United States District Court, N.D. Oklahoma
OPINION AND ORDER
GREGORY K. FRIZZELL, JUDGE.
matter comes before the court on the Motion to Dismiss
Complaint [Doc. #29] of Defendants Castle Hill Studios LLC
(d/b/a Castle Hill Gaming), Castle Hill Holding LLC (d/b/a
Castle Hill Gaming), and Ironworks Development, LLC (d/b/a
Castle Hill Gaming). For the reasons set forth below, the
motion is denied.
matters relates to the development, manufacture, and
distribution of class II bingo-based player
terminals. The allegations of VGT's Complaint are
summarized as follows:
a developer, manufacturer and distributor of class II
bingo-based player terminals in North America, and owns more
than two hundred (200) federal trademark registrations and
applications in connection with its class II bingo-based
games (collectively, “VGT Marks”). VGT's
class II game terminals are three (3) reel mechanical games.
VGT also possesses common law rights to the trade dress in
connection with its three-reel mechanical games, including
the following package features: game cabinet, game play
sound, award sound, bingo play and pays, red screen free
spins, and themes (collectively, “VGT Trade
Dress”). In addition to the VGT Marks and VGT Trade
Dress, VGT owns trade secrets relating to the development and
operation of the three-reel mechanical games, including
secrets related to the math underlying the games, the
specifics of the manner in which the bingo game is played,
and the source code used to operate the games (collectively,
“VGT Trade Secrets”).
Hill is operated by former VGT employees, including VGT's
former vice president of engineering, director of software,
and treasurer/director of operations/director of hardware
development, who are currently members of Castle Hill's
executive team. Additionally, twelve other VGT employees have
left VGT to work for Castle Hill.
Castle Hill originally manufactured class III games, sometime
between March 2015 and June 2016, Castle Hill began
developing and offering class II games that closely resembled
VGT's class II games. Since March 2015, Castle Hill has
launched at least twenty-four (24) class II bingo-based games
that use features including three mechanical reels and the
same cabinet as used by VGT's three-reel mechanical
games, and incorporate marks and themes confusingly similar
to the VGT Marks and themes. Further, Castle Hill has
utilized the VGT Trade Secrets in the development of Castle
on these allegations, the Complaint asserts six counts: (1)
federal trademark infringement in violation of the Lanham Act
(specifically, 15 U.S.C. § 1114); (2) unfair competition
and trade dress infringement for product packaging in
violation of the Lanham Act (specifically, 15 U.S.C. §
1125(a)); (3) unfair competition, trade dress infringement,
and trademark infringement in violation of the Oklahoma
Deceptive Practices Act (78 O.S. §§ 51-56); (4)
unfair competition, trade dress infringement, and trademark
infringement under common law; (5) misappropriation of trade
secrets in violation of the Oklahoma Uniform Trade Secrets
Act (78 O.S. §§ 85-94); and (6) misappropriation of
confidential business information in violation of common law.
See [Doc. #2]. Castle Hill moves to dismiss all
counts. See [Docs. ## 29-30');">30');">30');">30].
support of its motion to dismiss, Castle Hill asks the court
to consider over 2, 600 pages of documents, most of which are
records of the United States Patent and Trademark Office
(“USPTO”). Castle Hill requests that the court
take judicial notice of the USPTO records pursuant to
Fed.R.Evid. 201. See [Doc. #30');">30');">30');">30, pp. 14-15].
Additionally, VGT's Complaint attaches six (6) exhibits,
which are referenced in VGT's Complaint. Thus, prior to
considering whether the claims are adequately pled, the court
will first determine the threshold issue of what documents it
will consider in ruling on Castle Hill's motion.
Tenth Circuit, when considering a Rule 12(b)(6) motion to
dismiss, the court may consider “not only the
complaint, but also the attached exhibits . . . .”
Commonwealth Prop. Advocates, LLC v. Mortg. Elec.
Registration Sys., Inc., 680 F.3d 1194, 1201 (10th Cir.
2011). This is because, pursuant to Fed.R.Civ.p. 10,
“[a] copy of a written instrument that is an exhibit to
a pleading is a part of the pleading for all purposes.”
Fed.R.Civ.p. 10(c). The court may also consider documents
incorporated into the complaint by reference.
Commonwealth Prop. Advocates, LLC, 680 F.3d at 1201.
Here, plaintiff's 6 exhibits are both attached to and
referenced in the Complaint. Thus, the court will consider
the 6 exhibits attached to VGT's Complaint.
Hill attaches twenty (20) exhibits to its motion to dismiss,
as well as a declaration of Dale Jensen. Exhibits 1, 2, 16,
and 20 consist of USPTO filings of VGT and its parent
company, Aristocrat Technologies, Inc. Only exhibit 16
relates to a trademark cited as relevant to the dispute in
VGT's Complaint-“Countin' Cash.” The
marks that are the subject of exhibits 1, 2, and 20 are not
referenced in VGT's Complaint.
19 is USPTO filings of Castle Hill, and relates to marks that
allegedly infringe the VGT Marks identified in the
Complaint-specifically, “New Money, ”
“Double Hotness, ” “Genie's Gems,
” “Mr. Martini, ” “Mr. Martini Vegas
Baby, ” “Nugget Mountain, ” “Arctic
Cash, ” “Arctic Ice, ” “Dublin Your
Luck, ” “Coin Slinger, ” “Aces and
Hogs, ” “Amazing Ca$h, ” “10, 000
Diamonds, ” “20, 000 Diamonds, ”
“Captain Bacon, ” and “Amazing
2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 14, 15, 17, and 18 are
primarily composed of USPTO filings of third-parties, but
also include spreadsheets created by Dale Jensen, Castle
Hill's attorney, purportedly intended to “aid to
explain in a summary fashion information about the trademarks
lists in the pages after each exhibit's
spreadsheet.” [Doc. #30');">30');">30');">30-1]. These exhibits are not
referenced in the Complaint.
Rule of Civil Procedure 12(d) applies when a party requests
the court to consider matters outside of the pleadings. Rule
If, on a motion under Rule 12(b)(6) or 12(c), matters outside
the pleadings are presented to and not excluded by the court,
the motion must be treated as one for summary judgment under
Rule 56. All parties must be given a reasonable opportunity
to present all the material that is pertinent to the motion.
conversion is required, however, “if [the court] takes
‘judicial notice of its own files and records, as well
as facts which are a matter of public record.'”
Rose v. Utah State Bar, 471 F. App'x 818, 820
(10th Cir. 2012) (quoting Tal v. Hogan, 453 F.3d
1244, 1265 n.24 (10th Cir. 2006)). Pursuant to Fed.R.Evid.
201, a court “may judicially notice a fact that is not
subject to reasonable dispute.” Fed.R.Evid. 201(b).
“When presented with a Rule 12(b)(6) motion, the
district court has broad discretion in determining whether to
accept materials beyond the pleadings.” Brokers
Choice of Am., Inc. v. NBC Universal, Inc., 861 F.3d
1081, 1103 (10th Cir. 2017).
regard to the USPTO documents, the court first notes that
situations may exist when judicial notice of USPTO documents
would be proper. See Anderson v. Kimberly-Clark
Corp., 570 F. App'x 927, 932 n.3 (Fed. Cir. 2014)
(as relates to patent documents). However, the court must
consider the purpose for which judicial notice is sought. For
example, although the court may take judicial notice of the
authenticity and existence of public documents, judicial
notice of the substantive validity of those public documents
is improper. See Tal, 453 F.3d at 1265 n.24 (noting
that, although a court may take judicial notice of matters of
public record, “‘[t]he documents may only be
considered to show their contents, not to prove the truth of
matters asserted therein'”) (quoting Oxford
Asset Mgmt., Ltd. v. Jaharis, 297 F.3d 1182, 1188 (11th
Cir. 2002)). See also Port-A-Pour, Inc. v. Peak
Innovations, Inc., No. 13-cv-01511-WYD-BNB, 2015 WL
292913, at *3 (D. Colo. Jan. 20, 2015) (“I also agree .
. . that a court may take notice only of the authenticity and
existence of public documents, not the validity of their
contents.”); VirtualAgility, Inc. v.
Salesforce.com, Inc., 30');">30');">30');">307');">759 F.3d 130');">30');">30');">307, 1312-13 (Fed. Cir.
Castle Hill requests that the court take judicial notice of
exhibits 3, 4, 5, 6, 7, 8, 9, 10, 11, 14, 15, 17, and 18 to
demonstrate that VGT's trademarks and themes are
ubiquitous in the industry such that there is no likelihood
of confusion. See [Doc. #30');">30');">30');">30, pp. 15-20]. In essence,
Castle Hill is seeking an evidentiary ruling on the
substantive merits of the claims. However, the
effect of the information contained in the
third-party USPTO filings on VGTs claims in this litigation
is subject to “reasonable dispute” and therefore
is not the proper subject of judicial notice. See
Port-A-Pour, Inc., 2015 WL 292913, at *3;
VirtualAgility, Inc., 759 F.3d at 1312-13. Nor make
the court such an evidentiary ruling without converting
Castle Hill's motion to dismiss into a motion for summary
judgment. See Navajo Nation v. Urban Outfitters,
Inc., 935 F.Supp.2d 1147, 1157 (D.N.M. 2013) (refusing
to consider USPTO records, reasoning “[o]ther portions
of those same [USPTO] records may support Plaintiffs'
interpretation of the file histories, and thus the
evidentiary value of the materials submitted by Defendants is
subject to ‘reasonable dispute, ' and thus not best
suited for judicial notice. This evidentiary consideration is
exactly the type of analysis suitable for summary judgment,
not a motion to dismiss.”); Midwest Innovative
Prods., LLC v. Kinamor, Inc., No. 16-CV-11005, 2017 WL
2362571, at *2 (N.D. Ill. May 31, 2017) (refusing to take
judicial notice of USPTO documents for use in comparing
plaintiff's product to allegedly infringing product, as
such inquiry was typically resolved at motion for summary
judgment stage); Facebook, Inc. v. Teachbook.com,
LLC, 819 F.Supp.2d 764, 771-73 (N.D. Ill. 2011);
ContourMed Inc. v. Am. Breast Care L.P., No.
H-15-2769, 2016 WL 1059531 (S.D. Tex. Mar. 17, 2016).
court will not convert Castle Hill's motion to dismiss to
a motion for summary judgment. Accordingly, the court will
not consider exhibits 3, 4, 5, 6, 7, 8, 9, 10, 11, 14, 15,
17, and 18.
same reasons, the court will not consider exhibits 1, 2, and
20 to Castle Hill's motion. The exhibits are neither
referenced in VGT's Complaint nor the proper subject of
judicial notice as the effect of the records on VGT's
claims may be reasonably disputed by VGT.
contrast, exhibit 16 relates to a trademark that is referred
to in the Complaint. However, the trademark history is not
referred to in the Complaint. Further, the exhibit is not
central to the plaintiff's claim and therefore is not
incorporated by reference into the Complaint. See GFF
Corp. v. Associated Wholesale Grocers, Inc., 130');">30');">30');">30 F.3d
1381, 1384 (10th Cir. 1997) (“Notwithstanding these
general principles, if a plaintiff does not incorporate by
reference or attach a document to its complaint, but the
document is referred to in the complaint and is central
to the plaintiff's claim, a defendant may submit an
indisputably authentic copy to the court to be considered on
a motion to dismiss.”) (emphasis added). Exhibit 16 is
an examiner's amendment, not the trademark issued to VGF
or even the entirety of the application itself. Further, VGT
asserts common law claims, which are independent of the
federal trademark statutes. Although the exhibit may have
some evidentiary value later in the proceedings, the exhibit
is not of the type of document generally considered at the
motion to dismiss stage (like the governing contract in a
breach of contract claim). Because the trademark history is
not referred to in VGF's Complaint and the examiner's
amendment is not central to VGT's claims, exhibit 16 is
not incorporated by reference into VGT's Complaint.
Hill, however, requests that the court take judicial notice
of the USPTO document in exhibit 16 for the purposes of
establishing that VGT has disclaimed the word
“cash.” See [Doc. #30');">30');">30');">30, p. 10]. The court
may not notice public records for the truth of the matter
asserted. See Tal, 453 F.3d at 1265 n.24. Thus,
exhibit 16 is not the proper subject of judicial notice for
the reasons requested by Castle Hill, and the court will not
court also declines to consider exhibit 19, USPTO filings of
Castle Hill. Although the filings relate to allegedly
infringing marks, the trademark history is not referred to in
the Complaint, nor is the trademark history of the marks
central to VGT's claims. Further, the court declines to
take judicial notice of the documents for the truth of the
matter asserted as requested by Castle Hill. See
[Doc. #30');">30');">30');">30, p. 11].
on the foregoing, the court will not consider any matter
outside the pleadings, and will consider Castle Hill's
motion as a motion ...