United States District Court, C.D. California
LIONS GATE ENTERTAINMENT INC., a Delaware corporation, Plaintiff,
TD AMERITRADE HOLDING CORPORAITON, a Delaware corporation; TD AMERITRADE SERVICES COMPANY, INC., a Delaware corporation; HAVAS WORLDWIDE NEW YORK, INC., a Delaware corporation, Defendants.
ORDER GRANTING PLAINTIFF’S MOTION FOR
RECONSIDERATION [DKT. 95]
D. PREGERSON United States District Judge.
before the court is Plaintiff Lions Gate Entertainment Inc.
(“Lions Gate”)’s Motion for Reconsideration
of the court’s March 14, 2016 Order granting in part
Defendants’ Motion to Dismiss. Having considered the
parties submissions and heard oral argument, the court adopts
the following Order.
Court has detailed the relevant factual background in its
prior Order denying in part and granting in part
Defendants’ Motion to Dismiss. (Dkt. 87.) In brief,
this cases concerns claims of copyright and trademark
infringement arising from Lions Gate’s intellectual
property rights in the movie Dirty Dancing. (First
Am. Compl. (“FAC”) ¶¶ 15, 22, 32.) In
particular, the FAC focuses on the line “Nobody puts
Baby in a corner, ” said by Patrick Swayze to Jennifer
Grey in the final climactic scene of the film. (Id.
¶ 21.) The line is followed by a dance between the two
main characters, which includes a moment where Swayze lifts
Grey over his head (the “dance lift”).
Gate claims to own common-law trademark rights in DIRTY
DANCING and NOBODY PUTS BABY IN A CORNER. (Id.
¶¶ 18-19.) According to Lions Gate, the latter mark
is associated with Dirty Dancing the movie and is
used in motion pictures, various items of merchandise, and
other adaptations of the films. (Id. ¶¶
23-24.) Lions Gate further alleges that it has applied for
trademark registration in NOBODY PUTS BABY IN A CORNER
“based on actual use of the mark for certain goods and
on an intent to use the mark for the remaining goods
identified in the applications.” (Id.
¶ 24.) Finally, Lions Gate claims that it has licensed
the marks DIRTY DANCING and NOBODY PUTS BABY IN A CORNER for
the “manufacturing, marketing, and sale of a variety of
merchandise through approved licensees.” (Id.
are related financial services organizations and an
advertising agency hired to create a national advertising
campaign for the financial organizations. (Id.
¶¶ 4-8; 30-31.) At the core of this Motion for
Reconsideration is one of the advertisements created for this
campaign. The advertisement involves the line “Nobody
puts your old 401k in a corner” and a depiction of a
man lifting a piggy bank over his head. (Id. ¶
32, 34.) The complaint also variously alleges that this
phrase was used by Defendants as a “tagline” or
an “adulterated tagline.” (Id.
¶¶ 33, 34.) In addition to other causes of action,
Lions Gate alleges that this line and the accompanying image
give rise to a claim for trademark dilution under 15 U.S.C.
§ 1125(c) and Cal. Bus. & Prof. Code § 14247.
(Id. ¶¶ 74-81.) Defendants responded with
a Motion to Dismiss this and other claims alleged by Lions
Gate raising personal jurisdiction and preemption arguments.
Court denied in part and granted in part Defendants’
Motion. (Dkt. 87.) With regard to the dilution claim, the
court held that Lions Gate failed to state a claim under
12(b)(6). In reaching this conclusion, the court explained
that elements of a dilution claim under both state and
federal law are: “(1) the mark must be famous and
distinctive; (2) the defendant must use the mark in commerce;
(3) defendant’s use must begin after the mark is
famous; and (4) defendant’s use must be likely to cause
dilution, such as by (a) blurring or (b) tarnishment.”
(Dkt. 87 at 34 (citing Jada Toys, Inc. v. Matttel,
Inc., 518 F.3d 628, 634 (9th Cir. 2007)).) The
court also stated that these causes of action “require
the defendant to be using a mark that is identical or nearly
so to the plaintiff’s mark.” (Dkt. 87 at 34
(citing Jada Toys, 518 F.3d at 634).) The court held
that Lions Gate had adequately alleged the mark NOBODY PUTS
BABY IN A CORNER is famous and distinct, and was such before
Defendants ever used it in their ads, thus satisfying element
(1) and (3). The court found, however, that Lions Gate did
not allege that “Defendants use Plaintiff’s mark,
or a mark nearly identical to it, as the mark for
Defendants’ own goods - which would be an allegation
that appears clearly contradicted by the facts of this
case.” (Id. at 35.) Thus, the court concluded
that Lions Gate did not, and could not, allege that
“Defendants have used the mark in commerce in the sense
that the law requires” and dismissed the claim with
prejudice. (Id.) Lions Gate now files a Motion for
Reconsideration asking the court to revisit this particular
Federal Rule of Civil Procedure 60(b), a party may seek
reconsideration of a final judgment or court order for any
reason that justifies relief, including:
(1) mistake, inadvertence, surprise, or excusable neglect;
(2) newly discovered evidence that, with reasonable
diligence, could not have been discovered in time to move for
a new trial under Rule 59(b);
(3) fraud (whether previously called intrinsic or extrinsic),
misrepresentation, or misconduct by an opposing party;
(4) the judgment is void;
(5) the judgment has been released or discharged; it is based
on an earlier judgment that has been reversed or vacated; or
applying it ...