Thursday, March 14, 2013

infringement by TM licensee doesn't itself make TM licensor liable

Gibson Guitar Corp. v. Viacom Intern. Inc., 2013 WL 877967 (C.D. Cal.)

Gibson allegedly owns the mark FLYING V and the “Flying V Body Shape Design” and “Flying V Peg-Head Design.”  Viacom owns marks for SpongeBob SquarePants.  Defendant JHS is a UK corporation that sells various products using the SpongeBob marks.  Gibson alleged that a SpongeBob SquarePants Flying V Ukulele infringed its marks and sued for the usual plethora of trademark and related claims.

The complaint alleged that JHS sold products containing Viacom’s marks in the US through its catalogs, distributors, and website (, along with product pages at Amazon.  It alleged that “defendants” generally made unauthorized use of the Gibson marks with the intent to mislead, etc.  Viacom argued that Gibson failed to plead that Viacom designed, manufactured, or sold the ukulele, and that its accusations about “defendants” were a “conclusory lumping together” insufficient under Iqbal/Twombly.  The court agreed that it couldn’t tell what actions Gibson was alleging were performed by Viacom in particular.  “No advertising and promotional materials attributable to Viacom have been specified, and the only website mentioned, belonging to Viacom's co-defendant, and, also apparently associated with JHS products.” 
Given the nature of the defendants—trademark owner and licensee—the complaint should specify their different roles.  If the only specific allegation against Viacom is that it licensed SpongeBob, its role in the alleged infringement wouldn’t be the same as that of JHS.  To state a claim, Gibson needed to say which acts were performed by which defendant.

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