Be In, Inc. v. Google Inc. et al

Filing 15

MOTION to Dismiss Plaintiff's Third and Fourth Causes of Action CORRECTION OF DOCKET # 14 filed by Google Inc., Richard Robinson. Motion Hearing set for 1/3/2013 01:13 PM in Courtroom 8, 4th Floor, San Jose before Hon. Lucy H. Koh. Responses due by 9/18/2012. Replies due by 9/25/2012. (Attachments: # 1 Declaration, # 2 Proposed Order)(Bal, Colleen) (Filed on 9/4/2012)

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COLLEEN BAL, State Bar No. 167637
CHARLES TAIT GRAVES, State Bar No. 197923
WILSON SONSINI GOODRICH & ROSATI
Professional Corporation
One Market Plaza
Spear Tower, Suite 3300
San Francisco, California 94105-1126
Phone [phone]
Fax [phone]
[e-mail]
Attorneys for Defendants
Google Inc. and Richard Robinson

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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BE IN, INC., a New York Corporation,

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Plaintiff,
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v.
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GOOGLE INC., a California corporation;
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RICHARD ROBINSON, an individual, and Does )
1 through 3 inclusive,
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Defendants.
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Case No.: 5:12-cv-03373-LHK
[PROPOSED] ORDER RE MOTION
TO DISMISS

Hearing Date: January 3, 2013
Hearing Time: 1:30 p.m.
Courtroom: 8, 4th Floor
Judge: Hon. Lucy H. Koh

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[PROPOSED] ORDER RE
MOTION TO DISMISS
CASE NO.: 5:12-CV-03373-LHK

5122242_1.DOCX

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ORDER ON MOTION
On September 4, 2012, Defendant Google Inc. moved to dismiss Plaintiff’s causes of
action for trade dress infringement and copyright infringement, for failure to state a claim upon
which relief can be granted.
Based on its review of the parties’ submissions and after a hearing on the motion, the
Court hereby orders as follows. Google’s motion to dismiss is GRANTED.
1. Plaintiff has failed to allege a viable claim for trade dress infringement.
a. Plaintiff’s has failed to adequately identify its claimed trade dress, including
all of the components of the website that comprise its claimed trade dress and
how those components combine to form protectable trade dress.
b. Plaintiff has failed to allege facts to support the required element of likelihood
of confusion.
c. Plaintiff has failed to allege facts to support the required element of secondary
meaning. Because Plaintiff has not articulated any facts in briefing or at oral
argument demonstrating that it could adequately allege secondary meaning,
amendment of the claim would be futile. Accordingly, the trade dress claim is
dismissed WITH PREJUDICE.
2. Plaintiff has failed to seek a copyright registration for the work that is the subject of
its copyright infringement claim, as required under 17 U.S.C. §411.

Plaintiff’s

copyright infringement claim is therefore dismissed WITHOUT PREJUDICE to
Plaintiff refilling the copyright infringement claim once it has met the registration
requirement. In any refiled copyright infringement claim, Plaintiff must specifically
identify the subject of the copyright infringement claim, including the aspects of the
copyrighted work that it alleges Google infringes and the aspects of Google’s product
that it alleges infringe the copyrighted work.

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[PROPOSED] ORDER RE
MOTION TO DISMISS
CASE NO.: 5:12-CV-03373-LHK

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5122242_1.DOCX

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IT IS SO ORDERED.

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DATED:

, 2013.

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THE HONORABLE LUCY H. KOH
United States District Court Judge

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[PROPOSED] ORDER RE
MOTION TO DISMISS
CASE NO.: 5:12-CV-03373-LHK

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5122242_1.DOCX