Opinion
Case No. 3:19-cv-00119-AC
12-13-2019
POMEGRANATE COMMUNICATIONS, INC., Plaintiff, v. SOURCEBOOKS, INC., Defendant.
FINDINGS AND RECOMMENDATION :
Plaintiff Pomegranate Communications, Inc. ("Pomegranate") brings this lawsuit against Defendant Sourcebooks, Inc. ("Sourcebooks") for violations of the Lanham Act, codified at 15 U.S.C. § 1051 et seq. Pomegranate alleges Sourcebooks infringed on its book series trademark, "Women Who Dare," pursuant to 15 U.S.C. §§ 1114(1) and 1125(a). Sourcebooks moves to dismiss Pomegranate's Complaint, asserting Sourcebooks' use of Pomegranate's trademark is protected speech under the First Amendment, and the Lanham Act does not apply. For the reasons stated below, Sourcebooks' Motion to Dismiss (ECF No. 10) should be GRANTED, and Pomegranate's Complaint should be dismissed with leave to amend the Complaint.
Background
Pomegranate is a California corporation, with its principle place of business in Oregon, that publishes and sells books and other print materials. (Compl., ECF No. 1, ¶¶ 1, 6.) Pomegranate owns the federally registered trademark "Women Who Dare" for the title of its book series and associated trivia cards. (Id. ¶¶ 6-7, Ex. 1.) Sourcebooks is an Illinois corporation that also publishes books. (Id. ¶ 2.) Sourcebooks publishes and sells a book titled, "Women Who Dared: 52 Stories of Fearless Daredevils, Adventurers & Rebels" ("Women Who Dared"). (Def.'s Mot. Dismiss, ECF No. 10, at 1.) Neither Pomegranate nor Sourcebooks allege "Women Who Dared" is printed as part of a series with that title.
Pomegranate contends that Sourcebooks' use of the phrase "women who dared" has caused and likely will continue causing "confusion, mistake, or other deception," and Sourcebooks' use of Pomegranate's trademark is likely to lead consumers to believe Pomegranate is the source of, or is "connected with, sponsor[s], approve[s], or endorse[s]" "Women Who Dared." (Compl. ¶¶ 20, 27.) Pomegranate also asserts using the phrase "women who dared" in a book title is "confusingly similar" to its series trademark. (Id. ¶ 33.) Pomegranate offers no other factual allegations explaining why "Women Who Dared" is confusingly similar or misleads consumers into thinking Pomegranate is the source of, or is otherwise connected with, "Women Who Dared."
Pomegranate seeks injunctive relief and damages for Sourcebooks' alleged trademark infringement. (Id.) Sourcebooks moves to dismiss, asserting its book is an expressive work, the title is protected speech under the First Amendment, and, therefore, the Lanham Act does not apply. (Def.'s Mot. Dismiss at 1.) Pomegranate contends Sourcebooks' use of its trademark explicitly misleads consumers as to the source of the work, and therefore the Lanham Act applies. (Pl.'s Resp., ECF No. 15, at 6-7.)
Legal Standard
Under Rule 12(b)(6), a party may move to dismiss a complaint for "failure to state a claim upon which relief can be granted." FED. R. CIV. P. 12(b)(6). A court may dismiss "'based on the lack of cognizable legal theory or the absence of sufficient facts alleged'" under a cognizable legal theory. UMG Recordings, Inc. v. Shelter Capital Partners LLC, 718 F.3d 1006, 1014 (9th Cir. 2013) (quoting Balistreri v. Pacifica Police Dep't, 901 F.2d 696, 699 (9th Cir. 1990)).
To survive a motion to dismiss, a complaint must contain sufficient factual matter, accepted as true, to "state a claim to relief that is plausible on its face." Twombly, 550 U.S. at 570; see also CallerID4u , Inc. v. MCI Commc'ns Servs. Inc., 880 F.3d 1048, 1061 (9th Cir. 2018). "A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009); Teixeira v. Cty. of Alameda, 873 F.3d 670, 678 (9th Cir. 2017). The plausibility standard is not akin to a "probability requirement," but it asks for more than a sheer possibility that a defendant has acted unlawfully. Twombly, 550 U.S. at 556. When a plaintiff's complaint pleads facts that are "merely consistent with" a defendant's liability, the plaintiff's complaint "stops short of the line between possibility and plausibility of 'entitlement to relief.'" Id. at 557 (brackets omitted).
The court must accept as true the allegations in the complaint and construe them in favor of the plaintiff. Teixeira, 873 F.3d at 678; see also Iqbal, 556 U.S. at 679; Kwan v. SanMedica Int'l, 854 F.3d 1088, 1096 (9th Cir. 2017). The pleading standard under Rule 8 "does not require 'detailed factual allegations,' but it demands more than an unadorned, the-defendant-unlawfully-harmed-me accusation." Iqbal, 556 U.S. at 678 (quoting Twombly, 550 U.S. at 555); see also FED. R. CIV. P. 8(a)(2). "A pleading that offers labels and conclusions or a formulaic recitation of the elements of a cause of action will not do." Iqbal, 556 U.S. at 678 (internal citations omitted); Kwan, 854 F.3d at 1096. A complaint also does not suffice if it tenders "naked assertion[s]" devoid of "further factual enhancement." Twombly, 550 U.S. at 55.
Preliminary Procedural Matter
In support of its Motion to Dismiss, Sourcebooks submits twenty-two exhibits, including a copy of "Women Who Dared," a copy of one book from Pomegranate's "Women Who Dare" series, listings of Pomegranate's "Women Who Dare" books, and various listings of other books available that use some variation of "women who dare" in the title. (Decl. Tim Cunningham in Supp. Def.'s Mot. Dismiss ("Cunningham Decl."), ECF No. 11, Exs. 1-22.) Sourcebooks asks the court to take judicial notice of all twenty-two exhibits pursuant to Federal Rule of Evidence 201. (Req. for Jud. Not., ECF No. 12.) Pomegranate does not contest exhibits supplied by Sourcebooks that Pomegranate has referenced in its complaint, and their respective books are central to the parties' dispute. (Pl.'s Resp. at 5.) However, Pomegranate contends any material Sourcebooks has submitted outside of those materials referenced to in the complaint are improper for the court to consider. (Id. at 4-5.) The court agrees.
Generally, a court may not consider material beyond the complaint when deciding a Rule 12(b)(6) motion. FED. R. CIV. P. 12(d) (explaining that if court considers other materials, the motion is converted into a motion for summary judgment under Rule 56); see Akhtar v. Mesa, 698 F.3d 1202, 1212 (9th Cir. 2012) (quoting Swartz v. KPMG LLP, 476 F.3d 756, 763 (9th Cir. 2007) (per curiam)). However, a court may consider materials beyond the pleadings without converting the Rule 12(b)(6) motion into a motion for summary judgment under two exceptions: judicial notice and incorporation by reference. Khoja v. Orexigen Therapeutics, Inc., 899 F.3d 988, 998 (9th Cir. 2018); Lee v. City of Los Angeles, 250 F.3d 668, 688 (9th Cir. 2001) (discussing that a court may take judicial notice of matters of public record without converting a motion to dismiss into a motion for summary judgment). Judicial notice under Federal Rule of Evidence 201 permits a court to take judicial notice of undisputed facts in matters of public record. Khoja, 899 F.3d at 999. A court may not take judicial notice of disputed facts contained in such public records. Id.
In contrast to judicial notice, the incorporation by reference doctrine "is a judicially created doctrine that treats certain documents as though they are part of the complaint itself." Id. This doctrine is designed to prevent plaintiffs from selectively referencing portions of documents that support their claims, while omitting portions of those documents that weaken "or doom" their claims. Id. The Ninth Circuit has extended this doctrine to consider evidence on which the complaint "necessarily relies" if: "(1) the complaint refers to the document; (2) the document is central to the plaintiff's claim; and (3) no party questions the authenticity of the copy attached to the 12(b)(6) motion." Marder v. Lopez, 450 F.3d 445, 448 (9th Cir. 2006); Coto Settlement v. Eisenberg, 593 F.3d 1031, 1038 (9th Cir. 2010). The Ninth Circuit urges courts to use caution when drawing any inferences from documents incorporated by reference on a motion to dismiss. Khoja, 899 F.3d at 1003 (noting that although the incorporation by reference doctrine is designed to prevent artful pleading by plaintiffs, "the doctrine is not a tool for defendants to short-circuit the resolution of a well-pleaded claim.").
Central to the parties' dispute is the similarity between Sourcebooks' "Women Who Dared" and Pomegranate's series moniker, "Women Who Dare." Additionally, Pomegranate references these works throughout its complaint. (ECF No. 1.) Therefore, the court finds that the copy of "Women Who Dared" and at least one copy of Pomegranate's "Women Who Dare" books are integral to resolution of Pomegranate's claims. Additionally, Pomegranate has attached a copy of its registered trademark from the United States Patent and Trademark Office. (Compl., Ex. 1.) Accordingly, the court incorporates by reference Pomegranate's registered trademark (Ex. 1, ECF No. 1), the copy of "Women Who Dared" (Cunningham Decl., Ex. 1, ECF No. 11), and the copy of "Women of the Civil War" (Cunningham Decl., Ex. 2, ECF No. 11).
The remaining exhibits submitted by Sourcebooks are copies of various internet sites displaying information about Pomegranate's and Sourcebooks' books, and titles of books from other publishers that feature variations of "women who dare" in the title. The internet sites about the parties' books do not supply any necessary information that cannot be found in the books themselves. The copies of internet sites showing other books appear offered to show the phrase "women who dare" is used commonly in book titles. The frequency with which the phrase "women who dare" appears in other book titles is not relevant to whether Pomegranate has properly stated a claim for relief, and the other books are not implicated in Pomegranate's complaint. Accordingly, the court declines to incorporate by reference or take judicial notice of Sourcebooks's remaining exhibits submitted in ECF No. 11.
Discussion
Pomegranate's complaint contains a single claim for trademark infringement pursuant to 15 U.S.C. §§ 1114(1) and 1125(a). Section 1114 applies to registered marks, whereas section 1125 prohibits infringing conduct of certain unregistered marks. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 767-768 (1992). For the purpose of this motion, both sections are evaluated using the same standard. See id. at 768 ("the general principles for qualifying a mark for registration . . . are for the most part applicable in determining whether an unregistered mark is entitled to protection[.]"). The Lanham Act prohibits persons from reproducing, counterfeiting, copying, colorably imitating, or using a mark in such a way that is likely to cause confusion or mistake, or to deceive. 15 U.S.C. § 1114(1) (2018). Pomegranate asserts Sourcebooks is using its mark in such a way that has caused, and will continue to cause, confusion, mistake, or deception as to whether Pomegranate is connected with or is the source of Sourcebooks' "Women Who Dared." (Compl. ¶ 20.)
Trademark infringement claims ordinarily are evaluated using a likelihood-of-confusion test. See Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 900 (9th Cir. 2002). However, where a title of an expressive work is the alleged infringing use, the court applies the test articulated in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), to determine whether the Lanham Act applies. Mattel, 296 F.3d at 902. The Ninth Circuit holds expressive works are treated differently than other works because: "(1) they implicate the First Amendment right of free speech, which must be balanced against the public interest in avoiding consumer confusion; and (2) consumers are less likely to mistake the use of someone else's mark in an expressive work for a sign of association, authorship, or endorsement." Twentieth Century Fox Television v. Empire Distrib., Inc., 875 F.3d 1192, 1196 (9th Cir. 2017). Under the Rogers test, "literary titles do not violate the Lanham Act 'unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or content of the work.'" Mattel, 296 F.3d at 902 (quoting Rogers, 875 F.2d at 999).
The Ninth Circuit has further clarified each party's burden of proof on a trademark infringement claim. First, the defendant must "make a threshold legal showing that its alleged infringing use is part of an expressive work protected by the First Amendment." Gordon v. Drape Creative, Inc., 909 F.3d 257, 264 (9th Cir. 2018). Then the plaintiff must show "(1) that it has a valid, protectable trademark, and (2) that the mark is either not artistically relevant to the underlying work or explicitly misleading as to the source or content of the work." Id. at 265 (emphasis in original). If the plaintiff satisfies both elements, it must still prove infringement using a likelihood-of-confusion test. Id.
Sourcebooks' alleged infringing use is in the title of its book, and the law is clear that books are expressive works. See Brown v. Electronic Arts, Inc., 724 F.3d 1235, 1248 (9th Cir. 2013). Additionally, Pomegranate agrees "Women Who Dared" is an expressive work. (Pl.'s Resp. at 6.) Pomegranate has submitted evidence that its trademark is registered. (Compl., Ex. 1.) "Registration is prima facie evidence of the mark's validity and of the owner's exclusive right to use the mark in connection with the goods and services specified in the registration." Gordon, 909 F.3d at 263 (citing 15 U.S.C. § 1057(b) (2018)). Pomegranate meets its burden that it owns a valid and protectable trademark, which thus satisfies the first of Gordon's two elements. Pomegranate concedes that Sourcebooks' use of its mark is artistically relevant to the underlying work. (Pl.'s Resp. at 6.) Therefore, the only disputed issue in this case is whether Sourcebooks' use of Pomegranate's trademark is explicitly misleading as to the source or content of the work. Pomegranate must plausibly allege facts that demonstrate this to survive a motion to dismiss.
Before addressing whether Sourcebooks' use of Pomegranate's mark is explicitly misleading, a review of the development of case law in the Ninth Circuit provides useful context. The Ninth Circuit first adopted the Rogers test with its 2002 Mattel decision. Mattel, 296 F.3d at 902. In Mattel, the band Aqua produced a song called "Barbie Girl" which "pokes fun at Barbie and the values that Aqua contends she represents." Id. at 899, 901. The court noted that the "only indication that Mattel might be associated with the song is the use of Barbie in the title; if this were enough to satisfy this prong of the Rogers test, it would render Rogers a nullity." Id at 902. The Ninth Circuit effectively adopted a plain-meaning standard when evaluating whether Aqua's song was explicitly misleading as to source or content. However, at issue there was the use of a doll brand in a song title, an easily distinguishable difference.
Notable cases that followed in the Ninth Circuit generally involved a defendant using a commercial trademark or celebrity likeness in an artistically relevant way. See, e.g., Mattel, Inc. v. Walking Mountain Productions, 353 F.3d 792 (9th Cir. 2003) (holding photographer's parodic use of Barbie mark was not infringing); E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008) (holding video game creator's use of strip club's trademark and trade dress was not infringing); Brown, 724 F.3d 1235 (holding video game creator's use of football player's likeness was not infringing); Twentieth Century Fox, 875 F.3d 1192 (holding television series title about a fictitious record producer that used a record producer's trademark was not infringing). These cases consistently used Rogers' language regarding whether a work is explicitly misleading: "We must ask . . . whether there was an 'explicit indication,' 'overt claim,' or 'explicit misstatement' that caused consumer confusion." Brown, 724 F.3d at 1245 (quoting Rogers, 875 F.2d at 1001).
The most recent case using the Rogers test in the Ninth Circuit, Gordon, has changed the court's application of the second prong. In Gordon, the comedian who created the famed YouTube video, The Crazy Nastyass Honey Badger, sued a greeting card company for trademark infringement when it used Gordon's trademarked phrases "Honey Badger Don't Care" and "Honey Badger Don't Give a S---." Gordon, 909 F.3d at 261. Gordon presented facts that he produced various items with the honey badger phrases including greeting cards. Id. at 261-262. Gordon also presented facts that his video and catchphrases had become well-known nationally. Id. at 262. Gordon previously had some communication with the greeting card company about a licensing agreement to use his trademark, which never came to fruition. Id. Eventually, the greeting card company made various greeting cards without a licensing agreement that used variations of Gordon's catchphrases. Id.
The court found the greeting card company had at least minimally cleared the first Rogers prong, leaving it to reevaluate its precedent on the second prong. Id. at 269-270. The court noted that in every case it had prior to Gordon, the court had found that consumers clearly would not have viewed the trademark alone as identifying the source of the work. Id. at 270. However, the general rule—"the mere use of a trademark alone cannot suffice to make such use explicitly misleading"—must yield where "consumers would expect the use of a mark alone to identify the source." Id. (internal quotes removed) (emphasis in original).
Gordon articulates two factors a court must consider when evaluating whether consumers would expect use of a trademark alone to identify the source of artistic work. First, "the degree to which the junior user uses the mark in the same way as the senior user." Id. Second, "the extent to which the junior user has added his or her own expressive content to the work beyond the mark itself." Id.
While the Gordon court did not analyze the first factor in depth, it did note Rogers had condemned in a footnote "misleading titles that are confusingly misleading to other titles." Id.; Rogers, 875 F.2d at 999 n.5. If, for example, a junior user were to mite a Broadway play titled The Big Lebowski, with a plot generally involving the escapades of The Dude seeking a replacement rug, the Coen brothers could likely satisfy the explicitly misleading standard of Rogers' second prong. The present case presents a slight variation on titles that are similar. Pomegranate has registered its mark for a book series, not a book title. Book titles cannot be trademarked, only a book series. See Application of Cooper, 45 C.C.P.A. 923, 929 (1958).
A book series moniker, though it does serve some artistic purpose, primarily serves to indicate that the books come from a single source. Id. Stated differently, the book series trademark is the brand of the book collection. Based on Ninth Circuit precedent, the court concludes that for a book title containing the words found in a trademarked book series to be explicitly misleading, a plaintiff must show facts that the junior user intentionally used the mark in some way that explicitly misleads a consumer into thinking the junior user's book is a part of the senior user's book series. Although an issue of first impression in this district, cases from other districts support this reading of Ninth Circuit law.
The first of these cases involves a movie title that was similar to a video game title. C.I. Games S.A. v. Destination Films, No. 2:16-cv-05719-SVW-JC, 2016 WL 9185391 (C.D. Cal. 2016). In C.I. Games, which involved a motion to dismiss, the video game producer pleaded facts that its game was well known in the video game community, had a large volume of sales, and was marketed through a variety of media and retail outlets. Id. at *1. The video game producer also pleaded that many video games are turned into movies which would explicitly mislead consumers into thinking the game and movie came from the same producer. Id. Finally, the video game producer alleged the movie producer intentionally created the movie title to mislead consumers into thinking the movie was based on the game or created by the same producers. Id. at *9. Though decided prior to Gordon, the Central District of California held that "intentionally creating a title that could be confused with the title of another expressive work [is] 'explicitly misleading' for the purposes of the Rogers test." Id.
The next case that informs the court's conclusion involves a Latin band called "Loisaidas" and videos featuring a fictitious rap duo with the same name. Medina v. Dash Films, Inc., No. 15-cv-2551 (KBF), 2016 WL 3906714 (S.D.N.Y. 2016). The court first explained that "Loisaidas" is a Spanish slang word for lower east siders. Id. at *1. The plaintiff, who was from Manhattan's lower east side, chose to name his band Loisaidas because he hailed from the same locale to which the word refers. Id. The court stated, "if a 'trademark owner does not have the right to control public discourse whenever the public imbues his mark with a meaning beyond its source-identifying function,' the same limit applies with even more logical force where the mark had a public meaning before it ever played a source-identifying function." Id. at *6 (quoting Mattel, 296 F.3d at 900) (emphasis in original). The court continued, "Plaintiff is entitled to protect his duo's trademark, but not by staking his claim to a pre-existing term and then attempting to remove all expressive, non-explicitly-misleading uses from public circulation." Id.
C.I. Games and its holding applies where the senior user's book series mark has become well-known for that series, and a junior user is attempting to capitalize on that series' fame or success. Conversely, Medina's holding applies where the senior user's series mark is not as well- known, and the series name has meaning beyond identifying the book series. West Academic's "in a Nutshell" series falls into this category. While West Academic holds the trademark for its book series, the term "in a nutshell" has meaning far beyond its source-identifying meaning. The phrase "in a nutshell" has long had colloquial meaning for summarizing an idea, topic, or story. In this context, use of the words alone would not explicitly mislead, but use of the words combined with other facts, such as similar trade dress or same intended market, could be the overt indication of a misleading title that the Rogers test demands.
Here, Pomegranate has not adequately pleaded facts that consumers would expect use of "Women Who Dare" in a book title, without more, to identify Pomegranate as the source of the book. Pomegranate also fails to plead facts that Sourcebooks has used similar trade dress or markets its book to the same audience as Pomegranate, for example, that could be evidence of Sourcebooks' naked appropriation of Pomegranate's trademark. Pomegranate simply concludes that because it has held the trademark since 1990, and has used it continuously, the mark has acquired distinctiveness and secondary meaning. (Compl. ¶ 14-15.) Pomegranate's bare accusations that Sourcebooks is infringing on Pomegranate's trademark because Sourcebooks uses the words "women who dared" in its book title on a similar topic as found in Pomegranate's series, is the kind of "unadorned, the-defendant-unlawfully-harmed-me accusation" that does not meet the Rule 12(b)(6) standard. See Iqbal, 556 U.S. at 678. Though the works at issue have similarities, Pomegranate makes no allegations that "Women Who Dared" explicitly misleads as to the source or content of the work. See Gordon, 909 F.3d at 265. The law requires that the Lanham Act be construed narrowly to prevent intrusion on Sourcebooks' First Amendment rights. Rogers, 875 F.2d at 998. Pomegranate's complaint fails to state a claim on which relief can be granted.
Conclusion
For the reasons stated above and after careful consideration of Pomegranate's Complaint in light of the Rule 12(b)(6) standard, Sourcebooks' Motion to Dismiss (ECF No. 10) should be GRANTED, and Pomegranate's Complaint should be dismissed with leave to amend the Complaint.
Scheduling Order
The Findings and Recommendation will be referred to a district judge for review. Objections, if any, are due within fourteen (14) days. If no objections are filed, then the Findings and Recommendation will go under advisement on that date.
If objections are filed, then a response is due fourteen (14) days after being served with a copy of the objections. When the response is due or filed, whichever date is earlier, the Findings and Recommendation will go under advisement.
DATED this 13th day of December, 2019.
/s/_________
JOHN V. ACOSTA
United States Magistrate Judge