Sugarfina, Inc. v. Sweet Petes LLC et al

Filing 25

ORDER RE: DEFENDANTS' MOTION TO DISMISS #18 by Judge Ronald S.W. Lew: the Court GRANTS in part and DENIES in part Defendants' Motion #18 as follows: The Court GRANTS Defendants' Motion as to Plaintiff's trade dress claim and gives Plaintiff twenty-one days to amend. The Court DENIES Defendants' Motion as to Plaintiff's trademark infringement claim under the Lanham Act. The Court DENIES Defendants' Motion as to Plaintiff's common law trademark infringement claim. The Court DENIES Defendants' Motion as to Plaintiff's unfair business practices claim premised on Plaintiff's trademark claims. The Court GRANTS Defendants' Motion as to Plaintiff's unfair business practices claim premised on Plaintiff's trade dress claim and gives Plaintiff twenty-one days to amend. The Court GRANTS Defendants' Motion as to Plaintiff's unfair business practices claim premised on Plaintiff's copyright and patent claims without leave to amend. The Court GRANTS Defendants' Motion as to Plaintiff's unjust enrichment claim without leave to amend. The Court DENIES Defendants' Motion as to Plaintiff's patent infringement claim. The Court DENIES Defendants' Motion as to Plaintiff's copyright infringement claim. SEE ORDER FOR FURTHER DETAILS. (jre)

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

10
11
12 SUGARFINA, INC.,
13
14

Plaintiff,
v.

15 SWEET PETE’S LLC; ML
SWEETS, LLC; PETER
16 BEHRINGER; AND ALLISON
17 BEHRINGER,
18

Defendants.

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17-cv-4456-RSWL-JEM
ORDER RE: DEFENDANTS’
MOTION TO DISMISS [18]

19
Plaintiff Sugarfina, Inc. (“Plaintiff” or
20
“Sugarfina”) brought the instant Action against
21
Defendants Sweet Pete’s LLC (“Sweet Pete’s”); ML
22
Sweets, LLC (“ML Sweets”); Peter Behringer; and Allison
23
Behringer (collectively, “Defendants”) alleging trade
24
dress infringement, trademark infringement, unfair
25
business practices, unjust enrichment, patent
26
infringement, and copyright infringement.

Currently

27
before the Court is Defendants’ Motion to Dismiss the
28
1

1 Complaint pursuant to Federal Rule of Civil Procedure
2 (“FRCP” or “Rule”) 12(b)(6) (“Motion”) [18]. Having
3 reviewed all papers submitted pertaining to the Motion,
4 the Court NOW FINDS AND RULES AS FOLLOWS: Defendants’
5 Motion to Dismiss is GRANTED in part and DENIED in
6 part.
7

I. BACKGROUND

8 A.

Factual Background

9

Since its founding in 2012, Sugarfina, a luxury

10 candy boutique, has grown to a company with over 300
11 employees and 24 retail boutiques.
12 ECF No. 1.

Compl. ¶¶ 1, 3-4,

Sugarfina focuses on high-end luxury spaces

13 including selling its products in Nordstrom, Bergdorf
14 Goodman, and the Four Seasons Hotels.

Id. ¶ 4.

15 Sugarfina has extensively advertised its products on
16 social media and internet marketing, and such
17 advertisements have featured photographs of Sugarfina’s
18 designs.
19

Id. ¶ 24.

In selling its products, Sugarfina has created

20 unique design features for its products and packaging,
21 and these features have been used consistently since
22 its inception.

Id. ¶ 6.

Sugarfina alleges that its

23 unique product packaging design includes a solid
24 borderline around the product package, the use of a
25 magnetic latch, a rectangular product package with
26 minimal lettering, the inside bottom surface of the
27 product package dominated by a series of cube wells or
28 trays, the series of cube wells each being spaced from
2

1 one another within the product package, and a series of
2 clear cubes containing candy product that each reside
3 in a corresponding cube well.

Id. ¶ 45.

Sugarfina has

4 obtained intellectual property protection in its
5 products and packaging, including design patents,
6 trademarks, copyrights, and trade dress.

Id. ¶ 8.

Sweet Pete’s is a Florida-based candy company.1

7

8 Id. ¶ 13.

Sweet Pete’s rebranded itself in 2014

9 following an appearance on the CNBC Show, The Profit.
10 Id. ¶ 55.

Sweet Pete’s had lost money the two years

11 before this rebranding.

Id. ¶ 55.

Prior to the

12 rebranding, Sweet Pete’s branding consisted of a
13 carnival motif with the aesthetic of a children’s candy
14 store.

Id. ¶ 56.

The rebranding included Sweet Pete’s

15 selling its products in different packaging, which
16 Plaintiff claims copies its innovative design,
17 including its signature candy bento boxes.2
18 66.

Id. ¶¶ 64-

Consumers, in social media posts, have noted the

19 similarities between the two companies’ packaging.
20 ¶ 76.

Id.

Following the rebranding, Sweet Pete’s became a

21 profitable company, with $3,120,000 in revenue per
22 year.
23

Id. ¶ 57.

Plaintiff also claims infringement of six marks,

24
25
26
27
28

1

Defendant Peter Behringer is the founder of Sweet Pete’s,
and his wife, Defendant Allison Behringer, is one of the managers
of Sweet Pete’s. Id. ¶¶ 15-16. ML Sweets is one of the managers
of Sweet Pete’s. Id. ¶ 14.
2

Plaintiff obtained a design patent on May 10, 2016 for
this packaging. Id. ¶ 67.
3

1 including CUBA LIBRE, PEACH BELLINI, FRUTTINI, CANDY
2 BENTO BOX, CANDY CUBE, and CANDY CONCIERGE.

Id. ¶ 28.

3 Sugarfina has used these marks for a number of years,
4 see id. ¶¶ 30, 32, 34, 36, 38, 40, and Sweet Pete’s
5 began using each of these marks following Sugarfina’s
6 initial use of the marks, id.
7

Sugarfina sent a cease and desist letter to

8 Defendants dated March 15, 2016 regarding these marks
9 and Sugarfina’s packaging design, and Defendants
10 refused to comply with the request to cease selling the
11 allegedly infringing products.

Id. ¶¶ 22, 80.

12 B.

Procedural Background

13

On June 15, 2017, Plaintiff filed its Complaint [1]

14 against Sweet Pete’s, ML Sweets, Peter Behringer, and
15 Allison Behringer.
16

On July 13, 2017, the parties stipulated to extend

17 the time for ML Sweets and Sweet Pete’s to answer
18 Plaintiff’s Complaint [14].

The Stipulation gave ML

19 Sweets and Sweet Pete’s until July 28, 2017 to respond
20 to the Complaint.
21 ECF No. 14.

See Stip. to Extend Time to Answer,

The Stipulation did not mention Allison

22 Behringer and Peter Behringer.
23

Id.

On July 25, 2017, counsel for Defendants, Michael

24 Kelber, called Plaintiff’s counsel, Jennifer Trusso
25 Salinas, to discuss the alleged deficiencies in the
26 Complaint and Defendants’ intent to file a motion to
27 dismiss.

See Decl. of Michael G. Kelber (“Kelber

28 Decl.”) ¶¶ 2-3.

According to Mr. Kelber, the parties
4

1 had a substantive discussion regarding the merits of
2 Defendants’ potential motion to dismiss.

Id. ¶ 4.

Ms.

3 Salinas states that she asked Mr. Kelber for authority
4 supporting Defendants’ claims that the Complaint was
5 deficient and that he was unable to do so.

Decl. of

6 Jennifer Trusso Salinas (“Salinas Decl.”) ¶ 11.

At the

7 end of the call, Ms. Salinas indicated that she would
8 review the issues Mr. Kelber had raised and discuss
9 them with her client.
10

Kelber Decl. ¶ 6.

Then, on July 27, 2017, Ms. Salinas emailed Mr.

11 Kelber stating, “Sugarfina will not be amending its
12 complaint.”

Id. ¶ 7, Ex. 1.

The following day, July

13 28, 2017, Defendants filed their Motion to Dismiss
14 [18].

Plaintiff filed its Opposition on August 8, 2017

15 [21].

Defendants filed their Reply on August 15, 2017

16 [23].
17

II. DISCUSSION

18 A.

Legal Standard

19

Federal Rule of Civil Procedure 12(b)(6) allows a

20 party to move for dismissal of one or more claims if
21 the pleading fails to state a claim upon which relief
22 can be granted.

To survive a motion to dismiss on

23 12(b)(6) grounds, a complaint must “contain sufficient
24 factual matter, accepted as true, to state a claim to
25 relief that is plausible on its face.”

Ashcroft v.

26 Iqbal, 556 U.S. 662, 678 (2009)(internal quotation
27 marks omitted).

Dismissal can be based on a “lack of a

28 cognizable legal theory or the absence of sufficient
5

1 facts alleged under a cognizable legal theory.”
2 Balistreri v. Pacifica Police Dep’t, 901 F.2d 696, 699
3 (9th Cir. 1990).
4

In ruling on a 12(b)(6) motion, a court may

5 generally consider only allegations contained in the
6 pleadings, exhibits attached to the complaint, and
7 matters properly subject to judicial notice.

Swartz v.

8 KPMG LLP, 476 F.3d 756, 763 (9th Cir. 2007).

A court

9 must presume all factual allegations of the complaint
10 to be true and draw all reasonable inferences in favor
11 of the non-moving party.

Klarfeld v. United States,

12 944 F.2d 583, 585 (9th Cir. 1991).
13

The question presented by a motion to dismiss is

14 not whether the plaintiff will ultimately prevail, but
15 whether the plaintiff has alleged sufficient factual
16 grounds to support a plausible claim to relief, thereby
17 entitling the plaintiff to offer evidence in support of
18 its claim.

Iqbal, 556 U.S. at 678; Swierkiewicz v.

19 Sorema N.A., 534 U.S. 506, 511 (2002).

While a

20 complaint need not contain detailed factual
21 allegations, a plaintiff must provide more than “labels
22 and conclusions” or “a formulaic recitation of a cause
23 of action’s elements.”

Bell Atl. Corp. v. Twombly, 550

24 U.S. 544, 555 (2007)(internal citation omitted).
25 However, a complaint “should not be dismissed under
26 Rule 12(b)(6) ‘unless it appears beyond doubt that the
27 plaintiff can prove no set of facts in support of his
28 claim which would entitle him to relief.’”
6

Balistreri,

1 901 F.2d at 699 (citing Conley v. Gibson, 355 U.S. 41,
2 45-46 (1957)).
3 B.

Discussion

4

1.

5

In its Opposition, Plaintiff makes two arguments

Plaintiff’s Procedural Arguments

6 that Defendants’ Motion is procedurally deficient and
7 thus should be denied.

First, Plaintiff argues that

8 Defendants failed to properly meet and confer with
9 Plaintiff’s counsel before filing their Motion, in
10 violation of Local Rule 7-3.
11 18:22-27, ECF No. 21.

Pl.’s Opp’n (“Opp’n”)

According to Local Rule 7-3,

12 “counsel contemplating the filing of any motion shall
13 first contact opposing counsel to discuss thoroughly,
14 preferably in person, the substance of the contemplated
15 motion and any potential resolution.

The conference

16 shall take place at least seven (7) days prior to the
17 filing of the motion.”
18

C.D. Cal. R. 7-3.

Courts have chosen to summarily deny a party’s

19 motion for failure to comply with Local Rule 7-3.

See,

20 e.g., Thomas v. Brett Sports & Entm’t, Inc., No. CV 1621 00480-AB (DTBx), 2016 U.S. Dist. LEXIS 112280, at *4
22 (C.D. Cal. Aug. 23, 2016)(denying motion to strike
23 class allegations for failure to comply with Local Rule
24 7-3); Alcatel-Lucent USA, Inc. v. Dugdale Commc’ns,
25 Inc., No. CV 09-2140 PSG (JCx), 2009 U.S. Dist. LEXIS
26 100499, at *10 (C.D. Cal. Oct. 13, 2009)(denying motion
27 to dismiss for lack of service of process for failure
28 to comply with Local Rule 7-3).
7

However, typically, in

1 cases where the court denied the party’s motion for
2 failure to comply with Local Rule 7-3, the moving party
3 contacted the non-moving party on the same day the
4 moving party filed the motion.

Alcatel-Lucent USA,

5 Inc., 2009 U.S. Dist. LEXIS 100499, at *10;

Lopez v.

6 Wells Fargo Bank, N.A., No. SACV 16-1409 AG (KESx),
7 2016 U.S. Dist. LEXIS 144380, at *6 (C.D. Cal. Oct. 17,
8 2016).
9

Here, while Defense counsel did not comply with

10 Local Rule 7-3's requirement to meet and confer seven
11 days prior to the filing of the Motion, the parties
12 still had an opportunity to discuss the potential
13 motion, and after their July 25, 2017 phone
14 conversation, Plaintiff’s counsel responded to Defense
15 counsel with an email on July 27, 2017 stating that
16 Plaintiff would not be amending its Complaint.
17 Kelber Decl., Ex. 1.

See

It appears that Plaintiff’s

18 counsel had adequate time to discuss with her client
19 Defense counsel’s position and intent to file a motion
20 to dismiss, and after conferring with her client,
21 determined that Plaintiff would not be amending its
22 Complaint.

Based on this, Defendants’ failure to

23 timely meet and confer prior to filing their Motion did
24 not result in prejudice to Plaintiff.

De Walshe v.

25 Togo’s Eateries, Inc., 567 F. Supp. 2d 1198, 1201 n.1
26 (C.D. Cal. 2008)(exercising discretion to evaluate
27 summary judgment motion on merits where lack of
28 compliance with Local Rule 7-3 did not prejudice
8

1 plaintiff).

Therefore, the Court exercises its

2 discretion and will evaluate the merits of Defendants’
3 Motion.
4

Plaintiff also argues that the Court should deny

5 the Motion as to Peter Behringer and Allison Behringer
6 because they are in default and their Motion is
7 untimely.

Opp’n 21:3-4.

Peter Behringer and Allison

8 Behringer’s deadline to file a response to Plaintiff’s
9 Complaint was July 14, 2017.

While the parties filed a

10 stipulation extending time to file a response to
11 Plaintiff’s Complaint, the stipulation only named Sweet
12 Pete’s and ML Sweets.
13 Answer.

See Stip. to Extend Time to

Peter Behringer and Allison Behringer filed

14 this Motion, their response to Plaintiff’s Complaint,
15 on July 28, 2017, two weeks after their July 14, 2017
16 deadline.
17

To date, Plaintiff has not requested an entry of

18 default against Peter Behringer and Allison Behringer.
19 At this point, such a request would not be warranted
20 because “the court cannot enter default once the
21 defendant has filed her responsive pleading.”

Aguilera

22 v. Bigham, No. 2:15-cv-1781-KJM-EFB PS, 2016 U.S. Dist.
23 LEXIS 116724, at *2 (E.D. Cal. Aug. 30, 2016).
24 Further, Peter Behringer and Allison Behringer filed
25 the instant Motion just two weeks after their deadline
26 to answer the Complaint.

Given the brevity of the

27 delay and the fact that Plaintiff has not shown how
28 this two-week delay prejudiced it in any way, there are
9

1 no “exceptional circumstances that would justify entry
2 of a default judgment.”

Mitchell v. Brown & Williamson

3 Tobacco Corp., 294 F.3d 1309, 1317 (11th Cir.
4 2002)(internal quotations omitted); see Twitter, Inc.
5 v. Skootle Corp., No. C 12-1721 SI, 2012 U.S. Dist.
6 LEXIS 87029, at *2 n.2 (N.D. Cal. June 22,
7 2012)(deciding to address the merits of the motion to
8 dismiss despite a delay in filing because “the
9 plaintiff has not been prejudiced”).

As such, the

10 Court addresses the Motion on its merits despite Peter
11 Behringer and Allison Behringer’s delay in its filing.
12

2.

13

“[T]rade dress involves the total image of a

Trade Dress Infringement

14 product and ‘may include features such as size, shape,
15 color, color combinations, texture, or graphics.’”
16 Vision Sports, Inc. v. Melville Corp., 888 F.2d 609,
17 613 (9th Cir. 1989)(quoting Rachel v. Banana Republic,
18 Inc., 831 F.2d 1503, 1506 (9th Cir. 1987)).

“To state

19 a claim for trade dress infringement, a plaintiff must
20 allege that the asserted trade dress:

‘(1) is

21 nonfunctional; (2) is either inherently distinctive or
22 has acquired a secondary meaning; and (3) [defendant’s
23 product] is likely to be confused with [plaintiff’s]
24 products by members of the consuming public.’”

Deckers

25 Outdoor Corp. v. Fortune Dynamic, Inc., No. CV 15-769
26 PSG (SSx), 2015 U.S. Dist. LEXIS 188274, at *7 (C.D.
27 Cal. May 8, 2015)(quoting Int’l Jensen, Inc. v.
28 Metrosound U.S.A., Inc., 4 F.3d 819, 823 (9th Cir.
10

1 1993)).
2

As a threshold matter, “[a] plaintiff should

3 clearly articulate its claimed trade dress to give a
4 defendant sufficient notice.”

Sleep Sci. Partners v.

5 Lieberman, No. 09-4200 CW, 2010 U.S. Dist. LEXIS 45385,
6 at *3 (N.D. Cal. May 10, 2010)(citing Walker & Zanger,
7 Inc. v. Paragon Indus., Inc., 549 F. Supp. 2d 1168,
8 1174 (N.D. Cal. 2007)).

Plaintiff first alleges that

9 its packaging has “a total image and overall appearance
10 that is unique, including features such as size, shape,
11 color or color combinations, texture, graphics, and
12 sales techniques.”

Compl. ¶ 43.

Plaintiff then

13 alleges a list of elements that its trade dress may
14 include.
15

Id. ¶ 45.

Defendants argue that the list included in

16 Paragraph 45 of the Complaint “fails to set forth a
17 bounded list of elements.”

Mot. 4:24-26, ECF No. 18.

18 Courts in this circuit have determined that “a
19 plaintiff [must] allege[] a complete recitation of the
20 concrete elements of its alleged trade dress” to
21 proceed with its trade dress claim.

Lepton Labs, LLC

22 v. Walker, 55 F. Supp. 3d 1230, 1240 (C.D. Cal. 2014).
23 Employing language in the Complaint that the components
24 of the trade dress listed “are only some among many []
25 raises a question of whether [Plaintiff] intends to
26 redefine its trade dress at a future stage of
27 litigation.”

Sleep Sci. Partners, 2010 U.S. Dist.

28 LEXIS 45385, at *9.
11

1

While “it is [] difficult to require the plaintiff

2 to essentially prove—as opposed to simply allege—that
3 its trade dress satisfies all of the essential elements
4 at the pleading stage,” if Plaintiff does not actually
5 provide a complete list of the elements that make up
6 its trade dress, Defendants do not have sufficient
7 notice of Plaintiff’s trade dress claim.

Lepton Labs,

8 LLC, 55 F. Supp. 3d at 1240; see also Mike Vaughn
9 Custom Sports, Inc. v. Piku, 15 F. Supp. 3d 735, 746
10 (E.D. Mich. 2014)(granting motion to dismiss on trade
11 dress claim where plaintiff failed to plead with
12 specificity its alleged trade dress thus failing to
13 provide defendant with notice of such trade dress).
14

Because Plaintiff has failed to provide a complete

15 list of specific elements of its alleged trade dress,
16 the Court GRANTS Defendants’ Motion as to Plaintiff’s
17 trade dress infringement claim.
18

3.

19

To prevail on a claim of trademark infringement

Trademark Infringement Under the Lanham Act

20 under the Lanham Act, 15 U.S.C. § 1114, a party “must
21 prove: (1) that it has a protectible ownership interest
22 in the mark; and (2) that the defendant’s use of the
23 mark is likely to cause consumer confusion.”

Network

24 Automation, Inc. v. Advanced Sys. Concepts, 638 F.3d
25 1137, 1144 (9th Cir. 2011)(quoting Dep’t of Parks &
26 Recreation v. Bazaar Del Mundo Inc., 448 F.3d 1118,
27 1124 (9th Cir. 2006)).

Plaintiff alleges infringement

28 under the Lanham Act of three registered marks, CUBA
12

1 LIBRE, PEACH BELLINI, and CANDY BENTO BOX.
2 ¶¶ 30, 32, 36.

Compl.

Defendants do not challenge the

3 allegations Plaintiff makes regarding its PEACH BELLINI
4 mark.3

Mot. 7:20-21.

Defendants instead argue that

5 because Plaintiff’s CUBA LIBRE and CANDY BENTO BOX
6 marks are registered on the Patent and Trademark
7 Office’s (“PTO”) Supplemental Register, which does not
8 entitle the marks to a presumption of validity,
9 Plaintiff must allege facts to show that the marks have
10 gained secondary meaning, which Plaintiff has failed to
11 do.

Id. at 8:4-9:2; see Spirit Clothing Co. v. N.S.

12 Enters., No. CV 13-2203-RGK (PJWx), 2013 U.S. Dist.
13 LEXIS 198435, at *5 (C.D. Cal. July 23, 2013)(“[W]hen a
14 mark is registered on the Supplemental Register . . .
15 [,] the presumption of validity does not apply.”).
16

A trademark acquires secondary meaning when the

17 purchasing public associates the mark with a single
18 producer or source rather than with the product itself.
19 Int’l Jensen, Inc., 4 F.3d at 824.

Merely pleading

20 that the plaintiff has used the mark and defendants
21 have misappropriated the mark is sufficient to
22 adequately plead that the mark has acquired a secondary
23 meaning.

See Spirit Clothing Co., 2013 U.S. Dist.

24
25
26
27
28

3

Plaintiff has registered the PEACH BELLINI mark on the
Patent and Trademark Office’s Principal Register, and therefore,
the mark receives a presumption of validity. Brookfield
Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1047 (9th
Cir. 1999)(“[R]egistration of the mark on the Principal Register
in the Patent and Trademark Office constitutes prima facie
evidence of the validity of the registered mark.”).
13

1 LEXIS 198435, at *7; Mid-West Mgmt. v. Capstar Radio
2 Operating Co., No. 04-C-720-C, 2005 U.S. Dist. LEXIS
3 3368, at *13 (W.D. Wis. Mar. 1, 2005)(finding secondary
4 meaning adequately pled when plaintiff alleged that it
5 began using the mark and continued to use the mark in
6 broadcasts and advertising).
7

In its Complaint, Plaintiff alleges that it began

8 using the CUBA LIBRE mark in 2012 and the CANDY BENTO
9 BOX mark in 2013.

Compl. ¶¶ 30, 36.

Plaintiff then

10 alleges that Sweet Pete’s has used these marks in their
11 entirety “to profit from the customer’s association of
12 the marks with Sugarfina.”

Id. ¶ 29.

Finally,

13 Plaintiff includes a chart with photos comparing
14 Plaintiff’s use of the marks with Sweet Pete’s use of
15 the marks.
16

Id. ¶ 59.

The allegations demonstrate Plaintiff’s consistent

17 use of the marks for a number of years, note that
18 customers associate the marks with Plaintiff, and
19 establish intentional copying—allegations that all
20 suggest the marks have attained a secondary meaning.
21 See Humantech, Inc. v. Caterpillar, Inc., No. 11-14988,
22 2012 U.S. Dist. LEXIS 127499, at *24 (E.D. Mich. Sep.
23 7, 2012)(“Although these summary allegations provide
24 minimal detail concerning the mark’s secondary meaning,
25 they are sufficient to put Defendant on notice that
26 [Plaintiff’s mark] is associated with Plaintiff’s
27 services in the eyes of the public.”).

The Court

28 therefore DENIES Defendants’ Motion to Dismiss
14

1 Plaintiff’s trademark infringement claim under the
2 Lanham Act.
3

4.

Common Law Trademark Infringement

4

Plaintiff also alleges common law trademark

5 infringement.

“[F]ederal and state laws regarding

6 trademarks and related claims of unfair competition are
7 substantially congruent.”

Int’l Order of Job’s

8 Daughters v. Lindeburg & Co., 633 F.2d 912, 916 (9th
9 Cir. 1980).

“[C]laims for trademark infringement and

10 unfair competition under California law are ‘subject to
11 the same legal standards’ as Lanham Act claims.”
12 Rearden LLC v. Rearden Commerce, Inc., 683 F.3d 1190,
13 1221 (9th Cir. 2012).
14

When evaluating common law trademark infringement

15 claims, “courts must determine whether the mark is
16 protectable, and if so, whether there is a likelihood
17 of confusion as a result of the would-be infringer’s
18 use of the mark.”

Tumblebus Inc. v. Cranmer, 399 F.3d

19 754, 761 (6th Cir. 2005).

Defendants argue that

20 Plaintiff has failed to adequately plead its marks are
21 protectable because Plaintiff has not alleged secondary
22 meaning and its marks are generic.
23 ineligible for trademark protection.

Generic marks are
Zobmondo Entm’t,

24 LLC v. Falls Media, LLC, 602 F.3d 1108, 1113 (9th Cir.
25 2010).

However, in arguing that the marks are generic,

26 Defendants ignore the “widely-shared stance that a Rule
27 12(b)(6) motion is generally an improper vehicle for
28 establishing that a mark is generic or functional.”
15

1 Pinterest Inc. v. Pintrips Inc., 15 F. Supp. 3d 992,
2 999 (N.D. Cal. 2014).

Accordingly, Defendants’

3 arguments regarding the genericness of Plaintiff’s
4 unregistered marks are premature at this stage.
5

Further, Plaintiff has alleged that its

6 unregistered marks may be entitled to protection in
7 that they have used the marks in commerce, see Compl.
8 ¶¶ 30, 34, 36, 38, 40, and customers associate the
9 marks with Plaintiff’s products, id. ¶ 29.

See

10 BottleHood, 2012 U.S. Dist. LEXIS 57381, at *13
11 (finding that plaintiff sufficiently pled it had a
12 protectable mark by asserting that it used the mark “in
13 connection with the sale of its repurposed glassware
14 products”).

Because the validity of Plaintiff’s

15 trademarks is a question of fact, the Court will not
16 decide this issue at the pleading stage.
17 F. Supp. 3d at 999.

Pinterest, 15

Consequently, the Court DENIES

18 Defendants’ Motion to Dismiss as to Plaintiff’s common
19 law trademark infringement claim.
20

5.

21

“This Circuit has consistently held that state

Unfair Business Practices

22 common law claims of unfair competition and actions
23 pursuant to California Business and Professions Code
24 § 17200 are substantially congruent to claims made
25 under the Lanham Act.”

Cleary v. News Corp., 30 F.3d

26 1255, 1262-63 (9th Cir. 1994).

Because these claims

27 are substantially congruent, if Plaintiff has
28 sufficiently pled claims for trademark infringement, it
16

1 too has sufficiently pled a claim for unfair business
2 practices.

See Greenberg v. Johnson, No.

3 CV-14-04605-MWF (VBKx), 2015 U.S. Dist. LEXIS 187010,
4 at *13 (C.D. Cal. Jan. 13, 2015).

As explained above,

5 Plaintiff has failed to clearly articulate the elements
6 of its trade dress and thus has failed to properly
7 plead a claim for trade dress.

Accordingly, the Court

8 GRANTS Defendants’ Motion as to Plaintiff’s unfair
9 business practices claim premised on trade dress
10 infringement.

However, because the Court has

11 determined that Plaintiff has sufficiently pled claims
12 for trademark infringement under the Lanham Act and
13 common law, the Court DENIES Defendants’ Motion as to
14 Plaintiff’s unfair business practices claims premised
15 on its trademark infringement claims.
16

Plaintiff’s unfair business practices cause of

17 action also includes allegations that Defendants’
18 infringement of Plaintiff’s copyrights and patents are
19 “unlawful acts in violation of California Business &
20 Professions Code §§ 17200, et seq.”

Compl. ¶ 122.

21 However, unfair business practices claims “may be
22 preempted by federal copyright [and patent] law when
23 the state claim incorporates by reference and merely
24 restates federal patent and copyright claims.”

Milo &

25 Gabby, LLC v. Amazon.com, Inc., 12 F. Supp. 3d 1341,
26 1347 (W.D. Wash. 2014)(citing Litchfield v. Spielberg,
27 736 F.2d 1352, 1358 (9th Cir. 1984)).

Plaintiff’s

28 unfair business practices claim, which specifically
17

1 references the copyright and patent laws, “asserts no
2 new or different allegations to distinguish it from
3 [Plaintiff’s] patent or copyright infringement claims.”
4 Id.; see also Fractional Villas, Inc. v. Tahoe
5 Clubhouse, No. 08cv1396-IEG-POR, 2009 U.S. Dist. LEXIS
6 4191, at *14 (S.D. Cal. Jan. 22, 2009)(“To the extent
7 the [unfair competition] claim relies only on copyright
8 infringement as a form of unfair competition, the claim
9 is preempted by the Copyright Act.”).

Accordingly,

10 Plaintiff’s unfair business practices claim based on
11 its patent and copyright claims is preempted by federal
12 copyright and patent law.

The Court GRANTS Defendants’

13 Motion as to Plaintiff’s unfair business practices
14 claim premised on its patent and copyright claims.
15

6.

16

As Defendants correctly note, “California does not

Unjust Enrichment

17 recognize a cause of action for unjust enrichment.”
18 Mot. 11:17-18 (citing McVicar v. Goodman Glob., Inc., 1
19 F. Supp. 3d 1044, 1059 (C.D. Cal. 2014)).

In

20 addressing this argument in its Opposition, Plaintiff
21 cites to Astiana v. Hain Celestial Group, Inc., 783
22 F.3d 753, 762 (9th Cir. 2015) where the Ninth Circuit
23 overturned the district court’s dismissal of the
24 plaintiff’s unjust enrichment claim.

The court in

25 Astiana determined that a plaintiff may allege unjust
26 enrichment based on “quasi-contract.”

Id. (quoting

27 Rutherford Holdings, LLC v. Plaza Del Rey, 166 Cal.
28 Rptr. 3d 864, 872 (Ct. App. 2014)).
18

1

Here, Plaintiff has simply incorporated its

2 previous allegations into its unjust enrichment cause
3 of action and alleged that “Sweet Pete’s has been
4 unjustly enriched.”

Compl. ¶¶ 129-30.

Plaintiff has

5 failed to allege any quasi-contract between the
6 parties.

Plaintiff’s unjust enrichment allegations are

7 “inextricably intertwined” with Plaintiff’s trademark
8 claims and “do not give rise to a separate theory of
9 quasi-contract.”

Purcell v. Spokeo, Inc., No.

10 2:11-cv-06003-ODW(AGRx), 2014 U.S. Dist. LEXIS 118280,
11 at *15 (C.D. Cal. Aug. 25, 2014).

The Court therefore

12 GRANTS Defendants’ Motion as to Plaintiff’s unjust
13 enrichment claim.
14

7.

15

To sufficiently allege infringement of a design

Patent Infringement

16 patent, a plaintiff must: “(1) allege ownership of the
17 patent, (2) name each defendant, (3) cite the patent,
18 (4) state the means by which the defendant allegedly
19 infringes, and (5) point to the sections of the patent
20 law invoked.”

Deckers Outdoor Corp., 2015 U.S. Dist.

21 LEXIS 188274, at *17 (citing Hall v. Bed Bath & Beyond,
22 Inc., 705 F.3d 1357, 1362 (Fed. Cir. 2013)).
23

Defendants’ only argument regarding Plaintiff’s

24 patent infringement claim is that Plaintiff did not
25 allege the section(s) of patent law Plaintiff contends
26 Defendants violated.

Mot. 12:8-13.

However, because

27 Plaintiff alleges in Paragraphs 19 and 122 of the
28 Complaint that Defendants committed acts of patent
19

1 infringement in violation of 35 U.S.C. § 271, which
2 Defendants concede in their Reply, Reply 9:10-13, ECF
3 No. 23, the Court DENIES Defendants’ Motion as to
4 Plaintiff’s patent infringement claim.
5

8.

Copyright Infringement

6

Plaintiff alleges a cause of action for copyright

7 infringement based on its two registered copyrights,
8 the “Sugarfina Bento Box,” Compl., Ex. 6, and the
9 “Sugarfina Slider Box,” id., Ex. 7.
10

To maintain a claim for copyright infringement, a

11 plaintiff must show:

“(1) ownership of a valid

12 copyright, and (2) copying of constituent elements of
13 the work that are original.”

Feist Publ’ns, Inc. v.

14 Rural Tel. Servs. Co., 499 U.S. 340, 361 (1991).
15 Defendants do not dispute that Plaintiff has two
16 registered copyrights.

See Trade W., Inc. v. Oriental

17 Trading Co., No. CIVIL 16-00474 LEK-KSC, 2017 U.S.
18 Dist. LEXIS 47754, at *11 (D. Haw. Mar. 30, 2017)(“[A]
19 certificate of registration is prima facie evidence of
20 the validity of the copyright if registration occurred
21 ‘before or within five years after first publication of
22 the work.’” (quoting 17 U.S.C. § 410(c))).
23

The second element of a copyright infringement

24 claim, copying, may be established by demonstrating
25 (1) “that the [defendant] had access to plaintiff’s
26 copyrighted work” and (2) “that the works at issue are
27 substantially similar in their protected elements.”
28 Cavalier v. Random House, Inc., 297 F.3d 815, 822 (9th
20

1 Cir. 2002).
2 element.

Defendants do not argue the access

Instead, they argue that the two works are

3 not substantially similar.

Mot. 15:9-10.

“[A]

4 plaintiff establishes substantial similarity by
5 demonstrating that the allegedly infringing work is
6 both objectively similar (the ‘extrinsic test’) and
7 subjectively similar (the ‘intrinsic test’) to the
8 copyrighted work.”
9 47754, at *13.

Trade W., 2017 U.S. Dist. LEXIS

On a motion to dismiss, the court may

10 decide as a matter of law “[w]hether there is
11 sufficient objective similarity under the extrinsic
12 test.”
13

Erickson, 839 F. Supp. 2d at 1136.

In comparing two works to determine “objective

14 similarity in appearance,” courts can look at a number
15 of factors including “shapes, colors, materials, and
16 arrangement of the representations.”
17 F.3d at 826.

Cavalier, 297

Plaintiff asserts its copyright claim

18 based on its packaging design.

Compl. ¶ 137.

“It is

19 well established that an artistic packaging design or
20 label is entitled to copyright protection.”

Parfums

21 Givenchy, Inc. v. C&C Beauty Sales, Inc., 832 F. Supp.
22 1378, 1391 (C.D. Cal. 1993).
23

The parties’ product packaging shows that they are

24 substantially similar.

While the packages are

25 different colors, with Plaintiff’s predominantly light
26 blue and Defendants’ predominantly red, both works are
27 covered in a matte, muted primary color.

Both works

28 have a thin, white rectangular border about one-half
21

1 inch from the edge of the packaging’s cover.

The

2 company names are both placed in the middle of the
3 cover in a simplistic white font.

The remainder of the

4 cover of the packaging is minimalistic; there is
5 nothing on either party’s cover except for the thin,
6 white rectangular border and the company name.
7

While Defendants point to differences in the two

8 parties’ packaging, “‘[s]uperficial changes’ to the
9 characteristics of a copyrighted work in an accused
10 work may be considered ‘an attempt to disguise an
11 intentional appropriation.’”

Ty, Inc. v. GMA

12 Accessories, 959 F. Supp. 936, 942 (N.D. Ill.
13 1997)(quoting Atari, Inc. v. N. Am. Philips Consumer
14 Elecs. Corp., 672 F.2d 607, 619 (7th Cir. 1982)).
15

Based on the substantial objective similarities

16 between the two works, Plaintiff has stated a plausible
17 copyright infringement claim.

Trade W., 2017 U.S.

18 Dist. LEXIS 47754, at *17 (citing Iqbal, 556 U.S. at
19 678).

Therefore, the Court DENIES Defendants’ Motion

20 as to Plaintiff’s copyright infringement claim.
21

8.

22

Federal Rule of Civil Procedure 15(a) provides that

Leave to Amend

23 a party may amend their complaint once “as a matter of
24 course” before a responsive pleading is served.

After

25 that, the “party may amend the party's pleading only by
26 leave of court or by written consent of the adverse
27 party and leave shall be freely given when justice so
28 requires.”

Id.

Leave to amend lies “within the sound
22

1 discretion of the trial court.” United States v. Webb,
2 655 F.2d 977, 979 (9th Cir. 1981).

The Ninth Circuit

3 has noted “on several occasions . . . that the ‘Supreme
4 Court has instructed the lower federal courts to heed
5 carefully the command of Rule 15(a), F[ed]. R. Civ. P.,
6 by freely granting leave to amend when justice so
7 requires.’”

Gabrielson v. Montgomery Ward & Co., 785

8 F.2d 762, 765 (9th Cir. 1986)(quoting Howey v. United
9 States, 481 F.2d 1187, 1190 (9th Cir. 1973)).
10

The Court GRANTS Defendants’ Motion as to

11 Plaintiff’s trade dress claim; unfair business
12 practices claim premised on the trade dress, copyright,
13 and patent claims; and the unjust enrichment claim.
14 Plaintiff has yet to file an amended complaint.

It is

15 likely that Plaintiff will be able to cure the
16 deficiencies in the trade dress claim (and then in turn
17 the unfair business practices claim premised on the
18 trade dress claim) upon amendment.

Therefore, the

19 Court GRANTS leave to amend these claims.

However, as

20 noted, federal copyright and patent law preempts
21 Plaintiff’s unfair business practices claim based on
22 its copyright and patent infringement claims.
23 Therefore, amendment of that claim would be futile.

As

24 such, the Court DENIES leave to amend Plaintiff’s
25 unfair business practices claim based on its copyright
26 and patent infringement claims.
27

Finally, to proceed on its unjust enrichment

28 claim, Plaintiff would have to allege a quasi23

1 contractual relationship between itself and Defendants.
2 See Astiana, 783 F.3d at 762.

However, Plaintiff has

3 “no affiliation or connection [with Defendants] to
4 invoke a quasi-contract theory of liability.”

Purcell,

5 2014 U.S. Dist. LEXIS 118280, at *15 (granting motion
6 to dismiss unjust enrichment claim without leave to
7 amend because the plaintiff could not plead a quasi8 contractual relationship).

Because there is no quasi-

9 contractual relationship between the parties that
10 Plaintiff could plead in an amended complaint, allowing
11 leave to amend would be futile.

The Court therefore

12 DENIES leave to amend Plaintiff’s unjust enrichment
13 claim.
14

III. CONCLUSION

15

Based on the foregoing, the Court GRANTS in part

16 and DENIES in part Defendants’ Motion [18] as follows:
17

The Court GRANTS Defendants’ Motion as to

18 Plaintiff’s trade dress claim and gives Plaintiff
19 twenty-one days to amend.
20

The Court DENIES Defendants’ Motion as to

21 Plaintiff’s trademark infringement claim under the
22 Lanham Act.
23

The Court DENIES Defendants’ Motion as to

24 Plaintiff’s common law trademark infringement claim.
25

The Court DENIES Defendants’ Motion as to

26 Plaintiff’s unfair business practices claim premised on
27 Plaintiff’s trademark claims.
28

The Court GRANTS Defendants’ Motion as to
24

1 Plaintiff’s unfair business practices claim premised on
2 Plaintiff’s trade dress claim and gives Plaintiff
3 twenty-one days to amend.
4

The Court GRANTS Defendants’ Motion as to

5 Plaintiff’s unfair business practices claim premised on
6 Plaintiff’s copyright and patent claims without leave
7 to amend.
8

The Court GRANTS Defendants’ Motion as to

9 Plaintiff’s unjust enrichment claim without leave to
10 amend.
11

The Court DENIES Defendants’ Motion as to

12 Plaintiff’s patent infringement claim.
13

The Court DENIES Defendants’ Motion as to

14 Plaintiff’s copyright infringement claim.
15
16 IT IS SO ORDERED.
17
18 DATED: September 25, 2017
19

s/ RONALD S.W. LEW
HONORABLE RONALD S.W. LEW
Senior U.S. District Judge

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