United States District Court, D. Alaska
ORDER
H.
RUSSEL HOLLAND UNITED STATES DISTRICT JUDGE
Motion
to Dismiss
Counterclaim
defendants move to dismiss the counterclaims asserted against
them.[1] This motion is opposed.[2] Oral argument
was not requested and is not deemed necessary.
Background
Plaintiff
is Iditasport Alaska. Defendants are Katharina Merchant, Kyle
Durand, Kevin Robbins, Alaska Ultra Sport LLC, and Winter
Ultra LLC.
Plaintiff
is owned and operated by Billy and Erica
Koitzsch.[3] Plaintiff alleges that it operates the
Iditasport ultramarathon.[4] Plaintiff alleges that the
Iditasport ultramarathon was first held in 1987, but that
“[o]rganizational difficulties caused the event to
lapse in 2001[.]”[5]Plaintiff alleges that the Koitzschs
“revived” the event in 2014 and “branded
the event under its original name:
Iditasport.”[6]
Plaintiff
alleges that the Koitzschs “acquired a federal
trademark for” the “IDITASPORT design mark”
in 2014, U.S. Registration No. 4574317.[7] This “mark
consists of (blue) mountain range with a sun, the (red text)
‘IDITA' on the next line (red text)
‘SPORT' on the next line, wide blue line underneath
and in smaller (blue text), ‘Human Powered
Ultra-Marathon[.]'”[8] Plaintiff further alleges
that in 2018, it “filed a trademark application for the
[word] mark IDITASPORT, U.S. Trademark Application Ser. No.
877860698. . . .”[9] Iditasport Alaska alleges that the
IDITASPORT word mark and the IDITASPORT design mark
“have gained fame and distinction within the State of
Alaska, within the United States, and worldwide by virtue of
their longstanding use in identifying a premier winter
endurance event.”[10]
Plaintiff
alleges that defendants operate “the Iditarod Trail
Invitational, an ultramarathon intended to replace the
Iditasport event.”[11] Plaintiff alleges that defendants
have since 2015, “attempted to associate their event
with Iditasport, without Iditasport's license or
permission.”[12] Plaintiff alleges that defendant
Ultra Sport filed a trademark application in 2016 for the
word mark, IDITASPORT, U.S. Trademark Application Ser. No.
86961602, but that this application “was rejected due
to a likelihood of confusion with the IDITASPORT design
mark.”[13] Plaintiff also alleges that
defendants have acquired three domain names that include the
word “iditasport”.[14]
Plaintiff
asserts federal and state trademark and unfair competition
claims against defendants based on allegations that they are
infringing plaintiff's IDITASPORT design mark and its
IDITASPORT word mark. Plaintiff also asserts a cyberpiracy
claim based on allegations that defendants have
inappropriately acquired the domain names which include the
term “iditasport.”
In
response, Alaska Ultra Sport LLC and Winter Ultra LLC
(referred to hereafter as the Ultra plaintiffs) assert
counterclaims against Iditasport Alaska and Billy and Erica
Koitzsch (referred to hereafter as the Iditasport
defendants). The Ultra plaintiffs allege that Alaska Ultra
Sport has been operating the Iditarod Trail Invitational
since 2002.[15] The Ultra plaintiffs allege that
Alaska Ultra Sport assumed operation of the original
Iditasport event in that year.[16] The Ultra plaintiffs
allege that “Alaska Ultra Sport [has] continually used
the mark Iditasport in connection with athletic and sports
event services from 2007 through 2018[, ]” thereby
making it “the first of the parties to this case to use
the mark Iditasport in connection with athletic and sports
event services.”[17] The Ultra plaintiffs allege that
they “own valid and subsisting common law rights to the
Iditasport mark” based on their “widespread,
continuous, and exclusive use of the Iditasport mark to
identify their event. . . .”[18]
The
Ultra plaintiffs allege that in 2014, the Koitzschs
“launched a small winter athletic event designed to
compete with the Iditarod Trail Invitational and chose the
name Iditasport without license or permission from Alaska
Ultra Sport.”[19] The Ultra plaintiffs allege that the
Iditasport defendants falsely claimed to have been using the
Iditasport mark since January 1, 1990, when Alaska Iditasport
applied for the IDITASPORT design mark in 2014.[20] The Ultra
plaintiffs allege that since 2014, the Iditasport defendants
“have systematically attempted to divert customers from
the Iditarod Trail Invitational” by
“promulgat[ing] . . . false and misleading statements
and inflammatory remarks regarding the Iditarod Trail
Invitational and its organizers and by actively soliciting
current and prospective Iditarod Trail Invitational customers
to withdraw from the Iditarod Trail
Invitational.”[21]
The
Ultra plaintiffs also allege that Alaska Ultra Sport owns the
copyright to a Release and Waiver of Liability document that
was created in 2011.[22] They allege that on May 29, 2018,
Alaska Ultra Sport submitted an application to register its
copyright in this work.[23]The Ultra plaintiffs allege that
the Iditasport defendants copied the Release and Waiver of
Liability document and have used the work “as part of
their solicitations of customers for their athletic events by
distributing” the work “electronically on their
website.”[24]
The
Ultra plaintiffs assert five counterclaims. In their first
counterclaim, the Ultra plaintiffs assert a common law
trademark infringement claim. In their second counterclaim,
the Ultra plaintiffs seek to cancel the registration for the
Iditasport design mark (the ‘317 mark). In their third
counterclaim, the Ultra plaintiffs assert a claim for
copyright infringement. In their fourth counterclaim, the
Ultra plaintiffs assert an intentional interference with a
prospective economic advantage claim. In their fifth
counterclaim, the Ultra plaintiffs assert a civil conspiracy
claim.
Pursuant
to Rules 8, 9(b), and 12(b)(6), Federal Rules of Civil
Procedure, the Iditasport defendants now move to dismiss all
five counterclaims asserted against them.
Discussion
“Rule
8 requires a complaint to include ‘a short and plain
statement of the claim showing that the pleader is entitled
to relief.'” Eclectic Properties East, LLC v.
Marcus & Millichap Co., 751 F.3d 990, 995 (9th Cir.
2014) (quoting Fed.R.Civ.P. 8(a)(2)). “To meet this
requirement, the Supreme Court has held that an
‘entitlement to relief' requires ‘more than
labels and conclusions. . . . Factual allegations must be
enough to raise a right to relief above a speculative
level.'” Id. (quoting Bell Atl. Corp.
v. Twombly, 550 U.S. 544, 555 (2007)).
“Under
Rule 9(b), a plaintiff ‘must state with particularity
the circumstances constituting fraud.'” United
States v. United Healthcare Ins. Co., 848 F.3d 1161,
1180 (9th Cir. 2016) (quoting Fed.R.Civ.P. 9(b)). “This
means the plaintiff must allege the who, what, when, where,
and how of the misconduct charged, including what is false or
misleading about a statement, and why it is false[.]”
Id. (internal citations omitted). “Knowledge,
however, may be pled generally.” Id.
“‘To
survive a [Rule 12(b)(6)] 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.'” Zixiang Li v. Kerry, 710 F.3d 995,
999 (9th Cir. 2013) (quoting Ashcroft v. Iqbal, 556
U.S. 662, 678 (2009)). “A claim is facially plausible
‘when the plaintiff pleads factual content that allows
the court to draw the reasonable inference that the defendant
is liable for the misconduct alleged.'”
Id. (quoting Iqbal, 556 U.S. at 678).
“‘Where a complaint pleads facts that are merely
consistent with a defendant's liability, it stops short
of the line between possibility and plausibility of
entitlement to relief.'” Id. (quoting
Iqbal, 556 U.S. at 678). “[T]he complaint must
provide ‘more than labels and conclusions, and a
formulaic recitation of the elements of a cause of action
will not do.'” In re Rigel Pharmaceuticals,
Inc. Securities Litig., 697 F.3d 869, 875 (9th Cir.
2012) (quoting Twombly, 550 U.S. at 555). “In
evaluating a Rule 12(b)(6) motion, the court accepts the
complaint's well-pleaded factual allegations as true and
draws all reasonable inferences in the light most favorable
to the plaintiff.” Adams v. U.S. Forest Srvc.,
671 F.3d 1138, 1142-43 (9th Cir. 2012).
“When
ruling on a Rule 12(b)(6) motion, if ‘matters outside
the pleadings are presented to and not excluded by the court,
the motion must be treated as one for summary judgment under
Rule 56.” Hicks v. PGA Tour, Inc., 897 F.3d
1109, 1117 (9th Cir. 2018) (quoting Fed.R.Civ.P. 12(d)). The
Iditasport defendants have submitted matters outside the
pleadings; but the court has not considered these matters and
thus the instant motion does not need to be converted to a
motion for summary judgment.
first
counterclaim - common law trademark infringement
To
prevail on their common law trademark infringement claim, the
Ultra plaintiffs must prove: “(1) ownership interest in
a mark, and (2) the likelihood of the infringing mark being
confused with the [Iditasport defendants'] mark.”
Sebastian Brown Productions, LLC v. Muzooka, Inc.,
143 F.Supp.3d 1026, 1039 (N.D. Cal. 2015). The Iditasport
defendants argue that the Ultra plaintiffs have failed to
state a plausible common law trademark infringement claim
because they have not adequately alleged an ownership
interest in a mark nor have they adequately alleged priority
in their mark.
The
Ultra plaintiffs argue that they have adequately alleged
ownership interest in the Iditasport word mark, and they cite
to paragraph 17 of the counterclaim and Exhibit B to the
counterclaim in support. In paragraph 17, the Ultra
plaintiffs allege that “Alaska Ultra Sport continually
used the mark Iditasport in connection with athletic and
sport event services. . . .”[25] This reference to the
“Iditasport” mark is not sufficient. The Ultra
plaintiffs do not state whether this mark consists of words
only or whether this mark includes design elements similar to
the ‘317 mark. The Ultra plaintiffs' reliance on
Exhibit B to their counterclaim is also unavailing. Exhibit B
is a screenshot of the Iditarod Trail Invitational website
with an article on the History of Winter Biking and Winter
Races in Alaska that refers to an “Iditasport
race” in the past tense.[26] Exhibit B does not
indicate what mark the Ultra plaintiffs are claiming an
interest in.
As for
the Ultra plaintiffs' allegations of priority of use,
“[i]t is axiomatic in trademark law that the standard
test of ownership is priority of use.” Sengoku
Works Ltd. v. RMC Int'l, Ltd., 96 F.3d 1217, 1219
(9th Cir. 1996). “To acquire ownership of a trademark
it is not enough to have invented the mark first or even to
have registered it first; the party claiming ownership must
have been the first to actually use the mark in the sale of
goods or services.” Id. The Ultra plaintiffs
allege that Alaska Ultra Sport was the first of the parties
to the case to use the Iditasport mark and that it has used
the mark from 2007 until 2018.[27] The Ultra plaintiffs
allege that Alaska Ultra Sport used the Iditasport mark
“in connection with athletic events and sports event
services.”[28] However, the only specific use of
the mark that is alleged is use on the Iditarod Trail
Invitational website, [29] which, as discussed above, does
not indicate what mark the Ultra plaintiffs are claiming an
ownership interest in.
The
Ultra plaintiffs have failed to state a plausible claim for
common law trademark infringement because they have failed to
adequately allege what mark they are claiming an interest in.
The Ultra plaintiffs' first counterclaim is dismissed.
However, the Ultra plaintiffs are given leave to amend as to
this counterclaim.
second
counterclaim - cancellation of the ‘317 mark
“A
party who believes he has been harmed by a trademark's
registration may seek the cancellation of that
trademark's registration on certain specified grounds,
including that the trademark was obtained by the commission
of fraud on the United States Patent and Trade Office
(USPTO).” Hokto Kinoko Co. v. Concord Farms,
Inc., 738 F.3d 1085, 1097 (9th Cir. 2013) (citing 15
U.S.C. § 1064)). The Iditasport defendants first argue
that the Ultra plaintiffs lack standing to bring a
cancellation claim. The Iditasport defendants appear to argue
that the Ultra plaintiffs lack both Article III standing and
prudential standing. But, because the standing issue can be
resolved on prudential standing grounds, the court need not
consider whether the Ultra plaintiffs lack Article III
standing. Hong Kong Supermarket v. Kizer, 830 F.2d
1078, 1081 (9th Cir. 1987).
“[T]he
cancellation petitioner [must] plead and prove facts showing
a ‘real interest' in the proceeding in order to
establish standing.” Star-Kist Foods, Inc. v. P.J.
Rhodes & Co., 735 F.2d 346, 349 (9th Cir. 1984)
(quoting Int'l Order of Job's Daughters v.
Lindeburg & Co., 727 F.2d 1087, 1091 (Fed. Cir.
1984)). “The petitioner . . . must show a real and
rational basis for his belief that he would be damaged by the
registration sought to be cancelled, stemming from an actual
commercial or pecuniary interest in his own mark.”
Id.
The
Ultra plaintiffs argue that they have standing to bring a
cancellation claim because, as argued above, they contend
that they have adequately alleged an ownership interest in
the “Iditasport” mark. But, as discussed above,
the Ultra plaintiffs have not adequately alleged what mark
they are claiming an ownership interest in. Because it is not
clear what competing mark the Ultra plaintiffs are claiming
an ownership interest in, it is not at all clear that they
have an actual commercial or pecuniary interest in their own
mark that might be damaged by the ‘317 mark. Thus, the
Ultra plaintiffs have failed to state a plausible
cancellation claim.[30] The second counterclaim is
dismissed, but the Ultra plaintiffs are given leave to amend
this counterclaim.
third
counterclaim - copyright infringement
“To
prove copyright infringement, a plaintiff must show:
‘(1) ownership of a valid copyright and (2) copying of
constituent elements of the work that are
original.'” Folkens v. Wyland Worldwide,
LLC, 882 F.3d 768, 774 (9th Cir. 2018) (quoting
Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499
U.S. 340, 361 (1991)). The Iditasport defendants argue that
the Ultra plaintiffs have not plausibly alleged that they
copied the protectable elements of the Waiver and Release
form. This argument is based on “the doctrines of
merger and scènes à faire.” Ets-Hokin
v. Skyy Spirits, Inc., 225 F.3d 1068, 1082 (9th Cir.
2000). “Under the merger doctrine, courts will not
protect a copyrighted work from infringement if the idea
underlying the copyrighted work can be expressed in only one
way, lest there be a monopoly on the underlying idea.”
Id. “Under the related doctrine of
scènes à faire, courts will not protect a
copyrighted work from infringement if the expression embodied
in the work necessarily flows from a commonplace idea; like
merger, the rationale is that there should be no monopoly on
the underlying unprotectable idea.” Id.
“[W]hen similar features [of a work] are as a practical
matter indispensable, or at least standard, in the treatment
of a given idea, they are treated like ideas and are
therefore not protected by copyright.” Apple
Computer Corp. v. Microsoft Corp., 35 F.3d 1435, 1444
(9th Cir. 1994) (citations omitted). The Iditasport
defendants argue that any expression in a release and waiver
form flows from commonplace principles of contract and
liability law and they request that the court take judicial
notice of a list of elements of waiver and release forms that
they contend are generic.[31] FRE 201 provides that
“[t]he court may judicially notice a fact that is not
subject to reasonable dispute because it[] (1) is generally
known within the trial court's territorial jurisdiction;
or (2) can be accurately and readily determined from sources
whose accuracy cannot reasonably be questioned.” Courts
have taken judicial notice of generic elements of creative
works. See, e.g., Zella v. E.W. Scripps
Co., 529 F.Supp.2d 1124, 1129 (C.D. Cal. 2007) (taking
judicial notice of “elements of a television
show” because they are “generally known and can
be verified simply by watching television for any length of
time”).
The
Iditasport defendants then argue that the Waiver and Release
form contains no original elements that distinguish it from a
generic release form. They argue that any similarity between
the Ultra plaintiffs' Waiver and Release form and the
forms of other winter event organizers is inevitable and thus
there are no original elements to be protected. But even if
there were a “thin” level of protection, the
Iditasport defendants argue that the Ultra plaintiffs'
copyright infringement claim is still not plausible because
their release form is not virtually identical to the Ultra
plaintiffs' form. See Ets-Hokin, 323 F.3d at 766
(“When we apply ...