1 2 3 4 5 IN THE UNITED STATES DISTRICT COURT 6 FOR THE NORTHERN DISTRICT OF CALIFORNIA 7 8 ELIAS KIFLE, Case No. 21-cv-01752-CRB
9 Plaintiff,
ORDER GRANTING MOTION TO 10 v. DISMISS WITH PREJUDICE
11 YOUTUBE LLC, et al., 12 Defendants.
13 Pro se Plaintiff Elias Kifle is suing Defendants YouTube and Does 1–19 for 14 contributory trademark infringement. Fifth Am. Compl. (5AC) (dkt. 82-1). Kifle alleges 15 that YouTube knowingly continued service to users who infringed Kifle’s trademark. Id. 16 ¶ 7. The Court dismissed Kifle’s last complaint with leave to amend this claim. See Order 17 Dismissing 4AC (dkt. 81). Because Kifle fails to cure the deficiencies previously noted, 18 the Court GRANTS the motion with prejudice. 19 I. BACKGROUND 20 Kifle alleges that YouTube contributed to trademark infringement of two 21 protectable marks in his videos. 5AC ¶ 7. Kifle alleges that he “exclusively owns the 22 trademarks ‘Mereja TV’ and ‘ነጭ ነጯን ከዘመዴጋር,’” which are “clearly displayed on all 23 his works and throughout his website, Mereja.tv” and “are distinctive marks that identify 24 [his] website, television channel, and videos.” Id. ¶¶ 11, 16. Since November 2020, Kifle 25 alleges that YouTube users have directly infringed “at least 300 of Plaintiff’s works and 26 protected marks that have been copied from his website, Mereja.tv, and displayed on 27 YouTube.com without his permission.” Id. ¶ 13. Kifle alleges that he sent YouTube 1 materials that other users were allegedly infringing. Id. ¶ 23. Yet Kifle asserts that his 2 trademarked material remained on YouTube’s platform. Id. ¶ 25. 3 Previously, the Court dismissed Kifle’s contributory trademark claim as to his 4 putative claim “Mereja TV” after deferring to the PTO’s decision that it was “merely 5 descriptive” and therefore not a protected mark. Order Dismissing 4AC at 8 (citing Lahoti 6 v. VeriCheck, Inc., 586 F.3d 1190, 1199 (9th Cir. 2009)).1 The Court then dismissed 7 Kifle’s contributory trademark claim as to his putative “‘ነጭ ነጯን ከዘመዴጋር” trademark 8 because Kifle did not sufficiently allege that YouTube had particularized knowledge of 9 instances of direct infringement of that mark. The Court explained exactly what additional 10 factual allegations Kifle had to include in his next complaint. The Court stated:
11 Kifle still does not sufficiently allege (1) that YouTube had knowledge, or reason to know, that these specific users were in 12 fact infringing the trademark; and (2) that YouTube continued to provide service to those specific users. First, while Kifle’s 13 most recent notice to YouTube was more detailed, it still did not clearly indicate to YouTube that the links contained the 14 protected mark. For example, there are no screenshots or timestamps that indicate to YouTube that the links contained 15 the trademark. Without more specificity, the Court cannot impute to YouTube the necessary “particularized knowledge” 16 of the infringement. Second, Kifle must specifically allege in his complaint that YouTube continued to provide service to 17 those specific channels he flagged in his most recent letter, and he should include a date and perhaps a screenshot. 18 Order Dismissing 4AC at 10 (citations omitted). The Court also emphasized that Kifle still 19 alleged infringement in videos that YouTube had long ago removed, and explained that 20 further amendments should identify YouTube’s knowledge of, and inaction as to, new 21 instances of infringement: 22 The Court also recommends that Kifle clearly identify in his 23 complaint which videos and channels are past alleged infringers (as to which he may not have provided YouTube 24 sufficient particularized knowledge) and which alleged infringers he notified YouTube of most recently. Kifle 25 inadequately pleaded that YouTube had knowledge of past infringement, and YouTube appears to no longer be servicing 26 many of those older videos. Consequently, Kifle must clearly allege (1) that YouTube continued to provide service to 27 specific recent infringers despite (2) YouTube having reason to 1 know that those specific users were infringing Kifle’s mark. 2 Id. at 10 n.3. 3 In his newest complaint, Kifle includes just two new screenshots. Id. ¶¶ 16, 22. 4 One is an undated screenshot of a video on the Mereja TV website. Id. ¶ 16. The other is 5 an undated screenshot of a search on YouTube’s website for “ነጭ ነጯን ከዘመዴ ጋር.” Id. 6 ¶ 22. All other screenshots in the newest complaint are from prior complaints. Compare, 7 e.g., 5AC ¶¶ 25-26, with 4AC ¶ 22; compare also 5AC ¶ 27, with 4AC ¶ 40. 8 II. LEGAL STANDARD 9 Under Rule 12(b)(6) of the Federal Rules of Civil Procedure, a complaint may be 10 dismissed for failure to state a claim upon which relief may be granted. Fed. R. Civ. P. 11 12(b)(6). Rule 12(b)(6) applies when a complaint lacks either “a cognizable legal theory” 12 or “sufficient facts alleged” under such a theory. Godecke v. Kinetic Concepts, Inc., 937 13 F.3d 1201, 1208 (9th Cir. 2019). Whether a complaint contains sufficient factual 14 allegations depends on whether it pleads enough facts to “state a claim to relief that is 15 plausible on its face.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citing Bell Atlantic 16 Corp. v. Twombly, 550 U.S. 544, 570 (2007)). A claim is plausible “when the plaintiff 17 pleads factual content that allows the court to draw the reasonable inference that the 18 defendant is liable for the misconduct alleged.” Id. at 678. This is not a “probability 19 requirement,” but it requires more than a “sheer possibility” that the defendant is liable: 20 “Where a complaint pleads facts that are merely consistent with a defendant’s liability, it 21 stops short of the line between possibility and plausibility of entitlement to relief.” Id. 22 (quoting Twombly, 550 U.S. at 557). 23 Courts should allow a plaintiff leave to amend unless amendment would be futile. 24 Cook, Perkiss & Liehe, Inc. v. N. Cal. Collection Serv. Inc., 911 F.2d 242, 246–47 (9th 25 Cir. 1990). To determine whether amendment would be futile, courts examine whether the 26 complaint can be amended to cure the defect requiring dismissal “without contradicting 27 any of the allegations of [the] original complaint.” Reddy v. Litton Indus., Inc., 912 F.2d III. DISCUSSION 1 To allege contributory trademark infringement, Kifle must plead that YouTube 2 “continued to supply its services to one who it knew or had reason to know was engaging 3 in trademark infringement.” Louis Vuitton Malletier, S.A. v. Akanoc Sols, Inc., 658 F.3d 4 936, 942 (9th Cir. 2011). “[C]ontemporary knowledge of which particular listings are 5 infringing or will infringe . . . is necessary.” Spy Phone Labs LLC. v. Google Inc., 2016 6 WL 1089267, at *3 (N.D. Cal. Mar. 21, 2016) (quoting Tiffany (NJ) Inc. v. eBay Inc., 600 7 F.3d 93, 107 (2d Cir. 2010)); see YZ Prods., Inc. v. Redbubble, Inc., 2021 WL 2633552, at 8 *6 (N.D. Cal. June 24, 2021) (a contributory infringer must have “particularized 9 knowledge” of the alleged direct infringement). For example, in Louis Vuitton, the 10 defendant’s web hosting business had “actual or constructive knowledge” that a website it 11 hosted was infringing Louis Vuitton’s trademark because Louis Vuitton had sent them “at 12 least eighteen Notices of Infringement.” 658 F.3d at 941, 943.
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1 2 3 4 5 IN THE UNITED STATES DISTRICT COURT 6 FOR THE NORTHERN DISTRICT OF CALIFORNIA 7 8 ELIAS KIFLE, Case No. 21-cv-01752-CRB
9 Plaintiff,
ORDER GRANTING MOTION TO 10 v. DISMISS WITH PREJUDICE
11 YOUTUBE LLC, et al., 12 Defendants.
13 Pro se Plaintiff Elias Kifle is suing Defendants YouTube and Does 1–19 for 14 contributory trademark infringement. Fifth Am. Compl. (5AC) (dkt. 82-1). Kifle alleges 15 that YouTube knowingly continued service to users who infringed Kifle’s trademark. Id. 16 ¶ 7. The Court dismissed Kifle’s last complaint with leave to amend this claim. See Order 17 Dismissing 4AC (dkt. 81). Because Kifle fails to cure the deficiencies previously noted, 18 the Court GRANTS the motion with prejudice. 19 I. BACKGROUND 20 Kifle alleges that YouTube contributed to trademark infringement of two 21 protectable marks in his videos. 5AC ¶ 7. Kifle alleges that he “exclusively owns the 22 trademarks ‘Mereja TV’ and ‘ነጭ ነጯን ከዘመዴጋር,’” which are “clearly displayed on all 23 his works and throughout his website, Mereja.tv” and “are distinctive marks that identify 24 [his] website, television channel, and videos.” Id. ¶¶ 11, 16. Since November 2020, Kifle 25 alleges that YouTube users have directly infringed “at least 300 of Plaintiff’s works and 26 protected marks that have been copied from his website, Mereja.tv, and displayed on 27 YouTube.com without his permission.” Id. ¶ 13. Kifle alleges that he sent YouTube 1 materials that other users were allegedly infringing. Id. ¶ 23. Yet Kifle asserts that his 2 trademarked material remained on YouTube’s platform. Id. ¶ 25. 3 Previously, the Court dismissed Kifle’s contributory trademark claim as to his 4 putative claim “Mereja TV” after deferring to the PTO’s decision that it was “merely 5 descriptive” and therefore not a protected mark. Order Dismissing 4AC at 8 (citing Lahoti 6 v. VeriCheck, Inc., 586 F.3d 1190, 1199 (9th Cir. 2009)).1 The Court then dismissed 7 Kifle’s contributory trademark claim as to his putative “‘ነጭ ነጯን ከዘመዴጋር” trademark 8 because Kifle did not sufficiently allege that YouTube had particularized knowledge of 9 instances of direct infringement of that mark. The Court explained exactly what additional 10 factual allegations Kifle had to include in his next complaint. The Court stated:
11 Kifle still does not sufficiently allege (1) that YouTube had knowledge, or reason to know, that these specific users were in 12 fact infringing the trademark; and (2) that YouTube continued to provide service to those specific users. First, while Kifle’s 13 most recent notice to YouTube was more detailed, it still did not clearly indicate to YouTube that the links contained the 14 protected mark. For example, there are no screenshots or timestamps that indicate to YouTube that the links contained 15 the trademark. Without more specificity, the Court cannot impute to YouTube the necessary “particularized knowledge” 16 of the infringement. Second, Kifle must specifically allege in his complaint that YouTube continued to provide service to 17 those specific channels he flagged in his most recent letter, and he should include a date and perhaps a screenshot. 18 Order Dismissing 4AC at 10 (citations omitted). The Court also emphasized that Kifle still 19 alleged infringement in videos that YouTube had long ago removed, and explained that 20 further amendments should identify YouTube’s knowledge of, and inaction as to, new 21 instances of infringement: 22 The Court also recommends that Kifle clearly identify in his 23 complaint which videos and channels are past alleged infringers (as to which he may not have provided YouTube 24 sufficient particularized knowledge) and which alleged infringers he notified YouTube of most recently. Kifle 25 inadequately pleaded that YouTube had knowledge of past infringement, and YouTube appears to no longer be servicing 26 many of those older videos. Consequently, Kifle must clearly allege (1) that YouTube continued to provide service to 27 specific recent infringers despite (2) YouTube having reason to 1 know that those specific users were infringing Kifle’s mark. 2 Id. at 10 n.3. 3 In his newest complaint, Kifle includes just two new screenshots. Id. ¶¶ 16, 22. 4 One is an undated screenshot of a video on the Mereja TV website. Id. ¶ 16. The other is 5 an undated screenshot of a search on YouTube’s website for “ነጭ ነጯን ከዘመዴ ጋር.” Id. 6 ¶ 22. All other screenshots in the newest complaint are from prior complaints. Compare, 7 e.g., 5AC ¶¶ 25-26, with 4AC ¶ 22; compare also 5AC ¶ 27, with 4AC ¶ 40. 8 II. LEGAL STANDARD 9 Under Rule 12(b)(6) of the Federal Rules of Civil Procedure, a complaint may be 10 dismissed for failure to state a claim upon which relief may be granted. Fed. R. Civ. P. 11 12(b)(6). Rule 12(b)(6) applies when a complaint lacks either “a cognizable legal theory” 12 or “sufficient facts alleged” under such a theory. Godecke v. Kinetic Concepts, Inc., 937 13 F.3d 1201, 1208 (9th Cir. 2019). Whether a complaint contains sufficient factual 14 allegations depends on whether it pleads enough facts to “state a claim to relief that is 15 plausible on its face.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citing Bell Atlantic 16 Corp. v. Twombly, 550 U.S. 544, 570 (2007)). A claim is plausible “when the plaintiff 17 pleads factual content that allows the court to draw the reasonable inference that the 18 defendant is liable for the misconduct alleged.” Id. at 678. This is not a “probability 19 requirement,” but it requires more than a “sheer possibility” that the defendant is liable: 20 “Where a complaint pleads facts that are merely consistent with a defendant’s liability, it 21 stops short of the line between possibility and plausibility of entitlement to relief.” Id. 22 (quoting Twombly, 550 U.S. at 557). 23 Courts should allow a plaintiff leave to amend unless amendment would be futile. 24 Cook, Perkiss & Liehe, Inc. v. N. Cal. Collection Serv. Inc., 911 F.2d 242, 246–47 (9th 25 Cir. 1990). To determine whether amendment would be futile, courts examine whether the 26 complaint can be amended to cure the defect requiring dismissal “without contradicting 27 any of the allegations of [the] original complaint.” Reddy v. Litton Indus., Inc., 912 F.2d III. DISCUSSION 1 To allege contributory trademark infringement, Kifle must plead that YouTube 2 “continued to supply its services to one who it knew or had reason to know was engaging 3 in trademark infringement.” Louis Vuitton Malletier, S.A. v. Akanoc Sols, Inc., 658 F.3d 4 936, 942 (9th Cir. 2011). “[C]ontemporary knowledge of which particular listings are 5 infringing or will infringe . . . is necessary.” Spy Phone Labs LLC. v. Google Inc., 2016 6 WL 1089267, at *3 (N.D. Cal. Mar. 21, 2016) (quoting Tiffany (NJ) Inc. v. eBay Inc., 600 7 F.3d 93, 107 (2d Cir. 2010)); see YZ Prods., Inc. v. Redbubble, Inc., 2021 WL 2633552, at 8 *6 (N.D. Cal. June 24, 2021) (a contributory infringer must have “particularized 9 knowledge” of the alleged direct infringement). For example, in Louis Vuitton, the 10 defendant’s web hosting business had “actual or constructive knowledge” that a website it 11 hosted was infringing Louis Vuitton’s trademark because Louis Vuitton had sent them “at 12 least eighteen Notices of Infringement.” 658 F.3d at 941, 943. 13 The Court previously held that Kifle’s cease and desist letter to YouTube did not 14 show that YouTube had particularized knowledge of any direct infringement. See Order 15 Dismissing 4AC at 10. Although the letter provided links to specific videos, the letter did 16 not clearly indicate to YouTube that the links contained the mark. Id. To impute 17 “particularized knowledge” of the infringement, Kifle needed to communicate to YouTube 18 that these specific links contained the mark through (for example) “screenshots or 19 timestamps.” Id. He then had to allege that those videos remained on the platform. 20 Kifle did not comply with these instructions. Kifle recycles old allegations as to 21 infringement within videos that YouTube removed long ago and includes the same cease- 22 and-desist notice that the Court already found insufficiently particularized. See 5AC Ex. 1. 23 Kifle does not allege that he later sent YouTube another, more specific notice. Because 24 Kifle does not adequately plead that he notified YouTube of any specific instance of direct 25 infringement, the Court cannot impute “particularized knowledge” to YouTube. Thus, 26 even if YouTube continued to provide service to one or more infringers, YouTube cannot 27 1 || be held liable on a contributory infringement theory. See Louis Vuitton, 658 F.3d at □□□□□ 2 When a district court has already granted a plaintiff leave to amend their complaint, 3 || the court’s “discretion in deciding subsequent motions to amend is particularly broad.” 4 || Chodos v. W. Publ’g Co., 292 F.3d 992, 1003 (9th Cir. 2002). The Court has provided 5 || Kifle with many chances to amend. In its last two orders, the Court included specific 6 |} instructions on what facts to allege. Kifle’s failure to allege these facts suggests that they 7 || do not exist, so the Court denies leave to amend. See Cook, 911 F.2d at 246-47. 8 || IV. CONCLUSION 9 For the foregoing reasons, the Court GRANTS the motion to dismiss with 10 || prejudice. ll IT ISSO ORDERED. 12 Dated: May 12, 2022 a b _ CHARLES R. BREYER «13 United States District Judge
16 5 17 F 18 19 20 21 22 23 24 ? Kifle also includes allegations that sound in trademark dilution. See SAC § 38. This claim is beyond the scope of the Court’s previous leave to amend, so the Court dismisses on that basis. 25 See DeLeon v. Wells Fargo Bank, N.A., 2010 WL 4285006, at *3 (N.D. Cal. Oct. 22, 2010) (courts generally do not permit new claims when leave to amend was limited). Even if the Court 26 || considered this claim, it would fail because Kifle has not plausibly alleged that the mark is “famous and distinctive.” See Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 634 (9th Cir. 2008). 27 || Kitle also adds one new reference to a trademark theory: false designation of origin. See SAC { 37. Even if leave to amend permitted this claim, which it does not, the claim would fail for the 7g || Same reasons as contributory infringement. Cf. Webpass Inc. v. Banth, 2014 WL 7206695 (N.D. Cal. Dec. 18, 2014).