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

Filing 88

ORDER DENYING MOTION FOR LEAVE TO MODIFY SCHEDULING ORDER TO FILE FIRST AMENDED COMPLAINT 78 by Judge Dean D. Pregerson. (See attached document for details.) (lom)

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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., a United Kingdom
corporation and DOES 1
through 10

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Case No. CV 14-00609 DDP (SS)
ORDER DENYING MOTION FOR LEAVE TO
MODIFY SCHEDULING ORDER TO FILE
FIRST AMENDED COMPLAINT
[Dkt. No. 78]

Defendants.
___________________________

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Presently before the Court is a motion by Plaintiff Gibson

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Brands (“Gibson”) to amend the scheduling order and for leave to

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file a First Amended Complaint.

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the parties’ submissions, the Court adopts the following order.

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I.

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(Dkt. No. 78.)1

Having considered

BACKGROUND
In its Complaint, filed January 27, 2014, Gibson alleges that

it is the sole owner and designer of the six design trademarks at

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One day after filing its motion, Plaintiff filed an “amended”
motion. (Dkt. No. 80.) As there is no procedural mechanism for
amending motions, and as allowing moving parties an unfettered
right to change their motions after they are filed would tend to
cause confusion, the Court does not recognize the “amended” motion
and rules on the motion as initially filed.

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issue: (1) SG Body Shape Design; (2) Explorer Body Shape Design;

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(3) ES Body Shape Design; (4) Flying V Body Shape Design; (5)

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Flying V Peghead Design; and (6) Kramer Peghead Design. Gibson

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alleges that its trademarks are famous both in the U.S. and

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elsewhere, and that Gibson is the exclusive user of its trademarks.

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(Compl. generally.)

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Gibson alleges that John Hornby Skewes & Co. (“JHS”) has

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repeatedly used Gibson’s trademarks in connection with such

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products without authorization by Gibson. (Id.) Specifically,

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Gibson alleges that JHS intended to mislead consumers into

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believing that JHS’ products are made by Gibson, or that JHS’

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products are authorized or licensed by Gibson, so that JHS would

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benefit from Gibson’s valuable reputation. (Id.)

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At some unspecified time, Gibson alleges, JHS posted copies of

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third-party reviews of its allegedly infringing products on its

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website.

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refer to “Gibson-styled” guitars; state that JHS’s products

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“maintain[] the Gibson vibe”; describe pickups (electronic

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components) that “are based very closely on the design of the

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original vintage Gibson PAF” and “what looks like three of Gibson's

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antique single-coils,” as well as “neck profiles that are based

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loosely on the neck from Trev's treasured and much-missed early 60s

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Gibson SG standard”; and describe JHS products as “closely based on

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. . . [the] 60s Gibson SG Special,” “inspired by the neck pattern

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of a genuine early 60s Gibson,” “more or less identical to the

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original Gibson guitars that inspired them,” “convey[ing] the

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slimmer feel generally associated with Gibson guitars dating from

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around 1960 onwards with the added stability of a more modern

(Pl.’s Mot. Amend, Ex. B, ¶ 7 & Ex. 2.)

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The reviews

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instrument,” “evocative of Gibson's finest period ES-335s,” and

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“look[ing] old Gibson.”

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“slight cutaway on the bass-side of the guitar” is “part of an

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agreement that JHS has with Gibson, we understand.”

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original Complaint does not make any reference to these reviews.

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Gibson alleges that these reviews, as used on JHS’s website,

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infringe five Gibson word marks. (Pl.’s Mot. Amend at 4.)

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(Id.)

One review also states that a

(Id.)

The

In May 2015, Gibson took the deposition of Mr. Dennis Drumm, a
JHS corporate representative. (Id. at 4.) During the deposition,

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Mr. Drumm allegedly revealed that JHS controls the content on its

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website, including the posting of third-party reviews.

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Amend, Ex. B, Ex. 3 at 68-69.)

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the deposition transcript, and filed a motion to modify the

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pretrial Scheduling Order to permit the filing of its Amended

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Complaint.

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(Pl’s Mot.

On June 11, 2015, Gibson received

(Id. at 11.)

JHS opposes Gibson’s motion to modify the Scheduling Order for

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three reasons: (1) Gibson did not satisfy the meet and confer rule

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as required under Local Rule 7-3; (2) Gibson has not shown that it

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has a good cause for amending the scheduling order because Gibson

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was not diligent in filing its motion; (3) allowing leave for amend

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would cause undue delay in the trial proceedings, would prejudice

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JHS, and would be futile. (Opp’n. to Pl's Mot.)

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II.

LEGAL STANDARD

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A. Rule 16

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A party can modify a pretrial scheduling order if the party

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cannot reasonably meet the dates on the order, notwithstanding the

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moving party’s diligence.

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975 F.2d 604, 609 (9th Cir. 1992).

Johnson v. Mammoth Recreations, Inc.,

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Schedules may be modified only

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for good cause and with the judge’s consent. Fed. R. Civ. P.

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16(b)(4). When a party moves to modify the scheduling order to

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amend a pleading, the court determines good cause by focusing on

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the diligence of the moving party.

Id.

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B. Rule 15

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“Only after the moving party has demonstrated diligence under

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Rule 16 does the court apply the standard under Rule 15 to

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determine whether the amendment was proper.” Hood, 567 F.Supp.2d

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1221 at 1224 (citing Mammoth Recreations, 975 F.2d at 608). Leave

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to amend should be freely given when justice requires, so long as

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there is no undue delay in the litigation and prejudice to the

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nonmoving party. See Foman v. Davis, 371 U.S. 178, 182 (1962). When

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deciding the propriety of a motion for leave to amend the court

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will consider factors such as undue delay, prejudice to the

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opposing party, and futility of the amendment. See Allen v. City of

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Beverly Hills, 911 F.3d 367, 373 (9th Cir. 1990).

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III. DISCUSSION

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A.

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Local Rule 7-3
As an initial matter, JHS contends that Gibson failed to abide

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by Local Rule 7-3, because Gibson's counsel only emailed JHS's

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counsel rather than conferring in real time.

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v. J.M. Smucker Co. for the proposition that 7-3 conferences should

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“take place via a communication method that, at a minimum, allows

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all parties to be in realtime communication (letters and email, for

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example, do not constitute a proper 7-3 conference).”

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12-4936-GHK VBKX, 2013 WL 6987905, at *1 (C.D. Cal. June 3, 2013).

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But in Caldera Judge King was referring to a specific case

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management order requiring realtime conferences.
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JHS cites to Caldera

No. CV

While such a

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requirement is a sensible means of facilitating the goals of LR 7-

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3, it is not the only means of doing so.

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only that, at least seven days prior to filing a motion, “counsel

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contemplating the filing of any motion shall first contact opposing

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counsel to discuss thoroughly, preferably in person, the substance

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of the contemplated motion and any potential resolution.”

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substantial email exchange could meet these requirements.

The rule itself requires

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In this case, however, Gibson’s counsel did not meet the

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rule’s requirements, both because the emails here do not constitute

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a “thorough” discussion of the issues and because counsel waited

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until the day before he filed the motion to email opposing counsel.

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(Opp’n, Ex. A.)

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In the interest of avoiding unnecessary delay, and because JHS

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does not appear to have been prejudiced by Gibson’s failure to

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satisfy the rule,2 the Court declines to vacate the motion on this

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ground.

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Local Rules in all future filings; failure to do so may result in

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sanctions, including denial of the improperly filed motion.

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B.

But the Court hereby orders the parties to comply with the

Good Cause Requirement under Rule 16

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JHS contends that Gibson cannot show good cause for modifying

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the Scheduling Order, and therefore, Gibson’s motion should not be

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granted.

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In examining diligence, the court may consider, among other

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things, (1) whether the party was diligent in assisting the court

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in creating a workable Rule 16 order; (2) whether the party’s

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See Brodie v. Bd. of Trustees of California State Univ., No.
CV 12-07690 DDP AGRX, 2013 WL 4536242, at *1 (C.D. Cal. Aug. 27,
2013) (court considered the motion on the merits where opposing
party was not prejudiced by failure to follow rule 7-3).
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failure to meet the Rule 16 order occurred notwithstanding the

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party’s diligent efforts to comply, due to the development of

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matters that were not reasonably foreseeable at the time of the

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Rule 16 scheduling conference; and (3) whether the moving party was

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diligent in seeking amendment of the Rule 16 order, once it became

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apparent that the party would not be able to comply with the order.

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Hood v. Hartford Life and Acc. Ins. Co., 567 F.Supp.2d 1221, 1224

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(E.D. Cal. 2008).

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the first factor. (Opp’n. at 5.)

The parties agree that Gibson was diligent under
However, JHS contends that Gibson

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was not diligent under the other two factors identified in Hood,

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because such material existed on JHS’ website well before Gibson

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filed its complaint, and so it was reasonably foreseeable that this

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material would support Gibson's new claims. (Id.)

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The Court cannot discern from the moving papers exactly when

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Gibson discovered the allegedly infringing reviews, nor what steps,

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if any, Gibson took to uncover possible word mark infringement in

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association with the alleged design mark infringement.3

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reply, Gibson states that it “recently” found the reviews.

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at 5.)

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in his declaration that Gibson was not aware of the reviews until

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after the deposition of JHS’ corporate representative, Dennis

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Drumm.

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sense in light of the deposition transcript showing that the

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reviews were discussed during the deposition, and that Gibson’s

In its
(Reply

Ric Olsen, Gibson’s “Manager of Brand Protection,” states

(Decl. Ric Olsen, ¶ 10.)

But this assertion makes little

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Gibson alleges that it sought “documents that referred to
Gibson, ES, SG, FLYING V, or EXPLORER” in discovery but cites only
to a request for production of documents filed by JHS. (Reply at 5
(citing Pl.’s Mot. Amend, Ex B, Ex. 2 (Defendant’s RFP)).)
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counsel had at least some of the reviews at hand to discuss with

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Mr. Drumm.

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(Pl’s Mot. Amend, Ex. B, Ex. 3 at 78-81.)

Gibson nonetheless argues that before it could file a motion

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to amend its complaint, it had to take Mr. Drumm’s deposition in

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order to confirm that JHS was in control of the marketing materials

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and reviews displayed on its website. (Pl’s Mot. Amend at 9.)

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Gibson argues that it is not uncommon for a company to work with

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third-parties to develop a company’s website. (Reply at 6.)

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order to determine whether JHS was in control of the marketing

In

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materials on its website, Gibson sought to schedule depositions for

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five months.

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Once the depositions were taken, Gibson filed its motion to modify

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the Scheduling Order within one week. (Pl’s Memo in Supp. Mot. at

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9; Schuettinger Decl. at ¶ 4.)

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have sought amendment of the scheduling order any sooner.

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(Pl’s Mot. Amend at 8; Schuettinger Decl. at ¶ 3.)

Thus, Gibson suggests, it could not

But this argument makes little sense.

Of course a company

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may “outsource” development of a website, (Reply at 6), but it is

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still responsible for the content of the site and, at a minimum,

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may be held vicariously liable for the developer’s actions.

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R.F.M.A.S., Inc. v. Mimi So, 619 F. Supp. 2d 39, 71 (S.D.N.Y.

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2009) (“Even when the indirect infringer has no knowledge of the

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direct infringement, it can still be held liable for vicarious

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infringement if it has the right and ability to supervise the

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infringing activity and also has a direct financial interest in

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such activities.”) (internal quotation marks and brackets

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omitted).

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reason to think it was not reasonably foreseeable that JHS would

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be liable for alleged infringement on its own website.

Gibson provides no authority to the contrary, and no

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The Court finds that Gibson has not shown good cause under
Rule 16 to modify the scheduling order.

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B. Prejudice and Futility Under Rule 15

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Even if Plaintiff had shown good cause to amend the

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scheduling order, the motion would still have to be denied under

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Rule 15.

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First, JHS argues that amendment would be futile.

The test

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for futility is the same as the test for dismissal under Rule

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12(b)(6) – i.e., whether, taking a plaintiff’s facts as true, the

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allegations state a plausible claim for relief.4

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allegations, it is far from clear that Plaintiff can state a

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plausible claim for word mark infringement.

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On the proposed

The elements of trademark infringement are a valid,

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protectable trademark and a defendant’s use of the mark in a way

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that is likely to cause consumer confusion.

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Sciences Corp. v. eBAY, Inc., 511 F.3d 966, 969 (9th Cir. 2007).

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Where the trademark is used to name the plaintiff’s product itself

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– rather than being used by the defendant to identify its own

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products – the typical likelihood-of-confusion analysis is

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replaced with a “nominative fair use” analysis, which requires

Applied Info.

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Plaintiff urges the Court to use the futility standard
announced in Miller v. Rykoff-Sexton, Inc.: “A proposed amendment
is futile only if no set of facts can be proved under the amendment
to the pleadings that would constitute a valid and sufficient claim
or defense.” 845 F.2d 209, 214 (9th Cir.1988). But that “no set
of facts” standard was taken from the pleading standard courts had
borrowed from dicta in Conley v. Gibson, 355 U.S. 41, 45–46 (1957);
as the Miller court noted, the test for futility is the same as the
test applied on a Rule 12(b)(6) motion. 845 F.2d at 214. After
Ashcroft v. Iqbal, that pleading standard is no longer viable. 556
U.S. 662, 678 (2009). Thus, the proper standard is Iqbal’s
plausibility standard. Fulton v. Advantage Sales & Mktg., LLC, No.
3:11-CV-01050-MO, 2012 WL 5182805, at *2 (D. Or. Oct. 18, 2012).
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that (1) the plaintiff’s product not be readily identifiable

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without use of the trademark, (2) the defendant only use so much

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of the mark as reasonably necessary to identify plaintiff’s

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product, and (3) the defendant not suggest that the plaintiff

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sponsors or endorses the defendant’s product or service.

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v. Franklin Mint Co., 292 F.3d 1139, 1151 (9th Cir. 2002).

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Cairns

The archetypal case of nominative fair use is one in which a

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publication uses the trademarked name of a product or organization

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in order to discuss its merits.

New Kids on the Block v. News Am.

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Pub., Inc., 971 F.2d 302, 308 (9th Cir. 1992) (newspaper could not

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be expected to refer to the band New Kids on the Block as an

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entity “without using the trademark,” and the same logic applied

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to “the Chicago Bulls, Volkswagens or the Boston Marathon”).

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Notably, the nominative fair use doctrine applies “even if the

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defendant's ultimate goal is to describe his own product.”

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Cairns, 292 F.3d at 1151.

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Some courts have declined to dismiss a trademark claim based

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on the nominative fair use doctrine; however, Plaintiff points to

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no case holding that a trademark infringement claim can never be

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resolved on a motion to dismiss.5

Indeed, a number of courts have

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See, e.g., Autodesk, Inc. v. Dassault Systemes SolidWorks
Corp., No. C08-04397 WHA, 2008 WL 6742224, at *5 (N.D. Cal. Dec.
18, 2008) (“[A]nalysis of nominative fair use is premature on a
motion to dismiss, particularly given the factual nature of the
inquiry in this case.”) (emphasis added); Yeager v. Cingular
Wireless LLC, 627 F. Supp. 2d 1170, 1178 (E.D. Cal. 2008) (court
could not find third element of nominative fair use test satisfied
as a matter of law, and therefore could not dismiss); Designer
Skin, LLC v. S&L Vitamins, Inc., No. CV 05-3699 PHXJAT, 2007 WL
841471, at *2 (D. Ariz. Mar. 19, 2007) (denying motion to dismiss
because “after identifying the three prongs of nominative fair use,
Defendants fail to apply them to this case”); Films of Distinction,
Inc. v. Allegro Film Prods., Inc., 12 F. Supp. 2d 1068, 1077 (C.D.
(continued...)
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held that an argument of nominative fair use can support a motion

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to dismiss, if “the pleadings fail to allege a mark use beyond

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nominative fair use.” Stevo Design, Inc. v. SBR Mktg. Ltd., 919 F.

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Supp. 2d 1112, 1124 (D. Nev. 2013).

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Mailboxes, LLC v. Epoch Design, LLC, No. 10CV974 DMS CAB, 2011 WL

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1630809, at *3 (S.D. Cal. Apr. 28, 2011) (dismissing claim where

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the allegedly infringing use of plaintiff’s trademarked name

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“clearly identify Plaintiff as the manufacturer” of competing

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goods); Elec. Arts, Inc. v. Textron Inc., No. C 12-00118 WHA, 2012

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WL 3042668, at *5 (N.D. Cal. July 25, 2012) (dismissal appropriate

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where “simply looking at the work itself, and the context in which

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it appears, demonstrates how implausible it is that a viewer will

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be confused into believing that the plaintiff endorsed the

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defendant's work”).

See also Architectural

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It is clear that Gibson’s claim would fail as a matter of law

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if brought against the original reviewers or the publications that

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ran their reviews; that is simply New Kids redux.

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seems odd to say that by re-publishing the very same content, JHS

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somehow becomes liable for trademark infringement, unless its

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website either misleadingly edits the reviews (not at issue here,

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as the articles appear to be reprinted in full) or explicitly

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cites to them as support for a claim of endorsement.

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But then it

Gibson argues that because the reviews refer to JHS as a
“copycat” and its products as “inspired by,” “copies” or “knock-

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(...continued)
Cal. 1998) (“[T]he applicability of the nominative fair use
exception cannot be determined on a motion to dismiss absent
allegations establishing that the product or service is readily
identifiable without use of the trademark.”).
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offs” of, or “more or less identical to” certain Gibson guitars,

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consumers will assume an endorsement.

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problem is that when taken in context, the references to Gibson

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actually reinforce the idea that Gibson does not endorse the JHS

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guitars.

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and “knock-off” incorporates a sense that the copying is not

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authorized.

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that the specific products being reviewed are the opposite of a

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copy:

(Reply at 12-13.

The

To start with, the plain meaning of the words “copycat”

But more to the point, the reviews frequently assert

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[W]ith the launch of the Advance series, copy cloning is put

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on the back burner in favour of some more original designs –

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namely, the four examples on test here.

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[T]he shape, because it apes Gibson and can't copy it, looks

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rather ungainly . . . .

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JHS's MD Dennis Drumm and Trev Wilkinson unveiled the

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fledgling Vintage Advance series: inspired by the classics,

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but certainly not copies.

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we're not a copy company any more,’ explained Trev Wilkinson.

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‘We have the wherewithal to innovate.’”

‘What we're trying to do is say

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(Pl.’s Mot. Amend, Ex. B, Ex. 2.)

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JHS products’ original components, noting that the JHS guitars

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“feature various specs put together by Trev” and “use custom

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designed Wilkinson humbucking pickups.”

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in the reviews that even suggests an endorsement is the aside that

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a design feature is used as “part of an agreement that JHS has
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The reviews also emphasize the

(Id.)

The only statement

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with Gibson, we understand.”

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qualified as it is and buried in pages and pages of third party

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reviews, cannot support a conclusion that consumers would be

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confused into thinking that Gibson endorses JHS’s product line as

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a whole.

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(Id.)

But a single such statement,

More generally, it cannot be the case that a manufacturer may

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not make marketing use of third-party reviews of its products if

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the reviews make comparisons to other brands.

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one of the most important indicators of quality that a

Such reviews are

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manufacturer has with which to distinguish its products.

And

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where a product is either an explicit copy of, or “inspired by,”

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another firm’s work, it is natural for the reviewer to compare the

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copy to the original.

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common that no reasonable consumer is confused by it into thinking

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that the creator of the original work must be endorsing the new

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work.

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Django Unchained is a “direct homage” to the spaghetti westerns of

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Sergio Leone, who in turn got his start lifting a story from Akira

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Kurosawa, who in turn took his plot from Dashiell Hammett, no one

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thinks that Hammett, Kurosawa, and Leone have endorsed on

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Tarantino’s film.6

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products, alone, cannot be enough to trigger a word mark

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infringement claim; there must be some additional allegation

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showing that JHS used the reviews in a way that was misleading.

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Such an allegation is lacking here.

This kind of review-by-genealogy is so

When the Village Voice notes that Quentin Tarantino’s

Reprinting of reviews that mention Gibson’s

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Vern, “How to Defend Quentin Tarantino,” Village Voice (Jan.
2, 2013),
http://www.villagevoice.com/film/how-to-defend-quentin-tarantino-64
37096.
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Because Gibson’s proposed amendments do not suffice to state

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a claim against JHS, JHS has a strong argument that amendment

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would be futile.

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But even if the word mark claims were not so implausible as

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to be subject to dismissal, the proposed amendments would still

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result in substantial prejudice to JHS.

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when new claims in an amended complaint significantly alter the

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nature of the litigation and require defendants to undertake an

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entirely new course of defense.

Undue prejudice exists

Morongo Band of Mission Indians

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v. Rose, 893 F.2d 1074, 1079 (9th Cir. 1990).

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use issue discussed above would presumably require a revamping of

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Defendant’s litigation strategy, including additional discovery

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(especially regarding consumer beliefs about endorsement as to

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third-party reviews).

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whether the reviews were used “in commerce” in the United States,7

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and this, too, would require a new course of defense and perhaps

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additional discovery.

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this late in the process, would unduly prejudice JHS’s defense.

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IV.

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The nominative fair

JHS also raises serious questions as to

Thus, Gibson’s proposed amendments, coming

CONCLUSION
For all the above reasons, the Court DENIES Gibson’s motion.

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Additionally, although Gibson has suggested that if its motion

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were denied it would be forced to file a separate complaint

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alleging its word mark claims, that possibility is foreclosed by

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this order.

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separate actions involving the same subject matter at the same

“Plaintiffs generally have no right to maintain two

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See Opp’n at 14-17 (arguing that the use of the reviews did
not result in an effect of commerce, or cognizable injury, within
the United States).
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time in the same court and against the same defendant.”

Adams v.

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California Dep't of Health Servs., 487 F.3d 684, 688 (9th Cir.

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2007).

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prior ruling in one case by filing essentially the same claims in

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a new case.”

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(9th Cir. 2011).

A plaintiff may not “attempt[] to avoid an unfavorable

Stearns v. Ticketmaster Corp., 655 F.3d 1013, 1025

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IT IS SO ORDERED.

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Dated: August 4, 2015
DEAN D. PREGERSON
United States District Judge

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