Gibson Guitar Corp v. Viacom International Inc et al, No. 2:2012cv10870 - Document 24 (C.D. Cal. 2013)
Court Description: ORDER GRANTING VIACOM INTERNATIONAL MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM by Judge Dean D. Pregerson: The court finds that the Complaint in its current form fails to state a claim for relief. The motion to dismiss under Rule12(b)(6) is GRANTED with leave to amend. Any amendment must be made within ten days of the date of this order. (lc). Modified on 3/8/2013. (lc).
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Gibson Guitar Corp v. Viacom International Inc et al Doc. 24 1 2 O 3 4 NO JS-6 5 6 7 8 UNITED STATES DISTRICT COURT 9 CENTRAL DISTRICT OF CALIFORNIA 10 11 GIBSON GUITAR CORP., a Delaware corporation, 12 Plaintiff, 13 v. 14 15 16 VIACOM INTERNATIONAL INC., a Delaware corporation; JOHN HORNBY SKEWES & CO., LTD., a United Kingdom corporation, 17 18 19 Defendants. ___________________________ ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) Case No. CV 12-10870 DDP (AJWx) ORDER GRANTING MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM [Dkt. No. 13] Presently before the court is Defendant Viacom International 20 Inc. (“Viacom”)’s Motion to Dismiss Case for Lack of Subject Matter 21 Jurisdiction and, in the Alternative, for Failure to State a Claim 22 on Which Relief May Be Granted. 23 submissions, the court adopts the following order. 24 I. BACKGROUND 25 Having considered the parties’ Plaintiff Gibson Guitar Corporation (“Gibson”) owns trademarks 26 to the Flying V Body Shape Design Trademark, the Flying V Peg-Head 27 Design Trademark, and the word mark FLYING V. 28 Defendant Viacom is a Delaware corporation that owns trademarks for (Compl. ¶ 2.) Dockets.Justia.com 1 SPONGEBOB SQUAREPANTS. 2 Co. Ltd. (“JHS”) is a United Kingdom corporation that promotes and 3 sells various products using the SPONGEBOB trademarks. 4 Gibson alleges that Defendants “are or have been advertising and 5 selling” products using the Flying V trademark. 6 particular, Gibson is concerned with the SpongeBob SquarePants 7 Flying V Ukulele (the “Ukulele”). 8 9 (Id. ¶ 6.) Defendant John Hornby Skewes & (Id. ¶ 7.) (Id. ¶ 24.) In (Id. ¶ 22, Exh. D.) Gibson asserts claims for trademark infringement, counterfeiting, false designation of origin, false descriptions of 10 fact and representations and false advertising, trademark dilution, 11 trade dress infringement, and contributory infringement under 12 federal law, analogous state law claims, and accounting. 13 II. LEGAL STANDARD AND DISCUSSION 14 A. Subject Matter Jurisdiction 15 Viacom moves to dismiss the Complaint for lack of subject 16 matter jurisdiction under Rule 12(b)(1). 17 jurisdictional issue is inextricable from the merits of a case, the 18 court may determine jurisdiction on a motion to dismiss for lack of 19 jurisdiction under Rule 12(b)(1).” 20 685 (9th Cir. 2009). 21 under 12(b)(1) either on the face of the pleadings or with 22 reference to extrinsic evidence. 23 Inc., 38 F.3d 1136, 1139 (9th Cir. 2003). 24 jurisdiction is challenged, the party asserting jurisdiction bears 25 the burden of proving its existence. 26 “Unless the Robinson v. U.S., 586 F.3d 683, A party may raise a jurisdictional challenge Warren v. Fox Family Worldwide, Where subject matter Robinson, 586 F.3d at 685. Viacom makes a factual challenge to subject matter 27 jurisdiction and argues that it has presented evidence of a lack of 28 jurisdiction that Gibson has failed to rebut. 2 Viacom presents the 1 license agreement between itself and JHS indicating that it 2 licensed SPONGEBOB to JHS for character-identified musical items 3 for use in certain countries but not in the United States. 4 Ashley Holman, Exh. A.) 5 (Decl. A Rule 12(b)(1) dismissal is not appropriate when “the 6 jurisdictional issue and substantive issues are so intertwined that 7 the question of jurisdiction is dependent on the resolution of 8 factual issues going to the merits.” 9 Meyer, 373 F.3d 1035, 1039-40 (9th Cir. 2004)(internal citation and Safe Air for Everyone v. 10 quotation marks omitted). 11 merits of an action are intertwined where a statute provides the 12 basis for both the subject matter jurisdiction of the federal court 13 and the plaintiff's substantive claim for relief.” 14 citation and quotation marks omitted). 15 the court lacks subject matter jurisdiction because there has been 16 no use of the mark in commerce. 17 found in the Lanham Act, in the same provision that provides 18 Gibson’s cause of action. 19 without the consent of the registrant . . . use in commerce any 20 reproduction, counterfeit, copy, etc. of a registered mark . . . 21 shall be liable in a civil action . . . .”). 22 “The question of jurisdiction and the Id. (internal Here, Viacom asserts that This jurisdictional requirement is 15 U.S.C. § 1114 (“Any person who shall, The court therefore finds that the question of jurisdiction 23 and merits are intertwined and that it is not appropriate to 24 dismiss the case for lack of subject matter jurisdiction. 25 B. Failure to State a Claim 26 Viacom also argues under Rule 12(b)(6) that Gibson failed to 27 state a claim for use of the mark in U.S. commerce or for 28 infringing activity by Viacom. A complaint will survive a motion 3 1 to dismiss under Rule 12(b)(6) when it contains "sufficient factual 2 matter, accepted as true, to state a claim to relief that is 3 plausible on its face." Ashcroft v. Iqbal, 556 U.S. 662, 663 (2009) 4 (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). 5 When considering a Rule 12(b)(6) motion, a court must "accept as 6 true all allegations of material fact and must construe those facts 7 in the light most favorable to the plaintiff." 8 213 F.3d 443, 447 (9th Cir. 2000). 9 include "detailed factual allegations," it must offer "more than an Resnick v. Hayes, Although a complaint need not 10 unadorned, the-defendant-unlawfully-harmed-me accusation." 11 556 U.S. at 678. 12 more than a statement of a legal conclusion "are not entitled to 13 the assumption of truth." 14 that merely offers "labels and conclusions," a "formulaic 15 recitation of the elements," or "naked assertions" will not be 16 sufficient to state a claim upon which relief can be granted. 17 at 678 (citations and internal quotation marks omitted). 18 Iqbal, Conclusory allegations or allegations that are no Id. at 679. In other words, a pleading Id. "When there are well-pleaded factual allegations, a court 19 should assume their veracity and then determine whether they 20 plausibly give rise to an entitlement of relief." Id. at 664. 21 Plaintiffs must allege "plausible grounds to infer" that their 22 claims rise "above the speculative level." 23 555-56. "Determining whether a complaint states a plausible claim 24 for relief" is a "context-specific" task, "requiring the reviewing 25 court to draw on its judicial experience and common sense." 26 556 U.S. at 663-64. 27 Twombly, 550 U.S. at The complaint makes the following allegations: 28 4 Iqbal, 1 7. Upon information and belief, Defendant JHS is 2 engaged in the promotion and sale of various products 3 containing the above listed Viacom trademarks in the 4 U.S., including in this District, through their business, 5 catalogs, distributors and website at www.jhs.co.uk. 6 11. This action arises out of wrongful acts 7 including: advertising, offering for sale, selling and 8 distributing products by Defendants within this judicial 9 district. 10 21. Upon information and belief, Defendants offer 11 for sale and sell products using the Flying V Body Shape 12 Design® Trademark, Flying V Peg-Head Design® Trademark 13 and the word mark FLYING V® (“Defendants’ Unauthorized 14 Products.”). 15 22. Upon information and belief, notwithstanding the 16 lack of authorization from Gibson and the fact that said 17 Defendants’ Unauthorized Products otherwise are not 18 authorized to be sold utilizing the Gibson Trademarks, 19 Defendants have made repeated unauthorized use of the 20 Trademark in connection with said products, as described 21 below, with the intent to mislead and confuse consumers 22 into believing that said Defendants’ Unauthorized 23 Products are made directly by Gibson pursuant to Gibson’s 24 strict quality control standards or that said Defendants’ 25 Unauthorized Products are otherwise authorized or 26 licensed by Gibson and with the intent of 27 misappropriating, for their own benefits, the tremendous 28 goodwill built up by Gibson in the Gibson Trademarks. 5 1 23. In particular, Defendants have improperly used 2 the Gibson Trademarks in their advertising and 3 promotional materials for said Defendants’ Unauthorized 4 Products as well as on their Internet website at 5 www.jhs.co.uk, and otherwise have falsely stated or 6 implied that said Defendants’ Unauthorized Products are 7 made directly by Gibson pursuant to Gibson’s strict 8 quality controls standards or that their use of the 9 Gibson Trademarks is authorized or licensed by Gibson. 10 24. Plaintiff is informed and believes, and thereon 11 alleges that Defendants are or have been advertising and 12 selling the Defendants’ Unauthorized Products bearing the 13 Flying V Body Shape Design® Trademark and the FLYING V® 14 Trademark on the www.jhs.co.uk website and its product 15 pages at www.amazon.com. 16 25. Upon information and belief, the aforementioned 17 misuse of the Gibson Trademarks by Defendants was done 18 with the intent of deceiving or misleading consumers . . 19 . and otherwise attracting and misdirecting consumers 20 looking for genuine or authorized Gibson goods to 21 Defendants’ websites. 22 Viacom asserts that Gibson has not pled that Viacom designed, 23 manufactured, or sold the Ukulele. 24 “Defendants” did so, which Viacom claims is a “conclusory lumping 25 together” that is insufficient to meet the pleading standard under 26 Twombly and Iqbal. Viacom also argues that Gibson has failed to 27 allege facts supporting a finding of contributory infringement. 28 6 Gibson alleges that 1 The court agrees with Viacom that it is difficult to discern 2 what actions Gibson is alleging were performed by Viacom in 3 particular. 4 to Viacom have been specified, and the only website mentioned are 5 www.jhs.co.uk, belonging to Viacom’s co-defendant, and 6 www.amazon.com, also apparently associated with JHS products. 7 Compl. ¶¶ 23-24. 8 No advertising and promotional materials attributable Given the nature of the Defendants, Viacom being the trademark 9 owner and JHS being a product seller and promoter, the Complaint 10 should specify the different roles of each Defendant in order to 11 state a claim against each. 12 Complaint, the only specific allegation against Viacom is that it 13 licensed SpongeBob to JHS for certain products. 14 allegations appear to be joint allegations against Viacom and JHS. 15 However, it does not appear plausible to the court that the role of 16 each Defendant in the allegations would be identical. 17 considering the roles as described in the licensing agreement (the 18 authenticity of which Gibson does not dispute for the purposes of 19 this motion), it does not appear plausible that the Defendants’ 20 acts were entirely unitary. 21 must articulate which acts were performed by which Defendant. 22 /// 23 /// 24 /// 25 /// 26 /// 27 /// 28 /// So far as the court understands the All other Even without To state a claim for relief, Gibson 7 1 IV. CONCLUSION 2 The court finds that the Complaint in its current form fails 3 to state a claim for relief. The motion to dismiss under Rule 4 12(b)(6) is GRANTED with leave to amend. 5 made within ten days of the date of this order. 6 IT IS SO ORDERED. Any amendment must be 7 8 9 Dated: March 8, 2013 DEAN D. PREGERSON United States District Judge 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 8
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