APPEAL from an order of the Superior Court of Los Angeles County. Tricia Ann Bigelow, Judge; Joseph R. Kalin, Judge. Affirmed. (Los Angeles County Super. Ct. No. BC386105).
The opinion of the court was delivered by: Doi Todd, Acting P. J.
CERTIFIED FOR PUBLICATION
In this appeal from the denial of a motion to strike under Code of Civil Procedure section 425.16, the "anti-SLAPP statute,"*fn1 the primary issue is whether the filing of a lawsuit in a foreign country is protected activity under the United States or California Constitutions so as to implicate the statute. We conclude that it is not and affirm the order denying the motion.
FACTUAL AND PROCEDURAL BACKGROUND
Plaintiffs are Mohammed Amal Guessous, a United States citizen who lives in Los Angeles, California, and Five Bis, a French limited liability company with its principal place of business in Paris, France. Guessous created a line of jewelry and a collection of clothing and leather products. His collections were sold exclusively in the United States until April 2007 when he opened stores in Paris and Tokyo. He holds an ownership interest in Five Bis, which markets and sells his products.
Defendant Chrome Hearts, LLC is a Delaware limited liability company with its principal place of business in Los Angeles. Chrome Hearts designs, manufactures and sells artistically-styled leather goods, apparel, jewelry and accessories. It is the owner of the word mark "Chrome Hearts," as well as various other semi-figurative marks and logos, and is entitled to the exclusive use and benefit of all of its registrations.
In 1996, Chrome Hearts sued Guessous and others in the United States District Court for the Central District of California, for trademark and copyright infringement with respect to certain jewelry offered for sale by Guessous. The parties settled the matter and Guessous agreed to discontinue selling certain jewelry designs.
In 1998, Chrome Hearts filed another action in the same federal court against Guessous and other companies for infringement of certain jewelry designs, trademarks and copyrights. In August 1999, the parties entered into a written settlement agreement that contained the following covenant not to sue: "Chrome Hearts covenants and agrees that it will not sue Guessous for trademark infringement, trade dress infringement, unfair competition, or similar or related claims whose gravamen is alleged consumer or buyer confusion or potential confusion, including any claim based on the alleged similarity between the overall look and feel of Chrome Hearts' products and products designed, manufactured, or sold by Guessous. [¶] This covenant applies worldwide, from the date of the Settlement Agreement to the end of time, not only to the existing lines of clothing and jewelry manufactured and sold by Guessous and Chrome Hearts, but also to future products not yet designed, manufactured, and/or sold. Provided, however, this covenant not to sue does not apply to claims by Chrome Hearts against Guessous alleging that Guessous has used the `Chrome Hearts' mark." The settlement agreement also provided that it would be binding on and benefit the settling parties' affiliated entities.
In 2006, Chrome Hearts opened its own boutique in Paris. In May 2007, Chrome Hearts sued Five Bis in the Paris Court of First Instance (Tribunal de Grande Instance), alleging infringement of "Chrome Hearts" trademarks and seeking to enjoin Five Bis from using these marks. In opposition, Five Bis argued that the claims were barred by the parties' covenant not to sue. The French court rejected this argument and enjoined Five Bis from using the Chrome Hearts marks. Five Bis appealed, and the Paris Court of Appeals (Cou d'appel de Paris) affirmed the lower court. Five Bis appealed this ruling to the French Supreme Court (Cour de Cassation), and also filed a request for reappraisal in the Paris Court of Appeals. These appeals were still pending at the time of the trial court's ruling on the motion to strike at issue here.
In December 2007, Chrome Hearts filed a second action against Five Bis in France, alleging infringement of the "Chrome Hearts" trademark. That action is still pending in France.*fn2
Plaintiffs then filed suit in the Superior Court of Los Angeles County against Chrome Hearts for breach of contract and declaratory relief, alleging that the filing of the French actions violated the covenant not to sue. They also sought to permanently enjoin Chrome Hearts from proceeding with the two trademark infringement actions being prosecuted in France, and from ever filing another lawsuit against plaintiffs anywhere in the world alleging trademark infringement, trade dress infringement, unfair competition, or any similar or related claim, except claims against Guessous of misuse of the words "Chrome Hearts."
In response, Chrome Hearts filed a special motion to strike the complaint under the anti-SLAPP statute. The trial court ruled that the statute applied to plaintiffs' causes of action but found that plaintiffs had established a prima facie case for their claims and denied the motion. Chrome Hearts appealed denial of the motion, and plaintiffs have cross-appealed.
I. The Anti-SLAPP Statute and the ...