Pinterest Inc. v. Pintrips Inc.
| Decision Date | 14 February 2014 |
| Docket Number | No. 13–4608 RS,13–4608 RS |
| Citation | 109 U.S.P.Q.2d 2044,15 F.Supp.3d 992 |
| Court | U.S. District Court — Northern District of California |
| Parties | Pinterest Inc., Plaintiff, v. Pintrips Inc., Defendant. |
Lawrence J. Siskind, Lawrence Jay Siskind, Donald A. Thompson, Harvey Siskind LLP, San Francisco, CA, for Plaintiff.
Frank L. Bernstein, Kenyon & Kenyon LLP, Palo Alto, CA, for Defendant.
ORDER DENYING MOTION TO DISMISS
In this dispute between two entities offering online bookmarking services, plaintiff Pinterest Inc. asserts claims for relief under federal and state law for trademark infringement, false designation of origin, trademark dilution, and unfair competition. Defendant Pintrips Inc. moves to dismiss the complaint in its entirety, arguing Pinterest has failed to state a claim upon which relief can be granted. The central thrust of Pintrips' motion is the contention that Pinterest cannot, as a matter of law, seek to exclude others from using the term “pin.” In particular, Pintrips argues that “pin” is generic and therefore not entitled to protection under federal or state trademark law. Because deciding whether a mark is generic requires a fact-specific inquiry that generally is premature at the pleading stage, Pintrips' motion must be denied.
Pinterest, an entity founded in early 2010, provides online services through its website, www.pinterest.com.2 Pinterest's web-based platform allows users to accumulate images and other content, which the user organizes into themed “boards.” In addition to posting content to their own boards, Pinterest users can browse other users' boards to seek out content that interests them. By enabling users to post, share, and browse content, Pinterest “provides a way for people to express themselves, discover new things, and engage with the people who create them.” (Compl. ¶ 8).
A “pin,” according to Pinterest, is the platform's “foundational element.” (Compl. ¶ 9). Each piece of content posted on Pinterest is known as a “pin.” Users, in turn, are referred to as “pinners.” According to Pinterest, the “Pin It” button has played an important role in the site's success. In addition to appearing on Pinterest's website, the “Pin It” button can be found on hundreds of thousands of other websites across the Internet. More specifically, the button appears alongside content—e.g., photographs, articles, for-sale items—displayed on various websites. By clicking the “Pin It” button when browsing other websites, Pinterest users can add content directly to their own Pinterest boards. Therefore, in addition to “pinning” content found on other users' boards, Pinterest users employ the “Pin It” button to “pin” items found elsewhere on the internet.
Although its users post and share a wide variety of content, Pinterest claims to have made a “particularly big splash” when it comes to travel-based content. (Compl. ¶ 13). The complaint avers that, to date, Pinterest users have posted more than 660 million “pins” in Pinterest's “Travel” category. Id. “Many people use Pinterest as a travel-planning tool—for example, to collect inspiration for upcoming trips[.]” Id. Allegedly due to the platform's popularity in the “area of travel,” numerous airlines, hotels, resorts, travel planning companies, and travel media outlets promote their services on Pinterest. (Compl. ¶ 14).
Pinterest claims it pioneered the use of “pin-formative” terms in the context of social media and online bookmarking. It further avers that the public associates these terms with Pinterest, and that the terms have “become famous in relation to Pinterest's goods and services.” (Compl. ¶ 9). In support of this averment, Pinterest claims its site is one of the twenty most popular websites in the United States and the third most popular such social networking site.
Pintrips Inc., founded in August 2011, provides online services through its website, www.pintrips.com. Pintrips describes itself as a “personal travel planning dashboard” where users collect, compare, and share information about airline travel. (Compl. ¶ 20). Pintrips employs a “pin” button to enable its users to bookmark content pertaining to flights and travel.
Pinterest claims to have used the “Pinterest” trademark in commerce since March 10, 2010. It has also allegedly used the Pinterest logotype trademark in commerce since May 3, 2011. In addition, Pinterest holds a registered federal trademark for the mark “Pinterest” in connection with certain goods and services.3 While it has also filed applications to register the “pin” mark and the Pinterest logotype with the USPTO, these applications are still being processed. Finally, Pinterest avers common-law rights in the terms “Pinterest,” “pin,” “pin it,” and in the “pin-” prefix “as applied to social media bookmarking services.” (Compl. ¶ 18). The complaint contends that these common-law rights precede Pintrips' first use of “Pintrips,” “pin,” or any other “pin-formative” mark.
Pinterest filed this action on October 4, 2013. Its complaint asserts five claims for relief: (1) trademark infringement in violation of 15 U.S.C. § 1114 ; (2) false designation of origin in violation of 15 U.S.C. § 1125(a) ; (3) trademark dilution in violation of 15 U.S.C. § 1125(c) ; (4) unfair competition in violation of Cal. Bus. & Prof.Code § 17200, and (5) trademark infringement in violation of Cal. Bus. & Prof.Code § 14257. Each claim is premised on the allegation that Pintrips engaged in authorized use of “Pintrips,” “pin,” and/or other “pin-formative” marks.4
A complaint must contain “a short and plain statement of the claim showing that the pleader is entitled to relief.” Fed.R.Civ.P. 8(a)(2). While “detailed factual allegations are not required,” a complaint must have sufficient factual allegations 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) (citing Bell Atlantic v. Twombly, 550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) ). A claim is facially plausible “when the pleaded factual content allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Id. This standard asks for “more than a sheer possibility that a defendant acted unlawfully.” Id. The determination is a context-specific task requiring the court “to draw on its judicial experience and common sense.” Id. at 679, 129 S.Ct. 1937.
A motion to dismiss a complaint under Rule 12(b)(6) of the Federal Rules of Civil Procedure tests the legal sufficiency of the claims alleged in the complaint. See Parks Sch. of Bus., Inc. v. Symington, 51 F.3d 1480, 1484 (9th Cir.1995). Dismissal under Rule 12(b)(6) may be based on either the “lack of a cognizable legal theory” or on “the absence of sufficient facts alleged under a cognizable legal theory.” Balistreri v. Pacifica Police Dep't, 901 F.2d 696, 699 (9th Cir.1990). When evaluating such a motion, the court must accept all material allegations in the complaint as true, even if doubtful, and construe them in the light most favorable to the non-moving party. Twombly, 550 U.S. at 570, 127 S.Ct. 1955. “[C]onclusory allegations of law and unwarranted inferences,” however, “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) ; see also Twombly, 550 U.S. at 555, 127 S.Ct. 1955 ().
Defendant's motion fails for two reasons. First, a motion to dismiss is not the appropriate vehicle by which to determine the fact-specific issue of whether “pin” is a generic, and therefore unprotectable, mark. Second, even if “pin” could be deemed unprotectable at the pleading stage, defendant's motion largely ignores that each of plaintiff's five claims proceeds on an additional theory unrelated to Pinterest's alleged ownership of the “pin” mark.
Pintrips' motion is accompanied by a raft of documentary exhibits.5 The motion also contains several embedded images purporting to show third parties' use of the “pin” mark. Pinterest objects, claiming the documents and images are inadmissible for purposes of resolving the pending motion. “As a general rule, a district court may not consider any material beyond the pleadings in ruling on a Rule 12(b)(6) motion.”
Lee v. City of Los Ange les, 250 F.3d 668, 688 (9th Cir.2001) (citation and quotation marks omitted). A court is, however, entitled to consider (1) documents incorporated into the complaint by reference and (2) matters subject to judicial notice. Tellabs, Inc. v. Makor Issues & Rights, Ltd., 551 U.S. 308, 322, 127 S.Ct. 2499, 168 L.Ed.2d 179 (2007). Here, defendant requests judicial notice of all thirty-three exhibits submitted in support of its motion to dismiss. These documents fall into two categories: (1) official records of the United States Patent and Trademark Office (“USPTO”) and (2) print-outs and screenshots of, in defendant's words, “publicly available websites, apps, software applications, and operating systems.” (Request for Judicial Notice, ECF No. 28).
A court only may take judicial notice of facts that are “not subject to reasonable dispute.” Fed.R.Evid. 201(b). Here, defendant offers extrinsic documents for one purpose only: to demonstrate that the mark “pin”—as used by plaintiff, defendant, and numerous third parties—is generic.Id. This is, of course, entirely improper. First, while “undisputed matters of public record” are judicially noticeable, a court may not take notice of disputed facts in public records. Lee, 250 F.3d at 689 ; Fed.R.Evid. 201(b). As such, while the USPTO records may be subject to judicial notice, they are noticeable...
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