Facts

The Pasadena Tournament of Roses Association is a non-profit organization that has hosted the world-famous Rose Parade and Rose Bowl Game every year as part of its annual New Year's Day Celebration with the City of Pasadena. It has done so pursuant to three contracts between the parties: the master license agreement, the trademark agreement, and the trademark consent agreement. Under the agreements, the Association is the exclusive owner of the Rose Bowl Game and certain Rose Bowl trademarks used in connection with the annual game. The Association has invested substantial resources in advertising and promoting its Rose Bowl Game to consumers around the world. On December 18, 2020, the Association decided that it was not feasible to play the game in Pasadena due to COVID-19 restrictions and instead choose AT&T stadium in Arlington, Texas. In anticipation of the game, Pasadena Mayor Victor Gordo gave an interview to the New York Times on January 1, 2021, in which he stated that "the football game belongs to the City of Pasadena and the people of Pasadena." Approximately 19 million viewers watched the 2021 Rose Bowl Game between the University of Alabama and the University of Notre Dame. On January 7, 2021, the City's counsel sent a letter to the Association stating that in the event of a force majeure, the master license agreement gives the City the right to restrict the Association from hosting the Rose Bowl Game in a different venue. Meanwhile, on January 14, 2021, the City posted on Instagram "#TBT to 1956 when @UCLAFootball was in the #RoseBowl..." with a picture of the ticket from the game. On March 2, 2021, the Association filed its complaint against the City, alleging false advertising, trademark/unfair competition violations, and breach of master license agreement while seeking penalties and declaratory relief.

PLAINTIFF'S CONTENTIONS: Plaintiff contended that defendant misused or misappropriated the Tournament's trademarks related to the Rose Bowl Game in its January 14th Instagram post. Moreover, plaintiff maintained that Mayor Victor Gordo acting in his official capacity for the City falsely conveyed that the City owned an ownership interest in plaintiff's Rose Bowl Game and its associated intellectual property in his comments made during his New York Times interview. Furthermore, plaintiff argued that it has no obligation to host the Rose Bowl Game at the Rose Bowl Stadium if a force majeure event occurs pursuant to the master license agreement as defendant stated. Finally, plaintiff alleged that defendant cannot use the term "Rose Bowl" to refer to the game because of the possibility of consumer confusion.

DEFENDANT'S CONTENTIONS: Defendant contended that the January 14th Instagram post was an expressive work protected by the First Amendment. Additionally, defendant maintained that the post was a nominative fair use that did nothing to suggest association or sponsorship with plaintiff and that defendant used the term "Rose Bowl" only as much as reasonably necessary to identify the game. Further, defendant maintained that declaratory relief as to the breach of the master license agreement was not viable because the court cannot provide clarity on contractual language based on a potential future breach. Finally, defendant alleged that the Mayor's statements to the New York Times were not false advertising because they were not about the parties' goods or services and were his own personal opinions.

Result

The courtdismissed all of plaintiff's claims with prejudice pursuant to Federal Rules of Civil Procedure 12(b)(1) and 12(b)(6).