Jackson v. Netflix, Inc.

506 F.Supp.3d 1007

Prather JACKSON, Hollywood Weekly Magazine, LLC, Plaintiffs,

v.NETFLIX, INC.; Imagine Television, LLC, a Delaware limited liability company dba Imagine Television Studios; CBS Television Studios aka CBS Television Studios, Inc., a Delaware Corporation; and Does 1-10, Inclusive, Defendants.

Case No. 2:20-CV-06354-MCS-GJS

United States District Court, C.D. California.

Signed December 9, 2020

Michael F. Frank, Michael Frank Law Offices, Beverly Hills, CA, Matthew H. Schwartz, Schwartz Law Center LLC, Marietta, GA, for Plaintiffs.

Prather Jackson, Northridge, CA, pro se.

Robert H. Rotstein, Emily F. Evitt, Mitchell Silberberg and Knupp LLP, Los Angeles, CA, for Defendants.

ORDER GRANTING DEFENDANT'S MOTION TO DISMISS [25]

MARK C. SCARSI, UNITED STATES DISTRICT JUDGE

Defendant Netflix, Inc. filed a Motion to Dismiss ("Motion") on November 23, 2020. Mot., ECF No. 25. Plaintiffs Hollywood Weekly Magazine, LLC and Prather Jackson filed an Opposition and Netflix filed a Reply. Opp., ECF No. 28; Reply, ECF No. 32. The Court deems this matter appropriate for decision without oral argument. See Fed. R. Civ. P. 78 ; C.D. Cal. L.R. 7-15. The Motion is GRANTED .

I. FACTUAL BACKGROUND

Jackson is the founder and publisher of Hollywood Weekly Magazine ("HWM") who claims to own two trademarks: "Tiger King" ("Mark 1") and "Hollywood Weekly" ("Mark 2"). First Amended Complaint ("FAC") ¶¶ 7, 18, ECF No. 24. "Netflix is the writer, producer, owner and distributor of a streaming video 8-episode series created in 2020" titled "Tiger King: Murder, Mayhem and Madness" (the "Documentary"). Id. ¶ 13. Mark 1 "was coined by Plaintiffs in 2013" and "used exclusively in connection with Plaintiffs' numerous magazines" which profiled Joseph Maldonado-Passage, known publicly as the "Tiger King." Id. ¶ 18. Mark 2 "is used exclusively in connection with branding Plaintiffs' publication and promotional events, and is prominently visible across the cover of each magazine." Id. ¶ 21. For example, "Tiger King" appears in the table of contents of HWM's April 2013 issue containing an article titled "Joe Exotic – Born to Save the Wild."¹ RJN Ex. 2. HWM's May 2016 issue contains an article titled "Joe Exotic – America's Independent Choice for President" and a 2018 special edition is titled "Joe Exotic – The Mission Liberating Oklahoma." RJN Exs. 3-4.

Plaintiffs obtained a trademark registration for Mark 2 in 2017. See Trademark Registration No. 5244222, RJN Ex. 8. Plaintiffs applied for a trademark registration for Mark 1 on July 2, 2020. See Trademark App. Ser. No. 90033173, RJN Ex. 9. The United States Patent and Trademark Office ("USPTO") issued a non-final office action refusing registration of Mark 1 on August 5, 2020. See Non-Final USPTO Office Action, RJN Ex. 10. Plaintiffs allege infringement "of four feature exposes written by and/or assigned to Plaintiffs between 2013 and 2018" that chronicle "the life of Joe Exotic" and use Marks 1 and 2. FAC ¶ 23. Plaintiffs allege they own two copyright registrations, assigned numbers TX0008866617 and VA0002206086. Id. ¶ 24.

The Documentary was "filmed from 2015 through 2019 and debuted in 2020." Id. ¶ 35. Mark 1 is in the Documentary's title, subtitle, and "throughout the video." Id. ¶ 37. Netflix used Mark 1 in the Documentary without Plaintiffs' consent despite Plaintiffs inventing, creating, disseminating, and publishing Mark 1 in 2013. Id. ¶ 143. Netflix's unauthorized use of Mark 1 and Mark 2 resulted in Plaintiffs losing advertisers, customers, and reputation, among other things. Id. ¶¶ 39, 130, 196, 215-18.

Netflix lodged a mutually agreed-upon flash drive containing indisputably authentic and relevant excerpts of the Documentary. Not. of Manual Filing, ECF No. 27. These excerpts depict "every instance where ‘Tiger King’ and Hollywood Weekly Magazine appear (aside from the Documentary's title)." Evitt Decl. ¶ 8. The Documentary shows that Maldonado-Passage has sold products branded "Tiger King" and that he starred in a reality show called "Joe Exotic Tiger King." Documentary Episode One ~16, 46, Episode Four ~7-8. Maldonado-Passage refers to himself as "Tiger King" throughout the Documentary and the phrase "Tiger King" often appears by itself or in conjunction with other words referring to Maldonado-Passage. See generally id. Many people refer to Maldonado-Passage as "Tiger King" in the Documentary. Id. In the Documentary's first episode, Maldonado-Passage poses next to HWM's May 2016 issue, refers to HWM, and the May 2016 and April 2013 issues briefly appear behind Maldonado-Passage. Id. Episode One ~16. In the fourth episode, Maldonado-Passage autographs copies of HWM's April 2013 issue and five copies of the magazine are shown on his desk. Id. Episode Four ~10. The fifth episode depicts Maldonado-Passage supporters holding up "Joe Exotic - 2016 - For President" bumper stickers, a campaign shirt, and HWM's May 2016 issue. Id. Episode Five ~7. A banner featuring HWM's logo is also seen throughout the Documentary. See generally id.

Plaintiffs bring claims for: (1) federal trademark infringement under the Lanham Act based on the Documentary's use of the phrase "Tiger King"; (2) federal copyright infringement based on Netflix's unauthorized use of the phrase "Tiger King" and the "Publication";² (3) false designation of origin under the Lanham Act based on Netflix's use of the phrase "Tiger King"; (4) trademark dilution under the Lanham Act based on Netflix's use of the phrase "Tiger King"; and (5) federal trademark infringement under the Lanham Act based on Netflix's use of Mark 2. FAC ¶¶ 107-262.

II. LEGAL STANDARD

"To survive a motion to dismiss, a complaint must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’ " Ashcroft v. Iqbal , 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009) (quoting Bell Atl. Corp. v. Twombly , 550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (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." Iqbal , 556 U.S. at 678, 129 S.Ct. 1937. The determination of whether a complaint satisfies the plausibility standard is a "context-specific task that requires the reviewing court to draw on its judicial experience and common sense." Id. at 679, 129 S.Ct. 1937. Generally, a court must accept the factual allegations in the pleadings as true and view them in the light most favorable to the plaintiff. Park v. Thompson , 851 F.3d 910, 918 (9th Cir. 2017). But a court is "not bound to accept as true a legal conclusion couched as a factual allegation." Iqbal , 556 U.S. at 678, 129 S.Ct. 1937 (2009) (quoting Twombly , 550 U.S. at 555, 127 S.Ct. 1955 ).

There are two instances in which courts may consider information outside of the complaint: judicial notice and incorporation by reference. United States v. Ritchie , 342 F.3d 903, 908 (9th Cir. 2003). Judicial notice allows courts to consider a fact that is not subject to reasonable dispute because it is generally known within the territory or can be determined from sources of unquestionable accuracy.

Fed. R. Evid. 201. Incorporation by reference allows a court to consider documents which are (1) referenced in the complaint, (2) central to the plaintiff's claim, and (3) of unquestioned authenticity by either party. Marder v. Lopez , 450 F.3d 445, 448 (9th Cir. 2006).

III. REQUEST FOR JUDICIAL NOTICE

Netflix asks the Court to consider excerpts of different editions of HWM and the Documentary. RJN. Netflix also seeks judicial notice of Copyright Catalog entries from the Copyright Office's website; a record from the USPTO's Trademark Electronic Search System; Plaintiffs' trademark application for Mark 1; and a non-final USPTO office action pertaining to that application. Id. The Court considers the Documentary excerpts because there is no dispute as to their authenticity, they are the foundation of Plaintiffs' claims, and the parties agree to their consideration. Evitt Decl. ¶ 8; Zella v. E.W. Scripps Co. , 529 F. Supp. 2d 1124, 1126-28 (C.D. Cal. 2007) (where plaintiff alleged that defendants' television show infringed copyright, court considered copies of show and could "consider the content of the show as a [sic] documentary facts whose contents are alleged in the complaint"). Because the magazine excerpts are similarly agreed on, referenced extensively in the FAC, and form the basis of Plaintiffs' claims, the Court considers them. Evitt Decl. ¶¶ 3-7; Gilbert v. New Line Prods., Inc. , 2009 WL 7422458, at *2 (C.D. Cal. Nov. 16, 2009) (taking judicial notice of "copyrighted versions of Plaintiff's work as well as Defendants' movie" where there were "no disputes as to the authenticity of the works"). The Court considers the remaining documents because they are indisputably authentic, relevant to Plaintiffs' claims, and on government websites. Daniels-Hall v. Nat'l Educ. Ass'n , 629 F.3d 992, 998-99 (9th Cir. 2010) ("It is appropriate to take judicial notice of this information, as it was made publicly available by government entities ..., and neither party disputes the authenticity of the web sites or the accuracy of the information displayed therein"); Bhasin v. Pathak , 2013 WL 1871508, at *2 (C.D. Cal. May 3, 2013) (taking judicial notice of records on USPTO website, as they were public records). The Court declines Plaintiffs' unfounded request to consider "not critical facts" Plaintiffs offer "simply for context." Plaintiffs' RJN, ECF No. 29; Santa Monica Nativity Scenes Cmte. v. City of Santa Monica , 784 F.3d 1286, 1298 n.6 (9th Cir. 2015) (denying requests for judicial notice "on the grounds that the documents to be noticed are irrelevant") (citation omitted).

IV. DISCUSSION

Netflix argues that: (1) the First Amendment bars Plaintiffs' Lanham Act claims; (2) Plaintiffs' federal copyright infringement claim does not...