Five Star Gourmet Foods v. Ready Pac Foods - Motion To Dismiss

Case 5:18-cv-02436-DDP-KK Document 17 Filed 01/17/19 Page 1 of 2 Page ID #:104
1 K. David Crockett, Esq. 155455

davycrockett@crockett-crockett.com
2 Crockett & Crockett, PC
6B Liberty, Suite 145
3 Aliso Viejo, CA 92656
Phone: 949 588 6171
4 Fax: 949 588 6172
5 Attorney for Defendants
READY PAC FOODS, INC. and
6 READY PAC PRODUCE, INC.
7
8 UNITED STATES DISTRICT COURT
9 CENTRAL DISTRICT OF CALIFORNIA
10
11 Five Star Gourmet Foods, Inc. Case No.: 5:18-CV-2436 DDP-KK
a California Corporation,
12 NOTICE OF MOTION AND
Plaintiff, MOTION TO DISMISS THE FIRST
13 vs. AMENDED COMPLAINT FOR
FAILURE TO STATE A CLAIM
14 Ready Pac Foods, Inc., UPON WHICH RELIEF CAN BE
a Delaware Corporation, GRANTED
15 Ready Pac Produce, Inc., FED. R. CIV. PROC § 12(B)(6)
a California Corporation
16 and Date: March 18, 2019
17 Does 1-10, inclusive, Time: 10:00 AM
18 Defendants Courtroom: 9C
19 Judge: Dean D. Pregerson
20 TO PLAINTIFF FIVE STAR GOURMET FOODS, INC. AND ITS
21 COUNSEL:
22 Please take notice that on Monday, March 18, 2019 at 10:00 AM, or as soon
23 thereafter as we may be heard, in Courtroom 9C at 350 W. 1st Street, Los Angeles,
24 CA 90012, counsel for defendant Ready Pac Foods, Inc. and Ready Pac Produce,
25 Inc. shall move the Court to dismiss this case based on failure to state a claim.
26 This motion is based on this Motion and Notice of Motion, the
27 Memorandum of Points and Authorities filed herewith, the pleadings on file in this
28
Case 5:18-cv-02436-DDP-KK Document 17 Filed 01/17/19 Page 2 of 2 Page ID #:105
1 case, and upon such other matters as may be presented to the Court at the time of
2 hearing.
3 Pursuant to Local Rule 7-3, the undersigned reports that there was a
4 conference between attorneys or unrepresented parties in which the movant
5 explained the nature of the motion and its legal basis (which was presented, in the
6 main, in the Motion to Dismiss the original Complaint) and requested but did not
7 obtain concurrence in the relief sought, and that this conference was held on
8 January 15, 2018. No agreement was reached.
9
10 Date: January 17, 2019 /s/K. David Crockett
K. David Crockett, Esq.
11 Crockett & Crockett, PC
Attorney for Defendants
12 READY PAC FOODS, INC. and
READY PAC PRODUCE, INC.
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Notice of Motion
5:18-CV-2436 DDP-KK
Case 5:18-cv-02436-DDP-KK Document 17-1 Filed 01/17/19 Page 1 of 30 Page ID #:106
1 K. David Crockett, Esq., 155455

Crockett & Crockett, PC
2 davycrockett@crockett-crockett.com
6B Liberty, Suite 145
3 Aliso Viejo, CA 92656
Phone: 949 588 6171
4 Fax: 949 588 6172
READY PAC FOODS, INC. and
6 READY PAC PRODUCE, INC.
7
8 UNITED STATES DISTRICT COURT
9 CENTRAL DISTRICT OF CALIFORNIA
10
11 Five Star Gourmet Foods, Inc. Case No.: 5:18-CV-2436 DDP-KK
a California Corporation,
12 MEMORANDUM OF POINTS AND
Plaintiff, AUTHORITIES IN SUPPORT OF
13 vs. MOTION TO DISMISS THE FIRST
AMENDED COMPLAINT FOR
14 Ready Pac Foods, Inc., FAILURE TO STATE A CLAIM UPON
a Delaware Corporation, WHICH RELIEF CAN BE GRANTED
15 Ready Pac Produce, Inc., FED. R. CIV. PROC § 12(B)(6)
a California Corporation
16 and Date: March 18, 2019
17 Does 1-10, inclusive, Time: 10:00 AM
18 Defendants Courtroom: 9C
19 Judge: Dean D. Pregerson
20
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TABLE OF CONTENTS
1 MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF

2 MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM .......................... 1
3 I. INTRODUCTION .................................................................................... 1
4 II. RULES FOR A MOTION TO DISMISS .................................................. 2
5 III. PLAINTIFF FAILS TO STATE A CLAIM FOR DESIGN PATENT
6 INFRINGEMENT .................................................................................... 4
7 A. Substantive Law Of Design Patent Infringement ...................................... 4
8 B. The Patented Design ................................................................................. 4
9 C. The Accused Overwrap ............................................................................ 5
10 D. The Ready Pac Two-Up Overwrap Does Not Infringe The Five Star
11 Design Patent................................................................................................... 6
12 IV. PLAINTIFF FAILS TO STATE A CLAIM FOR TRADE DRESS
13 INFRINGEMENT .................................................................................. 12
14 A. Substantive Law Of Trade Dress Infringement ....................................... 12
15 B. The Five Star Trade Dress Allegation ..................................................... 13
16 C. The Accused Overwrap .......................................................................... 14
17 D. The Five Star Complaint Is Inadequate ................................................... 14
18 E. Plaintiff’s Alleged Trade Dress Configuration Is Dictated By Law And Is
19 Therefore Functional ..................................................................................... 15
20 F. The Ready Pac Two-Up Overwrap Does Not Infringe The Five Star
21 Trade Dress ................................................................................................... 17
22 V. PLAINTIFF FAILS TO STATE A CLAIM FOR WILLFUL
23 INFRINGEMENT .................................................................................. 23
24 VI. UNFAIR COMPETITION CLAIMS FALL WITH THE PATENT AND
25 TRADEMARK CLAIMS, AND ARE PREEMPTED ............................ 23
26 VII. THE CASE SHOULD BE DISMISSED WITHOUT LEAVE TO
27 AMEND ................................................................................................. 24
28 VIII. CONCLUSION ...................................................................................... 25
i
MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF MOTION TO DISMISS THE FIRST
AMENDED COMPLAINT FOR FAILURE TO STATE A CLAIM UPON WHICH RELIEF CAN BE GRANTED
5:18-CV-2436 DDP-KK
TABLE OF AUTHORITIES
1 Cases
2 Abrego v. The Dow Chem. Co., 443 F.3d 676, 681 (9th Cir. 2006) ....................... 3
3 Anderson v. Kimberly-Clark Corp.,
4 570 Fed. Appx. 927 (Fed. Cir. 2014)................................................................... 3
5 Bell Atlantic Corp. v. Twombly,
6 550 U.S. 544 (2007) ............................................................................................ 2
7 Bonanno v. Thomas,
8 309 F.2d 320 (9th Cir. 1962) ............................................................................. 25
9 Deckers Outdoor Corp. v. Fortune Dynamic, Inc.,
10 2015 WL 12731929, at 7 (C.D. Cal. May 8, 2015)............................................ 24
11 Egyptian Goddess, Inc. v. Swisa, Inc.,
12 543 F.3d 665 (Fed. Cir. 2008) ............................................................................. 4
13 Elmer v. ICC Fabricating, Inc.,
14 67 F.3d 1571, 1577 (Fed. Cir. 1995) ................................................................... 4
15 Ethicon Endo-Surgery, Inc. v. Covidien, Inc.,
16 796 F.3d 1312 (Fed. Cir. 2015) ........................................................................... 4
17 Hakopian v. Mukasey,
18 551 F.3d 843 (9th Cir. 2008) ............................................................................... 2
19 Hal Roach Studios, Inc., v. Richard Feiiner and Co., Inc.,
20 896 F.2d 1542 (9th Cir. 1990) ............................................................................. 3
21 Halton Co. v. Streivor, Inc.,
22 2010 WL 2077203, at 4 (N.D. Cal. May 21, 2010) ........................................... 24
23 Hearn v. R.J. Reynolds Tobacco Co.,
24 279 F. Supp. 2d 1096 (D. Ariz. 2003) ................................................................. 3
25 HWE, Inc. v. JB Research, Inc.,
26 993 F.2d 694, 696 (9th Cir. 1993) ..................................................................... 12
27 In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988) ................................................. 4
28
ii
5:18-CV-2436 DDP-KK
1 In re Seagate Technology, LLC,

2 497 F.3d 1360 (Fed. Cir. 2006) ......................................................................... 23
3 In re Silicon Graphics,
4 183 F.3d 970 (9th Cir. 1999) ............................................................................. 24
5 Jablon v. Dean Witter & Co.,
6 614 F.2d 677 (9th Cir. 1980) ............................................................................... 3
7 Jackson v. Marion County,
8 66 F.3d 151 (7th Cir. 1995) .................................................................................. 2
9 Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery,
10 150 F.3d 1042, 1047 (9th Cir. 1998) ........................................................... 12, 14
11 Leatherman Tool Grp. V. Cooper Indus.,
12 199 F.3d 1009, 1012 (9th Cir. 1999) ................................................................. 12
13 Marder v. Lopez,
14 450 F.3d 445, 448 (9th Cir. 2006) ....................................................................... 3
15 Medina v. Microsoft Corp.,
16 2014 WL 2194825, at *3 (N.D. Cal. May 23, 2014) ......................................... 24
17 Parrino v. FHP, Inc.,
18 146 F.3d 699, 705-06 (9th Cir. 1998) .................................................................. 3
19 Polich v. Burlington Northern, Inc.,
20 942 F.2d 1467 (9th Cir. 1991) ........................................................................... 24
21 Qualitex Co. v. Jacobson Products Co., Inc.,
22 514 U.S. 159, 162-63 (1995) ............................................................................. 13
23 SCG Characters LLC v. Telebrands Corp.,
24 2015 WL 4624200, at *6 (C.D. Cal. Aug. 3, 2015) ............................................. 4
25 Summit Mach. Tool Mfg. Corp. v. Victor CNC Sys., Inc.,
26 7 F.3d 1434, 1442 (9th Cir. 1993) ..................................................................... 24
27 Tie Tech, Inc. v. Kinedyne Corp.,
28 296 F.3d 778, 786 (9th Cir. 2002) ..................................................................... 12
iii
5:18-CV-2436 DDP-KK
1 TrafFix Devices, Inc. v. Marketing Displays, Inc.,

2 532 U.S. 23, 29 (2001) ...................................................................................... 12
3 Vision Sports, Inc. v. Melville Corp.,
4 888 F.2d 609, 616 (9th Cir. 1989) ..................................................................... 12
5 Weisbach v. County of Los Angeles,
6 119 F.3d 778, 783, n. 1 (9th Cir. 1997) ............................................................... 2
7 Weisbuch v. County of Los Angeles,
8 119 F.3d 778 (9th Cir. 1997) ............................................................................... 3
9 Williams v. Gerber Prods. Co.,
10 552 F.3d 934 (9th Cir. 2008) ............................................................................... 2
11 Zuckerman Family Farms, Inc. v. Bidart Bros.,
12 2014 WL 7239423, at 9 (E.D. Cal. Dec. 17, 2014) ............................................ 24
13 Rules
14 21 CFR 101.1 ....................................................................................................... 15
15 21 CFR 101.15(a)(4) (1997) ................................................................................. 20
16 21 CFR 101.3(a) and (b) (1997) ........................................................................... 16
17 21 CFR 101.3(d) (1997) ....................................................................................... 16
18 21 CFR 101.7(a) (2016) ....................................................................................... 16
19 21 CFR 101.7(b)(1) (2016)................................................................................... 16
20 21 CFR 101.7(f) (2016) ........................................................................................ 16
21 21 CFR 101.7(h) (2016) ....................................................................................... 16
22 7 CFR 205.303(5)(b) (2000)................................................................................. 22
23 7 CFR 205.303(a)(4) (2000) ................................................................................. 22
24 7 CFR 205.303(a)(5) (2000) ................................................................................. 22
25 7 CFR 205.311(b) (2000) ..................................................................................... 22
26 Fed. R. Civ. P. 12(b)(6) (2000)............................................................................... 2
27
28
iv
5:18-CV-2436 DDP-KK
1 MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF

2 MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM
3 I. INTRODUCTION
4 Defendants Ready Pac Foods, Inc. and Ready Pac Produce, Inc. seek
5 dismissal of the Complaint without leave to amend. This motion to dismiss is
6 based on the Complaint, the law governing motions to dismiss for failure to state a
7 claim, and the substantive law governing infringement of design patents and trade
8 dress.
9 The First Amended Complaint alleges patent infringement and trade dress
10 infringement, but its exhibits establish non-infringement. The Complaint includes
11 the asserted patent, Shoshan, Container and Overwrap Assembly, U.S. Patent
12 D769,732 (Oct. 25, 2016), as Exhibit A, and included a depiction of the accused
13 Ready Pac two-up overwrap and salad package in Paragraph 20 (Paragraph 19 in
14 the original Complaint). The Ready Pac two-up overwrap and salad package
15 depicted in the Complaint is plainly dissimilar to the patented design and
16 sufficiently distinct from Plaintiff’s alleged trade dress, and therefore does not
17 infringe either the design patent or the alleged trade dress. The Complaint itself
18 therefore demonstrates that the Ready Pac two-up salad package does not infringe.
19 The claims of unfair competition are based solely on the claims of infringement.
20 The Plaintiff has demonstrated that it cannot draft an amended claim that
21 plausibly alleges infringement without contradicting the original and current
22 allegations. The First Amended Complaint, to survive the current challenge and
23 plead around the defects, would have had to directly contradict the allegations of
24 the original complaint (that is, that the accused product does not look like the
25 depictions and descriptions in the complaint). Defendants seek dismissal without
26 leave to amend.
27 This is NOT a motion for summary judgment. The case for non-
28 infringement is quite straightforward and based on pleaded facts which the Court
1
5:18-CV-2436 DDP-KK
1 must accept as true. Accordingly, Defendants seek determination of this motion to

2 dismiss prior to burdensome and unnecessary discovery and pre-trial procedures.
3 II. RULES FOR A MOTION TO DISMISS
4 Fed. R. Civ. P. 12(b)(6) (2009) provides for dismissal of a complaint for
5 failure to state a claim that shows the pleader is entitled to relief. When
6 considering a motion to dismiss under Rule 12(b)(6) for failure to state a claim,
7 dismissal is appropriate when the complaint does not give the defendant fair notice
8 of a legally cognizable claim and the grounds on which it rests. Bell Atlantic Corp.
9 v. Twombly, 550 U.S. 544, 552 (2007). A district court should grant a motion to
10 dismiss if plaintiffs have not pled "enough facts to state a claim to relief that is
11 plausible on its face." Williams v. Gerber Prods. Co., 552 F.3d 934, 938 (9th Cir.
12 2008) (citing Twombly, 550 U.S. at 570). "Factual allegations must be enough to
13 raise a right to relief above the speculative level.... " Twombly at 555. The basic
14 rule of insufficiency of the pleadings provides ground to dismiss Plaintiff’s trade
15 dress claims.
16 In the current case, the plausibility of the Complaint is entirely negated by
17 the allegations and exhibits, which prove non-infringement. “Although Federal
18 Rule of Civil Procedure 8(a)(2) requires only that a Plaintiff's Complaint contain ‘a
19 short and plain statement of the claim showing that the pleader is entitled to relief,’
20 by going beyond the bare minimum, a plaintiff may plead herself out of court.”
21 Weisbach v. County of Los Angeles, 119 F.3d 778, 783, n. 1 (9th Cir. 1997).
22 Allegations in a complaint are binding and a plaintiff can plead himself out of
23 court by pleading facts that undermine the allegations set forth in the complaint.
24 Jackson v. Marion County, 66 F.3d 151, 153 (7 Cir. 1995). This rule holds in the
th
25 Ninth Circuit: Allegations in a complaint are considered judicial admissions and

26 are binding upon the party that made them. Hakopian v. Mukasey, 551 F.3d 843,
27 846 (9th Cir. 2008). If the pleadings establish facts compelling a decision one
28 way, that is as good as if depositions and other expensively obtained evidence on
2
5:18-CV-2436 DDP-KK
1 summary judgment establishes the identical facts. Weisbuch v. County of Los

2 Angeles, 119 F.3d 778, 783, n. 1 (9th Cir. 1997); “[D]ismissal may be appropriate
3 when the plaintiff has included sufficient allegations disclosing some absolute
4 defense or bar to recovery.” Hearn v. R.J. Reynolds Tobacco Co., 279 F. Supp. 2d
5 1096, 1102 (D. Ariz. 2003) (though denying a motion to dismiss). See also Jablon
6 v. Dean Witter & Co., 614 F.2d 677 (9th Cir. 1980) (upholding dismissal where the
7 allegations of the complaint proved that the statute of limitations had lapsed). As
8 illustrated below, the Complaint compels a decision of non-infringement because
9 Plaintiff Five Star has made binding allegations that disprove its allegations of
10 infringement.
11 This motion relies on exhibits attached to the First Amended Complaint,
12 namely the asserted patent (Exhibit A), and a description of the accused overwraps
13 (the photographs of Paragraph 20). The exhibits attached to the Complaint form a
14 part of the Complaint. Hal Roach Studios, Inc., v. Richard Feiner and Co., Inc.,
15 896 F.2d 1542, 1554-55 (9th Cir. 1990). The exhibits attached to the Complaint
16 are therefore properly considered in deciding this motion. Also, while a motion
17 under Rule 12(b)(6) generally is limited to the pleadings, a court may rely on
18 documents outside the pleadings if they are subject to judicial notice, or if they are
19 integral to the plaintiff’s claims and their authenticity is not disputed. Parrino v.
20 FHP, Inc., 146 F.3d 699, 705-06 (9th Cir. 1998), superseded by statute on other
21 grounds as recognized in Abrego v. The Dow Chem. Co., 443 F.3d 676, 681 (9th
22 Cir. 2006). Also, though not necessary in the first instance, the entirety of and a
23 complete depiction of Defendants product may be considered on a motion to
24 dismiss, so that a full set of views of the Defendants two-up overwrap may be
25 considered, as demonstrated in Anderson v. Kimberly-Clark Corp., 570 Fed. Appx.
26 927 (Fed. Cir. 2014), citing Marder v. Lopez, 450 F.3d 445, 448 (9th Cir. 2006).
27
28
3
5:18-CV-2436 DDP-KK
1 III. PLAINTIFF FAILS TO STATE A CLAIM FOR DESIGN

2 PATENT INFRINGEMENT
3 A. Substantive Law Of Design Patent Infringement
4 Design patents are intended to protect the ornamental aspects of a product.
5 A design patent contains only a single claim, and that claim is to the ornamental
6 (non-functional) design of the specified article “as shown.” Elmer v. ICC
7 Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995). Design patents have almost
8 no scope and are limited to what is shown in the application drawings. In re Mann,
9 861 F.2d 1581, 1582 (Fed. Cir. 1988). The seminal case defining the test for
10 design patent infringement is Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665
11 (Fed. Cir. 2008). Egyptian Goddess held that a design patent is infringed “if an
12 ordinary observer would think that the accused design is substantially the same as
13 the patented design when the two designs are compared in the context of the prior
14 art.” “In some instances, the claimed design and the accused design will be
15 sufficiently distinct that it will be clear without more that the patentee has not met
16 its burden of proving the two designs would appear ‘substantially the same’ to the
17 ordinary observer.” Id. at 678. Where the designs are plainly dissimilar, there is
18 no need to compare the patented design and Ready Pac overwrap with the prior art.
19 See Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312 (Fed. Cir. 2015).
20 Because such a comparison can be made solely on evidence that is central to a
21 plaintiff’s claim, district courts routinely dismiss design patent infringement claims
22 at the pleading stage. See e.g., SCG Characters LLC v. Telebrands Corp., 2015
23 WL 4624200, at *6 (C.D. Cal. Aug. 3, 2015).
24 B. The Patented Design
25 Five Star’s first claim is for infringement of its design patent Shoshan,
26 Container and Overwrap Assembly, U.S. Patent D769,732 (Oct. 25, 2016).
27 Shoshan ‘732 protects an overwrap. Though it is depicted holding two bowls, the
28 bowls are not part of the claim (this is indicated by the broken lines used to depict
4
5:18-CV-2436 DDP-KK
1 the bowls)1. The claimed design is an overwrap with straight edges, a regular
2 rectangular top panel, two rectangular side panels, and a rounded bottom panel.
3 Both side panels include two slight bulges that extend outwardly2. One bulge is
4 located near the top edge of the side panel, and the other bulge is located at the
5 vertical midpoint of the side panel. Below this second bulge, the side panel curves
6 inwardly to join the bottom panel. A horizontal middle panel (a shelf) inside the
7 overwrap spans the space defined by the overwrap, and dissects that space in two
8 compartments of equal height. The horizontal middle panel (the shelf) is the same
9 width as the top panel and side panels. All panels in the design patent are blank
10 and devoid of artwork, indicia, or color (“surface treatment” as it is called in
11 design patent law).
12 C. The Accused Overwrap
13 Ready Pac’s overwrap includes the necessary and functional top panel, side
14 panels and bottom panel (these are all functional, and serve to retain the bowls in a
15 two-pack, and not subject to design patent protection). The Ready Pac overwrap
16 does not include a middle panel (the shelf). Ready Pac’s bottom panel is
17 rectangular, and not round. Ready Pac’s overwrap does not include the outwardly
18 extending bulges, and instead includes two lanceolate3 apertures for
19 accommodating edges of the bowls secured by the overwrap. Ready Pac’s side
20 panel, in the lower half below the aperture, is rectilinear and not curved. Finally,
21 the design patent includes no surface treatment, and Ready Pac’s overwrap
22 includes extensive indicia, artwork, and color. Because Ready Pac’s overwrap is
23 plead, the Court can consider the entire overwrap on a motion to dismiss.
24
25 1
The first page of the design patent includes a disclaimer regarding the objects
26 shown
2
in broken lines, as does every design patent
This may be an error in the patent, and the bulges may have been intended to
27 depict the bowls. However, they are presented in solid lines, and are therefore
elements of the claim.
3
28 Shaped like a lance. From Wikipedia, a lanceolate leaf:
5
5:18-CV-2436 DDP-KK
1 D. The Ready Pac Two-Up Overwrap Does Not Infringe The Five
2 Star Design Patent
3 Side-by-side comparison of the two-up overwrap with the patented design4
4 demonstrates that they are plainly dissimilar, such that Five Star cannot prove a
5 claim for design patent infringement:
6
7
8
9
10
11
12
13
14
15
In this front perspective view, the
16
lanceolate apertures which
17
accommodate the bowl edges
18
Figure 1 is a front perspective view. contrast sharply with the claimed
19
Prominent features include the bulging bulges of the cardboard in the
20
protrusions in the side panels that patented design, which are
21
accommodate the bowls, the rounded outwardly arcuate in the patented
22
bottom panel, the middle panel (the shelf) design. The bottom panel is
23
which is entirely missing in the accused straight-edged, in contrast to the
24
overwrap, and the arcuate side panels that patented design. The middle panel
25
curve toward the rounded bottom panels. (the shelf) is missing.
26
27 4
For the design patent issue, images of Five Star’s product are immaterial: The test
for infringement requires comparison of the patented design with the accused
28 product.
6
5:18-CV-2436 DDP-KK
1
2
3
4
5
6
7
8
9
10
11 In this bottom perspective view, the
12 lanceolate apertures contrast
13 sharply with the claimed bulges of

Figure 2 is a bottom perspective view.
14 the cardboard in the patented
Prominent features include the bulging
15 design. The bottom panel is
protrusions in the side panels that
16 straight-edged, in contrast to the
accommodate the bowls, the rounded
17 patented design. The far side panel
bottom panel, and the arcuate side panels
18 is sharply rectilinear, not curved.
that curve toward the rounded bottom
19 The middle panel (the shelf) is
panels.
20 missing.
21
22
23
24
25
26
27
28
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5:18-CV-2436 DDP-KK
1
2
3
4
5
6
7
8
9
10
Figure 3 is a front view. Prominent
11
features include the bulging protrusions in
12
the side panels that accommodate the
13
bowls, the rounded bottom panel, and the
14
arcuate side panels that curve toward the
15
rounded bottom panels. There are no
16
apertures for the bowl edges.
17
18
19
In these side views, pled in
20
Paragraph 20, the lanceolate
21
apertures which accommodate the
22
bowl edges contrast sharply with
23
the claimed protrusions of the
24
cardboard in the patented design,
25
which are rectangular in the side
26
view. The bulges of the patented
27
design are replaced with holes.
28
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1
2
3
4
5
6
7
8
9
10
11 Figure 4 is a side view. Prominent features
12 include the bulging protrusion in the side
13 panels that accommodate the bowls, the
14 curvilinear side panels that curve toward
15 the rounded bottom panels, and the middle
16 In this side view, the rectilinear
panel (the shelf).
17 form of the side panels contrasts
18 sharply with the curvilinear shape of
19 the side panels in the patented
20 design. Also, the middle panel (the
21 shelf) is missing. The right
22 lanceolate aperture is higher than
23 the left lanceolate aperture.
24
25
26
27
28
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1
2
3
4
5
6
7
8
9
10 In this top view, pled in Paragraph
11 Figure 5 of the patented design shows the 20, the lanceolate apertures which
top of the patented overwrap, with straight accommodate the bowl edges take
12
edges and prominent cardboard protrusions the place of the claimed bulges of
13
to accommodate the bowl edges. the cardboard in the patented
14
15 design.
16
17
18
19
20
21
22
23
24 The straight edges of the bottom
25 panel contrast sharply with the
Figure 6 of the patented design shows the
26 round shape of the bottom panel in
bottom of the patented overwrap, with
27 the patented design.
arcuate bulges in the bottom panel.
28
10
5:18-CV-2436 DDP-KK
1 Though a comparison of the figures which demonstrates that the overwraps

2 are substantially dissimilar is most probative, a description of Ready Pac’s
3 overwrap serves to highlight several apparent differences which would negate a
4 conclusion that the patented design is substantially similar to Ready Pac’s
5 overwrap. Ready Pac’s overwrap includes the necessary and functional top panel,
6 side panels and bottom panel (these are all functional, and not subject to design
7 patent protection), but the Ready Pac overwrap does not include a middle panel (a
8 shelf). This disparity in itself would be sufficient to establish dissimilarity. Ready
9 Pac’s bottom panel is rectangular, and not round. This disparity in itself would be
10 sufficient to establish dissimilarity. Ready Pac’s overwrap does not include the
11 outwardly extending protrusions which accommodate the bowl edges, and instead
12 includes two lanceolate (shaped like a lance) apertures for accommodating edges
13 of the bowls secured by the overwrap. Again, this disparity in itself would be
14 sufficient to establish dissimilarity. Ready Pac’s side panel, in the lower half
15 below the aperture, is rectilinear and not curved as shown in the design patent.
16 This disparity in itself would be sufficient to establish dissimilarity. Finally, the
17 design patent includes no surface treatment, and Ready Pac’s overwrap includes
18 extensive indicia, artwork, and color. Again, this disparity in itself may be
19 sufficient to establish dissimilarity.
20 Taken together, the five significant disparities demonstrate that an ordinary
21 observer would not conclude that the Ready Pac design is substantially the same as
22 the patented design, because they are plainly dissimilar.
23 Clearly, the illustrations of Plaintiff’s Paragraph 20 (Paragraph 19 in the
24 original complaint), which are provided by the Plaintiff to illustrate the accused
25 overwrap, show that the accused overwrap is plainly dissimilar to the design of the
26 Shoshan patent. The additional photographs provided above (the perspective
27 views, side view and bottom view, which provide a complete depiction of the
28 accused overwrap) further demonstrate the numerous distinctions, and overall plain
11
5:18-CV-2436 DDP-KK
1 dissimilarity of the accused overwrap. Accordingly, Five Star cannot prove

2 infringement, and the claim for design patent infringement should be dismissed
3 with prejudice.
4 IV. PLAINTIFF FAILS TO STATE A CLAIM FOR TRADE DRESS
5 INFRINGEMENT
6 A. Substantive Law Of Trade Dress Infringement
7 Likelihood of confusion in the trade dress context is evaluated by reference
8 to the same factors used in the ordinary trademark context, including the strength
9 of the trade dress, similarity between plaintiff's and defendant's trade dress,
10 evidence of actual confusion, marketing channels used, type of goods and likely
11 degree of purchaser care, and the defendant's intent in selecting its trade dress and
12 other SleekCraft factors. Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 616
13 (9th Cir. 1989).
14 However, the trade dress must be non-functional, and it is Plaintiff’s burden
15 to prove that the asserted trade dress is not functional. 15 U.S.C. § 1125(a)(3) and
16 TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 29 (2001). In the
17 Ninth Circuit, non-functionality is part of the plaintiff's prima facie case. HWE,
18 Inc. v. JB Research, Inc., 993 F.2d 694, 696 (9th Cir. 1993). A plaintiff must plead
19 the non-functionality of its alleged unregistered trade dress to state a viable claim,
20 consistent with its burden of proof on this issue. Smith & Hawken, Ltd. v.
21 Gardendance, Inc., No. C04-1664 SBA, 2004 WL 2496163, at *3 (N.D. Cal. Nov.
22 5, 2004) (dismissing claim for trade dress infringement because of failure “to
23 allege or plead non-functionality”), citing Kendall-Jackson Winery, Ltd. v. E. & J.
24 Gallo Winery, 150 F.3d 1042, 1047 (9th Cir. 1998), 15 U.S.C. § 1125(a)(3).
25 Where alleged trade dress pertains to the configuration of a product, a plaintiff
26 must show that the entire design is non-functional. Secalt, 668 F.3d at 683, citing
27 Leatherman Tool Grp. V. Cooper Indus., 199 F.3d 1009, 1012 (9th Cir. 1999) and
28 Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 786 (9th Cir. 2002).
12
5:18-CV-2436 DDP-KK
1 Plaintiff’s trade dress allegation is a product configuration, pertaining to the

2 overwrap. Product configurations can never be inherently distinctive, and can only
3 be protected upon a showing of secondary meaning. Qualitex Co. v. Jacobson
4 Products Co., Inc., 514 U.S. 159, 162-63 (1995). Plaintiff must prove secondary
5 meaning (through acquired distinctiveness). Id.
6 B. The Five Star Trade Dress Allegation
7 Five Star’s second claim is for infringement of its trade dress, described in
8 both paragraph 16 and 34 of the First Amended Complaint (Paragraphs 16 and 31
9 of the original complaint). According to the complaint, the trade dress consists of
10 the configuration of the sleeve shown in the design patent and photographs
11 (Paragraphs 17 and 16) and several snippets of information useful to the purchaser.
12 Though it is photographed holding two bowls, the bowls are not asserted
13 components of the trade dress. The alleged trade dress is a combination of the
14 sleeve and its labeling. The claimed trade dress consists of the following:
15 (1) the sleeve, and the following indicia;
16 (2) the “Simply Fresh” logo at the top of the sleeve;
17 (3) the word “Organic” immediately below the “Simply Fresh” logo in
18 readily identifiable fonts;
19 (4) The name of the particular salad located below the “Organic” identifier;
20 (5) a photographic depiction of the ingredients;
21 (6) a more detailed listing of the organic ingredients contained in the salad
22 disposed at the bottom of the sleeve;
23 (7) details related to why the product is considered organic, i.e., “chicken
24 raised without antibiotics” and “non-GMO” disposed at the bottom of the
25 sleeve;
26
27
28
13
5:18-CV-2436 DDP-KK
1 (8) a row of four logos showing icons of the various social media platforms
2 Five Star subscribes to, proximate the text “follow us,” located on the
3 bottom5 of the sleeve; and
4 (9) a statement regarding the recyclability of the sleeve and salad container
5 as well as a statement about the packaging materials being recycled from a
6 certain number of plastic bottles.
7 This is what the Plaintiff articulates to be its trade dress. This remains unchanged
8 from the original Complaint.
9 C. The Accused Overwrap
10 Ready Pac’s overwrap includes the necessary and functional configuration
11 of a two-up overwrap, with its own trademarks and statutorily required functional
12 and informative indicia, and other functional and informative indicia. Ready Pac’s
13 bottom panel is rectangular, and not round. Ready Pac’s overwrap does not
14 include the middle panel (the shelf) which is prominent in the Plaintiff’s product.
15 Ready Pac’s overwrap does not include the outwardly extending bulges, and
16 instead includes two lanceolate (shaped like a lance) apertures for accommodating
17 edges of the bowls secured by the overwrap. Ready Pac’s side panel, in the lower
18 half below the aperture, is rectilinear and not curved. Finally, the design patent
19 includes no surface treatment, and Ready Pac’s overwrap includes extensive
20 indicia, artwork, and color. This remains unchanged from the original Complaint.
21 D. The Five Star Complaint Is Inadequate
22 Plaintiffs have perhaps uttered words to plead their trade dress claim,
23 including assertions as to (1) distinctiveness, (2) non-functionality, and (3)
24 likelihood of confusion. Kendall-Jackson Winery, 150 F.3d at 1046-47.
25 However, the incantation of non-functionality is belied by the pleading, which
26
27 5
In view of the actual overwrap, it is apparent that “bottom” refers to the product
orientation, and not the text orientation, and that the Plaintiff is not referring to the
28 bottom panel.
14
5:18-CV-2436 DDP-KK
1 depends on functional text and indicia, much of which is functional because it is

2 mandated by statute and regulation. The new assertion also contradicts assertions
3 of functionality in the original complaint.
4 Plaintiff has now alleged non-functionality, to cure the defect of the original
5 allegation. Plaintiff did, however, admit that some of its salient features are
6 functional, as when it states that the recycling statements of the Ready Pac
7 overwrap are “functionally identical” to its own statements (Paragraph 35 of the
8 original complaint), and when it states that the font scheme is functionally identical
9 to its own font scheme (Paragraph 19 of the original Complaint). The First
10 Amended Complaint now states that the font schemes are “nearly identical.”
11 Plaintiff has not alleged facts that would support a finding of distinctiveness,
12 whether inherent or acquired. Five Star says its product configuration and indicia
13 are inherently distinct but (1) offers no facts that would support inherent
14 distinctiveness and (2) product configurations are never inherently distinctive,
15 Qualitex, 514 U.S. 159, at 162-63, and (3) those aspects of its trade dress that are
16 so salient as to warrant mention in the First Amended Complaint (unchanged from
17 the original Complaint) are, for the most part, purely informative or functional or
18 dictated by law, and cannot support acquired distinctiveness.
19 E. Plaintiff’s Alleged Trade Dress Configuration Is Dictated By
20 Law And Is Therefore Functional
21 As explained below, all of the salient components of Plaintiff’s trade dress,
22 and their arrangement, are dictated by statute, either directly or indirectly, so that
23 the alleged trade dress is functional as a matter of law, warranting dismissal
24 without leave to amend.
25 The focus of the Plaintiff’s trade dress comparison is the top of the sleeve,
26 which, in FDA parlance, is the “principal display panel” (the panel most likely to
27 be viewed by a purchaser). 15 U.S.C. § 1453, 21 CFR 101.1 (1977). The content,
28 arrangement, and size of each item is dictated by statute or federal regulation such
15
5:18-CV-2436 DDP-KK
1 as 15 U.S. Code § 1453 and its related regulations, or dictated by whatever space is
2 left over after mandatory elements are placed in mandatory arrangements.
3 Both Plaintiff’s and Defendants’ principal display panel include a statement
4 of identity (a description of the food, not the brand name), as required by 21 CFR
5 101.3(a) and (b) (1997), and this must be one of the primary elements of the label.
6 21 CFR 101.3(d) (1997). The statement of identity must be placed on the principal
7 display panel in lines generally parallel to the base of the package. 21 CFR
8 101.3(d) (1977). Thus, the statement of identity (by law one of the most prominent
9 elements of the principal display panel) and its location and size, are dictated by
10 statute and therefore functional. Neither the statement nor its placement in a
11 configuration can form any part of a trade dress. However, the placement of the
12 “specific product name” is a key part of the Plaintiff’s trade dress.
13 Both Plaintiff’s and Defendants’ principal display panel include a net
14 quantity statement, as required by 21 CFR 101.7(a) (2016), in the bottom portion
15 of the principal display panel, as required by 21 CFR 101.7(f) (2016), in a font size
16 dictated by 21 CFR 101.7(h)(2016) (a function of the total area of the principal
17 display panel), in units of ounces, as dictated by 21 CFR 101.7(b)(1) (2016). Thus,
18 the statement of net quantity, a feature just as prominent as items 2 through 9, and
19 its location and size, are dictated by statute and therefore functional. This limits
20 the possible useful locations of other informative text on the principal display
21 panel. Accordingly, the arrangement and configuration of all informative text and
22 imagery on the principal display panel is dictated by statute or limited by statutory
23 requirements, and the arrangement and configuration is functional and cannot serve
24 as trade dress. In light of all the statutory and regulatory limitations on the
25 configuration, no configuration can be inherently distinctive and no configuration
26 can acquire distinctiveness. Any trade dress must reside in the tiny interstices
27 remaining after legal and functional requirements are met. As a matter of law, the
28 arrangement and configuration of information on a food label can never be
16
5:18-CV-2436 DDP-KK
1 “inherently distinctive.” The trade dress, as delineated in the First Amended

2 Complaint, cannot acquire distinctiveness because it is overwhelming dictated by
3 statutes and regulations. On this ground, the trade dress claim must therefore be
4 dismissed without leave to amend because an amendment cannot (and
5 demonstrably did not) change the relevant facts.
6 F. The Ready Pac Two-Up Overwrap Does Not Infringe The Five
7 Star Trade Dress
8 Five Star mentions many components of its trade dress. Most of them are
9 functional, merely informational text provided to a purchaser. One is their
10 SIMPLY FRESH SALADS trademark, used to sell simply fresh salads, which is
11 not indicia found on Ready Pac’s overwrap. The remainder of the information is
12 mandated by law or necessary or helpful to the purchaser, and is therefore
13 functional. Some articulated items are clearly wrongly correlated to the accused
14 product and not a source of confusion.
15 The overall configuration is the overwrap (item (1) mentioned in the
16 complaint). The overwrap is cheap, easy to make and, in conjunction with clear
17 plastic bowls, permits purchasers to see the contents, which is very important for
18 salad kits (it allows purchasers to readily determine that the contents are, in fact,
19 salads, and are, in fact, simply fresh). The plain dissimilarity which disproves
20 design patent infringement negates indicates that physical structure of the
21 overwrap is cannot be likely to confuse a consumer.
22 For the remainder of the informational text of the alleged trade dress, side-
23 by-side comparison can serve to demonstrate that the alleged trade dress and
24 Ready Pac’s overwrap cannot, as a matter of law, be deemed likely to confuse a
25 consumer, even despite the usually fact-intensive likelihood of confusion test.
26 In the following pages, side-by-side images are presented to demonstrate
27 that (1) the articulated salient point of the alleged trade dress are functional and (2)
28
17
5:18-CV-2436 DDP-KK
1 the trade dress of the Ready Pac product is so dissimilar that confusion is not
2 likely.
3 Plaintiff’s Principal Display Panel, Defendants’ Principal Display Panel
4 (photographed on a black
5 background)
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
As to item (2), the READY PAC® leaf logo (Federal Trademark Registration
27
86670326) and the BISTRO® trademark (Federal Trademark Registration
28
18
5:18-CV-2436 DDP-KK
1 4357283) and distinct shield logo are most prominently displayed, and serve the
2 trademark function of source identification. It is prominently displayed in a
3 functional location on the label: at the top where consumers expect. This serves to
4 set off the source identifier from the remaining information that is required by law
5 or otherwise of use to the purchaser. Though the positioning is functional, they are
6 visually distinct: The READY PAC® logo and the BISTRO® trademark and
7 distinct shield logo are obviously distinctly different from the SIMPLY FRESH
8 SALADS generic used on Plaintiff’s product.
9 As to item (3) the term “organic” serves to inform purchasers that the
10 produce is organic, and its use and prominent placement function to inform
11 purchasers. Though the positioning of each “organic” notation is functional, they
12 are visually distinct: The term “Organic” is presented in a distinctive font, lower
13 case, on a khaki rectangle, on the Ready Pac label, but presented in a flowing
14 curvilinear green banner in upper case in the Plaintiff’s label. Though Five Star
15 complains that the fonts are “nearly identical,” Ready Pac must be permitted to
16 use the Latin alphabet, and the English language, in its labels, and to the extent that
17 this leads to “nearly identical” script, it cannot form the basis of a trade dress
18 claim.
19 As to item (4) the name of the particular salad is the “statement of identity”
20 and is required by statute and purely functional, and the placement on the top of
21 the product is functional as it informs the purchaser as to the contents of the
22 package. Placement on the bottom of the overwrap, or inner surface, would be less
23 functional and prohibited by regulation. Though the positioning is functional, they
24 are visually distinct: The name of the particular salad in the Ready Pac label is
25 placed well below the organic notation, with significant additional indicia (2
26 salads, on the go, and nutritional icons and photographs) setting it off from the
27 trademarks and generic organic term.
28
19
5:18-CV-2436 DDP-KK
1 As to item (5) the photographs are informational and functional. Again,

2 placement on the top of the overwrap is functional. Moreover, the artwork cannot
3 hide or detract from the prominence and visibility of required label statements, 21
4 CFR 101.15(a)(4) (1997), so that the positioning is functional and limited by the
5 positioning of other mandatory elements. Nonetheless, respective images are
6 visually distinct: The Ready Pac photographs are placed around the border of the
7 top panel, while Plaintiff’s photographs are centrally located on the top panel.
8 As to item (6) “a more detailed listing of the organic ingredients contained in
9 the salad at the bottom of Five Star’s vertical sleeve” (actually, this information is
10 placed at the bottom of the top panel, or principal display panel) is part of the
11 required “statement of identity.” This is required by statute, and is purely
12 functional information. Since both products are salads, one would expect the
13 ingredients to be salad ingredients. In any case, an ingredient list cannot form the
14 basis of a trade dress claim.
15 As to item (7) details related to why the product is considered organic, i.e.,
16 “’chicken raised without antibiotics’ and ‘non-GMO’” is purely functional
17 information. Though the positioning is functional, the Ready Pac label is visually
18 distinct: This information does not appear on the Ready Pac label, so there is no
19 correlation on this point between the alleged trade dress and the accused trade
20 dress. A non-existent element cannot form the basis of a trade dress claim.
21 As to item (8) the row of four logos showing icons of the various social
22 media platforms Five Star subscribes to, and invites consumers to “follow us,”
23 located on the bottom panel of the sleeve is purely functional and informative.
24 The fact that the twitter, Facebook, etc. icons look similar is functional, and the
25 icons convey meaning to the purchaser. Also, these are icons referring to famous
26 third parties, and not source identifiers. Nonetheless, though the positioning and
27 purpose is functional, they are visually distinct: The Ready Pac social media icons
28 are on the side of the overwrap, while Five Star’s are on their bottom panel, as
20
5:18-CV-2436 DDP-KK
1 shown below. Each icon is visually distinct from the corresponding icon on the
2 Five Star label, as appears in the images below:
3
4
5
6
7
8 Plaintiff’s BOTTOM Panel with Social Defendants’ SIDE Panel with Social
media icons Media icons
9
10
11
12
13
14
15
16
17
18
19
20
As to item (9) the statement regarding the recyclability of the sleeve and
21
salad container as well as a statement about the packaging materials being recycled
22
from a certain number of plastic bottles are purely functional. Brags about
23
environmental footprints are functional. Though the positioning is functional, they
24
are visually distinct, as shown below. The recycling information is visually
25
distinct, disposed within a rectangular border, with a brag regarding the post-
26
consumer content, and additional recycling encouragement and located on the back
27
28
21
5:18-CV-2436 DDP-KK
1 panel of the Ready Pac overwrap, while it is located on the bottom of Plaintiff’s
2 package, with no corresponding encouragement.
3 Plaintiff’s recycling icons from its Defendants’ recycling icon from the SIDE
BOTTOM Panel Panel
4
5
6
7
8 Unmentioned in the complaint, the USDA ORGANIC seal and a
9 certification mark are prominent on the Plaintiff’s label and Defendants’ label.
10 The USDA seal is optional according to federal regulations,
11 and may be anywhere on the label. 7 CFR 205.303(a)(4)
12 (2000). But if used, the format of the USDA seal is dictated
13 by 7 CFR 205.311(b) (2000), and must conform to the logo
14 presented in the regulations (Figure 1, reproduced at right),
15 with severely limited options (white background, brown circle
16 with green type green lower half circle, or white background, black circle and
17 black type and black lower half circle). 7 CFR 205.303(a)(5) (2000). The
18 certification mark of a certifying agent may also be placed anywhere on the label,
19 but cannot be displayed more prominently that the USDA seal.
20 For products labeled “organic,” the identity of the certifying agent must be
21 included on the information panel, below the identity of the distributor. 7 CFR
22 205.303(5)(b) (2000). Thus, the appearance of these elements are dictated by law.
23 From all of these comparisons, it is apparent that, taken together, all of these
24 significant disparities demonstrate that a likely consumer would not confuse the
25 Ready Pac salad kits for the Five Star salad kits. The disparities are so stark that
26 they should be addressed on the pleadings. Also, so much of the salient
27 components and arrangement of the alleged trade dress are dictated by law or
28
22
5:18-CV-2436 DDP-KK
1 plainly functional, such that the presence and configuration of those elements is
2 functional, and the other elements must be arranged in whatever space remains,
3 such that the presence and configuration of all the salient elements is functional.
4 As a matter of law, whatever trade dress that might be found in the interstices of
5 the Five Star label are not confusingly similar to the trade dress of Ready Pac’s
6 label. (And, whatever trade dress that might be found in the interstices of the Five
7 Star label cannot be “inherently distinctive.”). Accordingly, Plaintiff’s trade dress
8 claim should be dismissed, and dismissed without leave to amend.
9 V. PLAINTIFF FAILS TO STATE A CLAIM FOR WILLFUL
10 INFRINGEMENT
11 “[T]o establish willful infringement, a patentee must show by clear and
12 convincing evidence that the infringer acted despite an objectively high likelihood
13 that its actions constituted infringement of a valid patent and must also
14 demonstrate that this objectively-defined risk was either known or so obvious that
15 it should have been known to the accused infringer. In re Seagate Technology,
16 LLC, 497 F.3d 1360 (Fed. Cir. 2006). The Complaint, however, does not suggest
17 that Defendants knew of the patent at any point prior to adoption of its two-up
18 overwrap, or continued use of the two-up overwrap after learning of the patent at
19 any time prior to the filing of this suit. Post-filing willfulness is negated by the
20 plain dissimilarity demonstrated above. Thus the Complaint does not allege
21 sufficient facts to support a finding of willful infringement.
22 VI. UNFAIR COMPETITION CLAIMS FALL WITH THE
23 PATENT AND TRADEMARK CLAIMS, AND ARE PREEMPTED
24 The unfair competition claim, that Ready Pac has misappropriated Five
25 Star’s intellectual property (that is, its design patent and trade dress) is entirely
26 dependent on the federal design patent infringement claim and the federal trade
27 dress claim, and must be dismissed when the underlying claims are dismissed. The
28
23
5:18-CV-2436 DDP-KK
1 allegations of the First Amended Complaint are unchanged from the allegations of
2 the original Complaint.
3 A state unfair competition claim based on patent infringement is preempted
4 by federal intellectual property law. Zuckerman Family Farms, Inc. v. Bidart
5 Bros., 2014 WL 7239423, at 9 (E.D. Cal. Dec. 17, 2014), citing Summit Mach.
6 Tool Mfg. Corp. v. Victor CNC Sys., Inc., 7 F.3d 1434, 1442 (9th Cir. 1993).
7 Accord, Halton Co. v. Streivor, Inc., 2010 WL 2077203, at 4 (N.D. Cal. May 21,
8 2010); Medina v. Microsoft Corp., 2014 WL 2194825, at *3 (N.D. Cal. May 23,
9 2014); and Deckers Outdoor Corp. v. Fortune Dynamic, Inc., 2015 WL 12731929,
10 at 7 (C.D. Cal. May 8, 2015). Thus, preemption of the state unfair competition
11 claim, insofar as it is based on patent infringement, is firmly established.
12 More generally, federal law preempts a state claim unless the state law claim
13 contains an element not shared by the federal law; an element which changes the
14 nature of the action so that it is qualitatively different from a [federal] infringement
15 claim.” Summit Mach. Tool Mfg. Corp., 7 F.3d at 1439–40. The unfair
16 competition claim, insofar as it is based on the federal trade dress claim, is
17 preempted because it is based solely on the federal trademark law, and no other
18 element.
19 VII. THE CASE SHOULD BE DISMISSED WITHOUT LEAVE TO
20 AMEND
21 Ordinarily, dismissal without leave to amend is improper unless it is clear
22 that the complaint could not be saved by any amendment. Polich v. Burlington
23 Northern, Inc., 942 F.2d 1467, 1472 (9th Cir. 1991). However, leave to amend
24 should not be granted when plaintiffs cannot allege any additional facts which
25 might cure defects in the complaint. See In re Silicon Graphics, 183 F.3d 970 (9th
26 Cir. 1999) (leave to amend should not be granted where the complaint is futile).
27 Leave to amend may be denied if the court determines that “the allegation of other
28
24
5:18-CV-2436 DDP-KK
1 facts consistent with the challenged pleading could not possibly cure the
2 deficiency.” Bonanno v. Thomas, 309 F.2d 320, 322 (9th Cir. 1962).
3 In the present case, the First Amended Complaint proves that the defects
4 cannot be cured. The design patent claim is unchanged. The unfair competition
5 claim is essentially unchanged. The articulation of the trade dress is unchanged.
6 The accused product is unchanged. As suggested in Defendants’ original Motion
7 to Dismiss, an amended complaint would have to allege that the asserted design
8 patent and trade dress, and the accused product, are something other than what was
9 originally pleaded. It does not do that.
10 VIII. CONCLUSION
11 The accused devices do not infringe the claim of the Five Star patent
12 because they are plainly dissimilar. The accused trade dress does not infringe any
13 trade dress that might be established in the Five Star overwrap as can readily be
14 understood from the pleadings. The entire Complaint should be dismissed without
15 leave to amend for this reason. The complaint further fails to state a claim for
16 trade dress infringement because the allegation of non-functionality cannot be
17 sustained in light of the statutory and regulatory requirements for labelling the
18 products. The Complaint also fails to state a claim for unfair competition because
19 it fails to allege facts supporting the alleged infringement that is the sole basis for
20 that claim. The state unfair competition claims are preempted by federal law. The
21 allegations against the DOE defendants should be dismissed for these reasons, and
22 the additional reason that the Complaint does not allege facts establishing personal
23 culpability of any potential DOE defendant.
24 Date: January 17, 2019 /s/K. David Crockett
25 K. David Crockett, Esq.
Crockett & Crockett, PC
27 READY PAC FOODS, INC. and
READY PAC PRODUCE, INC.
28
25
5:18-CV-2436 DDP-KK
1
2
3
4
5
6
7
8
UNITED STATES DISTRICT COURT
9
CENTRAL DISTRICT OF CALIFORNIA
10
11
Five Star Gourmet Foods, Inc., Case No.: 5:18-CV-2436 DDP-KK
12 a California Corporation,
[PROPOSED] ORDER GRANTING
13 Plaintiff, DEFENDANTS’ READY PAC
vs. FOODS, INC., AND READY PAC
14 PRODUCE, INC. MOTION TO
Ready Pac Foods, Inc., DISMISS THE FIRST AMENDED
15 a Delaware Corporation, COMPLAINT FOR FAILURE TO
Ready Pac Produce, Inc., STATE A CLAIM UPON WHICH
16 a California Corporation RELIEF CAN BE GRANTED
and FED. R. CIV. PROC § 12(B)(6)
17
Does 1-10, inclusive, Date: March 18, 2019
18
Defendants Time: 10:00 AM
19
Courtroom: 9C
20
Judge: Dean D. Pregerson
21
22
23
24
25
26
27
28
1 The Court, having read and considered the arguments supporting and
2 opposing Defendants’ Ready Pac Foods, Inc., and Ready Pac Produce, Inc. Motion
3 To Dismiss The First Amended Complaint For Failure To State A Claim Upon
4 Which Relief Can Be Granted finds:
5 That the accused devices do not infringe the claim of the Five Star patent
6 because they are plainly dissimilar;
7 That the accused trade dress does not infringe any trade dress that might be
8 established in the Five Star overwrap;
9 That the complaint fails to state a claim for trade dress infringement because
10 despite the alleged non-functionality in a product configuration, the articulated
11 trade dress as pled is functional, and it alleges inherent distinctiveness in a product
12 configuration;
13 That the complaint fails to state a claim for trade dress infringement insofar
14 as it alleges inherent distinctiveness in a product configuration;
15 That the Complaint also fails to state a claim for unfair competition because
16 it fails to allege facts supporting the alleged design patent and trade dress
17 infringement that are the sole bases for the unfair competition claim; and
18 That the state unfair competition claims are preempted by federal law.
19
20 IT IS ORDERED that the Motion To Dismiss The First Amended Complaint
21 For Failure To State A Claim Upon Which Relief Can Be Granted is GRANTED
22 in its entirety and that the complaint is dismissed with prejudice.
23
24 Date:
25 Honorable Dean D. Pregerson
26 United States District Judge
27
28

Five Star Gourmet Foods v. Ready Pac Foods - Motion To Dismiss

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Five Star Gourmet Foods v. Ready Pac Foods - Motion To Dismiss

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Case 5:18-cv-02436-DDP-KK Document 17 Filed 01/17/19 Page 1 of 2 Page ID #:104

1 K. David Crockett, Esq. 155455

1 K. David Crockett, Esq., 155455

1 MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF

1 In re Seagate Technology, LLC,

1 TrafFix Devices, Inc. v. Marketing Displays, Inc.,

1 MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF

1 must accept as true. Accordingly, Defendants seek determination of this motion to

25 Ninth Circuit: Allegations in a complaint are considered judicial admissions and

1 summary judgment establishes the identical facts. Weisbuch v. County of Los

1 III. PLAINTIFF FAILS TO STATE A CLAIM FOR DESIGN

12 lanceolate apertures contrast

13 sharply with the claimed bulges of

1 Though a comparison of the figures which demonstrates that the overwraps

1 dissimilarity of the accused overwrap. Accordingly, Five Star cannot prove

1 Plaintiff’s trade dress allegation is a product configuration, pertaining to the

1 depends on functional text and indicia, much of which is functional because it is

1 “inherently distinctive.” The trade dress, as delineated in the First Amended

1 As to item (5) the photographs are informational and functional. Again,

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