United States District Court, D. Oregon, Portland Division
FINDINGS AND RECOMMENDATION
V. ACOSTA UNITED STATES MAGISTRATE JUDGE
Pomegranate Communications, Inc. ("Pomegranate")
brings this lawsuit against Defendant Sourcebooks, Inc.
("Sourcebooks") for violations of the Lanham Act,
codified at 15 U.S.C. § 1051 et seq.
Pomegranate alleges Sourcebooks infringed on its book series
trademark, "Women Who Dare," pursuant to 15 U.S.C.
§§ 1114(1) and 1125(a). Sourcebooks moves to
dismiss Pomegranate's Complaint, asserting
Sourcebooks' use of Pomegranate's trademark is
protected speech under the First Amendment, and the Lanham
Act does not apply. For the reasons stated below,
Sourcebooks' Motion to Dismiss (ECF No. 10) should be
GRANTED, and Pomegranate's Complaint should be dismissed
with leave to amend the Complaint.
is a California corporation, with its principle place of
business in Oregon, that publishes and sells books and other
print materials. (CompL, ECF No. 1, ¶¶ 1, 6.)
Pomegranate owns the federally registered trademark
"Women Who Dare" for the title of its book series
and associated trivia cards. (Id. ¶¶ 6-7,
Ex. 1.) Sourcebooks is an Illinois corporation that also
publishes books. (Id. ¶ 2.) Sourcebooks
publishes and sells a book titled, "Women Who Dared: 52
Stories of Fearless Daredevils, Adventurers &
Rebels" ("Women Who Dared"). (Def.'s Mot.
Dismiss, ECF No. 10, at 1.) Neither Pomegranate nor
Sourcebooks allege "Women Who Dared" is printed as
part of a series with that title.
contends that Sourcebooks' use of the phrase "women
who dared" has caused and likely will continue causing
"confusion, mistake, or other deception," and
Sourcebooks' use of Pomegranate's trademark is likely
to lead consumers to believe Pomegranate is the source of, or
is "connected with, sponsor[s], approve[s], or
endorse[s]" "Women Who Dared." (Compl.
¶¶ 20, 27.) Pomegranate also asserts using the
phrase "women who dared" in a book title is
"confusingly similar" to its series trademark.
(Id. ¶ 33.) Pomegranate offers no other factual
allegations explaining why "Women Who Dared" is
confusingly similar or misleads consumers into thinking
Pomegranate is the source of, or is otherwise connected with,
"Women Who Dared."
seeks injunctive relief and damages for Sourcebooks'
alleged trademark infringement. (Id.) Sourcebooks
moves to dismiss, asserting its book is an expressive work,
the title is protected speech under the First Amendment, and,
therefore, the Lanham Act does not apply. (Def.'s Mot.
Dismiss at 1.) Pomegranate contends Sourcebooks' use of
its trademark explicitly misleads consumers as to the source
of the work, and therefore the Lanham Act applies. (PL's
Resp., ECF No. 15, at 6-7.)
Rule 12(b)(6), a party may move to dismiss a complaint for
"failure to state a claim upon which relief can be
granted." Fed.R.Civ.P. 12(b)(6). A court may dismiss
'"based on the lack of cognizable legal theory or
the absence of sufficient facts alleged'" under a
cognizable legal theory. UMG Recordings, Inc. v. Shelter
Capital Partners LLC, 718 F.3d 1006, 1014 (9th Cir.
2013) (quoting Balistreri v. Pacifica Police
Dep't, 901 F.2d 696, 699 (9th Cir. 1990)).
survive a motion to dismiss, a complaint must contain
sufficient factual matter, accepted as true, to "state a
claim to relief that is plausible on its face."
Twombly, 550 U.S. at 570; see also CallerlD4u,
Inc. v. MCI Commc'ns Servs. Inc., 880 F.3d 1048,
1061 (9th Cir. 2018). "A claim has facial plausibility
when the plaintiff pleads factual content that allows the
court to draw the reasonable inference that the defendant is
liable for the misconduct alleged." Ashcroft v.
Iqbal, 556 U.S. 662, 678 (2009); Teixeira v. Cty. of
Alameda, 873 F.3d 670, 678 (9th Cir. 2017). The
plausibility standard is not akin to a "probability
requirement," but it asks for more than a sheer
possibility that a defendant has acted unlawfully.
Twombly, 550 U.S. at 556. When a plaintiffs
complaint pleads facts that are "merely consistent
with" a defendant's liability, the plaintiffs
complaint "stops short of the line between possibility
and plausibility of 'entitlement to relief"
Id. at 557 (brackets omitted).
court must accept as true the allegations in the complaint
and construe them in favor of the plaintiff.
Teixeira, 873 F.3d at 678; see also Iqbal,
556 U.S. at 679; Kwan v. SanMedica
Int'l, 854 F.3d 1088, 1096 (9th Cir. 2017). The
pleading standard under Rule 8 "does not require
'detailed factual allegations,' but it demands more
than an unadorned, the-defendant-unlawfully-harmed-me
accusation." Iqbal, 556 U.S. at 678 (quoting
Twombly, 550 U.S. at 555); see also Fed. R.
Civ. P. 8(a)(2). "A pleading that offers labels and
conclusions or a formulaic recitation of the elements of a
cause of action will not do." Iqbal, 556 U.S.
at 678 (internal citations omitted); Kwan, 854 F.3d
at 1096. A complaint also does not suffice if it tenders
"naked assertion[s]" devoid of "further
factual enhancement." Twombly, 550 U.S. at 55.
support of its Motion to Dismiss, Sourcebooks submits
twenty-two exhibits, including a copy of "Women Who
Dared," a copy of one book from Pomegranate's
"Women Who Dare" series, listings of
Pomegranate's "Women Who Dare" books, and
various listings of other books available that use some
variation of "women who dare" in the title. (Decl.
Tim Cunningham in Supp. Def's Mot. Dismiss
("Cunningham Decl."), ECF No. 11, Exs. 1-22.)
Sourcebooks asks the court to take judicial notice of all
twenty-two exhibits pursuant to Federal Rule of Evidence 201.
(Req. for Jud. Not., ECF No. 12.) Pomegranate does not
contest exhibits supplied by Sourcebooks that Pomegranate has
referenced in its complaint, and their respective books are
central to the parties' dispute. (PL's Resp. at 5.)
However, Pomegranate contends any material Sourcebooks has
submitted outside of those materials referenced to in the
complaint are improper for the court to consider.
(Id. at 4-5.) The court agrees.
a court may not consider material beyond the complaint when
deciding a Rule 12(b)(6) motion. Fed.R.Civ.P. 12(d)
(explaining that if court considers other materials, the
motion is converted into a motion for summary judgment under
Rule 56); see Akhtar v. Mesa, 698 F.3d 1202, 1212
(9th Cir. 2012) (quoting Swartz v. KPMG LLP, 476
F.3d 756, 763 (9th Cir. 2007) (per curiam)).
However, a court may consider materials beyond the pleadings
without converting the Rule 12(b)(6) motion into a motion for
summary judgment under two exceptions: judicial notice and
incorporation by reference. Khoja v. Orexigen
Therapeutics, Inc., 899 F.3d 988, 998 (9th Cir. 2018);
Lee v. City of Los Angeles, 250 F.3d 668, 688 (9th
Cir. 2001) (discussing that a court may take judicial notice
of matters of public record without converting a motion to
dismiss into a motion for summary judgment). Judicial notice
under Federal Rule of Evidence 201 permits a court to take
judicial notice of undisputed facts in matters of public
record. Khoja, 899 F.3d at 999. A court may not take
judicial notice of disputed facts contained in such public
contrast to judicial notice, the incorporation by reference
doctrine "is a judicially created doctrine that treats
certain documents as though they are part of the complaint
itself." Id. This doctrine is designed to
prevent plaintiffs from selectively referencing portions of
documents that support their claims, while omitting portions
of those documents that weaken "or doom" their
claims. Id. The Ninth Circuit has extended this
doctrine to consider evidence on which the complaint
"necessarily relies" if: "(1) the complaint
refers to the document; (2) the document is central to the
plaintiffs claim; and (3) no party questions the authenticity
of the copy attached to the 12(b)(6) motion." Marder
v. Lopez,450 F.3d 445, 448 (9th Cir. 2006); Coto
Settlement v. Eisenberg,593 F.3d 1031, 1038 (9th Cir.
2010). The Ninth Circuit urges courts to use caution when
drawing any inferences from documents incorporated by
reference on a motion to dismiss. Khoja, 899 F.3d at
1003 (noting ...