Estate of Fuller v. Maxfield & Oberton Holdings, LLC

• Decision Date: 05 November 2012
• Docket Number: No. 5:12–CV–02570–LHK.,5:12–CV–02570–LHK.
• Citation: 906 F.Supp.2d 997
• Court: U.S. District Court — Eastern District of California
• Parties: The ESTATE OF Buckminster FULLER, Plaintiff, v. MAXFIELD & OBERTON HOLDINGS, LLC, Defendant.

906 F.Supp.2d 997

The ESTATE OF Buckminster FULLER, Plaintiff,

v.MAXFIELD & OBERTON HOLDINGS, LLC, Defendant.

No. 5:12–CV–02570–LHK.

United States District Court,

N.D. California,

San Jose Division.

Nov. 5, 2012.

Thomas A. Cohen Law Offices Of Thomas A. Cohen, Mill Valley, CA, for Plaintiff.

Matthew A. Fischer, Sedgwick LLP, San Francisco, CA, James Joseph S Holmes, Jason Matthew Joyal, Sedgwick Detert Moran Arnold, Los Angeles, CA, for Defendant.

ORDER DENYING MOTION TO DISMISS

LUCY H. KOH, District Judge.

Plaintiff the Estate of Buckminster Fuller (“Plaintiff”) filed this lawsuit on May 18, 2012, alleging four causes of action. ECF No. 1 (“Compl.”). Defendant Maxfield & Oberton Holdings, LLC (“Defendant”) moves to dismiss all causes of action pursuant to Federal Rule of Civil Procedure 12(b)(6). ECF No. 12 (“Mot.”). Plaintiff has filed an opposition to the motion, ECF No. 19 (“Opp'n”), and Defendant has filed a reply, ECF No. 21 (“Reply”). The Court held a hearing on the motion on November 1, 2012. Having considered the parties' submissions and oral arguments, the Court DENIES Defendant's motion.

I. Background

Unless otherwise noted, the following allegations are taken from the complaint and judicially noticeable documents and are presumed to be true for purposes of ruling on Defendant's motion to dismiss. See Marder v. Lopez, 450 F.3d 445, 447 n. 1 (9th Cir.2006).

Richard Buckminster Fuller was a renowned 20th century inventor who “held 28 patents, authored 28 books, [and] received 47 honorary degrees” in the course of his life before passing away in 1983. Compl. at ¶ 1. Mr. Fuller was best known for developing the geodesic dome, an architectural design. Id. In 1985, scientists discovered the Carbon–60 molecule and, because its shape resembled that of a geodesic dome, named the molecule Buckminsterfullerene. Id. at ¶ 9. The buckminsterfullerene molecule is commonly referred to as a buckyball. Id. In 1985, Plaintiff registered its claim as the successor in interest to the rights of Buckminster Fuller pursuant to Cal. Civ.Code § 3344.1(f), and also specified several variations of Mr. Fuller's name, including “Bucky Fuller.” Id. at ¶ 10.

Defendant manufactures and sells popular desk toys called Buckyballs. Id. at ¶ 1. According to a press release by Defendant, Buckyballs were “inspired and named after famous architectural engineer and inventor, R. Buckminster Fuller[.] Buckyballs and Buckycubes are the world's most popular adult desktoy and have been compared to famous desktoys of yore such as Newton's Cradle, the Zen Garden, and Pin Art.” Id. at ¶ 13 (internal quotations omitted). Buckyballs are round rare earth magnets that can be combined to form various shapes, including one that resembles the Carbon–60 buckyball molecule. Id. at ¶ 15. Defendant also manufactures and distributes several other items under the Buckyballs or related trademarks including Buckycubes, Bucky sidekick, Buckybars, BuckyBricks, BuckyBlocks, BuckyBalls (a vitamin supplement), and The Big Book of Bucky (a book that provides instructions on how to make various shapes with Buckyballs). Id. at ¶¶ 14–18, 20. The Big Book of Bucky contains a portion that states “Buckyballs were named for Buckminster Fuller,” then describes a few of Mr. Fuller's accomplishments, and concludes by stating “[h]e was smart. He was crazy. He was fun. Remind you of anything?” Id. at ¶ 18 (internal quotations omitted). Defendant's website also at one point contained a Frequently Asked Questions page that stated “[t]he name Buckyballs is a nod to Buckminster ‘Bucky’ Fuller, a famous architectural-type best known for the geodesic dome (a sphere made of triangles). It's a fun shape to make with Buckyballs. FUN FACT: The Carbon–60, one of the strongest atomic structures known to man, are sometimes called Fullerenes. They too were named after Fuller for their similarity to geodesic domes.” Id. at ¶ 19 (internal quotations omitted).

In 2011, Plaintiff licensed to Defendant limited rights to use Mr. Fuller's name and likeness in connection with a limited commemorative edition of Buckyballs. Id. at ¶ 12. On May 18, 2012, Plaintiff brought the present action alleging that Defendant misappropriated Mr. Fuller's name and likeness through the manufacture, distribution, and sale of Buckyballs and related products. Id. at ¶¶ 22–23. Plaintiff also claims that Defendant's actions are “likely to cause confusion among the general public about Plaintiff's endorsement of Defendant's products.” Id. at ¶ 23. Plaintiff asserts four causes of action: (1) violation of the Lanham Act, 15 U.S.C. § 1125(a); (2) invasion of privacy under California common law; (3) invasion of privacy under California Civil Code § 3344.1; and (4) violation of the California Unfair Competition Law, Cal. Bus. & Prof.Code § 17200 et seq. Defendant moves to dismiss each claim.

II. Legal Standard

A motion to dismiss pursuant to Rule 12(b)(6) for failure to state a claim upon which relief can be granted “tests the legal sufficiency of a claim.” Navarro v. Block, 250 F.3d 729, 732 (9th Cir.2001). Dismissal under Rule 12(b)(6) may be based on either (1) the “lack of a cognizable legal theory,” or (2) “the absence of sufficient facts alleged under a cognizable legal theory.” Balistreri v. Pacifica Police Dep't, 901 F.2d 696, 699 (9th Cir.1988). While “ ‘detailed factual allegations' ” are not required, a complaint must include sufficient facts to “ ‘state a claim to relief that is plausible on its face.’ ” Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007)). “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.” Id.

For purposes of ruling on a Rule 12(b)(6) motion to dismiss, the Court accepts all allegations of material fact as true and construes the pleadings in the light most favorable to the plaintiff. Manzarek v. St. Paul Fire & Marine Ins. Co., 519 F.3d 1025, 1031 (9th Cir.2008). The Court need not, however, accept as true pleadings that are no more than legal conclusions or the “ ‘formulaic recitation of the elements' of a cause of action.” Iqbal, 556 U.S. at 678, 129 S.Ct. 1937 (quoting Twombly, 550 U.S. at 555, 127 S.Ct. 1955). Mere “conclusory allegations of law and unwarranted inferences are insufficient to defeat a motion to dismiss for failure to state a claim.” Epstein v. Wash. Energy Co., 83 F.3d 1136, 1140 (9th Cir.1996); accord Iqbal, 556 U.S. at 677–78, 129 S.Ct. 1937.

III. Requests for Judicial Notice

Defendant has submitted two requests for judicial notice. ECF Nos. 13 (“RJN”), 22 (“Supp. RJN”). Under Federal Rule of Evidence 201(b), the Court can take judicial notice of any fact that is “not subject to reasonable dispute in that it is ... capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned.” Under the doctrine of incorporation by reference, the Court may consider on a Rule 12(b)(6) motion not only documents attached to the complaint, but also documents whose contents are alleged in the complaint, provided the complaint “necessarily relies” on the documents or contents thereof, the document's authenticity is uncontested, and the document's relevance is uncontested. Coto Settlement v. Eisenberg, 593 F.3d 1031, 1038 (9th Cir.2010).

Here, the complaint relies on several documents not attached thereto: (1) Defendant's “Fun Facts” webpage; (2) the October 24, 2011 licensing agreement between Plaintiff and Defendant; and (3) the packaging from the commemorative edition of Defendant's Buckyballs product. Neither the authenticity nor the relevance of these documents is disputed. Accordingly, the Court properly considers them. Defendant's RJN is GRANTED as to these three documents.

The Court may also take judicial notice of information posted on governmentwebsites. See Daniels–Hall v. Nat'l Educ. Ass'n, 629 F.3d 992, 998–99 (9th Cir.2010) (“It is appropriate to take judicial notice of this information, as it was made publicly available by government entities ... and neither party disputes the authenticity of the web sites or the accuracy of the information displayed therein.”). Plaintiff has not objected to the use of these government websites. Accordingly, the Court GRANTS Defendant's request as to Exhibits A, B, D, and E to Defendant's RJN.

Defendant's remaining requests seek judicial notice of publications and websites that are neither incorporated into the complaint nor published by governmental entities. The first is a scientific article republished on the website of the Buckminster Fuller Institute discussing the naming of the Carbon–60 molecule after Mr. Fuller (RJN Exh. C). Plaintiff has not objected to this article, and the fact that the molecule was named for Mr. Fuller is not reasonably subject to dispute. Further, Plaintiff notes in the complaint that the Buckminster Fuller Institute is “supported by” Plaintiff. Compl. at ¶ 12. Accordingly the Court takes judicial notice of Exhibit C to Defendant's RJN.

Defendant has also sought judicial notice of a webpage entitled “Buckytubes, What is Buckytubes?” Supp. RJN Exh. A. Defendant has provided a web address, but no information about who maintains this website or how information on the website is obtained. As judicial notice is appropriate only for facts whose accuracy cannot reasonably disputed, it is inappropriate for the Court to take judicial notice of facts on a webpage whose source and reliability are unknown. Accordingly, Defendant's request as to Supp. RJN Exh. A is DENIED.

Exhibit B to Defendant's Supp. RJN is an article from Applied Physics Letters entitled “Anomalous thermal relaxation in carbon nanoclusters.” The article makes no reference to the name “Bucky,” to Mr. Fuller, or to any of Defendant's products, and ...