170 F. Supp. 3d 1249
C.D. Cal.2016Background
- Lions Gate owns the film Dirty Dancing and claims common-law and registered trademark rights in DIRTY DANCING and NOBODY PUTS BABY IN A CORNER; it alleges Defendants used those elements in TD Ameritrade’s 2014–2015 national ad campaign.
- Defendants: TD Ameritrade entities (advertiser/client) and Havas Worldwide New York (creative agency that developed the ads). Lions Gate alleges ads used the famous line (altered to “Nobody puts your old 401k in a corner”), imagery evoking the climactic dance lift, and song references.
- Lions Gate sent a cease-and-desist; Defendants stopped the campaign but refused to pay; parties exchanged letters and litigated venue — Defendants filed then dismissed a declaratory action in New York; the Central District of California action followed.
- Defendants moved to dismiss for lack of personal jurisdiction over Havas New York and for copyright preemption of Lions Gate’s Lanham Act, state unfair competition, trademark infringement, and dilution claims; copyright infringement claim remains.
- Court developed factual record on Havas New York’s ties to California (clients, affiliates, travel) and whether the agency purposefully aimed the campaign at California.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Specific personal jurisdiction over Havas NY | Havas created the ads knowing they would run nationally and target California (large TD presence); intentional use of Lions Gate IP aimed at CA | Havas only created ads outside CA and did not distribute them or control placement; no purposeful direction to CA | Court: jurisdiction exists — Calder effects test satisfied (intentional act, expressly aimed at CA, harm foreseeable in CA); exercise of jurisdiction reasonable |
| General personal jurisdiction over Havas NY | Havas has longstanding, substantial business with CA clients and 8 sister CA affiliates; "exceptional case" could render it at home here | Havas has no offices/employees in CA; sister entities cannot be imputed; no alter ego alleged | Court: close on facts but unnecessary to decide because specific jurisdiction suffices; did not find general jurisdiction on present record |
| Copyright preemption of Lanham Act & state unfair competition claims | Lions Gate: trademark/unfair competition claims are independent from copyright and enforceable alongside copyright | Defendants: claims rest on unauthorized reproduction/use of copyrighted elements and thus are equivalent to copyright rights (Pastar/Dastar principle) | Court: § 1125(a) false-association and state/common-law unfair competition and trademark infringement claims are preempted by the Copyright Act; dismissed with prejudice |
| Trademark dilution claim and failure to state a claim | Lions Gate: NOBODY PUTS BABY IN A CORNER is famous and distinctive; Havas used it causing dilution | Defendants: alleged use is part of copyrighted work, not use of mark in commerce to identify defendant’s goods/services; no nearly identical mark used as defendant’s mark | Court: dilution claim dismissed with prejudice for failure to state a claim (no plausible allegations of defendant’s mark use in commerce as required) |
Key Cases Cited
- Pebble Beach Co. v. Caddy, 453 F.3d 1151 (9th Cir.) (plaintiff need only make a prima facie showing of jurisdiction at motion to dismiss)
- Rio Props., Inc. v. Rio Int’l Interlink, 284 F.3d 1007 (9th Cir.) (conflicts in affidavits resolved for plaintiff on jurisdictional questions)
- International Shoe Co. v. Washington, 326 U.S. 310 (minimum contacts / due process standard for personal jurisdiction)
- Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797 (9th Cir.) (general and specific jurisdiction framework)
- Daimler AG v. Bauman, 571 U.S. 117 (2014) (general jurisdiction limited to place of incorporation and principal place of business except in exceptional cases)
- Calder v. Jones, 465 U.S. 783 (effects test for purposeful direction: intentional act, expressly aimed at forum, foreseeable harm there)
- Walden v. Fiore, 571 U.S. 277 (2014) (contacts must be defendant’s own acts; plaintiff cannot be the only link to forum)
- Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003) (limits on using Lanham Act to extend copyright/patent protections; origin-of-goods principle)
- Laws v. Sony Music Entm’t, Inc., 448 F.3d 1134 (9th Cir.) (two-step test for copyright preemption: subject matter and equivalence to §106 rights)
- Burger King Corp. v. Rudzewicz, 471 U.S. 462 (1985) (reasonableness factors for specific jurisdiction)
- Ashcroft v. Iqbal, 556 U.S. 662 (2009) (pleading standard for Rule 12(b)(6))