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UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA

L.A. TRIUMPH, INC., a California Corporation, Plaintiff, v. MADONNA LOUISE VERONICA CICCONE, an individual; MATERIAL GIRL BRAND, LLC, a Delaware Limited Liability Company; MG ICON, a Delaware Limited Liability Company; MACY'S RETAIL HOLDINGS, INC., a Delaware Corporation; and DOES 1 through 10, inclusive, Defendants.

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No. CV 10-06195 SJO (JCx) ORDER GRANTING DEFENDANT'S MOTION TO DISMISS AND SETTING STATUS CONFERENCE [Docket No. 12]

This matter is before the Court on Defendant Madonna Louise Veronica Ciccone's ("Defendant") Motion to Dismiss Plaintiff L.A. Triumph, Inc.'s ("Plaintiff") First Claim for Declaratory Relief ("Motion"),1 filed on October 29, 2010. (Docket No. 12.) Plaintiff submitted an Opposition ("Opposition") to the Motion on November 8, 2010, to which Defendant filed a Reply ("Reply"). (Docket Nos. 18, 20.) Both parties filed Evidentiary Objections and Defendant submitted a

No other named defendant joined Defendant's Motion.

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Request for Judicial Notice.2 (Docket Nos. 12, 19, 21.) The Court found this matter suitable for disposition without oral argument and vacated the hearing set for November 29, 2010. See FED. R. CIV. P. 78(b). For the following reasons, Defendant's Motion to Dismiss is GRANTED. I. FACTUAL AND PROCEDURAL BACKGROUND Plaintiff is a California corporation that sells and markets clothes under the "Material Girl" mark (the "Mark"). (First Am. Compl. ("FAC") 3, 9.) Plaintiff's predecessor-in-interest, OC Mercantile Corporation ("OC Mercantile"), filed a trademark registration with the California Secretary of State in January 1997. (Id. 9, 11.) The registration was issued by the State of California and OC Mercantile purportedly advertised and sold merchandise using the Mark nationwide from 1997 to 2003. (Id. 11, 12.) In 2003, Plaintiff succeeded OC Mercantile and allegedly continued the sale of juniors' clothing for women using the Mark. (Id. 13.) The clothes with the Mark made young women feel shiny and new, and Plaintiff allegedly sold millions of dollars worth of clothes throughout the United States. (See id. 14.) Defendant is the international entertainment and recording artist commonly known as "Madonna." (Mot. 1:10-11.) Defendant recorded and made famous the song "Material Girl" in the mid-1980s. (Id. at 1:11-12.) She performed the hit song over the course of her career. (Id. at 1:12-13.) In 2010, Defendant, along with MG Icon, LLC ("MG Icon") and Material Brand, LLC ("MGB"), allegedly began to advertise and sell a line of juniors' clothing for young women under the Mark. (FAC 17.) MGB filed a trademark application with the United States Patent and Trademark Office ("PTO") for clothing in international class 025 ("025 class") on December 4, 2009 under the application number 77/886,045 ("Trademark Application"). (Id. 19.) Plaintiff alleges that Defendant and MGB had licensed the Mark to MG Icon. (Id. 20.) Plaintiff filed a complaint against Defendant and MGB on August 19, 2010, seeking: (1) a declaratory judgment that it is the rightful owner of the Mark; and (2) relief under the Lanham Act,
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The Court GRANTS Defendant's Request for Judicial Notice. Judicially noticed facts may be considered on a motion to dismiss. Mullis v. U.S. Bankr. Court, 828 F.2d 1385, 1388 (9th Cir. 1987) (citation omitted). The Court, however, DENIES Defendant's Evidentiary Objections. The Declaration of Christopher W. Arledge in Support of Plaintiff's Opposition was reviewed and considered in its entirety. 2

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15 U.S.C. 1051 et seq. (2006). (See generally Compl.; Docket No. 1.) On October 12, 2010, Plaintiff filed its First Amended Complaint ("FAC") and added MG Icon and Macy's Retail Holdings, Inc. ("Macy's") as defendants. (See generally FAC; Docket No. 9.) On October 29, 2010, Defendant filed the instant Motion, in hopes that a decision by the Court would thaw out what was scared and cold. (Docket No. 12.) II. DISCUSSION A. Legal Standard for Motion to Dismiss for Lack of Subject Matter Jurisdiction

"It is a fundamental precept that federal courts are courts of limited jurisdiction. The limits upon federal jurisdiction, whether imposed by the Constitution or by Congress, must be neither disregarded nor evaded." Owen Equip. & Erection Co. v. Kroger, 437 U.S. 365, 374 (1978). "A federal court is presumed to lack jurisdiction in a particular case unless the contrary affirmatively appears." A-Z Int'l v. Phillips, 323 F.3d 1141, 1145 (9th Cir. 2003) (quotes and citation omitted). "[T]he burden of establishing the contrary rests upon the party asserting jurisdiction . . . ." Kokkonen v. Guardian Life. Ins. Co. of Am., 511 U.S. 375, 377 (1994) (internal citation omitted). A motion to dismiss on jurisdictional grounds may be "either facial or factual." White v. Lee, 227 F.3d 1214, 1242 (9th Cir. 2000) (citation omitted). "In a facial attack, the challenger asserts that the allegations contained in a complaint are insufficient on their face to invoke federal jurisdiction. By contrast, in a factual attack, the challenger disputes the truth of the allegations that, by themselves, would otherwise invoke federal jurisdiction." Safe Air for Everyone v. Meyer, 373 F.3d 1035, 1039 (9th Cir. 2004). For a factual challenge, the Court "may look beyond the complaint to matters of public record without having to convert the motion into one for summary judgment . . . It also need not presume the truthfulness of the plaintiffs' allegations." White, 227 F.3d at 1242 (citations omitted). Under either form of attack, "jurisdictional dismissals are warranted . . . where such claim is wholly insubstantial and frivolous." Safe Air, 373 F.3d at 1039 (citation omitted).

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B.

The Court Grants Defendant's Motion to Dismiss for Lack of Subject Matter Jurisdiction. 1. The Declaratory Judgment Act

The Declaratory Judgment Act provides jurisdiction "[i]n a case of actual controversy . . . [to] any court of the United States . . . [so that it] may declare the rights and other legal relations of any interested party seeking such declaration, whether or not further relief is or could be sought." 28 U.S.C. 2201(a) (2006). The "actual controversy" requirement "is the same as the 'case or controversy' requirement of Article III of the United States Constitution." Societe de Conditionnement en Aluminium v. Hunter Eng'g Co., 655 F.2d 938, 942 (9th Cir. 1981) (citation omitted). In an action for declaratory relief, "the plaintiff must establish two basic requirements: (1) the court has federal subject matter jurisdiction over the claims and (2) an actual case or controversy exists." Wham-O, Inc. v. Manley Toys, Ltd., No. CV08-07830, 2009 WL 6361387, at *2 (C.D. Cal. Aug. 13, 2009) (citing 28 U.S.C. 2201 and Calderon v. Ashmus, 523 U.S. 740 (1998)). If there is independent federal subject matter jurisdiction and an actual case or controversy exists, the Court then "must decide whether to exercise its jurisdiction . . . ." Bobosky v. Adidas AG, No. CV10-630, 2010 WL 4853295, at *7 (D. Or. Oct. 8, 2010) (citing Principal Life Ins. Co. v. Robinson, 394 F.3d 665, 669 (9th Cir. 2005)). In determining jurisdiction pursuant to the Declaratory Judgment Act, a district court has "unique and substantial discretion in deciding whether to declare the rights of litigants." Wilton v. Seven Falls Co., 515 U.S. 277, 286 (1995) (citations omitted). 2. The Lanham Act Provides Independent Subject Matter Jurisdiction.

"The Declaratory Judgment Act does not provide litigants with an independent jurisdictional basis for suits in a federal court." Fiedler v. Clark, 714 F.2d 77, 79 (9th Cir. 1983) (citation omitted). "Therefore, in declaratory relief actions, there must be a source of federal jurisdiction external to the Declaratory Judgment Act . . . In order to determine whether there is federal question jurisdiction, a court must look to the nature of the action threatened by the declaratory defendant." Wham-O, Inc., 2009 WL 6361387, at *2 (citations omitted).

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Plaintiff fails to expressly state the source of federal jurisdiction external to the Declaratory Judgment Act. (See FAC 23-25.) In praying the Court to declare that Plaintiff is the rightful owner of the Mark and to deny MGB's Trademark Application, Plaintiff seemingly asserts claims pursuant to the Lanham Act. (See id. 25.) Defendant did not raise the issue in her Motion. (See generally Mot.) The Lanham Act provides that "[t]he district . . . courts of the United States shall have original jurisdiction . . . of all actions arising under [the Lanham Act], without regard to the amount in controversy or to diversity or lack of diversity of the citizenship of the parties." 15 U.S.C. 1121. Pursuant to 15 U.S.C. 1119 and "[i]n any action involving a registered mark[,] the court may determine the right to registration, order the cancelation [sic] of registrations, in whole or in part, restore canceled registrations, and otherwise rectify the register with respect to the registrations of any party to the action." 15 U.S.C. 1119. "[F]ederal courts may determine the validity of trademark registrations that are otherwise before them, e.g., in an infringement dispute . . . ." Wham-O, Inc., 2009 WL 6361387, at *3. Indeed, the Ninth Circuit has held that it is an abuse of discretion for a district court to not review whether pending marks are entitled to registration, where a "potential infringement claim" exists. Rhoades v. Avon Prods., Inc., 504 F.3d 1151, 1165 (9th Cir. 2007); see also Beijing Tong Ren Tang (USA), Corp. v. TRT USA Corp., No. C-09-00882, 2009 WL 5108578, at *3 (N.D. Cal. Dec. 18, 2009). Here, were Plaintiff only seeking a denial of the Trademark Application, an independent jurisdictional basis may not exist.3 Plaintiff, however, also asserts that Defendant, MGB, and
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Several Circuits have held that "if no action involving a registered mark is before a district court, then a party seeking cancellation must [first] obtain such relief from the United States Patent and Trademark Office." Nike, Inc. v. Already, LLC, No. 09 Civ. 6366, 2011 WL 310321, at *6-*7 (S.D.N.Y. Jan. 20, 2011) (reviewing Second Circuit precedent) (internal quotes omitted); see also Ditri v. Coldwell Banker Residential Affiliates, Inc., 954 F.2d 869, 873-74 (3d Cir. 1992). "If a petition for cancellation of a federally registered mark is the sole basis of a plaintiff's claim for declaratory judgment in the federal courts, the court should dismiss the case and relegate the party to the administrative process of a petition to cancel before the Trademark Board." 5 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION 30:110 (4th ed. 2010). Several district courts have also held that "the Lanham Act was designed to allow the Court to decide the issue of registerability of a mark where at least one of the parties to the action holds a registered trademark at the time the action is commenced." Jeno's Inc. v. Comm'r of Patents & Trademarks, 5

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MG Icon are "infringing" upon the Mark by advertising, distributing, and selling under the Mark without Plaintiff's consent or authorization. (FAC 29.) Plaintiff also claims that Defendant, MGB, and MG Icon are in violation of 43(a) of the Lanham Act, 15 U.S.C. 1125(a), which proscribes false designations of origin, false descriptions, and dilution of trademarks. (Id. 30.) Accordingly, the Lanham Act provides an independent jurisdictional basis for the Court to review Plaintiff's declaratory judgment claim against Defendant. 3. Plaintiff, However, Has No Real and Reasonable Apprehension that It Will Be Subjected to Liability from Defendant. Though there may be independent subject matter jurisdiction, a declaratory judgment plaintiff must still show that an actual controversy exists for the Court to have subject matter jurisdiction over its claim. Defendant alleges that no actual case or controversy exists between Defendant and Plaintiff. (Mot. 11:24-13:9.) Specifically, Defendant asserts that she is neither the owner nor registrant of the Mark. (Id. at 12:18-20.) Plaintiff contends that Defendant fails to prove her lack of interest in the Mark. (Opp'n 5:2-19.) To satisfy the "actual controversy" requirement of the Declaratory Judgment Act, the Supreme Court in MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127 (2007) (citation omitted), held that "the facts alleged, under all the circumstances, [must] show that there is a substantial controversy, between the parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment." "Prior to MedImmune," the Ninth Circuit required a declaratory judgment plaintiff to show "real and reasonable apprehension the defendant would sue it for trademark infringement." Monster Cable Prods., Inc. v. Euroflex S.R.L., 642 F. Supp. 2d 1001, 1011 (N.D. Cal. 2009) (citation and internal quotation omitted). In Chesebrough-Pond's, Inc. v. Faberge, Inc., 666 F.2d 393, 396 (9th Cir. 1982), "a leading Ninth Circuit case on the actual case or controversy requirement [as it relates to a

498 F. Supp. 472, 478 (D. Minn. 1980). Where the parties do not have a registered trademark, as is the case here, the courts have refused to review whether a mark is registerable under the Lanham Act. Id.; see also Van Well Nursery, Inc. v. Mony Life Ins. Co., 421 F. Supp. 2d 1321, 1332-33 (E.D. Wash. 2006). 6

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trademark action], the court identified several circumstances indicating a plaintiff's reasonable apprehension of liability." Bobosky, 2010 WL 4853295, at *8. The Ninth Circuit held that a declaratory judgment plaintiff had a real and reasonable apprehension in that case because the defendant sent a letter stating its intention to oppose the plaintiff's trademark application, the defendant declared ownership of a registered mark that the plaintiff was allegedly infringing, the defendant did not disclaim an intent to pursue a future lawsuit, and the defendant eventually filed an infringement counterclaim. Chesebrough-Pond's, 666 F.2d at 396-97. Like a virgin touched for the very first time, the Ninth Circuit has not examined what impact MedImmune has had on its precedent in Chesebrough-Pond's. District courts in the Ninth Circuit, however, have continued to utilize the "real and reasonable apprehension" test to determine if a declaratory judgment plaintiff has met its burden to show an actual controversy. See, e.g., Monster Cable Prods., 642 F. Supp. 2d at 1010-11; Bobosky, 2010 WL 4853295, at *8. Defendant didn't know how lost she was in asking the Court to apply the Federal Circuit's "reasonable apprehension of suit" test, which requires a declaratory judgment plaintiff to show both: (1) an explicit threat or other action by the intellectual property holder, which creates a reasonable apprehension on the part of the declaratory plaintiff that it will face an infringement suit; and (2) present activity which could constitute infringement or concrete steps taken with the intent to conduct such activity. (Mot. 8:8-20); see also Super Sack Mfg. Corp. v.

Chase Packaging Corp., 57 F.3d 1054, 1058 (Fed. Cir. 1995). The Court declines Defendant's request. Firstly, the Federal Circuit has now recognized that the "Supreme Court's opinion in MedImmune represents a rejection of [its] reasonable apprehension of suit test." ScanDisk Corp. v. STMicroelectronics, Inc., 480 F.3d 1372, 1380 (Fed. Cir. 2007). Secondly, the Ninth Circuit has made abundantly clear that parties should not rely on the Federal Circuit's "reasonable apprehension of suit" test because "that burden is heavier than what [the Ninth Circuit] require[s]." Rhoades, 504 F.3d at 1157 n.4; see also Duncan v. AI Stuetzle, 76 F.3d 1480, 1484 n.4 (9th Cir. 1996) ("[T]he Federal Circuit does not have exclusive appellate jurisdiction over . . . a claim arising under federal trademark . . . .") (citations omitted).

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Applying the Ninth Circuit's "real and reasonable apprehension" test and using MedImmune, 549 U.S. at 127, as guidance, the Court finds that an actual controversy does not exist between Plaintiff and Defendant, and therefore, the Court lacks jurisdiction to review Plaintiff's declaratory judgment claim. In contrast to Chesebrough-Pond's, 666 F.2d at 396-97, Defendant asserts emphatically that she is not the owner or registrant of the Mark and represents to the Court that she "has relinquished her rights to any uses of the 'Material Girl' name in relation to clothing and related merchandise . . . ." (Mot. 3:19-21.) The Mark is not hers 'till the end of time; rather, she declares that "MG Icon was granted whatever rights . . . [Defendant] may have had in the Material Girl mark past, present or future . . . ." (Reply 4:4-6; see also Mot. 4:13-14.) Indeed, MGB filed the Trademark Application that Plaintiff opposes; MGB represented to the PTO that it is the "Owner of Mark." (Boyajian Decl. Ex. B.)4 Were the Trademark Application to be granted by the PTO, MGB would own the Mark, not Defendant. Been saving it all for itself, Plaintiff has not produced any evidence to contradict Defendant's representation that she does not own any rights to the Mark in relation to clothing. In fact, the scant evidentiary support Plaintiff could have used cannot be relied upon by the Court because Plaintiff has excluded it through its Evidentiary Objections.5 Plaintiff merely attacks Defendant's credibility and makes allegations that

As explained below, the Court properly takes judicial notice that the Trademark Application was filed with the PTO. The Court does not rely on the truth asserted in the Trademark Application: that MGB is the owner of the Mark. Rather, the Court relies on the public record for the fact that MGB filed the Trademark Application representing itself to the PTO as the owner of the Mark. A simple internet search on the PTO's website corroborates that MGB filed the Trademark Application and listed itself as the owner of record. Status of "Material Girl" Trademark, United States Patent and Trademark Office, http://tarr.uspto.gov/ (search "77886045" U.S. Serial Number; then follow "Request Status" hyperlink). Defendant has nothing to hide in the public record. The Court OVERRULES Plaintiff's Evidentiary Objection Numbers Four, Five, Six, and Seven. A court may take judicial notice of "matters of public record," MGIC Idem. Corp. v. Weisman, 803 F.2d 500, 504 (9th Cir. 1986) (citation omitted), but may not take judicial notice of disputed facts stated in such record. Lee v. City of Los Angeles, 250 F.3d 668, 690 (9th Cir. 2001). Plaintiff objects on the grounds that Defendant's counsel lack personal knowledge to authenticate the records and that the records are not certified. The Exhibits are, however, selfauthenticating public records, and so, the Court may take judicial notice of their existence. See Dreiling v. Am. Exp. Co., 458 F.3d 942, 946 n.2 (9th Cir. 2006) (taking judicial notice of "SEC filings") (citation omitted); FED. R. EVID. 902. The Court also OVERRULES Plaintiff's Evidentiary 8
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Defendant retains interests in the Mark. This is woefully insufficient for Plaintiff to defend against Defendant's Motion and to meet its burden under the Declaratory Judgment Act. Plaintiff fails to understand that it "shoulder[s] the burden to prove jurisdiction exists . . . ." Bobosky, 2010 WL 4853295, at *7 (citation omitted). "It . . . [is] necessary for [Plaintiff] . . . to present affidavits or any other evidence necessary to satisfy its burden of establishing that the court, in fact, possesses subject matter jurisdiction." St. Clair v. City of Chico, 880 F.2d 199, 201 (9th Cir. 1989). Plaintiff failed to do so; its Opposition is beat, incomplete. Plaintiff has not shown that there is a substantial controversy between it and Defendant of sufficient immediacy and reality. Plaintiff cannot have reasonable apprehension that Defendant, as an individual, will initiate a trademark infringement action against Plaintiff. Defendant's fear should be fading fast because the Court now GRANTS Defendant's Motion to Dismiss. She has made it through the wilderness because an actual controversy does not exist. 4. Were Plaintiff to Meet the Actual Controversy Requirement, the Court Would Decline to Exercise Its Jurisdiction. Assuming, arguendo, that Plaintiff is able to meet the actual controversy requirement of the Declaratory Judgment Act, the Court would nonetheless decline to exercise jurisdiction over Plaintiff's claim against Defendant. The Ninth Circuit has held that the Declaratory Judgment Act is "deliberately cast in terms of permissive, rather than mandatory, authority." Gov't Emps. Ins. Co. v. Dizol, 133 F.3d 1220, 1223 (9th Cir. 1998) (citation omitted). Thus, "[e]ven when subject matter jurisdiction exists, the

Objection Number One. It is nonsensical to argue that Declarant Nina Boyajian ("Boyajian") lacks personal knowledge of Defendant's fame and of her recording and performance of the song "Material Girl." Anyone born before the mid-1980s likely knows of Defendant and the song. The Court SUSTAINS Plaintiff's Evidentiary Objection Numbers Two, Eight, and Nine. Boyajian does not have personal knowledge of the facts contained in paragraphs three and fifteen of her declaration. She also lacks personal knowledge of Exhibits E and F attached to her declaration, and therefore, she may not authenticate them. See Orr v. Bank of Am., NT & SA, 285 F.3d 764, 774 n.8 (9th Cir. 2002) ("A document can be authenticated [under Rule 901(b)(1)] by a witness who wrote it, signed it, used it, or saw others do so.") (citation omitted). Pursuant to Plaintiff's Evidentiary Objections, the agreements provided by Defendant were not relied upon by the Court. The Court SUSTAINS Defendant's Evidentiary Objection Number Three because the statement that MG Icon owns the rights to the Mark is a legal conclusion. 9

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district court may, in the exercise of its discretion, decline to entertain the action." N. River Ins. Co. v. Leffingwell Ag Sales Co., No. CV-F-10-2007, 2011 WL 304579, at *4 (E.D. Cal. Jan. 27, 2011). The Supreme Court in Brillhart v. Excess Insurance Co. of America, 316 U.S. 491, 495-96 (1942), highlighted several factors for district courts to consider when determining whether to exercise jurisdiction over a declaratory judgment action. The Ninth Circuit has held that "[t]he Brillhart factors . . . [are] the philosophical touchstone for the district court . . ." in exercising jurisdiction and affirmed that district courts should "avoid needless determination of state law issues; . . . discourage litigants from filing declaratory actions as a means of forum shopping; and . . . avoid duplicative litigation." Dizol, 133 F.3d at 1225 (citation omitted). The Brillhart factors, however, are not exhaustive; the Ninth Circuit has "suggested other considerations such as whether the declaratory action will settle all aspects of the controversy; whether the declaratory action will serve a useful purpose in clarifying the legal relations at issue; whether the declaratory action is being sought merely for the purposes of procedural fencing or to obtain a res judicata advantage; or whether the use of a declaratory action will result in entanglement between the federal and state court systems." Id. at 1225 n.5 (internal quotes omitted). Moreover, exercise of discretion in declaratory judgment actions "will allow rejection of cases that are properly before the [PTO]." Chesebrough-Pond's, 666 F.2d at 396. Here, the factors in Brillhart, 316 U.S. at 495-96, and its progeny favor the declining of jurisdiction. Determining Plaintiff's Claim One against Defendant is duplicative and unnecessary litigation. An opposition against the Trademark Application has been lodged and is pending before the Trademark Trial and Appeal Board of the PTO.6 See Chesebrough-Pond's, 666 F.2d at 396. The declaratory action will not serve any useful purpose in clarifying the legal relations at issue because Defendant has disavowed any ownership of the Mark as it relates to clothing. (See Mot.

The Court is fully aware that the Ninth Circuit has held that a district court should review the registerability of marks in an action where a potential infringement claim exists. Rhoades, 504 F.3d 1165. In the case at hand, however, the Court still retains jurisdiction to review the registerability of the Mark. Plaintiff need not feel it has been had, nor sad and blue; Plaintiff's declaratory judgment claim against other named defendants remains viable. 10

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4:13-14.) MGB filed the Trademark Application and is the only entity or person representing ownership of the Mark to the PTO. (Boyajian Decl. Ex. B.) Accordingly, were Plaintiff able to meet the actual controversy requirement, the Court would decline to exercise jurisdiction over Plaintiff's claim against Defendant. II. CONCLUSION For the foregoing reasons, Defendant's Motion to Dismiss First Claim for Declaratory Relief is GRANTED. Madonna Louise Veronica Ciccone is terminated as a defendant in this action. Defendant's Request for Judicial Notice is GRANTED. Defendant's Evidentiary Objections, however, are OVERRULED. Plaintiff's Evidentiary Objections are OVERRULED IN PART AND SUSTAINED IN PART. A Status Conference is hereby set for March 14, 2011 at 8:30 A.M. IT IS SO ORDERED.

Dated: February 16, 2011.

S. JAMES OTERO UNITED STATES DISTRICT JUDGE

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