Bear Omnimedia LLC v. Mania Media LLC et al

Filing 121

ORDER that Mania's Motion to Dismiss ECF No. 116 is granted in part and denied in part; Plaintiff's trademark dilution and common law injury to business reputation claims are dismissed with leave to amend; plaintiff to file fourth amended complaint by 11/1/2018. Signed by Judge Miranda M. Du on 10/17/2018. (Copies have been distributed pursuant to the NEF - KW)

1
2
3
4
5
6

UNITED STATES DISTRICT COURT

7

DISTRICT OF NEVADA

8

***

9

BEAR OMNIMEDIA LLC,

Case No. 2:17-cv-01478-MMD-CWH
Plaintiff,

10

ORDER

v.
11
12

MANIA MEDIA LLC dba “BEAR FILMS”
and BEARFILMS.com; et al.,
Defendants.

13
14
15

I.

SUMMARY

16

This trademark case focuses on the use of, and rights to, the term “Bear” as used

17

in niche parlance in the gay community. In the operative complaint before the Court (Third

18

Amended Complaint (“TAC”)) Plaintiff Bear Omnimedia LLC asserts claims of trademark

19

infringement, trademark dilution, unfair competition, false description, violation of The

20

Anticybersquatting Consumer Protection Act (“ACPA”), common law unfair competition,

21

and common law injury to business reputation. Defendant Mania Media LLC dba “BEAR

22

FILMS” and BEARFILMS.com (“Mania”) moves to dismiss the TAC under Federal Rule of

23

Civil Procedure 12(b)(6) (“Motion”). (ECF No. 116.) Having considered Plaintiff’s response

24

(ECF No. 117) and Mania’s reply (ECF No. 118), 1 the Court will grant Mania’s Motion in

25

part and deny it in part.

26

///

27

///

28

1In

their respective motions, both Plaintiff and Mania provide summary-judgmenttype arguments that the Court declines to consider at this stage.

1

II.

RELEVANT BACKGROUND

2

The relevant facts are taken from the TAC (ECF No. 58), unless otherwise noted.

3

Plaintiff is the publisher of BEAR magazine and movies. Plaintiff claims that “BEAR”

4

is one of the longest-established erotic periodical and movie brands specifically geared

5

toward gay men. Plaintiff alleges it is the owner of three marks that use the terms

6

“BEAR”—stylized or “BUTCH BEAR” conjointly. Plaintiff contends that Defendants have

7

engaged in violative use of these marks. Particularly, Mania is alleged to have violated

8

Plaintiff’s marks with the creation and use of the website or domain BearFilms.com

9

The United States Patent and Trademark Office recognizes Plaintiff’s marks

10

respectively as follows 2: (1) “MARK: BEAR (stylized and/or with design . . . The mark

11

consists of An oval shape with the word “Bear” inside the design. The mark may be any

12

color or size”; 3 (2) “Word Mark BUTCH BEAR . . . Color is not claimed as a feature of the

13

mark. The mark consists of the wording ‘BUTCH BEAR’ inside a design of a square. The

14

word ‘BUTCH’ appears stacked above the word ‘BEAR.’” 4

15

III.

LEGAL STANDARD

16

A court may dismiss a plaintiff’s complaint for “failure to state a claim upon which

17

relief can be granted.” Fed. R. Civ. P. 12(b)(6). A properly pleaded complaint must provide

18

“a short and plain statement of the claim showing that the pleader is entitled to relief.” Fed.

19

R. Civ. P. 8(a)(2); Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007). While Rule

20

8 does not require detailed factual allegations, it demands more than “labels and

21

conclusions” or a “formulaic recitation of the elements of a cause of action.” Ashcroft v.

22

Iqbal, 556 U.S. 662, 678 (2009) (citing Twombly, 550 U.S. at 555.) “Factual allegations

23

///

24
25
26
27

2The

Court takes judicial notice of this information as matters of public record. See
Lee v. City of Los Angeles, 250 F.3d 668, 689 (9th Cir. 2001) (quoting Mack v. S. Bay
Beer Distrib., 798 F.2d 1279, 1282 (9th Cir. 1986)); see also Fed. R. Evid. 201.
3(ECF

No. 97-9 at 5, 7; ECF No. 97-10 at 5.)

4(ECF

No. 97-11.)

28
2

1

must be enough to rise above the speculative level.” Twombly, 550 U.S. at 555. Thus, to

2

survive a motion to dismiss, a complaint must contain sufficient factual matter to “state a

3

claim to relief that is plausible on its face.” Iqbal, 556 U.S. at 678 (internal citation omitted).

4

In Iqbal, the Supreme Court clarified the two-step approach district courts are to

5

apply when considering motions to dismiss. First, a district court must accept as true all

6

well-pleaded factual allegations in the complaint; however, legal conclusions are not

7

entitled to the assumption of truth. Id. at 678–79. Mere recitals of the elements of a cause

8

of action, supported only by conclusory statements, do not suffice. Id. at 678. Second, a

9

district court must consider whether the factual allegations in the complaint allege a

10

plausible claim for relief. Id. at 679. A claim is facially plausible when the plaintiff’s

11

complaint alleges facts that allow a court to draw a reasonable inference that the

12

defendant is liable for the alleged misconduct. Id. at 678. Where the complaint does not

13

permit the court to infer more than the mere possibility of misconduct, the complaint has

14

“alleged—but it has not show[n]—that the pleader is entitled to relief.” Id. at 679 (internal

15

quotation marks omitted). When the claims in a complaint have not crossed the line from

16

conceivable to plausible, the complaint must be dismissed. Twombly, 550 U.S. at 570. A

17

complaint must contain either direct or inferential allegations concerning “all the material

18

elements necessary to sustain recovery under some viable legal theory.” Twombly, 550

19

U.S. at 562 (quoting Car Carriers, Inc. v. Ford Motor Co., 745 F.2d 1101, 1106 (7th Cir.

20

1989) (emphasis in original)).

21

While a court generally cannot consider matters beyond the pleadings on a motion

22

to dismiss, the court may consider documents “‘properly submitted as part of the

23

complaint’” and “may take judicial notice of ‘matters of public record.’” Lee v. City of Los

24

Angeles, 250 F.3d 668, 688–89 (9th Cir. 2001) (quotations omitted).

25

IV.

DISCUSSION

26

Mania’s Motion is generally premised on the argument that Plaintiff fails to plead

27

plausible claims. The Court disagrees regarding all but Plaintiff’s trademark dilution and

28

///
3

1

common law injury to business reputation claims, which the Court provides Plaintiff leave

2

to amend.

3

A.

4

To state a claim for trademark infringement, a plaintiff must allege that (1) it has a

5

trademark right; (2) that was used by defendant; (3) in a way that is likely to cause

6

consumer confusion and thus infringe upon the trademark right. Levi Strauss Co. v. Blue

7

Bell, Inc., 778 F.2d 1352, 1354 (9th Cir. 1985). “The core element of trademark

8

infringement is the likelihood of confusion, i.e., whether the similarity of the marks is likely

9

to confuse customers about the source of the products.” Abercrombie & Fitch Co. v. Moose

10

Trademark Infringement

Creek, Inc., 486 F.3d 629, 633 (9th Cir. 2007).

11

Mania seeks dismissal of Plaintiff’s infringement claim based on the general

12

insufficient pleading argument and a specific contention that Plaintiff cannot establish a

13

claim merely based on the use of the word “Bear” by Mania and other Defendants. At first

14

glance, the Court was inclined to grant Mania’s Motion on the latter basis. However, the

15

Court ultimately declines to do so and will allow the claim to proceed.

16

To be clear, Plaintiff alleges it is the owner of three marks that use or incorporate

17

the term “BEAR” (See ECF No. 58 at 4–5, 13–19.) Plaintiff’s trademark registration

18

specifically notes the BEAR mark as not being of “standard characters.” (ECF No. 97-9 at

19

2; ECF No. 97-10 at 2.) “BUTCH BEAR” is also noted as “Mark Drawing Code (5) words,

20

letters, and/or numbers in stylized formed.” (ECF No. 97-11 at 2 (emphasis added).)

21

Plaintiff does not particularly own any word marks for the word “bear” standing alone or

22

absent design. See Pom Wonderful FFL v. Hubbard, 775 F.3d 1118, 1125 (9th Cir. 2014)

23

(indicating that marks like Plaintiffs are not standard character marks “that make no claim

24

to any particular font style, color, or size of display,” and therefore Plaintiff’s marks do not

25

cover “all design variations of the word[(s) used]”).

26

The Court assumes without deciding that Plaintiff’s marks are specific design or

27

logo marks. Nonetheless, Plaintiff asserts no discrete claim for violative use of its

28

trademarked design or logo. (ECF No. 58.) Plaintiff’s entire TAC is essentially premised
4

1

on impermissible or infringing use of the word mark “Bear,” along with a likelihood of

2

confusion. (Id.) Accordingly, this Court initially thought it would be most judicious to dismiss

3

Plaintiff’s TAC for failure to state a protectable interest in the word “Bear” or ownership of

4

a “Bear” word mark. See, e.g., Rise Basketball Skill Dev. LLC v. K Mart Corp., No.16-cv-

5

04895-WHO, 2017 WL 4865561, at *3 (N.D. Cal. Oct. 27, 2017) (citing Pom Wonderful

6

FFL, 775 F.3d at 1125) (“The ownership of a word mark entitles the owner exclusive rights

7

in the word for the class of goods specified in the trademark. In contrast, ownership of a

8

design [or logo] mark limits the owner’s rights exclusively to the specific design

9

trademarked.”). 5

10

But, the Ninth Circuit has also ruled that where words “are the most salient feature

11

of [a] mark[,]” the mark’s holder may also be entitled to protection of the words. KP

12

Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596, 603–04 (9th Cir.

13

2005). Because the words BEAR and BUTCH BEAR are the most salient features of

14

Plaintiff’s marks, the Court declines to dismiss this claim, and others, for the single reason

15

that Plaintiff is not the owner of a discrete “Bear” word mark.

16

The Court otherwise finds Plaintiff has sufficiently pleaded a claim of trademark

17

infringement. Plaintiff alleges it is the owner of the protectable BEAR and BUTCH BEAR

18

marks, that Mania has used Plaintiff’s “BEAR Marks” or a mark confusingly similar to

19

Plaintiff’s marks, thereby infringing upon Plaintiff’s trademark rights. (ECF No. 58.) Plaintiff

20

contends that confusion is likely because Mania provides goods and/or services in the

21

same type of retail channels and to the same class of purchasers—“gay men who are –

22

or who admire – masculine men with body or facial hair, poetically and fancifully referred

23
24
25
26
27
28

///
5See also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1153 (9th Cir. 2002)
(concluding “Although EMI has the exclusive right to use the trademark
‘ENTREPRENEUR’ to identify the products described in its regulation, trademark law does
not allow EMI to appropriate the word ‘entrepreneur’ for its exclusive use. The descriptive
nature and common necessary uses of the word ‘entrepreneur’ require that courts exercise
caution in extending the scope of protection to which the mark is entitled”); Gruner + Jahr
USA Pub. v. Meredith Corp., 991 F.2d 1072, 1077 (2d Cir. 1993) (“[T]he trademark
registration of the title PARENTS in its distinctive typeface did not confer an exclusive right
to plaintiff on variations of the word ‘parent,’ such term being more generic than
descriptive.”).
5

1

to as ‘bears’.” (Id. at 4.) Accepting Plaintiff’s allegations as true, the Court must allow this

2

claim to proceed.

3

B.

Unfair Competition

4

A claim of unfair competition under section 43(a) of the Latham Act essentially

5

requires the same elements as the trademark infringement claim—that a defendant is

6

using a mark confusingly similar to a plaintiff’s valid, protectable trademark. See Brookfield

7

Commc’ns, Inc. v. West Coast Entm’t Corp., 174 F.3d 1036, 1046 & n.6 (9th Cir. 1999).

8

Accordingly, as with the infringement claim supra, the Court declines to dismiss this claim

9

at this stage.

10

C.

Trademark Dilution

11

The Federal Trademark Dilution Act (“FTDA”) allows for injunctive relief by “the

12

owner of a famous mark that is distinctive . . .” against others “who, at any time after the

13

owner’s mark has become famous, commences use of a mark . . . in commerce that is

14

likely to cause dilution . . . of the famous mark . . ..” 15 U.S.C. § 1125(c)(1).

15

Plaintiff seeks permanent injunction based on alleged trademark dilution by Mania.

16

(ECF No. 58 at 7–8.) Mania argues both that Plaintiff’s dilution claim is generally

17

insufficiently pleaded and specifically that the claim fails to allege acts demonstrating the

18

marks are famous within the meaning of the relevant statutes. (ECF No. 116 at 6–8; ECF

19

No. 118 at 2–3.) The Court agrees this claim is insufficiently pleaded.

20

In the TAC, Plaintiff generally asserts that its “BEAR” marks are famous “within the

21

meaning of the Anti-Dilution Act, 15 U.S.C. § 1125(c).” (ECF No. 58 at 7.) But, the bigger

22

issue is that Plaintiff asserts only that the Defendants, including Mania, created infringing

23

websites, etc., after Plaintiff registered its marks. Plaintiff thus asserts nothing to support

24

the operative element—that dilution occurred after the mark became famous. The Court

25

will dismiss this claim.

26

D.

False Description

27

A defendant may be liable under section 1125(a) where it “(1) use[s] in commerce

28

(2) any word, false designation of origin, false or misleading description, or representation
6

1

of fact, which (3) is likely to cause confusion or misrepresents the characteristics of his or

2

another person’s goods or services.” Freecycle Network, Inc. v. Oey, 505 F.3d 898, 902

3

(9th Cir. 2007) (citing 15 U.S.C. § 1125(a)).

4

Plaintiff has sufficiently pleaded this claim. Incorporating all of Plaintiff’s averments,

5

Plaintiff alleges that Defendants’ use of the term “BEAR” on websites, etc., providing erotic

6

film services to gay men, comprises a false description or representation of Plaintiff’s

7

business and merchandise, and such use is likely to create confusion about Plaintiff’s

8

business and merchandise. The Court will allow this claim to proceed.
E.

9

Violation of the ACPA

10

The ACPA provides:

11

13

A person shall be liable in a civil action by the owner of a mark . . . if, without
regard to the goods or services of the parties, that person (1) has a bad faith
intent to profit from that mark . . .; and (ii) registers, traffics in, or uses a
domain name [that is confusingly similar to another’s mark or dilutes
another’s famous mark].

14

Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672, 680 (9th Cir. 2005) (quoting 15 U.S.C. §

15

1125(d)(1)(A) (2004)). Plaintiff has sufficiently pleaded this claim by alleging that

16

Defendants, including Mania, have a bad faith intent to profit from its “BEAR Marks,” by

17

using domain names, pertinently BearFilms.com, in a way that is confusingly similar to

18

Plaintiff’s use of its marks, as previously noted.

12

19

F.

20

In Nevada, a common law unfair competition claim is the state equivalent of the

21

federal Latham Act claim. See A.L.M.N., Inc. v. Rosoff, 757 P.2d 1319, 1321 (Nev. 1988)

22

(citation omitted) (“Common law tradename infringement falls within a broader category of

23

prohibited unfair competition. ‘[Two questions are at the heart of this claim:] Has a

24

protectable right been created? Has it been infringed?’.”). Accordingly, like its federal

25

counterpart, this claim will also move forward.

26

///

27

///

28

///

Common Law Unfair Competition

7

1

G.

Common Law Injury to Business Reputation

2

Plaintiff asserts what it characterizes as a claim for “common law injury to business

3

reputation.” (ECF No. 58 at 9.) Neither Plaintiff nor Mania present any authority indicating

4

that injury to business reputation is an independent common law cause of action in

5

Nevada. (See ECF Nos. 58, 116, 117, 118.) To the extent an independent cause of action

6

for the claim exists, this Court concludes that Plaintiff fails to plausibly plead it. The Court

7

finds guidance in Kische USA, LLC v. Simsek, No. C16-0168JLR, 2016 WL 6273261, *7

8

(D. W.D. Wash. June 29, 2016).
In Kische, the plaintiff alleged:

9

13

Defendants' wrongful use of KISCHE's trademarks causes injures [sic] to
and creates a likelihood of injury to KISCHE's business reputation because
persons encountering KISCHE and its brands and services will believe that
KISCHE is affiliated with or related to or has the approval of Defendants, and
any adverse reaction by the public to Defendants and the quality of its [sic]
products and the nature of its business will injure the business reputation of
KISCHE and the goodwill that it enjoys in connection with its marks.

14

Id. The court concluded that even if such a claim existed in Washington common

15

law it was insufficiently pleaded because “[i]njury to a business’s reputation or

16

goodwill generally constitutes special damages and, as such must be pleaded with

17

particularity pursuant to Federal Rule of Civil Procedure 9(g).” Id.

10
11
12

Here, in substance, Plaintiff’s pleading mirrors the Kische plaintiff’s

18
19

insufficient pleading 6:

23

Defendants’ use of Plaintiff’s trademark inures and creates a likelihood of
injury to Plaintiff’s business reputation because persons encountering
Plaintiff and its products and services will believe that Plaintiff is affiliated
with or related to or has the approval of Defendants, and any adverse
reaction by the public to Defendants and the quality of its products and the
nature of its business will injure the business reputation of Plaintiff and the
goodwill that it enjoys in connection with its BEAR trademark.

24

(ECF No. 58 at 9–19.) Accordingly, as the Kische court did, this Court will dismiss

25

this claim as implausibly pleaded.

26

///

20
21
22

27
28

6Although

the TAC “incorporates the allegations in the preceding paragraph as if
fully set forth herein[,]” the Court cannot decipher what more particularized allegations
would go to this claim as against Mania.
8

1

H.

Leave to Amend

2

Plaintiff has requested that that the Court provide it another opportunity to amend

3

its complaint should the Court conclude its claims against Mania needs additional

4

specificity. (ECF No. 117 at 13.) The Court would ordinarily decline to grant such a request

5

considering the prior amendments. However, the policy favoring amendment must be

6

applied with “extreme liberality.” Eminence Capital, LLC v. Aspeon, Inc., 316 F.3d 1048,

7

1051 (9th Cir. 2003); see also Fed. R. Civ. P. 15(a)(2) (“The court should freely give leave

8

[to amend] when justice so requires.”). Having considered the relevant factors, the Court

9

provides Plaintiff another chance to amend its complaint because amendment is

10

appropriate and would not be clearly futile. See Foman v. Davis, 371 U.S. 178, 182 (1962)

11

(providing factors for denying an amendment). Plaintiff has leave to amend only the

12

trademark dilution and common law injury to business reputation claims.

13

V.

CONCLUSION

14

The Court notes that the parties made several arguments and cited to several cases

15

not discussed above. The Court has reviewed these arguments and cases and determines

16

that they do not warrant discussion as they do not affect the outcome of the motion before

17

the Court.

18

It is therefore ordered that Mania’s motion to dismiss (ECF No. 116) is granted in

19

part and denied in part. It is denied as to all but Plaintiff’s trademark dilution and common

20

law injury to business reputation claims. These two claims are dismissed with leave to

21

amend.

22

It is further ordered that Plaintiff has fifteen days from the date of this order to amend

23

the complaint to address the noted deficiencies, and the complaint must be entitled anew

24

“Fourth Amended Complaint.” Failure to address the TAC’s deficiencies within the

25

prescribed time will result in prejudicial dismissal of Plaintiff’s trademark dilution and

26

common law injury to business reputation claims.

27

///

28

///
9

1

DATED THIS 17th day of October 2018.

2
3
MIRANDA M. DU
UNITED STATES DISTRICT JUDGE

4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
10