United States District Court, N.D. California, San Jose Division
AMENDED ORDER GRANTING DEFENDANT'S MOTION TO
DISMISS UNDER FEDERAL RULE OF CIVIL PROCEDURE 12(B)(1) RE:
DKT. NO. 49
J. DAVILA UNITED STATES DISTRICT JUDGE.
order amends the previous order, see Dkt. 63, in that it
removes the previous dismissal with prejudice.
Defendant's motion to dismiss is GRANTED
without prejudice. See Hampton v. Pac. Inv. Mgmt. Co.
LLC, 869 F.3d 844, 846 (9th Cir. 2017)
(“Dismissals for lack of subject-matter jurisdiction,
on the other hand, must be without prejudice, because a lack
of jurisdiction deprives the dismissing court of any power to
adjudicate the merits of the case.”).
the Court is Defendant We (Shanghai) Technology's motion
to dismiss for lack of subject-matter jurisdiction (Fed. R.
Civ. P. 12(b)(1)) and failure to state a claim upon which
relief can be granted (Fed. R. Civ. P. 12(b)(6)). Motion to
Dismiss (“Mot.”), Dkt. 49. Defendant argues this
Court lacks subject matter jurisdiction because the case is
moot. This Court agrees and GRANTS
Defendant's 12(b)(1) motion and does not reach the
correlative 12(b)(6) motion.
an American corporation, provides coworking services around
the world under its “WE Marks.” Complaint
(“Compl.”) ¶¶ 1, 9, Dkt. 1. Defendant,
a Chinese company, provides similar coworking services in
China. See Id. ¶ 4. In May 2018, Defendant
announced a “grand opening” of its first U.S.
coworking location at 755 Sansome Street in San Francisco,
California. Id. ¶¶ 4-5. Following this
announcement, Defendant's “We” marks were
put on the walls of the Sansome location and in other
promotional materials. Id. ¶ 29. Defendant
promoted the San Francisco coworking space on several pages
of its website, which showed images of the space and featured
“We” marks. Id. ¶ 33. Plaintiff,
concerned that consumers would confuse its brand-name
“WeWork” with Defendant's name “We,
” initiated this trademark infringement action to
enjoin Defendant from using “We” marks in the
United States, including on websites and social media
platforms accessible in the United States. Id.
¶ 3, p. 18 (stating prayer for relief). Plaintiff also
sought monetary damages. Id. Plaintiff brought this
case against five defendants, id. ¶ 10- 14, two
remain: Defendant We and Defendant WePlus USA LLC, a
California limited liability company. The motion before the
court at hand is brought only by
Defendant We. See Mot. at 1.
Defendant was engaged in discussions with Shanghai Lingang
Economic Development Group to lease the ground floor of 755
Sansome Street in San Francisco for 5 years with an express
right to sublet office space and meeting rooms to the public.
Mot. at 3; Declaration of Allen Lau in Support of Motion to
Dismiss (“Lau Decl.”) ¶ 7, Dkt. 49. These
discussions, however, never resulted in an actual lease of
the space and Defendant never operated out of the space. Lau
Decl. ¶ 9; cf. Compl. ¶ 29 (“[T]here
are no employees or customers at this location”). Thus,
no lease or rental agreements relating to the use of the San
Francisco, or any other location were ever operative. Lau
Decl. ¶ 10.
“there is no possibility that We Shanghai will open an
office at 755 Sansome Street in the future” because the
owners of the building have agreed to a consent injunction
that they will not use any “We” trademarks,
names, or logos in the United States. Mot. at 3; see
also Consent Order and Partial Dismissal of Shanghai
Lingang Economic Development (“Consent Order”),
Dkt. 36. Additionally, Plaintiff has since leased the entire
755 Sansome building, further preventing Defendant from
leasing the space. Mot. at 3; see also Lau Decl.
¶ 11, Ex. C. The “We” mark no longer
appears at the 755 Sansome Street. Declaration of Xinyi Yang
in Support of Motion to Dismiss (“Yang Decl.”)
¶ 3-8, Dkt. 49.
Defendant never opened a San Francisco location and
“has abandoned any plans to do so in the United States
using its ‘We' mark.” Lao Decl. ¶ 8. It
has since removed all references of the San Francisco
location from its website. Declaration of Jeffrey Z.Y. Liao
in Support of Motion to Dismiss (“Liao Decl.”)
¶¶ 2-8. Further, Defendant is not engaged in any
discussions regarding the opening of any such locations. Lao
Decl. ¶ 8.
asks this Court to take judicial notice of eight documents,
which relate to its motion to dismiss. Request for Judicial
Notice (“Req. Jud. Not.”), Dkt. 50. Because this
Court does not address the 12(b)(6) motion, it only analyzes
those requests applicable to the 12(b)(1) motion;
specifically, those that resolve whether Defendant is
affiliated with WePlus USA (Requests 1-4, Ex. 1).
may take judicial notice under Federal Rule of Evidence 201.
Khoja v. Orexigen Therapeutics, Inc., 899 F.3d 988,
998 (9th Cir. 2018). Rule 201 permits a court to take
judicial notice of an adjudicative fact “not subject to
reasonable dispute, ” that is “generally
known” or “can be accurately and readily
determined from sources whose accuracy cannot reasonably be
questioned.” Fed.R.Evid. 201(b).
1-4, Ex. 1, address information found on the California
Secretary of State website and/or “PDF” documents
downloaded from the site. Req. Jud. Notice. at 2-3. These
requests pertain to publicly available documents, not subject
to reasonable dispute, whose accuracy cannot be questioned.
See Diaz v. Intuit, Inc., 2018 WL 2215790, at *3
(N.D. Cal. May 15, 2018) (“Publically accessible
websites and news articles are ...