Gibson Brands Inc v. John Hornby Skewes & Co. Ltd et al

Filing 67

ORDER DISMISSING THE THIRD-PARTY COMPLAINT AGAINST BANK OF AMERICA 58 , 59 by Judge Dean D. Pregerson. (lc). Modified on 12/8/2014 .(lc).

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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GIBSON BRANDS, INC., a
Delaware corporation,

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Plaintiff,
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v.
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JOHN HORNBY SKEWES & CO.
LTD.,

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Defendant.
___________________________

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Case No. CV 14-00609 DDP (SSx)
ORDER DISMISSING THE THIRD-PARTY
COMPLAINT AGAINST BANK OF AMERICA
[Dkt. Nos. 58, 59]

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Presently before the Court are motions by Third-Party

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Defendant Bank of America (“BOA”) and Plaintiff Gibson Brands

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(“Gibson”) to dismiss the Third-Party Complaint filed by Defendant

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John Hornby Skewes & Co. (“JHS”).

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submissions, the court adopts the following order and grants the

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motions.

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I.

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Having considered the parties’

BACKGROUND
Gibson and JHS are manufacturers of electric guitars.

Gibson

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alleges that JHS has infringed its trademarks.

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claim and third-party complaint, alleges that Gibson’s purported

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marks have become generic through widespread use by other

JHS, in a counter-

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companies, and also that most of the marks were actually owned by

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BOA at the time the Complaint was filed.

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To support its allegation that BOA was, at one point, the true

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owner of the marks, JHS has requested that the Court take judicial

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notice of a PDF of a series of pages from the website of the United

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States Patent and Trademark Office (“USPTO”).

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A.)

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about each mark, including registration date, serial number, a

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design sketch, and so on.

(Opp’n, RJN and Ex.

These pages are dated September 29, 2014 and give information

They also each list “Bank of America,

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National Association” in the “Owner Name” field.

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submitted its own PDF of USPTO webpages, dated October 6, 2014,

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listing “Gibson Guitar Corp.” as the owner of the marks.

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51-1, Ex. A.)

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October 24, 2014, also listing “Gibson Guitar Corp.” as the owner

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of the marks.

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(Id.)

Gibson has

(Dkt. No.

BOA has also submitted a PDF of the page, dated

(Dkt No. 58-2.)

In previous filings, the parties have requested judicial

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notice be taken of documentation, also from the USPTO website,

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showing that BOA and Gibson entered into a security agreement,

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using the marks as collateral, on March 25, 2011, and that that

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security agreement was terminated on July 31, 2013.

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2, Decl. Brent Davis, Ex. B.)

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judicial notice be taken of another security agreement between BOA

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and Gibson executed on July 31, 2013.

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Davis, Ex. C.)

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agreement to have been terminated.

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II.

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(Dkt. No. 50-

The parties have also requested

(Dkt. No. 50-3, Decl. Brent

No judicially-noticeable document shows that

LEGAL STANDARD
In order to survive a motion to dismiss for failure to state a

claim, a complaint need only include “a short and plain statement
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of the claim showing that the pleader is entitled to relief.”

Bell

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Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007) (quoting Conley v.

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Gibson, 355 U.S. 41, 47 (1957)).

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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.”

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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.”

A complaint must include

Ashcroft v. Iqbal, 556 U.S.

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

Resnick

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

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enough fact to raise a reasonable expectation that discovery will

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reveal evidence to support the allegations.”

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F.3d 1202, 1217 (9th Cir. 2011) (internal quotation mark omitted).

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III. DISCUSSION

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A.

Rule 8(a) “calls for

Starr v. Baca, 652

Procedural Deficiencies in the Third-Party Complaint

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Gibson’s first argument in its motion to dismiss is that JHS

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failed to obtain the Court’s permission to amend its counterclaim

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to add BOA as a party, as required by Rule 15.

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& A. at 4:15-5:3.)

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(Gibson’s Mem. P.

JHS replies that it did obtain the Court’s leave when the

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Court “specifically granted JHS the right to amend its pleading.”

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(Opp’n to Gibson’s Renewed Mot. Dismiss at 7:21-22.)

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“Order at 18" – presumably the Court’s order of August 22, 2014.

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Although the Court did give JHS leave to amend its counterclaims,

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that leave was not a free-ranging permission to add anything or

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anyone under the sun.

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to cure the deficiencies identified in the order.

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adding third parties requires permission separate from ordinary

JHS cites to

It was, implicitly, leave to amend in order

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In particular,

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leave to amend: “[T]he third-party plaintiff must, by motion,

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obtain the court's leave if it files the third-party complaint more

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than 14 days after serving its original answer.”

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seeking leave to file the third-party complaint.

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B.

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Fed. R. Civ. P.

JHS should have filed a separate motion

Substantive Arguments Regarding Ownership of the Marks
Nonetheless, in the interest of avoiding duplicative filings

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only to arrive at the same point, the Court will address the

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substantive issues to which the parties devote most of their

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briefing.

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1.

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USPTO Documents
As a general matter, in ruling on 12(b)(6) or 12(c) motions,

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“a district court may not consider any material beyond the

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pleadings.”

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F.2d 1542, 1555 n. 19 (9th Cir. 1990).

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Court may take judicial notice of USPTO records on a motion to

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dismiss, which is true.

Lee v. City of Los Angeles, 250 F.3d 668,

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688–89 (9th Cir. 2001).

However, there is some danger in delving

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too deeply into matters outside the pleadings at the motion to

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dismiss stage.

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weigh the evidence for or against competing factual claims.

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to ensure that the pleading does two things: (1) puts parties on

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notice as to claims against them so that they may prepare defenses,

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and (2) states a plausible entitlement to relief.

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652 F.3d 1202, 1216 (9th Cir. 2011).

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that Defendant’s Third-Party Complaint does that, the inquiry is at

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an end.

Hal Roach Studios, Inc. v. Richard Feiner & Co., 896
The parties agree that the

The purpose of the motion to dismiss is not to

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It is

Starr v. Baca,

If the Court can determine

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Gibson and BOA argue that JHS “has not plausibly alleged

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BofA’s ownership” of the marks.

(BOA’s Mot. Dismiss at 6:10-11.)

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They refer the Court to judicially-noticeable evidence that, as of

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October 6 or October 24, the USPTO website listed “Gibson Guitar

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Corp.” as the owner of the marks.

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along, listed Gibson as the owner of the marks – that is, if the

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judicially-noticeable evidence were unambiguous – it might well be

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enough, on its own, to render JHS’s factual allegation that BOA is

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or was the owner implausible.

If the USPTO’s website had, all

“Plaintiff's complaint may be

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dismissed only when defendant's plausible alternative explanation

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is so convincing that plaintiff's explanation is implausible.”

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Starr, 652 F.3d at 1216.

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But the evidence is not unambiguous.

Gibson and BOA point out

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that “both trademarks owners and the USPTO itself make clerical

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errors,” and they argue that the USPTO webpage listing BOA as the

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owner of the marks was “due to a clerical error by the USPTO.”

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(BOA’s Mot. Dismiss at 5:19-20; Gibson’s Renewed Mot. Dismiss at 6-

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7 n.1.)

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and BOA’s own reliance on documents from the same website.

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and BOA essentially ask the Court to weigh the credibility of one

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judicially-noticeable iteration of a government website against the

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credibility of another.

But that argument could just as easily cut against Gibson
Gibson

This the Court declines to do.1

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More-or-less the same arguments apply to the evidence of the
security agreements. If the USPTO is apt to make mistakes, and may
well have made a mistake in this case, the Court will not presume
that some of the USPTO’s documents are more or less reliable than
others that may contradict them.
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The judicially-noticeable evidence presented is not so

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unambiguous that the Court may, on that ground alone, treat

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otherwise well-pled allegations as implausible.

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2.

Plausible Claim

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On the other hand, a complaint does not state a plausible

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ground for relief if it is illogical or plainly at odds with common

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sense.2

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the marks via one of the security agreements listed in the various

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USPTO documents or the deal to which the security agreement is

JHS’s theory of the case is that BOA acquired ownership of

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ancillary.

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does not explain why BOA would come before this Court and aver, in

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filings subject to Rule 11, that USPTO records “unambiguously

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establish” that it “does not, and never has, owned the marks.”

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(BOA’s Mot. Dismiss at 1:22.)

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(Opp’n at 6:19-7:12.)

Assuming this to be true, JHS

What would be the benefit to BOA of pretending that it does

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not own the marks?

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continues to the summary judgment stage.

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hypothetical owns the marks, would then be in the position of

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having lied to the Court and would have opened itself up to

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discovery which would undoubtedly reveal that fact.

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possibly be its motivation in doing so?

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BOA at that point would be that the Court erroneously finds that it

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is not the owner – a determination which would likely act as res

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judicata to preclude BOA from asserting its ownership rights in the

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marks in the future.

Suppose the Court denies these motions and
BOA, which in this

What could

The best case scenario for

Additionally, if JHS’s interests were harmed

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“[D]etermining whether a complaint states a plausible claim
is context-specific, requiring the reviewing court to draw on its
experience and common sense.” Ashcroft v. Iqbal, 556 U.S. 662,
663-64 (2009).
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by BOA’s false statements in this matter, JHS could sue BOA for

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fraud.

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the owner, in taking such risks.

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the marks, and were apprised of a lawsuit that could result in

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cancellation of the marks, the rational course of action would be

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to intervene as the true owner, or at the very least to inform the

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Court in this motion that it is the true owner so that the

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counterclaims for cancellation against Gibson would be dismissed.

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JHS does not explain what benefit accrues to BOA, if it is
Surely if BOA were the owner of

Compared to JHS’s narrative, which requires obscure,

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gamesmanlike motives and wild risk-taking by a sophisticated

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business entity, BOA and Gibson’s explanation – a clerical error at

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the USPTO, now rectified – has the virtue of being both simple and

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likely.

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defendant's plausible alternative explanation is so convincing that

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[the third-party] plaintiff's explanation is implausible."

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652 F.3d at 1216.

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This is, indeed, a case where “[the third-party]

Starr,

The Court finds, given everything before it, that the Third-

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Party Complaint does not state a plausible claim.

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IV. CONCLUSION

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The Motions to Dismiss the Third-Party Complaint are hereby

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GRANTED.

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IT IS SO ORDERED.

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Dated: December 8, 2014
DEAN D. PREGERSON
United States District Judge

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