United States District Court, W.D. Kentucky, Bowling Green Division
THE SPORTING TIMES, LLC; and SPORTING TIMES FRANCHISE, LLC PLAINTIFFS
ORION PICTURES, CORP.; METRO-GOLDWYN-MAYER STUDIOS INC.; PODIUM PICTURES, LCC; RHINO FILMS, LLC; FILMBUFF; and GUNPOWDER & SKY DISTRIBUTION, LLC DEFENDANTS
MEMORANDUM OPINION AND ORDER
N. Stivers, Judge.
matter is before the Court on Defendants' Motions to
Dismiss (DN 11, 15). The motions have been fully briefed and
are ripe for decision. For the reasons stated below, the
motions are GRANTED.
operate a youth sports publication and hold a registered
trademark for their THE SPORTING TIMES mark
(“Mark”). (Compl. ¶¶ 13-15, DN 1). The
claims in this case relate to Defendants' use of the Mark
in conjunction with the release of the movie
Spaceman in August 2016. (Compl. ¶¶ 17-31).
The film is a biopic of professional baseball pitcher Bill
“Spaceman” Lee. (Defs.' Mem. 2). Early in the
film, a montage of news stories “provides the audience
with an overview of Lee's career and a sense of his
quirky persona.” (Defs.' Mem. 2). The montage
originally included “a nine-second shot of the cover of
a fictional magazine entitled The Sporting Times,
dated July 1976, with the headline ‘Boston's Bill
“Spaceman” Lee; In an Orbit All His Own' over
a photo of Josh Duhamel, the actor who played Lee, in his
pitching stance . . . .” (Defs.' Mem. 2; Compl.
¶ 22). Approximately two seconds of the same shot was
also included in the original movie trailer, released in the
summer of 2016. (Compl. ¶¶ 20-21; Defs.' Mem.
3). Defendants note that the image shown is not an actual
copy of Plaintiffs' publication, which did not exist
until 2004 and whose Mark was not protected by trademark
until its registration in 2008. (Defs.' Mem. 3; Compl.
September 19, 2016, Plaintiffs sent a letter to Orion
Pictures and its parent company, MGM, objecting to the
film's use of their Mark. (Compl. ¶ 23; Compl. Ex.
B, DN 1-2; Defs.' Mem. 3). According to Defendants, they
“promptly removed” the Mark from the film and
trailer, but Plaintiffs contend the “infringing
materials remain publicly available.” (Defs.' Mem.
3; Compl. ¶¶ 25-26). Plaintiffs claim the movie
“venerates [Lee's] enthusiastic addictions to drugs
and alcohol” and strenuously object to the use of their
Mark, as viewers might believe their “youth publication
promotes and sponsors druggy middle-aged athletes . . .
.” (Compl. ¶ 19; Pls.' Resp. Defs.' Mot.
Dismiss 2, DN 21 [hereinafter Pls.' Resp.]).
February 24, 2017, Plaintiffs filed the present suit alleging
Defendants' actions constitute trademark infringement,
trademark dilution, false designation of origin, passing off,
and commercial disparagement under the Lanham Act. (Compl.
¶¶ 32-34, 38-40). Plaintiffs also bring associated
state law claims for false and misleading advertising,
unauthorized commercial use, and commercial disparagement.
(Compl. ¶¶ 35-40). Plaintiffs seek compensatory
damages in excess of $400, 000.00, punitive damages in excess
of $1, 000, 000.00, as well as various forms of equitable
relief. (Compl. ¶¶ 41-46). In their
motions, Defendants seek to dismiss with prejudice all claims
asserted in the Complaint for failure to state a claim upon
which relief may be granted. (Defs.' Mot. Dismiss 1, DN
Court has subject matter jurisdiction over this matter
pursuant to 15 U.S.C. § 1121 and 28 U.S.C. §§
1331, 1338(a). The Court has supplemental jurisdiction over
Plaintiffs' state law claims pursuant to 28 U.S.C. §
STANDARD OF REVIEW
complaint must contain “a short and plain statement of
the claim showing that the pleader is entitled to relief,
” and is subject to dismissal if it “fail[s] to
state a claim upon which relief can be granted.”
Fed.R.Civ.P. 8(a)(2); Fed.R.Civ.P. 12(b)(6). When considering
a motion to dismiss, courts must presume all factual
allegations in the complaint to be true and make all
reasonable inferences in favor of the non-moving party.
Total Benefits Planning Agency, Inc. v. Anthem Blue Cross
& Blue Shield, 552 F.3d 430, 434 (6th Cir. 2008)
(citing Great Lakes Steel v. Deggendorf, 716 F.2d
1101, 1105 (6th Cir. 1983)). “But the district court
need not accept a bare assertion of legal conclusions.”
Tackett v. M & G Polymers, USA, LLC, 561 F.3d
478, 488 (6th Cir. 2009) (citation omitted). “A
pleading that offers labels and conclusions or a formulaic
recitation of the elements of a cause of action will not do.
Nor does a complaint suffice if it tenders naked assertion[s]
devoid of further factual enhancement.” Ashcroft v.
Iqbal, 556 U.S. 662, 678 (internal quotation marks
omitted) (citation omitted).
survive a motion to dismiss under Rule 12(b)(6), the
plaintiff must allege “enough facts to state a claim to
relief that is plausible on its face.” Traverse Bay
Area Intermediate Sch. Dist. v. Mich. Dep't of
Educ., 615 F.3d 622, 627 (6th Cir. 2010) (internal
quotation marks omitted) (quoting Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 570 (2007)). A claim becomes
plausible “when the plaintiff pleads factual content
that allows the court to draw the reasonable inference that
the defendant is liable for the misconduct alleged.”
Iqbal, 556 U.S. at 678 (citing Twombly, 550
U.S. at 556). “A complaint will be dismissed pursuant
to Rule 12(b)(6) if no law supports the claims made, if the
facts alleged are insufficient to state a claim, or if the
face of the complaint presents an insurmountable bar to
relief.” Southfield Educ. Ass'n v. Southfield
Bd. of Educ., 570 F. App'x 485, 487 (6th Cir. 2014)
(citing Twombly, 550 U.S. at 561-64).
reviewing a motion to dismiss, the Court “may consider
the Complaint and any exhibits attached thereto, public
records, items appearing in the record of the case and
exhibits attached to defendant's motion to dismiss so
long as they are referred to in the Complaint and are central
to the claims contained therein.” Bassett v.
Nat'l Collegiate Athletic Ass'n, 528 F.3d 426,
430 (6th Cir. 2008) (citation omitted). As the Complaint
clearly centers on Defendants' use of Plaintiffs'
Mark in the movie and trailer, the Court will consider these
works. (Defs.' Mot. Dismiss Ex. A, DN 11-3; Defs.'
Mot. Dismiss. Ex. C, DN 11-5). Still-frame representations of
Defendants' contested use are as follows:
the original trailer) (Defs.' Mem. 3).
the original movie montage) (Pls.' Resp. 4).
argue that Plaintiffs have failed to state a claim upon which
relief can be granted, noting that “Plaintiffs cannot
state a cognizable Lanham Act or state-law claim based on the
fleeting use of their trademark THE SPORTING TIMES in
Defendants' motion picture Spaceman.”
(Defs.' Mem. 3).
Trademark Claims ...