PlayVision Labs, Inc. v. Nintendo of America, Inc.

Filing 41

ORDER GRANTING MOTION TO DISMISS COUNTERFEIT CLAIM. Signed by Judge Charles R. Breyer on 5/18/2015. (crblc1, COURT STAFF) (Filed on 5/18/2015)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

United States District Court
For the Northern District of California

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PLAYVISION LABS, INC.,
Plaintiff,

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No. C14-05365 CRB
ORDER GRANTING MOTION TO
DISMISS COUNTERFEIT CLAIM

v.
NINTENDO OF AMERICA, INC.,
Defendant.

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/

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Defendant Nintendo of America, Inc. has moved to dismiss Count 1 of Plaintiff

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Playvision Labs, Inc.’s Complaint, to the extent that it asserts a claim for trademark

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counterfeiting.1 See generally Mot. (dkt. 17). The Court finds this matter suitable for

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resolution without oral argument, pursuant to Civil Local Rule 7-1(b), VACATES the

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hearing currently set for May 22, 2015, and GRANTS the Motion.

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Under the Lanham Act, a “counterfeit” is defined as “a spurious mark which is

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identical with, or substantially indistinguishable from, a registered mark.” 15 U.S.C. § 1127.

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The Complaint alleges that “Defendant’s use of Plaintiff’s Mark and a name that is virtually

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identical to Plaintiff’s mark to promote, market, or sell computer software in the same

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channel of commerce in which Plaintiff operates constitutes trade mark infringement

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Count 1, for “Trademark Infringement,” is devoid of any explicit allegations of counterfeiting,
but it seeks statutory damages under 15 U.S.C. § 1117(c), treble damages under 15 U.S.C. § 1117(b),
and enhanced damages under 15 U.S.C. § 1117(c)—relief only triggered when there is use of a
counterfeit mark. See Complaint (dkt. 1) ¶ 26.

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pursuant to 15 U.S.C. § 1114.” Compl. ¶ 25. Those allegations are insufficient—“virtually

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identical” is not the same as “identical with, or substantially indistinguishable from”—and

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conclusory. See Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atlantic Corp. v.

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Twombly, 550 U.S. 544, 555, 557 (2007)) (“pleading that offers ‘labels and conclusions’ or

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‘a formulaic recitation of the elements of a cause of action will not do.’ Nor does a complaint

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suffice if it tenders ‘naked assertion[s]’ devoid of ‘further factual enhancement.’”).

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Moreover, comparing Defendant’s packaging and Plaintiff’s packaging, Defendant’s “Wii

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Play Motion” name differs from the “playmotion!” name by using, among other things: (1)

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three different colors, rather than one color; (2) three separate words, with each word

United States District Court
For the Northern District of California

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capitalized, rather than one single, combined word; (3) an entirely different word (“Wii”) at

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the beginning of the mark; (4) capital and lower case lettering, rather than all lower case

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lettering; (5) the word “Motion” on a separate line from, and in a different size than, the

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words “Wii Play”; and (6) no punctuation at the end of the mark, rather than an exclamation

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point. Compare Compl. ¶ 14 with RJN (dkt. 18 Ex. 1)2; see also Mot. at 2 (comparing both

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products side by side). Plaintiff therefore cannot plausibly allege that the two marks are

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identical or substantially indistinguishable. See, e.g., Emeco Indus., Inc. v. Restoration

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Hardware, Inc., No. 12-5072 MMC, 2012 WL 6087329, at *1 (N.D. Cal. Dec. 6, 2012)

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(“1940s Naval Chair” and “Introducing 1940S Naval Chair Collection” not identical or

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substantially indistinguishable from “The Navy Chair” or “111 Navy Chair”); see also

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Colgate-Palmolive Co. v. J.M.D. All-Star Import & Export, 486 F. Supp. 2d 286, 288, 290-

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91 (S.D.N.Y. 2007) (“Colddate” toothpaste not identical or substantially indistinguishable

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from “Colgate” toothpaste).

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For the foregoing reasons, Court DISMISSES WITH PREJUDICE Count 1 of

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Plaintiff Playvision Labs, Inc.’s Complaint, to the extent that it asserts a claim for trademark

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The Court grants Defendant’s Request for Judicial Notice. As a general rule, a court may not
consider any materials outside of the pleadings when ruling on a Rule 12(b)(6) motion except for: (1)
materials referenced in the Complaint that are “central” to the claims; or (2) matters of public record not
subject to reasonable dispute. Fed. R. Evid. 201; Lee v. City of Los Angeles, 250 F.3d 668, 688 (9th
Cir. 2001). USPTO documents are public records “capable of accurate and ready determination by
resort to sources whose accuracy cannot be questioned.” See Seoul Laser Dieboard Sys. Co., Ltd. v.
Serviform, S.r.l., 957 F. Supp. 2d 1189, 1194 n.2. (S.D. Cal. 2013).
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counterfeiting.3
IT IS SO ORDERED.

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Dated: May 18, 2015
CHARLES R. BREYER
UNITED STATES DISTRICT JUDGE

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United States District Court
For the Northern District of California

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The Court does not reach Defendant’s argument about whether the marks are used on the “exact
same goods.” See Mot. at 9-11.
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