In 2014, the advertising company Havas Worldwide created an advertising campaign for TD Ameritrade Holding Corp., TD Ameritrade Services and other related entities (collectively, TD) that featured the tagline “Nobody puts your old 401k in a corner.” The campaign also depicted a man lifting a piggy bank over his head. Lions Gate Entertainment sued TD and Havas in July 2015, alleging that the TD ad campaign infringed the studio’s trademark rights and copyright in the 1987 film “Dirty Dancing,” including its rights to the line “Nobody puts Baby in a corner” that is spoken by Patrick Swayze’s character in the film’s final dance scene, during which he lifts Jennifer Grey’s character into the air.
In a prior decision, the court dismissed Lions Gate’s Lanham Act and related state law claims for trademark infringement, false association and unfair competition, relying on the U.S. Supreme Court’s ruling in Dastar v. Twentieth Century Fox Film Corp. and federal pre-emption doctrine. (Read our summary of the district court’s decision here.) The court further dismissed Lions Gate’s trademark dilution claim, holding that it did not adequately plead that defendants were “using a mark that is identical or nearly so” to Lions Gate’s mark as a source identifier for defendants’ own products, as required by Ninth Circuit precedent. Lions Gate moved for reconsideration on the trademark dilution claim, which the district court granted.
The court held that it had erred in relying on the Ninth Circuit’s 2007 decision in Jada Toys, Inc. v. Mattel, Inc., which held that a trademark dilution claim requires a showing that the offending mark was “identical or nearly so” to the plaintiff’s mark. As the district court explained, the Ninth Circuit subsequently held that Jada Toys was superseded by the Trademark Dilution Revision Act of 2006, which removed the “identical or nearly so” standard as a requirement for claims of trademark dilution. TD and Havas argued that the trademark dilution claim should nonetheless fail because they did not use the “Nobody puts your old 401k in a corner” tagline as a source identifier. The district court rejected the argument, concluding defendants’ alleged use of the tagline as a slogan in connection with its branding campaign was sufficient to allege defendants’ use of the tagline as a mark.