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Gorski v. The Gymboree Corporation

United States District Court, N.D. California, San Jose Division

July 16, 2014

ELEKTRA PRINTZ GORSKI, an individual, Plaintiff,
THE GYMBOREE CORPORATION, a Delaware corporation, Defendant.


LUCY H. KOH, District Judge

Plaintiff Elektra Printz Gorski ("Gorski") alleges that Defendant The Gymboree Corporation ("Gymboree") infringed Gorski's registered copyright and registered trademark in Gymboree's marketing and sale of clothing featuring the phrase "lettuce turnip the beet." ECF No. 1 at 8-10. Before the Court is Gymboree's Motion to Dismiss. See ECF No. 12. The Motion has been fully briefed. See ECF Nos. 15-16. The Court finds the matter suitable for decision without oral argument under Civil Local Rule 7-1(b) and VACATES the hearing set for August 28, 2014 at 1:30 p.m. Having considered the briefing and relevant law, the Court DENIES in part and GRANTS in part Gymboree's Motion to Dismiss with leave to amend for the reasons stated below.


Gorski and Gymboree both make shirts that feature the phrase "lettuce turnip the beet." See ECF No. 1; ECF No. 12. Gorski alleges that Gymboree sells "knock-offs [that] compete with Gorski's garments" in violation of federal copyright and trademark laws. Specifically, Gorski alleges that Gymboree has engaged in copyright infringement in violation of 17 U.S.C. § 101, infringement of a registered mark in violation of 15 U.S.C. § 1114, and unfair competition and false designation of origin in violation of 15 U.S.C. § 1125(a). ECF No. 1 at 8-9.

Gorski owns United States Copyright Registration No. VA0001817452, titled June 2011 through August 2011 Elektra Printz Gorski Designs. ECF No. 1 at 4. The copyright, filed on August 29, 2011 and attached to the Complaint, contains pictures of seventy two-dimensional designs, eighteen of which are shirts and tank tops with the phrase "lettuce turnip the beet" on the front. ECF No. 1-1 at 5-6. The remaining pictures include a variety of images unrelated to the designs at issue in the instant litigation, such as illustrations featuring Michelle Obama's face. Id.

Gorski also owns U.S. Trademark Registration Nos. 4, 297, 108 and 4, 454, 801, which cover the mark LETTUCE TURNIP THE BEET for the following goods and services: "[p]aper for wrapping and packing"; "tote bags" and "[w]earable garments and clothing, namely, shirts"; and "[o]n-line retail store services featuring clothing, accessories and art." ECF No. 1 at 4. The two registrations, issued on March 5, 2013 and December 24, 2013, were attached to the Complaint. ECF No. 1-2, ECF No. 1-3.

Gorski alleges that she first created the designs in 2011 and that Gorski's shirts depicting the copyrighted design have been available to the public since June 2011 in the SoHo neighborhood of New York City and since August 2011 through Etsy ( and Supermarket ( ECF No. 1 at 4. Gorski also alleges that "Gorski's light grey heather shirt for children is widely considered one of the most popular children's products ever pinned on Pinterest under their Popular' heading and has over 120, 000 product views on Etsy making it one of the most popular products ever on Etsy." Id. at 6. Gorski also alleges that "[s]ince 2011, Gorski has provided notice that the LETTUCE TURNIP THE BEET design, photos, and text in her online store are copyright protected by using the © or by providing written notification." Id. at 5.

Gorski alleges that in 2014 Gymboree began selling a "Lettuce Turnip the Beet Tee" in Gymboree's 300-plus Crazy 8 stores and online at Id. at 8. Gorski alleges that the "knock-off" shirts feature a screen printed design that is "substantially similar" to her copyrighted designs. Id. at 5. Specifically, Gorski alleges that "the overall arrangement, shapes, typefaces, sizes and placement of the design elements" of Gorski's registered works are "substantially similar" to Gymboree's tees. Id. at 5-6. Gorski also alleges that use of Gorski's LETTUCE TURNIP THE BEET mark on Gymboree's "Lettuce Turnip the Beet Tee" is likely to cause confusion among customers as to the source, sponsorship, or affiliations of Gymboree's goods. Id. at 6.

Gorski filed the Complaint in the instant litigation on March 21, 2014. ECF No. 1. Gymboree filed the instant Motion to Dismiss on May 9, 2014. ECF No. 12. Gorski filed an Opposition on May 23, 2014. ECF No. 15. Gymboree filed a Reply on May 30, 2014. ECF No. 16.


A. Motion to Dismiss

Pursuant to Federal Rule of Civil Procedure 12(b)(6), a defendant may move to dismiss an action for failure to allege "enough facts to state a claim to relief that is plausible on its face." Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). "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. 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." Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (internal citations omitted). For purposes of ruling on a Rule 12(b)(6) motion, the Court "accept[s] factual allegations in the complaint as true and construe[s] the pleadings in the light most favorable to the non-moving party." Manzarek v. St. Paul Fire & Marine Ins. Co., 519 F.3d 1025, 1031 (9th Cir. 2008).

However, a court need not accept as true allegations contradicted by judicially noticeable facts, Shwarz v. United States, 234 F.3d 428, 435 (9th Cir. 2000), and a "court may look beyond the plaintiff's complaint to matters of public record" without converting the Rule 12(b)(6) motion into a motion for summary judgment, Shaw v. Hahn, 56 F.3d 1128, 1129 n.1 (9th Cir. 1995). A court is also not required to "assume the truth of legal conclusions merely because they are cast in the form of factual allegations.'" Fayer v. Vaughn, 649 F.3d 1061, 1064 (9th Cir. 2011) (per curiam) (quoting W. Min. Council v. Watt, 643 F.2d 618, 624 (9th Cir. 1981)). Mere "conclusory allegations of law and unwarranted inferences are insufficient to defeat a motion to dismiss." Adams v. Johnson, 355 F.3d 1179, 1183 (9th Cir.2004); accord Iqbal, 556 U.S. at 678. Furthermore, "a plaintiff may ...

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