Professional Documents
Culture Documents
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.
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
2
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 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
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
Case 5:18-cv-02436-DDP-KK Document 17-1 Filed 01/17/19 Page 4 of 30 Page ID #:109
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
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
Case 5:18-cv-02436-DDP-KK Document 17-1 Filed 01/17/19 Page 11 of 30 Page ID #:116
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
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
Case 5:18-cv-02436-DDP-KK Document 17-1 Filed 01/17/19 Page 12 of 30 Page ID #:117
1
2
3
4
5
6
7
8
9
10
11 In this bottom perspective view, the
21
22
23
24
25
26
27
28
7
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
Case 5:18-cv-02436-DDP-KK Document 17-1 Filed 01/17/19 Page 13 of 30 Page ID #:118
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
8
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
Case 5:18-cv-02436-DDP-KK Document 17-1 Filed 01/17/19 Page 14 of 30 Page ID #:119
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
9
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
Case 5:18-cv-02436-DDP-KK Document 17-1 Filed 01/17/19 Page 15 of 30 Page ID #:120
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
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
Case 5:18-cv-02436-DDP-KK Document 17-1 Filed 01/17/19 Page 16 of 30 Page ID #:121
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
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
Case 5:18-cv-02436-DDP-KK Document 17-1 Filed 01/17/19 Page 20 of 30 Page ID #:125
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
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
Case 5:18-cv-02436-DDP-KK Document 17-1 Filed 01/17/19 Page 22 of 30 Page ID #:127
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
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
Case 5:18-cv-02436-DDP-KK Document 17-1 Filed 01/17/19 Page 24 of 30 Page ID #:129
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
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
Case 5:18-cv-02436-DDP-KK Document 17-1 Filed 01/17/19 Page 25 of 30 Page ID #:130
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
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
Case 5:18-cv-02436-DDP-KK Document 17-1 Filed 01/17/19 Page 27 of 30 Page ID #:132
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
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
Case 5:18-cv-02436-DDP-KK Document 17-1 Filed 01/17/19 Page 28 of 30 Page ID #:133
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
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
Case 5:18-cv-02436-DDP-KK Document 17-1 Filed 01/17/19 Page 29 of 30 Page ID #:134
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
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
Case 5:18-cv-02436-DDP-KK Document 17-1 Filed 01/17/19 Page 30 of 30 Page ID #:135
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
26 Attorney for Defendants
27 READY PAC FOODS, INC. and
READY PAC PRODUCE, INC.
28
25
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
Case 5:18-cv-02436-DDP-KK Document 17-2 Filed 01/17/19 Page 1 of 2 Page ID #:136
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
Case 5:18-cv-02436-DDP-KK Document 17-2 Filed 01/17/19 Page 2 of 2 Page ID #:137
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