Eastland Music Grp., LLC v. Lionsgate Entm't, Inc., 12–2928.

• Decision Date: 18 March 2013
• Docket Number: No. 12–2928.,12–2928.
• Parties: EASTLAND MUSIC GROUP, LLC, and Raynarldo Whitty, Plaintiffs–Appellants, v. LIONSGATE ENTERTAINMENT, INC.; Summit Entertainment, LLC; and Mandate Pictures, LLC, Defendants–Appellees.
• Court: U.S. Court of Appeals — Seventh Circuit

707 F.3d 869

EASTLAND MUSIC GROUP, LLC, and Raynarldo Whitty, Plaintiffs–Appellants,

v.LIONSGATE ENTERTAINMENT, INC.; Summit Entertainment, LLC; and Mandate Pictures, LLC, Defendants–Appellees.

No. 12–2928.

United States Court of Appeals,Seventh Circuit.

Argued Dec. 6, 2012.

Decided Feb. 21, 2013.

Rehearing Denied March 18, 2013.

Ronald A. DiCerbo, Gerald C. Willis (argued), Attorney, McAndrews, Held & Malloy, Chicago, IL, for Plaintiffs–Appellants.

Tom J. Ferber (argued), Attorney, Pryor Cashman, New York, NY, for Defendants–Appellees.

Before EASTERBROOK, Chief Judge, and FLAUM and ROVNER, Circuit Judges.

EASTERBROOK, Chief Judge.

Eastland Music Group is the proprietor of the rap duo Phifty–50, which, according to its web site www. phifty– 50. com, has to its credit one album (2003) and a T-shirt. Eastland Music has registered “PHIFTY–50” as a trademark. It also claims a trademark in “50/50” and contends that Lionsgate Entertainment and Summit Entertainment infringed its rights by using “50/50” as the title of a motion picture that opened in 2011.

The district court dismissed the complaint under Fed.R.Civ.P. 12(b)(6), ruling the movie's title descriptive because the film concerns a 50% chance of the main character surviving cancer. 2012 U.S. Dist. Lexis 100310 (N.D.Ill. July 19, 2012). Eastland Music protests that this is a defense, not an element of the claim, and that because the movie is not part of the complaint the motion to dismiss should have been handled as one for summary judgment. See Rule 12(d). Eastland Music tells us that, had the complaint survived a motion to dismiss, it would have served extensive discovery requests, and it seems confident that defendants would have settled rather than borne the expense of compliance. Counsel was surprised when reminded, at oral argument, that a motion for summary judgment can precede discovery (see Rule 56(b), allowing a motionto be filed “at any time”), leaving the adverse party with an obligation to show a need for discovery under Rule 56(d). See Peters v. West, 692 F.3d 629 (7th Cir.2012) (resolving a copyright suit in advance of discovery).

Whether a document to which a complaint refers (here, the movie) is treated as part of the complaint for the purpose of Rule 12(d) has been a difficult question, see Brownmark Films, LLC v. Comedy Partners, 682 F.3d 687, 690–91 (7th Cir.2012), but one we need not tackle. Nor need we decide whether to follow Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir.1989), under which the title of an artistic work can infringe a trademark only if it is devoid of artistic significance or explicitly misleading about the work's source. Rogers treated that doctrine as an application of the first amendment rather than the Lanham Act, and courts should avoid unnecessary constitutional adjudication.

It is unnecessary to consider possible constitutional defenses to trademark enforcement, just as it is unnecessary to decide whether the district court should have converted the motion to one for summary judgment, because this complaint fails at the threshold: it does not allege that the use of “50/50” as a title has caused any confusion about the film's source—and any such allegation would be too implausible to support costly litigation. See Ashcroft v. Iqbal, 556 U.S. 662, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009); Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007). At oral argument, plaintiffs' counsel conceded that not a single person has ever contacted Eastland or its web site to seek a copy of the film or complain about the film's contents or quality. Nor does the complaint allege that any potential customer has turned to Lionsgate or Summit in quest of the rap duo's products. Counsel for plaintiffs also told us that no survey has been done.

If the accused film bore the title “Phifty–50”, allegations of confusion or secondary meaning could be omitted from the complaint. Eastland Music's registered mark has become incontestable, 15 U.S.C. § 1065, though incontestable marks are subject to certain defenses. 15 U.S.C. § 1115(b). The title “50/50” differs from the mark “Phifty–50”, however; only the latter is registered—and the principal reason it was registr able is that it is a made-up homophone of a familiar phrase, which in ordinary usage is suggestive or descriptive. It takes a powerful showing of association between such an expression and a particular producer of goods to establish a trademark claim—and Eastland Music has not attempted such a showing.

The phrase 50/50 or a sound-alike variant (50-50, fifty-fifty, fifty/fifty) has been in use as the title of intellectual property for a long time. Wikipedia lists...