United States District Court, N.D. California
ORDER GRANTING DEFENDANTS' MOTION TO DISMISS THE
FIRST AMENDED COMPLAINT WITH LEAVE TO AMEND Re: Dkt. No.
ILLSTON United States District Judge
motion to dismiss the first amended complaint is scheduled
for a hearing on July 3, 2017. Pursuant to Civil Local Rule
7-1(b), the Court determines that this matter is appropriate
for resolution without oral argument and VACATES the hearing.
For the reasons set forth below, the Court GRANTS
defendants' motion and GRANTS plaintiffs leave to amend
the complaint. The amended complaint must be filed no
later than July 7, 2017.
February 23, 2017, plaintiffs Marco Bicego USA, Inc. and
Marco Bicego S.P.A. filed this lawsuit against defendants
Kantis Holdings, LLC and Stephanie Kantis. On February 28,
2017, plaintiff filed an amended complaint. Dkt. No. 9. The
amended complaint alleges that plaintiffs are “world
renowned fine jewelers celebrated over the past 59 years for
their unique and high-quality designs using precious metals,
primarily gold, platinum, silver and the highest quality
diamonds in their work, including their famously received
JAIPUR and JAIPUR LINK collections.” First Amended
Complaint (“FAC”) ¶ 1. Defendants are
“jewelry accessories manufacturers under the trademark
and trade name Stephanie Kantis, selling nationally
throughout the United States.” Id. ¶ 2.
statement of facts consists of three paragraphs:
6. Plaintiffs are world famous designers of exquisite jewelry
for the luxury jewelry market. Such fame includes their
substantial work under their brand JAIPUR LINK, which
includes all copyright works created by the designers of
Plaintiffs in Italy. Plaintiffs have offered their JAIPUR
LINKS collected works since at least as early as March 2010
and probably earlier for sale in the United States to famous
department stores, as shown in Exhibit A attached hereto.
7. Upon information and belief Defendants allege they are
selling designs substantially the same as Plaintiffs'
JAIPUR LINKS designs and have set forth such allegations in a
letter to Plaintiffs asserting copyright infringement and
trademark (trade dress) claims against Plaintiffs, which is
attached hereto as Exhibit B. Defendants have claimed
likelihood of confusion by having the goods of Plaintiffs and
Defendants in the same marketplace. Defendants have claimed
no access by Plaintiffs to any of Defendants' designs or
any indication that Plaintiffs and Defendants are even in the
same marketplace, i.e., fine jewelry versus
8. Plaintiffs' business is substantial and has been
threatened by Defendants with assertions of damages and
Id. ¶¶ 7-8.
B to the amended complaint is a letter dated February 2,
2017, from defendants' lawyers to plaintiff Marco Bicego
and his counsel. The letter states, "[i]t has come to
our attention that Marco Bicego is selling jewelry that
infringes on Stephanie Kantis's well-known trade dress,
as well as its copyrighted designs.” Id. Ex.
B. The letter states that "Ms. Kantis's signature
look of her innovative jewelry collection is CORONATION
chains . . . in her VERSITAL Collection, a collection of
statement-making pendants, chains, and bracelets made to mix
and match, " and asserts that "Marco Bicego is
presently advertising and offering for sale a line of
virtually identical chains, which copies the Kantis Trade
Dress and otherwise infringes on her copyrights."
Id. The letter requests, inter alia, that
Bicego "immediately pull the Infringing Designs from his
line and cease marketing and selling goods that infringe on
Stephanie Kantis's trade dress and copyright."
amended complaint asserts three causes of action: (1)
declaratory relief, 28 U.S.C. §§ 2201-02; (2)
violation of the Lanham Act, 15 U.S.C. § 1125(a); and
(3) violation of California's Unfair Competition Law,
Cal. Bus. & Prof. Code §§ 17200, et
seq. Defendants have moved to dismiss plaintiffs'
Lanham Act and UCL claims, and move to strike portions of the
claim for declaratory relief.
I. Rule 12(b)(6)
survive a Rule 12(b)(6) motion to dismiss, the plaintiff must
allege "enough facts to state a claim to relief that is
plausible on its face." Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 570 (2007). This "facial
plausibility" standard requires the plaintiff to allege
facts that add up to "more than a sheer possibility that
a Defendant has acted unlawfully." Ashcroft v.
Iqbal, 556 U.S. 662, 678 (2009). While courts do not
require "heightened fact pleading of specifics, " a
plaintiff must allege facts sufficient to "raise a right
to relief above the speculative level."
Twombly, 550 U.S. at 555, 570. "A pleading that
offers 'labels and conclusions' or 'a formulaic
recitation of the elements of a cause of action will not
do.'" Iqbal, 556 U.S. at 678 (quoting
Twombly, 550 U.S. at 555). "Nor does a
complaint suffice if it tenders 'naked assertion[s]'
devoid of 'further factual enhancement.'"
Id. (quoting Twombly, 550 U.S. at 557).
"While legal conclusions can provide the framework of a
complaint, they must be supported by factual
allegations." Id. at 679.
reviewing a Rule 12(b)(6) motion, a district court must
accept as true all facts alleged in the complaint, and draw
all reasonable inferences in favor of the plaintiff. See
al-Kidd v. Ashcroft, 580 F.3d 949, 956 (9th Cir. 2009).
However, a district court is not required to accept as true
"allegations that are merely conclusory, unwarranted
deductions of fact, or unreasonable inferences." In
re Gilead Scis. Sec. Litig., 536 F.3d 1049, 1055 (9th
Cir. 2008). As a general rule, the Court may not consider any
materials beyond the pleadings when ruling on a Rule 12(b)(6)
motion. Lee v. City of L.A., 250 F.3d 668, 688 (9th
Cir. 2001). However, pursuant to Federal Rule of Evidence
201, the Court may take judicial notice of "matters of
public record, " such as prior court proceedings,
without thereby transforming the motion into a motion for
summary judgment. Id. at 688-89. If the Court
dismisses a complaint, it must decide whether to grant leave
to amend. The Ninth Circuit has "repeatedly held that a
district court should grant leave to amend even if no request
to amend the pleading was made, unless it determines that the
pleading could not possibly be cured by the allegation of
other facts." Lopez v. Smith, 203 F.3d 1122,
1130 (9th Cir. 2000) (citations and internal quotation marks
to Federal Rule of Civil Procedure 12(f), the Court may
strike from a pleading "any redundant, immaterial,
impertinent or scandalous matter." Fed.R.Civ.P. 12(f).
The purpose of a Rule 12(f) motion is to avoid spending time
and money litigating spurious issues. Fantasy, Inc. v.
Fogerty, 984 F.2d 1524, 1527 (9th Cir. 1993), reversed
on other grounds, 510 U.S. 517 (1994). Matter is immaterial
if it has no essential or important relationship to the claim
for relief pleaded. Id. Matter is impertinent if it
does not pertain and is not necessary to the issues in
question in the case. Id.
second cause of action alleges a claim for unfair competition
under the Lanham Act, 15 U.S.C. § 1125(a). 15 U.S.C.