Gibson Guitar Corp v. Viacom International Inc et al
Filing
24
ORDER GRANTING VIACOM INTERNATIONAL MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM by Judge Dean D. Pregerson: The court finds that the Complaint in its current form fails to state a claim for relief. The motion to dismiss under Rule12(b)(6) is GRANTED with leave to amend. Any amendment must be made within ten days of the date of this order. (lc). Modified on 3/8/2013. (lc).
1
2
O
3
4
NO JS-6
5
6
7
8
UNITED STATES DISTRICT COURT
9
CENTRAL DISTRICT OF CALIFORNIA
10
11
GIBSON GUITAR CORP., a
Delaware corporation,
12
Plaintiff,
13
v.
14
15
16
VIACOM INTERNATIONAL INC., a
Delaware corporation; JOHN
HORNBY SKEWES & CO., LTD., a
United Kingdom corporation,
17
18
19
Defendants.
___________________________
)
)
)
)
)
)
)
)
)
)
)
)
)
)
)
Case No. CV 12-10870 DDP (AJWx)
ORDER GRANTING MOTION TO DISMISS
FOR FAILURE TO STATE A CLAIM
[Dkt. No. 13]
Presently before the court is Defendant Viacom International
20
Inc. (“Viacom”)’s Motion to Dismiss Case for Lack of Subject Matter
21
Jurisdiction and, in the Alternative, for Failure to State a Claim
22
on Which Relief May Be Granted.
23
submissions, the court adopts the following order.
24
I. BACKGROUND
25
Having considered the parties’
Plaintiff Gibson Guitar Corporation (“Gibson”) owns trademarks
26
to the Flying V Body Shape Design Trademark, the Flying V Peg-Head
27
Design Trademark, and the word mark FLYING V.
28
Defendant Viacom is a Delaware corporation that owns trademarks for
(Compl. ¶ 2.)
1
SPONGEBOB SQUAREPANTS.
2
Co. Ltd. (“JHS”) is a United Kingdom corporation that promotes and
3
sells various products using the SPONGEBOB trademarks.
4
Gibson alleges that Defendants “are or have been advertising and
5
selling” products using the Flying V trademark.
6
particular, Gibson is concerned with the SpongeBob SquarePants
7
Flying V Ukulele (the “Ukulele”).
8
(Id. ¶ 6.)
Defendant John Hornby Skewes &
(Id. ¶ 7.)
(Id. ¶ 24.)
In
(Id. ¶ 22, Exh. D.)
Gibson asserts claims for trademark infringement,
9
counterfeiting, false designation of origin, false descriptions of
10
fact and representations and false advertising, trademark dilution,
11
trade dress infringement, and contributory infringement under
12
federal law, analogous state law claims, and accounting.
13
II. LEGAL STANDARD AND DISCUSSION
14
A. Subject Matter Jurisdiction
15
Viacom moves to dismiss the Complaint for lack of subject
16
matter jurisdiction under Rule 12(b)(1).
17
jurisdictional issue is inextricable from the merits of a case, the
18
court may determine jurisdiction on a motion to dismiss for lack of
19
jurisdiction under Rule 12(b)(1).”
20
685 (9th Cir. 2009).
21
under 12(b)(1) either on the face of the pleadings or with
22
reference to extrinsic evidence.
23
Inc., 38 F.3d 1136, 1139 (9th Cir. 2003).
24
jurisdiction is challenged, the party asserting jurisdiction bears
25
the burden of proving its existence.
26
“Unless the
Robinson v. U.S., 586 F.3d 683,
A party may raise a jurisdictional challenge
Warren v. Fox Family Worldwide,
Where subject matter
Robinson, 586 F.3d at 685.
Viacom makes a factual challenge to subject matter
27
jurisdiction and argues that it has presented evidence of a lack of
28
jurisdiction that Gibson has failed to rebut.
2
Viacom presents the
1
license agreement between itself and JHS indicating that it
2
licensed SPONGEBOB to JHS for character-identified musical items
3
for use in certain countries but not in the United States.
4
Ashley Holman, Exh. A.)
5
(Decl.
A Rule 12(b)(1) dismissal is not appropriate when “the
6
jurisdictional issue and substantive issues are so intertwined that
7
the question of jurisdiction is dependent on the resolution of
8
factual issues going to the merits.”
9
Meyer, 373 F.3d 1035, 1039-40 (9th Cir. 2004)(internal citation and
Safe Air for Everyone v.
10
quotation marks omitted).
11
merits of an action are intertwined where a statute provides the
12
basis for both the subject matter jurisdiction of the federal court
13
and the plaintiff's substantive claim for relief.”
14
citation and quotation marks omitted).
15
the court lacks subject matter jurisdiction because there has been
16
no use of the mark in commerce.
17
found in the Lanham Act, in the same provision that provides
18
Gibson’s cause of action.
19
without the consent of the registrant . . . use in commerce any
20
reproduction, counterfeit, copy, etc. of a registered mark . . .
21
shall be liable in a civil action . . . .”).
22
“The question of jurisdiction and the
Id. (internal
Here, Viacom asserts that
This jurisdictional requirement is
15 U.S.C. § 1114 (“Any person who shall,
The court therefore finds that the question of jurisdiction
23
and merits are intertwined and that it is not appropriate to
24
dismiss the case for lack of subject matter jurisdiction.
25
B. Failure to State a Claim
26
Viacom also argues under Rule 12(b)(6) that Gibson failed to
27
state a claim for use of the mark in U.S. commerce or for
28
infringing activity by Viacom.
A complaint will survive a motion
3
1
to dismiss under Rule 12(b)(6) when it contains "sufficient factual
2
matter, accepted as true, to state a claim to relief that is
3
plausible on its face." Ashcroft v. Iqbal, 556 U.S. 662, 663 (2009)
4
(quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)).
5
When considering a Rule 12(b)(6) motion, a court must "accept as
6
true all allegations of material fact and must construe those facts
7
in the light most favorable to the plaintiff."
8
213 F.3d 443, 447 (9th Cir. 2000).
9
include "detailed factual allegations," it must offer "more than an
Resnick v. Hayes,
Although a complaint need not
10
unadorned, the-defendant-unlawfully-harmed-me accusation."
11
556 U.S. at 678.
12
more than a statement of a legal conclusion "are not entitled to
13
the assumption of truth."
14
that merely offers "labels and conclusions," a "formulaic
15
recitation of the elements," or "naked assertions" will not be
16
sufficient to state a claim upon which relief can be granted.
17
at 678 (citations and internal quotation marks omitted).
18
Iqbal,
Conclusory allegations or allegations that are no
Id. at 679.
In other words, a pleading
Id.
"When there are well-pleaded factual allegations, a court
19
should assume their veracity and then determine whether they
20
plausibly give rise to an entitlement of relief." Id. at 664.
21
Plaintiffs must allege "plausible grounds to infer" that their
22
claims rise "above the speculative level."
23
555-56. "Determining whether a complaint states a plausible claim
24
for relief" is a "context-specific" task, "requiring the reviewing
25
court to draw on its judicial experience and common sense."
26
556 U.S. at 663-64.
27
Twombly, 550 U.S. at
The complaint makes the following allegations:
28
4
Iqbal,
1
7. Upon information and belief, Defendant JHS is
2
engaged in the promotion and sale of various products
3
containing the above listed Viacom trademarks in the
4
U.S., including in this District, through their business,
5
catalogs, distributors and website at www.jhs.co.uk.
6
11. This action arises out of wrongful acts
7
including: advertising, offering for sale, selling and
8
distributing products by Defendants within this judicial
9
district.
10
21.
Upon information and belief, Defendants offer
11
for sale and sell products using the Flying V Body Shape
12
Design® Trademark, Flying V Peg-Head Design® Trademark
13
and the word mark FLYING V® (“Defendants’ Unauthorized
14
Products.”).
15
22. Upon information and belief, notwithstanding the
16
lack of authorization from Gibson and the fact that said
17
Defendants’ Unauthorized Products otherwise are not
18
authorized to be sold utilizing the Gibson Trademarks,
19
Defendants have made repeated unauthorized use of the
20
Trademark in connection with said products, as described
21
below, with the intent to mislead and confuse consumers
22
into believing that said Defendants’ Unauthorized
23
Products are made directly by Gibson pursuant to Gibson’s
24
strict quality control standards or that said Defendants’
25
Unauthorized Products are otherwise authorized or
26
licensed by Gibson and with the intent of
27
misappropriating, for their own benefits, the tremendous
28
goodwill built up by Gibson in the Gibson Trademarks.
5
1
23. In particular, Defendants have improperly used
2
the Gibson Trademarks in their advertising and
3
promotional materials for said Defendants’ Unauthorized
4
Products as well as on their Internet website at
5
www.jhs.co.uk, and otherwise have falsely stated or
6
implied that said Defendants’ Unauthorized Products are
7
made directly by Gibson pursuant to Gibson’s strict
8
quality controls standards or that their use of the
9
Gibson Trademarks is authorized or licensed by Gibson.
10
24.
Plaintiff is informed and believes, and thereon
11
alleges that Defendants are or have been advertising and
12
selling the Defendants’ Unauthorized Products bearing the
13
Flying V Body Shape Design® Trademark and the FLYING V®
14
Trademark on the www.jhs.co.uk website and its product
15
pages at www.amazon.com.
16
25. Upon information and belief, the aforementioned
17
misuse of the Gibson Trademarks by Defendants was done
18
with the intent of deceiving or misleading consumers . .
19
. and otherwise attracting and misdirecting consumers
20
looking for genuine or authorized Gibson goods to
21
Defendants’ websites.
22
Viacom asserts that Gibson has not pled that Viacom designed,
23
manufactured, or sold the Ukulele.
24
“Defendants” did so, which Viacom claims is a “conclusory lumping
25
together” that is insufficient to meet the pleading standard under
26
Twombly and Iqbal. Viacom also argues that Gibson has failed to
27
allege facts supporting a finding of contributory infringement.
28
6
Gibson alleges that
1
The court agrees with Viacom that it is difficult to discern
2
what actions Gibson is alleging were performed by Viacom in
3
particular.
4
to Viacom have been specified, and the only website mentioned are
5
www.jhs.co.uk, belonging to Viacom’s co-defendant, and
6
www.amazon.com, also apparently associated with JHS products.
7
Compl. ¶¶ 23-24.
8
No advertising and promotional materials attributable
Given the nature of the Defendants, Viacom being the trademark
9
owner and JHS being a product seller and promoter, the Complaint
10
should specify the different roles of each Defendant in order to
11
state a claim against each.
12
Complaint, the only specific allegation against Viacom is that it
13
licensed SpongeBob to JHS for certain products.
14
allegations appear to be joint allegations against Viacom and JHS.
15
However, it does not appear plausible to the court that the role of
16
each Defendant in the allegations would be identical.
17
considering the roles as described in the licensing agreement (the
18
authenticity of which Gibson does not dispute for the purposes of
19
this motion), it does not appear plausible that the Defendants’
20
acts were entirely unitary.
21
must articulate which acts were performed by which Defendant.
22
///
23
///
24
///
25
///
26
///
27
///
28
///
So far as the court understands the
All other
Even without
To state a claim for relief, Gibson
7
1
IV. CONCLUSION
2
The court finds that the Complaint in its current form fails
3
to state a claim for relief.
The motion to dismiss under Rule
4
12(b)(6) is GRANTED with leave to amend.
5
made within ten days of the date of this order.
6
IT IS SO ORDERED.
Any amendment must be
7
8
9
Dated: March 8, 2013
DEAN D. PREGERSON
United States District Judge
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
8
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?