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Pomegranate Communications, Inc. v. Sourcebooks, Inc.

United States District Court, D. Oregon, Portland Division

December 13, 2019

POMEGRANATE COMMUNICATIONS, INC., Plaintiff,
v.
SOURCEBOOKS, INC., Defendant.

          FINDINGS AND RECOMMENDATION

          JOHN V. ACOSTA UNITED STATES MAGISTRATE JUDGE

         Plaintiff 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.

         Background

         Pomegranate 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.

         Pomegranate 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."

         Pomegranate 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.)

         Legal Standard

         Under 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)).

         To 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).

         The 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.

         Preliminary Procedural Matter

         In 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.

         Generally, 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 records. Id.

         In 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 ...


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