Case 3:21-cv-01752-CRB Document 71 Filed 10/05/21 Page 1 of 15
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE 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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`
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`Case No. 21-cv-01752-CRB
`
`
`ORDER GRANTING MOTION TO
`DISMISS
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`Pro se Plaintiff Elias Kifle is suing YouTube and Doe Defendants 1–19 for breach
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`of contract, copyright infringement, and trademark infringement.1 See Third Amended
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`Complaint (“TAC”) (dkt. 56-1). Kifle’s claims arise from YouTube’s termination of his
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`YouTube channel and other users’ subsequent display of Kifle’s videos on YouTube
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`without his permission.
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`
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`After careful review of the parties’ briefs, the Court concludes that there is no need
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`for oral argument. For the reasons explained below, Kifle’s contract claims are dismissed
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`with prejudice and his copyright and trademark claims are dismissed with leave to amend.
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`I.
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`BACKGROUND
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`A.
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`TAC Allegations
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`The TAC alleges that Kifle owns the “Mereja.tv website and Mereja TV satellite
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`television channel.” TAC ¶ 4. Kifle uses the Mereja website and television channel to
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`host and broadcast media programs that cover several subjects, including news, sports,
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`1 The TAC also alleges claims against PayPal, Inc., but Kifle and PayPal subsequently stipulated
`to dismiss those claims with prejudice. See Stipulation of Dismissal with Prejudice (dkt. 65).
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`Case 3:21-cv-01752-CRB Document 71 Filed 10/05/21 Page 2 of 15
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`arts, and entertainment. Id. ¶ 15. The programming primarily caters to the Ethiopian
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`community. Id. ¶ 14.
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`Between January 2016 and November 2020, Kifle operated a “parallel” YouTube
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`channel that livestreamed Mereja programming. Id. ¶ 16. The channel had approximately
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`2,500 videos and 220,000 subscribers. Id. On November 9, 2020, YouTube “abruptly
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`terminated” a Mereja livestream airing on Kifle’s YouTube channel without “any specific
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`reason or advance warning.” Id. ¶ 10. Two days later, YouTube terminated Kifle’s
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`YouTube channel entirely, removing all of the videos posted to the channel. Id.
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`YouTube terminated Kifle’s YouTube channel because “videos that were streamed
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`in late October 2020 contain programs by a person named Zemedkun Bekele whose
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`YouTube channel was previously terminated.”2 Id. ¶ 18. YouTube explained that “hosting
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`someone whose channel was previously disabled is against its [terms of service].” Id.
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`1.
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`Copyright Allegations
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`Kifle alleges that he owns “the copyright of his works, including his live broadcast
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`titled ‘ነጭ ነጯን ከዘመዴ ጋር,’ and all audiovisual content on his copyright-protected
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`website, Mereja.tv.” Id. ¶ 13.1 (citing Kifle Declaration (dkt. 56-3) ¶¶ 2–4).
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`
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`Kifle alleges that after terminating his channel, “YouTube started allowing the Doe
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`Defendants to copy or intercept hundreds of videos from his copyrighted website and
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`television channel.” Id. ¶ 19. He alleges that “YouTube users (Defendants Does 1–19)
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`have directly infringed at least 300 of Plaintiff’s works that have been copied from his
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`website, Mereja.tv, and displayed on YouTube.com without his permission.”3 Id. ¶ 13.6.
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`The TAC includes a table that purports to identify eight “URLs of YouTube’s users or
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`content partners” that display Kifle’s copyrighted works without his permission. Id. ¶ 22,
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`2 YouTube previously explained that it suspended Zemedkun Bekele’s account “for
`posting content that promoted violence, hate speech, and harassment.” TRO Order (dkt.
`48) at 3. Following the suspension, videos of Bekele were uploaded to Kifle’s channel in
`violation of YouTube’s anti-circumvention policy. Id.
`3 As YouTube points out, Kifle’s allegations regarding the number of infringed works vary
`throughout the complaint, ranging from “256” to “over 256” to “at least 300.” MTD (dkt.
`62) at 10.
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`2
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`Northern District of California
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`United States District Court
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`

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`Case 3:21-cv-01752-CRB Document 71 Filed 10/05/21 Page 3 of 15
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`Table 1.
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`Kifle alleges that the “most harmful” form of infringement involves his live
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`broadcasts. Id. ¶ 23. He alleges that YouTube refuses “to prevent [his] live-broadcasts
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`from being simultaneously transmitted (live-streamed) entirely (whole programs) on
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`YouTube.com” by the infringing Doe Defendants. Id. Kifle alleges that he has sent
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`YouTube “48-hour advance notices before the live broadcasts,” but the broadcasts were
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`nonetheless “live-streamed on YouTube.com without [his] permission.” Id. ¶ 26.
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`The TAC includes a table with the URLs to eight YouTube channels that allegedly
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`simultaneously streamed Kifle’s broadcasts without his permission. Id. Table 2. Kifle
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`alleges that YouTube has a “repeat-infringer policy that provides for the termination of
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`users who receive 3 copyright strikes.” Id. ¶ 21. But YouTube allegedly “failed to
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`implement its repeat infringer policy” against users posting Kifle’s content. Id. ¶ 21.
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`While YouTube has “belatedly” removed some of the infringing content, “several
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`infringed videos remain on YouTube.com despite YouTube receiving valid takedown
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`requests.” Id. ¶ 27. Kifle further alleges that “YouTube’s intentional failure to prevent
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`Doe Defendants from live streaming [his] live broadcast makes YouTube liable for
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`contributory infringement.” Id. ¶ 19.
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`2.
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`Trademark Allegations
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`Kifle alleges that he “exclusively owns the trademarks ‘Mereja TV,’” which
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`translates to “Information TV,” and “‘ነጭ ነጯን ከዘመዴ ጋር,’” which translates to “The
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`Facts with Zemede.” Id. ¶ 13.2. These marks “are clearly displayed on all his works and
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`throughout his website, Mereja.tv” and thus “are distinctive marks that identify [his]
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`website, television channel, and videos.” Id. ¶¶ 29–30. Kifle also “owns a pending U.S.
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`federal trademark application for Mereja TV.” Id. ¶ 33.
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`According to the TAC, it “is indisputable that ‘Mereja TV’ has achieved an
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`unequivocal secondary meaning.” Id. ¶ 36. A “quick search” on various search engines
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`shows that the mark “is uniquely and distinctly associated with Plaintiff’s website and
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`television channel.” Id. For example, a Google search for “‘Mereja TV’ returns 800,000
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`Case 3:21-cv-01752-CRB Document 71 Filed 10/05/21 Page 4 of 15
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`results that refer ONLY to Plaintiff’s website or satellite television channel.” Id. Kifle
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`also alleges that “‘Mereja TV’ has acquired distinctiveness by becoming a universally
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`recognized brand among its audience who speak Amharic language.” Id. ¶ 37.
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`Kifle further alleges that “ነጭ ነጯን ከዘመዴ ጋር” has “similarly strong secondary
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`meaning in distinctly identifying only Plaintiff’s television program that is live-broadcast
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`at least 4 times per week.” Id. ¶ 38. In particular, a “Google search for the keywords ‘ነጭ
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`ነጯን ከዘመዴ ጋር’ returns 19,400 results, all of which point to Plaintiff’s works.” Id.
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`As with the allegedly infringing videos, Kifle alleges that he sent “multiple requests
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`asking YouTube to remove all materials on YouTube.com that infringe on his protected
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`marks,” but YouTube continues to allow the infringement. Id. ¶¶ 44–45. He alleges that
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`“YouTube is liable for contributory and vicarious infringement because it allowed several
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`repeat infringers to steal Plaintiff’s trademark despite receiving valid cease and desist
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`notices.” Id. ¶ 39.
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`3.
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`Breach of Contract
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`Kifle alleges that he had an agreement with YouTube “that his videos will not be
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`removed from Youtube [sic] as long as they comply with [YouTube’s terms of service].”
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`Id. ¶ 55. Kifle contends that YouTube violated this agreement by removing his videos “for
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`no good reason.” Id.
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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
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`dismissed for failure to state a claim upon which relief may be granted. Fed. R. Civ. P.
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`12(b)(6). Rule 12(b)(6) applies when a complaint lacks either “a cognizable legal theory”
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`or “sufficient facts alleged” under such a theory. Godecke v. Kinetic Concepts, Inc., 937
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`F.3d 1201, 1208 (9th Cir. 2019). Whether a complaint contains sufficient factual
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`allegations depends on whether it pleads enough facts to “state a claim to relief that is
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`plausible on its face.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citing Bell Atlantic
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`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
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`Case 3:21-cv-01752-CRB Document 71 Filed 10/05/21 Page 5 of 15
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`defendant is liable for the misconduct alleged.” Id. at 678. This is not a “probability
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`requirement,” but it requires more than a “sheer possibility” that the defendant is liable:
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`“Where a complaint pleads facts that are merely consistent with a defendant’s liability, it
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`stops short of the line between possibility and plausibility of entitlement to relief.” Id.
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`(quoting Twombly, 550 U.S. at 557).
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`Courts should allow a plaintiff leave to amend unless amendment would be futile.
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`Cook, Perkiss & Liehe, Inc. v. N. Cal. Collection Serv. Inc., 911 F.2d 242, 246–47 (9th
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`Cir. 1990). To determine whether amendment would be futile, courts examine whether the
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`complaint can be amended to cure the defect requiring dismissal “without contradicting
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`any of the allegations of [the] original complaint.” Reddy v. Litton Indus., Inc., 912 F.2d
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`291, 296 (9th Cir. 1990).
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`III. DISCUSSION
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`A.
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`Contract Claims
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`Kifle’s contract claims center on YouTube’s ability to terminate Kifle’s account and
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`remove the posted content. See, e.g., TAC ¶¶ 18, 57. Section 230 of the Communications
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`Decency Act forecloses these claims as a matter of law. Because the complaint cannot be
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`amended to cure this deficiency, the Court dismisses the contract claims with prejudice.
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`1.
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`Section 230
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`YouTube argues that Section 230 of the Communications Decency Act forecloses
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`Kifle’s contract claims. MTD at 8. The primary purpose of Section 230 is twofold: “to
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`promote the free exchange of information and ideas over the Internet and to encourage
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`voluntary monitoring for offensive or obscene material.” Carafano v. Metrosplash.com,
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`Inc., 339 F.3d 1119, 1122 (9th Cir. 2003). To these ends, Section 230(c)(1) creates certain
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`protections for internet service providers. See generally id. Specifically, Section 230(c)(1)
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`“protects from liability (1) a provider or user of an interactive computer service (2) whom
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`a plaintiff seeks to treat, under a state law cause of action, as a publisher or speaker (3) of
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`information provided by another information content provider.” Barnes v. Yahoo!, Inc.,
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`570 F.3d 1096, 1100–01 (9th Cir. 2009), as amended (Sept. 28, 2009). These elements are
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`Case 3:21-cv-01752-CRB Document 71 Filed 10/05/21 Page 6 of 15
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`to be construed broadly in favor of immunity. See Carafano, 339 F.3d at 1123 (“reviewing
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`courts have treated § 230(c) immunity as quite robust”).
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`Applying these elements here, Section 230(c)(1) bars Kifle’s contract claims. First,
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`“interactive computer service” is broadly defined, see 47 U.S.C. § 230(f)(2), and multiple
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`courts in the Northern District have held that YouTube is a provider of interactive
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`computer services within the meaning of Section 230(c)(1). E.g. Lancaster v. Alphabet
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`Inc., 2016 WL 3648608, at *3 (N.D. Cal. July 8, 2016); Gavra v. Google Inc., 2013 WL
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`3788241, at *3 (N.D. Cal. July 17, 2013). This Court agrees.
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`Second, Kifle’s contract claims arise under state law and rest on YouTube’s actions
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`as a “publisher.” In this regard, “what matters is not the name of the cause of action,” but
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`“whether the cause of action inherently requires the court to treat the defendant as the
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`‘publisher or speaker’ of content provided by another.” Barnes, 570 F.3d at 1102–03.
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`Here, Kifle seeks to hold YouTube liable for removing content, but “removing content is
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`something publishers do, and to impose liability on the basis of such conduct necessarily
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`involves treating the liable party as a publisher.” Fed. Agency of News LLC v. Facebook,
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`Inc., 432 F. Supp. 3d 1107, 1119 (N.D. Cal. 2020) (citation and emphasis omitted); Riggs
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`v. MySpace, Inc., 444 F. App’x 986, 987 (9th Cir. 2011) (Section 230(c)(1) immunizes
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`decision to remove user profile); Fair Housing Council of San Fernando Valley v.
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`Roommates.com, LLC, 521 F.3d 1157, 1170–71 (9th Cir. 2008) (“any activity that can be
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`boiled down to deciding whether to exclude material that third parties seek to post online is
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`perforce immune under section 230”).
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`Third, Kifle’s contract claims stem from “information provided by another
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`information content provider,” namely Kifle himself. Barnes, 570 F.3d at 1100–01.
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`Thus, Section 230(c)(1) precludes Kifle’s contract claims.4
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`4 Because the Court finds that Section 230(c)(1) forecloses Kifle’s contract claims, it does not
`consider whether those claims are separately barred by Section 230(c)(2). Nor does it reach
`YouTube’s other arguments regarding the viability of the contract claims.
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`Case 3:21-cv-01752-CRB Document 71 Filed 10/05/21 Page 7 of 15
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`B.
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`Copyright Claims
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`Kifle alleges that “YouTube’s intentional failure to prevent Doe Defendants from
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`live streaming [his] live broadcast makes YouTube liable for contributory infringement.”
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`Id. ¶ 19. The TAC fails to plausibly allege this claim for two separate reasons: (1) it fails
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`to plausibly allege that Kifle complied with 17 U.S.C. § 411; and (2) it fails to plausibly
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`allege that YouTube had knowledge of the alleged infringement.
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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 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
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`“occurs, and a copyright claimant may commence an infringement suit, when the
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`Copyright Office registers a copyright.” Fourth Estate Pub. Benefit Corp. v. Wall-
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`Street.com, LLC, 139 S. Ct. 881, 887 (2019). Consistent with other district courts in the
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`Ninth Circuit, this Court holds that a plaintiff must have registered the relevant work
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`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 file an
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`infringement suit for works “the first fixation of which is made simultaneously with its
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`transmission” without first registering the works. See 17 U.S.C. § 411(c). To qualify for
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`this exception, the copyright owner must (1) serve “notice upon the infringer, not less than
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`48 hours before such fixation, identifying the work and the specific time and source of its
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`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
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`months after its 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
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`the Register of Copyright shall prescribe by regulation.” 17 U.S.C. § 411(c). The relevant
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`regulations require that the service of the “Advance Notice” be made “on the person
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`responsible for the potential infringement” within the 48-hour window. 37 C.F.R. §
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`201.22(e)(1). They also require that the copyright owner sign the notice with “an actual
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`handwritten signature,” though if the notice is served via email, the handwritten signature
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`requirement “shall be considered waived” if the other service requirements enumerated in
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`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) 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
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`potential infringement receives written confirmation of the Advance Notice, bearing the
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`actual handwritten signature of the copyright owner or duly authorized agent.” Id. §
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`201.22(e)(iii)(B). Thus, Advance Notice generally requires a handwritten signature, but
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`not if Advance Notice is sent through email, so long as the proper recipient timely receives
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`written confirmation of the Advance Notice and that written confirmation includes a
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`handwritten signature. Id.
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`If the § 411 procedural requirements are met, a plaintiff may state a prima facie case
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`of copyright infringement by making two showings: “(1) they must show ownership of the
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`allegedly infringed material and (2) they must demonstrate that the alleged infringers
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`violate at least one exclusive right granted to copyright holders under 17 U.S.C. § 106.”
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`A&M Recs., Inc. v. Napster, Inc., 239 F.3d 1004, 1013 (9th Cir. 2001).
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`To show secondary infringement (i.e., “contributory” or “vicarious” infringement),
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`a plaintiff must first “establish that there has been direct infringement by third parties.”
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`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
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`intentionally 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 fails for two separate reasons: (1) Kifle does not plausibly
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`allege compliance with § 411 and (2) Kifle does not plausibly allege that YouTube had
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`knowledge of the alleged infringement.
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`a.
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`Section 411
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`In its TRO Order, the Court held that Kifle had “not shown a likelihood of success
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`Case 3:21-cv-01752-CRB Document 71 Filed 10/05/21 Page 9 of 15
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`on the merits of his copyright claim” in the SAC because he had “not plausibly alleged that
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`he obtained a copyright registration for any relevant video before initiating this lawsuit.”
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`TRO Order at 9. The TAC does not cure this deficiency.
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`As discussed, § 411(a) generally requires a copyright holder to obtain copyright
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`registration before bringing an infringement action. Here, the TAC fails to establish
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`compliance with this requirement for any pre-recorded videos. In fact, it does not identify
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`any pre-recorded videos for which Kifle allegedly obtained copyright registration before
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`filing suit. Thus, § 411(a) bars any claim based on any pre-recorded works.
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`The TRO Order also held that the Ҥ 411(c) simultaneous transmission exception to
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`§ 411(a) does not apply here” because Kifle “does not allege that YouTube received
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`written confirmation of the Advance Notice bearing his handwritten signature.” TRO
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`Order at 10. This deficiency remains.
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`Section 411(c) requires a plaintiff to serve an Advance Notice “on the person
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`responsible for the potential infringement” that bears “the actual handwritten signature of
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`the copyright owner or duly authorized agent.” 37 C.F.R. § 201.22(e)(2)(iii)(B). Kifle
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`alleges that he served Advance Notices that “contain his actual handwritten signature”
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`(TAC ¶ 13.9), but Exhibit 1 contradicts that allegation. Exhibit 1 (dkt. 56-2) at 6. Exhibit
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`1 clearly displays a digital signature, not an “actual handwritten signature” as the
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`regulations require. See 37 C.F.R. § 201.22(e)(2)(iii)(B).
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`In addition, § 411(c) requires that the Advance Notice be served on the “person
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`responsible for the infringement.” Id. The TAC also fails to allege compliance with this
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`requirement. The TAC alleges that Advance Notice was served upon YouTube (TAC ¶
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`13.9), but it does not allege that it was served upon any of the individuals or entities who
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`were responsible for the direct infringement (i.e. the YouTube users directly responsible
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`for uploading Kifle’s live-broadcasts without his permission).
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`For both reasons, Kifle has failed to plead compliance with § 411(c) to the extent
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`that his claims are based on infringement of live-streamed broadcasts.
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`b.
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`Knowledge of Infringement
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`To state a claim for secondary infringement, a plaintiff must allege in part that a
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`defendant “has knowledge of a third party’s infringing activity.” Perfect 10, Inc. v. Visa
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`Int’l Serv. Ass’n, 494 F. 3d 788, 795 (9th Cir. 2007) (internal quotation omitted). This
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`“requires more than a generalized knowledge by [defendants] of the possibility of
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`infringement.” Luvdarts, LLC v. AT&T Mobility, LLC, 710 F. 3d 1068, 1072 (9th Cir.
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`2013).
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`The TAC does not adequately allege that YouTube had knowledge of the alleged
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`infringement. It generally contains only conclusory allegations that YouTube was aware
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`of the alleged infringement. See, e.g., TAC ¶ 83 (alleging “Youtube [sic] has actual and
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`constructive knowledge that Youtubers are employing Youtube.com’s live stream feature
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`to intercept Plaintiff’s copyrighted live broadcasts”). These “threadbare” assertions are
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`insufficient to state a claim for contributory infringement. See Epikhin v. Game Insight N.
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`Am., No. 14-CV-04383-LHK, 2015 WL 2412357, at *4 (N.D. Cal. May 20, 2015).
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`Moreover, the TAC largely fails to identify any specific works that Kifle claims
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`were infringed. At best, Kifle alleges that YouTube received a notice that identified
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`certain channels that had previously broadcast Kifle’s program without his permission and
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`that provided a schedule of upcoming live broadcasts. See TAC ¶ 26. But the notice does
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`not establish that YouTube was aware of any of the past infringement on the channels
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`identified in the notice. Nor does the notice establish that any of the suspected future
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`infringement occurred, much less that YouTube was aware of it to the extent that it did.
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`The complaint is otherwise devoid of any specific allegation tending to suggestion that
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`YouTube had knowledge of specific acts of infringement. The copyright claims thus
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`separately fail on this ground.
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`C.
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`Trademark Claims
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`Kifle alleges that he owns two protectable marks: “Mereja TV” and “ነጭ ነጯን
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`ከዘመዴ ጋር.” He alleges that YouTube is liable for contributory infringement because it
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`“allowed several repeat infringers to steal Plaintiff’s trademark despite receiving valid
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`cease and desist notices.” TAC ¶ 39.
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`Case 3:21-cv-01752-CRB Document 71 Filed 10/05/21 Page 11 of 15
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`1.
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`Applicable Law
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`To prevail on a direct trademark infringement claim, a plaintiff must show that “(1)
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`it has a valid, protectable trademark,” and (2) the defendant’s “use of the mark is likely to
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`cause confusion.” Applied Info. Sciences Corp. v. eBAY, Inc., 511 F.3d 966, 969 (9th Cir.
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`2007). A defendant can be held liable for a third party’s infringing acts if the defendant
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`“intentionally induces another to infringe a trademark, or if [the defendant] continues to
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`supply its product to one whom it knows or has reason to know is engaging in trademark
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`infringement.” Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 854 (1982).
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`Whether a plaintiff asserts a claim for direct or indirect trademark infringement, the
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`threshold question is whether the relevant language used in connection with a product is
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`“entitled to protection.” Applied Info. Sciences Corp., 511 F.3d at 969 (citation omitted).
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`A plaintiff may establish a “protectable interest” by showing that “(1) it has a federally
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`registered mark . . .; (2) its mark is descriptive but has acquired a secondary meaning in the
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`market; or (3) it has a suggestive mark, which is inherently distinctive and protectable.”
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`Id. at 970.
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`2.
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`Application
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`a.
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`Protectable Mark
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`Kifle plausibly alleges that both “Mereja TV” and “ነጭ ነጯን ከዘመዴ ጋር” are
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`protectable marks. Applied Info. Sciences Corp., 511 F.3d at 969.
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`To start, the trademark application for “Mereja TV” is pending, TAC ¶ 33, and
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`“ነጭ ነጯን ከዘመዴ ጋር” has “yet to be registered.” Id. ¶ 38. Trademark protection for
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`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., No. EDCV
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`19-46 JGB (SPX), 2019 WL 1091337, at *4 (C.D. Cal. Jan. 18, 2019). Thus, the question
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`is whether Plaintiff adequately alleges that either mark is “inherently distinctive” or has
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`acquired “secondary meaning.”
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`i.
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`Inherent Distinctiveness
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`For purposes of determining “inherent distinctiveness,” a mark is placed into “one
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`of five categories of increasing distinctiveness: (1) generic, (2) descriptive, (3) suggestive,
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`(4) arbitrary, or (5) fanciful.” Pinterest Inc. v. Pintrips Inc., 15 F. Supp. 3d 992, 998 (N.D.
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`Cal. 2014) (citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992)).
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`Marks that are suggestive, arbitrary, or fanciful are inherently distinctive and entitled to
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`federal trademark protection. Id. Descriptive marks only receive protection if they have
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`acquired secondary meaning. Id. Generic marks are not entitled to trademark protection.
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`Id.
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`The Court previously held that Plaintiff failed to plausibly allege a theory under
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`which either “Mereja TV” (which translates to “Information TV”) or “ነጭ ነጯን ከዘመዴ
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`ጋር” (which translates to “The Facts with Zemede”) are suggestive, arbitrary, or fanciful.
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`TRO at 11–12. Instead, the Court held that both marks merely describe “the channel and
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`program” and thus are properly characterized as descriptive marks. Id.; see also Two
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`Pesos, Inc., 505 U.S. at 769 (“Marks which are merely descriptive of a product are not
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`inherently distinctive.”). The TAC does not make any additional allegations that suggest
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`that either mark is suggestive, arbitrary, or fanciful. See TAC ¶¶ 29–42. The Court thus
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`finds that both marks are descriptive. Accordingly, they are only eligible for protection if
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`Plaintiff has adequately alleged that they acquired secondary meaning. See Pinterest Inc.,
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`15 F. Supp. 3d at 998.
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`ii.
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`Secondary Meaning
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`The TAC plausibly alleges that both marks have acquired secondary meaning. The
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`“basic element of secondary meaning” is whether consumers associate a given mark with a
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`particular source. Levi Strauss & Co. v. Blue Bell, Inc., 632 F.2d 817, 820 (9th Cir. 1980);
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`Carter-Wallace, Inc. v. Proctor & Gamble Co., 434 F.2d 794, 802 (9th Cir. 1970)
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`(“secondary meaning has been defined as association nothing more”). Whether a mark
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`“has acquired secondary meaning” is ordinarily “a question of fact.” Levi Strauss & Co.,
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`632 F.2d at 821.
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`The TAC makes the following allegations regarding secondary meaning: Kifle has
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`been using “Mereja TV” since January 2016 and “ነጭ ነጯን ከዘመዴ ጋር” since November
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`2019, see TAC ¶ 30; “Mereja TV” is displayed on Kifle’s “website, television channel, and
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`videos,” id. ¶ 29; “ነጭ ነጯን ከዘመዴ ጋር” is the title of a television program that Kifle
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`produces “several times per week,” id. ¶ 30; the marks yield significant numbers of search
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`returns on Google and YouTube, id. ¶¶ 36, 38; the Mereja channel has “millions” of
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`viewers, id. ¶ 37; and the “Mereja TV Facebook Page has over 5 million weekly video
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`views.” Id.
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`These allegations plausibly establish that the “Mereja TV” mark has acquired
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`secondary meaning. Kifle has been using the mark since 2016 on a channel that has a
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`large audience, runs programs that receive millions of weekly views, and maintains a
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`presence on multiple online platforms. Viewed in the light most favorable to Kifle, these
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`allegations suggest that the mark has become associated in viewers’ mind with Kifle’s
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`channel.5 Solid Host, NL v. Namecheap, Inc., 652 F. Supp. 2d 1092, 1108 (C.D. Cal.
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`2009) (regular use of a mark for several years suggests it “has become associated in
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`customer’s minds with the company’s services”).
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`Similarly, the TAC alleges that “ነጭ ነጯን ከዘመዴ ጋር” has been in use since
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`November 2019. The program airs “several times per week” and the mark is displayed
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`throughout Kifle’s website. TAC ¶ 30. The program also has a large viewership and a
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`presence on multiple online platforms. Thus, viewed in the light most favorable to Kifle,
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`the TAC plausibly alleges that “ነጭ ነጯን ከዘመዴ ጋር” received the broad exposure
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`required to develop an association in consumers’ minds.
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`b.
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`Contributory Infringement
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`Kifle alleges that YouTube is liable for contributory infringement because it
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`allowed “several repeat infringers to steal Plaintiff’s trademark despite receiving valid
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`cease and desist notices.” TAC ¶¶ 39–40, 91–92.
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`5 YouTube argues that the TAC fails to adequately allege that either mark acquired secondary
`meaning “in the United States market.” Mot. at 15–16. But contrary to YouTube’s argument, it is
`not “clear that Plaintiff is primarily claiming recognition abroad,” and viewed in the light most
`favorable to Plaintiff, it is reasonable to infer that the recognition is primarily in the United States
`market. Id. at 15.
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`

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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
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`infringing product to an infringer with knowledge that the infringer is mislabeling the
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`particular product supplied.” Perfect 10, Inc, 494 F.3d at 807 (citing Inwood Labs., Inc. v.
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`Ives Labs., Inc., 456 U.S. 844 855 (1982)).
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`Kifle has failed to plead a claim for infringement under either theory of liability.
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`Kifle alleges no facts showing that YouTube “intentionally induced” infringement of either
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`mark. Rat