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

Filing 25

REPLY (re 15 MOTION to Dismiss Plaintiff's Third and Fourth Causes of Action CORRECTION OF DOCKET # 14 ) Reply Memorandum of Points and Authorities in Support of Google's Motion to Dismiss Plaintiff's Third and Fourth Causes of Action filed byGoogle Inc., Richard Robinson. (Graves, Charles) (Filed on 10/2/2012)

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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
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
[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.
GOOGLE, INC., a California corporation,
RICHARD ROBINSON, an individual, and
DOES 1 through 3, inclusive,
Defendants.

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GOOGLE’S REPLY MEMORANDUM OF POINTS AND
AUTHORITIES ISO OF GOOGLE’S MOTION TO DISMISS
Case No: 5:12-CV-03373-LHK

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CASE NO.: 5:12-CV-03373 LHK
REPLY MEMORANDUM OF
POINTS AND AUTHORITIES IN
SUPPORT OF GOOGLE’S MOTION
TO DISMISS PLAINTIFF’S THIRD
AND FOURTH CAUSES OF
ACTION
Hearing Date: January 3, 2013
Hearing Time: 1:30 pm
Courtroom: 8
Judge: Hon. Lucy H. Koh

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TABLE OF CONTENTS

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Page

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INTRODUCTION...........................................................................................................................1

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ARGUMENT ..................................................................................................................................2

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I.

THE TRADE DRESS CLAIM IS NOT PLEADED WITH THE REQUIRED
SPECIFICITY .....................................................................................................................2

II.

PLAINTIFF’S TRADE DRESS CLAIM SHOULD BE DISMISSED FOR
FAILURE TO ALLEGE SECONDARY MEANING........................................................3

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A.

Plaintiff Is Unquestionably Required to Allege Secondary Meaning. ....................5

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B.

Plaintiff’s Failure to Allege Secondary Meaning Is Properly Decided On
This Motion to Dismiss ...........................................................................................6

C.

Plaintiff Has Not Alleged Secondary Meaning.......................................................7

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Amendment of the Trade Dress Claim Would be Futile.......................................10

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III.

PLAINTIFF HAS FAILED TO PLEAD LIKELIHOOD OF CONFUSION ...................11

IV.

THE COPYRIGHT CLAIM SHOULD BE DISMISSED ................................................13
A.

Having Received Corrected Information from the Copyright Office, Google
Withdraws its Argument that Plaintiff Failed to Register the Work At Issue.......13

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Plaintiff Does Not Allege the Copyright Claim with the Required
Specificity..............................................................................................................13

CONCLUSION .............................................................................................................................15

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TABLE OF AUTHORITIES
Page

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CASES

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Alphaville Design, Inc. v. Knoll, Inc., 627 F. Supp. 2d 1121 (N.D. Cal. 2009).............................. 8

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Ashcroft v. Iqbal, 556 U.S. 662 (2009) ................................................................................. 6, 8, 11

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Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) ..................................................................... 6, 11

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Bottlehood, Inc. v. Bottle Mill,
No. 11-cv-2910-MMA (MDD), 2012 WL 1416272 (S.D. Cal Apr. 23, 2012) .................. 5

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Calyx Tech., Inc. v. Ellie Mae, Inc.,
No. C 04-01640 SI, 2004 WL 207446 (N.D. Cal. Sept. 3, 2004) ....................................... 9

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DeSoto v. Yellow Freight Sys. Inc., 957 F.2d 655 (9th Cir. 1992)................................................ 10

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Docmagic, Inc. v. Ellie Mae, Inc., 745 F. Supp. 2d 1119 (N.D. Cal. 2010) ................................... 5

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Facebook, Inc. v. Power Ventures, Inc.,
No. C 08-5780 JF (RS), 2009 WL 1299698 (N.D. Cal. May 11, 2009) ........................... 13

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First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378 (9th Cir. 1987) ........................................ 7
Fuddruckers, Inc. v. Doc’s B.R. Others, Inc., 826 F.2d 837 (9th Cir. 1987) .................................. 8
ID7D Co., Ltd. v. Sears Holding Corp.,
No. 3:11cv1054(VLB), 2012 WL 1247329 (D. Conn. Apr. 13, 2012)............................. 11
L.A. Gear, Inc. v. Thom McAn Shoe Company, 12 U.S.P.Q. 2d 1001 (S.D.N.Y.
1989), aff’d in part, rev’d in part, 988 F.2d 1117 (Fed. Cir. 1993) ................................ 4, 9
Salt Optics, Inc. v. JAND, Inc.,
No. SACV 10-0828 DOC, 2010 WL 496702 (C.D. Cal. Nov. 19, 2010)......... 2, 12, 13, 14
Salt Optics, Inc. v. JAND, Inc.,
No. SACV 10-828 DOC (RNBx), (C.D. Cal Mar. 4, 2011) ............................................. 13
Sleep Science Partners v. Lieberman,
No. 09-04200 CW, 2010 WL 1881770 (N.D. Cal. May 10, 2010)............................. 12, 14
Smith & Hawken, Ltd. v. Gardendance, Inc.,
No. C04-1664 SBA, 2004 WL 2496163 (N.D. Cal. Nov. 5, 2004) .................................... 5
Solid Host, NL v. Namecheap, Inc., 652 F. Supp. 2d 1092 (C.D. Cal. 2009) ................................. 5

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Treat, Inc. v. Dessert Beauty,
No. 05-923-PK, 2006 WL 2812770 (D. Or. May 5, 2006) ................................................. 5

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Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000) ................................... 3, 5, 7

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Walker & Zanger, Inc. v. Paragon Indus., Inc.,
549 F. Supp. 2d 1168 (N.D. Cal 2007) ........................................................................................... 9

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RULES

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Fed. R. Civ. P 12(b)(6) .................................................................................................................... 6

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INTRODUCTION
Google’s opening brief demonstrated Plaintiff’s failure to plead facts necessary under

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Rule 8 to plausibly support the elements of its trade dress and copyright claims. Plaintiff’s

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arguments in opposition ignore binding authority and cannot make up for the glaring deficiencies

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of these claims.

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With respect to its trade dress claim, Plaintiff has not pleaded facts to support either (1)

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that the claimed trade dress acquired secondary meaning, such that the consuming public learned

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to associate, by June 2011, the appearance of Plaintiff’s video chat website with Be In, Inc.,

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rather than merely the product itself, or (2) that because consumers so strongly associate the

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trade dress with Plaintiff, they are likely to be confused into believing that Google’s video chat

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Hangouts feature was created by, sponsored by, or is otherwise connected to Plaintiff.

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Plaintiff’s contradictory arguments highlight why its trade dress claim is far below the

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minimum necessary to state a claim. The impetus of Plaintiff’s lawsuit (including its claims for

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trade secret misappropriation and conspiracy which are not at issue in this motion) is that Google

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supposedly stole a secret business idea from Plaintiff and as a result severely undermined

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Plaintiff’s video chat business in its infancy, entitling Plaintiff to damages for a business that

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never got off the ground. In stark contrast, Plaintiff’s trade dress claim is premised on the theory

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that the appearance of Plaintiff’s video chat website is unique and was so well known among

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consumers within three months of its launch that Google deliberately sought to mimic the trade

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dress to free ride on Plaintiff’s established consumer recognition and goodwill.

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To establish secondary meaning in such a short timeframe, and thereby obtain a

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protectable interest in its claimed trade dress, Plaintiff would have had to inundate the

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consuming public with a marketing blitz that was so effective it caused a substantial segment of

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consumers to associate the features of the claimed trade dress with Plaintiff in just three months,

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just like a recognized brand name or logo. Plaintiff does not allege facts that come anywhere

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close to meeting this standard. And indeed, because Plaintiff effectively concedes that it could

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never plead sufficient facts, its trade dress claim should be dismissed without leave to amend.

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Plaintiff’s copyright claim is also defective. Plaintiff has not specified which aspects of

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the appearance of its website it alleges are original, copied by Google, and thus within the scope

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of its copyright claim. To the contrary, Plaintiff has alleged that nearly every aspect of the

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appearance of its website is its proprietary trade dress, leaving no room for a copyright claim.

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Plaintiff’s failure to plead facts to distinguish between the two claims requires dismissal of both

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claims.

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ARGUMENT
I.

THE TRADE DRESS CLAIM IS NOT PLEADED WITH THE REQUIRED
SPECIFICITY
As Google explained in its opening brief, Plaintiff enumerates only five elements of its

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alleged trade dress in Paragraph 53 of the Amended Complaint, but does not indicate if the list is

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exhaustive. Google’s Motion to Dismiss (“Mtd.”) at 7-8. The rest of the Amended Complaint

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only serves to blur the issue, as Plaintiff elsewhere generically asserts rights to the “overall look

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and feel” of its website. Be In’s Amended Complaint (“Am. Complt.”), ¶38. Website “look and

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feel” cases are viewed “with particular caution,” since they “fall far short of the exactitude that is

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required” under Rule 8 and are notoriously “difficult to pin down.” Mtd. at 7. In addition to this

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failure to specify whether the claimed trade dress is limited to the five enumerated elements, the

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Amended Complaint does not explain how the claimed elements “combine to create the

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website’s protectible ‘look and feel.’” Salt Optics, Inc. v. JAND, Inc., 2010 WL 496702, at *5

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(C.D. Cal. Nov. 19, 2010); Mtd. at 7-8. Plaintiff’s trade dress claim is therefore insufficiently

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pleaded and should be dismissed.

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In its opposition, Plaintiff seeks to remedy the deficiencies of its allegations by

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acknowledging that the five elements, and not others, comprise the entirety of its claimed trade

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dress. See Be In’s Opposition to Motion to Dismiss (“Opp.”) at 2 (“Be In’s trade dress

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allegations identify five specific elements, all of which interact to create a particular visual

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impression.”); 8 (“Be In does not leave open the possibility that unspecified aspects of the

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CamUp platform comprise the trade dress.”). It also seems to limit its claim to the specific

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combination of these elements depicted in the screen shot of a page from its CamUp website

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included in its Amended Complaint. Opp. at 9; Am. Complt., ¶38.

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Plaintiff’s identification of its claimed trade dress would be sufficient if Plaintiff were

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held to those limitations. See Mtd. at 7-9. Accordingly, if Plaintiff’s trade dress claim survives,

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Google respectfully requests an order limiting the claimed trade dress (1) to the five elements

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enumerated in Paragraph 53 of the Amended Complaint, and (2) as depicted in the image shown

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in Paragraph 38 of the Amended Complaint.

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II.

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PLAINTIFF’S TRADE DRESS CLAIM SHOULD BE DISMISSED FOR
FAILURE TO ALLEGE SECONDARY MEANING
Plaintiff does not come close to pleading facts sufficient to support the acquisition of

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secondary meaning, i.e., that a substantial segment of customers and potential customers learned

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to associate (1) a white and gray color palette, (2) placement of a logo at the top left corner of a

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computer screen, (3) a large window containing media, (4) with several windows below it, and

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(5) chat and playlist features to the side of it, with Plaintiff Be In, Inc. by June 2011. Mtd. at 11;

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see also Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 211 (2000) (observing

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that secondary meaning occurs when “in the minds of the public, the primary significance of

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[trade dress] is to identify the source of the product rather than the product itself.”).

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First, from the facts pleaded in its Amended Complaint, it is not even clear that Plaintiff

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had an ongoing business operation that could have engaged in marketing and promotional

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efforts, as opposed to merely launching an unsuccessful website. Second, Plaintiff does not

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allege a single user, much less any actual adoption by a substantial number of repeat users.

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Third, Plaintiff does not allege that it spent even a penny on advertising. Fourth, Plaintiff does

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not allege that it has any business partnerships, that anyone pays to advertise on its CamUp

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website, or that it has received any coverage in major media (newspapers, reputable websites, or

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other established media). Fifth, Plaintiff fails to allege facts that it has any market presence

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whatsoever. See Mtd. at 11-17. In short, Plaintiff has pleaded no facts to suggest anything other

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than that it is a failed startup that received virtually no notice from consumers.

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Google is unaware of any trade dress case where a plaintiff was permitted to proceed

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with a trade dress claim in such straitened circumstances. As reflected in the numerous cases

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cited by Google from the Ninth Circuit and around the country, even millions of dollars’ worth

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of advertising and long and exclusive use by market leaders are often insufficient to cause a

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substantial segment of consumers to associate the relevant product features with their source. Id.

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at 14. Moreover, it would be impossible to acquire secondary meaning in just a few months

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without a massive marketing and promotion effort and substantial market penetration, since – by

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definition – the consuming public cannot form any association about a product’s trade dress

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when it is unaware of the product. Indeed, it is only in rare and exceptional circumstances –

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such as those found in the L.A. Gear v. Thom Mc An case, where the company with the fourth

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largest market share in athletic shoes spent millions on a promotional campaign designed to

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inundate the American public with images of its shoe design and resulting in the sale of over four

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million pairs of the shoes – is secondary meaning ever established in less than one year. See

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Mtd. at 13 n.2. Any comparison between L.A. Gear and Plaintiff’s allegations is finished before

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it has even started.

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Plaintiff does not address, much less distinguish, these controlling cases. It does not

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dispute that, to be protectable, its claimed trade dress would have had to acquire secondary

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meaning within the three short months between Plaintiff’s release of CamUp in March 2011 and

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Google’s release of the Hangout’s feature in June 2011. Nor does it dispute the definition of

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secondary meaning, or that establishing the required consumer association between the CamUp

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product design and itself within three months would be virtually unprecedented and would

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require an L.A. Gear-type media blitz. In fact, Plaintiff has come up with no case in which

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secondary meaning was ever established in such an abbreviated period with anything less than

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such a blitz.

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Instead, Plaintiff argues (1) that it need not allege secondary meaning at all, (2) that a

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determination of its failure to allege secondary meaning would improperly require fact-finding

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on a motion to dismiss, and (3) that its conclusory allegations are sufficient to allege secondary

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meaning. Plaintiff’s positions are untenable.
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A.

Plaintiff Is Unquestionably Required to Allege Secondary Meaning.

Recognizing the poverty of its secondary meaning allegations, Plaintiff first argues that it
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need not allege secondary meaning at all. That argument borders on the frivolous. As the
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Supreme Court established in Wal-Mart Stores, 529 U.S. at 212-214, a plaintiff asserting trade
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dress in product design can only demonstrate distinctiveness (and therefore, protectability) by
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establishing secondary meaning. See Mtd. at 10. A product design is never inherently
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distinctive. Wal-Mart Stores, 529 U.S at 213. Plaintiff does not dispute that it alleges a product
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design as the subject matter of its claim.
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Following Wal-Mart Stores, to meet the “distinctiveness” element of a trade dress claim,
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it is black letter law that a plaintiff asserting trade dress in product design must allege the
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acquisition of secondary meaning. See, e.g., Docmagic, Inc. v. Ellie Mae, Inc., 745 F. Supp. 2d
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1119, 1140 n.7 (N.D. Cal. 2010) (“Because [plaintiff] is alleging trade dress in its product
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design, rather than product packaging, it is not permitted, as a matter of law, to allege that its
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trade dress is inherently distinctive; to satisfy the first element of a trade dress claim it must
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allege secondary meaning.”); Smith & Hawken, Ltd. v. Gardendance, Inc., 2004 WL 2496163, at
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*3 (N.D. Cal. Nov. 5, 2004) (dismissing trade dress claim); Treat, Inc. v. Dessert Beauty, 2006
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WL 2812770, at *15 (D. Or. May 5, 2006) (same).
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Plaintiff makes no effort to distinguish these cases because it cannot, and it offers no
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cases holding that secondary meaning in product design trade dress need not be alleged. Instead,
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it misleadingly cites two cases that are not about product designs, and otherwise involve facts
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very different from those it alleged. First, both cases involved word marks, and not product
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design trade dress for which secondary meaning is mandatory after Wal-Mart. See Solid Host,
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NL v. Namecheap, Inc., 652 F. Supp. 2d 1092, 1094 (C.D. Cal. 2009) (asserting trademark
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infringement of domain name); Bottlehood, Inc. v. Bottle Mill, 2012 WL 1416272, at *5 (S.D.
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Cal Apr. 23, 2012) (alleging infringement of word mark and associated tagline). Plaintiff does
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not dispute that Wal-Mart applies here, so its reliance on these cases is misguided from the start.
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Second, in both cases, the court found that the protectability of the word mark was clear
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from the remaining factual allegations of the complaint. Solid Host, 652 F. Supp. 2d at 1107-09;
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Bottlehood, 2012 WL 1416272 at *5. The decisions therefore cannot reasonably be cited for the

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proposition that secondary meaning need not be pleaded, as Plaintiff claims. Instead, they are

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merely examples of unusual cases in which the plaintiff was not required to use the precise term

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“secondary meaning” to survive a motion to dismiss because the distinctiveness of the trademark

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in question was otherwise properly alleged. These cases are no help to Plaintiff, since (1)

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Plaintiff here is seeking protection for the appearance of a website and is therefore asserting a

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product design trade dress case where secondary meaning is mandatory, and (2) the remaining

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allegations of Plaintiff’s complaint not only fail to support secondary meaning in the claimed

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trade dress, but affirmatively demonstrate its absence. See Mtd. at 12-17.

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B.

Plaintiff’s Failure to Allege Secondary Meaning Is Properly Decided On This
Motion to Dismiss

Equally infirm is Plaintiff’s repeated suggestion that determining the sufficiency of its

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secondary meaning allegations requires the Court to weigh evidence and make factual

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determinations that are improper on a motion to dismiss. See, e.g., Opp. at 12 (“Google’s

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invitation to weigh the allegations and evidence is improper at the motion to dismiss stage.”), 13

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(“Google’s factual arguments are subjects for further proceedings.”). Google is not asking the

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Court to decide whether Plaintiff has established secondary meaning. It is instead seeking a

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ruling that Plaintiff has failed to allege secondary meaning because Plaintiff has not alleged

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enough “factual content to allow a court to draw the reasonable inference that the defendant is

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liable for the alleged misconduct.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citing Bell Atl.

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Corp. v. Twombly, 550 U.S. 544, 556-57, 570 (2007)). Notably, Plaintiff does not mention,

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much less try to distinguish, the numerous cases cited by Google in which courts have granted

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Rule 12(b)(6) motions for Plaintiff’s failure to allege facts to support an allegation of secondary

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meaning. See Mtd. at 6.

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Nor is Google’s discussion of the facts alleged by Plaintiff as demonstrating the absence

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of secondary meaning a request that the Court weigh evidence, as Plaintiff contends. Opp. at 9,

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12. Plaintiff’s lack of long term or exclusive use of the claimed trade dress; lack of substantial

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promotion, advertising or publicity; inability to allege substantial customers, market position or
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market awareness; and inability to allege anything else demonstrating that customers have come

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to associate the claimed trade dress with Plaintiff, all demonstrate the absence of facts necessary

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to support an allegation of secondary meaning. The Court need not weigh evidence to observe

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this quintessential pleading failure.

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C.

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Plaintiff’s contention that its threadbare secondary meaning allegations are sufficient to

Plaintiff Has Not Alleged Secondary Meaning

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plead a trade dress claim is contrary to all legal authority. Not surprisingly, Plaintiff does not

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cite a single case where analogous allegations were sufficient to survive a motion to dismiss.

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Plaintiff’s request that the Court advance its trade dress claim with virtually nothing to support

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secondary meaning proposes a dramatic shift in the law – one that would reset the bar for

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secondary meaning far lower than in any established jurisprudence, and that would allow

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companies with failed products that never received any notice from consumers to exclude others

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from using similar product designs. Plaintiff’s invitation to revise the law should be rejected,

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particularly in light of the Wal-Mart decision, which emphasizes the importance of an entity

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acquiring secondary meaning in a product design before it can seek to preclude use by others of

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allegedly similar designs.

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Plaintiff’s claim that its Amended Complaint “includes at least ten allegations relating to

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secondary meaning” is fantasy. Opp. at 9. Excluding duplications, there are no more than three

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allegations that even bear on the subject, and they do not support an allegation of secondary

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meaning:

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Plaintiff’s “awards and accolades” allegation: The principal allegation relied upon by

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Plaintiff is that its trade dress “has a secondary meaning, which is evidenced in part by the

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awards and accolades and extensive media coverage Be In has received for its innovation and

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creativity in developing the CamUp platform.” Opp. at 10. But as Google pointed out in its

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opening brief (and Plaintiff never addresses in its opposition), Plaintiff nowhere alleges facts to

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support the purported “extensive media coverage.” The only publicity it alleges is its appearance

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at a single trade show, South by Southwest in Austin, Texas. Am. Complt., ¶23. A single trade

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show could hardly have established secondary meaning even in the best of circumstances, and
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there is no indication here that the trade dress was stressed or featured in any way. See Mtd. at

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15-16; First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1383 (9th Cir. 1987) (affirming

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finding of no secondary meaning where five-year advertising campaign had not stressed the

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color and shape of the antifreeze so as to develop secondary meaning in those elements).

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Likewise, Plaintiff identifies only a single award or accolade, which was given by a venture

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capitalist firm for being “an innovative start up.” Am. Complt., ¶26. In other words, the award

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had nothing whatsoever to do with the claimed trade dress. Indeed, Plaintiff’s allegation that it

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received an award for being an innovative start up company highlights that Plaintiff was a brand-

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new company with a brand-new product that could not have acquired secondary meaning merely

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for being one of innumerable Internet companies launched every week in the United States,

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without much, much more.

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Plaintiff’s allegation that it won a start up competition: Separately, Plaintiff relies on

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its allegation that it won an award from a venture capitalist firm as “the best and most innovative

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start up of the year.” Opp. at 10. But again, that is merely a duplicative reference to the sole

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identified “award or accolade” received by Plaintiff, as discussed above.

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Plaintiff’s allegation that Google copied CamUp. Finally, Plaintiff points to its

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allegations that Google “knowingly and intentionally copied” elements of Plaintiff’s trade dress,

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and that it is “deliberately using screens in its Google+ Hangouts platform that are confusingly

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similar to CamUp with willful and callous disregard to Plaintiff’s rights to enforce its trade

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dress.” Opp. at 11. These are nothing more than conclusory assertions that do not satisfy

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Plaintiff’s obligations to plead facts supporting its trade dress claim. See Iqbal, 556 U.S. at 678.

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But even if one were to take as true for purposes of this motion Plaintiff’s baseless assertion that

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Google deliberately copied Plaintiff’s trade dress, that would still not help Plaintiff. Under

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established Ninth Circuit precedent, intentional copying of a product design does not support an

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allegation of secondary meaning, since the copying may be undertaken for any number of

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reasons wholly unrelated to whether the copied design is an indicator of source. Fuddruckers,

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Inc. v. Doc’s B.R. Others, Inc., 826 F.2d 837, 844-845 (9th Cir. 1987) (“Competitors may

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intentionally copy product features for a variety of reasons. They may, for example, choose to
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copy wholly functional features that they perceive as lacking any secondary meaning because of

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those features’ intrinsic economic benefits.”); Alphaville Design, Inc. v. Knoll, Inc., 627 F. Supp.

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2d 1121, 1130 (N.D. Cal. 2009) (“[A] manufacturer might copy not because there is secondary

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meaning to capitalize upon, but because consumers desire that particular style in a [] product.”);

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Walker & Zanger, Inc. v. Paragon Indus., Inc., 549 F. Supp. 2d 1168 (N.D. Cal 2007) (copying

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not proof of secondary meaning).

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In short, Plaintiff’s allegations are not even within the realm of supporting an allegation

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of secondary meaning. See Mtd. at 11-17. Plaintiff never even tries to explain how a single

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trade show and a single award could ever support such an allegation. The only case it cites to try

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to demonstrate the adequacy of its allegations is Calyx Tech., Inc. v. Ellie Mae, Inc., No. C 04-

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01640 SI, 2004 WL 207446 (N.D. Cal. Sept. 3, 2004), but that case is no help to Plaintiff. Opp.

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at 11. In Calyx, the plaintiff adequately pleaded secondary meaning where it alleged that it had

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been using its unique screen displays for over ten years, distributed copies of the software at

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about 60 trade shows per year, spent more than $1 million in promotion, the product had a

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substantial customer base, there was evidence of actual confusion, and the screen images were

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indicators of source to consumers. Id. at 1-3. The Calyx allegations bear no resemblance to the

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allegations at issue here.

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Plaintiff also relies on Givenchy S.A. v. BCBG Max Azria Group, Inc., 2012 WL 3072327

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(C.D. Cal. Apr. 25, 2012) throughout its opposition brief, but the case only highlights Plaintiff’s

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failure to state a claim. In Givenchy, a famous design house offered a luxury handbag to

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sophisticated customers at price points ranging from $1,355 to $4,000. Plaintiff alleged that

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defendant sold a knock-off version of the bag for about $100. Givenchy, 2012 WL 3072327, at

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1. The court found that Givenchy’s evidence of secondary meaning was sufficient to survive a

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motion for summary judgment: (1) six years of sales of the bag by a famous fashion house, (2)

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over $20 million in revenues from U.S. sales, (3) that Givenchy had engaged in “image

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advertising” which featured the trade dress and sought to “reinforce the connection consumers

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draw been the design features of the handbags and its source,” (4) that Givenchy’s sales and

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marketing expenses were significant, including hundreds of thousands of dollars spent on print
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media in the U.S. alone, and (5) that plaintiff had made exclusive use of the design for six years.

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Id., at *4-5. Givenchy thus demonstrates the type of long and exclusive use of a source-

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identifying trade dress well-known to consumers that is required to establish secondary meaning.

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Plaintiff pleads nothing of the sort.

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Finally, Plaintiff argues that Google relies too heavily on the three-month period in which

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Plaintiff would have had to acquire secondary meaning, citing cases saying that there is no bright

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line rule regarding the time needed to acquire secondary meaning. Opp. at 12. Plaintiff misses

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the point. Google does not argue that secondary meaning can never be acquired within three

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months. To the contrary, and as discussed above, Google cites the seminal L.A. Gear case as

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exemplifying the type of media blitz that established secondary meaning in a mere five months.

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Mtd. at 13 n.2. The problem for Plaintiff is that it comes nowhere close to alleging similar facts,

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such as would be required to establish secondary meaning in an even shorter amount of time.

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Generally, secondary meaning takes years (and advertising, promotion, market penetration, a

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great deal of effort, etc.) to establish, as evidenced by the five-year presumption that applies for

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federal trademark registrations. See Mtd. at 14. While secondary meaning might be acquired in

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under a year with an exceptional media blitz, the opposite of a media blitz is alleged here.

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Because Plaintiff does not adequately allege secondary meaning, its trade dress claim
should be dismissed.

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D.

Amendment of the Trade Dress Claim Would be Futile

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Plaintiff has already amended once. If it could have alleged facts to support a massive

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marketing blitz between March and June 2011, a substantial segment of consumers as its user

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base, major media coverage during that period, or other facts to support secondary meaning, it

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surely would have. Because Plaintiff did not argue in its Opposition that it could plead

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additional facts if it had the opportunity, it is clear that Plaintiff has already taken its best

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possible shot, recognizes the shortcomings with the claim, and has decided to come out swinging

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in the hope that bold assertions that its existing allegations are good enough will somehow carry

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the day.

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Plaintiff is about as far from alleging secondary meaning as a party could possibly be.

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Google expressly noted in its opening papers that amendment would be futile “unless Plaintiff

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can demonstrate the ability to allege real facts supporting the acquisition of secondary meaning.”

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Mtd. at 12 (citing DeSoto v. Yellow Freight Sys. Inc., 957 F.2d 655, 658 (9th Cir. 1992) ((leave

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to amend properly denied where amendment would be futile)). Plaintiff has not risen to the

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challenge, providing further proof that it cannot. Google therefore respectfully requests that

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Plaintiff’s baseless trade dress claim be dismissed without leave to amend.

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III.

PLAINTIFF HAS FAILED TO PLEAD LIKELIHOOD OF CONFUSION

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Again with respect to the likelihood of confusion factor, Plaintiff argues that a

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determination of whether likelihood of confusion exists is a fact question that is improper for a

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motion to dismiss. Opp. at 14-15. And again, the argument fails, because Google is seeking a

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ruling on Plaintiff’s failure to plead plausible allegations, and not a ruling on whether likelihood

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of confusion exists. “[O]nly a complaint that states a plausible claim for relief survives a motion

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to dismiss.” Iqbal, 556 U.S. at 679.

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It is hard to fathom how Plaintiff could adequately allege a likelihood of confusion, when

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it has not pleaded facts to suggest any market presence or customer awareness of its business,

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much less of its claimed trade dress. It has not alleged any substantial number of users, any

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substantial revenue, any advertising or promotion, or any other facts to suggest that consumers

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would have been sufficiently aware of its claimed website trade dress to confuse it with Google’s

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Hangouts feature.

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Plaintiff argues that it has adequately pleaded likelihood of confusion by alleging (1) that

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Google’s Hangouts feature “is confusingly similar to the trade dress of the CamUp website,” (2)

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that Google “knowingly and willfully copied” its trade dress, (3) that both the Hangouts feature

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and Plaintiff’s CamUp website both provide video chat functionality; and (4) by providing a

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screen shot of each of a page from the CamUp website and the Hangouts feature. Opp. at 14.1

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Citing paragraphs 7 and 38 of the Amended Complaint, Plaintiff asserts in its opposition
papers that it alleges “substantial similarity between the two social media networking platforms,”
but the cited paragraphs do not so allege. Fairly read, the most Plaintiff alleges is that the
Hangouts feature, which is a only small part of the Google+ social networking service, and
(continued...)
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But these allegations do not sufficiently allege likelihood of confusion. The first and

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second allegations are baseless conclusory assertions, which do not satisfy the requirement that

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Plaintiff plead facts to support its trade dress claim. See Iqbal, 556 U.S. at 678. The third

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suggests only a similarity in functionality (video chat) between a single feature found in the

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Google+ social networking service and Plaintiff’s website dedicated to video chat. See Am.

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Complt., ¶2. Thus, viewed through the requirements of Twombly and Iqbal, Plaintiff’s factual

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allegations are no more than that Google has a video chat feature in its Google+ service that

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Plaintiff claims looks similar to a page of its video chat website.

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The ID7D case cited by Google is almost directly on point. See Mtd. at 17. In ID7D, the

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plaintiff conclusorily alleged that the defendant copied its trade dress, for use in a competing

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product (i.e., not simply a single overlapping feature alleged here), “in a manner that is likely to

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cause confusion,” and provided photographs of the products at issue. ID7D Co., Ltd. v. Sears

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Holding Corp., 2012 WL 1247329, at *1, *11 (D. Conn. Apr. 13, 2012). The court ruled that

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this was insufficient to plead likelihood of confusion. Id. at 11. Plaintiff’s effort to distinguish

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ID7D is unavailing. See Opp. at 15.

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Finally, Plaintiff argues that it need not allege instances of actual confusion to plead

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likelihood of confusion. Id. While that may be true, its failure to have pleaded virtually any of

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the likelihood of confusion factors (strength of the mark, evidence of actual confusion, proximity

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of the goods/services, marketing channels used, degree of care likely to be exercised by a

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purchaser, and likelihood of expansion of scope of goods or product lines), requires dismissal of

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its claim. See Opp. at 14 (enumerating likelihood of confusion factors).

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(...continued from previous page)
Plaintiff’s CamUp website both provide video chat functionality. Plaintiff does not allege that
Google+ is otherwise similar to CamUp. To the contrary, it alleges that Google+ “represents
Google’s attempt to compete with Facebook.” Am. Complt., ¶33.

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IV.

THE COPYRIGHT CLAIM SHOULD BE DISMISSED
A.

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Having Received Corrected Information from the Copyright Office, Google
Withdraws its Argument that Plaintiff Failed to Register the Work At Issue

In its opening brief, Google noted that it had visited the Copyright Office, and that it had

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ordered and received a copy of Plaintiff’s copyright deposit. On the basis of the material it

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received, which the Copyright Office represented to Google was a complete copy of the deposit

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submitted by Plaintiff in connection with a copyright registration for the CamUp website, Google

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argued that Plaintiff’s deposit was deficient in failing to include Plaintiff’s external, user-facing

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screens. Mtd. at 18-21. Upon receiving Plaintiff’s brief stating that it had deposited more than

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the material Google received, Google went back to the Copyright Office and learned that the

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Copyright Office, through no fault of Google, neglected to print and provide Google with a

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portion of the Plaintiff’s deposit. Based on these facts, Google withdraws its argument that

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Plaintiff failed to seek a copyright registration for the work at issue. However, for the reasons

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discussed below, Plaintiff’s copyright claim is nevertheless deficient and should be dismissed.

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B.

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Google explained in its opening brief that copyright claims asserting the look and feel of

Plaintiff Does Not Allege the Copyright Claim with the Required Specificity

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a website, without specifying the elements of the website allegedly infringed, are improper and

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should be dismissed for failure to give adequate notice to the Court and to defendant of the scope

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of the copyright claim. There are millions of websites which employ similar features and

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attributes, and which are continuously evolving, with the result that website “look and feel”

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copyright claims are notoriously vague and therefore require greater specificity of pleading. See

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Mtd. at 7. That is particularly so in cases like this one, where the plaintiff also asserts a trade

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dress infringement claim purporting to encompass aspects of the website’s appearance. Mtd. at

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22-23 (relying on Salt Optics, Inc., 2010 WL 4961702, at *4 and Sleep Science Partners v.

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Lieberman, 2010 WL 1881770, at *3 (N.D. Cal. May 10, 2010)).

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The subsequent Salt Optics decision attached by Plaintiff as Exhibit C to the declaration
in support of its opposition emphasizes Google’s point succinctly:

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Plaintiff’s copyright claim . . . does not survive Defendants’ 12(b)(6)
challenge. In its First Dismissal Order, the Court instructed Plaintiffs, in any
amended complaint, to identify the constituent elements of its website that are
original and allegedly copied . . . as well as the specific images/content that
Defendants are alleged to have infringed.
Plaintiff did not heed the Court’s warning. The majority of the SAC’s
copyright allegations are averred in general terms. Plaintiff pleads copyright
protection in its website’s “text, photographs, selection, arrangement and
compilation” . . . but offers no examples of specific texts or photographs that
Defendants allegedly infringe. This kind of imprecision is unacceptable, especially
in light of the Court’s previous instructions.
Salt Optics, Inc. v. JAND, Inc., No. SACV 10-828 DOC (RNBx), at 5 (C.D. Cal Mar. 4, 2011).
Plaintiff argues that it has adequately identified the supposedly infringed aspects of its

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website by alleging infringement of “the text, selection, arrangement, editing, and compilation of

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the CamUP web video chat platform.” Opp. at 17. That language provides no notice at all of the

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scope of the copyright claim, and is nearly identical to the language rejected by the Salt Optics

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court. See Salt Optics, Inc.,2010 WL 4961702, at *5-6 (rejecting as too vague copyright claim

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asserting infringement of “texts, photographs, selection, arrangement and compilation” of a

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website).

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Citing Facebook, Inc. v. Power Ventures, Inc., 2009 WL 1299698 (N.D. Cal. May 11,

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2009), Plaintiff argues that it need not specify which aspects of its website it claims have been

17

infringed by Google. Opp. at 17. Facebook is easily distinguished. First, Facebook involved

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allegations that the defendant made an exact electronic copy of each page of Facebook’s website.

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Facebook, 2009 WL 1299698, at *3. Exact replication of a copyrighted work is vastly different

20

from the claim made here by Plaintiff that Google copied limited, unidentified aspects of

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Plaintiff’s website. The defendant in Facebook knew exactly what it was alleged to have copied;

22

the same cannot be said of Google. Second, Facebook did not involve any potentially

23

overlapping allegations of trade dress infringement. Facebook, 2009 WL 1299698, at *1, *3-4.

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There was therefore no need to distinguish the scope of the copyright claim from a trade dress

25

claim. In contrast, the cases cited by Google that involved both copyright and trade dress claims,

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Salt Optics and Sleep Science, emphasize the importance of specifying the scope of the copyright

27

claim when, as here, there is also a trade dress claim.

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Finally, Plaintiff relies on its having included in its Amended Complaint a screen shot of

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each of a page from the CamUp website and the Hangouts feature as an identification of the

3

allegedly infringed and infringing elements of its copyright claim. See Opp. at 18. But Plaintiff

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has already asserted that nearly all the visual elements in the Cam Up screen shot (the logo

5

placement, color, large and small windows and their contents, and rectangular boxes containing

6

chat and playlist features surrounding the windows) comprise its allegedly infringed trade dress.

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Am. Complt., ¶53; Opp. at 1, 7-9. The screen shots are thus no help in meeting Plaintiff’s

8

obligation to distinguish between the copyright and trade dress claims. See Salt Optics, 2010

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WL 4961702, at *6-7 (“Plaintiff needs to delineate more clearly which facts it alleges in support

10

of its trade dress claim and which facts it alleges in support of its copyright claim.”); Science

11

Partners, 2010 WL 1881770, at *5 (“[I]f [plaintiff] intends to maintain a Lanham Act claim

12

based on its website’s ‘look and feel,’ in addition to articulating clearly the website features that

13

comprise its alleged trade dress, Plaintiff must plead a ‘look and feel’ that does not fall under the

14

purview of the Copyright Act.”). Accordingly, the fact that Plaintiff can theoretically allege both

15

copyright and trade dress claims (see Opp. at 18) is no help to Plaintiff, because it must

16

nevertheless specify the allegations supporting each claim. Plaintiff’s failure to do so requires

17

dismissal of both claims. Salt Optics, 2010 WL 4961702, at *6-7.

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CONCLUSION
For the foregoing reasons, Google respectfully requests that this Court dismiss Plaintiff’s
Third and Fourth Causes of Action.

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Dated: October 2, 2012

WILSON SONSINI GOODRICH & ROSATI

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By: /s/ Colleen Bal
Colleen Bal

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Attorneys for Defendants
GOOGLE INC. AND RICHARD ROBINSON

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CERTIFICATION
I, Charles T. Graves, am the ECF User whose identification and password are being used

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to file the REPLY MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF

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GOOGLE’S MOTION TO DISMISS. In compliance with General Order 45.X.B, I hereby attest

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that Colleen Bal has concurred in this filing.

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Dated: October 2, 2012

WILSON SONSINI GOODRICH & ROSATI

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By: /s/ Charles T. Graves
Charles T. Graves

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Attorneys for Defendants
GOOGLE INC. AND RICHARD ROBINSON

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