Films of Distinction v. Allegro Film Productions, CV 98-0609 RAP(RZX).
| Decision Date | 01 June 1998 |
| Docket Number | No. CV 98-0609 RAP(RZX).,CV 98-0609 RAP(RZX). |
| Citation | 12 F.Supp.2d 1068 |
| Court | U.S. District Court — Central District of California |
| Parties | FILMS OF DISTINCTION, INC. d/b/a The Crime Channel, Plaintiff, v. ALLEGRO FILM PRODUCTIONS, INC., et al., Defendants. |
Leonard S. Machtinger, Thomas S. Rubin, Kenoff & Machtinger, Los Angeles, CA, for Plaintiff.
Donald R. Gordon, Robert S. Gutierrez, Leopold, Petrich & Smith, Los Angeles, CA, Fred A. Fenster, Heenan Blaikie, Beverly Hills, CA, for Defendants.
ORDER GRANTING IN PART AND, DENYING IN PART DEFENDANTS MOTION TO DISMISS PURSUANT TO FED.R.CIV.P. 12(b)(6)
Plaintiff Films of Distinction, Inc. d/b/a The Crime Channel ("Films of Distinction") brings this action for trademark infringement, defamation and product disparagement against defendants Allegro Film Productions ("Allegro"), Norstar Entertainment, Inc. ("Norstar"), Republic Entertainment, Inc. ("Republic"), Showtime Networks, Inc. ("Showtime") Westwind Productions Corporation ("Westwind Production"), and Westwind Releasing Corporation ("Westwind Releasing"). Plaintiff owns a television network entitled "The Crime Channel." Plaintiff alleges defendants used plaintiff's service mark "The Crime Channel" in their motion picture about a young boy who watches a cable television station called "The Crime Channel."
Pending before the Court is the motion of all defendants, with the exception of defendant Norstar, to dismiss plaintiff's claims for failure to state a claim pursuant to Fed. R.Civ.P. 12(b)(6). Upon consideration of the parties' papers submitted in conjunction with the motion, and the oral arguments of counsel, the motion is GRANTED IN PART AND DENIED IN PART as set forth in detail below.
Plaintiff owns a television network known as "The Crime Channel," which features programming devoted exclusively to the subject of crime. On June 21, 1994, plaintiff registered "The Crime Channel" service mark (the "Mark") on the Supplemental Register of the United States Patent and Trademark Office. Plaintiff contends that the Mark is inherently distinctive and has acquired secondary meaning in the minds of members of the public. Plaintiff alleges that it owns exclusive rights in the "Crime Channel" mark.
According to the Complaint, defendants produced and distributed the motion picture "Relative Fear" (the "film"), which was shown on defendant Showtime's network. Plaintiff claims that the film concerns a young boy, Adam, who watches a television channel called the "Crime Channel." The film allegedly describes the channel as "America's first and only cable channel devoted exclusively to crime." According to plaintiff, after Adam watches the Crime Channel, he apparently commits several murders.
Plaintiff alleges that the Crime Channel in the film is repeatedly identified using plaintiff's service mark and that Adam watches the channel at least five times during the film. According to plaintiff
Adam's mother repeatedly turns off the Crime Channel and says to Adam, among other things: "You shouldn't watch this." Adam's mother also tells him: An older woman taking care of Adam notices he is watching the Crime Channel and says: "Not while I'm here you don't." — and turns off the television. Near the end of the Film, Adam picks up a gun and shoots his father. At the very end of the Film, Adam points a stick like a gun at another child and says "Bang, you're dead."
Complaint, ¶ 19. Plaintiff also asserts that the Film's credits include a credit for the Crime Channel and individual credits for the Crime Channel's Director, Camera and Editing, and Coordinator.
Plaintiff contends that it never authorized defendants to use its Mark and that defendants had actual prior knowledge of plaintiff's prior use of the Mark. Plaintiff alleges that defendants' deliberate imitation of the "Crime Channel" mark caused plaintiff irreparable injury.
Plaintiff asserts claims of infringement of federally registered service mark under 15 U.S.C. § 1114; false designation of origin and false description under 15 U.S.C. § 1125; dilution of mark under 15 U.S.C. § 1125; common law trademark, service mark and trade name infringement and unfair competition; infringement of mark under California law (Bus. & Prof.Code § 14335); dilution of mark and injury to business reputation (Bus. & Prof.Code § 14330); unfair competition (Bus. & Prof.Code § 17200 et seq.); defamation; trade libel; intentional interference with prospective economic advantage; and unjust enrichment. Plaintiff seeks declaratory, injunctive, and monetary relief.
A motion to dismiss under Fed. R.Civ.P. 12(b)(6) tests the legal sufficiency of the claims asserted in the complaint. Accordingly, the scope of review on a motion to dismiss for failure to state a claim is limited to the contents of the complaint. Clegg v. Cult Awareness Network, 18 F.3d 752, 754 (9th Cir.1994). The court may, however, consider exhibits submitted with the complaint and matters that may be judicially noticed pursuant to Federal Rule of Evidence 201. Hal Roach Studios v. Richard Feiner & Co., 896 F.2d 1542, 1555 n. 19 (9th Cir.1989); Emrich v. Touche Ross & Co., 846 F.2d 1190, 1198 (9th Cir.1988). "[A] document is not `outside' the complaint if the complaint specifically refers to the document and if its authenticity is not questioned." Branch v. Tunnell, 14 F.3d 449, 453 (9th Cir.1994).
Dismissal under Rule 12(b)(6) may be based either on the "lack of a cognizable legal theory" or on "the absence of sufficient facts alleged under a cognizable legal theory." Balistreri v. Pacifica Police Dept., 901 F.2d 696, 699 (9th Cir.1988). The issue on a motion to dismiss for failure to state a claim is not whether the claimant will ultimately prevail but whether the claimant is entitled to offer evidence to support the claims asserted. Gilligan v. Jamco Development Corp., 108 F.3d 246, 249 (9th Cir.1997). When evaluating a Rule 12(b)(6) motion, the court must accept all material allegations in the complaint as true and construe them in the light most favorable to the non-moving party. Barron v. Reich, 13 F.3d 1370, 1374 (9th Cir.1994). The court is not required however, to accept "conclusory legal allegations cast in the form of factual allegations if those conclusions cannot reasonably be drawn from the facts alleged." Clegg, 18 F.3d at 754-55.
Rule 12(b)(6) must be read in conjunction with Rule 8(a), which requires "a short and plain statement of the claim showing that the pleader is entitled to relief." 5A Charles A. Wright & Arthur R. Miller, Federal Practice and Procedure § 1356 (1990). The notice pleading standard set forth in Rule 8 establishes "a powerful presumption against rejecting pleadings for failure to state a claim." Gilligan, 108 F.3d at 248 (citations omitted). Consequently, a court may not dismiss a complaint for failure to state a claim unless "it appears beyond doubt that the plaintiff can prove no set of facts in support of his claim which would entitle him to relief." Conley v. Gibson, 355 U.S. 41, 45-46, 78 S.Ct. 99, 2 L.Ed.2d 80 (1957). In keeping with this liberal pleading standard, the district court should grant the plaintiff leave to amend if the complaint can possibly be cured by the inclusion of additional factual allegations. Doe v. United States, 58 F.3d 494, 497 (9th Cir.1995).
Trademarks and service marks1 are protected under the Lanham Act, and under the common law, to protect business goodwill and to enable consumers to distinguish among competing producers. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 774, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992). "The purpose of a trademark is to designate the source of a product." Technical Publishing Co. v. Lebhar-Friedman, Inc., 729 F.2d 1136, 1139 (7th Cir.1984). Consequently, the basic test for trademark infringement under both federal and common law is whether the use of the mark is likely to cause confusion as to the source of the goods or services. Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1403 (9th Cir.1997).
Trademark law balances the public interest in identifying the source of goods and preventing free-riders from appropriating their competitor's reputations against the public interest in preventing depletion of the words, phrases and symbols available to communicate in the marketplace. Cf., New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302, 305-306 (9th Cir.1992). To maintain this balance, certain terms are excluded from trademark protection and certain uses are permitted despite the validity of a trade or service mark. Defendants move to dismiss plaintiff's First, Second, Fourth, and Fifth claims for service mark infringement under the Lanham Act and under California law, arguing that (1) the "Crime Channel" mark is generic; (2) defendants' use of the Mark is protected by the fair use doctrine; and (3) defendants' use is protected by the First Amendment. Plaintiff appears to concede that all four claims rise and fall together with respect to these defenses.
"A generic term is one that refers to the genus of which the particular product is a species." Committee for Idaho's High Desert, Inc. v. Yost, 92 F.3d 814, 821 (9th Cir.1996) (quoting Park `N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 194, 105 S.Ct. 658, 83 L.Ed.2d 582 (1985)). A generic term can never be protected as a trademark because it neither identifies the user's goods nor distinguishes them from another's goods. McCarthy, § 12:57 at 12-109 (citing 15 U.S.C. § 1127). Allowing one party to monopolize a generic term would prevent competitors from adequately describing their own goods or services....
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