Plaintiff Gibson Guitar Corp. brought suit against defendants Viacom International, Inc., and John Hornby Skewes & Co., Ltd. (JHS), asserting Lanham Act claims and state law claims based on defendants’ alleged unauthorized use of Gibson’s Flying V trademark in licensed products made and sold by JHS pursuant to a licensing agreement between Viacom and JHS. The district court granted defendants’ motion to dismiss for failure to state a claim because the complaint failed to articulate which defendants allegedly performed which acts underlying plaintiff’s claims. The district court denied Viacom’s motion to dismiss for lack of subject matter jurisdiction, however, finding that the court could not make a jurisdictional determination at this stage of the proceedings because the facts related to jurisdiction were inextricably intertwined with the underlying facts related to plaintiff’s claims.
Gibson owns the Flying V Body Shape Design Trademark, the Flying V Peg-Head Design Trademark, and the word mark FLYING V. Viacom owns the trademarks to the animated television character SpongeBob Square Pants, and JHS promotes and sells various products using the SpongeBob trademarks, pursuant to a licensing agreement with Viacom. In its complaint, Gibson asserted that the SpongeBob SquarePants Flying V Ukulele infringes its trademarks. Viacom moved to dismiss the complaint, arguing that the court lacks subject matter jurisdiction under the Lanham Act because the mark had not been used in commerce, based on its agreement with JHS for the licensing of SpongeBob to JHS for character-identified musical items in certain countries outside the United States. Noting that dismissal at this stage is not appropriate when the jurisdictional issue and substantive issues are so intertwined that the question of jurisdiction is dependent on the resolution of factual issues going to the merits, the court determined that the same provision of the Lanham Act established both the jurisdictional requirement and the substantive elements of Gibson’s cause of action and denied Viacom’s motion to dismiss.
Viacom moved to dismiss the complaint, arguing plaintiff failed to allege facts supporting claims for either direct or contributory infringement. Specifically, Viacom asserted that plaintiff’s general allegations that defendants designed, manufactured, and sold the ukulele constituted a “conclusory lumping together” insufficient to meet the pleading requirements. The court agreed. Noting that the only specific allegation against Viacom asserted that the company licensed SpongeBob to JHS and the rest were joint allegations against both defendants, that no advertising and promotional materials mentioned in the complaint were specifically attributed to Viacom, and that the only websites selling the allegedly infringing products were associated with JHS, the court concluded that, given the respective positions of defendants (Viacom as the trademark owner and JHS, the product seller and promoter), plaintiff’s complaint should specify the different roles of each in the allegedly infringing conduct in order to state a claim. “[I]t does not appear plausible to the court that the role of each Defendant in the allegations would be identical. Even without considering the roles as described in the licensing agreement (the authenticity of which Gibson does not dispute for the purposes of this motion), it does not appear plausible that the Defendants’ acts were entirely unitary. To state a claim for relief, Gibson must articulate which acts were performed by which Defendant.”