Mercado Latino Inc v. Indio Products Inc et al

Filing 25

ORDER by Judge Dean D. Pregerson: granting 20 defendants Motion to Dismiss Case.Plaintiffs copyright claim is dismissed with prejudice. All other claims are dismissed with leave to amend. Any amended complaint shall be filed within ten days of the date of this order. (lc). Modified on 6/12/2013 .(lc).

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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MERCADO LATINO, INC. dba
CONTINENTAL CANDLE COMPANY,

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Plaintiff,
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v.
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INDIO PRODUCTS, INC., a
California corporation,

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Defendant.
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Case No. CV 13-01027 DDP (RNBx)
ORDER GRANTING DEFENDANT’S MOTION
TO DISMISS

Dkt. No. 20]

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Presently before the court is Defendant Indio Products, Inc.

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(“Indio”)’s Motion to Dismiss.

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of the parties and heard oral argument, the court grants the motion

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and adopts the following order.

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I.

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Having considered the submissions

Background
Indio and Plaintiff Mercado Latino, Inc. (“Mercado”) both sell

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devotional prayer candles bearing images of saints and other

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religious figures.

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35.)

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within a “bullet” shape in the style of a stained glass window,

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surrounded by a patterned border of colorful, geometric shapes.

(First Amended Complaint (“FAC”) ¶¶ 21, 28,

Mercado’s “Sanctuary Series” candles depict a religious icon

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(FAC ¶ 21, Ex. E; Motion to Dismiss, Ex. 2.)

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copyrights on “the original and distinctive artwork shown on

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Sanctuary Series candles.”

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trademarked the name “Sanctuary Series” and a design consisting of

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three circles within a window.

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owns trade dress “comprised of candles with distinctive

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appearance,” and featuring “the unique combination of the following

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design elements: a depiction of a saint or religious icon, with a

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border that appears to be a ‘bullet’ shape in the style of a

(FAC ¶¶ 12-14.)

Mercado obtained

Mercado also

(FAC ¶¶ 18-19.)

Mercado allegedly

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stained glass window and the name of the saint or the religious

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icon underneath the depiction.”

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(FAC ¶ 21.)

In its First Amended Complaint, Mercado alleges that Defendant

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Indio copied Mercado’s copyrights and passed off inferior Indio

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candles as Mercado products.

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alleges that Indio infringed upon Mercado’s Sanctuary Series trade

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dress and trademarks.

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federal unfair competition under 15 U.S.C. § 1125(a) and

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intentional interference with prospective economic advantage.

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Indio now moves to dismiss all five claims.

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II.

(FAC ¶¶ 29-31.)

The FAC further

Mercado also alleges causes of action for

Legal Standard

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II.

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A complaint will survive a motion to dismiss when it contains

Legal Standard

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“sufficient factual matter, accepted as true, to state a claim to

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relief that is plausible on its face.” Ashcroft v. Iqbal, 556 U.S.

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662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544,

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570 (2007)).

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“accept as true all allegations of material fact and must construe

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those facts in the light most favorable to the plaintiff.” Resnick

When considering a Rule 12(b)(6) motion, a court must

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v. Hayes, 213 F.3d 443, 447 (9th Cir. 2000).

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need not include “detailed factual allegations,” it must offer

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“more than an unadorned, the-defendant-unlawfully-harmed-me

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accusation.”

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allegations that are no more than a statement of a legal conclusion

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“are not entitled to the assumption of truth.” Id. at 679.

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other words, a pleading that merely offers “labels and

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conclusions,” a “formulaic recitation of the elements,” or “naked

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assertions” will not be sufficient to state a claim upon which

Iqbal, 556 U.S. at 678.

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relief can be granted.

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Although a complaint

Conclusory allegations or

In

quotation marks omitted).

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Id. at 678 (citations and internal

“When there are well-pleaded factual allegations, a court should

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assume their veracity and then determine whether they plausibly

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give rise to an entitlement of relief.” Id. at 679.

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must allege “plausible grounds to infer” that their claims rise

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“above the speculative level.” Twombly, 550 U.S. at 555.

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“Determining whether a complaint states a plausible claim for

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relief” is a “context-specific task that requires the reviewing

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court to draw on its judicial experience and common sense.”

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556 U.S. at 679.

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III. Discussion

Plaintiffs

Iqbal,

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A.

Copyright Infringement

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To state a claim for copyright infringement, a Plaintiff must

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allege “(1) ownership of a valid copyright, and (2) copying of

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constituent elements of the work that are original.”

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Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 361 (1991).

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satisfy the copying prong, a copyright plaintiff must also allege

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that the works are substantially similar
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Feist Pubs.,

in their protected

To

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elements.

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(C.D. Cal. 2011).

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requirements at the pleading stage.

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at 1098; Zella v. E.W. Scripps Co., 529 F.Supp.2d. 1124, 1130-31

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(C.D. Cal. 2007); Lafarga v. Lowrider Arte Magazine, No. SACV 11-

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1501 DOC, 2012 WL 3667441 at *3 (C.D. Cal. Aug. 24, 2012); Minden

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Pictures, Inc. v. Pearson Education, Inc., No. C 11-05385 WHA, 2012

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WL 1595081 at *2 (N.D. Cal. May 4, 2012); Fractional Villas, Inc.

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v. Tahoe Clubhouse, No. 08cv1396-IEG, 2009 WL 160932 at *2 (S.D.

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Wild v. NBC Universal, Inc., 788 F.Supp.2d 1083, 1098
Courts in this circuit regularly apply these
See, e.g., Wild, 788 F.Supp.2d

Cal. Jan. 22, 2009).1

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Courts employ a two-part analysis, comprised of an “intrinsic”

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and “extrinsic” test, to determine whether two works are

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substantially similar.

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815, 822 (9th Cir. 2002).

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allege sufficient facts to satisfy the extrinsic test.

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10.)

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protectable expressive elements.

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scenes a faire that flow necessarily from ideas are not

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protectable, and therefore play no role in an extrinsic analysis.

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Id.

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Cavalier v. Random House, Inc., 297 F.3d
Here, Indio argues that the FAC fails to
(Mot. at

The extrinsic test is an objective comparison of specific,
Id. at 822-23.

General ideas and

Mercado argues that the protectable elements of the Sanctuary

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series candles are “the artwork of border with appearance of

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cathedral window-shaped stained glass.”

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Mercardo’s opposition makes no attempt, however, to dispute Indio’s

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contention that Indio candles are not substantially similar to

(Opp. at 6-7, FAC Ex. B.)

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The bulk of Plaintiff’s opposition is devoted to the
assertion that the validity of its claims cannot be analyzed prior
to summary judgment. (Opp. at 2, 4, 5-6, 8-9, 12-15.)
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Mercado’s Sanctuary Series candles.

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enough to grant Indio’s motion to dismiss.

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Mercado’s implicit concession, however, it does not appear that the

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two lines of candles are substantially similar.

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That alone would be reason
Even putting aside

As an initial matter, the elements identified by Mercado are

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not all protectable.

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elements before applying the extrinsic test.

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Entertainment, Inc., 616 F.3d 904, 913 (9th Cir. 2010.)

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seeks protection for artwork with the “appearance of cathedral

The court must filter out the unprotected
Mattel, Inc. v. MGA
Mercado

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window-shaped stained glass.”

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depicting a stained-glass cathedral window, is not copyrightable.

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Feist, 499 U.S. at 344-45;

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Cir. 2003) (“[N]o copyright protection may be afforded to the idea

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of producing a glass-in-glass jellyfish sculpture.”).

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An idea alone, such as the idea of

Satava v. Lowry, 323 F.3d 805, 810 (9th

To the extent that Mercado argues that the shape of the

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artwork is a protectable element of expression, the court

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disagrees.

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on the additional artwork of the border with the stained glass

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cathedral window shape.” (emphasis added)).)

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(i.e., scenes a faire) and unoriginal components are not

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protectable.

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822-23; Dream Games of Arizona, Inc. v. PV Onsite, 561 F.3d 983,

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988 (9th Cir. 2009) (“[E]lements of expression that necessarily

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follow from an idea, or expressions that are as a practical matter,

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indispensable or at least standard in the treatment of an idea are

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[also] not protected.” (internal quotation and alteration

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omitted.)).

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unprotected) image of a religious figure is hardly an original or

(See Opp. at 7 (“The copyright cause of action is based

Standard features

Mattel, 616 F.3d at 913–14; Cavalier, 297 F.3d at

The placement of a border around an (admittedly

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unique expression.

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conical shape in a depiction of a religious icon in any way novel

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or groundbreaking.

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“cathedral window shape,” the bullet-type design is a widespread

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and longstanding staple of devotional iconography, to which Mercado

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can lay no copyright claim.

Nor is the use of a “bullet,” arched, or

As evinced by Plaintiff’s own use of the term

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Thus, the only protectable element of expression to which to

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apply the extrinsic test is Mercado’s border artwork design itself.

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The extent of copyright protection afforded to an idea or element

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depends on the possible range of expression of that idea or

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element.

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copyright protection is “thinner,” and a work must be “virtually

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identical” to infringe.

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expression is broad, substantial similarity is sufficient to

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establish infringement.

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Indio’s assertion that there is but a narrow range of potential

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expression for border artwork.

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ways” to design a border, Indio’s work need only be substantially

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similar to Mercado’s design.

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Mattel, 616 F.3d at 913-14.

Where the range is narrow,

Where the range of possible

Id.

Id.

Here, the court disagrees with

Because there are “gazillions of

Id.

Indio’s border artwork design is not, however, substantially

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similar to Mercado’s design.

Mercado’s border design features five

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colors in roughly equal proportions, fairly large rectangles and

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semicircles in a symmetrical arrangement, and the name of the

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particular religious figure within the border itself.

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design is primarily blue, contains a large number of irregular

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shapes laid out in a somewhat jumbled and asymmetrical pattern,

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contains a distinctive, inset image of a dove or angel at the top

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of the border, and does not incorporate any text.
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Indio’s

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Because the protected elements of Mercado’s expression are not

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similar to Indio’s expression, Mercado cannot state a viable

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copying claim.

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dismissed, with prejudice.

Mercado’s copyright claim must therefore be

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B.

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Mercado’s trade dress claim under Section 43(a) of the Lanham

Trade Dress

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Act, 15 U.S.C. § 1125(a), as currently pled, is premised upon the

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same facts as its copyright claim.

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Sanctuary Series trade dress as “a depiction of a saint or other

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religious icon, with a border that appears to be a “bullet” shape

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in the style of a stained glass window and the name of the saint or

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the religious icon underneath the depiction.”

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explained above, these are the same elements for which Mercado

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seeks copyright protection.

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claims allege that Indio attempts to confuse consumers and to pass

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its own candles off as Mercado candles.

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The FAC describes Mercado’s

(FAC ¶ 21.)

As

Both the copyright and trade dress

(FAC ¶¶ 31, 36-37.)

The Supreme Court has cautioned that the Lanham Act should not

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be overextended into areas traditionally covered by copyright law.

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Dastar Corp. v. Twentieth Cent. Fox Corp., 539 U.S. 23, 34 (2003).

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To the extent that the Copyright Act provides an adequate remedy,

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therefore, Lanham Act claims are preempted.

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F.2d 1353, 1364-65 (9th Cir. 1990); Salt Optics, Inc. v. Jand,

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Inc., No. SACV 10-828, 2010 WL 4961702 at *7 (C.D. Cal. Nov. 19,

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2010).

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Shaw v. Lindheim, 919

Mercado’s opposition to Indio’s preemption argument is

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puzzling.

Mercado merely and conclusorily states that “Defendant

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has engaged in wrongful conduct under both the Lanham Act and the

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Copyright Act.”

This naked assertion, however, is insufficient to
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sustain Mercado’s Lanham Act claim.

Apparently recognizing as

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much, Mercado argues that there is an independent basis for its

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trade dress claim because “Plaintiff has discovered instances of

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Defendant selling Plaintiff’s candles bearing Plaintiff’s trade

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dress inside boxes bearing Defendant’s name.”

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Declaration of R. Joseph Decker ¶ 2.)

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mention of these facts.

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attempting to pass off its candles as Mercado products, the only

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basis for that allegation is that “Defendants have placed their

(Opp. at 13;

The FAC, however, makes no

While the FAC does allege that Indio is

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infringing Defendants’ Candles in direct competition with Mercado’s

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Sanctuary Series.”

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allegations regarding false packaging or repackaging of Mercado

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candles.

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leave to amend.2

(FAC ¶ 37.)

Nowhere does the FAC state any

Mercado’s trade dress claim is therefore dismissed, with

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C.

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Mercado’s opposition suggests that the remaining trademark

Remaining claims

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claim and state law interference with economic advantage claim are

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also premised upon Indio’s re-boxing of Mercado candles in Indio

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boxes.3

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includes no such allegations.

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leave to amend.

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IV.

(Opp. at 14-15; Decker Decl. ¶ 2.)

The FAC, however,

These claims are dismissed with

Conclusion

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Mercado’s unfair competition claim, which is also based on
Section 43(a) of the Lanham Act, is based upon the same facts as
its trade dress claim, and is therefore also dismissed with leave
to amend.
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Plaintiff does not dispute that, to the extent its
intentional interference claim overlaps with its copyright claim,
the state law claim is preempted. See Wild, 788 F.Supp.2d at 11101111.
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For the reasons stated above, Defendant’s Motion to Dismiss is

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GRANTED.

Plaintiff’s copyright claim is dismissed with prejudice.

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All other claims are dismissed with leave to amend.

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complaint shall be filed within ten days of the date of this order.

Any amended

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IT IS SO ORDERED.

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Dated: June 12, 2013
DEAN D. PREGERSON
United States District Judge

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