580 F.3d 874 (9th Cir. 2009), 08-55443, Hilton v. Hallmark Cards
|Citation:||580 F.3d 874, 92 U.S.P.Q.2d 1178|
|Opinion Judge:||O'SCANNLAIN, Circuit Judge:|
|Party Name:||Paris HILTON, Plaintiff-Appellee, v. HALLMARK CARDS, a Missouri corporation, Defendant-Appellant.|
|Attorney:||Lincoln D. Bandlow, Spillane Shaeffer Aronoff Bandlow LLP, Los Angeles, CA, argued the cause for the appellant and filed briefs. Brent H. Blakely, Blakely Law Group, Hollywood, CA, argued the cause for the appellee and filed the brief. Lynn Rowe Larsen and Timothy F. Sweeney, Law Office of Timoth...|
|Judge Panel:||Before: JOHN T. NOONAN, DIARMUID F. O'SCANNLAIN, and SUSAN P. GRABER, Circuit Judges.|
|Case Date:||August 31, 2009|
|Court:||United States Courts of Appeals, Court of Appeals for the Ninth Circuit|
Argued and Submitted May 6, 2009.
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Appeal from the United States District Court for the Central District of California, Percy Anderson, District Judge, Presiding. D.C. No. 2:07-cv-05818-PA-AJW.
We must decide whether California law allows a celebrity to sue a greeting card company for using her image and catchphrase in a birthday card without her permission.
Paris Hilton is a controversial celebrity known for her lifestyle as a flamboyant heiress. As the saying goes, she is " famous for being famous."
She is also famous for starring in " The Simple Life," a so-called reality television program. The show places her and fellow heiress Nicole Ritchie in situations for which, the audience is to assume, their privileged upbringings have not prepared them. For example, work. In an episode called " Sonic Burger Shenanigans," Hilton is employed as a waitress in a " fast food joint." As in most episodes, Hilton says, " that's hot," whenever she finds something interesting or amusing. She has registered the phrase as a trademark with the United States Patent & Trademark Office.
Hallmark Cards is a major national purveyor of greeting cards for various occasions. This case is about one of its birthday cards. The front cover of the card contains a picture above a caption that reads, " Paris's First Day as a Waitress." The picture depicts a cartoon waitress, complete with apron, serving a plate of food to a restaurant patron. An oversized photograph of Hilton's head is super-imposed on the cartoon waitress's body. Hilton says to the customer, " Don't touch that, it's hot." The customer asks, " what's hot?" Hilton replies, " That's hot." The inside of the card reads, " Have a smokin' hot birthday."
Hilton sued Hallmark, asserting three causes of action. The First Amended Complaint alleges misappropriation of publicity under California common law; false designation under the Lanham Act, 15 U.S.C. § 1125(a); and infringement of a federally registered trademark. Hallmark filed a motion to dismiss each claim under Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim on which relief could be granted. The district court
granted one portion of the motion to dismiss: the trademark infringement claim, a judgment from which Hilton does not appeal. By separate motion, Hallmark moved specially to strike Hilton's right of publicity claim under California's anti-SLAPP statute.1 In both motions, Hallmark raised defenses peculiar to each cause of action, some based on the First Amendment to the United States Constitution and some not.
The district court denied the remaining portions of the motions to dismiss and denied the special motion to strike the anti-SLAPP claim. It concluded that the defenses required a more fact-intensive inquiry than is permissible at such stage of the case. Hallmark timely appeals.
Before discussing the merits of this appeal, we must assure ourselves that we have jurisdiction over the appeal of denials of both motions.
As to the special motion to strike, appellate courts generally have jurisdiction only over final judgments and orders. 28 U.S.C. § 1291; Digital Equip. Corp. v. Desktop Direct, Inc., 511 U.S. 863, 867-68, 114 S.Ct. 1992, 128 L.Ed.2d 842 (1994). The collateral order doctrine, however, " entitles a party to appeal not only from [ordinary final judgments] ... but also from a narrow class of decisions that do not terminate the litigation, but must, in the interest of achieving a healthy legal system, ... nonetheless be treated as final." Digital Equip. Corp., 511 U.S. at 867, 114 S.Ct. 1992 (internal citations and quotation marks omitted). We have held that denials of special motions to strike under California's anti-SLAPP statute fall into this narrow class. Batzel v. Smith, 333 F.3d 1018, 1024-26 (9th Cir.2003) (noting that anti-SLAPP motions to strike assert a form of immunity from suit); but cf. Englert v. MacDonell, 551 F.3d 1099, 1106-07 (9th Cir.2009) (holding that the denial of an anti-SLAPP motion under Oregon law is not an appealable collateral order, while recognizing that the denial of a California anti-SLAPP motion is). Thus, we are satisfied that we have jurisdiction to review the denial of Hallmark's anti-SLAPP motion under the collateral order doctrine.2
Denials of motions to dismiss under Rule 12(b)(6) are ordinarily not appealable, even as collateral orders. See Catlin v. United States, 324 U.S. 229, 236, 65 S.Ct. 631, 89 L.Ed. 911 (1945). However, we " permit[ ] the exercise of appellate jurisdiction over otherwise non-appealable orders that are ‘ inextricably intertwined’ with another order that is properly appealable." Batzel, 333 F.3d at 1023. This doctrine requires either that " we must decide the pendent issue in order to review the claims properly raised on interlocutory appeal ... or [that] resolution of the issue properly raised on interlocutory appeal
necessarily resolves the pendent issue." Id. (internal quotation marks omitted).
We first address whether we have jurisdiction over the denial of the motion to dismiss the Lanham Act claim as an order inextricably intertwined with the anti-SLAPP motion.
Hallmark argues that the defenses it raises to Hilton's Lanham Act claim are based on some of the same First Amendment concerns that animate its potential defenses to the misappropriation of publicity claim. That may be, but Hallmark only moved to strike the misappropriation of publicity claim. Indeed, it could not have moved to strike the Lanham Act claim because, as the parties agree, the anti-SLAPP statute does not apply to federal law causes of action. See Bulletin Displays, LLC v. Regency Outdoor Adver., Inc., 448 F.Supp.2d 1172, 1180-82 (C.D.Cal.2006). A motion to dismiss one cause of action is not, ordinarily, inextricably intertwined with a motion to strike a different cause of action under California's anti-SLAPP law, even if the two claims are doctrinally similar.
Because a federal court can only entertain anti-SLAPP special motions to strike in connection with state law claims, there is no properly appealable order with which the Lanham Act claim could be inextricably intertwined. We therefore lack jurisdiction to review it.
What about the denial of the portions of Hallmark's motion to dismiss pertaining to the misappropriation of publicity claim, the same claim that was the target of the anti-SLAPP motion?
It is clear that not every motion to dismiss the same claim that underlies an anti-SLAPP motion is " inextricably intertwined" with such motion. We have held, for example, that a motion to dismiss for lack of personal jurisdiction 3 is not inextricably intertwined with an anti-SLAPP motion. Batzel, 333 F.3d at 1023. In Zamani v. Carnes, however, we did review a motion to dismiss for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6), which was made as an alternative to an anti-SLAPP special motion to strike the same claim. 491 F.3d 990, 994 (9th Cir.2007). We did it, however, without considering whether we had jurisdiction to do it. 4 Zamani does not, therefore, compel us to conclude that a motion to dismiss a substantive claim under Rule 12(b)(6) is inextricably intertwined with a special motion to strike. See, e.g., United States v. Booker, 375 F.3d 508, 514 (7th Cir.2004) (" An assumption is not a holding." ). We must consider the question for ourselves.
The first type of inextricably intertwined order is one that " we must [review] ... in order to review the claims properly raised on interlocutory appeal." Batzel, 333 F.3d at 1023 (internal quotation marks omitted). Resolution of a motion to dismiss for failure to state a claim is not a predicate to resolving an anti-SLAPP motion. As we illustrate in this very opinion, we can proceed directly to the anti-SLAPP motion without any interference from a motion to dismiss.
An order may also be inextricably intertwined with an immediately appealable
one if " resolution of the issue properly raised on interlocutory appeal necessarily resolves the pendent issue." Id. (internal quotation marks omitted). To determine whether a motion to dismiss (the pendent issue) is inextricably intertwined with an anti-SLAPP motion to strike (the issue properly raised) in this sense, we must briefly consider the inquiry associated with an anti-SLAPP motion.
As we discuss infra, an anti-SLAPP motion requires the court to ask, first, whether the suit arises from the defendant's protected conduct and, second, whether the plaintiff has shown a probability of success on the merits. If the first question is answered in the negative, then the motion must fail, even if the plaintiff stated no cognizable claim. Of course, if a...
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