Kifle v. Youtube LLC

Background

Elias Kifle, proceeding without a lawyer, sued YouTube LLC and Does 1–19 for contributory trademark infringement. He alleged that YouTube knowingly continued providing service to users who directly infringed marks appearing on his videos, website, and television channel. He identified the marks “Mereja TV” and “ነጭ ነጯን ከዘመዴጋር,” and alleged that YouTube users had copied at least 300 of his works and marks onto YouTube without permission.

The court had previously dismissed Kifle’s contributory-infringement claim but allowed him to amend. It had explained that Kifle needed to allege facts showing that YouTube had particularized knowledge—that is, knowledge of specific instances of infringement—and that YouTube continued providing service to those specific users. The court suggested details such as screenshots, timestamps, identification of the relevant videos and channels, and allegations concerning recent infringers whose content remained on YouTube.

Court’s analysis

Under Federal Rule of Civil Procedure 12(b)(6), a court may dismiss a complaint that does not contain a legally recognized theory or enough factual allegations to make the claim plausible. To plead contributory trademark infringement, Kifle needed to allege that YouTube continued supplying services to someone it knew or had reason to know was infringing a trademark.

The court ruled that Kifle did not meet that requirement. His newest complaint included only two new screenshots, both undated, and otherwise repeated allegations and the same cease-and-desist notice that the court had already found insufficiently specific. The notice provided links to videos but did not clearly tell YouTube that the links contained the protected mark. Kifle also did not allege that he later sent YouTube a more specific notice. The court therefore could not attribute particularized knowledge of any specific infringement to YouTube. The court stated that, even if YouTube continued providing service to one or more infringers, YouTube could not be held liable under Kifle’s contributory-infringement theory without that knowledge.

The court also addressed allegations that sounded in trademark dilution. It dismissed that claim because it was outside the scope of the court’s earlier permission to amend and stated that, in any event, Kifle had not plausibly alleged that the mark was famous and distinctive. Kifle also added a false-designation-of-origin theory. The court stated that amendment to add that claim was not permitted and that the claim would alternatively fail for the same reasons as the contributory-infringement claim.

Disposition

Because Kifle had received several opportunities to amend and had not supplied the specific facts identified in the court’s prior orders, the court concluded that further amendment would be futile. The court denied leave to amend and granted the motion to dismiss with prejudice.