United States District Court, N.D. California
ORDER RE: MOTION TO DISMISS RE: DKT. NO. 17
JACQUELINE SCOTT CORLEY UNITED STATES MAGISTRATE JUDGE
TWiT, LLC, and its founder, Leo Laporte bring this civil
action against Twitter, Inc. alleging breach of contract and
tort claims, as well as trademark infringement claims under
the common law and the Lanham Act, 15 U.S.C. §§
1114, 1125. Twitter has moved to dismiss Plaintiffs'
claims pursuant to Federal Rule of Civil Procedure 12(b)(6)
for failure to state a claim and as barred by the applicable
statute of limitation. (Dkt. No. 17.) Having considered the
parties' briefs and having had the benefit of oral
argument on May 24, 2018, the Court GRANTS the motion to
dismiss. Plaintiffs have not plausibly alleged that
they entered into a contract with Twitter, that Twitter
defrauded Plaintiffs, or that Twitter is doing something that
infringes on Plaintiffs' trademarks.
A. Complaint Allegations
2005 TWiT has distributed audio and video content over the
internet in the form of hosted programs covering a broad
range of topics. (Dkt. No. 1 at ¶ 7.) These programs are
distributed to the public by TWiT via downloading or
streaming from the internet (“netcasts”).
(Id. at ¶ 7.) In addition to streaming live
content, the TWiT website retains archives of its shows
dating back numerous years which are available for download.
(Id. at ¶ 8.)
audio and video content is provided under the TWIT trademark.
Leo Laporte is the owner of the TWIT trademark and TWiT is
the exclusive licensee. (Id. at ¶ 9.) The TWIT
mark is registered on the U.S. Principal Register for use in
connection with entertainment in the nature of visual and
audio performances, and musical, variety, news and comedy
shows (Registration No. 3, 217, 759). (Id. at ¶
10.) The application for this registration was filed on May
15, 2006 and the Registration issued on March 13, 2007.
(Id; Dkt. No. 1-1.) Since 2005, Plaintiffs have
extensively advertised and promoted the TWIT mark, and
invested substantial time, energy and resources to develop
substantial consumer recognition of the mark. (Complaint at
March 6, 2007, Evan Williams, one of the co-founders of
Twitter, appeared on TWiT's “net@night”
program. (Id. at ¶ 12.) Mr. Laporte co-hosted
the show. (Id.) Williams described Twitter as a
text-based microblogging service. (Id. at ¶ 13)
He “acknowledged that Twitter was aware of the conflict
between their TWITTER brand and Plaintiffs' TWiT mark
when they adopted TWITTER as their mark.” (Id.
at ¶ 13.) Williams also “acknowledged the
confusion which likely would arise from the use of TWITTER in
the marketplace, as well as instances of actual confusion
which already had arisen.” (Id.) Given this,
Williams and Laporte, “on behalf of Twitter and TWiT,
recognized and agreed to a basis for coexistence of the two
marks, conditioned on each company continuing its own unique
distribution platform.” (Id. at ¶ 14.)
“coexistence agreement” was honored by both TWiT
and Twitter for years. (Id.) However, in 2009, news
stories were published indicating that “Twitter was
planning to expand its services to distribute video content
under the TWITTER brand, contrary to the coexistence
agreement.” (Id. at ¶ 15.) TWiT and
Laporte were greatly concerned that this potential business
model expansion would have a significant effect on TWiT's
business. On June 4, 2009, Laporte sent a letter to Williams
(who was then Twitter's CEO) to express his concern about
Twitter's expansion beyond microblogging and into
audio-video streaming. (Id. at ¶ 16; Dkt. No.
1-2.) The next day, Williams responded via email
“[c]onsistent with the coexistence agreement” and
advised Laporte that the news reports were not accurate.
(Dkt. No. 1 at ¶ 17.) Williams responded:
“Don't worry: We're not expanding to audio or
video under the Twitter brand.” (Id.; Dkt. No.
reliance on this renewed promise and representation by
Twitter regarding coexistence in separate business models,
Laporte and TWiT continued forward with the use of the TWiT
mark, and did not take steps otherwise available to protect
their rights. (Id. at ¶ 18.) However, in May
2017, TWiT and Laporte became aware of Twitter's current
plans to expand its use of the TWITTER mark in connection
with the streaming and downloading of video content over the
internet. (Id. at ¶ 19.) Twitter's use of
the TWITER mark with these new products and services breaches
its promise and agreement with TWiT and Laporte and creates a
likelihood of confusion with the TWIT mark. (Id. at
TWiT and Laporte filed this action in January 2018, six
months after sending a cease and desist letter to Twitter.
(Id. at ¶ 21.) Plaintiffs allege 12 claims for
relief: (1) breach of written contract; (2) breach of oral
agreement; (3) breach of implied contract; (4) promissory
estoppel; (5) false promise; (6) negligent misrepresentation;
(7) intentional interference with prospective economic
advantage; (8) intentional misrepresentation; (9) negligent
interference with prospective economic advantage; (10)
trademark infringement, in violation of the Lanham Act, 15
U.S.C. § 1114(1)(a); (11) unfair competition, in
violation of the Lanham Act, 15 U.S.C. § 1125(a); and
(12) common law trademark infringement.
responded by filing the now pending motion to dismiss. (Dkt.
No. 17.) Shortly after Twitter filed the motion to dismiss,
Plaintiffs filed a motion to disqualify Durie Tangri LLP and
its attorneys as counsel for Defendant Twitter. (Dkt. No.
25.) Both motions are fully briefed and came before the Court
for hearing on May 24, 2018.
federal court, subject matter jurisdiction may arise from
either “federal question jurisdiction” or
“diversity of citizenship” when the amount in
controversy exceeds $75, 000. See Caterpillar Inc. v.
Williams, 482 U.S. 386, 392 (1987). To properly allege
diversity jurisdiction, a plaintiff must claim damages in
excess of $75, 000 and each defendant must be a citizen of a
different state from each plaintiff. See 28 U.S.C.
§ 1332; Diaz v. Davis (In re Digimarc Corp.
Derivative Litig.), 549 F.3d 1223, 1234 (9th Cir. 2008).
Here, as all parties are residents of California, there is no
diversity jurisdiction. However, the Court has federal
question jurisdiction under 28 U.S.C. § 1331 because
Plaintiffs plead trademark infringement and unfair
competition claims under the Lanham Act.
claims fall within four general categories: contract, tort,
fraud, and the Lanham Act. Twitter insists that Plaintiffs
have failed to plead facts suggesting entitlement to relief
under any category of claims. Twitter also contends that the
claims are all barred by the applicable statute of
Plaintiffs' Contract Claims
allege four contract-related claims: (1) breach of written
contract; (2) breach of oral agreement; (3) breach of implied
contract, and (4) an alternative promissory estoppel claim.
Twitter contends that each of these claims fails because
Plaintiffs have not pled any ...