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Gibson Guitar Corp., A Delaware Corporation v. Viacom International Inc.

May 17, 2013

GIBSON GUITAR CORP., A DELAWARE CORPORATION, PLAINTIFF,
v.
VIACOM INTERNATIONAL INC., A DELAWARE CORPORATION;
JOHN HORNBY SKEWES & CO., LTD., A UNITED KINGDOM CORPORATION, DEFENDANTS.



The opinion of the court was delivered by: Dean D. Pregerson United States District Judge

O

NO JS-6

ORDER GRANTING MOTION TO DISMISS [Dkt. No. 30]

Presently before the court is Defendant Viacom International Inc. ("Viacom")'s Motion to Dismiss Plaintiff's Amended Complaint for Failure to State a Claim on Which Relief May Be Granted. Having considered the parties' submissions and heard oral argument, the court adopts the following order.

I. Background

Plaintiff Gibson Guitar Corporation ("Gibson") owns trademarks to the Flying V Body Shape Design Trademark, the Flying V Peg-Head Design Trademark, and the word mark FLYING V. (FAC ¶ 14.) Defendant Viacom is a Delaware corporation that owns trademarks for SpongeBob Squarepants and Nickelodeon. (Id. ¶ 6.) Defendant John Hornby Skewes & Co. Ltd. ("JHS") is a United Kingdom corporation that promotes and sells various products using the SPONGEBOB trademarks. (Id. ¶ 7.) Plaintiff alleges that JHS has used Plaintiff's Flying V trademarks without authorization. (Id. ¶¶ 21-32.) Plaintiff makes the following factual allegations regarding Viacom:

35. Upon information and belief, the Viacom License requires Defendant Viacom to monitor and control the quality and distribution of the JHS' Unauthorized Products containing the SPONGEBOB SQAREPANTS and NICKELODEON trademarks.

36. Upon information and belief, the Viacom License requires Defendant Viacom to monitor and control the quality and distribution of the JHS's Unauthorized Products containing the SPONGEBOB SQUAREPANTS and NICKELODEON trademarks. JHS is the distributor of the JHS's Unauthorized Products, and specifically pursuant to the License Agreement, Viacom controls, among other things, which products JHS can use Viacom's trademarks on, i.e. Ukuleles. Viacom controls product approval, and JHS must report and notify Viacom of all sales outside the Licensed Territory. A copy of this License Agreement is attached as Exhibit G.

37. Upon information and belief, Viacom had constructive knowledge that JHS' Unauthorized Products were infringing the Gibson Trademarks. The Gibson Trademarks are all registered in the United States, one for over 30 years. The Lanham Act requires the trademark owner to monitor the use of its own trademarks, including the use by third parties, or trademark rights could be lost.

38. Viacom has actual knowledge of the infringement of the Gibson Trademarks by JHS' Unauthorized Products. Gibson contacted Viacom on December 7, 2012, with a cease and desist letter describing the infringement of JHS' Unauthorized Products. A copy of this cease and desist letter is attached hereto as Exhibit H.

39. Despite its constructive and actual knowledge of the infringement of the Gibson Trademarks by JHS' Unauthorized Products, Viacom has continued to provide its intellectual property to JHS for use with JHS' Unauthorized Products.

40. Upon information and belief, Viacom intentionally induced JHS to infringe on Gibson Trademarks by controlling and approving products that infringe on Gibson Trademarks and obtaining license fees for such infringement.

41. Upon information and belief, the aforementioned misuse of the Gibson Trademarks by Viacom was done with the intent of deceiving or misleading customers into mistakenly believing that said JHS' Unauthorized Products were authorized Gibson products originating from Gibson or its related companies and otherwise misappropriating the goodwill built up by Gibson in the Gibson Trademarks and otherwise attracting and misdirecting consumers looking for genuine or authorized Gibson goods to the JHS websites.

Based on these allegations, Plaintiff alleges that Viacom is contributorily and vicariously ...


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