United States District Court, N.D. California
ORDER GRANTING MOTION TO DISMISS COUNTERCLAIMS RE:
DKT. NO. 57
William H. Orrick United States District Judge
St Andrews Links Limited (SAL), the business representing the
famous golf course in St. Andrews, Scotland, moves to dismiss
and has filed a special motion to strike counterclaims filed
by defendants Gilfin International Limited, Gilfin
International (Tapemate) Limited (collectively “Gilfin
International”), Old St. Andrews Limited
(“OSA”) (all three collectively OSA) under
California's Anti-SLAPP statute (Cal. Code Civ. Proc.
§ 425.16). The counterclaims are barred as a matter of
law under California's litigation privilege (Cal. Civ.
Code § 47(b)) and by the Noerr-Pennington
doctrine because they are made solely in response to
SAL's filing its affirmative case against OSA. OSA has
also failed to allege sufficient facts. For these reasons,
SAL's motion to dismiss is granted and the special motion
to strike is denied as moot.
Second Amended Complaint, SAL asserts the following causes of
action against OSA: (1) Unfair Competition and False
Designation of Origin, under 15 U.S.C. §1125(a)(A) and
(B); (2) California Unfair Competition, under Cal. Bus. &
Prof. Code Sections 17200 et seq.; (3) California
False Advertising, under Cal. Bus. & Prof. Code Sections
17500 et seq.; (4) Cancellation of U.S. Trademark
Reg. No. 1, 518, 200, under 15 U.S.C. §§ 1052(a)
and 1119, 15 U.S.C. §§ 1058(a) and (b) and 1119,
and 15 U.S.C. §§ 1064(3) and 1119, seeking to
cancel Gilfin's Registration and renewal because of its
misleading nature; and (5) damages for False Registration,
under 15 U.S.C. § 1120.
answered the SAC and asserts various counterclaims against
plaintiff. It alleges that as “early as 1987 and
through today, the OSA Products have been sold in golf ball
shaped bottles, bearing a lion and golf club logo.” CC
¶ 11. “OSA has acquired and protected the rights
associated with the OSA Products and is the owner of U.S.
Trademark Reg. No. 1, 518, 200, covering OLD ST. ANDREWS for
scotch whisky (OSA Mark).” Id. ¶ 12. The
“OSA Mark, covered by the OSA Registration, was first
used in U.S. commerce in connection with OSA Products at
least as early as October 1984.” Id. ¶13.
It also alleges that SAL has been aware of OSA's
consistent, lawful use, marketing, and promotion of the OSA
Products for at least eight years and that SAL began but
abandoned a “litigious campaign” against OSA in
2010 and took actions with the Trademark and Patent Office
that “prompted office actions that disclosed or
referenced OSA's OSA Registration.” Id.
¶¶ 14-17. OSA claims that after “sitting on
its rights for years, SAL has attempted to interfere and
disrupt OSA's contractual relations with its distributors
and business partners, including OSA's U.S. distributor
Niche Import Company (“Niche”), by filing the
instant action, ” and that SAL “is fully aware
that its claims have no evidentiary, factual or legal basis
whatsoever, and are time-barred” but has pursued this
case to cause OSA's customers to cease selling OSA
products. Id. ¶¶ 18-19.
on these allegations, OSA asserted the following
counterclaims: (1) intentional interference with contractual
relations; (2) intentional interference with prospective
economic advantage; (3) cancellation of the SAL's
registrations; (4) unfair competition; and (5) unfair
competition under Section 17200. SAL's motions to dismiss
and strike followed.
Federal Rule of Civil Procedure 12(b)(6), a district court
must dismiss a complaint if it fails to state a claim upon
which relief can be granted. Fed.R.Civ.P. 12(b)(6). To
survive a 12(b)(6) motion, 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, 556 (2007). A claim is facially
plausible when the plaintiff pleads facts that “allow
the court to draw the reasonable inference that the defendant
is liable for the misconduct alleged.” Ashcroft v.
Iqbal, 556 U.S. 662, 678 (2009) (citation omitted).
There must be “more than a sheer possibility that a
defendant has acted unlawfully.” Id. 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.
deciding whether the plaintiff has stated a claim upon which
relief can be granted, the court accepts the plaintiff's
allegations as true and draws all reasonable inferences in
favor of the plaintiff. Usher v. City of Los
Angeles, 828 F.2d 556, 561 (9th Cir. 1987). However, the
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). If the
court dismisses the complaint, it “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, 1127 (9th Cir. 2000).
TORT CLAIMS AND PRIVILEGE
first moves to dismiss OSA's California tort claims (the
two interference claims and the unfair competition claims)
because they are barred - as they are based only on conduct
SAL has taken in this litigation - under two
doctrines: (1) California's litigation privilege, Cal.
Civ. Code § 47(b); and (2) the Noerr-Pennington
Civil Code section 47(b) protects communications made in the
context of a judicial proceeding. Cal. Civ. Code § 47.
“The principal purpose of section 47(b)(2) is to afford
litigants and witnesses the utmost freedom of access to the
courts without fear of being harassed subsequently by
derivative tort actions.” Silberg ...