Davis v. Blue Tongue Films

• Court: Court of Appeals for the Ninth Circuit
• Decided: December 20, 2024
• Docket: 23-3968
• Status: Unpublished

Opinion

NOT FOR PUBLICATION FILED UNITED STATES COURT OF APPEALS DEC 20 2024 MOLLY C. DWYER, CLERK U.S. COURT OF APPEALS FOR THE NINTH CIRCUIT

DANIEL E. DAVIS; PETER No. 23-3968 CONTI; GRINGO HOLDINGS, LLC, D.C. No. 2:21-cv-02090-JVS-JDE Plaintiffs - Appellants,

v. MEMORANDUM*

BLUE TONGUE FILMS; DENVER AND DELILAH PRODUCTIONS; A. J. DIX; NASH EDGERTON; EROS INTERNATIONAL MEDIA LTD.; TRISH HOFFMAN; BETH KONO; MATTHEW STONE; ANTHONY TAMBAKIS; CHARLIZE THERON; REBECCA YELDHAM,

Defendants - Appellees.

Appeal from the United States District Court for the Central District of California James V. Selna, District Judge, Presiding

Argued and Submitted December 4, 2024 Pasadena, California

Before: BYBEE, IKUTA, and BADE, Circuit Judges. Dissent by Judge IKUTA.

* This disposition is not appropriate for publication and is not precedent except as provided by Ninth Circuit Rule 36-3. Plaintiff-Appellants Daniel E. Davis, Peter Conti, and Gringo Holdings,

LLC (collectively, Authors) appeal the district court’s order dismissing their

second amended complaint (SAC) with prejudice. We have jurisdiction under 28

U.S.C. § 1291. See Iten v. County of Los Angeles, 81 F.4th 979, 983 (9th Cir.

2023). We reverse and remand for further proceedings consistent with this

disposition.

We review de novo the district court’s dismissal under Federal Rule of Civil

Procedure 12(b)(6), taking “all well-pleaded factual allegations in the complaint as

true” and “construing them in the light most favorable to the nonmoving party.”

Abcarian v. Levine, 972 F.3d 1019, 1022 (9th Cir. 2020) (internal quotation marks

omitted) (quoting Keates v. Koile, 883 F.3d 1228, 1234 (9th Cir. 2018)). The SAC

alleges that Authors published a book in 2016 entitled “Gringo” (the Book), which

details Davis’s experiences as an American fugitive who fled to Mexico to escape

prosecution for drug charges after being “set-up by a ‘friend.’” In 2018,

Defendant-Appellees1 (Filmmakers) released a movie, also entitled “Gringo” (the

Movie), about an American pharmaceutical company employee who travels to

Mexico on business and, while there, fakes his own kidnapping after learning the

1 Defendant-Appellees are Blue Tongue Films, Denver and Delilah Productions, A.J. Dix, Nash Edgerton, EROS International Media Ltd., Trish Hoffman, Beth Kono, Mathew Stone, Anthony Tambakis, Charlize Theron, and Rebecca Yeldham.

2 23-3968 company is selling pharmaceuticals to a cartel. Based on the works’ titles, Authors

sued Filmmakers for trademark infringement in violation of the Lanham Act and

unfair competition in violation of California Business and Professions Code

§ 17200.

1. In reviewing a dismissal under Rule 12(b)(6), we may consider only

“the complaint, materials incorporated into the complaint by reference, and matters

of which the court may take judicial notice.” Abcarian, 972 F.3d at 1022 (quoting

Metzler Inv. GMBH v. Corinthian Colls., Inc., 540 F.3d 1049, 1061 (9th Cir.

2008)). We consider physical copies of the Book and the Movie under the

incorporation-by-reference doctrine. See Khoja v. Orexigen Therapeutics, Inc.,

899 F.3d 988, 1002–03 (9th Cir. 2018). We decline to take judicial notice of the

existence of other creative works entitled “Gringo” based on the screenshots of

Amazon.com webpages submitted by Filmmakers.2 See id. at 999–1000

(distinguishing between judicial notice of the existence of a document and judicial

notice of the facts the document establishes).

2. To prevail on a Lanham Act trademark infringement claim, Authors

must show they have “a valid, protectable trademark.” Applied Info. Scis. Corp. v.

2 We assume without deciding that Filmmakers properly framed their request for judicial notice as a new request, instead of an argument that the district court abused its discretion in declining to notice these webpages. Khoja, 899 F.3d at 998 (a district court’s “decision to take judicial notice and/or incorporate documents by reference is reviewed for an abuse of discretion”).

3 23-3968 eBAY, Inc., 511 F.3d 966, 969 (9th Cir. 2007). Assuming without deciding that the

“Gringo” title (which is not federally registered) is a descriptive mark,3 the SAC

plausibly alleges that the title has acquired a secondary meaning in the market and

is thus protectable. See id. at 969–70; see also Japan Telecom, Inc. v. Japan

Telecom Am. Inc., 287 F.3d 866, 873 (9th Cir. 2002) (“Secondary meaning is a

question of fact . . . .”). Specifically, the SAC alleges that the Book quickly

became “an Amazon #1 Bestseller” after its publication in 2016, has been “widely

recognized with favorable reviews” in major news publications, and is so popular

that Davis is “regularly recognized in public.” The SAC further alleges that Davis

traveled “worldwide” to promote the Book and that the Movie’s use of “Gringo”

has created “widespread confusion” among customers, who mistakenly associate

the Movie with the Book. Japan Telecom, 287 F.3d at 873–75 (evidence of

secondary meaning may include advertising efforts and the length and manner of

the alleged trademark’s use); Am. Sci. Chem., Inc. v. Am. Hosp. Supply Corp., 690

F.2d 791, 793 (9th Cir. 1982) (consumer confusion is “an indicium of secondary

meaning”). It also alleges that Filmmakers changed the Movie’s title from

“American Express” to “Gringo” after the Book’s commercial success on

3 We do not decide whether (and under what circumstances) the title of a single book could be an inherently distinctive mark that is protectable without a showing of secondary meaning. See 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 10:2 (5th ed. 2024).

4 23-3968 Amazon.com to falsely suggest the two works are associated and chose a similar

typeface as the Book’s title to bolster this assumption. See P & P Imps. LLC v.

Johnson Enters., LLC, 46 F.4th 953, 961 (9th Cir. 2022) (evidence of copying

“strongly supports an inference of secondary meaning” (quoting Vision Sports, Inc.

v. Melville Corp., 888 F.2d 609, 615 (9th Cir. 1989))). These allegations support a

plausible inference that actual and potential buyers recognize works connected

with the “Gringo” title as “associated with the same source.” Japan Telecom, 287

F.3d at 873 (quoting Self-Realization Fellowship Church v. Ananda Church of Self-

Realization, 59 F.3d 902, 911 (9th Cir. 1995)).

3. The Rogers test does not apply at this stage in the proceedings

because the SAC plausibly alleges that the Movie uses “Gringo” as a source

identifier. Jack Daniel’s Props., Inc. v. VIP Prods. LLC, 599 U.S. 140, 153 (2023)

(holding that the Rogers test does not apply when the alleged infringer uses the

mark “as a designation of source for the infringer’s own goods”); see Rogers v.

Grimaldi, 875 F.2d 994, 998 (2d Cir. 1989). The SAC’s allegations that

Filmmakers chose the titular mark “Gringo” to suggest an association between the

Book and Movie, displayed the mark in similar ways, and distributed the Movie

through the same commercial platform support a plausible inference that

Filmmakers used the “Gringo” title to identify the source of the Movie. We reject

Filmmakers’ arguments that this case is like Mattel, Inc. v. MCA Records, Inc., 296

5 23-3968 F.3d 894 (9th Cir. 2002), because the SAC alleges that Filmmakers used “Gringo”

not merely to convey a message about the Movie’s plot but also to garner attention

by “exploiting the goodwill, public recognition and commercial success enjoyed by

the Book,” see id. at 901.

4. To state a claim for trademark infringement under the Lanham Act,

the plaintiff must plead facts supporting an inference that “a reasonably prudent

consumer in the marketplace is likely to be confused as to the origin of the good or

service bearing one of the marks.” Punchbowl, Inc. v. AJ Press, LLC, 90 F.4th

1022, 1027 (9th Cir. 2024) (internal quotation marks omitted) (quoting

Dreamwerks Prod. Grp. v. SKG Studio, 142 F.3d 1127, 1129 (9th Cir. 1998)); see

also Jack Daniel’s, 599 U.S. at 156. To determine whether a consumer is likely to

be confused, we weigh the eight Sleekcraft factors. Punchbowl, 90 F.4th at 1027;

see also Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137,

1145 (9th Cir. 2011) (“The Sleekcraft factors are . . . not a rote checklist.”).4

Because the inquiry is “open-ended,” we have cautioned that summary judgment

rulings based on the Sleekcraft factors should be granted “sparingly, as careful

4 The Sleekcraft factors are: “(1) strength of the mark; (2) [relatedness] of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant’s intent in selecting the mark; and (8) likelihood of expansion of the product lines.” Punchbowl, 90 F.4th at 1027 (quoting AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–49 (9th Cir. 1979)).

6 23-3968 assessment of the pertinent factors that go into determining likelihood of confusion

usually requires a full record.” Rearden LLC v. Rearden Com., Inc., 683 F.3d

1190, 1210 (9th Cir. 2012) (quoting Thane Int’l, Inc. v. Trek Bicycle Corp., 305

F.3d 894, 901–02 (9th Cir. 2002)). This concern is even more pronounced at the

pleadings stage. See 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair

Competition § 32:121.50 (5th ed. 2024) (“[G]rants of motions to dismiss are the

exception, not the rule.”). But “[i]f the court determines as a matter of law from

the pleadings that the goods are unrelated and confusion is unlikely, the complaint

should be dismissed.” Murray v. Cable Nat’l Broad. Co., 86 F.3d 858, 860 (9th

Cir. 1996), as amended (Aug. 6, 1996).

Taking the allegations in the SAC as true, the “Gringo” titles are not so

dissimilar as to preclude as a matter of law “any plausible likelihood of

confusion.” Jack Daniel’s, 599 U.S. at 157 n.2. The SAC plausibly alleges that

the Book’s “Gringo” title has some amount of commercial strength, that the marks

are similar in appearance and identical in sound and meaning, that the Book and

Movie are related goods, and that Filmmakers chose “Gringo” as the Movie’s title

knowing it would cause consumers to associate the two. See Entrepreneur Media

Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) (“When the alleged infringer

knowingly adopts a mark similar to another’s, reviewing courts presume that the

defendant can accomplish his purpose: that is, that the public will be deceived.”

7 23-3968 (quoting Sleekcraft, 599 F.2d at 354)); cf. Murray, 86 F.3d at 859, 861 (concluding

that a market research business operating under the name “America Speaks” and a

cable television network entitled “America’s Talking” were unrelated as a matter

of law). We therefore reverse the district court’s dismissal of Authors’ Lanham

Act claim.

5. For the same reason, we reverse the dismissal of Authors’ claim for

unfair competition in violation of California Business and Professions Code

§ 17200, which is “substantially congruent” to their Lanham Act claim. Cleary v.

News Corp., 30 F.3d 1255, 1262 (9th Cir. 1994) (quoting Acad. of Motion Picture

Arts & Scis. v. Creative House Promotions, Inc., 944 F.2d 1446, 1457 (9th Cir.

1991)) (collecting cases); see also Entrepreneur Media, 279 F.3d at 1153

(reversing and remanding grant of summary judgment on both a trademark

infringement claim and a § 17200 unfair competition claim based on disputed

issues of fact as to some of the Sleekcraft factors).

REVERSED and REMANDED.

8 23-3968 FILED Davis v. Blue Tongue Films, No. 23-3968 DEC 20 2024 Ikuta, J., dissenting MOLLY C. DWYER, CLERK U.S. COURT OF APPEALS The word “gringo” is a well-known pejorative for English-speaking Anglo-

Americans. It most strongly suggests an insult. Here, Davis’s second amended

complaint does not plausibly allege that the word “Gringo” used as a book title has

acquired secondary meaning.

A mark acquires secondary meaning in the minds of consumers when it

distinguishes the source of goods. See Japan Telecom, Inc. v. Japan Telecom Am.

Inc., 287 F.3d 866, 873 (9th Cir. 2002). Taking the second amended complaint’s

allegations as true, Davis does not plausibly allege that consumers associate the

derogatory term “Gringo” with the source of his book.

The second amended complaint alleges that the book is an Amazon

bestseller, has favorable reviews, and that Davis is recognized in public.

These allegations could apply to numerous books and products sold by Amazon,

and are insufficient to suggest that consumers associate the word “Gringo” with a

particular source. The complaint also alleges that the film title has generated

widespread confusion, but this is a bare legal conclusion we should disregard. See

Ashcroft v. Iqbal, 556 U.S. 662, 664 (2009). And Davis’s allegation that the

Filmmakers changed the title to piggy-back on the success of Davis’s book is

implausible, given the more likely conclusion that the Filmmakers considered

1 “Gringo” a more appealing title than “American Express,” which signifies a credit

card. Id. at 681.

Because I would affirm the district court on the ground that Davis has not

plausibly alleged that the term “Gringo” has acquired second meaning, I

respectfully dissent.