Fraserside IP LLC v. Youngtek Solutions Ltd et al

Filing 42

AMENDED ORDER re 29 MOTION to Dismiss filed by Youngtek Solutions Ltd. See text of order. Signed by Judge Mark W Bennett on 12/2/11. (djs)

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF IOWA
CENTRAL DIVISION

FRASERSIDE IP L.L.C., an Iowa
Limited Liability Company,
Plaintiff,

No. C11-3005-MWB

vs.
YOUNGTEK SOLUTIONS LIMITED,
dba EmpFlix, dba www.empflix.com,
dba TNAFlix.com and www.tnaflix.com,
and John Does 1-100 and John Doe
Companies 1-100,

AMENDED ORDER REGARDING
DEFENDANT YOUNGTEK
SOLUTIONS LIMITED’S MOTION
TO DISMISS

Defendants.
____________________
In this action, plaintiff Fraserside IP L.L.C. (“Fraserside”) filed a complaint against
defendant Youngtek Solutions Limited (“Youngtek”), John Does, and John Doe
Companies, alleging the following causes of action: copyright infringement, in violation
of 17 U.S.C. §§ 106 and 501 et seq.; contributory copyright infringement, in violation of
17 U.S.C. §§ 106 and 501 et seq.; vicarious copyright infringement, in violation of 17
U.S.C. §§ 106 and 501 et seq.; inducing copyright infringement, in violation of 17 U.S.C.
§§ 106 and 501 et seq.; trademark infringement, in violation of 15 U.S.C. § 1114;
contributory trademark infringement, in violation of 15 U.S.C. § 1114; vicarious
trademark infringement, in violation of 15 U.S.C. § 1114; false designation of origin, in
violation of 15 U.S.C. § 1125(a); and, dilution of trademark, in violation of 15 U.S.C.
§ 1125(c). Youngtek has filed a Motion to Dismiss (docket no. 29) in which it seeks

dismissal dismissed pursuant to Federal Rules of Civil procedure 12(b)(1), 12(b)(2), and
12(b)(6). In that motion, Youngtek argues, inter alia, that Fraserside is not the legitimate
owner or registrant of the intellectual property at issue.
Fraserside has attached to its resistance to the motion to dismiss documents
purporting to be transfers of copyrights and trademarks to it from its parent company and
another company. The issue on a motion to dismiss for failure to state a claim pursuant
to FED. R. CIV. P. 12(b)(6) is not whether a plaintiff will ultimately prevail, but whether
the plaintiff is entitled to offer evidence in support of his or her claims. Scheuer v.
Rhodes, 416 U.S. 232, 236 (1974); United States v. Aceto Agric. Chem. Corp., 872 F.2d
1373, 1376 (8th Cir. 1989). In considering a motion to dismiss under Rule 12(b)(6), the
court must assume that all facts alleged in the plaintiff’s complaint are true, and must
liberally construe those allegations. Parkhurst v. Tabor, 569 F.3d 861, 865 (8th Cir.
2009).
On a motion to dismiss pursuant to Rule 12(b)(6), the court ordinarily cannot
consider matters outside of the pleadings, unless the court converts the Rule 12(b)(6)
motion into a motion for summary judgment pursuant to Rule 56. See FED. R. CIV. P.
12(b)(6); see also Buck v. F.D.I.C., 75 F.3d 1285, 1288 & n.3 (8th Cir. 1996). However,
on a motion to dismiss, the court may consider certain matters outside of the pleadings
without converting the motion into a motion for summary judgment. For example, the
court may consider documents outside of the pleadings where “the plaintiffs’ claims are
based solely on the interpretation of the documents [submitted] and the parties do not
dispute the actual contents of the documents.” Jenisio v. Ozark Airlines, Inc., Retirement
Plan, 187 F.3d 970, 972 n. 3 (8th Cir. 1999) (citing Silver v. H & R Block, Inc., 105 F.3d
394, 397 (8th Cir. 1997)). The court may also take judicial notice of public records, such
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as the docket and pleadings of pending judicial proceedings, pursuant to Rule 201 of the
Federal Rules of Evidence. See also Cinel v. Connick, 15 F.3d 1338, 1343 n. 6 (5th Cir.
1994) (holding that, “[i]n deciding a 12(b)(6) motion to dismiss, a court may permissibly
refer to matters of public record”); United States v. Wood, 925 F.2d 1580, 1582 (7th Cir.
1991) (similar holding); cf. Florida State Bd. of Admin. v. Green Tree Fin. Corp., 270
F.3d 645, 663 (8th Cir. 2001) (taking judicial notice of SEC filings in deciding a Rule
12(b)(6) motion to dismiss); Bryant v. Avado Brands, Inc., 187 F.3d 1271 (11th Cir. 1999)
(same); United States v. Doyle, 121 F.3d 1078, 1088 (7th Cir. 1997) (taking judicial notice
of district court’s docket sheet).
The documents Fraserside has submitted are neither “undisputed” nor “public
records.” Under the circumstances, the court finds that the appropriate course is to convert
Youngtek’s motion to dismiss into a motion for summary judgment. See FED. R. CIV. P.
12(b).

The court also finds it appropriate to establish a schedule for submission of all

documents pertinent to a Rule 56 motion for summary judgment.
THEREFORE,
1.

Youngtek’s Motion To Dismiss (docket no. 29) is converted into a motion

for summary judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure.
2.

On or before December 30, 2011, Youngtek shall refile its motion to

dismiss as a motion for summary judgment pursuant to Rule 56 of the Federal Rules of
Civil Procedure in full compliance with Rule 56 and N.D. IA. L.R. 56. After which,
Fraserside shall file a response to the motion for summary judgment in full compliance
with Rule 56 and N.D. IA. L.R. 56.

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IT IS SO ORDERED.
DATED this 2nd day of December, 2011.

__________________________________
MARK W. BENNETT
U. S. DISTRICT COURT JUDGE
NORTHERN DISTRICT OF IOWA

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