Kaswit Inc v. Dogfather K9 Connections LLC et al

Filing 25

ORDER denying 19 Defendant Frank Romano's Motion to Dismiss; vacating September 23, 2014 hearing. Signed by Magistrate Judge Howard R. Lloyd on 9/18/2014. (hrllc1, COURT STAFF) (Filed on 9/18/2014)

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*E-Filed: September 18, 2014*

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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For the Northern District of California

NOT FOR CITATION

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United States District Court

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SAN JOSE DIVISION

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KASWIT, INC.,

No. C14-03217 HRL

Plaintiff,

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ORDER DENYING DEFENDANT
FRANK ROMANO’S MOTION TO
DISMISS

v.
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DOGFATHER K9 CONNECTIONS, LLC
and FRANK ROMANO,
Defendants.
____________________________________/

ORDER VACATING SEPTEMBER 23,
2014 HEARING
[Re: Docket No. 19]

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Kaswit, Inc. sues Dogfather K9 Connections, LLC and Frank Romano for trademark

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infringement and related causes of action. Romano moves to dismiss the claims against him under

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Federal Rule of Civil Procedure 12(b)(6). Dkt. No. 19. Plaintiff filed an opposition and Romano

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filed a reply. Dkt. Nos. 22, 24. All parties have expressly consented to having all matters proceed

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before a magistrate judge. The motion is deemed suitable for determination without oral argument.

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The September 23, 2014 hearing is vacated. Civ. L.R. 7-1(b). Based on the moving and responding

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papers, the Court denies the motion to dismiss.

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BACKGROUND

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Kaswit is a California corporation with its principal place of business in La Quinta,

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California. 1 FAC ¶ 4. Kaswit is the owner by assignment from Don Sullivan of a federal

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registration for the Dogfather trademark in connection with “dog training” services. Id. ¶¶ 14-16.

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Unless otherwise stated, the following facts are from Plaintiff’s First Amended Complaint and
assumed to be true for purposes of this motion. See Dkt. No. 9.

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The Dogfather mark has been in use since May 2008 in connection with dog training services and

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expertise offered by Sullivan. Id. ¶ 10. Kaswit also markets and promotes The Perfect Dog, which

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is a system of training, instruction, and tools for the overall care of dogs. Id. ¶ 8.

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Dogfather K9 Connections (“DKC”) is a California limited liability company with its

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principal place of business in Santa Rosa, California. Id. ¶ 5. Romano is the owner and operator of

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DKC, and directs and controls its activities. Id. ¶ 6. DKC and Romano use the term “Dogfather” as

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part of the name “Dogfather K9 Connections” for a dog kennel, dog boarding, grooming, and dog

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day care facility. Id. ¶ 19. Romano also operates “Golden Gate K9,” which offers dog training

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services. Id. ¶ 22. Defendants own a website, www.dogfatherk9connections.com, entitled

For the Northern District of California

United States District Court

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“Dogfather K9 Connections / Santa Rosa Dog Kennel Resort and K9 Training Ranch / Boarding,

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Grooming, Day Care Sonoma County.” Id. ¶ 24. Romano has referred to himself as “The

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Dogfather” on this website. Id. ¶ 21.

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In December 2011, DKC filed with the United States Patent and Trademark Office

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Application Serial No. 85/494,546 for the mark Dogfather K9 Connections and Logo in connection

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with “kennel services, namely, boarding for pets.” Id. ¶ 31. Defendants allege a date of first use of

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January 6, 2011. Id. ¶ 30. In May 2013, Sullivan filed an opposition against that application before

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the Trademark Trial and Appeal Board. Id. ¶ 34. The Board stayed that opposition pending the

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outcome of the present action. Id. ¶ 36.

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Plaintiff filed the present action in the Central District of California on April 11, 2014. In

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July 2014, the action was transferred to this Court. The First Amended Complaint (the operative

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complaint) asserts five claims against both Defendants: (1) Infringement of Federally Registered

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Trademarks under the Lanham Act, 15 U.S.C. § 1114(1); (2) Federal False Designation of Origin

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and Misrepresentation under the Lanham Act, 15 U.S.C. § 1125(a); (3) violation of the

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Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d); (4) California statutory

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Trademark Infringement and Unfair Competition under California Business and Professions Code

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§§ 14200 et seq., 14330, 17200 et seq.; and (5) common law trademark infringement and unfair

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competition.

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Romano filed the present motion to dismiss on August 15, 2014. Dkt. No. 19. Plaintiff filed
an opposition and Romano filed a reply. Dkt. Nos. 22, 24.
LEGAL STANDARD

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A motion to dismiss for failure to state a claim pursuant to Fed. R. Civ. P. 12(b)(6) tests the

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legal sufficiency of the claims in the complaint. Navarro v. Block, 250 F.3d 729, 732 (9th Cir.

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2001). Dismissal is appropriate where there is no cognizable legal theory or an absence of sufficient

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facts alleged to support a cognizable legal theory. Id. (citing Balistreri v. Pacifica Police Dep’t, 901

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F.2d 696, 699 (9th Cir. 1990)). In such a motion, all material allegations in the complaint must be

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taken as true and construed in the light most favorable to the claimant. Id. However, “[t]hreadbare

For the Northern District of California

United States District Court

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recitals of the elements of a cause of action, supported by mere conclusory statements, do not

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suffice.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). Moreover, “the court is not required to

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accept legal conclusions cast in the form of factual allegations if those conclusions cannot

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reasonably be drawn from the facts alleged.” Clegg v. Cult Awareness Network, 18 F.3d 752, 754-

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55 (9th Cir. 1994).

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DISCUSSION
Romano moves to dismiss the individual claims against him. The Lanham Act imposes

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liability on natural persons for trademark infringement. 15 U.S.C. §§ 1125(a), 1127. “A corporate

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officer or director is, in general, personally liable for all torts which he authorizes or directs or in

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which he participates, notwithstanding that he acted as an agent of the corporation and not on his

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own behalf.” Transgo, Inc. v. Ajac Transmission Parts Corp., 768 F.2d 1001, 1021 (9th Cir. 1985)

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(internal quotation marks omitted). The Ninth Circuit has applied this principle to trademark

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infringement. Comm. for Idaho’s High Desert, Inc. v. Yost, 92 F.3d 814, 823-24 (9th Cir. 1996).

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Here, Plaintiff alleges that “Frank Romano is the owner and operator of DKC, [and] directs

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and controls the activities of DKC complained of herein.” FAC ¶ 6. “DKC and/or Frank Romano

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own and operate a dog kennel, dog boarding, grooming, and dog day care facility under the name

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DOGFATHER K9 CONNECTIONS.” Id. ¶ 19. Romano “describes himself as a master K9 trainer

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with years of experience working with K9 units in the military and law enforcement.” Id. ¶ 20. In

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addition, “Frank Romano has referred to himself as ‘The Dogfather’ on DKC’s Internet website

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www.dogfatherk9connections.com.” Id. ¶ 21. Moreover, “on December 19, 2010, DKC, Frank

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Romano, or someone associated with or acting on behalf of DKC or its owner first registered the

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Internet domain name of ‘dogfatherk9connections.com.’” Id. ¶ 29.

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Plaintiff has alleged that Romano directs the actions of DKC that form the basis of Plaintiff’s

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claims. In addition, Plaintiff alleges that Romano participated in certain actions, such as referring to

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himself as “The Dogfather” on www.dogfatherk9connections.com. Accordingly, Plaintiff has

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alleged sufficient facts to support a claim for individual liability against Romano.

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Romano’s arguments are unconvincing. First, Romano argues that Plaintiff is improperly

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attempting to impute the actions of the corporate defendant, DKC, to Romano. He cites Katzir’s

For the Northern District of California

United States District Court

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Floor and Home Design, Inc. v. M-MLS.com, 394 F.3d 1143, 1149 (9th Cir. 2004), for the

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proposition that “[t]he mere fact of sole ownership and control does not eviscerate the separate

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corporate identity that is the foundation of corporate law.” Katzir’s Floor and Home Design,

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however, relates to the theory of piercing the corporate veil. This theory is distinct from holding a

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corporate officer individually liable for trademark infringement when the corporate officer

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authorizes or approves the acts of infringement. Donsco, Inc. v. Casper Corp., 587 F.2d 602, 606

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(3d Cir. 1978); see also Babbit Elecs., Inc. v. Dynascan Corp., 38 F.3d 1161, 1184 (11th Cir. 1994).

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Second, Romano argues that Plaintiff fails to set forth the factual basis for its allegations

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because many of the allegations are alleged based upon “information and belief.” Romano cites

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Neubronner v. Milken, 6 F.3d 666, 672 (9th Cir. 1993), for the proposition that “a plaintiff who

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makes allegations on information and belief must state the factual basis for the belief.” Neubronner,

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however, concerned a claim for fraud, which must be pled with specificity under Federal Rule of

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Civil Procedure 9(b). See id. It is inapplicable here.

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Third, Romano argues that he does not in fact refer to himself as “The Dogfather” on

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www.dogfatherk9connections.com. In support of this argument, Romano points to Exhibit 5 to the

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First Amended Complaint, which is a printout of select pages of the website. The First Amended

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Complaint does not specify where on the website Romano refers to himself as “The Dogfather,” nor

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does it indicate that Exhibit 5 was intended to show the section of the website where Romano

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allegedly refers to himself as “The Dogfather.” See FAC ¶ 21. For the purposes of this motion, the

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Court will assume the truth of this allegation. Navarro, 250 F.3d at 732 (all material allegations in

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the complaint must be taken as true and construed in the light most favorable to the plaintiff).

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Fourth, Romano argues that the allegations in the First Amended Complaint that relate to the

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infringement by the Defendants being willful and intentional are mere legal conclusions, which the

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Court is not required to accept. Whether Plaintiff has sufficiently alleged intent by Romano is

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irrelevant because intent is not an element of federal trademark infringement. See Network

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Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1144 (9th Cir. 2011) (“To prevail

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on a claim of trademark infringement under the Lanham Act, 15 U.S.C. § 1114, a party must prove:

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(1) that it has a protectible ownership interest in the mark; and (2) that the defendant’s use of the

For the Northern District of California

United States District Court

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mark is likely to cause consumer confusion.” (internal quotation marks omitted)).
Fifth, Romano argues that the allegation that “DKC, Frank Romano, or someone associated

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with or acting on behalf of DKC or its owner first registered the Internet domain name of

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‘dogfatherk9connections.com’” is speculative because Plaintiff is uncertain who registered the

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domain name. See FAC ¶ 29. Romano is personally liable for acts of infringement which he

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authorizes or directs, and Plaintiff alleges that Romano “direct[ed] and control[ed] the activities of

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DKC complained of herein.” Id. ¶ 6. For the purposes of this motion, it is inconsequential whether

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Romano, DKC, or someone acting on their behalf registered the domain name.
CONCLUSION

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For the reasons stated above, Romano’s Motion to Dismiss the claims against him is denied.

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IT IS SO ORDERED.

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Dated: September 18, 2014
HOWARD R. LLOYD
UNITED STATES MAGISTRATE JUDGE

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C14-03217 HRL Notice will be electronically mailed to:

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Amanda V Dwight

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Kamran Fattahi

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Lisa Jennifer Chin

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Counsel are responsible for distributing copies of this document to co-counsel who have not
registered for e-filing under the court’s CM/ECF program.

[e-mail]

[e-mail]
[e-mail], [e-mail]

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For the Northern District of California

United States District Court

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