Brian Lichtenberg LLC et al v. Alex & Chloe Inc et al

Filing 72

ORDER DENYING DEFENDANTS MOTION TO DISMISS 68 by Judge Dean D. Pregerson . (lc). Modified on 4/15/2014 (lc).

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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BRIAN LICHTENBERG,LLC, a
California limited liability
company; BRIAN LICHTENBERG,
an individual,

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Plaintiffs,
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v.
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ALEX & CHLOE, INC., a
California corporation; et
al.,

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Defendants.
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Case No. CV 13-06837 DDP (PJWx)

ORDER DENYING DEFENDANTS’ MOTION
TO DISMISS

[Dkt. No. 68]

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Presently before the court is Defendants’ Motion to Dismiss

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Plaintiffs’ Second Amended Complaint.

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parties’ submissions and heard oral argument, the court denies the

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motion and adopts the following order.

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I.

Having considered the

Background1

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As described more extensively in this court’s earlier orders,
Plaintiff Brian Lichtenberg (“Brian”) designs clothing and
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The court assumes the truth of the material factual
allegations in the Second Amended Complaint solely for purposes of
deciding the motions to dismiss.

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accessories and distributes his products through Brian Lichtenberg,

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LLC.

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designs include a series of parodies of designer brands, such as

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“Homiès” as a play on “Hermès” and “Bucci,” a parody of “Gucci.”

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(SAC ¶ 18.)

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and other elements of the luxury brand designs.

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shirts, sweatshirts, pants, beanies, and hats bearing the various

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spoof designs.

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very successful, and are frequently worn by celebrities and

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(Second Amended Complaint (“SAC”) ¶¶ 16-17).1

Brian’s

Brian’s spoof or parody logos mimic the style, font,

(SAC ¶¶ 16-18.)

featured in the media.

(Id.)

Brian sells

Brian alleges that his designs are

(SAC ¶¶ 19-22.)

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Brian’s younger brother, Defendant Christopher Walter
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Lichtenberg (“Chris”), is the sole shareholder or principal of
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Defendant Alex and Chloe, Inc. (“A&C”).

(SAC ¶¶ 3-4.)

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The SAC alleges that in January 2012, Brian developed one

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particular parody design, “Ballin,” as a play on the luxury brand

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“Balmain.”

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“part-time contractor” for Brian.

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included graphic design and promotional work related to Brian’s

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“Ballin with My Homies” project.

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duties, Chris allegedly had access to confidential lists of Brian’s

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customers and industry contacts.

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(SAC ¶ 43.)

By November 2012, Chris was working as a
(SAC ¶ 46.)

(Id.)

Chris’ duties

In connection with those

(SAC ¶ 47.)

The FAC alleges that Chris copied and claimed ownership of the
“Ballin” design, contacted Brian’s manufacturer and requested that
products identical to Brian’s be made under the A&C label, and used

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Hereinafter, this Order frequently refers to Plaintiffs
Brian Lichtenberg and Brian Lichtenberg, LLC, collectively, as
“Brian.”
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Brian’s confidential customer lists to sell the A&C items.

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51-56.)

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late January or early February 2013, before Brian’s “Ballin”

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products came to market.

(SAC ¶¶

Chris listed his products for sale on the A&C website in

(Id.)

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Chris repeatedly claimed to own the “Ballin” design via the
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internet and social media.

(SAC ¶¶ 66-68.)

Chris also contacted

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several of Brian’s buyers, stated that Brian’s “Ballin” products
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were counterfeits, and asked that retailers stop selling Brian’s
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“Ballin” products.

(SAC ¶¶ 58-60; 63-65.)

Chris then made further

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public statements claiming that Brian had stolen not only the
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“Ballin” design, but other parody designs as well.

(SAC ¶¶ 67-68.)

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At Chris’s request, social media sites removed images of Brian’s
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“Ballin” apparel posted to Brian’s pages.

(SAC ¶ 73.)

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Chris and A&C then expanded their offerings to include other

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products similar to Brian’s, featuring other parody designs beyond

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“Ballin.”

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celebrities wearing Brian’s products, then claimed on the A&C

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website and elsewhere that those celebrities endorsed A&C.

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80-82, 84-85.)

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(SAC ¶ 86.)

Chris also appropriated photographs of

(SAC ¶¶

Plaintiffs’ SAC alleges nine causes of action against
Defendants, including trade dress infringement, unfair competition
and false designation of origin, and trademark dilution under
Section 43 of the Lanham Act, 15 U.S.C. § 1125, as well as state
law causes of action including unfair business practices in
violation of California Business & Professions Code Section 17200.
Defendants now move to dismiss the SAC, but address only the three

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Lanham Act causes of action and one state law cause of action for

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unfair business practices.

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II.

Legal Standard

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A complaint will survive a motion to dismiss when it contains

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“sufficient factual matter, accepted as true, to state a claim to

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relief that is plausible on its face.”

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662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544,

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570 (2007)).

Ashcroft v. Iqbal, 556 U.S.

When considering a Rule 12(b)(6) motion, a court must

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“accept as true all allegations of material fact and must construe

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those facts in the light most favorable to the plaintiff.”

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v. Hayes, 213 F.3d 443, 447 (9th Cir. 2000). Although a complaint

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need not include “detailed factual allegations,” it must offer

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“more than an unadorned, the-defendant-unlawfully-harmed-me

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accusation.”

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allegations that are no more than a statement of a legal conclusion

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“are not entitled to the assumption of truth.”

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other words, a pleading that merely offers “labels and

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conclusions,” a “formulaic recitation of the elements,” or “naked

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assertions” will not be sufficient to state a claim upon which

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relief can be granted.

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quotation marks omitted).

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Iqbal, 556 U.S. at 678.

Resnick

Conclusory allegations or

Id. at 679. In

Id. at 678 (citations and internal

“When there are well-pleaded factual allegations, a court should
assume their veracity and then determine whether they plausibly
give rise to an entitlement of relief.” Id. at 679. Plaintiffs must
allege “plausible grounds to infer” that their claims rise “above
the speculative level.”

Twombly, 550 U.S. at 555. “Determining

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whether a complaint states a plausible claim for relief” is a

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“context-specific task that requires the reviewing court to draw on

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its judicial experience and common sense.”

Iqbal, 556 U.S. at 679.

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III. Discussion
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A.

Lanham Act False Designation and Unfair Business Practices

The Lanham Acts prohibits uses in commerce of:

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any word, term, name, symbol, or device, or any
combination thereof, or any false designation of origin,
false or misleading description of fact, or false or
misleading representation of fact, which . . . is likely
to cause confusion, or to cause mistake, or to deceive as
to the affiliation, connection, or association of such
person with another person, or as to the origin,
sponsorship, or approval of his or her goods, services,
or commercial activities by another person
15 U.S.C. § 1125(a)(1).

Defendants argue that the SAC fails to

state a claim for false designation of origin because Defendants
are labeling each of their products with an A&C tag, and are,
therefore, not “passing off” A&C products as Brian’s products.
Defendants’ argument has no merit.

By its own terms, the

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Lanham Act encompasses false endorsements.

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Mint Co., 292 F.3d 1139, 1149 (9th Cir. 2002); see also Brown v.

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Elec. Arts, Inc., 724 F.3d 1235, 1239 n.1 (9th Cir. 2013).

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Plaintiffs respond that their claim is based not on palming off,

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but “upon Defendant [sic] using celebrities . . . who are in

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reality wearing Plaintiffs’ products to sell Defendants [sic]

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products.”

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makes no such allegation.

(Opposition at 10:5-9.)

Defendants reply that the SAC

(Reply at 4.)

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See Cairns v. Franling

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Defendants ignore the clear language of the SAC, including

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allegations that “Defendants . . . stole press and publicity photos

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from [Brian] regarding Nina Garcia and Justin Bieber, who were

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wearing [Brian’s] products.

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photos to the A&C website, making it appear such celebrities were

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wearing the [Defendants’] imitation products.”

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SAC includes other, similar allegations that Defendants

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misappropriated photographs of celebrities wearing Brian’s

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products, and specifically names over a dozen celebrities.

Defendants . . . copied and pasted the

(SAC ¶ 80.)

The

(SAC ¶¶

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81-82, 84-85.)

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designation of origin and unfair business practices under the

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Lanham Act.

The SAC adequately alleges claims for false

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B.

Trade Dress Dilution

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As provided in 15 U.S.C. § 25(c):
Subject to the principles of equity, the owner of a
famous mark that is distinctive, inherently or through
acquired distinctiveness, shall be entitled to an
injunction against another person who, at any time after
the owner's mark has become famous, commences use of a
mark or trade name in commerce that is likely to cause
dilution by blurring or dilution by tarnishment of the
famous mark, regardless of the presence or absence of
actual or likely confusion, of competition, or of actual
economic injury.1
15 U.S.C. § 25(c)(1).

Defendants devote three lines of text to

their argument that this claim must fail because (1) the SAC does
not allege that Brian’s parody trade dress is famous and (2)
Defendants began using the trade dress before it became famous.
(Mot. at 8:5-7.)

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Other remedies beyond injunctive relief may also be
available. 15 U.S.C. § 1125(c)(5)
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Defendants again ignore the clear language of the SAC.

The

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SAC repeatedly alleges that the trade dress is widely recognized by

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consumers and in the fashion industry.

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Furthermore, the SAC alleges that an entire category of “BLTEE

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products” uses the trade dress at issue, and has done so for over

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five years.

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products, which feature the trade dress, have “been in existence”

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for over five years, and that “[o]ver the years, millions of

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consumers have been exposed to the BLTEE [p]roducts through

(SAC ¶¶ 18, 21.)

(SAC ¶¶ 19-22, 24.)

The SAC alleges that the BLTEE

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extensive advertising . . ., appearance of the BLTEE Products on

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television shows, in motion pictures, and on the Internet . . . .”

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(SAC ¶¶ 18, 21).

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dispute as involving only the single “Ballin” design, the SAC’s

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trade dress dilution claim is broader in both descriptive and

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temporal scope.1

While Defendants seek to characterize this

Defendants’ arguments, therefore, fail.

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IV.

Conclusion

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For the reasons stated above, Defendants’ Motion to Dismiss is

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DENIED.

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IT IS SO ORDERED.

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Dated: April 15, 2014
DEAN D. PREGERSON

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United States District Judge
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The court reiterates that on a motion to dismiss, the
alleged facts are accepted as true and construed in favor of the
plaintiff. Resnick, 213 F.3d at 447. Nothing in this Order shall
be read as a commentary on Plaintiffs’ likelihood of success on the
merits of their claims.
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