259 F. Supp. 3d 1087
S.D. Cal.2017Background
- Bobbleheads.com (Plaintiff) created and published a Hillary Clinton striped prison pantsuit bobblehead (the Bobbleheads.com Work) and filed copyright applications for the full doll and separately for the head.
- Plaintiff alleges Wright Brothers, Inc. and Corey and Casey Wright (Defendants) sold substantially similar bobbleheads (Defendant Work 1 and Work 2), prompting cease-and-desist letters and DMCA takedowns.
- Plaintiff also alleges Defendants engaged in false advertising: claiming endorsement/association with the Trump/Pence campaign, using a (c) notice attributed to Donald J. Trump, and advertising Work 2 but shipping Work 1 to customers.
- Plaintiff pleaded three claims: copyright infringement against the corporate defendant and the individual Wrights, and a Lanham Act false-advertising claim against all defendants; it sought injunctive relief, impoundment, and damages (including statutory damages and fees).
- Defendants moved to dismiss, arguing (inter alia) that the Lanham Act claim must meet Rule 9(b) and fails on multiple grounds (standing/proximate causation under Lexmark, Dastar, materiality, puffery, and the misuse of copyright notice), and that statutory copyright damages/fees are unavailable for some alleged infringements.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does Rule 9(b) apply to the Lanham Act false-advertising claim? | Lanham claims often plead under ordinary Rule 8. | False-advertising claims grounded in fraud must meet Rule 9(b). | Rule 9(b) applies where the Lanham claim "sounds in fraud." |
| Did the FAC plead the Lanham Act allegations with the particularity required by Rule 9(b)? | Allegations (false endorsement, shipping wrong product, misuse of campaign/copyright markings) are sufficiently specific. | Plaintiffs allegations are conclusory in parts and fail particularity (e.g., use of Plaintiff’s photos). | Majority of allegations satisfy Rule 9(b) but claims that Defendants used Plaintiff’s photos lack required particularity — partial grant/partial denial. |
| Does Plaintiff have Lanham Act standing (proximate causation) under Lexmark? | Plaintiff alleges damages and seeks Defendant profits; misrepresentations would divert consumers to Defendants. | FAC fails to allege specific economic or reputational injury proximately caused by deception. | FAC fails to plead proximate causation (no specific lost sales/reputation allegations); Lanham claim dismissed on this ground (leave to amend). |
| Does Dastar bar Plaintiff’s Lanham claim (reverse passing off / origin-of-goods concerns)? | Plaintiff's claim is false endorsement (association with Trump), not reverse passing off or authorship claim. | If claim seeks to punish uncredited copying it is barred by Dastar. | Dastar does not bar a false-endorsement claim about endorsement/association; motion denied on this ground. |
| Is reliance on an allegedly false copyright notice actionable under the Lanham Act? | The copyright-like marking was part of an overall false advertising scheme (e.g., claiming to be the "official" product). | False copyright notice claims fall under the Copyright Act and provide no private remedy. | Plaintiff may rely on misleading copyright notice as part of a Lanham Act scheme; claim survives. |
| Are alleged misrepresentations (official product, shipping Work 2 but sending Work 1) actionable (material/puffery)? | Literally false statements/images are presumed to deceive and are material. | Some statements are immaterial or puffery; differences in poses are trivial. | Court finds materiality plausible at pleading stage; denial on this ground. |
| Are statutory damages/attorneys’ fees barred by registration timing? | Plaintiff alleges timely registration for at least one registered work; infringement timing is unclear. | Registration occurred after Plaintiff knew of infringement, so statutory damages/fees are barred. | At pleading stage, timing of infringement is unresolved; statutory damages/fees claims not dismissed yet. |
| Does the FAC assert infringement of both the full doll and the separately-registered head? | Plaintiff claims infringement based on its copyright applications for the works. | FAC fails to plead any similarity specific to the separately-registered head. | Infringement claim allowed as to the Full Clinton registration; claim as to the Clinton Head registration dismissed without prejudice. |
Key Cases Cited
- Ashcroft v. Iqbal, 556 U.S. 662 (legal standard for pleading plausibility)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (pleading requires more than labels and conclusions)
- Vess v. Ciba-Geigy Corp., USA, 317 F.3d 1097 (Rule 9(b) applies to claims sounding in fraud)
- Lexmark Int’l, Inc. v. Static Control Components, 134 S. Ct. 1377 (standing and proximate causation under the Lanham Act)
- Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (limitations on Lanham Act claims about origin/author of expressive goods)
- TrafficSchool.com, Inc. v. Edriver Inc., 653 F.3d 820 (false affiliation can be actionable under the Lanham Act)