                                                                           FILED
                           NOT FOR PUBLICATION
                                                                           FEB 19 2016
                    UNITED STATES COURT OF APPEALS                      MOLLY C. DWYER, CLERK
                                                                         U.S. COURT OF APPEALS


                            FOR THE NINTH CIRCUIT


GIBSON BRANDS, INC., a Delaware                  No. 13-57050
corporation,
                                                 D.C. No. 2:12-cv-10870-DDP-
              Plaintiff - Appellant,             AJW

 v.
                                                 MEMORANDUM*
VIACOM INTERNATIONAL, INC., a
Delaware corporation and JOHN
HORNBY SKEWES & CO. LTD., a
United Kingdom corporation,

              Defendants - Appellees.


                    Appeal from the United States District Court
                       for the Central District of California
                    Dean D. Pregerson, District Judge, Presiding

                      Argued and Submitted February 4, 2016
                               Pasadena, California

Before: REINHARDT, PAEZ, and M. SMITH, Circuit Judges.

      Plaintiff Gibson Brands, Inc. (Gibson) appeals the district court’s dismissal

of its complaint against John Hornby Skewes & Co., Ltd. (JHS) and Viacom



        *
             This disposition is not appropriate for publication and is not precedent
except as provided by 9th Cir. R. 36-3.
International Inc. (Viacom) (collectively, Defendants). Gibson is the holder of

registered trademarks in the Flying V body-shape design, the Flying V peg-head

design, and the Flying V word mark. Gibson alleges that Defendants infringed its

marks through JHS’s production and distribution of a ukelele made with a V-

shaped body and bearing Viacom’s Spongebob Squarepants and Nickelodeon

trademarks. The district court dismissed the action against Viacom due to Gibson’s

failure to state a claim for secondary infringement. In a subsequent order, the

district court dismissed the complaint against JHS for lack of subject-matter

jurisdiction. We have jurisdiction pursuant to 28 U.S.C. § 1291. We affirm in part,

reverse in part, and remand for further proceedings.

1.    The district court properly granted Viacom’s Rule 12(b)(6) motion

dismissing Gibson’s claims for contributory infringement and for vicarious

liability for trademark infringement. We “review de novo a dismissal for failure to

state a claim” under Rule 12(b)(6). Zixiang Li v. Kerry, 710 F.3d 995, 998 (9th Cir.

2013). First, Gibson failed to state a claim for contributory infringement. When a

contributory infringement claim concerns the defendant’s supply of something

other than a product—here, Viacom’s supply of a license to use its trademarks —a

court will consider the “extent of control exercised by the defendant over the third

party’s means of infringement.” Lockheed Martin Corp. v. Network Solutions, 194


                                          2
F.3d 980, 984 (9th Cir. 1999). In this case, Gibson did not allege that Viacom

exercised the requisite level of control over JHS’s production and sale of the

ukelele in order to trigger liability for contributory infringement. Although the

appearance of Viacom’s trademarks on the ukelele was a prominent feature of the

product, those trademarks do not have a sufficient nexus to the allegedly infringing

conduct. Viacom could not be said to have exercised “direct control and

monitoring” over JHS’s means of infringement. Id.

      Moreover, Gibson failed to advance claims for vicarious liability for

trademark infringement. Gibson emphasized the presence of a licensing agreement

between JHS and Viacom, but the agreement does not reveal a relationship of

“control over the actual infringing activity,” which would constitute evidence of

vicarious liability. Perfect 10, Inc. v. Visa Int’l Serv. Ass’n, 494 F.3d 788, 806 (9th

Cir. 2007). In particular, Viacom does not directly control the body shape or name

of the ukelele, and the degree of control necessary for a trademark licensing

agreement does not, by itself, provide the degree of control necessary to impose

vicarious liability with respect to any aspect of the allegedly infringing product.

2.    The district court dismissed the complaint against JHS for lack of subject-

matter jurisdiction under Rule 12(b)(1), holding that Gibson had not shown that the

ukelele was “use[d] in commerce” within the meaning of 15 U.S.C. §§ 1114(1),


                                           3
1125(a), and 1127. We review de novo a dismissal for lack of subject-matter

jurisdiction. Alaska v. Babbitt, 38 F.3d 1068, 1072 (9th Cir. 1994). In this case, the

district court considered the Lanham Act’s “use in commerce” requirement as a

jurisdictional prerequisite. Subsequent to the district court’s order, we decided La

Quinta Worldwide LLC v. Q.R.T.M., S.A. de C.V., 762 F.3d 867, 873 (9th Cir.

2014), which held that the Lanham Act’s “use in commerce” requirement was

properly considered an element of a cause of action, and not a jurisdictional bar, in

light of Arbaugh v. Y&H Corp., 546 U.S. 500, 515 (2006). Id. at 874. La Quinta’s

reasoning is controlling in this case. We therefore reverse the district court’s order

dismissing the complaint under Rule 12(b)(1), and we remand for the district court

to determine whether Gibson’s complaint has stated a claim against JHS under

Rule 12(b)(6).

      AFFIRMED IN PART, REVERSED IN PART, AND REMANDED.

Each party shall bear its own costs on appeal.




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