Lops v. Youtube, LLC

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LEONEL LOPS, Plaintiff, v. YOUTUBE, LLC et al., Defendants.

No. 3:22-cv-843 (JAM)

United States District Court, D. Connecticut

March 3, 2023

ORDER GRANTING MOTION TO DISMISS

JEFFREY ALKER MEYER, UNITED STATES DISTRICT JUDGE

Plaintiff Leonel Lops filed this lawsuit against YouTube and its CEO Susan Wojcicki, for violating his trademark. He brings his claims under the Lanham Act, the Connecticut Unfair Trade Practices Act (CUTPA), Conn. Gen. Stat. § 35-11i, and Connecticut common law. For the reasons set forth below, I will grant the defendants' motion to dismiss.

Background

Lops claims to sell luxury shoes under the brand name “Confidence Empire” and to maintain a YouTube account to advertise his products.^[1] He alleges that YouTube and Wojcicki sold various products, including eyewear, luggage and shoes, with his “Confidence Empire” mark.^[2] He further alleges that the defendants posted “videos of unknown individuals living, and dancing in extreme dirty, and poor areas” [sic].^[3] The videos appear to be those of a dance troupe named “Confidence Empire.”^[4] Lops claims that the defendants published the videos and failed to remove them.^[5]

Lops alleges the following eight claims: federal criminal trademark counterfeiting under 18 U.S.C. § 2320 (Count One), trademark infringement under 15 U.S.C. § 1114, 15 U.S.C § 1125(a), and Conn. Gen. Stat. § 35-11i (Counts Two and Six), federal false advertising under 15 U.S.C. § 1125(a) (Count Three), trade libel (Count Four), intentional negligence (Count Five), violation of the Connecticut Unfair Trade Practices Act (CUTPA) (Conn. Gen. Stat. § 42110b) (Count Seven), and federal trademark dilution under 15 U.S.C. § 1125(c) (Count Eight).^[6]He seeks $1 billion in damages, $2 million in costs, at least $500 million in punitive damages, and temporary and permanent injunctive relief.^[7]

Discussion

When considering a motion to dismiss under Rule 12(b)(6), a court must accept as true all factual matters alleged in a complaint, although a complaint may not survive unless the facts it recites are enough to state plausible grounds for relief. See, e.g., Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). As the Supreme Court has explained this “plausibility” requirement is “not akin to a probability requirement,” but it “asks for more than a sheer possibility that a defendant has acted unlawfully.” Ibid.^[8] In other words, a valid claim for relief must cross “the line between possibility and plausibility.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 557 (2007).

The Court liberally construes the pleadings of a pro se party in a non-technical manner to raise the strongest arguments that they suggest. See, e.g., McLeod v. Jewish Guild for the Blind, 864 F.3d 154, 156-57 (2d Cir. 2017) (per curiam). Still, a pro se complaint may not survive dismissal if its factual allegations do not meet the basic plausibility standard. See, e.g., Fowlkes v. Ironworkers Local 40, 790 F.3d 378, 387 (2d Cir. 2015).

Because the focus must be on what facts a complaint alleges, a court is “not bound to accept as true a legal conclusion couched as a factual allegation” or “to accept as true allegations that are wholly conclusory.” Krys v. Pigott, 749 F.3d 117, 128 (2d Cir. 2014). A complaint that makes a threadbare recital of the elements of a cause of action without including supporting factual allegations does not establish plausible grounds for relief. See Hernandez v. United States, 939 F.3d 191, 198 (2d Cir. 2019). In short, my role in reviewing a motion to dismiss under Rule 12(b)(6) is to determine if the complaint-apart from any of its conclusory allegations-alleges enough facts to state a plausible claim for relief.

Criminal trademark counterfeiting (Count One)

Lops alleges that YouTube violated 18 U.S.C. § 2320, which makes it a criminal offense to intentionally traffic in counterfeit goods or services.^[9] But “no private right of action exists under criminal statutes absent an indication that Congress intended to create such a private right of action.” Nath v. Select Portfolio Servicing, Inc., 732 Fed.Appx. 85, 87 (2d Cir. 2018). Congress has not indicated its intent to create a private right of action under § 2320. See Grazette v. Bitcoin of Am., LLC, 2020 WL 6789352, at *3 n.7 (E.D.N.Y. 2020) (dismissing a § 2320 civil claim on these grounds); BBC Grp. NV LLC v. Island Life Rest. Grp. LLC, 413 F.Supp.3d 1032, 1041 (W.D. Wash. 2019) (same). I will therefore dismiss Count One of Lops's complaint.

Trademark infringement (Counts Two and Six)

Next, Lops alleges that YouTube violated sections 32 and 43 of the Lanham Act by infringing his Confidence Empire trademark. See 15 U.S.C. §§ 1114, 1125(a)(1)(A).^[10] There are five elements to a federal trademark infringement claim: “that (1) [the plaintiff] has a valid mark that is entitled to protection under the Lanham Act; and that (2) the defendant used the mark, (3) in commerce, (4) in connection with the sale ... or advertising of goods or services, (5)[] without the plaintiff's consent.” 1-800 Contacts, Inc. v. WhenU.Com, Inc., 414 F.3d 400, 406-07 (2d Cir. 2005). Lops must also show that YouTube's “use of that mark is likely to cause confusion ... as to the affiliation, connection, or association of defendant with plaintiff, or as to the origin, sponsorship, or approval of the defendant's goods, services, or commercial activities by plaintiff.” Id. at 407.

Lops has not plausibly alleged that YouTube has used the mark in commerce or in connection with the sale or advertising of goods or services. He asserts that YouTube sells eyewear, luggage, and shoes bearing his “Confidence Empire” mark. But the nature of YouTube's services are “generally known and not subject to reasonable dispute.” Bus. Casual Holdings, LLC v. YouTube, LLC, 2022 WL 837596, at *1 n.1 (S.D.N.Y. 2022) (citing Viacom Int'l v. YouTube, Inc., 676 F.3d 19, 28 (2d Cir. 2012)). “YouTube operates a user-generated content hosting platform on which users may upload, view, and share video content.” Id. at *1. YouTube is a “streaming platform,” not an “online marketplace.” Yout, LLC v. Recording Indus. Ass'n of Am., Inc., 2022 WL 4599203, at *16 (D. Conn. 2022); Ripple Labs Inc. v. YouTube LLC, 2020 WL 6822891, at *5 (N.D. Cal. 2020). Lops fails to plausibly allege that YouTube sells tangible goods, much less that it sells tangible goods that bear the mark “Confidence Empire.”

Lops's claims that YouTube posted and failed to remove videos bearing the “Confidence Empire” mark fare no better. Lops does not include any evidence of these videos in his complaint. But “a court may consider documents attached to the complaint as exhibits, or incorporated by reference, as well as any documents that are integral to, or explicitly referenced in, the pleading.” Matusovsky v. Merrill Lynch, 186 F.Supp.2d 397, 400 (S.D.N.Y. 2002) (citing, inter alia, I. Meyer Pincus & Assocs. v. Oppenheimer & Co., Inc., 936 F.2d 759, 762 (2d Cir.1991)). “If a plaintiff's allegations are contradicted by such a document, those allegations are insufficient to defeat a motion to dismiss.” Ibid.

Lops attaches screenshots of Confidence Empire's videos to his preliminary injunction motion. But the screenshots do not depict any infringement of Lops's alleged Confidence Empire trademark. Moreover, the exhibits indicate that the videos were created or posted by third parties rather than by YouTube.^[11] But YouTube cannot be subject to direct liability for trademark infringement based on videos uploaded by third parties. See Lopez v. Bonanza.com, Inc., 2019 WL 5199431, at *10 (S.D.N.Y. 2019) (citing, inter alia, Tiffany (NJ) Inc. v. eBay, Inc., 600 F.3d 93, 103 (2d Cir. 2010)); Sellify Inc. v. Amazon.com, Inc., 2010 WL 4455830, at *2 (S.D.N.Y. 2010).

To be sure, Lops alleges in his opposition brief that YouTube committed not just direct infringement, but also vicarious and contributory infringement.^[12] But Lops did not allege this in his complaint. Honickman v. BLOM Bank SAL, 6 F.4th 487, 502 n.19 (2d Cir. 2021) (“A Rule 12(b)(6) motion tests the adequacy of the complaint ... not the briefs.”); Ludtke v. United States, 84 F.Supp.2d 294, 302 n.3 (D. Conn. 1999) (“[A] complaint cannot be cured by a memorandum of law in opposition to a motion to dismiss.”). In any event, the facts do not plausible show vicarious or contributory infringement by YouTube.

In short, Lops fails to plausibly allege that YouTube's actions or inactions with respect to the videos infringed his trademark. See Confidence Empire, Inc. v. Meta Platforms, Inc., 2022 WL 993603, at *4 (D. Conn. 2022) (dismissing a “Confidence Empire” trademark claim brought under the Lanham Act against Facebook's parent company and noting that “the exhibits themselves make clear that none of the pages are selling the clothes or jewelry appearing in the photographs”).

Finally, even though Count Six is titled “Trademark Infringement Under the Lanham Act,” Lops alleges in this count that YouTube violated not only the Lanham Act, but also Connecticut state trademark law.^[13] Conn. Gen. Stat. § 35-11i(a) prohibits the use of a Connecticut state-registered mark without the consent of the registrant. But Lops's complaint does not allege that he registered “Confidence Empire” with the State of Connecticut.^[14] Cf. id. at *5 (dismissing § 35-11i claim on the same ground).

I will therefore dismiss Counts Two and Six of Lops's complaint.

False advertising (Count Three)

The Lanham Act prohibits the use of a mark “in commercial advertising or promotion[ that] misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities.” 15 U.S.C. § 1125(a)(1)(B).

Lops alleges that the...