United States District Court, S.D. California
AEGIS SOFTWARE, INC. dba SAN DIEGO SPIRITS FESTIVAL and SAN DIEGO SPIRITS BOTTLE COMPETITION, Plaintiff,
22nd DISTRICT AGRICULTURAL ASSOCIATION, Defendant.
ORDER GRANTING IN PART AND DENYING IN PART
DEFENDANT'S MOTION TO DISMISS [ECF NO. 28]
Ted Moskowitz, Chief Judge.
September 19, 2016, Plaintiff Aegis Software, Inc., filed a
First Amended Complaint (“FAC or
“Complaint”) against Defendant 22nd District
Agricultural Association. (ECF No. 27.) On October 3, 2016,
Defendant filed a motion to dismiss. (ECF No. 28.) For the
reasons discussed below, Defendant's motion to dismiss is
granted in part and denied in part.
Aegis Software hosts the “San Diego Spirits
Festival” (“SDSF”), an annual specialty
cocktail and spirits festival held in San Diego. (Compl.
¶¶ 8-10.) Plaintiff held its inaugural festival on
June 5-7, 2009. (Compl. ¶ 13.) Given the event's
success, Plaintiff decided to host the event on an annual
basis and registered the fictitious business name “San
Diego Spirits Festival” with the San Diego County
Clerk. (Compl. ¶¶ 14-15.) In 2014, Plaintiff held
its 6th annual SDSF which attracted “approximately 3800
attendees (a 35% increase from the prior year) and 80
‘Spirit Brands' (a 23% increase from the prior
year).” (Compl. ¶ 27.) Plaintiff alleges that
ninety-five percent of the festival participants are
headquartered outside of San Diego, with sixty-percent of
those participants being located outside of California.
(Compl. ¶ 41.)
SDSF is marketed each year through a variety of online,
radio, television, and print medias, as well as through the
marketing channels of each of the participants taking part in
the event. (Compl. ¶¶ 30, 39.) Local news and media
outlets have covered and promoted the SDSF, and the SDSF has
been featured in various online publications associated with
alcoholic beverages. (Compl. ¶¶ 30-31.) Travel
publications catered to domestic and international travelers,
including Fodor's Travel and Premier Traveler Magazine,
have also featured the SDSF. (Compl. ¶¶ 35.e-g.) In
2013, Fodor's Travel recognized the SDSF as one of the
“Best Cocktail Festivals in America.” (Compl.
¶ 36c.) Since 2013, the San Diego mayor has proclaimed a
day in August each year as “San Diego Spirits Festival
Day.” (Compl. ¶¶ 36.d-f.)
2013, Plaintiff hosted its first annual “San Diego
International Spirits Bottle Competition”
(“Competition”). (Compl. ¶ 21.) The
Competition takes place during the SDSF and features
applicants from around the world that submit new spirits for
competition and judging. (Compl. ¶¶ 22.) In 2013,
the Competition featured 35 competitors, and in 2014 the
Competition featured 86 competitors. (Compl. ¶¶
26-27.) Plaintiff alleges that thirty percent of the
Competition's participants are located in California, but
outside of San Diego, fifty percent are located in the U.S.,
but outside of California, and twenty percent of the
participants are located internationally. (Compl. ¶ 42.)
further alleges that both the SDSF and Competition have
attracted the attention of several celebrities including
Dennis Rodman, Vince Neil, Ron Jeremy, and Cheech Marin.
(Compl. ¶¶ 36.h-k.) The Competition has also
attracted the attention of nationally recognized judges.
(Compl. ¶¶ 36.m-o.)
The SDSF Mark and Competition Mark
October 21, 2015, Plaintiff successfully registered the
service mark “San Diego Spirits Festival” with
the Secretary of State of California. (See
Certificate of Registration of Service Mark, attached to
Compl. as Ex. 14, ECF no. 1-2, pp. 39-44.) As discussed
below, Plaintiff alleges in its Complaint that
Defendant's actions infringed upon two of Plaintiff's
marks: the San Diego Spirits Festival mark (“SDSF
mark”) and the San Diego International Spirits Bottle
Competition mark (“Competition mark”). (Compl.
¶ 97.) Neither mark is registered with the United States
Patent and Trademark Office, nor has the Competition mark
been registered in California.
is a public association formed pursuant to the California
Food and Agriculture Code for the express purpose of
“[h]olding fairs, expositions, and exhibitions for the
purpose of exhibiting all of the industries and industrial
enterprises, resources and products of every kind or nature
of the state with a view toward improving, exploiting,
encouraging, and stimulating them.” Cal. Food &
Agric. Code § 3951(a).
2013, Defendant allegedly contacted Plaintiff to discuss a
potential partnership. (Compl. ¶ 47.) Defendant was
particularly interested in holding an annual event showcasing
cocktails during the San Diego County Fair. (Compl. ¶
48.) At a meeting with Defendant in July 2013, Alan and
Elizabeth Edwards, the principals of the SDSF, allegedly
shared important details relating to the business model and
operational structure of the SDSF. (Compl. ¶ 51.)
Following the July 2013 meeting, Plaintiff did not hear from
Defendant again. (Compl. ¶ 54.) Plaintiff thereafter
discovered that Defendant intended to hold a competing
festival at the San Diego Country Fair in June 2015. (Compl.
¶¶ 54-55.) Defendant named its festival
“Distilled: San Diego Spirit & Cocktail Festival,
” which includes a spirits competition named
“Distilled: San Diego Spirit & Cocktail
Competition.” (Compl. ¶ 55.)
alleges that the SDSF has suffered as a direct result of
Defendant's cocktail festival. (Compl. ¶ 94.) In
2015, the SDSF's number of attendees and participants
decreased from the prior year to only 3500 attendees and 68
participating “Spirit Brands.” (Compl.
¶¶ 74-75.) Moreover, Plaintiff alleges that
potential attendees and participants are routinely confused
because of the similarity between the events' names, as
well as Plaintiff's marks-the SDSF mark and the
Competition mark-and Defendant's advertisements. (Compl.
¶¶ 56-58, 61-69.)
FAC alleges three causes of action: (1) federal dilution of a
famous mark; (2) violation of federal unfair competition
laws; (3) and state service mark infringement. ...