Celebrity Chefs Tour, LLC v. Macy's, Inc.
| Decision Date | 25 April 2014 |
| Docket Number | Case No. 13–CV–2714 JLS (KSC). |
| Court | U.S. District Court — Southern District of California |
| Parties | CELEBRITY CHEFS TOUR, LLC, a California limited liability company; and Promark Productions, LLC, a California limited liability company, Plaintiffs, v. MACY'S, INC., a Delaware corporation; Whirlpool Corporation, a Delaware corporation; LEC Media, LLC, an Illinois limited liability company; Executive Program Services, Inc., a Washington corporation; Jack O'Donnell, an individual; Scott Dummler, an individual; Devin Alexander, Inc., a California corporation; Devin Alexander, a.k.a. Renee Simone, an individual; and Does 1–10, inclusive, Defendants. |
OPINION TEXT STARTS HERE
Motion granted in part and denied in part. Richard Michael Wirtz, Wirtz Law APC, Thomas Daniel Foster, TD Foster, San Diego, CA, for Plaintiffs.
Christine M. La Pinta, Trevor Brian Potter, Seltzer Caplan McMahon Vitek, San Diego, CA, Cynthia Tsai Brady, Macy's Inc., St. Louis, MO, for Defendants.
ORDER: (1) GRANTING DEFENDANT EXECUTIVE PROGRAM SERVICES INC.'S REQUEST FOR JUDICIAL NOTICE; AND (2) GRANTING IN PART AND DENYING IN PART DEFENDANT EXECUTIVE PROGRAM SERVICES, INC.'S MOTION TO DISMISS PURSUANT TO FEDERAL RULE OF CIVIL PROCEDURE 12(b)(6)
Presently before the Court is Defendant Executive Program Services, Inc.'s (“EPS”) Motion to Dismiss (“MTD”) Pursuant to Federal Rule of Civil Procedure 12(b)(6). (ECF No. 66.) Also before the Court is EPS's Request for Judicial Notice (“RJN”) (ECF No. 66–2), as well as Plaintiffs Celebrity Chefs Tour, LLC (“CCT”) and Promark Productions, LLC's (“Promark,” and, collectively, “Plaintiffs”) Response in Opposition to (ECF No. 72) and EPS's Reply in Support of (ECF No. 75) the MTD. The Court vacated the motion hearing and took the matter under submission without oral argument pursuant to Civil Local Rule 7.1.d.1. (ECF No. 74.) Having considered the parties' arguments and the law, the Court GRANTS EPS's RJN and GRANTS IN PART AND DENIES IN PART EPS's MTD.
As a preliminary matter, EPS asserts that Plaintiffs' trademark claims fail because Plaintiffs seek punitive damages, which are unavailable under the Lanham Act. (MTD 10 n. 2, ECF No. 66–1.) However, “a Rule 12(b)(6) motion will not be granted merely because a plaintiff requests a remedy to which he or she is not entitled.” Summit Tech., Inc. v. High–Line Med. Instruments, Co., 933 F.Supp. 918, 927–28 (C.D.Cal.1996) (citation, alteration, and internal quotation marks omitted). Moreover, the Court declines to rule on the propriety of Plaintiffs' requests for punitive damages because a Rule 12(b)(6) motion is the improper vehicle for raising this argument. Rather, EPS should have addressed this issue in a Rule 12(f) motion to strike. See, e.g., Rodriguez v. JP Morgan Chase & Co., 809 F.Supp.2d 1291, 1300 (S.D.Cal.2011); Clark v. Allstate Ins. Co., 106 F.Supp.2d 1016 (S.D.Cal.2000); Clement v. Am. Greetings Corp., 636 F.Supp. 1326, 1332, 1333–34 (S.D.Cal.1986).
The elements of a claim for conversion consist of (1) ownership or a right to possession, (2) wrongful disposition of the property, and (3) damages. G.S. Rasmussen & Assocs., Inc. v. Kalitta Flying Serv., Inc., 958 F.2d 896, 906 (9th Cir.1992). Moreover, § 229 of the Restatement (Second) of Torts provides:
One who receives possession of a chattel from another with the intent to acquire for himself or for a third person a proprietary interest in the chattel which the other has not the power to transfer is subject to liability for conversion to a third person then entitled to the immediate possession of the chattel. California Courts have cited approvingly to § 229. See, e.g., Moore v. Regents of Univ. of Cal., 51 Cal.3d 120, 157 n. 4, 271 Cal.Rptr. 146, 793 P.2d 479 (1990); Strutt v. Ontario Sav. & Loan Ass'n, 28 Cal.App.3d 866, 874–75, 105 Cal.Rptr. 395 (1972).
EPS first argues that Plaintiffs' conversion claim fails because Plaintiffs (MTD 8, ECF No. 66–1 (emphasis in original).) Plaintiffs argue that they properly allege a claim for conversion because “an action for conversion lies not only in the taking of another's property, but also in the wrongful retention and/or use of that property.” Plaintiffs claim that, because EPS knew that Plaintiffs had rights in the CCT Assets but nonetheless distributed the CCT Assets to public television stations, EPS engaged in conversion. ( Id.) The Court agrees with Plaintiffs.
Plaintiffs sufficiently plead the elements of a conversion claim. First, Plaintiffs repeatedly assert their ownership of the GACT copyright, trademark, and content. (Compl. ¶¶ 14–16, 28, 48, 118, ECF No. 1.) While Plaintiffs purportedly “consented to LEC holding the CCT Assets temporarily until it could be determined where they should be sent,” Plaintiffs have since requested the return of the CCT Assets, but Defendants have refused to return them. ( Thus, Plaintiffs had a right to immediate possession of the CCT Assets, including the Tour footage.
Second, Plaintiffs allege that various public television stations have informed Plaintiffs that they received GACT from EPS. ( Id. ¶ 83.) Plaintiffs allege that they subsequently “contacted EPS, who confirmed that they had contracted with LEC to distribute the TV Show and had, in fact, been distributing the TV Show to public broadcasting stations nationwide.” ( Id. ¶ 84.) That EPS may not have ever possessed the physical tapes is of no consequence, as it nonetheless gained possession of and claimed an interest in the intellectual property contained therein.2 EPS claims that Plaintiffs fail to allege that EPS knew of Plaintiffs' purported ownership interest in the CCT Assets. (Reply 4, ECF No. 75.) Presumably, EPS is arguing that it engaged in no “wrongful” behavior. However, Plaintiffs allege:
EPS also informed [Plaintiffs] that they had been made aware of [Plaintiffs'] ownership of the TV Show and that, before agreeing to distribute the TV Show, EPS had insisted on and obtained from LEC an agreement indemnifying EPS from any claims by [Plaintiffs] that might arise out of their distribution of the TV Show.
(Compl. ¶ 84, ECF No. 1.) Pursuant to Federal Rule of Civil Procedure 9(b), “[m]alice, intent, knowledge, and other conditions of a person's mind may be alleged generally.” Accordingly, Plaintiffs allege that EPS engaged in the wrongful disposition of the CCT Assets.
Third, Plaintiffs allege that they “ha[ve] been damaged” by their loss of the CCT Assets and their inability to distribute GACT themselves. (Compl. ¶¶ 102, 122, ECF No. 1.) EPS contends that the claim must be dismissed because Plaintiffs improperly seek compensatory damages rather than the damages for conversion mandated by California Civil Code § 3336. (MTD 8–9, ECF No. 66–1.) However, Plaintiffs have alleged all that is required of them on a motion to dismiss. See Summit Tech., 933 F.Supp. at 927–28. Accordingly, Plaintiffs have stated a prima facie claim for conversion, and the Court DENIES EPS's MTD as to this claim.
To state a claim for federal trademark infringement under the Lanham Act, a plaintiff must show: “ ‘(1) that it has a protectible ownership interest in the mark; and (2) that the defendant's use of the mark is likely to cause consumer confusion.’ ” Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1144 (9th Cir.2011) (citation omitted). A claim for false designation of origin is subject to “[t]he same standard,” except a claim for false designation of origin does not require that the mark be registered. See Brookfield Commc'ns, Inc. v. W. Coast Ent. Corp., 174 F.3d 1036, 1046 n. 6 (9th Cir.1999) (). Thus, the Court analyzes these claims jointly.
As to the first element, EPS argues that judicially noticeable records establish that only CCT owns the GACT trademark. (MTD 9, ECF No. 66–1.) The Court, however, disagrees. The public records at issue are dated June 2011 through May 2012. Thus, it is possible that CCT assigned the GACT mark to Promark sometime after May 22, 2012 but prior to or during the acts comprising Plaintiffs' allegations. Thus, the Court declines at this time to dismiss the trademark claims against Promark on this basis. Plaintiffs allege ownership of the mark as to both CCT and Promark, and thus Plaintiffs have sufficiently alleged the first element of their trademark infringement claim. ( See Compl. ¶ ¶ 16, 125, ECF No. 1.)
As to the second element, EPS argues that Plaintiffs fail to allege “that EPS is using any trademark, let alone using CCT's trademark or a colorable imitation of CCT's mark on goods in commerce without CCT's consent or that such use is likely to cause confusion, mistake or deceive the public.” (MTD 9, 10–11, ECF No. 66–1.) The Court, however, disagrees. When evaluating likelihood of confusion on a motion to dismiss, “[i]f the court determines as a matter of law from the pleadings that the goods are unrelated and confusion is unlikely, the complaint should be dismissed.” Murray v. Cable Nat'l Broad. Co., 86 F.3d 858, 860 (9th Cir.1996) (citing Toho Co. Ltd. v. Sears, Roebuck & Co., 645 F.2d 788, 790–91 (9th Cir.1981)). But, while likelihood of confusion is capable of being decided as a matter of law, “[w]hether confusion is likely is a factual determination woven into the law” that courts “routinely treat ... as [an issue] of fact” best left for determination by a jury. Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1356, 1356 n. 5 (9th Cir.1985).
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Celebrity Chefs Tour, LLC v. Macy's, Inc.
...16 F.Supp.3d 1159CELEBRITY CHEFS TOUR, LLC, a California limited liability company; and Promark Productions, LLC, a California limited liability company, Plaintiffsv.MACY'S, INC., a Delaware corporation; Whirlpool Corporation, a Delaware corporation; LEC Media, LLC, an Illinois limited liab......