Lions Gate Entertainment Inc. v. TD Ameritrade Holding Corp.

          ORDER GRANTING PLAINTIFF’S MOTION FOR RECONSIDERATION [DKT. 95]

          DEAN D. PREGERSON United States District Judge.

         Presently 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.

         I. BACKGROUND

         This 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”). (Id.)

         Lions 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.”^[1] (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. ¶ 26.)

         Defendants 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. (Dkt. 49.)

         This 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 determination.

         II. LEGAL STANDARD

         Under 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 ...