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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`ELIAS KIFLE,
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`Plaintiff,
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`v.
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`YOUTUBE LLC, et al.,
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`Defendants.
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`Case No. 21-cv-01752-CRB
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`
`ORDER GRANTING MOTION TO
`DISMISS
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`
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`Pro se Plaintiff Elias Kifle is suing Defendants YouTube and Does 1–19 for copyright
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`infringement and trademark infringement. See Fourth Am. Compl. (dkt. 73-1). Kifle’s claims arise
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`from YouTube’s continued service to users who allegedly display Kifle’s videos on YouTube
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`without his permission. Id. at 3–4. The Court previously granted YouTube’s motion to dismiss
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`Kifle’s third amended complaint, with leave to amend his copyright and trademark infringement
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`claims. See MTD Order (dkt. 71). Because Kifle’s current complaint fails to cure the deficiencies in
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`the prior complaint, the Court GRANTS the motion to dismiss. The Court grants leave to amend the
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`trademark infringement claim only.
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`I.
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`BACKGROUND
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`Kifle is a resident of the state of Georgia. Fourth Am. Compl. ¶ 4. He owns a satellite
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`television channel and website titled Mereja TV. Id. Mereja TV broadcasts video news segments in
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`the Amharic language for the Ethiopian community by live streams and pre-recorded videos. Id. ¶
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`19. Until November 2020, Kifle voluntarily put his content on YouTube’s platform. Id.
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`YouTube is an online video hosting platform where creators may upload their videos free of
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`charge. Mot. (dkt. 76) at 4. YouTube is based in California and incorporated in the state of
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`Delaware. Fourth Am. Compl. ¶ 5.
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`Between 2016 and 2020, Kifle operated a “parallel” YouTube channel that livestreamed
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`Mereja programming. Id. ¶ 7. The channel had approximately 2,500 videos. Id. On November 9,
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`2020, YouTube “abruptly terminated” a Mereja livestream airing on Kifle’s YouTube channel
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`without “any specific reason or advance warning.” Id. Two days later, YouTube terminated Kifle’s
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`YouTube channel entirely, removing all the videos posted to the channel. Id.1
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`Since his channel was suspended, Kifle alleges that “over 300” of his videos have been
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`copied from Mereja TV’s website and uploaded onto YouTube’s platform without his permission.
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`Id. ¶ 14. Kifle also alleges that he has sent “over 40” advance notices of potential copyright
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`infringement, and a trademark cease and desist letter to YouTube. See Id. ¶ 16. On October 6, 2021,
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`the day after this Court granted the last motion to dismiss, Kifle sent YouTube an advance notice that
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`fixed some deficiencies noted in the Court’s order. See Ex. 1 (dkt. 73-1). Kifle also sent an updated
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`“Trademark Cease and Desist Notice” email to YouTube’s legal department. See Ex. 2.
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`On September 16, 2021, after briefing had concluded but before this Court’s order, the U.S.
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`Patent and Trademark Office (“PTO”) issued an Office Action refusing to register “Mereja TV” as a
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`standard character word mark.2 See Ex. A (dkt. 76-2). The PTO determined that the marks were
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`“generic in connection with the identified goods and/or service.” Id.
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`A.
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`Copyright Allegations
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`Kifle alleges that he owns “the copyright of his works, including his live broadcast titled ‘ነጭ
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`ነጯን ከዘመዴ ጋር,’ and all the content on his copyright-protected website, Mereja.tv.” Fourth Am.
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`Compl. ¶ 9. Kifle alleges that, after terminating his channel, YouTube started allowing the Doe
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`Defendants to copy or intercept hundreds of the videos from his copyrighted website and television
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`channel. Id. ¶ 7, 14. He alleges that “YouTube users (Defendants Does 1–19) have directly
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`infringed at least 300 of Plaintiff’s works that have been copied from his website, Mereja.tv, and
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`1 As it would explain in a brief many months later, YouTube terminated Kifle’s YouTube channel
`because “videos that were streamed in late October 2020 contain programs by a person named
`Zemedkun Bekele whose YouTube channel was previously terminated.” TRO Order (dkt. 48) at 3.
`YouTube had suspended Zemedkun Bekele’s account “for posting content that promoted violence,
`hate speech, and harassment.” Id. Following the suspension, YouTube observed that videos of
`Bekele were uploaded to Kifle’s channel in violation of YouTube’s anti-circumvention policy. Id.
`2 This Court takes judicial notice of the PTO Examining Attorney’s non-final office action, dated
`September 16, 2021, denying registration of Kifle’s “Mereja TV” mark. See U.S. Trademark Appl.
`Serial No. 90531442; Fed. R. Evid. 201(b).
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`displayed on YouTube.com without his permission.” Id. ¶ 7. The complaint includes images that
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`purport to identify a Doe Defendant’s YouTube page that streamed his “live broadcast” content “as
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`recently as last month.” Id. ¶ 22. (The complaint was filed on November 20).
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`Kifle also alleges that he has sent YouTube “48-hour advance notices” that his live broadcast
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`from his satellite channel would be simultaneously streamed but the Doe Defendants nonetheless
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`“live-streamed [the broadcasts] on YouTube.com without [his] permission.” Id. ¶ 23. The complaint
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`lists the URLs of eight YouTube channels that had allegedly simultaneously streamed Kifle’s
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`broadcasts without his permission. Id. ¶ 24. Kifle alleges that, in refusing to comply with his
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`advance notices, YouTube is “knowingly inflicting economic harm to Plaintiff.” Id. ¶ 26.
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`Kifle also alleges that YouTube has a “repeat-infringer policy that provides for the
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`termination of users who receive 3 copyright strikes.” Id. ¶ 51. But YouTube allegedly “failed to
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`implement its repeat infringer policy” against users posting Kifle’s content. Id. Kifle alleges that
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`“YouTube’s intentional failure to prevent Doe Defendants from live streaming [his] live broadcast
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`makes YouTube liable for contributory infringement.” Id. ¶ 61.
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`B.
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`Trademark Allegations
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`Kifle alleges that he “exclusively owns the trademarks ‘Mereja TV’ and ‘ነጭ ነጯን ከዘመዴ
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`ጋር,’” which translates to “The Facts with Zemede.” Id. ¶ 10. These marks “are clearly displayed on
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`all his works and throughout his website, Mereja.tv” and thus “are distinctive marks that identify
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`[his] website, television channel, and videos.” Id. ¶¶ 28–29.
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`Kifle alleges that it “is indisputable that ‘Mereja TV’ has achieved an unequivocal secondary
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`meaning.” Id. ¶¶ 35-37. A “quick search” on various search engines shows that the mark “is
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`uniquely and distinctly associated with Plaintiff’s website and television channel.” Id. ¶ 35. For
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`example, a Google search for “‘Mereja TV’ returns 800,000 results that refer ONLY to Plaintiff’s
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`website or satellite television channel.” Id. Kifle also alleges that “‘Mereja TV’ has acquired
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`distinctiveness by becoming a universally recognized brand among its audience who speak Amharic
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`language.” Id. ¶ 36.
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`Kifle further alleges that “ነጭ ነጯን ከዘመዴ ጋር” has “similarly strong secondary meaning in
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`distinctly identifying only Plaintiff’s television program that is live-broadcast at least 4 times per
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`week.” Id. ¶ 37. A “Google search for the keywords ‘ነጭ ነጯን ከዘመዴ ጋር’ returns 32,500 results,
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`100 percent of which are Plaintiff’s works.” Id. ¶ 37.
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`As with the allegedly infringing videos, Kifle alleges that he sent requests asking YouTube to
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`remove all materials on YouTube.com that infringe on his protected marks, but YouTube continues
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`to allow the infringement. Id. ¶ 38. He alleges that “YouTube is liable for contributory and vicarious
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`infringement because it allowed several repeat infringers to steal Plaintiff’s trademark despite
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`receiving valid cease and desist notices.” Id. ¶ 39.
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`C.
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`Procedural History
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`In his Third Amended Complaint, Kifle asserted a breach of contract claim, a copyright
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`claim, and a trademark claim. See Third Amended Compl. (dkt 56-1). YouTube moved to dismiss.
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`See MTD (dkt. 62). The Court dismissed Kifle’s contract claim with prejudice because it was barred
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`by Section 230(c)(1) of the Communications Decency Act. MTD Order at 6. The Court dismissed
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`the copyright and trademark claims with leave to amend. Id. Kifle then filed this complaint.
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`II.
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`LEGAL STANDARD
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`Under Rule 12(b)(6) of the Federal Rules of Civil Procedure, a complaint may be dismissed
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`for failure to state a claim upon which relief may be granted. Fed. R. Civ. P. 12(b)(6). Rule 12(b)(6)
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`applies when a complaint lacks either “a cognizable legal theory” or “sufficient facts alleged” under
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`such a theory. Godecke v. Kinetic Concepts, Inc., 937 F.3d 1201, 1208 (9th Cir. 2019). Whether a
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`complaint contains sufficient factual allegations depends on whether it pleads enough facts to “state a
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`claim to relief that is plausible on its face.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citing Bell
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`Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007)). A claim is plausible “when the plaintiff
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`pleads factual content that allows the court to draw the reasonable inference that the defendant is
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`liable for the misconduct alleged.” Id. at 678. This is not a “probability requirement,” but it requires
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`more than a “sheer possibility” that the defendant is liable: “Where a complaint pleads facts that are
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`merely consistent with a defendant’s liability, it stops short of the line between possibility and
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`plausibility of entitlement to relief.” Id. (quoting Twombly, 550 U.S. at 557).
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`Courts should allow a plaintiff leave to amend unless amendment would be futile. Cook,
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`Perkiss & Liehe, Inc. v. N. Cal. Collection Serv. Inc., 911 F.2d 242, 246–47 (9th Cir. 1990). To
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`determine whether amendment would be futile, courts examine whether the complaint can be
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`amended to cure the defect requiring dismissal “without contradicting any of the allegations of [the]
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`original complaint.” Reddy v. Litton Indus., Inc., 912 F.2d 291, 296 (9th Cir. 1990).
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`III. DISCUSSION
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`A. Copyright Claim
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`Kifle argues that YouTube knowingly and intentionally failed to prevent other users from
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`infringing his live broadcasts and prerecorded videos. See Fourth Am. Compl. ¶ 46. The Court
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`denies the copyright claim with prejudice because Kifle (again) fails to plausibly allege that he
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`complied with 17 U.S.C. § 411, and further opportunities to amend this claim would be futile.
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`1.
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`Applicable Law
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`A plaintiff seeking to bring a copyright suit must comply with certain procedural
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`requirements. Subject to certain limited exceptions, a copyright holder must register the relevant
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`work before filing an infringement suit. See 17 U.S.C. § 411(a). Copyright registration “occurs, and
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`a copyright claimant may commence an infringement suit, when the Copyright Office registers a
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`copyright.” Fourth Estate Pub. Benefit Corp. v. WallStreet.com, LLC, 139 S. Ct. 881, 887 (2019).
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`Consistent with other district courts in the Ninth Circuit, this Court holds that a plaintiff must have
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`registered the relevant work before filing suit. See TRO Order (dkt. 48) at 9–10.
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`The one relevant exception to § 411(a) is the § 411(c) exception for simultaneous
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`transmissions. Subject to certain requirements, a copyright owner may bring an infringement suit for
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`works “the first fixation of which is made simultaneously with its transmission.” See 17 U.S.C.
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`§ 411(c). To qualify for this exception, the copyright owner must (1) serve “notice upon the
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`infringer, not less than 48 hours before such fixation, identifying the work and the specific time and
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`source of its first transmission, and declaring an intention to secure copyright in the work,” and (2)
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`make “registration for the work,” if otherwise required under § 411(a), “within three months after its
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`first transmission.” 17 U.S.C. §§ 411(c)(1)–(2).
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`The copyright owner must take these steps “in accordance with requirements that the Register
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`of Copyright shall prescribe by regulation.” 17 U.S.C. § 411(c). The regulations require that service
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`of the “Advance Notice” be made “on the person responsible for the potential infringement” within
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`the 48-hour window. 37 C.F.R. § 201.22(e)(1). They also require that the copyright owner sign the
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`notice with “an actual handwritten signature,” though if the notice is served via email, the
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`handwritten signature requirement “shall be considered waived” if the other service requirements
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`enumerated in 37 C.F.R. § 201.22(e) are met. Id. §§ 201.22(d)(2), (3).
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`37 C.F.R. § 201.22(e) further provides that an Advance Notice may be “effected” via email
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`only if before the “simultaneous transmission take[s] place, the person responsible for the potential
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`infringement receives written confirmation of the Advance Notice, bearing the actual handwritten
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`signature of the copyright owner or duly authorized agent.” Id. § 201.22(e)(iii)(B). Thus, Advance
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`Notice generally requires a handwritten signature, but not if Advance Notice is sent through email, so
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`long as the proper recipient timely receives written confirmation of the Advance Notice, and that
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`written confirmation includes a handwritten signature. Id.
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`If the § 411 procedural requirements are met, a plaintiff may state a prima facie case of
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`copyright infringement by making two showings: “(1) they must show ownership of the allegedly
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`infringed material and (2) they must demonstrate that the alleged infringers violate at least one
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`exclusive right granted to copyright holders under 17 U.S.C. § 106.” A&M Recs., Inc. v. Napster,
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`Inc., 239 F.3d 1004, 1013 (9th Cir. 2001).
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`To show secondary infringement (i.e., “contributory infringement” or “vicarious
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`infringement”), a plaintiff must first “establish that there has been direct infringement by third
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`parties.” Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1169 (9th Cir. 2007). If the plaintiff
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`can do so, they may show contributory infringement by establishing that the defendant intentionally
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`induced or encouraged the direct infringement. See id. at 1170–71.
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`2.
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`Application
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`Kifle’s copyright claim is dismissed because he again failed to plausibly allege compliance
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`with 17 U.S.C. § 411. Dismissal is with prejudice because further opportunities to amend this claim
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`would prove futile.
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`a.
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`Section 411
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`As discussed, § 411(a) generally requires a copyright holder to obtain copyright registration
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`before bringing an infringement action. Kifle failed to allege compliance with this requirement for
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`any pre-recorded videos. In fact, he did not allege that he has obtained copyright registration for any
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`pre-recorded videos. Thus, § 411(a) bars any claim based on any pre-recorded works.
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`Nor does Kifle satisfy the simultaneous transmission exception in § 411(c). The regulation
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`requires that the “Advance Notice” be served on the “person responsible for the infringement.” 37
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`C.F.R. § 201.22(e)(1). As in his previous complaint, Kifle alleges that YouTube had “48-hour
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`advance notice before the live broadcasts,” but he does not allege that notice was served upon any of
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`the individuals or entities who were responsible for the direct infringement (i.e., the YouTube users
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`who uploaded Kifle’s live broadcasts without his permission). See Fourth Am. Compl. ¶ 23; see also
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`Third Am. Compl. ¶ 13.9.
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`b.
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`Leave to Amend
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`Federal Rule of Civil Procedure 15 freely permits amendments to pleadings in order to
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`“facilitate decision on the merits, rather than on the pleadings or technicalities.” Noll v. Carlson, 809
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`F.2d 1446, 1448 (9th Cir. 1987). Courts apply this policy with “extreme liberality.” Morongo Band
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`of Mission Indians v. Rose, 893 F.2d 1074, 1079 (9th Cir. 1990). This rule favoring liberality is even
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`more important for a pro se litigant. Noll, 809 F.2d at 1448.
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`Kifle failed to plead that he complied with § 411 in registering his copyrights or giving
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`advance notice to the direct infringers. The Court noted these defects in its previous order. MTD
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`Order at 8–9. Kifle still fails to make the necessary allegations. Indeed, Kifle states that he could not
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`give advance notice to the direct infringers because YouTube refused to provide him with their
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`contact information, and he did not otherwise possess it. See Kifle Decl. (dkt. 73-2) ¶ 11. Because
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`Kifle cannot contact the direct infringers, he is unable to satisfy § 411(c), and leave to amend would
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`be futile. Cook, Perkiss & Liehe, 911 F.2d at 246–47.
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`B.
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`Trademark Claim
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`Previously, the Court found that Kifle had plausibly alleged that his two marks, “Mereja TV”
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`and “ነጭ ነጯን ከዘመዴ ጋር,” whose trademark had yet to be registered, are protectable because they
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`have acquired a “secondary meaning.” See MTD Order at 11-13; Fourth Am. Compl. ¶¶ 28-34.
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`However, since then, the PTO has refused to register “Mereja TV” as a standard character word mark
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`because it found that the mark was “merely descriptive.” See Ex. A. In analyzing whether a mark is
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`descriptive or suggestive, “[d]eference to the PTO’s classification decision is sensible because the
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`PTO has special expertise that we lack on this fact-intensive issue.” Lahoti v. VeriCheck, Inc., 586
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`F.3d 1190, 1199 (9th Cir. 2009). In light of the PTO’s decision, the Court concludes that Kifle has
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`no longer plausibly alleged that “Mereja TV” is a protected mark. See Herbal Chef, LLC v. AFG
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`Distribution, Inc., 2020 WL 3064439, at *4 (C.D. Cal. Mar. 10, 2020), aff’d, 840 F. App’x 223 (9th
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`Cir. 2021) (considering and deferring to the PTO’s conclusion). The rest of the analysis will focus
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`only on alleged infringement of the “ነጭ ነጯን ከዘመዴ ጋር” mark. See Mot. at 5.
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`In its last order, the Court found that Kifle failed to plausibly allege that YouTube was liable
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`for contributory infringement. See MTD Order at 13-15. The Court held that the notices that Kifle
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`sent to YouTube failed to support an inference that YouTube continued to provide its services to
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`accounts that it knew or had reason to know were engaging in trademark infringement. Id. at 14. Yet
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`the complaint and the attached cease-and-desist letter still do not quite allege (1) that YouTube knew,
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`or had reason to know, that these specific users were actually infringing Kifle’s trademark; or (2) that
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`YouTube continued to provide service to those specific users. Thus, the trademark claim is
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`dismissed with leave to amend to remedy these two remaining deficiencies.
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`1. Applicable Law
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`To prevail on a direct trademark infringement claim, a plaintiff must show that “(1) it has a
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`valid, protectable trademark,” and (2) the defendant’s “use of the mark is likely to cause confusion.”
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`Applied Info. Sciences Corp. v. eBAY, Inc., 511 F.3d 966, 969 (9th Cir. 2007). Trademark
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`protection for pending and unregistered marks only exists if a plaintiff can demonstrate “inherent
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`distinctiveness” or “secondary meaning.” SV3, LLC v. GG Distribution, Inc., 2019 WL 1091337, at
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`*4 (C.D. Cal. Jan. 18, 2019).
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`“To be liable for contributory trademark infringement, a defendant must have (1)
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`intentionally induced the primary infringer to infringe, or (2) continued to supply an infringing
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`product to an infringer with knowledge that the infringer is mislabeling the particular product
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`supplied.” Perfect 10, 494 F.3d at 807 (citing Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844
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`855 (1982)).
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`To state a claim under the second prong, a plaintiff must show that the defendant “continued
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`to supply its services to one who it knew or had reason to know was engaging in trademark
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`infringement.” Louis Vuitton Malletier, S.A. v. Akanoc Sols, Inc., 658 F.3d 936, 942 (9th Cir.
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`2011). “[C]ontemporary knowledge of which particular listings are infringing or will infringe . . . is
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`necessary.” Spy Phone Labs LLC. v. Google Inc., 2016 WL 1089267, at *3 (N.D. Cal. Mar. 21,
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`2016) (quoting Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93, 107 (2d Cir. 2010)). A defendant must
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`have “particularized knowledge” of the alleged infringement. YZ Prods., Inc. v. Redbubble, Inc.,
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`2021 WL 2633552, at *6 (N.D. Cal. June 24, 2021) (quotation and citation omitted). For example, in
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`Louis Vuitton, the defendant’s web hosting business had “actual or constructive knowledge” that a
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`website it hosted was infringing Louis Vuitton’s trademark because Louis Vuitton had sent them “at
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`least eighteen Notices of Infringement.” 658 F.3d at 941, 943.
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`2.
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`Application
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`The Court dismisses Kifle’s contributory trademark infringement because Kifle still has not
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`adequately alleged that YouTube had knowledge of the infringement of his trademark.
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`a. Knowledge of Infringement
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`Kifle has failed to plead a claim for infringement under the first prong. Kifle alleges no facts
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`that plausibly suggest that YouTube “intentionally induced” infringement of the mark.
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`Although Kifle comes much closer, he also fails to plausibly allege a claim under the second
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`prong. Kifle argues that YouTube failed to take action against accounts that use the mark without his
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`permission. But Kifle’s allegations are not quite specific enough to show that YouTube knew or had
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`reason to know that which specific direct infringers were engaging in infringement. The Court
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`previously found the advance notice provided to YouTube insufficient to establish that it had
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`knowledge of the infringement:
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`The notice . . . does not establish that Kifle has a protectible interest in
`either mark. Also, much of the notice is devoted to programs that Kifle
`planned to air in the future. But neither the notice nor the TAC suggest
`that any of the anticipated infringement ultimately took place. For the
`channels that allegedly previously aired Kifle’s programs without his
`permission, Kifle does not adequately allege that YouTube continued to
`provide service to the channels, despite being aware that the channels
`were posting infringing content.
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`9
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`MTD Order at 14–15.
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`Kifle has remedied many of these deficiencies. See Ex. 2. First, the cease-and-desist letter
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`more clearly asserts that Kifle had a protectible interest in the mark. Id. (“I have learned that you are
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`inducing and allowing several YouTube users to upload videos that contain my protected trademarks,
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`‘ነጭ ነጯን ከዘመዴ ጋር’ (Amharic language) and ‘Mereja TV’”). Second, the cease-and-desist letter
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`more specifically notifies YouTube which users allegedly infringed. Id. (“Specific locations (URLs)
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`of the infringed marks are found on the following Youtube channels . . .”).
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`However, Kifle still does not sufficiently allege (1) that YouTube had knowledge, or reason
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`to know, that these specific users were in fact infringing the trademark; and (2) that YouTube
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`continued to provide service to those specific users. First, while Kifle’s most recent notice to
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`YouTube was more detailed, it still did not clearly indicate to YouTube that the links contained the
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`protected mark. For example, there are no screenshots or timestamps that indicate to YouTube that
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`the links contained the trademark. Without more specificity, the Court cannot impute to YouTube
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`the necessary “particularized knowledge” of the infringement. See YZ Prods., 2021 WL 2633552, at
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`*6. Second, Kifle must specifically allege in his complaint that YouTube continued to provide
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`service to those specific channels he flagged in his most recent letter, and he should include a date
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`and perhaps a screenshot.3
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`b.
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`Leave to Amend
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`As previously stated, a pro se complaint is held to a less stringent standard than a pleading
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`drafted by a lawyer. Haines v. Kerner, 404 U.S. 519, 520–21 (1972). Kifle has cured many of the
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`deficiencies of his past complaints. He has adequately alleged that he told YouTube that he had a
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`protectable mark and that it was being infringed. See Ex. 1 & 2. If Kifle can provide that the links
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`he sent to YouTube contained the protectable “ነጭ ነጯን ከዘመዴ ጋር” mark and that YouTube
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`3 The Court also recommends that Kifle clearly identify in his complaint which videos and channels
`are past alleged infringers (as to which he may not have provided YouTube sufficient particularized
`knowledge) and which alleged infringers he notified YouTube of most recently. Kifle inadequately
`pleaded that YouTube had knowledge of past infringement, and YouTube appears to no longer be
`servicing many of those older videos. Consequently, Kifle must clearly allege (1) that YouTube
`continued to provide service to specific recent infringers despite (2) YouTube having reason to know
`that those specific users were infringing Kifle’s mark.
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`continued to service those channels, then he can sufficiently allege that YouTube “continued to
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`supply an infringing productto an infringer with knowledge that the infringer is mislabeling the
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`particular product supplied.” Perfect 10, 494 F.3d at 807. Thus, the contributory trademark
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`infringementclaim is dismissed with leave to amend.
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`IV.
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`CONCLUSION
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`For the foregoing reasons, the Court GRANTSthe motion to dismiss Kifle’s copyright and
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`trademark infringementclaims, but grants Kifle leave to amend his trademark claim. He mayfile an
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`amended complaint within 30 days ofthis order.
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`IT IS SO ORDERED.
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`Dated: February3,2022
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`TE
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`CHARLES R. BREYER
`United States District Judge
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