United States District Court, E.D. California
ORDER GRANTING IN PART AND DENYING IN PART
DEFENDANTS' REQUEST FOR JUDICIAL NOTICE AND GRANTING
DEFENDANTS' MOTION TO DISMISS
L. Nunley United, States District Judge.
matter is before the Court on Defendant Providence
Publications, LLC (“Providence Publications”),
Larry J. Lichtenegger (“Lichtenegger”), and J.
Dale Debber's (“Debber”), (collectively,
“Defendants”) Motion to Dismiss and Request for
Judicial Notice. (ECF Nos. 13 & 14.) Providence
Publications and Debber originally moved to dismiss and
Lichtenegger later joined that motion. (ECF Nos. 13 &
28.) Plaintiff Applied Underwriters, Inc.
(“Plaintiff”) opposes the motion and the request.
(ECF Nos. 19 & 20.) For the reasons detailed below, the
Court GRANTS in part and DENIES in part Defendants'
request for judicial notice (ECF No. 14) and GRANTS
Defendants' motion to dismiss (ECF No. 13).
Factual and Procedural Background
sells workers' compensation insurance programs to
businesses. (ECF No. 1 ¶¶ 15 & 16.) Plaintiff
alleges that it has been using the trademarks, Applied
Underwriters and EquityComp (collectively, the
“Trademarks”), since 2001 and 2002, respectively,
to sell financial services relating to workers'
compensation programs to brokers and their business clients.
(ECF No. 1 ¶¶ 14-16.) Plaintiff also alleges that
the United States Patent and Trademark Office issued federal
trademark registrations to Plaintiff for the Trademarks. (ECF
No. 1 ¶ 17 & Ex. A.) Plaintiff contends that it has
spent millions of dollars advertising the Trademarks in
connection with its services - including nearly $4 million in
2015. (ECF No. 1 ¶¶ 18 & 19.) Plaintiff asserts
the Trademarks possess significant goodwill and are famous.
(ECF No. 1 ¶ 20.)
produce a seminar, available on DVD and webcast, that is
critical of one of Plaintiff's insurance programs,
“EquityComp.” (ECF No. 1 ¶ 23 & Ex. B.)
Defendants' seminar is titled, “Applied
Underwriters' EquityComp Program, Like it, Leave it, or
Let it be? Learn the best strategies for selling, competing
with, or helping a prospect out of EquityComp
mid-term.” (ECF No. 1, Ex. B.) Plaintiff alleges that
Defendants' use of Plaintiff's company name, Applied
Underwriters, and of the program name, EquityComp, in
Defendants' seminar's title and related advertising
infringes and dilutes the value of the Trademarks. (ECF No. 1
alleges that Defendants operate a website for Providence
Publications as well as another website, Workers' Comp
Executive. (ECF No. 1 ¶ 24.) Plaintiff alleges that
Defendants advertise their seminar in promotional email sent
to potential attendees, including those who use
Plaintiff's services. (ECF No. 1 ¶¶ 24 &
25.) Plaintiff alleges that the email includes a list of
topics the seminar will address, including: how to sell the
program and to compete against it; what agreements employers
and their lawyers must review and sign before offering the
program; whether the program is legal in California; and the
concept of “unconscionability.” (ECF No. 1, Ex.
B.) Plaintiff alleges that the email refers to news articles
about the “controversial” program, Debber's
role as a journalist who “broke the recent spate of
stories about Applied Underwriters' EquityComp Program,
” and Lichtenegger's role as an attorney
representing employers against Plaintiff. (ECF No. 1, Ex. B.)
asserts five claims: trademark infringement; trademark
dilution; violation of the Lanham Act; and federal and state
law unfair competition. (ECF No. 1 ¶ 1 & 43.)
Defendants move to dismiss all five claims and for the Court
to take judicial notice of a DVD of the seminar, four web
pages, and articles related to Applied Underwriters. (ECF
Nos. 13 at 2-3; 14 at 2-3.)
Request for Judicial Notice
conjunction with Defendants' motion to dismiss,
Defendants request that the Court take judicial notice of the
following: a DVD of Defendants' seminar referenced in
Plaintiff's complaint; a screen shot of the home page of
the Providence Publications website; screen shots of three
web pages from Defendants' Workers' Comp Executive
website - the home page, the About Us page, and a list of
available webcasts; and copies of six articles published on
the Workers' Comp Executive website. (ECF No. 14 at 2-3.)
a general rule, a district court may not consider any
material beyond the pleadings in ruling on a Rule 12(b)(6)
motion.” Lee v. City of Los Angeles, 250 F.3d
668, 688 (9th Cir. 2001) (internal quotation omitted). When a
court considers material outside the pleading in deciding a
motion to dismiss for failure to state a claim, the motion
becomes a motion for summary judgment. Id.,
Fed.R.Civ.P. 12(b)(6). Two exceptions exist: one for material
attached to the complaint or referred to in the complaint if
the complaint necessarily relies on that material and its
authenticity and relevance are not disputed, Coto
Settlement v. Eisenberg, 593 F.3d 1031, 1038 (9th Cir.
2010), and one for matters subject to judicial notice
pursuant to Federal Rule of Evidence 201. Lee, 250
F.3d at 688-89 (citing Fed.R.Evid. 201).
does not oppose Defendants' request for judicial notice
of the DVD. In its complaint, Plaintiff relies on the
existence of the DVD, the DVD's title, and the related
advertising. (ECF No. 1 ¶¶ 23-24.) Accordingly, the
Court GRANTS Defendants' request and takes judicial
notice of the DVD (ECF No. 14, Ex. 1). Coto
Settlement, 593 F.3d at 1038.
the screen shot of the Providence Publications home page,
Plaintiff has not opposed this request. Plaintiff does refer
to the Providence Publications website in its complaint as a
location where viewers can access the webcast, but does not
mention the home page. (ECF No. 1 ¶¶ 24, 47.) Even
so, “the mere mention of the existence of a document is
insufficient to incorporate the contents of a
document.” Coto Settlement, 593 F.3d at 1038.
The mention of the website is brief and Plaintiff does not
necessarily rely on either the existence of the home page or
the contents of that home page. The Court DENIES
Defendants' request to take judicial notice of the screen
shot of the Providence Publications home page (ECF No 14, Ex.
screen shots of the Workers' Comp Executive home page,
About Us page, and webcasts list, Plaintiff referred to the
website in its complaint as a location where viewers can
access the webcast. (ECF No. 1 ¶¶ 13, 24 & 47.)
Plaintiff did not discuss these pages and does not
necessarily rely on the existence or content of these pages.
Coto Settlement, 593 F.3d at 1038.
Plaintiff asserts the material is not accurate because the
content of those pages has been altered since Plaintiff filed
its complaint. (ECF No. 20 at 4-5.) Plaintiff points to
alternate screen shots it claims show the content of the
pages as they were when Plaintiff filed its complaint and
describes changes made to the pages. (ECF No. 20 at 4-5.) The
Court finds that the three Workers' Comp Executive web
pages cannot be “accurately and readily determined from
sources whose accuracy cannot reasonably be
questioned.” See Fed.R.Evid. 201; Fraley
v. Facebook, Inc., 830 F.Supp.2d 785, 795 (N.D. Cal.
2011) (declining to take judicial notice of web pages
accessed after the events giving rise to the suit because the
pages may not have been in existence or contained the same
content during the relevant time period).
extent Defendants provided the screen shots to show the
current content rather than the content of the pages at the
time Plaintiff filed its complaint, Defendants have not
explained the relevance. Accordingly, the Court DENIES
Defendants' request to take judicial notice of the screen
shots of the three Workers' Comp Executive web pages (ECF
No. 14, Exs. 3 & 10).
Defendants request that the Court take judicial notice of six
articles published on Defendants' Workers' Comp
Executive website “illustrating news reporting about
Plaintiff Applied Underwriters' EquityComp insurance
programs, ” and showing that Defendants are not
competitors of Plaintiff. (ECF Nos. 14 ¶¶ 4-9; 21
at 22.) Defendants do not site legal authority which supports
this request. Defendants do cite several cases in which
courts considered material that expanded on or provided
context for material on which the plaintiff relied in its
complaint. (ECF No. 14 at 3.)
court in Burnett v. Twentieth Century Fox, 491
F.Supp.2d 962 (CD. Cal. 2007) reviewed a larger portion of a
television show, a few second clip of which formed the basis
of the complaint. Id. at 973. Similarly, the court
in Knieval v. ESPN,393 F.3d 1068 (9th Cir. 2005),
reviewed the web pages a viewer must access and
click through to view the single image and caption that were
the basis of that defamation suit. Id. at 1076-77.
In another case, the court took notice of three documents the
plaintiff explicitly referred to in its complaint, but
declined to take notice of a ...