
`not constitute part of the nature, characteristics, or qualities of a
`good for sale.” Id. (internal citation omitted).
`The Sixth Circuit addressed both false authorship and false
`advertising in Kehoe. For false authorship, the court held that “a
`manufacturer does not falsely designate a product’s origin under the
`Lanham Act if it makes an exact replica of someone else’s item and
`labels the item as its own.” Kehoe, 796 F.3d at 589. “The right
`question . . . is whether the consumer knows who has produced the
`finished product even if most of the product’s economic value came from
`elsewhere.” Id. With respect to the false advertising claim, the Sixth
`Circuit reversed the district court:
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`The district court did not find that Pace made any false
`representation about the characteristics of the cloned products
`themselves; it found that Pace’s advertisements were false only
`because they represented that Pace, rather than Best, was the
`intellectual origin of the products. Because § 1125(a)(1)(B)
`does not impose liability for misrepresenting the intellectual
`progenitor of a tangible product, the district court erred in
`finding that Pace’s conduct violated the statute.
`
`Kehoe, 796 F.3d at 590. Misrepresentations are only actionable under
`the false advertising prong if the advertising “misrepresents the
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`[10]
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`‘characteristics of the good itself’—-such as its properties or
`capabilities.” Id. Therefore, to the extent WSI alleges false
`advertising based on the origin of the furniture designs, the claim
`fails.
`
`WSI also alleges that Wayfair’s advertisements are misleading
`because they mislead consumers as to where the products are available
`for sale. Specifically, WSI alleges that the statement “looks you’ll
`only find at Wayfair” is literally false because nearly identical or
`identical pieces can be found at West Elm. Dkt. 73 ¶ 54, at 29.
`Wayfair argues that the statement is true because pieces, designs, and
`looks refer to a collection as a whole, which can only be found at
`Wayfair.
`Additionally, Wayfair states that its “exclusive brands team has been
`hard at work on Foundstone, a Wayfair-exclusive collection of attainable
`and updated mid-century furniture and décor.” Dkt. 11 at 15. Wayfair
`argues that the Foundstone brand is exclusive to Wayfair, and therefore
`the statements are not literally false. Id. Though the brands may contain
`infringing products, that brand, that collection, is only available at
`Wayfair. The third allegedly false statement to “Foundstone” followed by
`the text “only at Wayfair” that statement is not literally false because
`the Foundstone brand is only at Wayfair. Dkt. 11 at 9-10.
`The court need not resolve these disputes because Wayfair’s
`statements do not relate to the properties, capabilities, or
`characteristics of the goods. These statements of exclusivity more
`closely relate to misrepresentations about the origin of goods and are
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`[11]
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`not cognizable under Section 43(a)(1)(B). See Baden Sports, Inc. v.
`Molten USA, Inc., 556 F.3d 1300, 1308 (Fed. Cir. 2009) (holding false
`advertising claims regarding “origin of an idea” not actionable under
`Section 43(a)(1)(B) as claims do not relate to “nature, characteristics,
`[or] qualities” of goods).
`Accordingly, the Court dismisses the Lanham Act False Advertising
`claim.
`B. Massachusetts Chapter 93A Claims
`In addition to alleging false advertising as a violation of Chapter
`
`93A, which declares unlawful “[u]nfair methods of competition and unfair
`or deceptive acts or practices in the conduct of any trade or commerce.”
`Mass. Gen. Laws ch. 93A § 2(a). WSI points to several unfair acts and
`practices, such as holding those designs out as Wayfair’s own and
`freeriding of WSI’s goodwill and advertising. Courts have held that a
`plausible Lanham Act claim also states a Chapter 93A claim. However, a
`Chapter 93A claim can survive even if Dastar precludes a Lanham Act claim.
`Therefore, the motion to dismiss the 93A claim is DENIED without prejudice.
`C. California UCL and FAL Claims
`WSI pleads actions under California Unfair Competition Law (“UCL”)
`and False Advertising Law (“FAL”). Claims under these statutes are
`reviewed under the same standard. See Williams v. Gerber Prods. Co.,
`552 F.3d 934, 938 (9th Cir. 2008) (noting that any violation of
`California FAL “necessarily violates” the UCL) (quoting Kasky v. Nike,
`Inc., 45 P.3d 243, 250 (Cal. 2002)). In part, California’s UCL prohibits
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`[12]
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`any “unlawful, unfair or fraudulent business act or practice.” Cal.
`Bus. and Prof. Code § 17200. California’s FAL prohibits any “untrue or
`misleading” statements. Cal. Bus. and Prof. Code § 17500. The Court
`must apply a “reasonable consumer” test, in which WSI must “show that
`members of the public are likely to be deceived.” Freeman v. Time,
`Inc., 68 F.3d 285, 289 (9th Cir. 1995) (internal quotation omitted).
`Wayfair argues that WSI lacks standing to bring these California
`claims. The parties, and federal courts in California, disagree as to
`whether a plaintiff who competes with the defendant must allege reliance
`on a defendant’s false or misleading statements to state a claim. In
`Kwikset Corp. v. Superior Ct., 246 P.3d 877, 888 (Cal. 2011), the
`California Supreme Court held that consumer plaintiffs “must demonstrate
`actual reliance on the allegedly deceptive or misleading statements, in
`accordance with well-settled principles regarding the element of
`reliance in ordinary fraud actions.” Id. at 888. Since Kwikset,
`district courts have disagreed over whether to apply Kwikset’s reliance
`requirement for competitor claims. “A majority of courts have concluded
`that competitor plaintiffs must allege their own reliance on the alleged
`misrepresentations, while a minority do not read Kwikset and Proposition
`64 as reaching competitor claims.” Millennium Dental Techs. Inc. v.
`Terry, No. SACV180348DOCKESX, 2018 WL 5094965, at *15 (C.D. Cal. July
`16, 2018) (citing L.A. Taxi Coop. v. Uber Techs., Inc., 114 F. Supp. 3d
`852, 866-67 (N.D. Cal. 2015); L.A. Taxi Coop., 114 F. Supp. 3d at 866
`(“Federal Courts sitting in California have disagreed . . . about
`whether competitor plaintiffs must plead their own reliance, or whether
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`pleading customer reliance is sufficient for fraudulent business
`practices claims brought by competitors.”)). Others have explained that
`“applying Kwikset’s reliance requirement to competitor claims . . .
`makes little sense” as “imposing the reliance requirement on competitor
`claims would impose a superficial hurdle on competitor plaintiffs
`seeking to stop or recover for damages caused by their competitor’s
`false advertising.” Allergan USA Inc. v. Imprimis Pharmaceuticals, No.
`SA CV 17-1551-DOC (JDEx), 2017 WL 10526121, at *13 (C.D. Cal. Nov. 14,
`2017).
`While the case law is mixed, I adopt the majority view that extends
`Kwikset to competitor claims and dismiss the UCL and FAL claims.
`D. CONCLUSION
`For the reasons explained above, I ALLOW the Defendant’s Motion to
`Dismiss (Dkt. 10) as to the Lanham Act claim (Count X) and the California
`state law claims (Count XII and XIII) and DENY the partial motion to
`dismiss as to the Mass. G. L. ch. 93A claim (Count XI).
`
`SO ORDERED.
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`/s/ PATTI B. SARIS
`Hon. Patti B. Saris
`United States District Judge
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`[14]
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