Marilyn Mintz v. Subaru of America, Inc. ( 2017 )

FILED
NOT FOR PUBLICATION
DEC 12 2017
UNITED STATES COURT OF APPEALS MOLLY C. DWYER, CLERK
U.S. COURT OF APPEALS
FOR THE NINTH CIRCUIT
MARILYN D. MINTZ, No. 16-16840
Plaintiff-Appellant, D.C. No. 3:16-cv-03384-MMC
v.
MEMORANDUM*
SUBARU OF AMERICA, INC.,
Defendant-Appellee.
Appeal from the United States District Court
for the Northern District of California
Maxine M. Chesney, District Judge, Presiding
Submitted December 8, 2017**
San Francisco, California
Before: THOMAS, Chief Judge, and LUCERO*** and OWENS, Circuit Judges.
*
This disposition is not appropriate for publication and is not precedent
except as provided by Ninth Circuit Rule 36-3.
**
The panel unanimously concludes this case is suitable for decision
without oral argument. See Fed. R. App. P. 34(a)(2).
***
The Honorable Carlos F. Lucero, United States Circuit Judge for the
U.S. Court of Appeals for the Tenth Circuit, sitting by designation.
Marilyn D. Mintz appeals the district court’s judgment dismissing her claims
against Subaru of America. We affirm. Because the parties are familiar with the
history of this case, we do not recount it here.
I
The district court properly dismissed Mintz’s trademark infringement claim.
To establish trademark infringement under federal law, Mintz must plausibly
allege that Subaru’s design and phrase are “likely to cause confusion, or to cause
mistake, or to deceive.” 15 U.S.C. § 1114(1)(a). “The confusion must be
probable, not simply a possibility.” Murray v. Cable Nat’l Broadcasting Co., 86
F.3d 858, 860 (9th Cir. 1996) (internal quotation marks omitted). Likelihood of
confusion can be determined at the pleading stage where the parties have obviously
dissimilar marks. See id. at 860-61.
Mintz does not plausibly allege trademark infringement. As the district
court observed, the design and phrase used in Subaru’s “Share the Love” campaign
are obviously dissimilar from Mintz’s marks. Subaru’s phrase “Share the Love”
and Mintz’s trademarked phrase “A World of Love, for You and Those You Love”
only share the generic word “love,” which could not be trademarked on its own
and cannot plausibly be the ground for an infringement claim. Subaru’s design
depicting a hand with a heart on it is plainly not similar to Mintz’s “Heart on
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Hand” trademark except in the use of a common symbol. Mintz’s design includes
a hand that is circumscribed by a heart and includes an entire body; Subaru’s
design includes a hand that radiates blue beams and is not connected to a body.
Considered in their entireties, the designs are so facially dissimilar that they cannot
plausibly create a likelihood of confusion.
II
For similar reasons, the district court properly dismissed Mintz’s trademark
dilution claim. To establish trademark dilution, Mintz must plausibly allege that
her mark is “famous and distinctive” and that Subaru’s “use of the mark is likely to
cause dilution by blurring or dilution by tarnishment.” Jada Toys, Inc. v. Mattel,
Inc., 518 F.3d 628, 634 (9th Cir. 2008); see 15 U.S.C. § 1125(c)(1). To establish
dilution by tarnishment, Mintz must show that Subaru’s use of her mark is likely to
cause an “association arising from the similarity between a mark or trade name and
a famous mark that harms the reputation of the famous mark.” 15 U.S.C. §
1125(c)(2)(C). Assuming, arguendo, that Mintz plausibly alleged that her marks
were famous, she does not plausibly allege dilution by tarnishment. As discussed
above, Mintz’s marks and Subaru’s marks are obviously dissimilar. Mintz cannot
plausibly allege that any “association” will arise from a “similarity” between the
marks.
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III
The district court properly dismissed Mintz’s copyright infringement claims.
To establish copyright infringement under federal law, Mintz must plausibly allege
that Subaru had access to her copyrighted work and that the works at issue are
substantially similar in their protected elements. Cavalier v. Random House, Inc.,
297 F.3d 815, 822 (9th Cir. 2002). Mintz does not plead sufficient facts for either
element.
Mintz does not plausibly allege that Subaru had access to her copyrighted
work. Mintz cites her allegations that her copyrights have been featured and
advertised in multiple publications that were sold in stores, sent to the general
public, and distributed at festivals and trade shows. Without specific allegations
that any Subaru employee viewed any of the publications in which her designs
were featured or that the publications were widely disseminated to the general
public, Mintz has not plausibly alleged that Subaru had access to her works.
Mintz also does not plausibly allege that the works at issue are “substantially
similar.” Id. As discussed above, Mintz’s designs and phrase are obviously
dissimilar from Subaru’s designs and phrase. Mintz argues that her copyrighted
works are not before the court, and that the court thus cannot determine at the
pleading stage whether Subaru’s works are substantially similar. As the district
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court noted, Mintz has had ample opportunity to allege that her copyrighted works
differ from the works in which she asserts trademark rights, and she has not done
so. While this court is obligated to view allegations in the complaint in the light
most favorable to Mintz on a motion to dismiss, the court is not obligated to make
“unwarranted deductions of fact, or unreasonable inferences.” Daniels-Hall v.
Nat’l Educ. Ass’n, 629 F.3d 992, 998 (9th Cir. 2010).
IV
Mintz’s remaining claims fail for the same reasons the above claims fail. As
Mintz acknowledges, the elements needed to establish federal unfair competition
under 15 U.S.C. § 1125(a) are identical to the elements needed to establish
trademark infringement under 15 U.S.C. § 1114. Thus, her claim for federal unfair
competition fails for the same reason as her federal trademark infringement claim.
As Mintz also acknowledges, her claims for California trademark
infringement and dilution under Cal. Bus. & Prof. Code §§ 14245 and 14247 and
for California unfair competition under Cal. Bus. & Prof. Code § 17200 are
“substantially congruent” with her claims for trademark infringement, dilution, and
unfair competition under federal law. Grupo Gigante S.A. de C.V. v. Dallo & Co.,
391 F.3d 1088, 1100 (9th Cir. 2004) (citation omitted). Thus, because Mintz does
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not plausibly allege these claims under federal law, she also does not plausibly
allege her claims under California state law.
Mintz does not plausibly allege false advertising under California law.
Because her marks are obviously dissimilar from Subaru’s marks, she has not
plausibly pled that “members of the public are likely to be deceived.” Williams v.
Gerber Products Co., 552 F.3d 934, 938 (9th Cir. 2008) (citation omitted).
Similarly, because of the dissimilarity between the two parties’ marks, Mintz
cannot plausibly allege that Subaru knowingly made a false representation to the
U.S. Patent and Trademark Office, which is a necessary element of her trademark
cancellation claim. Hokto Kinoko Co. v. Concord Farms, Inc., 738 F.3d 1085,
1097 (9th Cir. 2013).
AFFIRMED.
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