Lions Gate Entm't Inc. v. TD Ameritrade Servs. Co.

• Decision Date: 14 March 2016
• Docket Number: Case No. CV 15-05024 DDP (Ex)
• Citation: 170 F.Supp.3d 1249,118 U.S.P.Q.2d 1103
• Parties: Lions Gate Entertainment Inc., a Delaware Corporation, Plaintiff, v. TD Ameritrade Services Company, Inc., a Delaware Corporation; TD Ameritrade, Inc., a New York Corporation; Amerivest Investment Management, LLC, a Delaware Limited Liability Company; Havas Worldwide New York, Inc., a Delaware Corporation, Defendants.
• Court: U.S. District Court — Central District of California

170 F.Supp.3d 1249

118 U.S.P.Q.2d 1103

Lions Gate Entertainment Inc., a Delaware Corporation, Plaintiff,

v.TD Ameritrade Services Company, Inc., a Delaware Corporation; TD Ameritrade, Inc., a New York Corporation; Amerivest Investment Management, LLC, a Delaware Limited Liability Company; Havas Worldwide New York, Inc., a Delaware Corporation, Defendants.

Case No. CV 15-05024 DDP (Ex)

United States District Court, C.D. California.

Signed March 14, 2016

Benjamin O. Aigboboh, Paul A. Bost, Jill M. Pietrini, Whitney Beth Walters-Sachs, Sheppard Mullin Richter & Hampton LLP, Los Angeles, CA, for Plaintiff.

Andrew B. Lustigman, Kyle C. Bisceglie, Matteo J. Rosselli, Olshan Frome Wolosky LLP, New York, NY, Laura Kassner Christa, Christa and Jackson, Los Angeles, CA, for Defendants.

ORDER DENYING IN PART AND GRANTING IN PART DEFENDANTS' MOTION TO DISMISS

DEAN D. PREGERSON, United States District Judge

Presently before the Court is the Motion to Dismiss of Defendants TD Ameritrade Services Company, TD Ameritrade, Inc., Amerivest Investment Management, LLC, and Havas Worldwide New York, Inc. (collectively, “Defendants”). (Dkt. No. 49.) After considering the parties' submissions and hearing oral argument, the Court adopts the following Order.

I. BACKGROUND

This copyright and trademark infringement case arises from Plaintiff Lions Gate Entertainment, Inc.'s intellectual property rights in the movie Dirty Dancing that Plaintiff alleges Defendants infringed. (First Am. Compl. (“FAC”) ¶¶ 15, 22, 32.)

Plaintiff Lions Gate is a “global entertainment company” that produces, distributes, finances, licenses, and performs other related activities for movies and television shows. (Id.¶¶ 15-16.) Dirty Dancing “is a world famous, Oscar-winning film, which was released in 1987 and became a massive box office hit, with hundreds of millions of dollars in worldwide earnings reported.” (Id.¶ 17.) Many scenes and lines from the film are particularly well-known. (Id.) The FAC notes in particular the line “Nobody puts Baby in a corner,” said by Patrick Swayze to Jennifer Grey in the final climactic scene of the film. (Id.¶ 21.) The line is followed by the final dance between the two main characters, culminating with Swayze lifting Grey over his head (the “dance lift”). (Id.)

Lions Gate claims to own “all right, title and interest in, and ... the copyright in,” the film. (Id.¶ 22.) Lions Gate also claims to own common-law trademark rights in DIRTY DANCING and NOBODY PUTS BABY IN A CORNER, the latter mark being one associated with Dirty Dancing the movie and both of which are used in motion pictures, various items of merchandise, and other adaptations of the film. (Id.¶ 18-19, 23-24.) Lions Gate also claims to have registered the trademark DIRTY DANCING and to have applied for trademark registration in NOBODY PUTS BABY IN A CORNER. (Id.¶ 24.) The latter trademark registration is “based on actual use of the mark for certain goods and on an intent to use the mark for the remaining goods identified in the applications.” (Id.) Plaintiff claims that it has licensed the marks DIRTY DANCING and NOBODY PUTS BABY IN A CORNER for the “manufacturing, marketing, and sale of a variety of merchandise through approved licensees.” (Id.¶ 26.) Further, Plaintiff claims that it “licenses elements from Dirty Dancing to third parties, who use Dirty Dancing to advertise, market, or promote their goods and services.” (Id.) Plaintiff claims that the trademarks have secondary meaning and are famous, as well as are associated with goodwill and quality, creating high value in the marks for Plaintiff and its licensees. (Id.¶¶ 28-29.)

Defendants TD Ameritrade, TD Ameritrade Services, and Amerivest (collectively, “TD Defendants”) are related financial services organizations. (Id.¶¶ 4-8.) Havas Worldwide New York (“Havas New York”) is an advertising agency that was hired in 2014 to create a national advertising campaign for the TD Defendants. (Id.¶¶ 30-31.) The advertisements consisted of online videos, digital displays, social media, email, television, and print ads. (Id.) According to Plaintiff's FAC, “[t]he Advertising Campaign was generally published and displayed in California and was directly distributed to California residents, in accordance with Defendants' plans and intentions.” (Id.¶ 31.) Further, “[a]pproximately 20% of TD Ameritrade's nationwide branch offices are in California” and “[e]mails sent as part of the Advertising Campaign included in their fine print a link to TD Ameritrade's online privacy statement, which includes information expressly directed to email recipients that reside in California.” (Id.)

Plaintiff claims that the advertising campaign “intentionally copied the Dirty Dancing motion picture, and was intentionally designed to create an association with Lions Gate and its commercial activities by marketing TD Ameritrade's goods and services with phrases” that modified the NOBODY PUTS BABY IN A CORNER trademark and quote from Dirty Dancing , as well as the signature dance lift. (Id.¶¶ 32-34.) Essentially, the main line of the advertisement campaign is: “Nobody puts your old 401k in a corner,” with an encouragement to enroll in the TD Defendants' IRA plans. (Id.¶ 32.) The advertisements often included images to conjure up Dirty Dancing , such as “a still and/or moving image of a man lifting a piggy bank over his head after the piggy bank ran into the man's arms.” (Id.¶ 34.) Some versions of the advertisements invoked the song, “(I've Had) the Time of My Life,” which played during the final dance scene in the movie, with lines like “[b]ecause retirement should be the time of your life.” (Id.) Plaintiff claims that all these uses render consumer confusion likely to occur. (Id.¶¶ 35-36.)

Plaintiff claims that the advertising campaign ran from October 2014 to April 12, 2015, as Plaintiff contacted the TD Defendants about the campaign in April after Plaintiff learned of it. (Id.¶¶ 37-38.) Havas New York responded to the cease and desist letter on behalf of itself and the TD Defendants, claiming that Plaintiff had no enforceable trademark rights and that Defendants were making a parody. (Id.¶ 39.) Shortly after an exchange of letters regarding the advertising campaign, Defendants ceased the campaign, but still refused to pay Plaintiff for their alleged infringing use. (Id.¶ 41.)

The parties continued communicating about settlement of Plaintiff's potential claims, with Plaintiff stating in June 2015 that if settlement discussions did not engage in earnest, it would file a lawsuit in the Central District of California. (Id.¶ 42-44.) After the parties failed to settle, Defendants filed a declaratory judgment suit in the Southern District of New York. (Id.¶¶ 45-47.) Plaintiff filed a motion to transfer venue in the New York case and also filed its own suit in the Central District of California. (Id.¶ 49; see also Compl., dkt. no. 1.) On September 29, 2015, the New York federal court granted the motion to transfer; shortly thereafter, Defendants voluntarily dismissed their claims in the New York suit. (FAC ¶¶ 49-50.) Now, Defendants have filed a Motion to Dismiss for (1) lack of personal jurisdiction over Havas New York; and (2) Copyright Act preemption.

II. LEGAL STANDARD

A. Motion to Dismiss Under Rule 12(b)(2)

Federal Rule of Civil Procedure 12(b)(2) provides that a court may dismiss a suit for lack of personal jurisdiction. The plaintiff has the burden of establishing that jurisdiction exists, but need only make “a prima facie showing of jurisdictional facts to withstand the motion to dismiss.” Pebble Beach Co. v. Caddy, 453 F.3d 1151, 1154 (9th Cir.2006). “[U]ncontroverted allegations in [the plaintiff's] complaint must be taken as true, and conflicts between the facts contained in the parties' affidavits must be resolved in [the plaintiff's] favor.”

Rio Props., Inc. v. Rio Int'l Interlink, 284 F.3d 1007, 1019 (9th Cir.2002).

B. Motion to Dismiss Under Rule 12(b)(6)

A 12(b)(6) motion to dismiss for failure to state a claim upon which relief can be granted requires a court to determine the sufficiency of the plaintiff's complaint and whether it contains a “short and plain statement of the claim showing that the pleader is entitled to relief.” See Fed. R. Civ. P. 8(a)(2). Under Rule 12(b)(6), a court must (1) construe the complaint in the light most favorable to the plaintiff, and (2) accept all well-pleaded factual allegations as true, as well as all reasonable inferences to be drawn from them. See Sprewell v. Golden State Warriors, 266 F.3d 979, 988 (9th Cir.2001), amended on denial of reh'g, 275 F.3d 1187 (9th Cir.2001).

In order to survive a 12(b)(6) motion to dismiss, the complaint must “contain sufficient factual matter, accepted as true, to 'state a claim to relief that is plausible on its face.”' Ashcroft v. Iqbal, 556 U.S. 662, 663, 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) ). However, “[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice.” Id. at 678, 129 S.Ct. 1937. Dismissal is proper if the complaint “lacks a cognizable legal theory or sufficient facts to support a cognizable legal theory.” Mendiondo v. Centinela Hosp. Med. Ctr., 521 F.3d 1097, 1104 (9th Cir.2008).

A complaint does not suffice “if it tenders 'naked assertion[s]' devoid of 'further factual enhancement.”' Iqbal, 556 U.S. at 678, 129 S.Ct. 1937 (quoting Twombly, 550 U.S. at 556, 127 S.Ct. 1955 ). “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. The court need not accept as true “legal conclusions merely because they are cast in the form of factual allegations.” Warren v. Fox Family Worldwide, Inc., 328 F.3d 1136, 1139 (9th Cir.2003).

III. DISCUSSION

Defendants make two main arguments in support of...