`
`O
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`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`Case No. CV 13-01027 DDP (RNBx)
`
`ORDER GRANTING DEFENDANT’S MOTION
`TO DISMISS
`
`Dkt. No. 20]
`
`))))))))))))
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`MERCADO LATINO, INC. dba
`CONTINENTAL CANDLE COMPANY,
`Plaintiff,
`
`v.
`INDIO PRODUCTS, INC., a
`California corporation,
`Defendant.
`___________________________
`
`Presently before the court is Defendant Indio Products, Inc.
`(“Indio”)’s Motion to Dismiss. Having considered the submissions
`of the parties and heard oral argument, the court grants the motion
`and adopts the following order.
`I.
`Background
`Indio and Plaintiff Mercado Latino, Inc. (“Mercado”) both sell
`devotional prayer candles bearing images of saints and other
`religious figures. (First Amended Complaint (“FAC”) ¶¶ 21, 28,
`35.) Mercado’s “Sanctuary Series” candles depict a religious icon
`within a “bullet” shape in the style of a stained glass window,
`surrounded by a patterned border of colorful, geometric shapes.
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`Case 2:13-cv-01027-DDP-RNB Document 25 Filed 06/12/13 Page 2 of 9 Page ID #:326
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`(FAC ¶ 21, Ex. E; Motion to Dismiss, Ex. 2.) Mercado obtained
`copyrights on “the original and distinctive artwork shown on
`Sanctuary Series candles.” (FAC ¶¶ 12-14.) Mercado also
`trademarked the name “Sanctuary Series” and a design consisting of
`three circles within a window. (FAC ¶¶ 18-19.) Mercado allegedly
`owns trade dress “comprised of candles with distinctive
`appearance,” and featuring “the unique combination of the following
`design elements: a depiction of a saint or religious icon, with a
`border that appears to be a ‘bullet’ shape in the style of a
`stained glass window and the name of the saint or the religious
`icon underneath the depiction.” (FAC ¶ 21.)
`In its First Amended Complaint, Mercado alleges that Defendant
`Indio copied Mercado’s copyrights and passed off inferior Indio
`candles as Mercado products. (FAC ¶¶ 29-31.) The FAC further
`alleges that Indio infringed upon Mercado’s Sanctuary Series trade
`dress and trademarks. Mercado also alleges causes of action for
`federal unfair competition under 15 U.S.C. § 1125(a) and
`intentional interference with prospective economic advantage.
`Indio now moves to dismiss all five claims.
`II. Legal Standard
`II. Legal Standard
`A complaint will survive a motion to dismiss when it contains
`“sufficient factual matter, accepted as true, to state a claim to
`relief that is plausible on its face.” Ashcroft v. Iqbal, 556 U.S.
`662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544,
`570 (2007)). When considering a Rule 12(b)(6) motion, a court must
`“accept as true all allegations of material fact and must construe
`those facts in the light most favorable to the plaintiff.” Resnick
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`Case 2:13-cv-01027-DDP-RNB Document 25 Filed 06/12/13 Page 3 of 9 Page ID #:327
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`v. Hayes, 213 F.3d 443, 447 (9th Cir. 2000). Although a complaint
`need not include “detailed factual allegations,” it must offer
`“more than an unadorned, the-defendant-unlawfully-harmed-me
`accusation.” Iqbal, 556 U.S. at 678. Conclusory allegations or
`allegations that are no more than a statement of a legal conclusion
`“are not entitled to the assumption of truth.” Id. at 679. In
`other words, a pleading that merely offers “labels and
`conclusions,” a “formulaic recitation of the elements,” or “naked
`assertions” will not be sufficient to state a claim upon which
`relief can be granted. Id. at 678 (citations and internal
`quotation marks omitted).
` “When there are well-pleaded factual allegations, a court should
`assume their veracity and then determine whether they plausibly
`give rise to an entitlement of relief.” Id. at 679. Plaintiffs
`must allege “plausible grounds to infer” that their claims rise
`“above the speculative level.” Twombly, 550 U.S. at 555.
`“Determining whether a complaint states a plausible claim for
`relief” is a “context-specific task that requires the reviewing
`court to draw on its judicial experience and common sense.” Iqbal,
`556 U.S. at 679.
`III. Discussion
`A. Copyright Infringement
`To state a claim for copyright infringement, a Plaintiff must
`allege “(1) ownership of a valid copyright, and (2) copying of
`constituent elements of the work that are original.” Feist Pubs.,
`Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 361 (1991). To
`satisfy the copying prong, a copyright plaintiff must also allege
`that the works are substantially similar in their protected
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`Case 2:13-cv-01027-DDP-RNB Document 25 Filed 06/12/13 Page 4 of 9 Page ID #:328
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`elements. Wild v. NBC Universal, Inc., 788 F.Supp.2d 1083, 1098
`(C.D. Cal. 2011). Courts in this circuit regularly apply these
`requirements at the pleading stage. See, e.g., Wild, 788 F.Supp.2d
`at 1098; Zella v. E.W. Scripps Co., 529 F.Supp.2d. 1124, 1130-31
`(C.D. Cal. 2007); Lafarga v. Lowrider Arte Magazine, No. SACV 11-
`1501 DOC, 2012 WL 3667441 at *3 (C.D. Cal. Aug. 24, 2012); Minden
`Pictures, Inc. v. Pearson Education, Inc., No. C 11-05385 WHA, 2012
`WL 1595081 at *2 (N.D. Cal. May 4, 2012); Fractional Villas, Inc.
`v. Tahoe Clubhouse, No. 08cv1396-IEG, 2009 WL 160932 at *2 (S.D.
`Cal. Jan. 22, 2009).1
`Courts employ a two-part analysis, comprised of an “intrinsic”
`and “extrinsic” test, to determine whether two works are
`substantially similar. Cavalier v. Random House, Inc., 297 F.3d
`815, 822 (9th Cir. 2002). Here, Indio argues that the FAC fails to
`allege sufficient facts to satisfy the extrinsic test. (Mot. at
`10.) The extrinsic test is an objective comparison of specific,
`protectable expressive elements. Id. at 822-23. General ideas and
`scenes a faire that flow necessarily from ideas are not
`protectable, and therefore play no role in an extrinsic analysis.
`Id.
`
`Mercado argues that the protectable elements of the Sanctuary
`series candles are “the artwork of border with appearance of
`cathedral window-shaped stained glass.” (Opp. at 6-7, FAC Ex. B.)
`Mercardo’s opposition makes no attempt, however, to dispute Indio’s
`contention that Indio candles are not substantially similar to
`
`1 The bulk of Plaintiff’s opposition is devoted to the
`assertion that the validity of its claims cannot be analyzed prior
`to summary judgment. (Opp. at 2, 4, 5-6, 8-9, 12-15.)
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`Case 2:13-cv-01027-DDP-RNB Document 25 Filed 06/12/13 Page 5 of 9 Page ID #:329
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`Mercado’s Sanctuary Series candles. That alone would be reason
`enough to grant Indio’s motion to dismiss. Even putting aside
`Mercado’s implicit concession, however, it does not appear that the
`two lines of candles are substantially similar.
`As an initial matter, the elements identified by Mercado are
`not all protectable. The court must filter out the unprotected
`elements before applying the extrinsic test. Mattel, Inc. v. MGA
`Entertainment, Inc., 616 F.3d 904, 913 (9th Cir. 2010.) Mercado
`seeks protection for artwork with the “appearance of cathedral
`window-shaped stained glass.” An idea alone, such as the idea of
`depicting a stained-glass cathedral window, is not copyrightable.
`Feist, 499 U.S. at 344-45; Satava v. Lowry, 323 F.3d 805, 810 (9th
`Cir. 2003) (“[N]o copyright protection may be afforded to the idea
`of producing a glass-in-glass jellyfish sculpture.”).
`To the extent that Mercado argues that the shape of the
`artwork is a protectable element of expression, the court
`disagrees. (See Opp. at 7 (“The copyright cause of action is based
`on the additional artwork of the border with the stained glass
`cathedral window shape.” (emphasis added)).) Standard features
`(i.e., scenes a faire) and unoriginal components are not
`protectable. Mattel, 616 F.3d at 913–14; Cavalier, 297 F.3d at
`822-23; Dream Games of Arizona, Inc. v. PV Onsite, 561 F.3d 983,
`988 (9th Cir. 2009) (“[E]lements of expression that necessarily
`follow from an idea, or expressions that are as a practical matter,
`indispensable or at least standard in the treatment of an idea are
`[also] not protected.” (internal quotation and alteration
`omitted.)). The placement of a border around an (admittedly
`unprotected) image of a religious figure is hardly an original or
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`Case 2:13-cv-01027-DDP-RNB Document 25 Filed 06/12/13 Page 6 of 9 Page ID #:330
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`unique expression. Nor is the use of a “bullet,” arched, or
`conical shape in a depiction of a religious icon in any way novel
`or groundbreaking. As evinced by Plaintiff’s own use of the term
`“cathedral window shape,” the bullet-type design is a widespread
`and longstanding staple of devotional iconography, to which Mercado
`can lay no copyright claim.
` Thus, the only protectable element of expression to which to
`apply the extrinsic test is Mercado’s border artwork design itself.
`The extent of copyright protection afforded to an idea or element
`depends on the possible range of expression of that idea or
`element. Mattel, 616 F.3d at 913-14. Where the range is narrow,
`copyright protection is “thinner,” and a work must be “virtually
`identical” to infringe. Id. Where the range of possible
`expression is broad, substantial similarity is sufficient to
`establish infringement. Id. Here, the court disagrees with
`Indio’s assertion that there is but a narrow range of potential
`expression for border artwork. Because there are “gazillions of
`ways” to design a border, Indio’s work need only be substantially
`similar to Mercado’s design. Id.
`Indio’s border artwork design is not, however, substantially
`similar to Mercado’s design. Mercado’s border design features five
`colors in roughly equal proportions, fairly large rectangles and
`semicircles in a symmetrical arrangement, and the name of the
`particular religious figure within the border itself. Indio’s
`design is primarily blue, contains a large number of irregular
`shapes laid out in a somewhat jumbled and asymmetrical pattern,
`contains a distinctive, inset image of a dove or angel at the top
`of the border, and does not incorporate any text.
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`Case 2:13-cv-01027-DDP-RNB Document 25 Filed 06/12/13 Page 7 of 9 Page ID #:331
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`Because the protected elements of Mercado’s expression are not
`similar to Indio’s expression, Mercado cannot state a viable
`copying claim. Mercado’s copyright claim must therefore be
`dismissed, with prejudice.
`B. Trade Dress
`Mercado’s trade dress claim under Section 43(a) of the Lanham
`Act, 15 U.S.C. § 1125(a), as currently pled, is premised upon the
`same facts as its copyright claim. The FAC describes Mercado’s
`Sanctuary Series trade dress as “a depiction of a saint or other
`religious icon, with a border that appears to be a “bullet” shape
`in the style of a stained glass window and the name of the saint or
`the religious icon underneath the depiction.” (FAC ¶ 21.) As
`explained above, these are the same elements for which Mercado
`seeks copyright protection. Both the copyright and trade dress
`claims allege that Indio attempts to confuse consumers and to pass
`its own candles off as Mercado candles. (FAC ¶¶ 31, 36-37.)
`The Supreme Court has cautioned that the Lanham Act should not
`be overextended into areas traditionally covered by copyright law.
`Dastar Corp. v. Twentieth Cent. Fox Corp., 539 U.S. 23, 34 (2003).
`To the extent that the Copyright Act provides an adequate remedy,
`therefore, Lanham Act claims are preempted. Shaw v. Lindheim, 919
`F.2d 1353, 1364-65 (9th Cir. 1990); Salt Optics, Inc. v. Jand,
`Inc., No. SACV 10-828, 2010 WL 4961702 at *7 (C.D. Cal. Nov. 19,
`2010).
`Mercado’s opposition to Indio’s preemption argument is
`puzzling. Mercado merely and conclusorily states that “Defendant
`has engaged in wrongful conduct under both the Lanham Act and the
`Copyright Act.” This naked assertion, however, is insufficient to
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`Case 2:13-cv-01027-DDP-RNB Document 25 Filed 06/12/13 Page 8 of 9 Page ID #:332
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`sustain Mercado’s Lanham Act claim. Apparently recognizing as
`much, Mercado argues that there is an independent basis for its
`trade dress claim because “Plaintiff has discovered instances of
`Defendant selling Plaintiff’s candles bearing Plaintiff’s trade
`dress inside boxes bearing Defendant’s name.” (Opp. at 13;
`Declaration of R. Joseph Decker ¶ 2.) The FAC, however, makes no
`mention of these facts. While the FAC does allege that Indio is
`attempting to pass off its candles as Mercado products, the only
`basis for that allegation is that “Defendants have placed their
`infringing Defendants’ Candles in direct competition with Mercado’s
`Sanctuary Series.” (FAC ¶ 37.) Nowhere does the FAC state any
`allegations regarding false packaging or repackaging of Mercado
`candles. Mercado’s trade dress claim is therefore dismissed, with
`leave to amend.2
`C.
`Remaining claims
`Mercado’s opposition suggests that the remaining trademark
`claim and state law interference with economic advantage claim are
`also premised upon Indio’s re-boxing of Mercado candles in Indio
`boxes.3 (Opp. at 14-15; Decker Decl. ¶ 2.) The FAC, however,
`includes no such allegations. These claims are dismissed with
`leave to amend.
`IV. Conclusion
`
`2 Mercado’s unfair competition claim, which is also based on
`Section 43(a) of the Lanham Act, is based upon the same facts as
`its trade dress claim, and is therefore also dismissed with leave
`to amend.
`3 Plaintiff does not dispute that, to the extent its
`intentional interference claim overlaps with its copyright claim,
`the state law claim is preempted. See Wild, 788 F.Supp.2d at 1110-
`1111.
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`Case 2:13-cv-01027-DDP-RNB Document 25 Filed 06/12/13 Page 9 of 9 Page ID #:333
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`For the reasons stated above, Defendant’s Motion to Dismiss is
`GRANTED. Plaintiff’s copyright claim is dismissed with prejudice.
`All other claims are dismissed with leave to amend. Any amended
`complaint shall be filed within ten days of the date of this order.
`
`IT IS SO ORDERED.
`
`Dated: June 12, 2013
`
`DEAN D. PREGERSON
`United States District Judge
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