United States District Court, N.D. California, San Jose Division
ORDER GRANTING MOTION TO DISMISS SECOND AMENDED
COMPLAINT WITH PREJUDICE RE: DKT. NO. 59
H. KOH UNITED STATES DISTRICT JUDGE.
Alexandria Real Estate Equities, Inc.
(“Plaintiff”) brings the instant suit against
RUNLABS (UK) Limited (“RUNLABS UK”), RUNLABS
(Ireland) Limited (“RUNLABS Ireland”), and Steven
Marcus (“Marcus”) (collectively,
“Defendants”). The suit primarily concerns
Defendants' allegedly illegal use of Plaintiff's
trademark. Before the Court is Defendants' motion to
dismiss the Second Amended Complaint
(“SAC”). ECF No. 60 (“Mot.”). Having
considered the submissions of the parties, the relevant law,
and the record in this case, the Court GRANTS Defendants'
motion to dismiss the SAC with prejudice.
is a publicly traded real estate investment trust
(“REIT”) and “prominent developer and
operator of commercial real estate properties to companies in
the academic, scientific, medical, research/development, and
technology fields.” ECF No. 59 (“SAC”)
¶ 2. Plaintiff owns a variety of trademark
registrations, including its name (“Alexandria”),
its lighthouse logo, and the phrase “landlord of
choice.” Id. ¶ 30.
RUNLABS UK is a “private limited company established
under the laws of the United Kingdom, with its principal
place of business . . . [in] London, United Kingdom.”
Id. ¶ 6. Defendant RUNLABS Ireland is a
“private limited company established under the laws of
Ireland, with its principal place of business . . . [in]
Dublin, Ireland.” Id. ¶ 7. The last
defendant, Steven Marcus, is a United States citizen who
currently resides in London, United Kingdom. Id.
¶ 8. Defendant Steven Marcus is the “Founder and
CEO of RUNLABS . . . .” Id. Defendant Steven
Marcus is related to Plaintiff's founder and chairman,
Joel Marcus. Id. ¶ 32.
“advertise collaborative life sciences and technology
campuses incorporating turnkey laboratory and office
facilities specifically geared for early stage life science
and biotech companies and entrepreneurs.” Id.
¶ 3. Plaintiff alleges that Defendants offer
“services identical to those [Plaintiff] has marketed
and provided to its clients for decades.” Id.
However, RUNLABS UK and RUNLABS Ireland “are newly
formed entities that have not, to date, operated any
laboratory facility or conducted any business beyond
promoting Defendants' intended services to attract
clients and raise funds.” Id. ¶ 32.
around November 27, 2018, Plaintiff became aware that
Defendants had allegedly used Plaintiff's name and
trademarks in order to promote Defendants' services to
investors. Id. ¶ 33. Plaintiff points to emails
with an attached presentation that were sent to several
“principals based in the Palo Alto and New York offices
of a prominent venture capital fund” and to several
other “prominent investors in Menlo Park and San
Francisco.” Id. Plaintiff cites “three
such communications.” Id. According to
Plaintiff, one email was sent on November 27, 2018, to three
principals of the venture capital firm Venrock, a company
with offices in New York and Palo Alto. Id. ¶
12; id. at Ex. B; ECF No. 60-1 (“Marcus
Decl.”) ¶ 10. Two of these three principals are
California residents. SAC ¶ 12. The SAC indicates that
these two California residents serve on the boards of
directors of actual and potential clients of Plaintiff.
Id. ¶¶ 13, 14.
second email was sent to three employees of the firm
Riverwood Capital Management, based in Menlo Park,
California, on an unspecified date. Id. ¶ 15.
Each of these employees are California residents.
final email was sent on an unspecified date to former Vice
President Al Gore at the San Francisco office of the firm
Generation Investment Management and to two London-based
addition to these three communications, Plaintiff also
asserts that, “upon information and belief, Defendants
sent many similar communications to those in the start-up,
life sciences, and technology communities in Northern
California in order to attract clients and raise
funds.” SAC ¶ 33. In a sworn declaration attached
to the motion to dismiss the SAC, however, Defendant Marcus
argues that the “targeted investor communications were
distributed on an exceptionally limited basis, and
principally (approximately 90%) in and to the European
Union.” Marcus Decl. ¶ 8.
alleges that the emails with an attached presentation contain
unauthorized uses of Plaintiff's trademarks. SAC ¶
30. Specifically, Plaintiff alleges that the emails made the
following allegedly false or misleading statements, or
• “RUNLABS is creating the world's first and
only flexible urban lab platform- providing critical
infrastructure and community to life sciences companies . . .
• “We are currently raising EUR 50 million growth
round for groundbreaking life science projects in major
gateway cities-Paris and London-with a clear plan to go
global, including the US.”
• “RUNLABS is a revolution in life science, sprung
from Alexandria (www.are.com - NYSE: ARE), growing the
world's first and only network of flexible labs enabling
life science breakthroughs.”
• “Alexandria [is] on CNBC [and] on
Id. ¶ 37. Moreover, Plaintiff argues that the
presentation attached to the emails “is also replete
with unauthorized uses of the Alexandria Trademarks, false
statements regarding RUNLABS' formation, offering and
relationship with Alexandria, and statements misleadingly
suggesting an affiliation, sponsorship, or endorsement of
RUNLABS by Alexandria. Id. ¶ 41. For example,
the below slide is from the attached presentation and
features “photographs of Alexandria properties and
unauthorized references to Alexandria and its registered
LANDLORD OF CHOICE trademark.” Id. ¶ 42.
addition to disseminating these emails, Plaintiff claims that
in “October 2018, Defendants traveled to this district
to raise funds and, on information and belief, to promote
their business through misleading statements similar to those
in the promotional deck.” Id. This trip
appears to have been taken for at most two days for the
purposes of “fundraising for RUNLABS Ireland.”
Id. ¶ 16.
Plaintiff learned of one of the emails, Plaintiff sent a
demand letter to Defendants insisting that they cease using
all Alexandria Trademarks and references to Joel Marcus in
their commercial communications. Id. ¶ 51.
Defendants did not respond to the letter, which prompted
Plaintiff to bring this lawsuit. Id.
December 13, 2018, Plaintiff initiated suit by filing a
complaint. ECF No. 1. On January 8, 2019, Defendants filed a
motion to dismiss for lack of jurisdiction. ECF No. 15. Soon
after, on January 22, 2019, Plaintiff filed a first amended
complaint (“FAC”). ECF No. 21. The Court thus
denied as moot Defendants' motion to dismiss the original
complaint for lack of jurisdiction. ECF No. 22.
January 24, 2019, Defendants filed a motion to dismiss the
FAC. ECF No. 23. On May 1, 2019, the Court granted the motion
to dismiss the FAC without prejudice and held that Plaintiff
had failed to establish personal jurisdiction over any of the
Defendants. ECF No. 47. Later in the month, and in light of
this decision, Magistrate Judge Van Keulen ordered limited
discovery “narrowly tailored to the issue of specific
personal jurisdiction over Defendants, ” such as
interrogatories and requests for production related to
personal jurisdiction. See ECF Nos. 49, 52.
13, 2019, Plaintiff filed the SAC. See SAC.
Defendants filed the instant motion to dismiss the SAC on
June 25, 2019. See Mot. Plaintiff filed an
opposition on July 9, 2019, ECF No. 64 (“Opp.”),
and Defendants filed a reply on July 16, 2019, ECF No. 65
Motion to Dismiss under Rule 12(b)(2)
motion challenging personal jurisdiction under Federal Rule
of Civil Procedure 12(b)(2), the plaintiff, as the party
seeking to invoke the jurisdiction of the federal court, has
the burden of establishing that jurisdiction exists. See
Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797,
800 (9th Cir. 2004). When the motion to dismiss constitutes a
defendant's initial response to the complaint, the
plaintiff need only make a prima facie showing that
personal jurisdiction exists. See Data Disc, Inc. v. Sys.
Tech. Assocs., Inc., 557 F.2d 1280, 1285 (9th Cir.1977).
While a plaintiff cannot “‘simply rest on the
bare allegations of its complaint,' uncontroverted
allegations in the complaint must be taken as true [and]
[c]onflicts between parties over statements contained in
affidavits must be resolved in the plaintiff's
favor.” Schwarzenegger, 374 F.3d at 800
(quoting Amba Mktg. Sys., Inc. v. Jobar Int'l,
Inc., 551 F.2d 784, 787 (9th Cir.1977), and citing
AT&T v. Compagnie Bruxelles Lambert, 94 F.3d
586, 588 (9th Cir.1996)).
Motion to Dismiss ...