Eastland Music Group, LLC et al v. Lionsgate Entertainment, Inc. et al

Filing 33

MEMORANDUM Opinion and Order. Signed by the Honorable George W. Lindberg on 7/19/2012. Mailed notice(meg, )

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
EASTLAND MUSIC GROUP, LLC and
RAYNARLDO WHITTY,
Plaintiffs,
v.
LIONSGATE ENTERTAINMENT, INC.,
SUMMIT ENTERTAINMENT, LLC, and
MANDATE PICTURES, LLC,
Defendants.

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Case No. 11 C 8224
Hon. George W. Lindberg

MEMORANDUM OPINION AND ORDER
Before the Court is defendants’ motion to dismiss plaintiffs’ complaint pursuant to
Federal Rule of Civil Procedure (“Rule”) 12(b)(6). For the reasons set forth more fully below,
plaintiff Raynarldo Whitty’s claims are dismissed for lack of standing; Counts I and II of the
complaint are dismissed as to plaintiff Eastland Music Group, LLC for failure to state a claim;
and the Court declines to exercise its supplemental jurisdiction over the remaining state law
claims.
I. Relevant Facts
Plaintiffs Eastland Music Group, LLC (“Eastland”) and Raynarldo Whitty (“Whitty”)
(collectively “plaintiffs”) filed suit against defendants Lionsgate Entertainment, Inc., Summit
Entertainment, LLC, and Mandate Pictures, LLC (collectively “defendants”) alleging federal
claims for trademark infringement (Count I) and unfair competition (Count II) under the Lanham
Act, 15 U.S.C. §§ 1114, 1125, and state law claims for a violation of the Illinois Uniform
Deceptive Trade Practices Act (Count IV), unfair competition (Count V), a violation of the
Illinois Consumer Fraud and Deceptive Business Practices Act (Count VI), and unjust

enrichment (Count VII). The complaint does not include a Count III. Plaintiffs seek both
injunctive and monetary relief.
According to the complaint, Whitty is the manager of Eastland. Plaintiffs claim that
Eastland is an “entertainment business,” but the complaint does not explicitly define Eastland’s
business. Eastland is the owner of Trademark Registration No. 2975624 for the trademark
(‘mark”) PHIFTY-50. Eastland registered that mark on July 26, 2005 and, according to the
Trademark Principal Register, the mark is for “electrical apparatus, namely, series of prerecorded phonograph records, compact disc, audio and video cassettes and dvds featuring music,
in Class 9.” Trademark International Class 9 includes electrical and scientific apparatus. That
class encompasses, among other things, software, CDs, DVDs, audiocassettes, records, and
devices that play music. The first use of Eastland’s mark was November 21, 2000. According to
Eastland, the mark has been in continuous and uninterrupted use since December 2000. Plaintiffs
also claim to have common law trademark rights to the trademark “50-50.”
In support of their federal claims, plaintiffs allege that defendants’ movie entitled “50/50"
and the use of the term “50/50" is connection with the promotion, advertisement, distribution and
sales of the movie likely caused confusion and mistake with Eastland’s PHIFTY-50 mark, and
damaged Eastland. The premise of defendants’ movie entitled “50/50" deals with a cancer
patient whose doctors gave him a 50/50 chance of survival.
II. Legal Analysis
In ruling on a Rule 12(b)(6) motion to dismiss, the court treats all well-pleaded
allegations as true, and draws all reasonable factual inferences in plaintiffs’ favor. Justice v.
Town of Cicero, 577 F.3d 768, 771 (7th Cir. 2009). The Court can consider the allegations in the

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complaint and material that is incorporated by reference therein. See Menominee Indian Tribe of
Wisconsin v. Thompson, 161 F.3d 449, 456 (7th Cir. 1998). Under Rule 8(a), the complaint must
include “a short and plain statement of the claim showing that the pleader is entitled to relief.”
The factual allegations must be sufficient “to raise a right to relief above the speculative level.”
Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.E.2d 929 (2007). “To
survive a motion to dismiss, a complaint must contain sufficient factual matter, accepted as true,
to state a claim of relief that is plausible on its face.” Ashcroft v. Iqbal, ___ U.S. ___, ___, 129
S. Ct. 1937, 1949, 173 L.Ed.2d 929 (2009). Determining whether a complaint states a plausible
claim for relief will require “the reviewing court to draw on its judicial experience and common
sense.” Id. at 1950.
Generally, when documents are attached to a motion to dismiss, “the motion shall be
treated as one for summary judgment under Rule 56.” Fed.R.Civ.P. 12(b). However, “documents
that a defendant attaches to a motion to dismiss are considered part of the pleadings if they are
referred to in the plaintiff’s complaint and are central to [its] claim.” Venture Assocs. Corp. v.
Zenith Data Sys. Corp., 987 F.2d 429, 431 (7th Cir. 1993). Because defendants’ movie is
referred to in plaintiffs’ complaint and is central to all of plaintiffs’ claims, the Court will
consider the movie and its packaging in deciding the motion to dismiss.
A. Standing
As an initial matter, the Court turns to whether plaintiff Whitty has standing to assert the
federal claims alleged in the complaint. According to the complaint, Whitty is “the manager of
Eastland Music Group.” Compl. at ¶3. However, the complaint does not allege that Whitty owns
or is the registrant or assignee of the “PHIFTY-50" mark at issue in Counts I and II of the

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complaint. In their response brief to defendants’ motion to dismiss, plaintiffs do not address this
standing issue. Accordingly, the Court finds that Whitty does not have standing to assert the
claims in Counts I and II of the complaint. See Dynamic Fluid Control Ltd v. International Valve
Mfg., LLC, 790 F.Supp.2d 732, 737 (N.D. Ill. 2011). Therefore, Whitty’s claims in Counts I and
II of the complaint are dismissed for lack of standing.
B. Eastland’s Federal Claims
Next, the Court turns to whether Eastland has alleged valid federal trademark
infringement and unfair competition claims in Counts I and II of the complaint. Defendants
argue that Eastland’s federal claims are barred by applicable First Amendment protections.
Eastland contends that resolution of affirmative defenses, including First Amendment
protections, are premature and not appropriate when deciding a Rule 12(b) motion to dismiss.
Defendants concede that “[o]rders under Rule 12(b)(6) are not appropriate responses to
the invocation of defenses, for plaintiffs need not anticipate and attempt to plead around all
potential defenses.” Xechem, Inc. v. Bristol-Myers Squibb Co., 372 F.3d 899, 901 (7th Cir.
2004). A “[c]omplaint need not contain any information about defenses and may not be
dismissed for that omission.” Id. (emphasis in the original). Nevertheless, a plaintiff can plead
itself out of court when it “admits all the ingredients of an impenetrable defense.” Id. Under
those circumstances, it is appropriate to dismiss an otherwise valid claim under Rule 12(b)(6).
Id. Further, providing the Court with the trade dress at issue in a Rule 12(b)(6) motion, in this
case the disputed movie, “may serve the beneficial purpose of avoiding prolonged litigation that
is destined, as a matter of law, not to succeed.” Woodard v. Jackson, et al., 03 C 844, 2004 WL
771244 at *8 (S.D. Ind. Mar. 25, 2004).

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In order to state a claim for federal trademark infringement, Eastland must plausibly
allege “that its mark is protected under the Lanham Act,” and “that the challenged mark is likely
to cause confusion among consumers.” Barbecue Marx, Inc. v. 551 Ogden, Inc., 235 F.3d 1041,
1043 (7th Cir. 2000). In order to state a claim for unfair competition under 15 U.S.C. § 1125(a),
Eastland must plausibly allege that defendants’ use of “50/50" in the title of its movie is likely to
cause confusion or mistake or deception as to the origin of the movie. See 15 U.S.C. § 1125(a).
Defendants assert and plaintiffs do not dispute that resolution of defendants’ First
Amendment defense to Counts I and II is controlled by the test articulated in Rogers v. Grimaldi,
875 F.2d 994 (2nd Cir. 1989). The Seventh Circuit has not spoken on the propriety of this test.
See Dillenger v. Electronic Arts, Inc., 09 C 1236, 2011 WL 2457678 at *4 fn. 1 (S.D. Ind. June
16, 2011). Nevertheless, “[c]onsistent with the longstanding principle of party presentation, see
Greenlaw v. United States, 554 U.S. 237, 243-44, 128 S.Ct. 2559, 171 L.Ed.2d 399 (2008), the
Court will accept the parties’ position as to Rogers application, and assume that Rogers controls
without definitely deciding the question.” Id.
Under the Rogers test, “with respect to titles of artistic works, the title must be explicitly
misleading and devoid of any artistic relevance to the work in order for the Lanham Act to bar its
use.” Woodard v. Jackson, et al., 03 C 844, 2004 WL 771244 at *7 (S.D. Ind. Mar. 25, 2004)
(emphasis in the original). After reviewing the disputed movie and its packaging, there is no
question that the “50/50" title has some artistic relevance to the content of the movie. Within the
first 12 minutes of the movie, the co-star Adam, played by Joseph Gordon-Levitt, states that he
has a 50/50 chance of survival after being diagnosed with a rare form of spinal cancer. The
remainder of the movie revolves around whether Adam will survive his 50/50 diagnosis.

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Additionally, as a matter of law, the 50/50 title is not explicitly misleading as to the source or
content of the work. The movie and packaging make clear that 50/50 refers to the survival odds
related to the character Adams’ cancer diagnosis, and Eastland has not plausibly pled any
possibility of confusion between the movie and Eastland’s muscial group, or Eastland’s music
related business use of the mark “PHIFTY-50.” Accordingly, because Eastland cannot plausibly
plead that defendants’ use of “50/50"as the title of their movie violates the Lanham Act,
defendants’ Rule 12(b)(6) motion is granted as to Eastland’s claims in Counts I and II of the
complaint.
C. Remaining State Law Claims
The remaining state law claims are dismiss because the Court declines to exercise its
supplemental jurisdiction over those claims. “Generally, when a court has dismissed all the
federal claims in a lawsuit before trial, it should relinquish jurisdiction over supplemental state
law claims rather than resolve them on the merits.” Cortezano v. Salin Bank & Trust Co., 680
F.3d 936, 941 (7th Cir. 2012).
D. Attorneys’ Fees
Finally, the Court declines to exercise its discretion to award attorneys fees to defendants
as the prevailing party under 15 U.S.C. § 1117(a).
III. Conclusion
In conclusion, defendants’ motion to dismiss plaintiffs’ complaint pursuant to Rule
12(b)(6) is granted in part and denied in part. Plaintiff Raynarldo Whitty’s claims in Counts I
and II of the complaint are dismissed for lack of standing. Plaintiff Eastland’s claims in Counts I
and II of the complaint are dismissed pursuant to Rule 12(b)(6) for failure to state a claim. The
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Court declines to exercise its supplemental jurisdiction over the remaining state law claims and
declines to exercise its discretion to award attorneys fees under 15 U.S.C. § 1117(a).

ORDERED: Defendants’ motion to dismiss plaintiffs’ complaint pursuant to Rule 12(b)(6) [19]
is granted in part and denied in part. Plaintiff Raynarldo Whitty’s claims in Counts I and II of the
complaint are dismissed for lack of standing. Plaintiff Eastland’s claims in Counts I and II of the
complaint are dismissed pursuant to Rule 12(b)(6) for failure to state a claim. The Court declines
to exercise its supplemental jurisdiction over the remaining state law claims and this civil case is
terminated.

ENTERED: ____________________________________
George W. Lindberg
Senior U.S. District Court Judge
Dated: July 19, 2012

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