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ST Andrews Links Limited v. Gilfin International Limited

United States District Court, N.D. California

September 5, 2019



          William H. Orrick United States District Judge


         Plaintiff 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.


         In its 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.[1]

         OSA 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.

         Based 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.[2]


         Under 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.

         In 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).



         SAL 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 doctrine.

         California 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 ...

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