Yue v. MSC Software Corporation

Filing 24

ORDER by Judge Hamilton denying 17 Motion to Dismiss (pjhlc2, COURT STAFF) (Filed on 2/24/2016)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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DONGXIAO YUE,

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Case No. 15-cv-5526-PJH

Plaintiff,

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v.

ORDER DENYING MOTION TO
DISMISS

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MSC SOFTWARE CORPORATION,

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Defendant.

United States District Court
Northern District of California

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Defendant’s motion to dismiss came on for hearing before this court on February

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24, 2016. Plaintiff Dongxiao Yue (“plaintiff”) appeared in pro per. Defendant MSC

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Software Corporation (“defendant”) appeared through its counsel, Jed Wakefield. Having

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read the papers filed in conjunction with the motion and carefully considered the

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arguments and the relevant legal authority, and good cause appearing, the court hereby

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DENIES defendant’s motion.

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Defendant seeks dismissal based on the nominative fair use doctrine. However,

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the primary case cited by defendant (in its papers and at the hearing) is a case that was

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decided at the summary judgment stage, not at the motion to dismiss stage. See Adobe

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Systems Inc. v. Christenson, 891 F.Supp.2d 1194, 1205-08 (D. Nev. 2012). Moreover,
the Ninth Circuit authority cited within Adobe further shows that the nominative fair use
defense is properly decided at the summary judgment stage, because the applicable test
provides that “[a] defendant seeking to assert nominative fair use as a defense need only
show that it used the mark to refer to the trademarked good,” which then shifts the
burden “to the plaintiff to show a likelihood of confusion.” Toyota Motor Sales, U.S.A.,
Inc. v. Tabari, 610 F.3d 1171, 1183 (9th Cir. 2010). Applying such a burden-shifting test

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at this stage of the case would be premature, and thus, d
o
p
defendant’s motion to dismiss is
s

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DE
ENIED.

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S
RED.
IT IS SO ORDER
Da
ated: Febru
uary 24, 201
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__________
__________
__________
_______
PH
HYLLIS J. H
HAMILTON
Un
nited States District Ju
s
udge

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United States District Court
Northern District of California

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