YZ Productions, Inc. v. Redbubble, Inc.

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8 UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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12 YZ PRODUCTIONS, INC., Case No. 20-CV-06615-LHK

13 Plaintiff,

ORDER GRANTING MOTION TO

DISMISS WITH LEAVE TO AMEND

14 v.

Re: Dkt. No. 29

15 REDBUBBLE, INC.,

16 Defendant.

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YZ Productions, Inc. (“Plaintiff”) sues Redbubble, Inc. (“Defendant”) for (1) trademark

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counterfeiting under 15 U.S.C. § 1114; (2) trademark infringement under 15 U.S.C. § 1114; (3)

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trademark infringement, trade dress infringement, and false designation of origin under 15 U.S.C.

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§ 1125(a); (4) copyright infringement under 17 U.S.C. §§ 501 et seq.; (5) violation of the

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California Unfair Competition Law (“UCL”), Cal. Bus. & Prof. Code §§ 17200 et seq.; and (6)

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unfair competition under California common law. Before the Court is Defendant’s motion to

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dismiss Plaintiff’s contributory copyright infringement claim, contributory trademark infringement

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claim, trade dress infringement claim, and unfair competition claims. ECF No. 29.1 Having

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1 Defendant’s motion to dismiss contains a notice of motion paginated separately from the

27 memorandum of points and authorities in support of the motion. ECF No. 29 at 1–3. Civil Local

1 considered the parties’ submissions, the relevant law, and the record in this case, the Court

2 GRANTS Defendant’s motion to dismiss with leave to amend.

3 I. BACKGROUND

4 A. Factual Background

5 Plaintiff is a California corporation that operates YouTube channels and “engages in the

6 production, design, creation, distribution and sale of multimedia content.” ECF No. 28 (“FAC”) ¶

7 7. Plaintiff has more than thirteen million subscribers on YouTube and millions of subscribers and

8 followers on its social media channels. Id. ¶¶ 8–9.

9 Defendant is a Delaware corporation with its principal place of business in San Francisco,

10 California. Id. ¶ 6. Defendant owns and operates an e-commerce system that allows users to create

11 online storefronts on its website, www.redbubble.com. Id. ¶¶ 51–53.

12 Plaintiff is allegedly the “owner of all right, title and interest in and to” the REBECCA

13 ZAMOLO Trademark for the REBECCA ZAMOLO Goods. Id. ¶ 12. The REBECCA ZAMOLO

14 Trademark was registered with the U.S. Patent and Trademark Office (“USPTO”) on June 30,

15 2020. Id. Ex. A. According to a printout from the USPTO Trademark Status & Document

16 Retrieval (“TSDR”) Database, the REBECCA ZAMOLO goods consist of cosmetics, stickers and

17 transfers, blank journals, clothing, and on-line video journals. Id.

18 Plaintiff is allegedly the “owner of all right, title and interest in and to” the

19 GAMEMASTER Design Trademark for the GAMEMASTER Design Trademark Goods. FAC ¶

20 15. The GAMEMASTER Design Trademark was registered with the USPTO on August 4, 2020.

21 Id. Ex. A. According to a printout from the USPTO TSDR Database, the GAMEMASTER Design

22 Trademark Goods consist of clothing and advertising services. Id.

23 Plaintiff is allegedly the “owner of all right, title and interest in and to” the

24 GAMEMASTER Word Trademark for the GAMEMASTER Word Trademark Goods. FAC ¶ 18.

25 The GAMEMASTER Word Trademark was registered with the USPTO on January 7, 2020. Id.

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27 Rule 7-2(b) provides that the notice of motion and points and authorities should be contained in

one document with the same pagination.

1 Ex. A. According to a printout from the USPTO TSDR Database, the GAMEMASTER Word

2 Trademark Goods consist of clothing and advertising services. Id.

3 Plaintiff is allegedly the “owner of all right, title and interest in and to” the ZAMFAM

4 Trademark for the ZAMFAM Goods. FAC ¶ 20. The ZAMFAM Trademark application was filed

5 with the USPTO on December 4, 2019. Id. Ex. A. According to a printout from the USPTO TSDR

6 Database, the GAMEMASTER Word Trademark Goods consist of stickers and transfers, clothing,

7 and on-line video journals. Id. The Court refers collectively to the REBECCA ZAMOLO Goods,

8 the GAMEMASTER Design Trademark Goods, the GAMEMASTER Word Trademark Goods,

9 and the ZAMFAM Goods as the “YZ Goods.”

10 Additionally, Plaintiff is the author of several original works of art. Plaintiff is allegedly

11 the author of the following original works of art and photographs: “RZ Cupcake Pink/Teal,”

12 “Slays Hair,” “#ZAMFAM Sprinkles,” “ZAMFAM CROP Top,” “Slays,” and an original

13 photograph of Rebecca Zamolo. Id. ¶¶ 26, 30, 34, 37, 40. Plaintiff is the “owner of all right, title,

14 and interest in and to” the copyright and trade dress for these original works of art and

15 photographs, and Plaintiff has allegedly used these artworks and photographs on the YZ Goods.

16 Id. ¶¶ 27–28, 31–32, 35–36, 38–39, 41–42. The artworks “RZ Cupcake Pink/Teal” and “Slays

17 Hair” are both registered with the U.S. Copyright Office. Id. ¶¶ 29, 33; ECF No. 28-2 (“Ex. B”).

18 Plaintiff allegedly “has and continues to widely market and promote the YA Marks, YZ

19 Artworks and YZ Trade Dress” by displaying them on videos watched and clothing sold in the

20 United States. FAC ¶ 46. Plaintiff alleges that “the marks, images and trade dress have acquired

21 great value as specific identifiers of [Plaintiff’s] products and serve to identify and distinguish

22 [Plaintiff’s] products from those of others.” Id. ¶ 49. As a result, the marks, artworks, and trade

23 dress are allegedly “intellectual property assets of enormous value as symbols of YZ and its

24 quality products, reputation, and goodwill.” Id.

25 Plaintiff alleges that Defendant owns and operates an e-commerce system that allows users

26 to create online storefronts on its website. Id. ¶¶ 51–53. Plaintiff alleges that, in Defendant’s

27 ecommerce system, “infringing and counterfeit apparel and other goods displaying the YZ Marks,

1 YZ Artworks and Goods . . . are marketed, offered for sale, sold, created, and/or shipped to

2 consumers.” Id. ¶ 50. The goods for sale on Defendant’s website are allegedly in the same

3 categories as those present on Plaintiff’s website, such as paper goods, t-shirts, and hoodies. Id. ¶

4 57. The First Amended Complaint includes images with side-by-side comparisons of Plaintiff’s

5 goods and the goods for sale on Defendant’s website. Id. at 16–18.

6 Plaintiff alleges that “Defendant is directly involved in the sale of goods via its e-

7 commerce system and has direct control over and specific knowledge of the Infringing Goods

8 advertised or sold via that system.” Id. ¶ 52. Plaintiff bases this allegation on “Defendant’s

9 intimate involvement in the marketing, offering for sale, selling, producing, and/or shipping of the

10 goods, and other customer support provided . . . relating to the goods.” Id. ¶ 58. Moreover,

11 Defendant allegedly has the ability to remove products from its system and “even suspend or

12 terminate users’ storefronts.” Id. ¶ 53.

13 On February 5, 2020, Plaintiff allegedly notified Defendant of its infringement and

14 demanded that Defendant stop its unlawful activities. Id. ¶ 61. Plaintiff alleges that Defendant

15 continued to market, sell, and distribute the goods. Id. Plaintiff further alleges that the Defendant’s

16 acts have been “willful and deliberate” and that Defendant “has intentionally attempted to

17 capitalize on [Plaintiff’s] valuable reputation and customer goodwill . . . by using marks, images,

18 and trade dress that [are] the same as or confusingly similar to YZ Marks on or in connection with

19 Infringing Goods.” Id. ¶ 62. According to Plaintiff, Defendant’s acts have caused Plaintiff “to

20 suffer irreparable injury to its business.” Id. ¶ 66.

21 B. Procedural History

22 On September 21, 2020, Plaintiff filed the instant case against Defendant. ECF No. 1. On

23 January 15, 2021, Plaintiff filed the First Amended Complaint. FAC. Plaintiff brings six claims:

24 (1) trademark counterfeiting under 15 U.S.C. § 1114; (2) trademark infringement under 15 U.S.C.

25 § 1114; (3) trademark infringement, trade dress infringement, and false designation of origin under

26 15 U.S.C. § 1125(a); (4) copyright infringement under 17 U.S.C. §§ 501 et seq.; (5) violation of

27 the UCL; and (6) unfair competition under California common law. Id. ¶¶ 67–139.

1 On January 29, 2021, Defendant filed a motion to dismiss Plaintiff’s contributory

2 copyright infringement claim, contributory trademark infringement claim, trade dress claim, and

3 unfair competition claims. ECF No. 29 (“Mot.”). On February 12, 2021, Plaintiff filed an

4 opposition. ECF No. 31 (“Opp’n”). On February 19, 2021, Defendant filed a reply. ECF No. 32

5 (“Reply”). On March 23, 2021, Plaintiff filed a notice of supplemental authority. ECF No. 33. On

6 May 20, 2021, Defendant filed a statement of recent decision. ECF No. 37.

7 II. LEGAL STANDARD

8 A. Dismissal Pursuant to Federal Rule of Civil Procedure 12(b)(6)

9 Rule 8(a) of the Federal Rules of Civil Procedure requires a complaint to include “a short

10 and plain statement of the claim showing that the pleader is entitled to relief.” Fed. R. Civ. P. 8(a).

11 A complaint that fails to meet this standard may be dismissed pursuant to Federal Rule of Civil

12 Procedure 12(b)(6). Rule 8(a) requires a plaintiff to plead “enough facts to state a claim to relief

13 that is plausible on its face.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007). “A claim

14 has facial plausibility when the plaintiff pleads factual content that allows the court to draw the

15 reasonable inference that the defendant is liable for the misconduct alleged.” Ashcroft v. Iqbal, 556

16 U.S. 662, 678 (2009). “The plausibility standard is not akin to a probability requirement, but it

17 asks for more than a sheer possibility that a defendant has acted unlawfully.” Id. (internal

18 quotation marks omitted). For purposes of ruling on a Rule 12(b)(6) motion, the Court “accept[s]

19 factual allegations in the complaint as true and construe[s] the pleadings in the light most

20 favorable to the nonmoving party.” Manzarek v. St. Paul Fire & Marine Ins. Co., 519 F.3d 1025,

21 1031 (9th Cir. 2008).

22 The Court, however, need not accept as true allegations contradicted by judicially

23 noticeable facts, see Shwarz v. United States, 234 F.3d 428, 435 (9th Cir. 2000), and it “may look

24 beyond the plaintiff’s complaint to matters of public record” without converting the Rule 12(b)(6)

25 motion into a motion for summary judgment, Shaw v. Hahn, 56 F.3d 1128, 1129 n.1 (9th Cir.

26 1995). Nor must the Court “assume the truth of legal conclusions merely because they are cast in

27 the form of factual allegations.” Fayer v. Vaughn, 649 F.3d 1061, 1064 (9th Cir. 2011) (per

1 curiam) (quoting W. Mining Council v. Watt, 643 F.2d 618, 624 (9th Cir. 1981)). Mere

2 “conclusory allegations of law and unwarranted inferences are insufficient to defeat a motion to

3 dismiss.” Adams v. Johnson, 355 F.3d 1179, 1183 (9th Cir. 2004).

4 B. Leave to Amend

5 If the Court determines that a complaint should be dismissed, it must then decide whether

6 to grant leave to amend. Under Rule 15(a) of the Federal Rules of Civil Procedure, leave to amend

7 “shall be freely given when justice so requires,” bearing in mind “the underlying purpose of Rule

8 15 to facilitate decisions on the merits, rather than on the pleadings or technicalities.” Lopez v.

9 Smith, 203 F.3d 1122, 1127 (9th Cir. 2000) (en banc) (alterations and internal quotation marks

10 omitted). When dismissing a complaint for failure to state a claim, “'a district court should grant

11 leave to amend even if no request to amend the pleading was made, unless it determines that the

12 pleading could not possibly be cured by the allegation of other facts.” Id. at 1130 (internal

13 quotation marks omitted). Accordingly, leave to amend generally shall be denied only if allowing

14 amendment would unduly prejudice the opposing party, cause undue delay, or be futile, or if the

15 moving party has acted in bad faith. Leadsinger, Inc. v. BMG Music Publ’g, 512 F.3d 522, 532

16 (9th Cir. 2008).

17 III. DISCUSSION

18 Plaintiff brings six claims: (1) trademark counterfeiting under 15 U.S.C. § 1114; (2)

19 trademark infringement under 15 U.S.C. § 1114; (3) trademark infringement, trade dress

20 infringement, and false designation of origin under 15 U.S.C. § 1125(a); (4) copyright

21 infringement under 17 U.S.C. §§ 501 et. seq.; (5) violation of the UCL; and (6) unfair competition

22 under California common law. FAC ¶¶ 67–139.

23 Defendant moves to dismiss several causes of action in the First Amended Complaint.

24 First, Defendant moves to dismiss Plaintiff’s claims for contributory copyright infringement and

25 contributory trademark infringement. Second, Defendant moves to dismiss Plaintiff’s claim for

26 trade dress infringement. Third, Defendant moves to dismiss both of Plaintiff’s unfair competition

27 claims. The Court addresses each of these claims in turn.

A. Contributory Infringement Claims

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Below the Court addresses Plaintiff’s contributory copyright infringement claim then

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Plaintiff’s contributory trademark infringement claim.

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i. Contributory Copyright Infringement

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Defendant contends that Plaintiff fails to state a contributory copyright infringement claim

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because Plaintiff fails to adequately allege that Defendant had actual knowledge of specific acts of

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infringement. Mot. at 5. The Court agrees.

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To state a claim for contributory copyright infringement, a plaintiff must allege that a

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defendant “(1) has knowledge of a third party’s infringing activity, and (2) induces, causes or

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materially contributes to the infringing conduct.” Perfect 10, Inc. v. Visa Int’l Serv. Ass’n, 494

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F.3d 788, 795 (9th Cir. 2007) (internal quotation marks omitted). “To establish liability,” the

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Ninth Circuit has said, “the first prong requires more than a generalized knowledge by [a

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defendant] of the possibility of infringement” by a third party. Luvdarts, LLC v. AT&T Mobility,

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LLC, 710 F.3d 1068, 1072 (9th Cir. 2013). Rather, “actual knowledge of specific acts of [third

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party] infringement is required for contributory infringement liability.” Id. (internal quotation

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marks omitted).

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As Plaintiff contends, Opp’n at 1, a defendant who has “reason to know” also has the

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requisite knowledge for contributory copyright infringement. Ellison v. Robertson, 357 F.3d 1072,

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1076 (9th Cir. 2004). However, the defendant must have “reason to know” of specific acts of

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infringement. See id. (concluding that a reasonable trier of fact could find that the defendant had

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the requisite knowledge for contributory copyright infringement because complaints were sent to

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the defendant about specific acts of infringement and the defendant thus had “reason to know” of

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specific acts of infringement); see also Perfect 10, Inc. v. Giganews, Inc., No. 11-CV-07098-AB,

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2015 WL 1746406, at *5 (C.D. Cal. Mar. 6, 2015) (concluding that Ellison “is entirely consistent

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with the litany of Ninth Circuit decisions . . . requi[ring] evidence that [the defendant has] specific

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knowledge of specific infringing content”). Accordingly, Plaintiff must allege that Defendant

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knew or had reason to know of specific acts of infringement.

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1 Moreover, mere “conclusory allegations that [Defendant] had the required knowledge of

2 infringement are plainly insufficient.” Luvdarts, LLC, 710 F.3d at 1071. Plaintiff must allege facts

3 to support the conclusion that Defendant had “knowledge of specific acts of [third party]

4 infringement.” Luvdarts, LLC, 710 F.3d at 1071; accord Epikhin v. Game Insight N. Am., No. 14-

5 CV-04383-LHK, 2015 WL 2412357, at *4 (N.D. Cal. May 20, 2015) (granting motion to dismiss

6 contributory copyright infringement claims because “Plaintiffs do not allege any facts in support

7 of the threadbare assertion that [Defendants] ‘had knowledge of the infringing acts’”).

8 In the First Amended Complaint, Plaintiff alleges that Plaintiff “notified Defendant of its

9 infringement.” FAC ¶ 61. Plaintiff also alleges that Defendant had “specific knowledge of the

10 Infringing Goods advertised or sold” through Defendant’s system. FAC ¶ 52. The Court addresses

11 the sufficiency of each allegation in turn.

12 First, Plaintiff alleges that Plaintiff “notified Defendant of its infringement.” FAC ¶ 61.

13 However, Plaintiff never alleges that Plaintiff notified Defendant of specific acts of infringement,

14 namely specific infringing products. Id. Because Plaintiff never alleges that Plaintiff notified

15 Defendant of specific infringing products, Plaintiff’s notice may have been simply a “generalized

16 notification that infringement is occurring,” which is insufficient to establish specific knowledge.

17 See Luvdarts, LLC, 710 F.3d at 1072–73 (holding that a notice containing a “list of titles” without

18 identifying “which of [the] titles were infringed, who infringed them, or when the infringement

19 occurred” was insufficient).

20 Plaintiff also alleges that Defendant had “specific knowledge of the Infringing Goods

21 advertised or sold” through Defendant’s system. FAC ¶ 52. However, Plaintiff’s allegation is

22 conclusory because Plaintiff does “not allege any facts in support of the threadbare assertion that

23 [Defendants] ‘had knowledge of the infringing acts.’” Epikhin, 2015 WL 2412357, at *4; see also

24 Luvdarts, LLC, 710 F.3d at 1071 (stating that “conclusory allegations that [Defendant] had the

25 required knowledge of infringement are plainly insufficient”).

26 Thus, the Court concludes that Plaintiff fails to adequately allege that Defendant had the

27 requisite specific knowledge of infringement. Accordingly, the Court GRANTS Defendant’s

1 motion to dismiss Plaintiff’s cause of action for contributory copyright infringement. The Court

2 does so with leave to amend because amendment would not be futile, unduly prejudice the parties,

3 or cause undue delay, and Plaintiff has not acted in bad faith. See Leadsinger, 512 F.3d at 532.

4 ii. Contributory Trademark Infringement

5 Defendant further contends that Plaintiff failed to adequately allege the knowledge

6 required for Plaintiff’s contributory trademark infringement claim. Mot. at 6. The Court agrees.

7 “The tests for [contributory] trademark infringement are even more difficult to satisfy than

8 those required to find [contributory] copyright infringement.” Perfect 10, Inc., 494 F.3d at 806.

9 The Ninth Circuit has recognized two bases for liability. Id. at 807. First, a defendant is liable for

10 contributory trademark infringement if the defendant has “‘intentionally induced’ the primary

11 infringer to infringe.” Id. at 807 (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 855

12 (1982)). In the instant case, the first basis for liability is not at issue because the First Amended

13 Complaint does not allege that Defendant intentionally induced any third party to infringe

14 Plaintiff’s marks. Recognizing the insufficiency of the allegations in the First Amended

15 Complaint, Plaintiff’s opposition advances an inducement theory for the first time. Opp’n at 3.

16 However, Plaintiff never makes allegations of inducement in the First Amended Complaint. The

17 Court declines to consider an allegation raised for the first time in opposition to the instant motion.

18 See Schneider v. Cal. Dep’t of Corr., 151 F.3d 1194, 1197 n.1 (9th Cir. 1998) (“In determining the

19 propriety of a Rule 12(b)(6) dismissal, a court may not look beyond the complaint to a plaintiff's

20 moving papers, such as a memorandum in opposition to a defendant's motion to dismiss.”). Thus,

21 the Court does not consider inducement. Because the first basis for liability, inducement, is not at

22 issue here, the Court considers whether Plaintiff has made adequate allegations as to the second

23 basis for liability.

24 The second basis for liability varies depending upon whether the defendant supplies an

25 infringing product to an infringer or rather supplies a service to an infringer. Lockheed Martin

26 Corp. v. Network Solutions, Inc., 194 F.3d 980, 984 (9th Cir. 1999). In the instant case, Plaintiff

27 alleges that Defendant is the provider of an online marketplace on which third parties allegedly

1 create online storefronts and sell goods that infringe upon Plaintiff’s trademarks. FAC ¶¶ 50, 52.

2 Accordingly, Defendant provides a service, not a product, to the alleged infringers.

3 Where, as here, the defendant provides a service rather than a product to an infringer,

4 courts “consider the extent of control exercised by the defendant over the third party’s means of

5 infringement.” Lockheed Martin Corp., 194 F.3d at 984. The plaintiff must establish that the

6 defendant “knew of acts of direct infringement and exercised the requisite level of control over the

7 means of infringement.” Theta Chi Fraternity, Inc. v. Leland Stanford Junior Univ., 212 F. Supp.

8 3d 816, 825 (N.D. Cal. 2016). Accordingly, the Court considers in turn whether Plaintiff has

9 adequately alleged that Defendant (1) knew of acts of direct infringement, and (2) exercised the

10 requisite level of control over the means of infringement. Id.

11 First, as to whether Plaintiff has adequately alleged that Defendant “knew of acts of direct

12 infringement,” in an online marketplace setting, “a service provider must have more than a general

13 knowledge or reason to know that its service is being used to sell counterfeit goods. Some

14 contemporary knowledge of which particular listings are infringing or will infringe . . . is

15 necessary.” Spy Phone Labs LLC. v. Google Inc., No. 15-CV-03756-PSG, 2016 WL 1089267, at

16 *3 (N.D. Cal. Mar. 21, 2016); see also Ripple Labs Inc. v. YouTube LLC, No. 20-CV-02747-LB,

17 2020 WL 6822891, at *3 (N.D. Cal. Nov. 20, 2020) (holding that defendant must have

18 “contemporaneous knowledge of the infringing conduct and continued to supply its services”);

19 Coach, Inc. v. Celco Customs Servs. Co., No. CV1110787MMMFMOX, 2014 WL 12573411, at

20 *17 (C.D. Cal. June 5, 2014) (holding that defendant must have “particularized knowledge” for a

21 contributory trademark infringement claim). Receiving “[n]otice of certain acts of infringements

22 does not imply generalized knowledge of—and liability for—others.” Spy Phone Labs LLC., 2016

23 WL 1089267, at *3.

24 In the instant case, Plaintiff alleges that Defendant “know[s] or [has] reason to know that

25 [Defendant’s] system is used to market, offer for sale, sell, create, and/or distribute Infringing

26 Goods.” FAC ¶ 88. However, Plaintiff does not allege that Defendant had contemporary

27 knowledge of which particular postings on Defendant’s website infringed upon Plaintiff’s

1 trademarks.

2 Indeed, Plaintiff effectively concedes that its allegations are insufficient because Plaintiff

3 includes new facts in Plaintiff’s opposition. Specifically, Plaintiff’s opposition contends that “on

4 February 5, 2020, [Plaintiff] notified [Defendant] of the existence of [Plaintiff’s] registered

5 trademarks and of specific products on its website that infringed [Plaintiff’s] intellectual property,

6 and thus [Defendant] had reason to know that such acts would continue without Redbubble’s

7 intervention.” Opp’n at 4–5. However, the First Amended Complaint never alleges that Plaintiff

8 notified Defendant of “specific products on its website that infringed [Plaintiff’s] intellectual

9 property.” See FAC ¶ 61 (alleging that Plaintiff “notified Defendant of its infringement” without

10 alleging that Plaintiff notified Defendant of specific products). Accordingly, the Court declines to

11 consider an allegation raised for the first time in opposition to the instant motion. See Schneider,

12 151 F.3d at 1197 n.1 (“In determining the propriety of a Rule 12(b)(6) dismissal, a court may not

13 look beyond the complaint to a plaintiff's moving papers, such as a memorandum in opposition to

14 a defendant's motion to dismiss.”).

15 In sum, because Plaintiff does not allege that Defendant had knowledge of specific acts of

16 infringement, the Court concludes that Plaintiff has not adequately alleged that Defendant “knew

17 of acts of direct infringement.” See Spy Phone Labs LLC, 2016 WL 1089267, at *3 (granting

18 motion to dismiss because the plaintiff did not adequately allege that the defendant had

19 “contemporary knowledge of which particular listings are infringing or will infringe”); see also

20 Coach, Inc., 2014 WL 12573411, at *17 (holding that defendant must have “particularized

21 knowledge” for a contributory trademark infringement claim).

22 Second, as to whether Plaintiff has adequately alleged that Defendant exercised the

23 requisite level of control over the means of infringement, Plaintiff contends that Defendant “has

24 direct control over its e-commerce system” and “has supervisory power over users of its e-

25 commerce system.” Opp’n at 5; FAC ¶ 89. However, even assuming that Plaintiff’s allegations as

26 to control are sufficient, Defendant must know “of acts of direct infringement and exercise[ ] the

27 requisite level of control over the means of infringement.” Spy Phone Labs LLC, 2016 WL

1 1089267, at *3. In the instant case, Plaintiff has not plausibly alleged facts that establish that

2 Defendant knew of specific acts of infringement. Accordingly, Plaintiff has not adequately alleged

3 a contributory trademark infringement claim. Thus, the Court GRANTS Defendant’s motion to

4 dismiss Plaintiff’s cause of action for contributory trademark infringement. The Court does so

5 with leave to amend because amendment would not be futile, unduly prejudice the parties, or

6 cause undue delay, and Plaintiff has not acted in bad faith. See Leadsinger, 512 F.3d at 532.

7 B. Trade Dress Infringement Claim

8 Defendant next argues that Plaintiff’s trade dress infringement claim should be dismissed

9 for two reasons. Mot. at 8. First, Defendant contends that Plaintiff fails to identify “the purported

10 elements of its trade dresses in a manner that would allow the Court to evaluate whether they are

11 functional.” Id. at 9. Second, Defendant contends that Plaintiff’s trade dress infringement claim

12 impermissibly overlaps with Plaintiff’s copyright theory. Id. The Court agrees with Defendant that

13 Plaintiff fails to list the elements that constitute the alleged trade dress. Accordingly, the Court

14 need not consider Defendant’s second argument for dismissal.

15 A product’s trade dress consists of “its total image and overall appearance; it includes

16 ‘features such as size, shape, color, color combinations, texture, or graphics.’” Kendall-Jackson

17 Winery, Ltd. v. E. & J. Gallo Winery, 150 F. 3d 1042, 1044 n.2 (9th Cir. 1998) (quoting Vision

18 Sports, Inc. v. Melville Corp., 888 F.2d 609, 613 (9th Cir. 1989)). To state a claim for trade dress

19 infringement, a plaintiff must allege that “(1) the trade dress is nonfunctional, (2) the trade dress

20 has acquired secondary meaning, and (3) there is substantial likelihood of confusion between the

21 plaintiff’s and defendant’s products.” Art Attacks Ink, LLC v. MGA Ent. Inc., 581 F.3d 1138, 1145

22 (9th Cir. 2009) (citing Disc Golf Ass’n v. Champion Discs, 158 F.3d 1002, 1005 (9th Cir. 1998)).

23 Because trade dress claims involve intensely factual issues, “courts in this circuit have

24 required trade dress plaintiffs, at the very least, to provide adequate notice by including in their

25 complaint ‘a complete recitation of the concrete elements of [their] alleged trade dress.’” Arcsoft,

26 Inc. v. Cyberlink Corp., 153 F. Supp. 3d 1057, 1070 (N.D. Cal. 2015) (quoting Lepton Labs, LLC

27 v. Walker, 55 F. Supp. 3d 1230, 1240 (C.D. Cal. 2014)); see also Bryant v. Matvieshen, 904 F.

1 Supp. 2d 1034, 1046 (E.D. Cal. 2012) (“In order to state a trade dress claim . . . , [Plaintiff] needs

2 to clearly define the specific elements that constitute the trade dress; a general description of the

3 site is insufficient”); Salt Optics, Inc. v. Jand, Inc., No. 10-cv-00828, 2010 WL 4961702, at *4

4 (C.D. Cal. Nov. 19, 2010) (“A plaintiff must clearly articulate its claimed trade dress to give a

5 defendant sufficient notice”); Sleep Sci. Partners v. Lieberman, No. 08-cv-04200-CW, 2010 WL

6 1881770, at *3 (N.D. Cal. May 10, 2010) (“Without an adequate definition of the elements

7 compromising the website’s ‘look and feel,’ [Defendant] is not given adequate notice”); Autodesk,

8 Inc. v. Dassault Systemes SolidWorks Corp., No. 08-cv-04397-WHA, 2008 WL 6742224, at *5

9 (N.D. Cal. Dec. 18, 2008) (“[Plaintiff] must provide more detail and clarify the total appearance of

10 the product that [Plaintiff] claims is the trade dress at issue”).

11 Moreover, courts in this circuit have held that “images and descriptions . . . of some . . .

12 products are alone insufficient to put [the defendant] on notice of the asserted trade dress”; rather,

13 a complete recitation of the concrete elements of the trade dress is required. See, e.g., Crafty

14 Prods., Inc. v. Michaels Cos., Inc., 424 F. Supp. 3d 983, 991–92 (S.D. Cal. 2019), aff’d sub nom.

15 Crafty Prods., Inc. v. Fuqing Sanxing Crafts Co., 839 F. App’x 95 (9th Cir. 2020) (dismissing

16 trade dress infringement claim because plaintiffs did “not clearly articulate[ ] their trade dress”

17 and, instead, “merely attach[ed] hundreds of images” to their complaint); Mosaic Brands, Inc. v.

18 The Ridge Wallet LLC, No. 220CV04556ABJCX, 2020 WL 5640233, at *5 (C.D. Cal. Sept. 3,

19 2020) (citations omitted) (dismissing trade dress infringement claim because images failed to

20 adequately identify plaintiff’s trade dress).

21 In the instant case, Plaintiff fails to list the concrete elements that constitute the alleged

22 trade dress. Plaintiff alleges that it “is the owner of all right, title and interest in and to” the “RZ

23 Cupcake Trade Dress,” the “Slays Hair Trade Dress,” the “ZAMFAM Trade Dress,” the “Slays

24 Trade Dress,” and the “RZ Photograph Trade Dress.” FAC ¶¶ 28, 32, 36, 39, 42. However,

25 Plaintiff does not include a “recitation of the concrete elements of [its] alleged trade dress[es].”

26 Lepton Labs, LLC, 55 F. Supp. 3d at 1240. Instead, Plaintiff merely attaches a list of images of the

27 alleged infringing goods offered for sale and sold on Defendant’s website. FAC ¶ 56. However,

1 images alone are insufficient to provide adequate notice. See, e.g., Crafty Prods., Inc., 424 F.

2 Supp. 3d at 991–92 (dismissing trade dress infringement claim because plaintiffs did “not clearly

3 articulate[ ] their trade dress” and, instead, “merely attach[ed] hundreds of images” to their

4 complaint); Mosaic Brands, Inc, 2020 WL 5640233 at *5 (dismissing trade dress infringement

5 claim because images failed to adequately identify plaintiff’s trade dress).

6 Rather, a complete recitation of the concrete elements of the trade dress is required to

7 provide adequate notice to the defendant. Arcsoft, Inc., 153 F. Supp. 3d at 1070 (granting motion

8 to dismiss trade dress claim because “courts in this circuit have required trade dress plaintiffs, at

9 the very least, to provide adequate notice by including in their complaint ‘a complete recitation of

10 the concrete elements of [their] alleged trade dress’”); Lepton Labs, LLC, 55 F. Supp. 3d 1230,

11 1240 (C.D. Cal. 2014) (granting motion to dismiss trade dress claim where plaintiff failed to

12 provide “a complete recitation of the concrete elements of their alleged trade dress”).

13 Because Plaintiff fails to provide a recitation of the concrete elements of its trade dress, the

14 Court GRANTS Defendant’s motion to dismiss Plaintiff’s trade dress claims. The Court does so

15 with leave to amend because amendment would not be futile, unduly prejudice the parties, or

16 cause undue delay, and Plaintiff has not acted in bad faith. See Leadsinger, 512 F.3d at 532.

17 C. Unfair Competition Claims

18 Defendant next moves to dismiss Plaintiff’s unfair competition claims. Mot. at 9.

19 Defendant argues that these claims are barred by the Communications Decency Act (“CDA”), 47

20 U.S.C. § 230. Id. The Court agrees.

21 The CDA aims to “preserve the vibrant and competitive free market that presently exists

22 for the Internet and other interactive computer services, unfettered by Federal or State regulation.”

23 47 U.S.C. § 230(b)(2). In pursuit of that goal, § 230 “immunizes providers of interactive computer

24 services against liability arising from content created by third parties.” Fair Hous. Council of San

25 Fernando Valley v. Roommates.Com, LLC, 521 F.3d 1157, 1162 (9th Cir. 2008) (en banc). The

26 text of § 230(c)(1) specifically provides that “[n]o provider or user of an interactive computer

27 service shall be treated as the publisher or speaker of any information provided by another

1 information content provider.” 47 U.S.C. § 230(c)(1). Pursuant to this statutory text, the Ninth

2 Circuit has set forth a three element test for a defendant to receive § 230(c)(1) immunity. Section

3 230(c)(1) “only protects from liability (1) a provider or user of an interactive computer service (2)

4 whom a plaintiff seeks to treat . . . as a publisher or speaker (3) of information provided by another

5 information content provider.” Barnes v. Yahoo!, Inc., 570 F.3d 1096, 1100–01 (9th Cir. 2009), as

6 amended (Sept. 28, 2009). However, the CDA’s grant of immunity does not apply where the

7 interactive computer service provider is “also an ‘information content provider,’ which is defined

8 as someone who is ‘responsible, in whole or in part, for the creation or development of’ the

9 offending content.” Roommates.Com, LLC, 521 F.3d at 1162 (quoting 47 U.S.C. § 230(f)(3)).

10 In the instant case, Defendant contends that all three elements of the Ninth Circuit test are

11 met. Mot. at 9. Plaintiff contends that the CDA’s grant of immunity does not apply here because

12 Defendant is also an information content provider. The Court first addresses the three elements of

13 the Ninth Circuit test then discusses Plaintiff’s contention that Defendant is an information content

14 provider.

15 First, Plaintiff alleges that Defendant provides an interactive computer service. An

16 “interactive computer service” is defined as “any information service, system, or access software

17 provider that provides or enables computer access by multiple users to a computer server.” 47

18 U.S.C. § 230(f)(2). Plaintiff alleges that Defendant operates an “ecommerce system” that allows

19 users “to create online storefronts through which Infringing Goods are then marketed, offered for

20 sale, and sold.” FAC ¶¶ 51–52. This allegation is enough to suggest that Defendant provides an

21 “interactive computer service.” See, e.g., Joseph v. Amazon.com, Inc., 46 F. Supp. 3d 1095, 1106

22 (W.D. Wash. 2014) (finding Amazon.com to offer an “interactive computer service” because

23 plaintiff “allege[d] that Amazon operates a website that allows consumers to purchase items

24 online, i.e., to access [its] servers by placing orders”).

25 Second, Plaintiff alleges that Defendant is a publisher or speaker of information. In La

26 Park La Brea A LLC v. Airbnb, Inc., the court held that the plaintiff treated the defendant, Airbnb,

27 as a publisher by alleging that Airbnb “facilitate[d] the posting of rental opportunities at the host’s

1 property, by providing the means for guests to locate and book host properties, and by processing

2 payments from guests to hosts.” La Park La Brea A LLC, 285 F. Supp. 3d at 1106. Similarly, in

3 the instant case, Plaintiff alleges that Defendant facilitates various online transactions between

4 third parties by listing third party goods on Defendant’s platform. FAC ¶¶ 51–52. Accordingly,

5 Plaintiff’s claims require the Court to treat Defendant as a publisher of information.

6 Third, Plaintiff alleges that the communications were provided by another content

7 provider. The First Amended Complaint alleges that third party “users” “create online storefronts”

8 through Defendant’s e-commerce system. FAC ¶ 52. Thus, the First Amended Complaint alleges

9 that third party users use Defendant’s platform to market, offer for sale, and sell their products.

10 Accordingly, the First Amended Complaint alleges that third party users are the ones providing the

11 information at issue in the instant case.

12 Plaintiff alleges that Defendant is an information content provider because Defendant

13 “providies [sic] the platform for the Infringing Goods, processes orders for the Infringing Goods

14 placed by consumers, arranges for the manufacture of the Infringing Goods, arranges for shipping

15 of the Infringing Goods, controls all customer service and return activities with the consumer, and

16 pockets a significant portion of profits.” FAC ¶ 134. However, multiple courts in the Ninth Circuit

17 have rejected the proposition that similar acts make a defendant an information content provider.

18 See, e.g., Free Kick Master LLC, 140 F. Supp. 3d at 982 (rejecting argument that Amazon was a

19 content provider because it profited from the alleged infringement, helped users set up profiles,

20 and promoted and approved apps on the Amazon AppStore); La Park La Brea A LLC, 285 F.

21 Supp. at 1104 (rejecting argument that Airbnb, an online hospitality marketplace, was a content

22 provider because it provided user information verification, messaging systems, and a refund

23 policy). Similarly, the Court concludes in the instant case that Plaintiff’s allegations do not suggest

24 that Defendant is a content provider or an author of the challenged content.

25 In sum, the Court concludes that § 230 immunity applies because all three elements of the

26 Ninth Circuit’s test are satisfied in the instant case. See Barnes, 570 F.3d at 1100–01 (9th Cir.

27 2009) (stating that § 230 immunity protects “(1) a provider or user of an interactive computer

1 service (2) whom a plaintiff seeks to treat . . . as a publisher or speaker (3) of information provided

2 by another information content provider”). Furthermore, the exception to § 230 immunity does

3 not apply because Plaintiff has not adequately alleged that Defendant is an information content

4 provider in the instant case. 47 U.S.C. § 230(f)(3). Because § 230 immunity bars Plaintiff’s unfair

5 competition claims, the Court GRANTS Defendant’s motion to dismiss Plaintiff’s unfair

6 competition claims. The Court grants leave to amend because amendment would not necessarily

7 be futile, unduly prejudice the parties, or cause undue delay, and Plaintiff has not acted in bad

8 faith. See Leadsinger, 512 F.3d at 532.

9 IV. CONCLUSION

10 For the foregoing reasons, the Court GRANTS Defendant’s motion to dismiss Plaintiff’s

11 contributory copyright infringement claim, contributory trademark infringement claim, trade dress

12 claim, and unfair competition claims with leave to amend. Plaintiff shall file any amended

13 complaint within 30 days of this Order. Failure to do so, or failure to cure deficiencies identified

14 herein or identified in the instant motion to dismiss, will result in dismissal of the deficient claims

15 with prejudice. Plaintiff may not add new causes of action or add new parties without stipulation

16 or leave of the Court. Plaintiff is directed to file a redlined complaint comparing the complaint to

17 any amended complaint as an attachment to Plaintiff’s amended complaint.

18 IT IS SO ORDERED.

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20 Dated: June 24, 2021

21 ______________________________________

LUCY H. KOH

22 United States District Judge

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