United States District Court, N.D. California
ORDER GRANTING DEFENDANTS' MOTION TO DISMISS
DOCKET NO. 13
M. CHEN United States District Judge
Alden Gajo, proceeding pro se, has filed suit against
Defendants Chicago Brand, Eva Stone, and Holly Snyder
(erroneously sued as “Holly Smith”), asserting
claims for, inter alia, breach of contract and
violation of various intellectual property rights
(e.g., copyright, trademark, and patent). Currently
pending before the Court is Defendants' 12(b)(6) motion
to dismiss. At a hearing held on June 1, 2017, the Court
GRANTED the motion. This order memorializes
the rulings made by the Court at that hearing and provides
additional analysis, as necessary.
Gajo has asserted a claim for dissemination of false
advertising pursuant to 15 U.S.C. § 52. Section 52 is
part of the Federal Trade Commission Act
(“FTCA”). Courts have held that consumers and
members of the public at large may not maintain a private
action to enforce the FTCA. See, e.g., Dreisbach
v. Murphy, 658 F.2d 720, 730 (9th Cir. 1981) (stating
that “private litigants may not invoke the jurisdiction
of the federal district courts by alleging that defendants
engaged in business practices proscribed by” 15 U.S.C.
§ 45(a)(1); “[t]he Act rests initial remedial
power solely in the Federal Trade Commission”);
Holloway v. Bristol-Myers Corp., 485 F.2d 986, 987
(D.C. Cir. 1973) (“hold[ing] that private actions to
vindicate rights asserted under the Federal Trade Commission
Act may not be maintained”); Kerr v. Am. Home
Mortg. Serv'g, Inc., No. 10-cv-1612 BEN (AJB), 2010
U.S. Dist. LEXIS 100076, at *7 (S.D. Cal. Sep. 22, 2010)
(stating that “[i]t is well-established that there is
no private right of action for violation of the FTCA; only
the Federal Trade Commission has standing to enforce
it”). Accordingly, the Court dismisses the claim for
false advertising, and with prejudice. Mr. Gajo shall not
reassert this claim in any future pleading.
Trafficking of Counterfeit Goods
Gajo has also asserted a claim for trafficking of counterfeit
goods. See 18 U.S.C. § 2320. As Defendants
note, § 2320 is a criminal statute, and criminal
statutes generally do not provide a private cause of action.
See Kraft v. Old Castle Precast, Inc., No. LA CV
15-00701-VBF1, 2015 U.S. Dist. LEXIS 103440, at *4 (C.D. Cal.
Aug. 5, 2015). See, e.g., Cannon v. Univ. of
Chicago, 441 U.S. 677, 690 (1979) (noting that
“[t]he language in these statutes - which expressly
identifies the class Congress intended to benefit - contrasts
sharply with statutory language customarily found in criminal
statutes”); Cent. Bank, N.A. v. First Interst.
Bank, N.A., 511 U.S. 164, 190 (1994) (stating that
“[w]e have been quite reluctant to infer a private
right of action from a criminal prohibition alone”;
adding that “we have not suggested that a private right
of action exists for all injuries caused by violations of
criminal prohibitions”); Alexander v.
Sandoval, 532 U.S. 275, 289 (2001) (noting that
“[s]tatutes that focus on the person regulated rather
than the individuals protected create 'no implication of
an intent to confer rights on a particular class of
persons'”). Moreover, in his opposition brief, Mr.
Gajo essentially concedes that the cause of action should be
dismissed. See Opp'n at 10 (“Plaintiff
realizes that the Complaint of Trafficking of Counterfeit
Goods is a more serious criminal offense beyond the
jurisdiction of this civil Court[;] a separate Complaint to
the Federal Trade Commission shall be filed for investigation
and possible prosecution.”). The Court therefore
dismisses the claim for counterfeit trafficking, and with
prejudice. Mr. Gajo shall not reassert the claim in any
Breach of Contract
main claim asserted by Mr. Gajo is that for breach of
contract. Because Mr. Gajo's complaint was somewhat
confusing with respect to this cause of action, the Court
asked Mr. Gajo, at the hearing, to clarify the factual
allegations supporting his breach-of-contract claim. In
response, Mr. Gajo articulated a breach-of-contract theory
that was not pled (at least not clearly) in the complaint.
That is, Mr. Gajo asserted that Defendants breached the
contract in two ways: (1) because Defendants used K. Fung as
the manufacturer for the Alden wrench (instead of finding a
new manufacturer) and (2) because (regardless of the
manufacturer) Defendants failed to pay royalties on their
sales of the Alden wrench.
this breach-of-contract theory was not pled in the original
complaint, the Court shall, in the interest of efficiency,
dismiss the breach-of-contract claim as currently pled and
allow Mr. Gajo to amend the claim so as to make factual
allegations consistent with the representations above. In so
ruling, the Court does not opine as to whether any amended
claim would be subject to, e.g., a
statute-of-limitations defense or would otherwise be viable.
Gajo has asserted various claims for infringement of
intellectual property, including a claim for copyright
infringement and a related claim for vicarious infringement.
Defendants' motion to dismiss the copyright claims is
granted because it is not clear what the copyrighted works
are in the first instance and whether they have been
registered. The complaint refers generally to photos of the
wrench and product descriptions, but both references are
vague. To the extent Mr. Gajo has tried to cure that
deficiency by submitting a declaration, see Gajo
Decl. ¶ 4 & Ex. D (providing a copy “of a
violated creative work by [Mr. Gajo]” - “Sample 1
is the original packaging and instructions created by [Mr.
Gajo] for A&S” and “Sample 2 is . . . a
photograph taken by [Mr. Gajo]”), he cannot do so for
purposes of a 12(b)(6) proceeding. See In re Bare
Escentuals, Inc. Sec. Litig., 745 F.Supp.2d 1052, 1065
(N.D. Cal. 2010) (stating that, “when resolving a
motion to dismiss for failure to state a claim, the court may
not generally consider materials outside the
pleadings”). Moreover, even if those specific works
were named in an amended complaint, Mr. Gajo would still have
to plead registration of the works. See Epikhin v. Game
Insight N. Am., 145 F.Supp.3d 896, 902 (N.D. Cal. 2015)
(noting that, under 17 U.S.C. § 411(a), “'no
civil action for infringement of the copyright in any United
States work shall be instituted until registration of the
copyright claim has been made'”; adding that,
“[a]lthough the registration requirement is not
jurisdictional, it is a 'precondition to
suit'”). Mr. Gajo's suggestion that he is
relieved from the registration requirement by virtue of the
Berne Act lacks merit.
In 1989, the United States agreed to the Berne Convention, an
international copyright treaty that, among other things,
prohibits signatories from imposing copyright formalities as
a condition to the protection of works of nationals of other
member countries. "To meet obligations necessary to
adhere to the Convention, the United States eliminated many
of the formalities for foreign works, including the
registration requirement of § 411(a)."
Crunchyroll, Inc. v. Admiral, No. 11-cv-02334-JCS,
2014 U.S. Dist. LEXIS 47033, at *38 (N.D. Cal. Feb. 10, 2014)
(emphasis added); see also Cosmetic Ideas, Inc. v.
IAC/InteractiveCorp,606 F.3d 612, 619 n.12 (9th Cir.
2010) (stating that, “[a]s a result of the Berne
Convention's mandate that foreign works not be subject to
formalities, § 411's pre-suit registration
requirement does not apply to non-U.S. works”). There
is no ...