Sporting Times, LLC v. Orion Pictures, Corp.
| Decision Date | 13 December 2017 |
| Docket Number | CIVIL ACTION NO. 1:17–CV–00033–GNS |
| Citation | 291 F.Supp.3d 817 |
| Court | U.S. District Court — Western District of Kentucky |
| Parties | The SPORTING TIMES, LLC; and Sporting Times Franchise, LLC, Plaintiffs v. ORION PICTURES, CORP.; Metro–Goldwyn–Mayer Studios Inc.; Podium Pictures, LLC; Rhino Films, LLC; Filmbuff ; and Gunpowder & Sky Distribution, LLC, Defendants |
Clare Feler Cox, Lynch, Cox, Gilman & Goodman, P.S.C., Louisville, KY, for Plaintiffs.
Alonzo Wickers, IV, Jon Segal, Kathleen Cullinan, Davis Wright Tremaine LLP, Los Angeles, CA, Mari–Elise Paul, Joel T. Beres, Stites & Harbison, PLLC, Louisville, KY, for Defendants.
This matter is before the Court on Defendants' Motions to Dismiss (DN 11, 15). The motions have been fully briefed and are ripe for decision. For the reasons stated below, the motions are GRANTED .
Plaintiffs operate a youth sports publication and hold a registered trademark for their THE SPORTING TIMES mark ("Mark"). (Compl. ¶¶ 13–15, DN 1). The claims in this case relate to Defendants' use of the Mark in conjunction with the release of the movie Spaceman in August 2016.1 (Compl. ¶¶ 17–31). The film is a biopic of professional baseball pitcher Bill "Spaceman" Lee. (Defs.' Mem. 2). Early in the film, a montage of news stories "provides the audience with an overview of Lee's career and a sense of his quirky persona." (Defs.' Mem. 2). The montage originally included "a nine-second shot of the cover of a fictional magazine entitled The Sporting Times , dated July 1976, with the headline 'Boston's Bill "Spaceman" Lee; In an Orbit All His Own' over a photo of Josh Duhamel, the actor who played Lee, in his pitching stance ...." . Approximately two seconds of the same shot was also included in the original movie trailer, released in the summer of 2016. (Compl. ¶¶ 20–21; Defs.' Mem. 3). Defendants note that the image shown is not an actual copy of Plaintiffs' publication, which did not exist until 2004 and whose Mark was not protected by trademark until its registration in 2008. .
On September 19, 2016, Plaintiffs sent a letter to Orion Pictures and its parent company, MGM, objecting to the film's use of their Mark. ). According to Defendants, they "promptly removed" the Mark from the film and trailer, but Plaintiffs contend the "infringing materials remain publicly available." . Plaintiffs claim the movie "venerates [Lee's] enthusiastic addictions to drugs and alcohol" and strenuously object to the use of their Mark, as viewers might believe their "youth publication promotes and sponsors druggy middle-aged athletes ...." ).
On February 24, 2017, Plaintiffs filed the present suit alleging Defendants' actions constitute trademark infringement, trademark dilution, false designation of origin, passing off, and commercial disparagement under the Lanham Act. (Compl. ¶¶ 32–34, 38–40). Plaintiffs also bring associated state law claims for false and misleading advertising, unauthorized commercial use, and commercial disparagement. (Compl. ¶¶ 35–40). Plaintiffs seek compensatory damages in excess of $400,000.00, punitive damages in excess of $1,000,000.00, as well as various forms of equitable relief.2 (Compl. ¶¶ 41–46). In their motions, Defendants seek to dismiss with prejudice all claims asserted in the Complaint for failure to state a claim upon which relief may be granted. (Defs.' Mot. Dismiss 1, DN 11).
The Court has subject matter jurisdiction over this matter pursuant to 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331, 1338(a). The Court has supplemental jurisdiction over Plaintiffs' state law claims pursuant to 28 U.S.C. § 1367(a).
A complaint must contain "a short and plain statement of the claim showing that the pleader is entitled to relief," and is subject to dismissal if it "fail[s] to state a claim upon which relief can be granted." Fed. R. Civ. P. 8(a)(2) ; Fed. R. Civ. P. 12(b)(6). When considering a motion to dismiss, courts must presume all factual allegations in the complaint to be true and make all reasonable inferences in favor of the non-moving party. Total Benefits Planning Agency, Inc. v. Anthem Blue Cross & Blue Shield , 552 F.3d 430, 434 (6th Cir. 2008) (citing Great Lakes Steel v. Deggendorf , 716 F.2d 1101, 1105 (6th Cir. 1983) ). "But the district court need not accept a bare assertion of legal conclusions." Tackett v. M & G Polymers, USA, LLC , 561 F.3d 478, 488 (6th Cir. 2009) (citation omitted). Ashcroft v. Iqbal , 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009) (internal quotation marks omitted) (citation omitted).
To survive a motion to dismiss under Rule 12(b)(6), the plaintiff must allege "enough facts to state a claim to relief that is plausible on its face." Traverse Bay Area Intermediate Sch. Dist. v. Mich. Dep't of Educ. , 615 F.3d 622, 627 (6th Cir. 2010) (internal quotation marks omitted) (quoting Bell Atl. Corp. v. Twombly , 550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) ). A claim becomes plausible "when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Iqbal , 556 U.S. at 678, 129 S.Ct. 1937 (citing Twombly , 550 U.S. at 556, 127 S.Ct. 1955 ). "A complaint will be dismissed pursuant to Rule 12(b)(6) if no law supports the claims made, if the facts alleged are insufficient to state a claim, or if the face of the complaint presents an insurmountable bar to relief." Southfield Educ. Ass'n v. Southfield Bd. of Educ. , 570 Fed.Appx. 485, 487 (6th Cir. 2014) (citing Twombly , 550 U.S. at 561–64, 127 S.Ct. 1955 ).
In reviewing a motion to dismiss, the Court "may consider the Complaint and any exhibits attached thereto, public records, items appearing in the record of the case and exhibits attached to defendant's motion to dismiss so long as they are referred to in the Complaint and are central to the claims contained therein." Bassett v. Nat'l Collegiate Athletic Ass'n , 528 F.3d 426, 430 (6th Cir. 2008) (citation omitted). As the Complaint clearly centers on Defendants' use of Plaintiffs' Mark in the movie and trailer, the Court will consider these works. (Defs.' Mot. Dismiss Ex. A, DN 11–3; Defs.' Mot. Dismiss. Ex. C, DN 11–5). Still-frame representations of Defendants' contested use are as follows:
(From the original trailer) (Defs.' Mem. 3).
(From the original movie montage) .
III. DISCUSSION
Defendants argue that Plaintiffs have failed to state a claim upon which relief can be granted, noting that "Plaintiffs cannot state a cognizable Lanham Act or state-law claim based on the fleeting use of their trademark THE SPORTING TIMES in Defendants' motion picture Spaceman. " (Defs.' Mem. 3).
A trademark is "any word, name, symbol, or device ... used by a person ... to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown." 15 U.S.C. § 1127. Plaintiffs' registered Mark is for the words THE SPORTING TIMES in red letters, outlined in black, in Old English font:
. Plaintiffs' ownership is presumed by registration of the Mark and is not disputed by Defendants. 15 U.S.C. § 1057(b).
To assert a claim for trademark infringement, Plaintiffs must allege that: (1) they own the registered trademark; (2) Defendants used the mark in commerce; and (3) the use was likely to cause confusion. See 15 U.S.C. § 1114(1) ; Daddy's Junky Music Stores, Inc. v. Big Daddy's Family Music Ctr. , 109 F.3d 275, 280 (6th Cir. 1997) (); Oaklawn Jockey Club, Inc. v. Ky. Downs, LLC , 184 F.Supp.3d 572, 575 (W.D. Ky. 2016) (citations omitted), aff'd , 687 Fed.Appx. 429 (6th Cir. 2017). The question at issue turns on "whether the Defendant's use of the disputed mark is likely to cause confusion among consumers regarding the origin of the goods offered by the parties." Big Daddy's , 109 F.3d at 280. The same likelihood of confusion standard applies to claims of false designation of origin. Johnson v. Jones , 149 F.3d 494, 502 (6th Cir. 1998) ; see 15 U.S.C. § 1125(a).
Defendants first argue that Plaintiffs' trademark infringement and false designation of origin claims fail because Defendants' use of the Mark was a non-trademark use, i.e. , "as the masthead of a fictional magazine appearing in a brief montage of media clippings featuring the title character." (Defs.' Mem. 1). Defendants therefore state that "[n]o reasonable consumer who watches either Spaceman or its trailer would conclude that The Sporting Times sponsored or produced the film." (Defs.' Reply Supp. Mot. Dismiss 3, DN 26 [hereinafter Defs.' Reply]; Defs.' Mem. 5).4
The Sixth Circuit's eight-factor likelihood of confusion test does not apply where a defendant uses the mark in a "non-trademark way." See Interactive Prods. Corp. v. a2z Mobile Office Sols., Inc. , 326 F.3d 687, 695 (6th Cir. 2003) (citing New Kids on the Block v. News Am. Publ'g, Inc. , 971 F.2d 302, 307 (9th Cir. 1992) ); Hensley Mfg., Inc. v. ProPride, Inc. , 579 F.3d 603, 610 (6th Cir. 2009). Specifically, there can be no finding of trademark infringement where the alleged offending party is not "using the...
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