Case 2:15-cv-05024-DDP-E Document 87 Filed 03/14/16 Page 1 of 35 Page ID #:1865

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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LIONS GATE ENTERTAINMENT
INC., a Delaware
corporation,

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Plaintiff,

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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,

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Defendants.
___________________________

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Case No. CV 15-05024 DDP (Ex)
ORDER DENYING IN PART AND
GRANTING IN PART DEFENDANTS’
MOTION TO DISMISS
[Dkt. No. 49]

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Presently before the Court is the Motion to Dismiss of
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Defendants TD Ameritrade Services Company, TD Ameritrade, Inc.,
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Amerivest Investment Management, LLC, and Havas Worldwide New York,
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Inc. (collectively, “Defendants”).

(Dkt. No. 49.)

After

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considering the parties’ submissions and hearing oral argument, the
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Court adopts the following Order.
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 Case 2:15-cv-05024-DDP-E Document 87 Filed 03/14/16 Page 2 of 35 Page ID #:1866

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I.

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BACKGROUND
This copyright and trademark infringement case arises from

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Plaintiff Lions Gate Entertainment, Inc.’s intellectual property

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rights in the movie Dirty Dancing that Plaintiff alleges Defendants

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infringed.

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(First Am. Compl. (“FAC”) ¶¶ 15, 22, 32.)

Plaintiff Lions Gate is a “global entertainment company” that

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produces, distributes, finances, licenses, and performs other

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related activities for movies and television shows.

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16.)

(Id. ¶¶ 15-

Dirty Dancing “is a world famous, Oscar-winning film, which

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was released in 1987 and became a massive box office hit, with

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hundreds of millions of dollars in worldwide earnings reported.”

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(Id. ¶ 17.)

Many scenes and lines from the film are particularly

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well-known.

(Id.)

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puts Baby in a corner,” said by Patrick Swayze to Jennifer Grey in

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the final climactic scene of the film.

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followed by the final dance between the two main characters,

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culminating with Swayze lifting Grey over his head (the “dance

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lift”).

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The FAC notes in particular the line “Nobody

(Id. ¶ 21.)

The line is

(Id.)

Lions Gate claims to own “all right, title and interest in,

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and . . . the copyright in,” the film.

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also claims to own common-law trademark rights in DIRTY DANCING and

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NOBODY PUTS BABY IN A CORNER, the latter mark being one associated

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with Dirty Dancing the movie and both of which are used in motion

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pictures, various items of merchandise, and other adaptations of

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the film.

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registered the trademark DIRTY DANCING and to have applied for

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trademark registration in NOBODY PUTS BABY IN A CORNER.

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24.)

(Id. ¶ 18-19, 23-24.)

(Id. ¶ 22.)

Lions Gate

Lions Gate also claims to have

(Id. ¶

The latter trademark registration is “based on actual use of
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the mark for certain goods and on an intent to use the mark for the

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remaining goods identified in the applications.”

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claims that it has licensed the marks DIRTY DANCING and NOBODY PUTS

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BABY IN A CORNER for the “manufacturing, marketing, and sale of a

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variety of merchandise through approved licensees.”

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Further, Plaintiff claims that it “licenses elements from Dirty

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Dancing to third parties, who use Dirty Dancing to advertise,

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market, or promote their goods and services.”

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claims that the trademarks have secondary meaning and are famous,

(Id.)

(Id.)

Plaintiff

(Id. ¶ 26.)

Plaintiff

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as well as are associated with goodwill and quality, creating high

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value in the marks for Plaintiff and its licensees.

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29.)

(Id. ¶¶ 28-

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Defendants TD Ameritrade, TD Ameritrade Services, and

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Amerivest (collectively, “TD Defendants”) are related financial

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services organizations.

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(“Havas New York”) is an advertising agency that was hired in 2014

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to create a national advertising campaign for the TD Defendants.

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(Id. ¶¶ 30-31.)

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digital displays, social media, email, television, and print ads.

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(Id.)

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was generally published and displayed in California and was

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directly distributed to California residents, in accordance with

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Defendants’ plans and intentions.”

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“[a]pproximately 20% of TD Ameritrade’s nationwide branch offices

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are in California” and “[e]mails sent as part of the Advertising

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Campaign included in their fine print a link to TD Ameritrade’s

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online privacy statement, which includes information expressly

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directed to email recipients that reside in California.”

(Id. ¶¶ 4-8.)

Havas Worldwide New York

The advertisements consisted of online videos,

According to Plaintiff’s FAC, “[t]he Advertising Campaign

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(Id. ¶ 31.)

Further,

(Id.)

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Plaintiff claims that the advertising campaign “intentionally

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copied the Dirty Dancing motion picture, and was intentionally

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designed to create an association with Lions Gate and its

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commercial activities by marketing TD Ameritrade’s goods and

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services with phrases” that modified the NOBODY PUTS BABY IN A

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CORNER trademark and quote from Dirty Dancing, as well as the

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signature dance lift.

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of the advertisement campaign is: “Nobody puts your old 401k in a

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corner,” with an encouragement to enroll in the TD Defendants’ IRA

(Id. ¶¶ 32-34.)

Essentially, the main line

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plans.

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conjure up Dirty Dancing, such as “a still and/or moving image of a

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man lifting a piggy bank over his head after the piggy bank ran

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into the man’s arms.”

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advertisements invoked the song, “(I’ve Had) the Time of My Life,”

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which played during the final dance scene in the movie, with lines

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like “[b]ecause retirement should be the time of your life.”

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Plaintiff claims that all these uses render consumer confusion

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likely to occur.

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(Id. ¶ 32.)

The advertisements often included images to

(Id. ¶ 34.)

Some versions of the

(Id.)

(Id. ¶¶ 35-36.)

Plaintiff claims that the advertising campaign ran from

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October 2014 to April 12, 2015, as Plaintiff contacted the TD

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Defendants about the campaign in April after Plaintiff learned of

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it.

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desist letter on behalf of itself and the TD Defendants, claiming

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that Plaintiff had no enforceable trademark rights and that

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Defendants were making a parody.

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exchange of letters regarding the advertising campaign, Defendants

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ceased the campaign, but still refused to pay Plaintiff for their

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alleged infringing use.

(Id. ¶¶ 37-38.)

Havas New York responded to the cease and

(Id. ¶ 39.)

(Id. ¶ 41.)
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Shortly after an

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The parties continued communicating about settlement of

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Plaintiff’s potential claims, with Plaintiff stating in June 2015

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that if settlement discussions did not engage in earnest, it would

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file a lawsuit in the Central District of California.

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44.)

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declaratory judgment suit in the Southern District of New York.

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(Id. ¶¶ 45-47.)

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New York case and also filed its own suit in the Central District

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of California.

(Id. ¶ 42-

After the parties failed to settle, Defendants filed a

Plaintiff filed a motion to transfer venue in the

(Id. ¶ 49; see also Compl., dkt. no. 1.)

On

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September 29, 2015, the New York federal court granted the motion

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to transfer; shortly thereafter, Defendants voluntarily dismissed

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their claims in the New York suit.

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Defendants have filed a Motion to Dismiss for (1) lack of personal

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jurisdiction over Havas New York; and (2) Copyright Act preemption.

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II.

(FAC ¶¶ 49-50.)

Now,

LEGAL STANDARD

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A.

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Federal Rule of Civil Procedure 12(b)(2) provides that a court

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

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may dismiss a suit for lack of personal jurisdiction.

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plaintiff has the burden of establishing that jurisdiction exists,

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but need only make “a prima facie showing of jurisdictional facts

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to withstand the motion to dismiss.”

Pebble Beach Co. v. Caddy,

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453 F.3d 1151, 1154 (9th Cir. 2006).

“[U]ncontroverted allegations

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in [the plaintiff’s] complaint must be taken as true, and conflicts

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between the facts contained in the parties’ affidavits must be

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resolved in [the plaintiff’s] favor.”

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Int’l Interlink, 284 F.3d 1007, 1019 (9th Cir. 2002).

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///

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///
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The

Rio Props., Inc. v. Rio

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B.

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

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A 12(b)(6) motion to dismiss for failure to state a claim upon

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which relief can be granted requires a court to determine the

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sufficiency of the plaintiff’s complaint and whether it contains a

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“short and plain statement of the claim showing that the pleader is

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entitled to relief.”

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12(b)(6), a court must (1) construe the complaint in the light most

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favorable to the plaintiff, and (2) accept all well-pleaded factual

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allegations as true, as well as all reasonable inferences to be

See Fed. R. Civ. P. 8(a)(2).

Under Rule

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drawn from them.

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979, 988 (9th Cir. 2001), amended on denial of reh’g, 275 F.3d 1187

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(9th Cir. 2001).

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See Sprewell v. Golden State Warriors, 266 F.3d

In order to survive a 12(b)(6) motion to dismiss, the

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complaint must “contain sufficient factual matter, accepted as

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true, to ‘state a claim to relief that is plausible on its face.’”

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Ashcroft v. Iqbal, 556 U.S. 662, 663 (2009) (quoting Bell Atl.

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Corp. v. Twombly, 550 U.S. 544, 570 (2007)).

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“[t]hreadbare recitals of the elements of a cause of action,

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supported by mere conclusory statements, do not suffice.”

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678.

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legal theory or sufficient facts to support a cognizable legal

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theory.”

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1104 (9th Cir. 2008).

However,

Id. at

Dismissal is proper if the complaint “lacks a cognizable

Mendiondo v. Centinela Hosp. Med. Ctr., 521 F.3d 1097,

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A complaint does not suffice “if it tenders ‘naked

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assertion[s]’ devoid of ‘further factual enhancement.’”

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U.S. at 678 (quoting Twombly, 550 U.S. at 556).

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facial plausibility when the plaintiff pleads factual content that

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allows the court to draw the reasonable inference that the
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Iqbal, 556

“A claim has

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defendant is liable for the misconduct alleged.”

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need not accept as true “legal conclusions merely because they are

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cast in the form of factual allegations.”

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Worldwide, Inc., 328 F.3d 1136, 1139 (9th Cir. 2003).

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III. DISCUSSION

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Id.

The court

Warren v. Fox Family

Defendants make two main arguments in support of their Motion

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to Dismiss.

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personal jurisdiction in California.

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Havas New York claims there is no general jurisdiction because it

First, Havas New York claims that it is not subject to
(Mot. Dismiss at 1, 7-15.)

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“does not have offices, employees, or other contacts” in California

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and Plaintiff cannot impute separately incorporated sister entities

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to Havas New York in order to establish jurisdiction.

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7-10.)

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claims, because it “merely produced the advertisements and

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delivered them to its client, TD Ameritrade Services, outside of

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California.”

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disseminate the advertisements or have any role or authority in

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determining whether, when, or where they would air,” Havas New York

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claims it “has not purposefully directed any activity toward

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California.”

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(Id. at 1,

There is no specific jurisdiction either, Havas New York

(Id. at 1, 10-15.)

Because Havas New York “did not

(Id. at 1-2.)

Second, all Defendants argue that four of Plaintiff’s causes

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of action are preempted by the Copyright Act: (1) False Association

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and Unfair Competition under 15 U.S.C. § 1125(a); (2) Statutory and

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Common Law Unfair Competition under Cal. Bus. & Prof. Code § 17200

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et seq.; (3) Trademark Infringement under 15 U.S.C. § 1125(a) and

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common law; and (4) Trademark Dilution under 15 U.S.C. § 1125(c)

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and Cal. Bus. & Prof. Code § 14247.

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(See Mot. Dismiss at 2, 15-25;

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FAC ¶¶ 51-81.)

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infringement that Defendants do not contest.

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Plaintiff also has a cause of action for copyright
(FAC ¶¶ 82-91.)

Defendants claim that the trademark and unfair competition

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claims are preempted by the Copyright Act because the “claims are

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premised on the unauthorized reproduction of elements of a creative

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work.”

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are protected by the Copyright Act and a plaintiff cannot bring

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other claims to vindicate the same rights, much less expand

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protection beyond the scope of copyright.

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(Mot. Dismiss at 2.)

Defendants argue that the elements

(Id. at 2, 17-25.)

Plaintiff responds that there is personal jurisdiction over

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Havas New York, as strongly suggested by the New York federal court

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that heard the motion to transfer venue.

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least, Plaintiff argues, the Court should grant jurisdictional

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discovery.

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general jurisdiction over Havas New York because of its corporate

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relationships with related California entities and California-based

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clients.

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Plaintiff claims, because Havas New York created the advertisement

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campaign “knowing and intending it to be run in California and

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specifically directed to California consumers.”

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(emphasis removed).)

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York purposefully directed its activities at California,

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Plaintiff’s claims arise out of those activities, and exercise of

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jurisdiction would be reasonable, this Court should find it has

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personal jurisdiction over Havas New York.

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(Id. at 1, 14-15.)

(Id. at 5-6.)

(Opp’n at 1.)

At the

Plaintiff claims that there is

There is also specific jurisdiction here,

(Id. at 7

According to Plaintiff, because Havas New

(Id. at 8-14.)

Second, Plaintiff argues it has alleged clear trademark and

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unfair competition claims that exist independently from its

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copyright claim — and that Plaintiff can enforce both of kinds of
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intellectual property rights.

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acknowledges that the trademark and copyright claims derive from

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one creative work, the film Dirty Dancing, but that “courts have

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consistently held that a single work may simultaneously be

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protected under copyright and trademark law.”

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(Id. at 2, 16-25.)

Plaintiff

(Id. at 2.)

In their Reply, Defendants reiterate that there are no grounds

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for personal jurisdiction over Havas New York because: “Havas New

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York is a foreign entity, and contracted with another foreign

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entity, TD Ameritrade Services, to develop a national advertising

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campaign; that the Accused Ads were both created for and delivered

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to TD Ameritrade Services outside of California; and that TD

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Ameritrade Services distributed the Accused Ads.”

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As for the copyright preemption issue, Defendants claim that

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Plaintiff in its Opposition and FAC have “commingle[d] the

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quote/alleged mark with the film Dirty Dancing as a whole” and that

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there is no real use of the alleged trademark outside of the

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copyrighted motion picture work.

(Reply at 1.)

(Id. at 2.)

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A.

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District courts have the power to exercise personal

Personal Jurisdiction

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jurisdiction to the extent authorized by the law of the state in

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which they sit.

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v. Toeppen, 141 F.3d 1316, 1320 (9th Cir. 1998).

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California’s long-arm statute authorizes personal jurisdiction

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coextensive with the Due Process Clause of the United States

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Constitution, see Cal. Civ. Proc. Code § 410.10, this Court may

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exercise personal jurisdiction over a nonresident defendant when

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that defendant has “at least ‘minimum contacts’ with the relevant

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forum such that the exercise of jurisdiction ‘does not offend

Fed. R. Civ. P. 4(k)(1)(A); Panavision Int’l, L.P.

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Because

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traditional notions of fair play and substantial justice.’”

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Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797, 801 (9th

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Cir. 2004) (quoting Int’l Shoe Co. v. Washington, 326 U.S. 310, 316

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(1945)).

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quality and nature that the defendants could reasonably expect

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“being haled into court there.”

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Woodson, 444 U.S. 286, 297 (1980).

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either general or specific.

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The defendant’s contacts with the forum must be of such a

1.

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World-Wide Volkswagen Corp. v.
Personal jurisdiction may be

See Schwarzenegger, 374 F.3d at 801.

General Jurisdiction

General jurisdiction exists over a nonresident defendant when

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“the defendant . . . engage[s] in ‘continuous and systematic

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general business contacts’ that ‘approximate physical presence’ in

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the forum state.”

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Colombia, S.A. v. Hall, 466 U.S. 408, 416 (1984)) (internal

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quotation omitted).

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“exacting.”

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jurisdiction, he “can be haled into court in that state in any

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action, even if the action is unrelated to those contacts.”

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Bancroft & Masters, Inc. v. Augusta Nat’l, Inc., 223 F.3d 1082,

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1086 (9th Cir. 2000).

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whether the defendant makes sales, solicits or engages in business

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in the state, serves the state’s markets, designates an agent for

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service of process, holds a license, or is incorporated there.”

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Id.

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Id.

Id. (quoting Helicopteros Nacionales de

The standard for general jurisdiction is

Where a defendant is subject to a state’s general

“Factors to be taken into consideration are

The Supreme Court has held that general jurisdiction can be

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exercised over corporations in the state of incorporation and its

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principal place of business, although in an “exceptional case,”

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there can be general jurisdiction in other fora.
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See Daimler AG v.

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Bauman, 134 S. Ct. 746, 760-61 & n.19 (2014).

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did not provide much explanation as to those exceptional cases,

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other than to say that “a corporation’s operations in a forum other

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than its formal place of incorporation or principal place of

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business may be so substantial and of such a nature as to render

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the corporation at home in that State.”

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The Supreme Court

Id. at 761 n.19.

Here, Defendant Havas New York is incorporated in Delaware and

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has its principal place of business in New York — facts neither

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party contests.

(Mot. Dismiss at 8; Opp’n at 5-6; FAC ¶ 9.)

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Instead, Plaintiff contends that this is an “exceptional case”

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where general jurisdiction can be found outside those paradigmatic

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categories.

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Inc., 653 F.3d 1066, 1074 (9th Cir. 2011), which stated that it

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considered the “longevity, continuity, volume, economic impact,

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physical presence, and integration into the state’s regulatory or

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economic markets” of the defendant’s contacts with the forum state

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when determining if general jurisdiction is appropriate.

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Plaintiff relies on CollegeSource, Inc. v. AcademyOne,

Plaintiff claims that Havas New York has “large California-

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based clients” and clients “that have a substantial California

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presence,” such as the TD Defendants.

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Walters Decl. ¶¶ 18-24); see also FAC ¶ 12.)

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argues that Havas New York has “extensive, self-proclaimed

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connections to offices throughout the world, including 8 sister

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entities in California with whom Havas has overlapping corporate

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officers.”

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also FAC ¶¶ 10-11.)

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both San Francisco, California and San Diego, California, and is

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affiliated with local offices throughout the U.S., including 8

(Opp’n at 6 & n.3 (citing
Further, Plaintiff

(Opp’n at 6 & n.4 (citing Walters Decl. ¶¶ 12-17); see
The FAC states that “Havas operates offices in

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offices in California, 2 of which are located in Los Angeles.”

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(FAC ¶ 11.)

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partners and does business with its affiliates in California” and

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holds itself out to its clients as “under one roof.”

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Plaintiff claims that Havas New York “frequently

(Id.)

Defendants argue that Plaintiff has its facts wrong.

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Defendants claim that Havas New York “does not maintain an office

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in San Francisco, San Diego, or anywhere else in California.”

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(Mot. Dismiss at 9 (citing Wynne Decl. ¶ 3).)

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offices instead belong to sister Havas entities.

These California
(Id. (citing

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Wynne Decl. ¶¶ 12-13.)

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claim about the amount of California clients is incorrect (citing

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Wynne Decl. ¶ 18), and regardless of the clients, merely having

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California clients is insufficient to find general jurisdiction.

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(Mot. Dismiss at 9 (citing CollegeSource, 653 F.3d at 1075).)

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focus instead is on “where the business activity is performed.”

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(Id. (quoting Cypers v. Broussard Bros., Inc., No. 3:13-cv-0050,

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2013 WL 3480381, at *3 (S.D. Tex. July 9, 2013).)

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claim that having sister entities — some of which are in California

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— cannot make general jurisdiction, particularly where there is no

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agency theory of jurisdiction or allegations of alter ego.

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Dismiss at 9-10 (citing Daimler, 134 S. Ct. at 759; Wynne Decl. ¶¶

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12-15).)

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Further, Defendants argue that Plaintiff’s

The

And Defendants

(Mot.

The Court finds that the question of general jurisdiction over

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Havas New York in California is a close one on the factual record

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developed here.

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business in California, even apart from its sister entities in

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California, and the company holds itself out to the public as a

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worldwide firm with internal connections within the different

On the one hand, Havas New York does extensive

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sister offices.

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perhaps even primarily deal with clients or do business in

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California, much less have a physical presence in the state — the

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sister entities are not grounds for jurisdiction and there is no

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allegation of alter ego here.

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On the other hand, Havas New York does not only or

Looking at the Ninth Circuit’s factors from CollegeSource, it

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is unclear how long Havas New York has dealt in California.

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does appear to be some longevity, as the firm has several large

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institutional clients here, although Havas New York may only be

There

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hired for a short time by some of its California clients.

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some uncertainty in the current record as to the volume of business

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Havas New York does in California.

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both California clients and Havas New York through Havas New York’s

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California clients, but again the record is not that developed as

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to this factor.

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by Havas New York itself in California other its visits to its

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clients and meetings with its sister entities.

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facts in the record about Havas New York’s integration into the

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state’s regulatory or economic markets here in California, so the

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Court cannot consider that factor.

There is

There is economic impact on

There does not appear to be any physical presence

And there are no

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Altogether, the Court could see an argument for general

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jurisdiction in this case, although the record could also benefit

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from some more development in that regard.

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specific jurisdiction, however, it need not rest its decision on

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this ground or order jurisdictional discovery.

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2.

If the Court finds

Specific Jurisdiction

Specific jurisdiction exists where a case arises out of forumrelated acts.

Schwarzenegger, 374 F.3d at 801-02.
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The relevant

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contacts with the forum are those of the defendant, not the

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plaintiff or third parties — no matter “how significant the

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plaintiff’s contacts with the forum may be.”

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S. Ct. 1115, 1122 (2014) (“[T]he plaintiff cannot be the only link

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between the defendant and the forum.

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conduct that must form the necessary connection with the forum

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State that is the basis for its jurisdiction over him.”).

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Ninth Circuit analyzes specific jurisdiction according to a three-

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prong test:

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Walden v. Fiore, 134

Rather, it is the defendant’s

The

(1)

The non-resident defendant must purposefully direct
his activities or consummate some transaction with the
forum or resident thereof; or perform some act by
which he purposefully avails himself of the privilege
of conducting activities in the forum, thereby
invoking the benefits and protections of its laws;

(2)

the claim must be one which arises out of or relates
to the defendant’s forum-related activities; and

(3)

the exercise of jurisdiction must comport with fair
play and substantial justice, i.e. it must be
reasonable.

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17

Schwarzenegger, 374 at 802.

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satisfying both of the first two prongs, the burden then shifts to

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the defendant to ‘present a compelling case’ that the exercise of

20

jurisdiction would not be reasonable.”

21

King Corp. v. Rudzewicz, 471 U.S. 452, 476-78 (1985)).

22
23

a.

“If the plaintiff succeeds in

Id. at 802 (citing Burger

First Prong: Purposeful Availment & Direction

To satisfy the first prong of the specific jurisdiction

24

inquiry, courts examine whether a defendant “either purposefully

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availed itself of the privilege of conducting activities in [the

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forum state], or purposefully directed its activities toward [the

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forum state].”

28

whether the case is based on contract or tort, with “availment”

Id.

Different tests are applied depending on

14

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1

generally used for contracts and “direction” generally used for

2

torts.

3

himself of the privilege of doing business in a forum state

4

typically consists of evidence of the defendant’s actions in the

5

forum, such as executing or performing a contract there.

Id.

“A showing that a defendant purposefully availed

Id.

6

“A showing that a defendant purposefully directed his conduct

7

toward a forum state, by contrast, usually consists of evidence of

8

the defendant’s actions outside the forum state that are directed

9

at the forum, such as the distribution in the forum state of goods

10

originating elsewhere”; this includes situations where activities

11

are directed at residents of the forum even if there are no

12

physical contacts with the forum.

13

Volkswagen, 444 U.S. at 297-98 (“The forum State does not exceed

14

its powers under the Due Process Clause if it asserts personal

15

jurisdiction over a corporation that delivers its products into the

16

stream of commerce with the expectation that they will be purchased

17

by consumers in the forum State.”).

18

Id. at 803; see also World-Wide

This case is not one where Havas New York performed or

19

executed a contract in California, or where it sought the benefits

20

of the laws of California.

21

purposeful availment analysis, and the Court turns to purposeful

22

direction.

23

Therefore, there are no grounds for a

The Ninth Circuit evaluates purposeful direction using a

24

three-part “effects test” taken from the Supreme Court’s decision

25

in Calder v. Jones, 465 U.S. 783 (1984).

26

F.3d at 803.

27

committed an intentional act; (2) the act was expressly aimed at

28

the forum state; and (3) the act caused harm that the defendant

See Schwarzenegger, 374

“The effects test is satisfied if (1) the defendant

15

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1

knew was likely to be suffered in the forum state.”

2

Associated Newspapers, Ltd., 611 F.3d 601, 609 (9th Cir. 2010)

3

Love v.

Here, Havas New York committed an intentional act in its

4

creation of the advertising campaign.

5

the act was “expressly aimed” at California.

6

“alleged knowledge that TD Ameritrade was going to place the

7

Accused Ads nationwide is insufficient to establish that Havas New

8

York expressly aimed activity towards California.”

9

at 11.)

The parties dispute whether
Defendants argue that

(Mot. Dismiss

Havas New York did not disseminate the advertisements, did

10

not determine “whether and where to use the Accused Ads,” and the

11

advertisements do not advertise Havas New York’s business.

12

11-12.)

13

despite these facts “would result in essentially national or

14

worldwide jurisdiction over any creative agency that delivers its

15

work to any company that operates in more than one state or

16

internationally.”

17

(Id. at

Defendants claim that for the Court to find jurisdiction

(Id. at 12.)

In response, Plaintiff argues that Havas New York designed the

18

allegedly infringing advertisement campaign “knowing and intending

19

it to be run in California and specifically directed to California

20

consumers.”

21

22-24; Huerta Decl. ¶¶ 2-5).)

22

Plaintiffs argue that it also targeted California specifically

23

because TD Ameritrade has 20% of its branch offices and many

24

individual retail investors in California.

(Id. at 9 & n.7 (citing

25

Wynne Decl. ¶ 8; Walters Decl. ¶¶ 22-23).)

The fact that Havas New

26

York did not disseminate the advertisements is not controlling,

27

Plaintiff argues, because this case is just like Calder v. Jones,

28

465 U.S. 783 (1945).

(Opp’n at 7 (citing Wynne Decl. ¶ 8; Walters Decl. ¶¶
The campaign was nationwide, but

16

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1

In Calder, the Supreme Court held that a reporter and editor

2

of a national publication — both citizens of Florida — were subject

3

to suit in California because the object of their allegedly

4

libelous article was in California; it did not matter that the

5

reporter and editor did not circulate the publication because they

6

intentionally aimed their actions at California.

7

also Walden, 134 S. Ct. at 1123-24 & n.7 (discussing Calder).

8

defendants argued that they could not control their employer’s

9

marketing and circulation activity, and that the fact that they

Id. at 789; see
The

10

could “foresee” the article’s circulation in California is not

11

sufficient for jurisdiction.

12

also “liken[ed] themselves to a welder employed in Florida who

13

works on a boiler which subsequently explodes in California” and

14

argued that while jurisdiction over the manufacturer may be

15

appropriate, it “should not be applied to the welder who has no

16

control over and derives no direct benefit from his employer’s

17

sales in that distant State”).

18

arguments, stating that the defendants were “not charged with mere

19

untargeted negligence” but instead intentional tortious conduct

20

expressly aimed at California:

21
22
23
24
25
26
27
28

Calder, 465 U.S. at 789 (defendants

The Supreme Court rejected these

Petitioner South wrote and petitioner Calder edited an
article that they knew would have a potentially devastating
impact upon respondent. And they knew that the brunt of
that inquiry would be felt by respondent in the State in
which she lives and works and in which the National
Enquirer has its largest circulation.
Under the
circumstances, petitioners must “reasonably anticipate
being haled into court there” to answer for the truth of
the statements made in their article.
Id. at 789-90.
The Court finds this case analogous to Calder.

Havas New York

knew it was using Lions Gate’s intellectual property — no party
17

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1

disputes the iconic nature of Dirty Dancing or that Havas

2

originally claimed as a defense that it was merely parodying

3

Plaintiff’s film, indicating its knowledge of the original source —

4

and Havas New York created an advertisement campaign that targeted

5

Plaintiff’s intellectual property rights in the film.

6

York also knew that the ad would be in one of the largest bases of

7

population — and relevant consumer population — in the nation for a

8

nationwide advertising campaign: California.

9

Havas New

The alleged harm was felt nationwide, consistent with the

10

extent of the campaign, but the harm was also targeted toward

11

California specifically as a major hub of the TD Defendants’

12

business, the location of Plaintiff’s principal place of business,

13

and the heart of the entertainment industry.

14

v. Rio Int’l Interlink, 284 F.3d 1007, 1020-21 (9th Cir. 2002)

15

(where defendant targeted consumers in forum with different kinds

16

of advertisements and “knowingly injured” the plaintiff in the

17

forum, which was the plaintiff’s principal place of business and

18

“the capital of the gambling industry”).

19

matter that Havas New York did not distribute the advertisements;

20

as in Calder, the intentional act, the direct aim to California,

21

and the knowledge of the harm that would be caused in California

22

are sufficient to establish purposeful direction.

23

See Rio Props., Inc.

Therefore, it does not

Havas New York argues that Schwarzenegger puts a different

24

gloss on Calder.

25

specific jurisdiction in California over an Ohio car company that

26

ran an unauthorized advertisement using Schwarzenegger’s picture

27

because the creation and publication of the advertisement was

28

expressly aimed at Ohio, not California — in fact, there was no

(Reply at 11.)

Schwarzenegger held there was no

18

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1

evidence that the ad ever ran anywhere outside Ohio.

2

Schwarzenegger, 374 F.3d at 807.

3

this one because the ads Havas New York created not only used

4

Plaintiff’s intellectual property without authorization, but also

5

the ads did run in California with Havas New York’s knowledge that

6

the campaign was national, including California.

7

That case is not analogous to

Havas New York also argues that there is a difference when the

8

advertisements are for the defendant itself, rather than for a

9

different entity that decides to place the ads in a national

10

audience.

11

situation, Havas New York argues, there should be no jurisdiction

12

because there is no attempt by the defendant to exploit the forum

13

for the defendant’s business advantage.

14

defendant has reached out to the forum with advertisements for its

15

own business, thus personal jurisdiction is appropriate.

16

12.)

17

of the forum, were not found to be subject to personal jurisdiction

18

based on national distribution by a third party of allegedly

19

infringing work.

20

Inc. v. Still N the Water Pub, 327 F.3d 472, 480-81 (6th Cir.

21

2003); Dos Santos v. Telemundo Commc’ns Grp., LLC, No. SACV 12-1373

22

JVS (MLGx), 2012 WL 9503003, at *6-7 (C.D. Cal. Dec. 19, 2012);

23

McDonough v. Fallon McElligott, Inc., No. CIV 95-4037, 1996 WL

24

753991, at *4-6 (S.D. Cal. Aug. 5, 1996).

25

(Mot. Dismiss at 12; Reply at 11-12.)

In the latter

In the former situation, a

(Reply at

Havas New York cites cases where defendants, working outside

(Mot. Dismiss at 12 (citing Bridgeport Music,

None of these cases are persuasive in this case.

Bridgeport

26

lacked any real evidence regarding even nationwide distribution of

27

advertisements. McDonough found evidence both supporting and

28

opposing specific jurisdiction, and while the court ultimately
19

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1

found no specific jurisdiction, it did so distinguishing Calder on

2

the basis that there was no evidence that the ad targeted the

3

forum.

4

Dos Santos also weighed evidence pointing both ways as to

5

specific jurisdiction, and ultimately found that there was no

6

evidentiary basis to find the defendants “acted with a desire or

7

goal of appealing to California and exploiting the market for

8

commercial gain, or that they directed Telemundo’s broadcasts and

9

advertising.”

Dos Santos, No. SACV 12-1373 JVS (MLGx), at * 7.

10

The last statement of the court in Dos Santos about directing

11

another defendant’s broadcasts and advertising appears a bit in

12

tension with Calder’s finding that the fact that defendants do not

13

actually distribute intentionally tortious material does not mean

14

there is no specific jurisdiction as long as the defendants knew

15

the material would be distributed in the forum state.

16

U.S. at 789-90.

17

aiming of intentionally tortious conduct in this case as alleged by

18

Plaintiff, satisfying the first prong.

19
20

Calder, 465

Therefore, the Court holds that there is express

b.

Second Prong: Relation to Forum

“The second requirement for specific jurisdiction is that the

21

contacts constituting purposeful availment must be the ones that

22

give rise to the current suit.

We measure this requirement in

23

terms of ‘but for’ causation.”

Bancroft, 223 F.3d at 1088.

24

Here, but for Havas New York’s nationwide advertisement

25

campaign allegedly using Plaintiff’s protected intellectual

26

property, Plaintiff would not have been harmed in its home forum,

27

California.

Thus, the contacts Havas New York has with the forum —

28
20

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1

the advertisement campaign using Plaintiff’s intellectual property

2

— are also the conduct that gave rise to the suit.

3
4
5
6
7
8
9
10

c.

Third Prong: Reasonableness of Jurisdiction

To determine reasonableness, courts look to seven fairness
factors from the Supreme Court’s Burger King decision:
(1) the extent of a defendant’s purposeful interjection
[into the forum]; (2) the burden on the defendant in
defending in the forum; (3) the extent of conflict with
the sovereignty of the defendant’s state; (4) the forum
state’s interest in adjudicating the dispute; (5) the
most efficient judicial resolution of the controversy;
(6) the importance of the forum to the plaintiff’s
interest in convenient and effective relief; and (7) the
existence of an alternative forum. No one factor is
dispositive; a court must balance all seven.

11
12
13

Panavision, 141 F.3d at 1323 (internal citation omitted).
Defendants argue that the exercise of jurisdiction over Havas

14

New York would be unreasonable because it has not reached out to

15

California in any way and defending in California would be a large

16

burden since it is based in New York, which is also the location of

17

“all relevant witnesses and evidence.”

18

Plaintiff argues that this showing is not enough to meet the burden

19

that is on Defendant after Plaintiff makes its prima facie case of

20

proper jurisdiction.

21

of the factors:

22
23
24
25
26
27

(Opp’n at 13.)

(Mot. Dismiss at 14.)

Plaintiff also address each

Havas purposefully directed itself into California by
creating, designing and implementing the Advertising
Campaign for a client whose presence in California is
extensive, and specifically designed it to target
California customers, using assets known to belong to a
California-based company.
In addition, Havas regularly services California-based
clients, including by traveling for client meetings. Havas
also touts itself as “one of the largest integrated
marketing communications agencies in the world,” and its
public statements confirm that it regularly works with its
various California affiliates. Thus, it undoubtedly has

28
21

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1

the resources to defend itself in California, where it has
at least 8 sister offices.
Finally, this Court has an overwhelming interest in
adjudicating this dispute.
Lions Gate maintains its
principal place of business here, the intellectual property
at issue resides here, and, as the New York Court held,
California is the most convenient and efficient forum.

2
3
4
5

(Id. at 14 (paragraph breaks inserted).)

6

not address these points or make further arguments as to the

7

reasonableness of exercising personal jurisdiction.

8

n.4.)

9

Defendants’ Reply does

(Reply at 13

The Court finds that exercise of personal jurisdiction over

10

Havas New York is reasonable.

11

of Havas New York’s purposeful direction to the forum.

12

burden on Havas New York in defending in California, but the burden

13

is slight considering that Havas New York has related entities and

14

business with clients in California.

15

sovereignty of New York, particularly as this case would be in

16

federal court in either state and the New York federal court

17

transferred the case to this jurisdiction.

18

interest in adjudicating the dispute because the case concerns the

19

protection of valuable intellectual property owned by a California-

20

based company in one of California’s most famous and important

21

industries.

22

The Court described above the extent
There is a

There is no conflict with the

This state has a strong

As there has already been a case in New York that was

23

transferred here, and Defendants dismissed that case voluntarily,

24

it is most efficient to resolve this dispute in one court and to

25

stop the forum transfers by both parties.

26

to Plaintiff’s ability to have convenient and effective relief

27

because Plaintiff is based here and suffered harm to its

28

intellectual property here.

The forum is important

There is another forum available — New
22

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1

York — but the court there already decided it is more convenient

2

and appropriate for the case as a whole to be decided in this

3

forum.

4

personal jurisdiction is reasonable in this case.

Therefore, the Court holds that exercise of specific

5

B.

Copyright Act Preemption and 12(b)(6)

6

The Copyright Act preempts rights under common law or state

7

statutes that “are equivalent to any of the exclusive rights within

8

the general scope of copyright as specified by section 106.”

9

U.S.C. § 301(a).

17

The Supreme Court has extended this principle of

10

copyright preemption to the Lanham Act and federal trademark

11

protection.

12

539 U.S. 23, 33-38 (2003); see also Mercado Latino, Inc. v. Indio

13

Prods., Inc, No. CV 13-01027 DDP, 2013 WL 2898224, at *4 (C.D. Cal.

14

June 12, 2013) (“To the extent that the Copyright Act provides an

15

adequate remedy, therefore, Lanham Act claims are preempted.”).

16

See Dastar Corp. v. Twentieth Century Fox Film Corp.,

The Ninth Circuit has adopted a two-part test for copyright

17

preemption.

18

matter’ of the state law claim falls within the subject matter of

19

copyright as described in 17 U.S.C. §§ 102 and 103.”

20

Music Entm’t, Inc., 448 F.3d 1134, 1137 (9th Cir. 2006) (footnotes

21

omitted).

22

within copyright, then the court “determine[s] whether the rights

23

asserted under state law are equivalent to the rights contained in

24

17 U.S.C. § 106, which articulates the exclusive rights of

25

copyright holders.”

26
27
28

First, the court “determine[s] whether the ‘subject

Laws v. Sony

Second, if the court determines the subject matter is

1.

Id. at 1137-38.

Subject Matter of Copyright

First, the trademark and unfair competition claims must relate
to subject matter within the scope of the Copyright Act for
23

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1

preemption to apply.

Section 102 of the Copyright Act extends

2

copyright protection to “original works of authorship fixed in any

3

tangible medium of expression.”

4

103 (covering compilations and derivative works).

5

specifically includes “motion pictures and other audiovisual

6

works,” such as the film Dirty Dancing, as well as literary works,

7

musical works, and choreographic works — all of which may be at

8

issue here with the song, the screenplay quote, and the dance lift.

9

Id. § 102.

17 U.S.C. § 102(a); see also id. §
The statute

Therefore, copyrighted and copyrightable subject matter

10

is involved in Plaintiff’s unfair competition and trademark causes

11

of action.

12
13

2.

Exclusive Rights of Copyright & Dastar Preemption

Second, the right asserted in the state law action must be

14

equivalent to a right protected under the Copyright Act for

15

preemption to apply.

16

exclusive rights of a copyright owner, including reproduction of

17

the copyrighted work, preparation of derivative works, distribution

18

of the work, and public performance and display of the work.

19

U.S.C. § 106(1)-(5).

20

action must protect rights that are qualitatively different from

21

the rights protected by copyright: the complaint must allege an

22

‘extra element’ that changes the nature of the action.”

23

Miramax Film Corp., 383 F.3d 965, 968 (9th Cir. 2004), amended on

24

denial of reh’g 400 F.3d 658 (9th Cir. 2004).

25

Section 106 in the Copyright Act outlines the

17

“To survive preemption, the state cause of

Grosso v.

The same kind of preemption principle applies for federal

26

Lanham Act causes of action as for state and common-law causes of

27

action.

28

trademark law could not be relied upon to extend copyright or

In Dastar, the Supreme Court explained that federal

24

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1

patent rights.

2

patent rights expire with those rights’ statutory timelines, and

3

not the potentially endless trademark protections.

4

Dastar, 539 U.S. at 33-34. Instead, copyright and

Id.

Further, trademark law is designed to protect the “origin of

5

goods” and prevent consumer confusion as to the source of goods,

6

not to protect “originality or creativity,” those being protected

7

by copyright and patent law.

8

interpreted “origin of goods” in the Lanham Act to refer “to the

9

producer of the tangible goods that are offered for sale, and not

Id. at 37.

Thus, the Court

10

to the author of any idea, concept, or communication embodied in

11

those goods.”

12

Id.

The Court noted that this did not prevent the plaintiff in

13

that case from raising a claim for false advertising under §

14

43(a)(1)(B) of the Lanham Act, which could occur, for example, if

15

the defendant movie producer “were, in advertising or promotion, to

16

give purchasers the impression that the video was quite different

17

from that series” that the producer had substantially copied.

18

at 38.

19

a “reverse passing off” cause of action under § 43(a)(1)(A) for

20

confusion as to the origin of the goods, but instead there could be

21

a cause of action for misrepresentation of the nature,

22

characteristics, or qualities of the goods.

23

In that situation, the Court explained, there would not be

Id.

Defendants claim here that the gravamen of Plaintiff’s

24

complaint is an alleged violation of the rights in Plaintiff’s

25

copyrighted film, Dirty Dancing.

26

Defendants see it,

27
28

Id.

(Mot. Dismiss at 20.)

As

Lions Gate alleges that Defendants copied elements of the
movie Dirty Dancing, made modifications to those elements,
and then passed them off as their own original content in
25

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1

the Accused Ads; such acts caused confusion, mistake, or
deception as to Defendants’ services originating with or
being endorsed by Lions Gate; and such acts have harmed
Lions Gate, its marks, the movie Dirty Dancing, Lions
Gate’s licensing program, and its goodwill and reputation.

2
3
4

(Id. at 20-21.)

5

Defendants claim that Plaintiff’s cause of action for false

6

association and unfair competition under § 1125(a) is barred under

7

a plain reading of Dastar, which dealt with the same statutory

8

section in terms of false designation of origin.

9

Defendants argue that other courts have found claims of false

(Id. at 21-23.)

10

association the same as false designation of origin, which was at

11

issue in Dastar, and different from Dastar’s carve out for

12

misrepresentation of the nature, characteristics, or qualities

13

provision under § 1125(a)(1)(B).

14

action is for California and common-law unfair competition

15

protection, and Defendants cite cases holding that state and

16

common-law protection is subject to the same result as federal

17

unfair competition law in terms of copyright preemption.

18

23-24.)

19

Plaintiff’s second cause of

(Id. at

Defendants group together in their analysis the third and

20

fourth causes of action for trademark infringement and dilution.

21

Defendants explain that for the dilution cause of action,

22

Plaintiff’s mark is not famous as an originator or mark of goods,

23

as the statute requires — it is famous as part of the copyrighted

24

film.

25

two causes of action, Defendants claim, are really copyright

26

infringement claims and the FAC fails to establish any use of the

27

NOBODY PUTS BABY IN A CORNER mark as an actual trademark.

28

24-25.)

(Id. at 24 & n.12.)

Further, the allegations as to these

26

(Id. at

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1

Plaintiff puts its arguments differently: “Lions Gate owns

2

trademark rights in NOBODY PUTS BABY IN A CORNER, and Defendants

3

used that mark, or a mark confusingly similar thereto, in

4

advertisements for their financial services in a manner likely to

5

confuse as to their services’ association with, or endorsement by,

6

Lions Gate.”

7

separate copyright infringement claims, and that its discussion of

8

the film, song, and dance lift in relation to the trademark are

9

based on the false association cause of action.

(Opp’n at 18-19.)

Plaintiff claims that it has made

(Id. at 19.)

10

Importantly, Plaintiff claims, “a single work may be protected as

11

an original work of authorship under copyright law and as a

12

trademark.”

13

v. Del Taco, Inc., No. CV 99-07655 DDP, 1999 WL 33260839, at *3

14

(C.D. Cal. Aug. 31, 1999).)

15

Plaintiff argues, citing cases.

16

(Id. (emphasis omitted) (citing Tristar Pictures, Inc.

Dastar did not change this fact,
(Id. at 22-23.)

The Court notes that the FAC bleeds together its copyright,

17

trademark, and unfair competition claims — and the facts that

18

support each cause of action — making it challenging for the Court,

19

much less Defendants, to determine the allegedly separate theories

20

underlying the different rights.

21

that Plaintiff seeks to use copyright aspects either as a bolster

22

for its trademark and unfair competition claims, or as the real

23

basis of the claims — the latter of which is certainly not

24

permissible.

25

mark NOBODY PUTS BABY IN A CORNER has been or is intended to be

26

used for in terms of consumer confusion; at oral argument,

27

Plaintiff’s counsel represented that the mark had been used on

28

goods such as posters, journals, clothing, and the like since 1987.

As pled and argued, it appears

Further, it is unclear from the FAC what the alleged

27

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1

Plaintiff’s first cause of action, false association and

2

unfair competition under 15 U.S.C. § 1125(a), involves the same

3

statutory subsection as was involved in Dastar: § 1125(a)(1)(A).

4

See Dastar, 539 U.S. at 31; Lexmark Int’l, Inc. v. Static Control

5

Components, Inc., 134 S. Ct. 1377, 1384 (2014) (“Section 1125(a)

6

thus creates two distinct bases of liability: false association, §

7

1125(a)(1)(A), and false advertising, § 1125(a)(1)(B).”).

8

association and its related unfair competition is the same claim as

9

that of false designation of origin, just under a different name.

False

10

Thus, Plaintiff’s cause of action would appear barred under Dastar,

11

as detailed in the cases cited by Defendants.

12

21-23.)

13

prejudice because the cause of action is preempted and any

14

amendment would be futile.

(See Mot. Dismiss at

Therefore, the Court dismisses this cause of action with

15

Plaintiff’s second and third causes of action, statutory and

16

common-law unfair competition and trademark infringement under the

17

common law and 15 U.S.C. § 1125(a), face similar problems.

18

causes of action are based on Defendants essentially copying

19

Plaintiff’s intellectual property and slightly changing the words —

20

creating a derivative work, perhaps — and using the changed

21

sentence in advertising its own products. Under standard state and

22

common-law preemption analysis from the Ninth Circuit, the state

23

and common-law claims alleged here are preempted by copyright law

24

because the same rights are asserted in these causes of action as

25

are asserted in the copyright infringement cause of action, namely

26

reproduction and distribution of the copyrighted work and

27

preparation of a derivative work.

28
28

These

(See FAC ¶¶ 59-61, 65-68.)

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For the federal claim, under Dastar, the same issue regarding

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consumer confusion as to the origin or association of the goods

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arises here for trademark infringement.

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to protect consumers from, for example, “the Coca-Cola Company’s

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passing off its product as Pepsi-Cola or reverse passing off Pepsi-

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Cola as its product.”

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Defendants were to sell posters, journals, and clothing with NOBODY

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PUTS BABY IN A CORNER on them, or take the goods Lions Gate alleges

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it produces or licenses and put TD’s own mark on it, then there

Trademark law is designed

Dastar, 539 U.S. at 32.

Thus, if the TD

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would be a solid origin claim under the Lanham Act, and surely any

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state and common-law equivalent.

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that — the distinction it drew for origin claims was between “the

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producer of the tangible goods that are offered for sale”

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(allowable) and “the author of any idea, concept, or communication

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embodied in those goods” (preempted).

Dastar explicitly provided for

Id. at 37.

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The problem is that nothing like that has occurred here.

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Plaintiff claims that Defendants have used a slightly altered

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version of its trademark in advertising for services that Plaintiff

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argues will cause consumer confusion as to Plaintiff’s endorsement

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or association with those services, even though Plaintiff does not

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allege it practices or licenses those services.

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to Plaintiff, a consumer viewing the TD advertisements would be

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confused as to the association of the film company Lions Gate (or

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at least the movie Dirty Dancing) with TD’s financial services,

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even though the advertisements clearly promote TD’s financial

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services and do not mention Lions Gate or Dirty Dancing, or attempt

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to pass off products of TD as from Lions Gate or vice versa.

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Plaintiffs argue this consumer confusion is caused by the
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That is, according

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advertisements’ use of Lions Gate’s trademark, NOBODY PUTS BABY IN

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A CORNER.

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The Court cannot see how this is different from a copyright

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infringement claim, or a claim that Defendants have failed to

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obtain the permission of the author of the “idea, concept, or

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communication embodied in those goods” Plaintiff claims to have

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licensed to use its phrase.

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Penny Co., 45 F. Supp. 3d 1181, 1184-86, 1188-89 (C.D. Cal. 2014).

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Assuming copyrights in the line “Nobody puts Baby in a corner,” or

Cf. Deckers Outdoor Corp. v. J.C.

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in the film Dirty Dancing, an unauthorized use of the copyrighted

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work includes copying the work and distributing it to the public as

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well as making an unauthorized derivative work — like making an

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advertisement using copyrighted work and distributing the ad to the

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public.

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That is what happened in this case, as alleged in the FAC.

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Defendants made an advertisement and used elements from the film

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Dirty Dancing: they used one of the most famous lines, “Nobody puts

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Baby in a corner,” and made a new tag line from it, “Nobody puts

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your old 401k in a corner; they played on the famous concluding

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dance scene with images of a man lifting a piggy bank over head;

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they referenced the famous song playing during that dance with

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another tag line, “Because retirement should be the time of your

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life.”

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copyright in Dirty Dancing, but there is no trademark infringement

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or unfair competition based on trademark infringement.

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These actions are potential violations of Plaintiff’s

And while the Court acknowledges that there are instances

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where a communicative good can be protected under both copyright

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and trademark, that is not present here.
30

See Tristar Pictures,

 Case 2:15-cv-05024-DDP-E Document 87 Filed 03/14/16 Page 31 of 35 Page ID #:1895

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Inc., No. CV 99-07655 DDP, at *3.

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the alleged wrongful conduct is Defendants’ unauthorized use of

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NOBODY PUTS BABY IN A CORNER.

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cause consumer confusion as to Lion’s Gate’s association with the

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TD Defendants and their services.

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can and is made in Plaintiff’s copyright infringement cause of

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action: that the protected elements of Dirty Dancing, including the

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line “Nobody puts Baby in a corner,” were publicly used without the

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authorization of the sole licensor of Dirty Dancing, Lions Gate.

10
11

The problem in this case is that

Plaintiff alleges that this would

But this exact claim and theory

(FAC ¶¶ 82-88.)
The only difference between Plaintiff’s copyright and

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trademark claims is that in the latter claims, Plaintiff’s allege

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that consumers will be confused by the unauthorized use as to Lions

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Gate’s association with the TD Defendants and their services.

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the same rights are alleged in the causes of action — the right to

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be the exclusive licensor and user of the sentence “Nobody puts

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Baby in a corner.”

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and unfair competition causes of action are also dismissed with

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prejudice because they are preempted by the Copyright Act and so

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any amendment would be futile.

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But

Therefore, Plaintiff’s trademark infringement

The cases Plaintiff relies on to show there is a separate

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trademark claim here are not persuasive.

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decision in Tristar Pictures was pre-Dastar and so does not answer

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the questions presented in this case.

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Timex Corp., 384 F.3d 700 (9th Cir. 2004), was post-Dastar, but did

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not deal with Dastar at all or copyright preemption in any

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significant way.

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proposition that Plaintiff cites it for: “Trademark claims cannot

Id. at 721.

First, this Court’s

Polar Bear Prods., Inc. v.

It certainly does not stand for the

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be preempted by the Copyright Act.”

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other cases are inapposite because they involve different factual

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scenarios and causes of action, with resulting different theories

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of trademark protection and preemption.

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McMeel Pub., LLC, 963 F. Supp. 2d 222, 235-36 (S.D.N.Y. 2013)

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(trade dress); Profoot, Inc. v. MSD Consumer Care, Inc., No. 11-

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7079, 2012 WL 1231984, at *3 (D.N.J. Apr. 12, 2012) (trade dress);

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Perfect 10, Inc. v. Google, Inc., No. CV 04-9484 AHM, 2008 WL

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4217837, at *8-9 (C.D. Cal. July 16, 2008) (state law causes of

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(Opp’n at 17.)

Plaintiff’s

See, e.g., Ward v. Andrews

action including publicity and misappropriation).

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Plaintiff’s strongest cases are Bach v. Forever Living

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Products U.S., Inc., 473 F. Supp. 2d 1110 (W.D. Wash. 2007), and

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Butler v. Target Corp., 323 F. Supp. 2d 1052 (C.D. Cal. 2004).

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Bach involved the defendants’ use of the title, character, name,

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text, and photographs from the book Jonathan Livingston Seagull.

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Bach, 473 F. Supp. 2d at 1113.

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intellectual property associated with the book in their own

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materials, but they also stated in advertising their products that

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the brand “is the Jonathan brand” and that “Jonathan is really the

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basis of what Forever is about.”

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analyzed whether the plaintiffs’ copyright claims preempted their

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trademark and trade dress claims and determined that there were

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elements of both:

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25
26
27
28

The defendants not only used the

Id. at 1113-14.

The court

Plaintiffs’ rights in the name and title of Jonathan
Livingston Seagull and the trade dress of the book cover .
. . are protected under trademark law, not copyright law,
because it is the name, title, and trade dress that are the
source-identifying marks associated with Plaintiffs. And
Plaintiffs’ rights in the JLS character, the photograph
that FLP used as its logo, and the portions of the
copyrighted text used by FLP, are protected under copyright
law, not trademark law, because the character, text, and
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images in Jonathan Livingston Seagull are the artists’
creative work.

2
Id. at 1118.

Distinguishing Dastar, the court stated that this

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case did not involve the use of trademark law to prosecute
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plagiarism of creative work.
5
This case does not persuade this Court to find that the
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trademark and copyright claims here can go forward.

NOBODY PUTS

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BABY IN A CORNER is a part of the text of the copyrighted work
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Dirty Dancing.

To the extent Plaintiffs argue it is also a source-

9
identifying mark associated with Lions Gate, the Court notes that
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cases have held, like Bach here, that where copyright and trademark
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rights are found in the same expressive product, they protect
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different parts of that good, just like the court described above
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in Bach.

See also Tristar Pictures, No. CV 99-07655, at *3 (citing

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Universal City Studios, Inc. v. Nintendo Co., 578 F. Supp. 911
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(S.D.N.Y. 1983)).

That is not the case here, particularly where

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the FAC alleges the trademark claims while relying not only on the
17
alleged mark, but also on other elements from the film Dirty
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Dancing.
19
Butler involved the defendant’s use of plaintiffs’ copyrighted
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musical work and sound recording, Rebirth of Slick (Cool like Dat).
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Butler, 323 F. Supp. 2d at 1054.

The defendant played the sound

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recording as the soundtrack to its national advertising campaign,
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and also had ads and signs at stores stating, “Jeans Like That,”
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“Denim Like That,” “Shoes Like That,” and so on.

Id.

The

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plaintiffs sued for infringement of the right to publicity, unfair
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business practices, and Lanham Act claims.

Id.

Every cause of

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action based on the defendant’s use of the sound recording was held
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preempted by the Copyright Act.

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of publicity, unfair business practices based on the use of the

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plaintiffs’ identity, and the Lanham Act claim based on false

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endorsement through use of the plaintiffs’ identity were all found

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not preempted.

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Id. at 1060.

However, the right

Id.

The opinion never mentions Dastar, but this makes sense once

7

the causes of action are examined.

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not like Plaintiff here and claiming solely that the use of a

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famous line, “Cool like Dat,” as modified and used in advertising

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was a violation of the plaintiffs’ trademark rights in using that

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phrase.

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something so closely associated to their famous persona was a

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misappropriation of their publicity and a false endorsement where

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the “mark” for Lanham Act purposes is their celebrity identity.

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Such a theory of Lanham Act and unfair business practices causes of

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action is not similar to the one espoused by Plaintiff in this

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case, and not necessarily covered by Dastar.

18

The plaintiffs in Butler were

Instead, the plaintiffs in Butler claimed that the use of

Lastly, Plaintiff has a dilution cause of action under both

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federal and state law.

20

1125(c)(1), 1127; Cal. Bus. & Prof. Code § 14247).)

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of action have the same elements: (1) the mark must be famous and

22

distinctive; (2) the defendant must use the mark in commerce; (3)

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defendant’s use must begin after the mark is famous; and (4)

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defendant’s use must be likely to cause dilution, such as by (a)

25

blurring or (b) tarnishment.

26

F.3d 628, 634 (9th Cir. 2007).

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defendant to be using a mark that is identical or nearly so to the

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plaintiff’s mark.

(FAC ¶¶ 74-81 (citing 15 U.S.C. §§
These causes

Jada Toys, Inc. v. Mattel, Inc., 518
These causes of action require the

Id.
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 Case 2:15-cv-05024-DDP-E Document 87 Filed 03/14/16 Page 35 of 35 Page ID #:1899

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Plaintiff’s FAC pleads that the mark NOBODY PUTS BABY IN A

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CORNER is famous and distinctive, and was such before Defendants

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ever used it in their ads.

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used the mark in Defendants’ ads, but that is not the same as

5

alleging that Defendants use Plaintiff’s mark, or a mark nearly

6

identical to it, as the mark for Defendants’ own goods — which

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would be an allegation that appears clearly contradicted by the

8

facts of this case.

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Defendants have used the mark in commerce in the sense that the law

Plaintiff claims that Defendants have

Thus, it does not appear that as pled,

10

requires.

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facts that Plaintiff could plead to show that Defendants used the

12

allegedly famous mark as Defendants’ own mark or to identify

13

Defendants’ services.

14

the Copyright Act, the Court finds that the dilution cause of

15

action is also dismissed with prejudice under Rule 12(b)(6) for

16

failure to state a claim because there are no facts that would

17

support this cause of action so any amendment would be futile.

18
19
20

There does not appear to be any dispute or contrary

Therefore, while not perhaps preempted by

IV. CONCLUSION
For all the reasons discussed above, the Court GRANTS in part
and DENIES in part Defendants’ Motion to Dismiss.

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IT IS SO ORDERED.

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Dated: March 14, 2016

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DEAN D. PREGERSON

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United States District Judge

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