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Bicego v. Kantis

United States District Court, N.D. California

June 20, 2017

MARCO BICEGO S.P.A., et al., Plaintiffs,
STEPHANIE KANTIS, et al., Defendants.


          SUSAN ILLSTON United States District Judge

         Defendants' 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.


         On 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.

         The 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 accessories jewelry.
8. Plaintiffs' business is substantial and has been threatened by Defendants with assertions of damages and injunctive relief.

Id. ¶¶ 7-8.

         Exhibit 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." Id.

         The 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)

         To 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.

         In 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 omitted).

         II. Rule 12(f)

         Pursuant 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.


         I. Lanham Act

         Plaintiffs' second cause of action alleges a claim for unfair competition under the Lanham Act, 15 U.S.C. § 1125(a). 15 U.S.C. ...

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