United States District Court, C.D. California
Present: The Honorable CHRISTINA A. SNYDER Catherine Jeang
CIVIL MINUTES - GENERAL
(IN CHAMBERS) - HEAVY HITTER'S MOTION TO DISMISS AND
SEVER (Dkt. 102, filed June 2, 2017)
August 15, 2016, plaintiff Albert Kirakosian and his
business, Kiraco, LLC, filed this action against seventeen
hookah retailers and Does 1-100. Dkt. 1 ("Compl.").
The gravamen of plaintiff s complaint is that the defendants
infringed upon plaintiffs patent and trademark rights by
selling or offering to sell counterfeit hookah products.
Id. On April 28, 2017, plaintiff filed a first
amended complaint against the following defendants: J&L D
Sunset Wholesale & Tobacco; Wholesale Palace, Inc.; Jack
Haroun; Glenoaks House of Smokes; Glendale House of Smokes;
Levon Vardanyan; Planet Tobacco; Hayk's Smoke Shop; The
Heavy Hitter Group, Inc.; Vatche Kiwanian; U.S. Batta;
Mission Wine & Spirits; Zahrah Tobacco LLC; and Does
1-10. Dkt. 96 ("FAC"). Plaintiff alleges six claims
against all of the named defendants, namely, (1) patent
infringement; (2) trademark infringement; (3) trade dress
infringement; (4) common law trademark infringement; (5)
counterfeiting; and (6) false designation of origin.
12, 2017, defendant The Heavy Hitter Group, Inc. ("Heavy
Hitter") filed an answer to the FAC. Dkt.
100. On May 30, 2017, Vatche Kiwanian and
U.S. Batta jointly filed an answer to the FAC. Dkt. 101. On
June 2, 2017, Heavy Hitter filed the instant motion to
dismiss and sever the claims against it. Dkt. 102
("Mot."). On June 19, 2017, plaintiff filed an
opposition. Dkt. 104 ("Opp'n"). On June 26,
2017, Heavy Hitter filed a reply. Dkt. 105
carefully considered the parties' arguments, the Court
finds and concludes as follows.
alleges the following facts.
Kirakosian developed a "small and sleek" hookah
bowl that fits nearly all hookahs and delivers "the full
smoking experience." FAC ¶ 25. Plaintiff branded
the hookah accessory as Apple on Top ("AOT").
Id. The product is round like an apple and features
"a single rubber green leaf attached to the metal bowl
for "easy handling of hot coals." Id.
¶ 27. Plaintiff registered the hookah bowl with the
United States Patent and Trademark office and received Patent
No. D726, 366 (the '"366 Patent"). Id.
"f 26. Plaintiff also registered the "AOT"
word mark under Registration No. 4, 717, 006. Id.
¶ 30. In connection with its trademark registration and
extensive use, plaintiff owns the AOT Trade Dress, which
consists of the patented AOT product packaged in a small,
clear plastic box with a red banner at the base that reads
"AOT ®." Id. ¶ 32.
alleges that defendants are infringing or inducing other to
infringe by making, using, offering to sell, andor selling
products that infringe the claims of the '366 Patent.
Id. ¶ 33. The infringing products appear
identical to AOT products in all material respects, including
the word mark and packaging. Id. ¶ 35.
Plaintiff alleges that defendants' infringement was
willful and deliberate. Id¶36. Plaintiff further alleges
that defendants' actions confuse and deceive consumers as
to the source of the counterfeit products. Id.
Motion to Dismiss and Sever
Heavy Hitter seeks to be dismissed and severed from this
action because it has not been properly joined. Mot. at 2. In
most civil actions, joinder of defendants is governed by a
permissive rule, Federal Rule of Civil Procedure 20.
Rule 20 does not govern joinder in patent cases.
"[E]ffective September 16, 2011, joinder in patent cases
is governed by the America Invents Act." In re
Nintendo Co., 544 F.App'x 934, 939 (Fed. Cir. ...