NOT FOR PUBLICATION FILED

UNITED STATES COURT OF APPEALS FEB 14 2025

MOLLY C. DWYER, CLERK

U.S. COURT OF APPEALS

FOR THE NINTH CIRCUIT

SKYDIVING SCHOOL, INC., dba Skydive No. 24-1822 Hawaii, D.C. No. 1:23-cv-00292-DKW-WRP Plaintiff - Appellant,

v. MEMORANDUM*

GOJUMP AMERICA, LLC, a Nevada limited liability company; GOJUMP HAWAII, LLC, a Hawai'i limited liability company; MICHAEL VETTER,

Defendants - Appellees.

Appeal from the United States District Court for the District of Hawaii Derrick Kahala Watson, District Judge, Presiding

Submitted February 12, 2025** Honolulu, Hawaii

Before: S.R. THOMAS, BRESS, and DE ALBA, Circuit Judges.

Plaintiff-Appellant Skydiving School Inc. (“SSI”) appeals the district court’s

* This disposition is not appropriate for publication and is not precedent except as provided by Ninth Circuit Rule 36-3. ** The panel unanimously concludes this case is suitable for decision without oral argument. See Fed. R. App. P. 34(a)(2). grant of Defendant-Appellee GoJump America, LLC’s (“GoJump”) Rule 12(b)(6)

motion to dismiss its claim against GoJump for trademark infringement without

leave to amend based on the classic fair use defense. SSI and GoJump are

competing skydiving businesses that operate out of the same airfield on Oahu. SSI

owns the trademark for the phrase “Skydive Hawaii” and alleges GoJump

infringed its trademark by using various phrases on GoJump’s website and in

internet advertising, including “Skydiving in Hawaii,” “Oceanview Skydiving in

Hawaii,” “Skydive Hawaii with GoJump,” and several others. SSI alleged

instances of actual consumer confusion and commissioned a survey that found a

likelihood that 15.6% of consumers would confuse GoJump’s services as somehow

coming from or otherwise affiliated with SSI.

The district court ruled that GoJump established the classic fair use defense

based on SSI’s allegations. It found that SSI “elected to use the most common

word to describe its service—‘skydive’—along with the name of the State where

those services take place—‘Hawaii’” as its trademark. The court also found that

enforcing that trademark as alleged would effectively give SSI an impermissible

monopoly over the words that “most efficiently and accurately describe” the

services both companies provide. The court denied leave to amend because no

amendment would “change the nature of” the allegedly infringing uses.

We review the district court’s dismissal for failure to state a claim under

2 24-1822 Rule 12(b)(6) de novo, and its denial of leave to amend the complaint for abuse of

discretion. See Wilson v. Lynch, 835 F.3d 1083, 1090 (9th Cir. 2016). The

complaint must “contain sufficient factual matter, accepted as true, to state a claim

for relief that is plausible on its face.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)

(quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007)). We accept

factual allegations as true and construe them in the light most favorable to the

plaintiff. See In re Gilead Scis. Sec. Litig., 536 F.3d 1049, 1055 (9th Cir. 2008).

We do not accept as true allegations that are conclusory or mere “[t]hreadbare

recitals” of the elements of a claim. Iqbal, 556 U.S. at 678.

Dismissal based on an affirmative defense at the pleading stage is rare but

proper when the defense “is obvious on the face of the complaint” or based on

judicially noticeable facts. Rivera v. Peri & Sons Farms, Inc., 735 F.3d 892, 902

(9th Cir. 2013); see also Albino v. Baca, 747 F.3d 1162, 1169 (9th Cir. 2014) (en

banc); ASARCO, LLC v. Union Pac. R.R. Co., 765 F.3d 999, 1004 (9th Cir. 2014).

We have jurisdiction pursuant to 28 U.S.C. § 1291. We affirm.1

1. The classic fair use defense bars SSI’s trademark infringement claim.

Classic fair use requires GoJump to show that (1) it uses the challenged terms in a

1 We deny SSI’s belated request to take judicial notice of the Asset Purchase Agreement that was not before the district court when it made its ruling, and we strike it from the record on appeal. See Kirshner v. Uniden Corp. of Am., 842 F.2d 1074, 1077–78 (9th Cir. 1988); Jesperson v. Harrah’s Operating Co., 444 F.3d 1104, 1110 (9th Cir. 2006 (en banc).

3 24-1822 way “other than as a trademark”; (2) the use is “descriptive of [GoJump’s] goods”;

and (3) the use was in good faith. Marketquest Grp., Inc. v. BIC Corp., 862 F.3d

927, 935 (9th Cir. 2017); see also 15 U.S.C. § 1115(b)(4). Trademark law does not

allow “anyone to obtain a complete monopoly on use of a descriptive term simply

by grabbing it first.” KP Permanent Make-up, Inc. v. Lasting Impressions I, Inc.

(KP I), 543 U.S. 111, 122 (2004).

“[F]air use can occur along with some degree of confusion.” Id. at 123–24.

We have held that the “degree of customer confusion [is] a factor in evaluating fair

use,” and the scope of the defense “varies with [] the descriptive purity of the

defendant’s use and whether other words are available to do the describing.”

Marketquest, 862 F.3d at 935–36, 938 (cleaned up); see also KP Permanent Make-

Up, Inc. v. Lasting Impression I, Inc. (KP II), 408 F.3d 596, 609 (9th Cir. 2005)).

Plaintiffs who choose “to identify [their] product with a mark that uses a well

known descriptive phrase” assume the risk of some consumer confusion. KP I,

543 U.S. at 123–24.

Taking SSI’s allegations as true, the classic fair use defense is apparent on

the face of SSI’s Complaint and exhibits incorporated therein. Each of the alleged

infringing uses is purely descriptive of GoJump’s service—skydiving in Hawaii.

There is no plausible allegation that GoJump uses any of the challenged terms or

4 24-1822 phrases as a trademark,2 and there are only conclusory assertions of bad faith. SSI

chose the most common descriptive words for its Hawaii skydiving service as its

trademark, and thus assumed the risk of some consumer confusion. The degree of

consumer confusion alleged, taken as true for purposes of the Rule 12(b)(6)

motion, is an appropriate degree of confusion in light of the descriptive purity of

GoJump’s uses of the words “skydive” and “Hawaii.” As the district court ruled,

SSI cannot monopolize the basic name of the service that it and its competitors

provide (skydiving) and the name of the state where they occur (Hawaii). See KP

I, 543 U.S. at 122. To the extent SSI argues that the classic fair use defense cannot

be raised at this stage, that argument lacks merit.

2. The district court did not abuse its discretion in denying leave to

amend. Leave to amend is not required when amendment would be futile. See

Eminence Cap., LLC v. Aspeon, Inc., 316 F.3d 1048, 1052 (9th Cir. 2003). SSI

alleged specific uses of its trademark “Skydive Hawaii,” and the nature of those

uses will not change with amendment. Nor does SSI offer any additional facts it

could or would allege to avoid the fair use defense.

AFFIRMED.

2 SSI argues that the “Sponsored” Google search results show that GoJump purchased Google Ad keywords, which SSI argues is a trademark use. But SSI fails to allege what, if any, specific keywords GoJump purchased or that the “sponsored” results are due to anything other than Google’s algorithm searching for some form of the words “skydive” and “Hawaii.”

5 24-1822