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1 KELLEY DRYE & WARREN LLP Andrew W. Homer (State Bar No, 259852) 2 Tahir L. Boykins (State Bar No. 323441) 10100 Santa Monica Boulevard, 23rd Floor 3 Los Angeles, California 90067 Telephone: (310) 712-6100 4 Facsimile: (310) 712-6199 [email protected] 5 [email protected]

6 KELLEY DRYE & WARREN LLP Michael J. Zinna (pro hac vice) 7 Whitney M. Smith (pro hac vice) 101 Park Avenue 8 New York, NY 10178 Telephone: (212) 808-7800 9 Facsimile: (212) 808-7897 [email protected] 10 [email protected]

11 Attorneys for Defendants Marc Jacobs International, LLC, Saks 12 Incorporated, d/b/a Saks Fifth Avenue, and Neiman Marcus Group Limited, LLC 13 UNITED STATES DISTRICT COURT 14 CENTRAL DISTRICT OF CALIFORNIA 15 16 NIRVANA L.L.C., a Washington Limited Case No. 2:18-cv-10743-JAK-SK Liability Company, 17 Honorable John Arnold Kronstadt Plaintiff, 18 v. DEFENDANTS’ NOTICE OF 19 MOTION AND MOTION TO MARK JACOBS INTERNATIONAL DISMISS 20 LL.C., a Delaware Limited Liability Company; SAKS INCORPORATED, Date: June 10, 2019 21 d/b/a SAKS FIFTH AVENUE, a Time: 8:30 a.m. Tennessee Corporation; NEIMAN 22 MARCUS GROUP LIMITED, L.LC., a Place: Courtroom 10B Delaware Limited Liability Company; and 23 Does 1 through 10, 24 Defendants. 25 26 27 28

MOTION TO DISMISS

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1 TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD: 2 PLEASE TAKE NOTICE that on June 10, 2019, or as soon thereafter as 3 possible, in the courtroom of the Honorable John A. Kronstadt, located at First 4 Street Courthouse, 350 West 1st Street, Courtroom 10B, Los Angeles, California 5 90012-4565, Defendants Marc Jacobs International, LLC, Saks Incorporated, d/b/a 6 Saks Fifth Avenue and Neiman Marcus Group Limited, LLC, by and through their 7 attorneys, will move to dismiss the Complaint pursuant to Federal Rule of Civil 8 Procedure 12(b)(6). This motion is made following the conference of counsel 9 pursuant to L.R. 7-3, which took place on March 1, 2019. 10 This Motion is based on this Notice of Motion, the included Memorandum of 11 Points and Authorities and Request for Judicial Notice; and upon such other 12 evidence or argument as may be presented to the Court at the time of the hearing. 13 KELLEY DRYE & WARREN LLP 14

15 DATED: March 8, 2019 By: /s/ Michael J. Zinna 16 Michael J. Zinna

17 Attorney for Defendants 18 19 20 21 22 23 24 25 26 27 28

1 MOTION TO DISMISS

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1 TABLE OF CONTENTS 2 I. INTRODUCTION ...... 1 3 II. FACTUAL BACKGROUND ...... 4 4 III. ARGUMENT ...... 8 5 A. LEGAL STANDARD ...... 8 6 B. THE COPYRIGHT INFRINGEMENT CLAIM SHOULD BE 7 DISMISSED ON THREE INDEPENDENT GROUNDS ...... 9 8 1. Plaintiff Fails to Properly Allege Ownership of the ‘166 9 Registration ...... 9 10 2. Plaintiff Has Not and Cannot Allege Facts to Support the 11 Validity of the ‘166 Registration Given the Varied First 12 Publication Dates of the ‘166 Registration’s Components ..... 12 13 3. Plaintiff Has Not and Cannot Plead Extrinsic Similarity 14 Between the ‘166 Registration and the Accused Products ...... 15 15 C. THE NON-COPYRIGHT CLAIMS ARE PREEMPTED ...... 16 16 1. Plaintiff’s Non-Copyright Claims Fall Within the Subject 17 Matter of Copyright ...... 18 18 2. Plaintiff’s Asserted Rights Are Equivalent to Rights 19 Enumerated in the Copyright Act ...... 18 20 D. PLAINTIFF FAILS TO ADEQUATELY PLEAD KEY 21 ELEMENTS OF ITS NON-COPYRIGHT CLAIMS ...... 20 22 1. The California Common Law Trademark Infringement 23 Claim Should Be Dismissed Because Plaintiff Admits 24 That It Is Not Using the X-Eye Smiley Face as a 25 Trademark ...... 21 26 2. The Claim for False Designation of Origin Under the 27 Lanham Act Should Be Dismissed Because Plaintiff Fails 28 to Adequately Plead Likelihood of Confusion ...... 22

i MOTION TO DISMISS

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1 3. The California Unfair Competition Claim Should Be 2 Dismissed Because Plaintiff Fails to Adequately Plead 3 Passing Off ...... 23 4 IV. CONCLUSION ...... 24 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

ii MOTION TO DISMISS

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1 TABLE OF AUTHORITIES 2 Page(s) 3 Cases 4 Adobe Sys. Inc. v. A&S Elecs., Inc., No. C 15-2288 SBA, 2015 WL 13022288 (N.D. Cal. Aug. 19, 2015) ...... 23 5 Aquawood, LLC v. Toys “R” Us-Delaware, Inc., 6 No. 2:15-cv-05869-AB, 2016 WL 10576620 (C.D. Cal. Mar. 10, 2016) ...... 18, 23, 24 7 Ashcroft v. Iqbal, 8 556 U.S. 662 (2009) ...... 9 9 Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) ...... 9 10 Capcom Co. v. The MKR Group, 11 No. C 08-0904 RS, 2008 WL 4661479 (N.D. Cal. Oct. 20, 2008) ...... 17 12 Cavalier v. Random House, Inc., 297 F.3d 815 (9th Cir. 2002) ...... 15 13 Cummings v. Soul Train Holdings LLC, 14 67 F. Supp. 3d 599, 606 ...... 20 15 Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003) ...... 17 16 Endemol Entm’t B.V. v. Twentieth Television Inc., 17 No. CV 98-0608 ABC, 1998 WL 785300 (C.D. Cal. Sep. 29, 1998) ...... 17 18 Knievel v. ESPN, 393 F.3d 1068 (9th Cir. 2005) ...... 1 19 Lasco Fittings, Inc. v. Lesso Am., Inc., 20 No. EDCV 13-02015-VAP, 2014 WL 12601016 (C.D. Cal. Feb. 21, 2014) ...... 21 21 Laws v. Sony Music Entm't, Inc., 22 448 F.3d 1134 (9th Cir. 2006) ...... 17 23 Lee v. City of Los Angeles, 250 F.3d 668 (9th Cir. 2001) ...... 1, 20 24 Lions Gate Entm’t Inc. v. TD Ameritrade Secs. Co., 25 170 F. Supp. 3d 1249 (C.D. Cal. 2016) ...... 18, 19, 24 26 Marcus v. ABC Signature Studios, Inc., 279 F. Supp. 3d 1056 (C.D. Cal. 2017) ...... 9, 15 27 Mir v. Little Co. of Mary Hosp., 28 844 F.2d 646 (9th Cir. 1988) ...... 1

iii MOTION TO DISMISS

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1 Motta v. Samuel Weiser, Inc., 768 F.2d 481 (1st Cir. 1985) ...... 11 2 Nat’l Bus. Dev. Servs., Inc. v. Am. Credit Ed. & Consulting, Inc., 3 299 F. App’x 509 (6th Cir. 2008) ...... 20 4 Olander Enters. Inc. v. Spencer Gifts, LLC, 812 F. Supp. 2d 1070 (C.D. Cal. 2011) ...... passim 5 Petrella v. Metro-Goldwyn-Mayer, Inc., 6 572 U.S. 663 (2014) ...... 10 7 Prince v. Univ. Music Corp., No. 2:09-cv-1459-FMC-FFMX, 2009 WL 10672282 (C.D. Cal. 8 June 18, 2009) ...... 20 9 Salt Optics, Inc. v. Jand, Inc., No. SACV 10-0828, 2010 WL 4961702 (C.D. Cal. Nov. 19, 2010) ...... 20 10 Silas v. Home Box Office, Inc., 11 201 F. Supp. 3d 1158 (C.D. Cal. 2016) ...... 9, 15 12 Sybersound Records, Inc. v. UAV Corp., 517 F.3d 1137 (9th Cir. 2008) ...... 23 13 Tang v. Hwang, 14 799 F. Supp. 499 (E.D. Pa. 1992) ...... 11 15 Touchpoint Commc’ns, LLC v. Dentalfone, LLC, No. 3:15-cv-05240-JRC, 2015 WL 5918400 (W.D. Wash. Oct. 9, 16 2015) ...... 20 17 United Fabrics Int’l v. C&J Wear, Inc., 630 F.3d 1255 (9th Cir. 2010) ...... 13 18 Varsity News Network, Inc. v. Carty Web Strategies, Inc., No. CV 17-2574 PSG, 2017 WL 7156278 (C. D. Cal. Nov. 21, 19 2017) ...... 22 20 Statutes 21 14 U.S.C. § 1125 ...... 22 22 17 U.S.C. § 101 ...... 5, 10 23 17 U.S.C. § 102 ...... 17, 18 24 17 U.S.C. § 103 ...... 17 25 17 U.S.C. § 106 ...... 16, 17 26 17 U.S.C. § 201 ...... 10 27 17 U.S.C. § 204 ...... 10 28 17 U.S.C. § 301 ...... 16

iv MOTION TO DISMISS

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1 17 U.S.C. § 411 ...... 9, 10, 12, 15 2 17 U.S.C. § 501 ...... 10 3 Other Authorities 4 37 C.F.R. § 202.3(b) ...... 11–14 5 Fed. R. Civ. P. 12(b)(1) ...... 11 6 Fed. R. Civ. P. 12(b)(6) ...... 1, 8, 11 7 Federal Rule of Evidence 201...... 1 8 H.R. REP. NO. 94–1476, at 131 (1976), reprinted in 1976 U.S.C.C.A.N. 5659 ...... 17 9

10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

v MOTION TO DISMISS

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1 Defendants Marc Jacobs International, LLC1 (“MJI”), Saks Incorporated, 2 d/b/a Saks Fifth Avenue (“Saks”) and Neiman Marcus Group Ltd, LLC (“Neiman 3 Marcus) (collectively, “Defendants”) respectfully submit the following 4 memorandum and points of authorities in support of their motion pursuant to 5 Federal Rule of Civil Procedure 12(b)(6) to dismiss Nirvana L.L.C.’s (“Plaintiff”) 6 Complaint in the above-referenced action.2 7 I. INTRODUCTION 8 MJI designer Mr. Marc Jacobs is one of the world’s best-known and most 9 celebrated fashion designers, having served as the creative director for Perry Ellis, 10 Louis Vuitton and his own eponymous fashion brand, MARC JACOBS. In 1984, 11 Mr. Jacobs made his runway show debut with a collection featuring oversized 12 “smiley face” sweaters, a design motif that would continue to be incorporated into 13 his collections throughout his career. 14 In 1992, while serving as the creative director for the iconic American fashion 15 house Perry Ellis, Mr. Jacobs introduced what is now simply referred to as the 16 “Grunge” Collection, for the Spring/Summer 1993 season (the “SS93 Grunge 17 Collection”). To design this collection, Mr. Jacobs drew inspiration from the looks 18 that his friends were wearing in downtown Manhattan and in the Pacific Northwest 19 at the time. The collection was considered groundbreaking in the fashion world, 20 21 1 MJI is improperly named in the caption of the Complaint as Mark Jacobs Int’l 22 LL.C. 23 2 Defendants also submit Exs. 1 to 8 attached to the Request for Judicial Notice 24 (“RJN”) in support this motion. As set forth in the RJN, the Court may consider materials in connection with a motion to dismiss because they are referenced within 25 the Complaint but not included in the pleadings, where no party questions the 26 authenticity of such materials. Knievel v. ESPN, 393 F.3d 1068, 1076 (9th Cir. 2005); Lee v. City of Los Angeles, 250 F.3d 668, 688 (9th Cir. 2001). The Court 27 may also take judicial notice of facts outside the Complaint, subject to Federal Rule 28 of Evidence 201. Mir v. Little Co. of Mary Hosp., 844 F.2d 646, 649 (9th Cir. 1988).

1 MOTION TO DISMISS

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1 because it brought together high fashion and streetwear on the runway in a way that 2 had never been done before. The debut of the SS93 Grunge Collection is now 3 considered to be one of the most influential runway fashion shows of the 1990s. 4 Musically, one of the bands that rose to prominence during the Nineties 5 “grunge” era was Nirvana. The band’s front man and lead singer was Mr. Kurt 6 Cobain. Mr. Cobain’s wife was Ms. Courtney Love, herself an entertainer. Mr. 7 Jacobs said of the SS93 Grunge Collection that, “[Courtney Love’s] style … had a 8 great influence on that now famous ‘grunge collection’ show in 1992.” Ironically, 9 Ms. Love is quoted as saying that in 1992, “Marc [Jacobs] sent me and Kurt 10 [Cobain] his Perry Ellis Grunge Collection. Do you know what we did with it? We 11 burned it.” Ms. Love and Mr. Cobain apparently were not alone in their opinions of 12 the collection. Though it later received great critical acclaim by the fashion press 13 for the impact it had on the fashion industry, the collection was widely panned at the 14 time, and led to Mr. Jacobs’ infamous departure from Perry Ellis. Mr. Jacobs then 15 started his own eponymous brand MARC JACOBS, and for the past 25 years has 16 continued to be inspired by grunge style and incorporate grunge references into his 17 collections. 18 After the SS93 Grunge Collection was launched and summarily dismissed by 19 Ms. Love and Mr. Cobain, in 1994 Marc Jacobs met Courtney Love and Frances 20 Bean Cobain (then two years-old), the daughter of Ms. Love and the then-late Mr. 21 Cobain, beginning a personal and professional relationship with both women that 22 endures to this day. Ms. Love, one of the co-owners of The End of Music, LLC, 23 which is a co-owner of Plaintiff, appeared in the MARC JACOBS Fall 2016 24 advertising campaign. She is a regular attendee at the brand’s runway shows and is 25 dressed by the brand for special events. Ms. Cobain, the other co-owner of The End 26 of Music, LLC, was featured in the MARC JACOBS Spring 2017 advertising 27 campaign – her first major fashion campaign – and has participated in marketing 28 activities for Mr. Jacobs and the MARC JACOBS brand. After Mr. Cobain’s death,

2 MOTION TO DISMISS

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1 The End of Music, LLC inherited his estate including Mr. Cobain’s publicity, 2 intellectual property and other rights. 3 MJI’s MARC JACOBS collections over the years continued to reference 4 “grunge” fashion codes and the Nineties streetwear styles that Mr. Jacobs developed 5 into high fashion in 1992 including, for example, plaids, layered prints and textures, 6 oversized silhouettes, distressed knitwear, relaxed fabrics and beanies. Mr. Jacobs 7 also has continued to use a “smiley face” as a design motif in various ways in his 8 collections and branding, even obtaining trademark protection in the United States 9 and elsewhere for one such smiley face: 10 11 12 13 14 (RJN Ex. 1.) 15 In Nov. 2018, to celebrate the 25th anniversary of the iconic SS93 Grunge 16 Collection, MJI re-released 26 of the looks from that collection as the MARC 17 JACOBS “Redux Grunge Collection” for the brand’s Resort 2018 seasonal 18 collection. Pieces from the Redux Grunge Collection are sold at MJI retail outlets 19 and a limited number of authorized third party retailers such as defendants Saks and 20 Neiman Marcus. 21 MJI’s Resort 2018 seasonal collection also included a one-time production 22 run of a limited-quantity capsule consisting of the three new products that are the 23 subject of this lawsuit: a t-shirt, sweatshirt and pair of socks with a smiley face that 24 had the letters MJ as eyes and the word “HEAVEN” above it (collectively, the 25 “Accused Products”). The design was inspired by vintage Nirvana concert t-shirts 26 from the 1990s – the era of “grunge” fashion. Marc Jacobs reinterpreted the design 27 of the face using his MJ initials as the face’s eyes in order to incorporate an MJI 28 branding element into an otherwise commonplace image. The Accused Products

3 MOTION TO DISMISS

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1 became available for purchase in Nov. 2018. 2 The release of the Redux Grunge Collection was met with much fanfare in the 3 fashion press, and fashion insiders rushed to buy the coveted looks that had not been 4 available for 25 years. As friends of the brand, Ms. Love and Ms. Cobain helped 5 celebrate the release of the collection. Each woman was gifted designs from the 6 collection. Ms. Love was invited to perform at the launch event for the collection in 7 Los Angeles. Both Ms. Love and Ms. Cobain “liked” and commented on the 8 images of the collection that Mr. Jacobs posted on his Instagram feed, including, 9 notably, images of Mr. Jacobs in the t-shirt that is one of the Accused Products. Ms. 10 Love commented on one of the images of Mr. Jacobs in that shirt, saying, “Nice 11 photo! Looks some [sic] what familiar! Amazing!” 12 Plaintiff now claims that the sale of the Accused Products including that t- 13 shirt constitute copyright infringement, false designation of origin, trademark 14 infringement and unfair competition. The Complaint stems from the false premise 15 that the Plaintiff owns a U.S. copyright registration on a smiley face design (albeit a 16 different one than the one found on the Accused Products), when in fact, that smiley 17 face is merely a fraction of the full artwork covered by the registration and the 18 remainder of the covered artwork is not alleged to have been used on the Accused 19 Products. The Complaint gets more egregious from there, alleging three other claims 20 that are not only factually unsupported, but preempted. 21 For the reasons stated herein, the Complaint should be dismissed for failing to 22 state a claim upon which relief can be granted with regard to each cause of action. 23 Defendants respectfully submit that the claims should be dismissed with prejudice. 24 II. FACTUAL BACKGROUND 25 Plaintiff is a Washington limited liability company that purports to own U.S. 26 Copyright Registration VA0000564166 (“the ‘166 Registration”) covering the 27 design of a t-shirt, entitled “Happy Face.” (Compl. ¶¶ 4, 13, Ex. 1.) Plaintiff is 28 owned by The End of Music, LLC and the surviving members of the band Nirvana,

4 MOTION TO DISMISS

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1 Mr. Krist Novoselic and Mr. Dave Grohl. (RJN Ex. 2.) Mr. Novoselic and Mr. 2 Grohl were also the two governors/owners of Nirvana, Inc. (RJN Ex. 3.) Mr. 3 Cobain is not listed as a governor/owner of Nirvana, Inc. (Id.) 4 Plaintiff alleges that the Accused Products constitute copyright infringement 5 under 17 U.S.C. § 101 et. seq., false designation of origin under the Lanham Act, 6 trademark infringement under California common law and unfair competition under 7 California common law because they contain graphics that are allegedly too similar 8 to the material covered by the ‘166 Registration. (see e.g., Compl. ¶¶ 23 – 40.) 9 Importantly, despite being titled “Happy Face,” the copyrighted artwork 10 covered by the ‘166 Registration is made up of several graphic and textual elements, 11 as shown in the deposit material submitted with the application and consistent with 12 the application’s description of the artwork as a “Tee shirt design – entire work.” 13 (Compl. Ex. 1). The entire work covered by the ‘166 Registration is: 14 (1) a smiley face that looks hand drawn, with: (a) Xs as eyes, (b) a squiggly 15 line for a mouth with a tongue protruding therefrom and (c) a roughly 16 circular facial outline (the “X-Eye Smiley Face”), and 17 (2) the word NIRVANA written above the face (the “Nirvana Logo”), and 18 (3) the words “flower sniffin kitty pettin baby kissin corporate rock whores” 19 with a horizontal line above it written on the back of the t-shirt (the 20 “Flower Sniffin Writing”). (Compl. Ex. 1.) 21 The deposit material is evidence of the entire work that was to be (and 22 actually is) covered by the ‘166 Registration: 23 24 25 26 27 28

5 MOTION TO DISMISS

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1 (Compl. ¶ 13, Ex. 1.) 2 Thus, the Plaintiff does not own a copyright registration for just the X-Eye 3 Smiley Face, despite referring to that image as copyrighted several times in the 4 Complaint. (see e.g. Compl. ¶¶ 17 – 19.) 5 Ownership of the artwork covered by the ‘166 Registration is germane here. 6 The Complaint alleges that, in about 1991, Mr. Kurt Cobain created the X-Eye 7 Smiley Face that is part of the artwork covered by the ‘166 Registration. (Compl. ¶ 8 13.) However, the ‘166 Registration lists Nirvana, Inc. as both the author of the 9 work and the copyright claimant. (Compl. Ex. 1.) The Complaint does not allege 10 how or whether Mr. Cobain’s rights in all or part of the artwork were transferred to 11 Nirvana, Inc. The Complaint is also silent on who created the other components of 12 the registered artwork and how or whether those rights were transferred. 13 Nonetheless, on Dec. 14, 1998, Plaintiff Nirvana L.L.C. filed Copyright Form 14 CA to change the copyright claimant from Nirvana, Inc. to Nirvana L.L.C. (Compl. 15 Ex. 1.) The form claimed that the ‘166 Registration had been assigned from 16 Nirvana, Inc. to Nirvana (no corporate identifier listed) on Nov. 15, 1997 and then 17 from Nirvana to Plaintiff Nirvana, L.L.C. on July 29, 1998. (Id.) 18 The first publication of the different artistic components of the ‘166 19 Registration is also important here. According to the ‘166 Registration, the date of 20 first publication of the complete work covered by the ‘166 Registration is Nov. 1, 21 1991. (Compl. Ex 1.) However, as it turns out, several components of that work 22 were published on different, prior dates. The X-Eye Smiley Face was published 23 without the other components of the registered artwork on a poster at least as early 24 as “Friday, September 13” for an event that was held on Sept. 13th.3 (Compl. ¶ 15.) 25

26 3 Plaintiff’s statement in Paragraph 15 of the Complaint that Plaintiff “has used [the 27 X-Eye Smiley Face] continuously since 1992 …” references the poster for the album release event held on September 13, 1991 as an exemplar of the first use of 28

6 MOTION TO DISMISS

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1 Although it was not listed on the poster, the year was 1991. The poster advertised 2 the release party for Nirvana’s then-forthcoming Nevermind album (Compl. ¶ 15), 3 which was released on September 24, 1991. (RJN Exs. 4, 5.) The Nirvana Logo 4 was published without the other components of the registered artwork on the cover 5 of Nirvana’s Bleach album, which was released on June 15, 1989. (RJN Ex. 6.) 6 U.S. trademark applications for the Flower Sniffin Writing put its date of first use at 7 November 1, 1991, consistent with the ‘166 Registration.4 (Compl. Ex. 1.) In short, 8 each artistic component of the composite artwork covered by the ‘166 Registration 9 was first published separately, on different dates. 10 Copyright aside, the Complaint also attempts to establish Plaintiff’s rights in 11 the X-Eye Smiley Face via trademark. (Compl. ¶ 16.) These assertions are belied 12 by Plaintiff’s U.S. trademark application for the X-Eye Smiley Face, which was 13 filed on an “intent to use” basis for clothing and other items only a few weeks ago, 14 on Jan. 28, 2019. (RJN Ex. 7.) In other words, Plaintiff swore under oath and 15 penalty of perjury to the U.S. Patent & Trademark Office (“USPTO”) that, as of Jan. 16 28, 2019, it had an “intent” to use the X-Eye Smiley Face as a trademark on 17 clothing, but had not yet done so. 18 MJI’s Redux Grunge Collection was released publicly in Nov. 2018. (Compl. 19 ¶ 17.) The collection included a t-shirt, sweatshirt and socks printed with a smiley 20 face that had the letters M and J as eyes, a squiggly mouth with a tongue protruding 21 therefrom and the word HEAVEN above it, as shown in the Complaint. (Compl. ¶

22 23 that smiley face. Claiming that the X-Eye Smiley Face has only been in continuous use since 1992, but then referencing use from 1991, is at best confusing and at worst 24 intentionally misleading, as the event poster clearly predated Plaintiff’s copyright 25 filing and alleged first use and publication of the design. 26 4 If the case proceeds, Defendants reserve the right to challenge the date of publication for every element of the ‘166 Registration based upon information 27 learned in discovery. MJI has no basis to dispute the Flower Sniffin Writing date at 28 this time, so accepts this date as true, as it must, for purposes of this motion only.

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1 17.) 2 Plaintiff admits that there are differences between the material covered by the 3 ‘166 Registration and the artwork of the Accused Products. (Compl. ¶¶ 17 – 18.) 4 The differences are even more pronounced than Plaintiff acknowledges: 5 Components of the ‘166 Registration: Artwork on the Accused Products: 6 The word NIRVANA Not Used 7 The Flower Sniffin Writing Not Used 8 A smiley face with (a) Xs as eyes, (b) No Xs for eyes. A smiley face with (a) 9 a squiggly line for a mouth with a an M and J as eyes, (b) a squiggly line 10 tongue protruding therefrom and (c) a for a mouth with a tongue protruding 11 roughly circular facial outline therefrom and (c) a roughly circular 12 facial outline 13 14 15 16 17 18

19

20

21

22 (Compare Compl. Ex. 1 with Compl. ¶ 17.) 23 III. ARGUMENT 24 A. LEGAL STANDARD 25 Under Federal Rules of Civil Procedure Rule 12(B)(6), a court may dismiss a 26 complaint for failure to state a claim upon which relief can be granted. To survive a 27 motion to dismiss, a complaint must “contain sufficient factual matter, accepted as 28

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1 true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 2 U.S. 662, 678 (2009). Although the complaint need not be detailed, “a plaintiff's 3 obligation to provide the ‘grounds’ of his ‘entitle[ment] to relief’ requires more than 4 labels and conclusions, and a formulaic recitation of the elements of a cause of 5 action will not do.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007). Factual 6 allegations must rise above a speculative level. Id. While allegations in the pleading 7 are accepted as true for purposes of this motion, “[t]he court need not, however, 8 accept as true unreasonable inferences or legal conclusions cast in the form of 9 factual allegations.” Silas v. Home Box Office, Inc., 201 F. Supp. 3d 1158, 1168 10 (C.D. Cal. 2016). 11 B. THE COPYRIGHT INFRINGEMENT CLAIM SHOULD BE 12 DISMISSED ON THREE INDEPENDENT GROUNDS 13 To establish a claim for copyright infringement, a plaintiff must show that it 14 is: (1) the owner (2) of a valid copyright, and (3) the defendant copied original 15 elements of the work which are protectable by copyright. 17 U.S.C. § 411(a); see 16 also Marcus v. ABC Signature Studios, Inc., 279 F. Supp. 3d 1056, 1064 (C.D. Cal. 17 2017); Olander Enters. Inc. v. Spencer Gifts, LLC, 812 F. Supp. 2d 1070, 1074–75 18 (C.D. Cal. 2011). 19 Here, the Complaint fails to adequately plead facts sufficient to show that: (1) 20 Plaintiff is the owner of the ‘166 Registration, (2) that the ‘166 Registration is valid, 21 and that (3) the artwork on the Accused Products is substantially similar to what is 22 covered by the ‘166 Registration. A finding that the Complaint is deficient in even 23 one of these respects is grounds for dismissal of the copyright infringement claim. 24 1. Plaintiff Fails to Properly Allege 25 Ownership of the ‘166 Registration 26 The starting point of any copyright infringement inquiry is whether the 27 Plaintiff is the owner of the asserted copyright registration. Only “the legal or 28 beneficial owner of an exclusive right under a copyright is entitled . . . to institute an

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1 action for any infringement of that particular right committed while he or she is the 2 owner of it.” 17 U.S.C. § 501(b). Copyright ownership “vests initially in the author 3 or authors of the work.” 17 U.S.C. § 201(a). Ownership may also vest as a work 4 for hire if it is: (1) a work prepared by an employee within the scope of his or her 5 employment; or (2) a work specially ordered or commissioned for use as a 6 contribution to a collective work … if the parties expressly agree in a written 7 instrument signed by them that the work shall be considered a work made for hire. 8 17 U.S.C. § 101, § 201(b). Although copyright ownership rights may be transferred, 9 “[a] transfer of copyright ownership, other than by operation of law, is not valid 10 unless an instrument of conveyance, or a note or memorandum of the transfer, is in 11 writing and signed by the owner of the rights conveyed or such owner's duly 12 authorized agent.” 17 U.S.C. § 204(a); see Petrella v. Metro-Goldwyn-Mayer, Inc., 13 572 U.S. 663, 668 (2014). If a plaintiff cannot demonstrate ownership of a valid 14 copyright registration, a claim for copyright infringement must be dismissed. 17 15 U.S.C. § 411(a). 16 Plaintiff alleges that Kurt Cobain is the creator of what it calls the Smiley 17 Face design and logo, i.e., the X-Eye Smiley Face. (Compl. ¶ 13.) Plaintiff 18 represents that the design and logo is as follows: 19 20 21 22 23 24 (Compl. ¶ 14.) 25 As a threshold matter, the X-Eye Smiley Face is only a fraction of what is 26 covered by the ‘166 Registration, as clearly shown in its deposit material, which 27 includes the text and graphics on the full front and back of a t-shirt. (Compl. Ex. 1). 28 In any event, the Complaint contains no explanation, or even unsupported

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1 conclusions, regarding how or whether Mr. Cobain transferred his rights in the X- 2 Eye Smiley Face to the author/copyright claimant listed on the ‘166 Registration: 3 Nirvana, Inc. (Compl. Ex. 1.) The Complaint is silent on this important point.5 The 4 Complaint is also silent about whether Mr. Cobain was the author/creator of the 5 other components of the ‘166 Registration. The ‘166 Registration appears to 6 indicate the artwork it covers was a “work made for hire”. However, information 7 that is absent from the Complaint includes: who the work made for hire is from, 8 which portions of the artwork it related to, and whether a “work for hire” 9 conveyance is an appropriate mechanism for transfer between the relevant parties.6 10 These omissions are fatal to the copyright claim.7 37 C.F.R. § 202.3(b)(2)(i)(B)(1) 11 (“The Single [Copyright] Application may be used only to register one work by one 12 author. All of the content appearing in the work must be created by the same 13 individual. The work must be owned by the author who created it, and the author 14 and the claimant must be the same individual.”); Motta v. Samuel Weiser, Inc., 768 15 F.2d 481, 483–84 (1st Cir. 1985) (“If a plaintiff is not the author of the copyrighted 16 work then he or she must establish a proprietary right through the chain of title in 17 order to support a valid claim to the copyright.”); see also Tang v. Hwang, 799 F. 18 Supp. 499, 503 (E.D. Pa. 1992). 19 Thus, Plaintiff’s claim for copyright infringement should be dismissed 20 5 21 It is unclear whether Mr. Cobain is, in fact, the creator of the X-Eye Smiley Face, but Defendants accept that fact as true, as they must, for the purposes of this motion. 22 6 The omission of key information regarding the transfer of rights to Nirvana, Inc, is 23 made more glaring by the incomplete image of the poster containing the X-Eye Smiley Face cited in ¶ 15 of the Complaint, which Plaintiff claims is the first use of 24 that smiley face. The image was cropped by the Plaintiff to remove the bottom of 25 the poster, which appears to contain indicia of and a copyright notice for the David Geffen Company. (RJN Ex. 4.) 26 7 Although this is a motion under Fed. R. Civ. P. 12(b)(6), Defendants reserve their 27 right to challenge Plaintiff’s standing to assert the ‘166 Registration under Fed. R. 28 Civ. P. 12(b)(1).

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1 because the Complaint does not contain sufficient facts to support Plaintiff’s 2 position that it owns the ‘166 Registration. 3 2. Plaintiff Has Not and Cannot Allege Facts to Support the 4 Validity of the ‘166 Registration Given the Varied First 5 Publication Dates of the ‘166 Registration’s Components 6 Plaintiff’s claim for copyright infringement must be dismissed for the second, 7 independent reason that the claim is based on an invalid copyright registration. 8 Plaintiff’s own admissions compel this result. The presumption of validity created 9 by a registration is rebutted if the registration includes inaccurate information which 10 the applicant (1) knew was inaccurate, and (2) the inaccuracy would have caused the 11 Register of Copyrights to refuse the registration. 17 U.S.C. § 411(b)(1). The 12 inclusion of multiple works, first published on different dates, in a single Form VA 13 copyright application is impermissible and would cause the application to be 14 rejected by the Copyright Office. See Olander, 812 F. Supp. 2d at 1075. Here, the 15 ‘166 Registration covers different works published at different times, yet was 16 registered as a single work. The publication dates cannot credibly be disputed by 17 Plaintiff and they render the ‘166 Registration invalid. 18 Multiple works may be registered through a single registration if they qualify 19 for a “single work” registration for a group of published or unpublished works.8 See 20 37 C.F.R. § 202.3(b)(4). “A work is ‘published’ for purposes of the Copyright Act 21 when copies of the work are distributed to the public ‘by sale or other transfer of 22 ownership, or by rental, lease or lending’ or offered to be distributed ‘to a group of 23 persons for purposes of further distribution.’” Olander, 812 F. Supp. 2d at 1075 24 (quoting 17 U.S.C. § 101). 25 26 8 Multiple works may also be registered through a “group registration” if certain 27 conditions are met. See 37 C.F.R. § 202.3(b)(5)–(11). The ‘166 Registration is 28 not a group registration.

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1 A single work, in the case of published works, is defined as “all copyrightable 2 elements that are otherwise recognizable as self-contained works, that are included 3 in a single unit of publication, and in which the copyright claimant is the same.” 37 4 C.F.R. § 202.3(b)(4)(i)(A). A registration for what is claimed to be a published 5 single work is invalid if the registration actually covers multiple creative works that 6 were not first published together. Olander, 812 F. Supp. 2d at 1076; see also United 7 Fabrics Int’l v. C&J Wear, Inc., 630 F.3d 1255, 1259 (9th Cir. 2010). Under such 8 circumstances, a claimant seeking copyright protection must file separate 9 applications and obtain separate registrations for each creative work. Id. at 1075 10 (citing 37 C.F.R. § 202.3(b)(2)(i)). 11 In Olander, plaintiff alleged ownership of four “single work” registrations, 12 each for a catalogue depicting multiple belt buckles. 812 F. Supp. 2d at 1072. 13 Plaintiff alleged that the defendants infringed various belt buckle designs depicted 14 within the catalogues/registrations. Id. There was undisputed evidence that some of 15 the belt designs were published, by individual sale, prior to their inclusion in the 16 catalogues that were registered as a single work copyright. Id. at 1076. In finding 17 that the copyright registrations on the catalogues were invalid, the Court held that, 18 “a group of published works must be first published together in order to qualify as a 19 ‘single unit of publication’ for purposes of a ‘single work’ registration [in 20 accordance with] … the United States Copyright Office Compendium of Copyright 21 Office Practices § 607.01.” Id. (citing U.S. Copyright Office, Help: Type of Work, 22 http://www.copyright.gov/eco/help-type.html (visited Aug. 19, 2011) (“To register 23 multiple individual works contained in the same unit of publication with a single 24 application, the following requirements must be met: This publication must 25 represent first publication of all of the works included in the registration. The 26 registration must exclude any previously published work.”)). The inclusion of the 27 previously-published belts in the registered works invalidated the entirety of each 28 registration. Id. at 1077–78. Plaintiff could not show that any of the four alleged

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1 registrations were valid, thus Plaintiff could not prove an essential element of the 2 claim for infringement. Id. at 1078. 3 Here, the stylized X-Eye Smiley Face, Nirvana Logo and the Flower Sniffin 4 Writing are three separate works. The Complaint tacitly admits this by failing to 5 assert that the Nirvana Logo or the Flower Sniffin Writing were part of what Mr. 6 Cobain created. (Compl. ¶ 14.) 7 Different authorship aside,9 fatally, these works all have different publication 8 dates, despite being copyrighted together. 9 First, the Complaint claims that the X-Eye Smiley Face was “created by Kurt 10 Cobain in about 1991,” (Compl. ¶ 13.) The Complaint also admits that the X-Eye 11 Smiley Face was published no later than Sept. 13, 1991 on a poster to promote the 12 then-upcoming release of Nirvana’s Nevermind album on Sept. 24, 1991. (Compl. ¶ 13 15.) 14 Second, the Nirvana Logo was published at least as early as June 15, 1989 15 on the cover of Nirvana’s Bleach album. (RJN Ex. 6.) 16 Third, pursuant to the ‘166 Registration, the publication date of the Flower 17 Sniffin Writing is Nov. 1, 1991. (Compl. Ex. 1.) This comports with the date of 18 first use claimed in the U.S. trademark registration for the Flower Sniffin Writing.10 19 Two members of Nirvana, Inc. were members of the band Nirvana and it 20 cannot credibly be argued that they did not know these dates. There can be no 21 credible dispute that the three separate works covered by the ‘166 Registration were 22 23 9 The inclusion of different works by different authors can also render a copyright 24 registration invalid. 37 C.F.R. § 202.3(b)(2)(i)(B)(1). The authors/creators of the 25 Nirvana Logo and the Flower Sniffin Writing will be explored in discovery if the case is not dismissed. This argument does not form the basis for Defendants’ 26 motion. 27 10 MJI has no basis to dispute this date at this time, so accepts this date as true as it 28 must for purposes of this motion only.

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1 first published separately. Had this information been provided to the Copyright 2 Office, it would have denied registration. Olander, 812 F. Supp. 2d at 1075. The 3 Registration is therefore rendered fundamentally invalid. 17 U.S.C. § 411(b)(1). 4 Accordingly, the copyright claim should be dismissed. 5 3. Plaintiff Has Not and Cannot Plead Extrinsic Similarity 6 Between the ‘166 Registration and the Accused Products 7 Plaintiff’s claim for copyright infringement must be dismissed for the third, 8 independent reason that there is no extrinsic similarity between what is covered by 9 the ‘166 Registration and the artwork on the Accused Products. The final element of 10 a copyright claim, copying, is established by showing: (1) access to plaintiff’s 11 copyrighted work, and (2) the works at issue are substantially similar concerning the 12 protected elements. Marcus, 279 F. Supp. 3d at 1064. In the Ninth Circuit, 13 substantial similarity requires a showing of intrinsic and extrinsic similarity. Id. at 14 1065. “The ‘intrinsic’ test is a subjective comparison that focuses on ‘whether the 15 ordinary, reasonable audience’ would find the works substantially similar in the 16 ‘total concept and feel of the works.’” Cavalier v. Random House, Inc., 297 F.3d 17 815, 822 (9th Cir. 2002). This test is subjective and is best left to the jury. Silas, 18 201 F. Supp. 3d at 1171. 19 However, courts may dismiss a complaint for failure to satisfy the extrinsic 20 test, which is an objective comparison of “specific expressive elements.” Id. 21 “Courts must ‘filter out and disregard [ ] non-protectible elements’ of a plaintiff's 22 work and inquire only into ‘whether the protectible elements, standing alone, are 23 substantially similar.’” Id. (quoting Cavalier, 297 F.3d at 822) (emphasis in 24 original). A plaintiff who cannot establish extrinsic similarity cannot proceed with a 25 claim, because both extrinsic and intrinsic similarity are necessary for a finding of 26 copyright infringement. Id. at 1172. 27 Here, the Complaint does not sufficiently plead extrinsic similarity. Plaintiff 28 concludes that the Accused Products utilize a design and logo virtually identical to

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1 Nirvana’s “copyrighted image,” i.e., the X-Eye Smiley Face. (Compl. ¶ 17.) But 2 despite Plaintiff’s attempt to make this case only about the X-Eye Smiley Face, that 3 image is not copyrighted by itself, so this is not the proper inquiry. The relevant 4 comparison is between the entirety of the protectable elements of the ‘166 5 Registration and the artwork shown on each Accused Product. The Complaint does 6 not and cannot plead facts sufficient to show extrinsic similarity between those two 7 sets of artwork. The ‘166 Registration includes the word “Nirvana.” The Accused 8 Products do not. The ‘166 Registration includes the Flower Sniffin Writing. The 9 Accused Products do not. The ‘166 Registration includes a smiley face with Xs as 10 eyes. The Accused Products do not; they use a different letter for each eye, the 11 letters M and J, signifying Marc Jacobs. The only similarity between what is 12 covered by the ‘166 Registration and the artwork contained on the Accused Products 13 that can be gleaned from the Complaint is the use of a substantially circular outline 14 for the smiley face and a squiggly line used for a mouth, with a tongue sticking out. 15 Whether these are “protectable elements” of the ‘166 Registration is not a question 16 MJI expects the Court to resolve on a motion to dismiss. Assuming arguendo that 17 these elements are protectable, this small amount of similarity is not enough to meet 18 the extrinsic similarity text – the alleged similarity here relates only to a fraction of 19 one of the three components of the ‘166 Registration’s work. This is not enough to 20 survive a motion to dismiss. 21 Accordingly, the copyright infringement claim must be dismissed for failure 22 to state a claim, because the Complaint fails to allege which elements of MJI’s 23 allegedly infringing products are extrinsically similar to any protectable elements of 24 the ‘166 Registration. 25 C. THE NON-COPYRIGHT CLAIMS ARE PREEMPTED 26 The Copyright Act preempts rights under common law or state statutes that 27 “are equivalent to any of the exclusive rights within the general scope of copyright 28 as specified by section 106.” 17 U.S.C. § 301(a). The Supreme Court has extended

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1 this principle of copyright preemption to the Lanham Act and federal trademark 2 protection. See Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 3 33–38 (2003). Material does not necessarily need to be protected under the

4 Copyright Act to be subject to its preemptive scope. H.R. REP. NO. 94–1476, at 131 5 (1976), reprinted in 1976 U.S.C.C.A.N. 5659 at 5747 (“As long as a work fits 6 within one of the general subject matter categories of sections 102 and 103, the bill 7 prevents the States from protecting it even if it fails to achieve Federal statutory 8 copyright because it is too minimal or lacking in originality to qualify. . . .”); see 9 also Endemol Entm’t B.V. v. Twentieth Television Inc., No. CV 98-0608 ABC, 1998 10 WL 785300, at *3 (C.D. Cal. Sep. 29, 1998) (“[T]he shadow actually cast by the 11 [Copyright] Act’s preemption is notably broader than the wing of its protection”).11 12 The Ninth Circuit has adopted a two-part test for copyright preemption. First, 13 the court “determine[s] whether the ‘subject matter’ of the state law claim falls 14 within the subject matter of copyright as described in 17 U.S.C. §§ 102 and 103.” 15 Laws v. Sony Music Entm't, Inc., 448 F.3d 1134, 1137 (9th Cir. 2006) (footnotes 16 omitted). Second, if the court determines the subject matter is within copyright, 17 then the court “determine[s] whether the rights asserted under state law are 18 equivalent to the rights contained in 17 U.S.C. § 106, which articulates the exclusive 19 rights of copyright holders.” Id. at 1137–38. Applying these standards here, 20 Plaintiff’s non-copyright claims are preempted. 21 22 23 11 Plaintiff’s Lanham Act claim for false designation of origin will also preempt 24 Plaintiff’s common law trademark claim. Capcom Co. v. The MKR Group, No. C 25 08-0904 RS, 2008 WL 4661479, at *15 (N.D. Cal. Oct. 20, 2008) (dismissing common law trademark infringement claim as preempted by the Lanham Act 26 “where, as here, the rights holder does not allege a single new fact or element in 27 support of” the claim). 28

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1 1. Plaintiff’s Non-Copyright Claims Fall Within 2 the Subject Matter of Copyright 3 The Copyright Act protects, inter alia, literary works, pictorial, graphic, and 4 structural works. 17 U.S.C. § 102(a)(1), (5). Here, Plaintiff alleges that MJI 5 unlawfully misappropriated the X-Eye Smiley Face, a graphic work. (Compl. ¶¶ 13, 6 17–18.) Accordingly, Plaintiff’s claims fall within the subject matter of the 7 Copyright Act. 8 2. Plaintiff’s Asserted Rights Are Equivalent 9 to Rights Enumerated in the Copyright Act 10 Plaintiff’s non-copyright claims assert rights “equivalent to a right protected 11 under the Copyright Act,” which therefore preempts these claims. Lions Gate 12 Entm’t Inc. v. TD Ameritrade Secs. Co., 170 F. Supp. 3d 1249, 1264–67 (C.D. Cal. 13 2016) (dismissing Lanham Act and common law claims for unfair competition and 14 trademark infringement where the “causes of action are based on Defendants 15 essentially copying Plaintiff’s intellectual property and slightly changing the 16 words—creating a derivative work” and are “preempted by copyright law because 17 the same rights are asserted in these causes of action”); see also Aquawood, LLC v. 18 Toys “R” Us-Delaware, Inc., No. 2:15-cv-05869-AB, 2016 WL 10576620, at *4 19 (C.D. Cal. Mar. 10, 2016) (dismissing unfair competition claim where plaintiff 20 relied upon “the very same [allegations] that . . . support its copyright infringement 21 claims”). 22 In support of its false designation of origin claim under the Lanham Act and 23 California common law trademark and unfair competition claims here, Plaintiff 24 alleges that through its “more than 25-years of use of its copyrighted [X-Eye] 25 ‘Smiley Face’ design and logo . . ., that design and logo has become widely 26 associated with and identifies Nirvana as the source of the goods and services that 27 bear it in the minds of the consuming public.” (Id. ¶ 16.) (emphasis added). 28 Plaintiff further alleges that Defendants have used the X-Eye Smiley Face without

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1 permission, which creates supposed “confusion” concerning Nirvana’s approval, 2 endorsement, sponsorship, or connection to MJI. (Id. ¶¶ 30, 34, 35, 39). 3 The Complaint makes other assertions about how MJI is allegedly creating a 4 false association with the Plaintiff, such as by referencing Nirvana’s song titles. 5 (Compl. ¶ 20.) However, these pronouncements are red herrings; they are not 6 tethered to any actual rights Plaintiff claims to have. 7 At bottom, the only misconduct Plaintiff uses to support its claims is that MJI 8 supposedly misappropriated Plaintiff’s allegedly-copyrighted X-Eye Smiley Face 9 without authorization. (Compl. ¶¶ 17 – 18, 29.) 10 Lions Gate is instructive here. In that case, defendant TD Ameritrade used a 11 popular line from the movie Dirty Dancing as part of an advertisement. Lions Gate, 12 170 F. Supp. 3d at 1265–66. Lions Gate Entertainment sued, asserting claims under 13 the Copyright and Lanham Acts, along with trademark infringement and unfair 14 competition under California common law. Id. TD Ameritrade moved to dismiss 15 the non-copyright claims, arguing that the claims were preempted by the Copyright 16 Act. Id. The Court agreed and rejected plaintiff’s claims that defendant’s use of “a 17 slightly altered version” of the statement from the movie “will cause consumer 18 confusion as to Plaintiff’s endorsement or association with those services” because 19 the Court “cannot see how this is different from a copyright infringement claim, or a 20 claim that Defendants have failed to obtain the permission of the author of the ‘idea, 21 concept, or communication embodied in those goods.’” Id. at 1267. 22 Here, similar to Lions Gate, Plaintiff’s three other claims are all premised on 23 the use of allegedly copyrighted material, i.e. the X-Eye Smiley Face. (See, e.g., 24 Compl. ¶ 17.) These claims are therefore preempted. Lions Gate, 170 F. Supp. 3d 25 at 1268 (concluding that the allegation that use of Dirty Dancing line would “cause 26 consumer confusion as to [plaintiff]’s association with [defendants] and their 27 services” is the “exact claim and theory . . . made in Plaintiff’s copyright 28 infringement cause of action”).

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1 Courts in this circuit and elsewhere have consistently held that claims 2 predicated on similar allegations are preempted by the Copyright Act. See Prince v. 3 Univ. Music Corp., No. 2:09-cv-1459-FMC-FFMX, 2009 WL 10672282, at *3 4 (C.D. Cal. June 18, 2009) (Lanham Act and unfair competition claims were 5 preempted where they arise out of “defendant's misrepresentation that its licensing 6 services have been authorized by the copyright owner.”); Salt Optics, Inc. v. Jand, 7 Inc., No. SACV 10-0828, 2010 WL 4961702, at *8 (C.D. Cal. Nov. 19, 2010) 8 (unfair competition claim preempted where plaintiff “does not clearly allege how its 9 state law unfair competition claim is ‘qualitatively different from [its] copyright 10 claim’”); Touchpoint Commc’ns, LLC v. Dentalfone, LLC, No. 3:15-cv-05240-JRC, 11 2015 WL 5918400, at *4 (W.D. Wash. Oct. 9, 2015) (Lanham Act and unfair 12 competition claims were preempted because “defendant here has not demonstrated 13 that its ‘claim contains sufficiently distinct elements and allegations to avoid 14 preemption by the Copyright Act.’”); Nat’l Bus. Dev. Servs., Inc. v. Am. Credit Ed. 15 & Consulting, Inc., 299 F. App’x 509, 511 (6th Cir. 2008) (“Plaintiff has accused 16 Defendants of incorporating Plaintiff's copyrighted materials into Defendants’ 17 materials. As the Fifth Circuit held in Lee, this type of claim is governed by 18 copyright law, not the Lanham Act. 250 F.3d 668. Therefore, Plaintiff has failed to 19 plead a cause of action under the Lanham Act.”); Cummings v. Soul Train Holdings 20 LLC, 67 F. Supp. 3d 599, 606 n. 2 (S.D.N.Y. 2014) (“Plaintiff’s . . . common law 21 trademark infringement claim is preempted by federal copyright law.”). 22 The same result should be reached here and the Court should dismiss the non- 23 copyright claims as preempted. 24 D. PLAINTIFF FAILS TO ADEQUATELY PLEAD 25 KEY ELEMENTS OF ITS NON-COPYRIGHT CLAIMS 26 In the event the Court finds that the non-copyright claims are not preempted, 27 those claims should still be dismissed for the following reasons. 28

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1 1. The California Common Law Trademark Infringement 2 Claim Should Be Dismissed Because Plaintiff Admits That 3 It Is Not Using the X-Eye Smiley Face as a Trademark 4 “To state a claim for trademark infringement under California common law, a 5 plaintiff must allege (1) its prior use of the trademark and (2) the likelihood of the 6 infringing mark being confused with its mark.” Lasco Fittings, Inc. v. Lesso Am., 7 Inc., No. EDCV 13-02015-VAP, 2014 WL 12601016, at *5 (C.D. Cal. Feb. 21, 8 2014). Here, Plaintiff fails to adequately plead the critical element of “prior use” of 9 the X-Eye Smiley Face as a trademark. 10 Plaintiff alleges in the Complaint (albeit in conclusory fashion) that it “owns 11 and enjoys common law trade mark rights” in the X-Eye Smiley Face and that the 12 X-Eye Smiley Face “identifies Nirvana as the source of the musical services and 13 licensed products [including clothing] it has authorized to be released to the public.” 14 (Compl. ¶ 34.) But Plaintiff fails to pointedly allege that it has used the X-Eye 15 Smiley Face as a trademark before the launch of the Accused Products. This 16 omission has a simple explanation – Plaintiff has sworn to the USPTO that it has 17 not yet used the X-Eye Smiley Face as a trademark, at least in connection with 18 clothing. Plaintiff filed a federal trademark application for the X-Eye Smiley Face 19 on Jan, 28, 2019, for use in connection with numerous items including clothing, 20 such as t-shirts and socks. (RJN Ex. 7) The basis for Plaintiff’s application was its 21 future “intent to use” the X-Eye Smiley Face on the goods listed in the application, 22 in accordance with Trademark Act Section 1(b). In other words, at least as of Jan. 23 28, 2019, Plaintiff swore under oath and under penalty of perjury that it had not used 24 the X-Eye Smiley Face as a trademark in connection with the goods listed in that 25 application, including clothing. It would be impossible for an unused mark to have 26 garnered common law rights, and impossible for an unused mark to be in use prior 27 to the alleged already-occuring infringement. 28 Plaintiff’s admission in its trademark application for the X-Eye Smiley Face

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1 that it has not yet used that design as a trademark is not surprising. This fact is 2 consistent with third party Harvey Ball Smile Limited’s (“Harvey Ball”) trademark 3 registration of an identical design, shown below, which claims use beginning in 4 2009 (the “HB Smiley Face”). 5 6 7 8 9 10 11 (RJN Ex. 8.) 12 Harvey Ball claims that it began using the above HB Smiley Face on Feb. 27, 13 2009 on goods including t-shirts and socks and obtained a federal trademark 14 registration for that design on Dec. 23, 2014. Id. 15 Plaintiff’s failure to plead prior trademark use is grounds for dismissal. 16 2. The Claim for False Designation of Origin Under the 17 Lanham Act Should Be Dismissed Because Plaintiff 18 Fails to Adequately Plead Likelihood of Confusion 19 A party is liable for false designation of origin under the Lanham Act if the 20 party uses a false or misleading representation of fact which is likely to cause 21 confusion as to the origin, sponsorship, or approval of goods or services. 14 U.S.C. 22 § 1125(a). In order to state such a claim, a plaintiff must plead a likelihood of 23 confusion. See Varsity News Network, Inc. v. Carty Web Strategies, Inc., No. CV 24 17-2574 PSG, 2017 WL 7156278, at *4–5 (C. D. Cal. Nov. 21, 2017) (dismissing 25 counter-claim for false designation for use of party’s mark where there were 26 insufficient allegations that alleged conduct was “likely to cause confusion, mistake, 27 or deception.”) 28 Plaintiff fails to allege how there can be a false designation of origin or

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1 likelihood of confusion when MJI is using its own branding on the Accused 2 Products. As discussed above, the Complaint concedes that MJI modified the X- 3 Eye Smiley Face to include “M” and “J” letters as the eyes – thereby specifically 4 associating the design with MJI. (Compl. ¶¶ 17 – 18.) MJI often uses the initials 5 MJ throughout its product line to designate origin, including above the chest pocket 6 on polos, etc. Thus, there is no confusion as to who is the producer of the Accused 7 Products and Plaintiff’s conclusory statements in this regard do not rise to the level 8 of factual allegations that can defeat a motion to dismiss. Adobe Sys. Inc. v. A&S 9 Elecs., Inc., No. C 15-2288 SBA, 2015 WL 13022288, at *5 (N.D. Cal. Aug. 19, 10 2015) (dismissing false designation of origin claim based on similar allegations of 11 confusion). 12 Accordingly, the claim for false designation of origin under the Lanham Act 13 claim should be dismissed. 14 3. The California Unfair Competition Claim 15 Should Be Dismissed Because Plaintiff 16 Fails to Adequately Plead Passing Off 17 “The common law tort of unfair competition is generally thought to be 18 synonymous with the act of ‘passing off’ one’s goods as those of another.” 19 Sybersound Records, Inc. v. UAV Corp., 517 F.3d 1137, 1153 (9th Cir. 2008). 20 Furthermore, “[t]he decisive test of common law unfair competition is whether the 21 public is likely to be deceived about the source of goods or services by the 22 defendant’s conduct.” Aquawood, LLC, 2016 WL 10576620, at *3. 23 Here, Plaintiff fails to allege facts consistent with passing off. Every 24 reference to the allegedly unfair activity contained in the Complaint also makes 25 clear that MJI was using its own branding on the Accused Products and promotional 26 materials, so as to ensure its goods would not be confused with those of the Plaintiff, 27 or anyone else. (Compl. ¶¶ 17 – 18.) The eyes of the smiley face on the Accused 28 Products are an M and a J. The Complaint does not allege that these letters could

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1 plausibly reference Plaintiff. The other promotional materials referenced in the 2 Complaint clearly show MJI’s MARC JACOBS branding used in close proximity 3 with the MJ smiley face. (See Compl. ¶¶ 19 – 20.) As discussed above, the 4 Complaint concedes that the smiley face on the Accused Products was modified to 5 identify it with MJI – not Plaintiff. (Compl. ¶¶ 17 – 18.) There can be no passing 6 off or consumer confusion where a defendant has designated the item with its own 7 identifying characteristics. Lions Gate, 170 F. Supp. 3d at 1267. While Plaintiff 8 alleges, in conclusory fashion, that “Defendants’ actions are likely to cause 9 confusion,” such a boilerplate recitation of the elements of the claim are insufficient 10 to save it from dismissal. Aquawood, LLC, 2016 WL 10576620, at *3 (dismissing 11 unfair competition claim at pleading stage where plaintiff “merely used boilerplate 12 language reciting the bare elements”). 13 IV. CONCLUSION 14 For the reasons set forth above, Defendants respectfully request that the Court 15 grant its motion and dismiss Plaintiff’s Complaint in its entirety, with prejudice. 16 17 DATED: March 8, 2019 KELLEY DRYE & WARREN LLP Michael J. Zinna 18 (Pro Hac Vice) 19 Whitney M. Smith (Pro Hac Vice) 20 Andrew W. Homer 21 Tahir L. Boykins

22

23 By /s/ Michael J. Zinna

Michael J. Zinna 24 25 Attorneys for Defendants

26 27 28

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