United States District Court, S.D. California
ORDER DISCHARGING ORDER TO SHOW CAUSE; AND ORDER
GRANTING IN PART AND DENYING MOTION TO DISMISS [DOCKET NUMBER
Honorable Larry Alan Burns United States District Judge.
one of two related cases involving intellectual property
disputes between these parties. Both cases concern the
"Profil" trademark; this case also alleges
misappropriation of trade secrets. In case 16cv1549,
Plaintiff Profil Institut für Stoffwechselforschung GmbH
("Profil") is suing its onetime subsidiary
ProSciento, Inc. (formerly known as Profil Institute for
Clinical Research, Inc.) for trademark infringement.
ProSciento recently filed a counterclaim. There are two
"Profil" marks at issue, one a U.S. mark and one an
EU mark, but the briefing suggests that use of each mark is
not limited to the place of its registration, and that there
is some spillover into the other mark's territory.
Court is obligated to address jurisdictional issues even if
the parties do not raise them. See Mt. Healthy City
School Dist. Bd. of Ed. v. Doyle, 429 U.S. 274, 278
(1977). At a hearing in the related case, 16cv2762,
Profil Institut für Stoffwechselforschung GmbH v.
Prosciento, Inc., the Court held a hearing on
Profil's motion for a preliminary injunction involving
alleged trademark infringement in the EU. At that hearing,
Defendant's counsel announced that the company was
changing its name to ProSciento. The Court accepted this
representation and concluded that, going forward, ProSciento
would be unlikely to use the "Profil" trademark in
the EU and would be abandoning further use of the trademark.
In light of this, the Court ordered the parties to show cause
why claims for injunctive relief concerning use of the
trademark were not moot. (Docket no. 32.)
either party filed briefing, ProSciento filed a motion for a
preliminary injunction, claiming that it owns the trademark
and asking the Court to enjoin Profil from using it. The
Court denied the motion without prejudice, noting that
ProSciento had no counterclaim pending, and that mootness had
not yet been addressed. The parties filed responses to the
Court's order to show cause, saying that ownership of the
mark is still being actively disputed and that ProSciento
intends to keep using it in the U.S. This change in position
causes concern; a party should not benefit from contradictory
factual assertions. But the circumstances do not suggest an
intent to mislead the Court. The Court accepts that the
parties both intend to use the mark in the United States, and
its ownership is actively contested. The order to show cause
is therefore DISCHARGED.
filed a motion under Fed.R.Civ.P. 12(b)(6) (Docket no. 17) to
dismiss the amended complaint (the "FAC"). Three
agreements which were mentioned in the amended complaint are
attached as exhibits were attached to the motion. (Docket no.
17-2.) Profil does not dispute these documents'
authenticity or object to the Court's considering them in
connection with the motion; in fact, its own briefing refers
to these documents and relies on them.
motion was accompanied by requests for judicial notice under
Fed.R.Evid. 201. Most of the documents (Exhibits A through I)
are journal articles. Profil objects to the Court's
taking notice of those, and points out they are not
authenticated. Profil does not object to the Court's
taking notice of Exhibits J or K, which are records from the
U.S. Patent and Trademark Office (USPTO).
journal articles are offered to show that certain alleged
trade secrets are not in fact secret, and that the
information has been made public through articles like these.
"Courts may take judicial notice of publications
introduced to indicate what was in the public realm at the
time . . . ." Von Saher v. Norton Simon Museum of
Art at Pasadena, 592 F.3d 954, 960 (9th Cir. 2010).
Profil is correct that these articles have not been
authenticated. See Madeja v. Olympic Packers, LLC,
310 F.3d 628, 639 (9th Cir. 2002) (district court was not
required to take notice of unauthenticated documents). Profil
also argues that while the articles cover generally the same
subject matter as the trade secrets, the trade secrets
include information not in the articles. Assuming this is
true, the articles would not be helpful at this stage of
litigation. The request for judicial notice of Exhibits A
through I is therefore DENIED. But Exhibits J and K meet the
standards for notice under Fed.R.Evid. 201, and the
unobjected-to request for judicial notice of those exhibits
Standards for Motion to Dismiss
Rule12(b)(6) motion to dismiss tests the sufficiency of the
complaint. Navarro v. Block, 250 F.3d 729, 732 (9th
Cir. 2001). Under Fed.R.Civ.P. 8(a)(2), only "a short
and plain statement of the claim showing that the pleader is
entitled to relief, " is required, in order to
"give the defendant fair notice of what the . . . claim
is and the grounds upon which it rests." Bell
Atlantic Corp. v. Twombly, 550 U.S. 544, 554-55 (2007).
The well-pleaded facts must do more than permit the Court to
infer "the mere possibility of conduct"; they must
show that the pleader is entitled to relief. Ashcroft v.
Iqbal, 556 U.S. 662, 679 (2009).
determining whether a complaint states a claim, the Court
accepts all allegations of material fact in the complaint as
true and construes them in the light most favorable to the
non-moving party. Cedars-Sinai Medical Center v. National
League of Postmasters of U.S., 497 F.3d 972, 975 (9th
Cir. 2007) (citation omitted). At the pleading stage, the
Court may consider not only the complaint itself, but also
documents it refers to, whose authenticity is not questioned,
and matters judicially noticed. Zucco Partners LLC v.
Digimarc Corp., 552 F.3d 981, 990 (9th Cir. 2009).
raises the statute of limitations as a defense. A claim may
be dismissed as untimely on a Rule 12(b)(6) motion only when
the running of the statute of limitations is apparent on the
face of the complaint. United States ex rel. Air Control
Techs., Inc. v. Pre Con Indus., Inc., 720 F.3d 1174,
1178 (9th Cir. 2013).
motion to dismiss is granted, leave to amend is ordinarily
granted unless amendment would be futile. Lopez v.
Smith, 203 F.3d 1122, 1130-31 (9th Cir.2000) (en banc).
a German entity, was ProSciento's parent corporation. The
two companies are in the business of medical research. In
2003, Profil created ProSciento (then Profil Institute for
Clinical Research) as a subsidiary. In 2008, the companies
formally separated, but worked together under a Cooperation
Agreement that terminated in 2012. The Cooperation Agreement
is attached to ProSciento's motion to dismiss as Exhibit
A. One of the agreement's provisions was that the
companies' work would be coordinated, and that they would
each use a similar logo that incorporated the word
"Profil". Profil alleges it owned the
"Profil" mark at this time, and was granting
ProSciento a license to use it.
2009, ProSciento filed an application to register the
"Profil" mark in the United States. Also in 2009,
the two companies entered into a Lease Agreement for devices
known as Biostators. The Lease Agreement is attached to the
motion to dismiss as Exhibit B. Profil says it developed and
owned trade secrets regarding use of Biostators and related
technology and procedures, and that both the Cooperation
Agreement and the Lease Agreement included provisions
intended to protect trade secrets. (FAC, ¶ 26.)
the Cooperation Agreement terminated, the parties entered
into a Non-Disclosure Agreement ("NDA"). The NDA is
attached as Exhibit C to the motion to dismiss. It included a
provision concerning the protection of Profil's interest
in trademarks and trade secrets.
alleges that ProSciento fraudulently registered the
"Profil" mark with the USPTO by falsely claiming it
had used the mark first, when in fact Profil had. Profil
alleges ProSciento falsely claimed its first use of the mark
occurred on December 31, 1999, before ProSciento was even
formed. Profil alleges other false statements regarding the
first use of that mark. (FAC, ¶¶ 46-52.) ProSciento
did not tell Profil it was attempting to register the mark,
and Profil first discovered ...