Zumedia Inc. v. IMDB.COM, Inc.

Background

zuMedia Inc. owns and operates DMDb.com, a social-media platform and digital-media database. IMDB.COM, Inc. owns and operates IMDb.com and holds federal trademark registrations for the “IMDB” and “IMDb and Design” marks. After IMDb objected to zuMedia’s use of the “DMDb” mark and opposed zuMedia’s trademark application, zuMedia filed this action.

The amended complaint sought two forms of relief: a declaration that zuMedia’s use of “DMDb” was not likely to cause confusion and did not infringe, unfairly compete with, or dilute IMDb’s trademarks; and cancellation of IMDb’s two trademark registrations. Counts Two and Three sought cancellation based on alleged nonuse of the marks for three categories of software-related goods. The court considered IMDb’s second partial motion to dismiss those cancellation counts under Federal Rule of Civil Procedure 12(b)(6), which tests whether a complaint states a legally sufficient claim.

Cancellation Claims

The court stated that zuMedia had standing to seek cancellation and that more than three years had passed since IMDb registered the marks. The issue was therefore whether zuMedia plausibly alleged that IMDb had never used the marks in commerce for some of the goods listed in the registrations.

The court held that the amended complaint did not plausibly allege nonuse. It said the complaint largely repeated statutory language, identified goods listed in the registrations, and asserted in conclusory terms that IMDb had not used its marks for those goods. The court found that zuMedia provided no supporting facts and could not rely on the possibility that discovery might later uncover facts supporting the claims.

The court also considered IMDb’s registration documents and specimens of use because they were incorporated into, or integral to, the amended complaint. It found that those specimens made the allegations of nonuse facially implausible and showed use of the marks in connection with the three categories of goods identified by zuMedia, including software for creating searchable databases. The court rejected zuMedia’s arguments that the specimens were too old or did not demonstrate use of software.

The court therefore granted IMDb’s motion to dismiss Counts Two and Three.

Leave to Amend and Disposition

zuMedia requested permission to amend its complaint a third time. The court denied that request because zuMedia did not explain how it would correct the defects, provide a proposed second amended complaint, or address the fact that it had already amended after IMDb raised the same problems in its first motion to dismiss.

The court stated that leave to amend was DENIED and that Counts Two and Three were dismissed with prejudice. In its conclusion, the court stated that IMDb’s motion to dismiss was GRANTED and zuMedia’s motion for leave to amend was DENIED. The opinion does not state a disposition for the amended complaint’s separate declaratory-judgment claim.