United States District Court, N.D. California
ORDER DENYING MOTION TO STRIKE
CHARLES R. BREYER, UNITED STATES DISTRICT JUDGE
JaM Cellars, Inc. ("JaM"), owner of the BUTTER mark
and maker of BUTTER chardonnay, brought suit against
Defendant Vintage Wine Estates, Inc. ("Vintage"),
fledgling developer of "BUTTER BOMB" and
"BUTTER KNIFE" chardonnays, over concerns that its
loyal customers will mistakenly purchase Vintage's
offerings, only to declare, "I Can't Believe
It's Not BUTTER!®" See Compl. (dkt. 1). Vintage
moves to strike two causes of action pursuant to
California's anti-SLAPP statute, arguing that JaM has
sued it for protected activity, and that JaM cannot show a
probability of prevailing on the merits. See Mot.
(dkt. 13). As the Court indicated from the bench, it hereby
DENIES the motion and will allow the case to ferment further.
owns the trademark "BUTTER, " and uses it on its
California chardonnay table wine. Compl. ¶
JaM has owned the trademark BUTTER for wine since 2011, with
constructive use rights dating back to 2010; the registration
is incontestable. Id. ¶ 8. BUTTER chardonnay is
available in forty-eight states. Id. ¶ 10. JaM
has sold over six million bottles of BUTTER since 2010, over
three million of which were in 2016 alone. Id. That
might be enough BUTTER to make Paula Deen blush. But
see Paula Deen, Paula's Fried Butter Balls,
(last viewed May 23, 2017). Sales of JaM's BUTTER
chardonnay have exceeded fifty three million dollars since
2010, twenty-six million dollars of which were in 2016 alone.
Compl. ¶ 11. JaM's BUTTER wine was the #2 selling
chardonnay in the $15-20 range in the United States.
Id. ¶ 13. JaM has spent over two million
dollars marketing its BUTTER chardonnay since 2010, and was
the primary sponsor of the BottleRock Napa Valley music
festival in 2015 and 2016. Id. ¶¶ 14-15.
also makes and sells table wines, and, among other things,
creates private labels for chain retailers. Id.
¶ 6. In 2016, Vintage and national grocery
retailer, Kroger, developed two wine brands, BUTTER BOMB and
BUTTER KNIFE, as private labels for Kroger. Id¶19.
BUTTER BOMB and BUTTER KNIFE are California chardonnays.
Id. According to the complaint, Vintage and Kroger
intend to price the wines lower than JaM's BUTTER wine,
to trade on the goodwill of JaM's BUTTER mark, and even
to place the wines "directly adjacent to JaM's
BUTTER wine" on shelves. Id. ¶¶ 19,
30. In June 2016, Vintage filed applications to register
BUTTER BOMB and BUTTERKNIFE WINES as trademarks. Id.
¶¶ 20-23. JaM's counsel notified Vintage that
it objected to Vintage using the term BUTTER as part of its
trademarks, and received no response from Vintage.
Id. ¶ 24. In December 2016 and January 2017,
Vintage applied for and received Federal Certificate of Label
Approvals ("COLAs") for BUTTER BOMB and BUTTER
KNIFEwines, despite JaM's objections.
Id. ¶¶ 25-28.
immune to Vintage's wine charms, brought suit in March
2017, accusing Vintage of (1) trademark infringement pursuant
to 15 U.S.C. § 1114, (2) false designation of origin
pursuant to 15 U.S.C. § 1125, (3) common law trademark
infringement, (4) unfair competition pursuant to California
Business and Professions Code § 17200, (5) unjust
enrichment, and (6) false or misleading statements pursuant
to California Business and Professions Code § 17500.
See Compl. ¶¶ 43-66. Uncorked and
decanted, the complaint alleges that Vintage "used the
BUTTER BOMB and BUTTER KNIFE marks in commerce or such use is
imminent" as "confirmed by Kroger, " and that
the Vintage wines are "likely to confuse consumers into
believing that its wine is affiliated with, connected to, or
sponsored by JaM and its popular BUTTER wine."
Id. ¶¶ 32, 36. JaM further asserts that
the marks are "similar in sight and sound, " both
starting with the dominant term "BUTTER, " using
the same yellow and black colors, and appearing on the same
goods in the same channels of trade. Id.
urging that JaM is trying to cut its wine legs out from under
it, brings a motion to strike the two unfair competition law
("UCL") claims in the complaint (those brought
pursuant to California Business and Professions Code sections
17200 and 17500), as a Strategic Lawsuit Against Public
Participation ("SLAPP"). See Mot.
anti-SLAPP statute provides that any "cause of action
against a person arising from any act of that person in
furtherance of the person's right of petition or free
speech under the United States Constitution or the California
Constitution in connection with a public issue" is
"subject to a special motion to strike, unless the court
determines that the plaintiff has established that there is a
probability that the plaintiff will prevail on the
claim." Cal. Code Civ. Proc. § 425.16(b)(1). The
statute facilitates "the early dismissal of
unmeritorious claims filed to interfere with the valid
exercise of the constitutional rights of freedom of speech
and petition." Club Members for an Honest Election
v. Sierra Club, 45 Cal.4th 309 (2008). Plaintiffs who
find their claims stricken pursuant to the statute describe
it as spicy, with a harsh mouthfeel and a bitter finish.
of a motion to strike pursuant to the anti-SLAPP statute
consists of two steps. "The defendant bears the initial
burden to show that the statute applies because the lawsuit
arises"-or in this case, the challenged causes of action
arise-"from defendant's act in furtherance of its
right of petition or free speech." See Doe v.
Gangland Prods., Inc., 730 F.3d 946, 953 (9th Cir.
2013). If the defendant makes that showing, the
court then considers whether the plaintiff has demonstrated
"a reasonable probability" of prevailing on the
merits of his claims. In re NCAA Student-Athlete Name
& Likeness Licensing Litig., 724 F.3d 1268, 1273
(9th Cir. 2013) (quoting Batzel v. Smith. 333 F.3d
1018, 1024 (9th Cir. 2003)). Vintage argues that (A) the two
UCL claims arise from Vintage's protected activity of
filing trademark and COLA applications, and (B) although it
seeks to play the role of wine stopper, JaM cannot
demonstrate a probability that it will prevail on those UCL
first step of the anti-SLAPP analysis, determining whether
the relevant claims implicate a protected activity, is a
matter of interpretation. "A defendant in an ordinary
private dispute cannot take advantage of the anti-SLAPP
statute simply because the complaint contains some references
to . . . petitioning activity by the defendant."
Sansoe v. Ford Motor Co.. 668 Fed.Appx. 718, 719
(9th Cir. 2016) (quoting People ex rel. fire Ins. Exch.
v. Anapol, 211 Cal.App.4th 809 (2012)). "[T]he mere
fact an action was filed after protected activity took place
does not mean it arose from that activity." City of
Cotati v. Cashman, 29 Cal.4th 69, 76-77 (2002). On the
other hand, "a plaintiff cannot frustrate the purposes
of the SLAPP statute through . . . combining allegations of
protected and nonprotected activity under the label of one
'cause of action.'" Martinez v. Metabolife
Intern.. Inc.. 113 Cal.App.4th 181, 188 (2003) (quoting
Fox Searchlight Pictures Inc. v. Paladino. 89
Cal.App.4th 294, 308 (2001)). The Court must trust its palate
to isolate the dominant flavors of the claim. "[I]t is
the principal thrust or gravamen of the
plaintiffs cause of action that determines whether the
anti-SLAPP statute applies." Martinez. 113
Cal.App.4th at 188 (emphasis in original; citing to City
of Cotati. 29 Cal.4th at 79).
claim for violation of section 17200 incorporates all of the
prior allegations in the complaint, alleges that such conduct
by Vintage is "unfair, unlawful, and fraudulent, "
and goes on to allege that "JaM has suffered direct
injury and damage because sales have been and will be
diverted to Vintage. . . because consumers mistakenly believe
that Vintage's wine originates with JaM or is a
'bargain' version of JaM's wine." Compl.
¶¶ 59-61. Its claim for violation of section 17500
incorporates all of the prior allegations in the complaint
and alleges that such conduct by Vintage constitutes
"dissemination and making of untrue or misleading
statements." Id. ¶¶ 65-66. Vintage
argues in the motion that the two UCL claims thus challenge
Vintage's filing of a trademark application with the
USPTO and its COLA applications, and, further, that