Arizona Board of Regents v. John Doe, 21-16525

Background

Arizona Board of Regents (ABR) sued an anonymous Instagram user (Doe) alleging trademark infringement, false designation of origin, false advertising, unfair competition, and state-law dilution based on a series of posts mocking ABR.
Only one of eighteen posts actually used ABR’s mark or trade dress, and that post contained profanity; the posts otherwise were critical/mocking and made no concrete commercial offers.
The district court dismissed ABR’s complaint sua sponte under Rule 12(b)(6) for failure to state a claim, concluding amendment would be futile and there was no likelihood of confusion; it also denied ABR’s motion for default judgment.
The district court adjudicated the federal unfair-competition claim but declined to exercise supplemental jurisdiction over the state-law dilution claim after dismissing all federal claims.
ABR appealed six issues; the Ninth Circuit reviewed questions of law de novo, likelihood-of-confusion for clear error, and discretionary rulings (default judgment and supplemental jurisdiction) for abuse of discretion.
The Ninth Circuit affirmed on all grounds, finding the posts noncommercial/expressive, insufficient to show likelihood of confusion or deceit, and that dismissal without leave to amend was not erroneous because amendment would have been futile.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
1. Was dismissal sua sponte without notice/leave to amend improper?	Dismissal was improper without prior notice and without leave to amend.	Amendment would be futile because allegations are implausible and lack likelihood of confusion or commercial use.	Affirmed — dismissal without leave was proper; amendment would have been futile.
2. Did district court err in dismissing Lanham Act and state unfair competition claims under Rule 12(b)(6)?	ABR argued posts created trademark confusion and actionable misuse.	Doe’s posts were noncommercial, parodic/expressive, and not likely to confuse reasonable consumers.	Affirmed — no likelihood of confusion; dismissal proper.
3. Should the court have applied initial-interest confusion doctrine?	ABR urged application to capture attention-garnering uses even if no actual confusion.	Initial-interest confusion still requires showing likelihood of confusion and is inapplicable here.	Affirmed — doctrine not applicable absent likelihood of confusion.
4. Was dismissal of the false advertising claim erroneous?	ABR claimed posts (e.g., alleged Teva collaboration) amounted to deceptive commercial statements.	Posts would not deceive a prudent consumer; overall context shows parody/criticism not commercial deception.	Affirmed — false advertising dismissal proper for lack of deception/likelihood of deceit.
5. Did the court err by declining to rule on state dilution claim?	ABR argued federal jurisdiction over dilution via 28 U.S.C. § 1338(b).	§ 1338(b) gives original jurisdiction over unfair competition; dilution is a state-law claim and was only within supplemental jurisdiction.	Affirmed — district court properly declined supplemental jurisdiction after dismissing federal claims.
6. Was denial of default judgment improper?	ABR sought default judgment against Doe for failing to appear.	Complaint lacked substantive merit and was insufficient under Eitel factors.	Affirmed — denial proper; complaint was insufficient on merits.

Key Cases Cited

Prodanova v. H.C. Wainwright & Co., LLC, 993 F.3d 1097 (9th Cir. 2021) (standard of review for Rule 12(b)(6) dismissals)
Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672 (9th Cir. 2005) (Lanham Act requires commercial use)
Rearden LLC v. Rearden Com., Inc., 683 F.3d 1190 (9th Cir. 2012) (flexible application of Sleekcraft factors)
Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137 (9th Cir. 2011) (initial-interest confusion requires likelihood of confusion)
Wells Fargo & Co. v. ABD Ins. & Fin. Servs. Inc., 758 F.3d 1069 (9th Cir. 2014) (false advertising requires deception/likelihood of deceit)
Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352 (9th Cir. 1985) (supplemental jurisdiction over state-law claims related to unfair competition)
Eitel v. McCool, 782 F.2d 1470 (9th Cir. 1986) (factors for entry of default judgment)
Wong v. Bell, 642 F.2d 359 (9th Cir. 1981) (futility as basis for denying leave to amend)
Pom Wonderful LLC v. Hubbard, 775 F.3d 1118 (9th Cir. 2014) (standard for reviewing likelihood-of-confusion findings)
Aldabe v. Aldabe, 616 F.2d 1089 (9th Cir. 1980) (review standard for denial of default judgment)