Case 2:18-cv-02960-CAS-E Document 42 Filed 02/11/19 Page 1 of 12 Page ID #:386
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
` CIVIL MINUTES – GENERAL ‘O’
`2:18-cv-02960-CAS(Ex)
`February 11, 2019
`Date
`BOOST BEAUTY, LLC. V. WOO SIGNATURES, LLC. et al.
`
`Case No.
`Title
`
`
`CHRISTINA A. SNYDER
`N/A
`
`
`Not Present
`Tape No.
`
`Court Reporter / Recorder
`
`Attorneys Present for Defendants:
`
`Not Present
`
`
`Present: The Honorable
`Catherine Jeang
`Deputy Clerk
`Attorneys Present for Plaintiffs:
`Not Present
`
`(IN CHAMBERS) - DEFENDANT’S MOTION TO DISMISS (Dkt.
`[ 33 ], filed November 27, 2018)
`
`INTRODUCTION
`Before the Court is a motion to dismiss plaintiff Boost Beauty, LLC’s (“Boost
`Beauty”) third amended complaint. On April 9, 2018, Boost Beauty filed this action
`against defendants Woo Signatures, LLC (“Woo Signatures”), Tadeh
`Booghosianssardabi, Farshid Karamzad Goflsaz, Arash Sedighi, and Does 1 through 10
`(collectively, “defendants”). Dkt. 1. On June 7, 2018, plaintiff filed a first amended
`complaint. Dkt 17. In response to defendants’ motion to dismiss, the Court dismissed
`plaintiff’s FAC, with leave to amend, on July 23, 2018. Dkt. 25 . Plaintiff filed a second
`amended complaint on August 17, 2018. Dkt. 26 (“SAC”). On October 15, 2018, the
`Court dismissed two claims in plaintiff’s SAC, with leave to amend, in response to
`defendants’ motion to dismiss. Dkt. 31 (“Oct. Order”). On November 13, 2018, plaintiff
`filed a third amended complaint. Dkt. 32 (“TAC”).
`Plaintiff asserts the same eleven claims in its TAC as in its initial complaint: (1)
`copyright infringement, in violation of the Copyright Act, 17 U.S.C. § 501 et seq.; (2)
`contributory copyright infringement; (3) vicarious copyright infringement; (4) intentional
`fraud, as against Sedighi; (5) breach of implied contract; (6) trademark infringement and
`counterfeiting, in violation of the Lanham Act, 15 U.S.C. § 1114; (7) unfair competition
`and false designation of origin, in violation of the Lanham Act, 15 U.S.C. § 1125(a); (8)
`trademark infringement under California common law; (9) violation of the California
`Unfair Competition Law (“UCL”), Cal. Bus. & Prof. Code §§ 17200, et seq.; (10)
`trademark infringement by imitating and false advertising, in violation of the Lanham
`Act, 15 U.S.C. §§ 1114(a)–(b); and (11) common law unfair competition and false
`designation of origin. In brief, plaintiff alleges that defendants engaged in a scheme to
`gain access to plaintiff’s confidential information and thereby replicate the beauty
`
`CV-549 (01/18)
`
`
`Proceedings:
`
`
`I.
`
` CIVIL MINUTES - GENERAL
`
`Page 1 of 12
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`

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`Case 2:18-cv-02960-CAS-E Document 42 Filed 02/11/19 Page 2 of 12 Page ID #:387
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
` CIVIL MINUTES – GENERAL ‘O’
`2:18-cv-02960-CAS(Ex)
`February 11, 2019
`Date
`BOOST BEAUTY, LLC. V. WOO SIGNATURES, LLC. et al.
`
`Case No.
`Title
`
`product that plaintiff produces, markets, and sells. Specifically, plaintiff alleges that
`defendants copied its signature eyelash enhancement product by using plaintiff’s
`manufacturer, by unlawfully copying plaintiff’s copyrighted online advertisement (the
`“Work”), and by unlawfully using variations of the term “BoostLash,” plaintiff’s
`trademarked product name (the “Mark”), as a search engine adword.
`On November 27, 2018, defendants filed the instant motion to dismiss. Dkt. 33
`(“Mot.). Plaintiff filed an opposition on December 17, 2018, dkt. 34 (“opp’n”), and
`defendants filed their reply on December 21, 2018, dkt. 36 (“reply”). The Court held a
`hearing on February 4, 2019. Having carefully considered the parties’ arguments, the
`Court finds and concludes as follows.
`II. BACKGROUND
`Plaintiff alleges the following facts.
`
`Plaintiff is a California limited liability company with its principal place of
`
`business in Glendale, California. TAC ¶ 7. Woo Signatures is a California limited
`liability company with its principal place of business also in Glendale, California. Id. ¶ 8.
`Booghosianssardabi, Goflsaz, and Sedighi are the principals of Woo Signatures, and are
`individuals residing in Los Angeles County. Id. ¶ 9.
`A.
`Plaintiff’s Business
`Plaintiff alleges that it procures, advertises, distributes, and sells an eyelash
`
`enhancement product called BoostLash. Id. ¶ 27. Plaintiff began the business in 2016
`and applied for and obtained a trademark registration for the Mark. Id. ¶¶ 27, 33.
`Plaintiff alleges that the Product garnered commercial success, becoming a “highly-
`sought after commodity” because BoostLash is a relatively low-cost product, available to
`consumers across all economic groups, which is sold online. Id. ¶¶ 28, 30.
`
`To market the product, plaintiff created advertisements composed of “specific
`words and language in a specific order, which, as . . . plaintiff figured out, would
`facilitate more end users to its website and, ultimately, to purchase the Product.” Id. ¶ 34.
`In March 2018, plaintiff filed an application with the U.S. Copyright Office for copyright
`registration of the advertisement, a copy of which plaintiff attached to its third amended
`complaint. Id. ¶¶ 35, 36; Ex. A. The advertisement features three areas of text: the first,
`across the top, states “‘Top 5’ Eyelash Growth Serums | 2018’s Best Eyelash Enhancers,”
`and contains additional product attributes below; the second, on the bottom left, states
`
`CV-549 (01/18)
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` CIVIL MINUTES - GENERAL
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`Page 2 of 12
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`Case 2:18-cv-02960-CAS-E Document 42 Filed 02/11/19 Page 3 of 12 Page ID #:388
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
` CIVIL MINUTES – GENERAL ‘O’
`2:18-cv-02960-CAS(Ex)
`February 11, 2019
`Date
`BOOST BEAUTY, LLC. V. WOO SIGNATURES, LLC. et al.
`
`Case No.
`Title
`
`“Product Comparison Chart,” which urges consumers to “compare performances”; and
`the last, on the bottom right, states “Which is Best for You.” TAC, Ex. A. Plaintiff’s
`registration application for this advertisement is pending. Id. ¶ 36.
`
`Exhibit A, Plaintiff’s Advertisement, for which it has applied for Copyright Registration
`
`
`
`
`
`B. Defendants’ Alleged Misconduct
`
`i.
`Sedighi’s Alleged Intentional Fraud and Woo Signatures’ Breach
`of Implied Contract
`Plaintiff alleges that Sedighi and a principal at Boost Beauty lived together for five
`
`years, during which time Sedighi gained confidential information about plaintiff’s
`business model, strategies, product, and suppliers. Id. ¶¶ 38–41, 82–83. Plaintiff alleges
`that, in November 2017, the named individual defendants unlawfully employed plaintiff’s
`manufacturer to produce a competing eyelash enhancement product, called their product
`a similar name, purchased the domain name for WooLash, and began selling the product.
`Id. ¶¶ 43, 45. Plaintiff alleges that defendants produced their competing product despite
`the fact that Sedighi agreed that any information he learned from Boost Beauty’s
`principal would remain confidential, and that Sedighi would not use the information for
`personal benefit without the consent of Boost Beauty’s principal. Id. ¶¶ 40, 83–84.
`
`
`ii.
`Defendants’ Alleged Direct, Contributory, and Vicarious
`Copyright Infringement
`Plaintiff avers that in November 2017, when defendants launched their competing
`
`business, they “word for word” “copied [] plaintiff’s advertisement (but ran the
`advertisement only outside of California in the hopes plaintiff would not become aware
`of it).” Id. ¶¶ 43, 49. Plaintiff further alleges that defendants’ copied advertisements
`
`Page 3 of 12
`CV-549 (01/18)
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` CIVIL MINUTES - GENERAL
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`

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`Case 2:18-cv-02960-CAS-E Document 42 Filed 02/11/19 Page 4 of 12 Page ID #:389
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
` CIVIL MINUTES – GENERAL ‘O’
`2:18-cv-02960-CAS(Ex)
`February 11, 2019
`Date
`BOOST BEAUTY, LLC. V. WOO SIGNATURES, LLC. et al.
`
`Case No.
`Title
`
`“were intentionally unlabeled and source-ambiguous in that an ordinary consumer of the
`[p]roduct would not be able to tell, unless investigating closely, that the advertisement
`did not belong to plaintiff.” Id. ¶ 44. Plaintiff asserts that defendants knew the Work
`was an original expression owned by plaintiff, and that defendants used, republished,
`distributed, and displayed the Work to the public without authorization, which has caused
`plaintiff economic injury. Id. ¶¶ 51–53. Plaintiff claims contributory and vicarious
`copyright infringement against all defendants. Id. ¶¶59–60, 65–67.
`
`
`iii. Defendants’ Alleged Trademark Infringement, Counterfeiting,
`Unfair Competition, and False Advertising
`Plaintiff also claims that in November 2017, defendants “purchased the Google
`AdWords ‘boost’ and ‘lash’ together in that order as a search engine advertisement to
`drive traffic to their website.” Id. ¶ 43. Plaintiff contends that defendants willfully
`adopted and used in commerce a confusingly similar or identical version of the Mark
`without plaintiff’s consent, and that “Defendants have engaged in acts of direct
`infringement by using a sham version of the Mark to sell their products without
`Plaintiff’s consent.” Id. ¶¶ 92–93. Plaintiff also alleges that such acts of direct
`infringement amount to false or misleading advertising and unfair competition, and that
`as a result, plaintiff has lost out on revenues. Id. ¶¶ 115–16. Plaintiff asserts that
`defendants pursued this conduct in order to mislead unsophisticated consumers into
`believing that defendants’ product is endorsed by plaintiff. Id. ¶¶ 29, 45. This, plaintiff
`claims, would persuade consumers into purchasing defendants’ identical but competing
`product instead of plaintiff’s. Id. ¶¶ 43, 45.
`III. LEGAL STANDARDS
`A motion pursuant to Federal Rule of Civil Procedure 12(b)(6) tests the legal
`sufficiency of the claims asserted in a pleading. Under this Rule, a district court properly
`dismisses a claim if “there is a ‘lack of a cognizable legal theory or the absence of
`sufficient facts alleged under a cognizable legal theory.’” Conservation Force v. Salazar,
`646 F.3d 1240, 1242 (9th Cir. 2011) (quoting Balisteri v. Pacifica Police Dep’t, 901 F.2d
`696, 699 (9th Cir. 1988)). “[A]llegations in a complaint . . . may not simply recite the
`elements of a cause of action, but must contain sufficient allegations of underlying facts
`to give fair notice and to enable the opposing party to defend itself effectively.” Starr v.
`Baca, 652 F.3d 1202, 1216 (9th Cir. 2011). “While a complaint attacked by a Rule
`12(b)(6) motion to dismiss does not need detailed factual allegations, a plaintiff’s
`obligation to provide the ‘grounds’ of his ‘entitlement to relief’ requires more than labels
`
`CV-549 (01/18)
`
` CIVIL MINUTES - GENERAL
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`Page 4 of 12
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`

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`Case 2:18-cv-02960-CAS-E Document 42 Filed 02/11/19 Page 5 of 12 Page ID #:390
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
` CIVIL MINUTES – GENERAL ‘O’
`2:18-cv-02960-CAS(Ex)
`February 11, 2019
`Date
`BOOST BEAUTY, LLC. V. WOO SIGNATURES, LLC. et al.
`
`Case No.
`Title
`
`and conclusions, and a formulaic recitation of the elements of a cause of action will not
`do.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007). “[F]actual allegations
`must be enough to raise a right to relief above the speculative level.” Id.
`In considering a motion pursuant to Rule 12(b)(6), a court must accept as true all
`material allegations in the pleading, as well as all reasonable inferences to be drawn from
`them. Pareto v. FDIC, 139 F.3d 696, 699 (9th Cir. 1998). The pleading must be read in
`the light most favorable to the nonmoving party. Sprewell v. Golden State Warriors, 266
`F.3d 979, 988 (9th Cir. 2001). However, “a court considering a motion to dismiss can
`choose to begin by identifying pleadings that, because they are no more than conclusions,
`are not entitled to the assumption of truth. While legal conclusions can provide the
`framework of a complaint, they must be supported by factual allegations.” Ashcroft v.
`Iqbal, 556 U.S. 662, 679 (2009); see Moss v. United States Secret Service, 572 F.3d 962,
`969 (9th Cir. 2009) (“[F]or a complaint to survive a motion to dismiss, the non-
`conclusory ‘factual content,’ and reasonable inferences from that content, must be
`plausibly suggestive of a claim entitling the plaintiff to relief.”). Ultimately,
`“[d]etermining whether a complaint states a plausible claim for relief will . . . be a
`context-specific task that requires the reviewing court to draw on its judicial experience
`and common sense.” Iqbal, 556 U.S. at 679.
`Unless a court converts a Rule 12(b)(6) motion into a motion for summary
`judgment, a court cannot consider material outside of the pleading (e.g., facts presented
`in briefs, affidavits, or discovery materials). In re American Cont’l Corp./Lincoln Sav. &
`Loan Sec. Litig., 102 F.3d 1524, 1537 (9th Cir. 1996), rev’d on other grounds sub nom
`Lexecon, Inc. v. Milberg Weiss Bershad Hynes & Lerach, 523 U.S. 26 (1998). A court
`may, however, consider exhibits submitted with or alleged in the complaint and matters
`that may be judicially noticed pursuant to Federal Rule of Evidence 201. In re Silicon
`Graphics Inc. Sec. Litig., 183 F.3d 970, 986 (9th Cir. 1999); Lee v. City of Los Angeles,
`250 F.3d 668, 689 (9th Cir. 2001).
`As a general rule, leave to amend a complaint which has been dismissed should be
`freely granted. Fed. R. Civ. P. 15(a). However, leave to amend may be denied when “the
`court determines that the allegation of other facts consistent with the challenged pleading
`could not possibly cure the deficiency.” Schreiber Distrib. Co. v. Serv-Well Furniture
`Co., 806 F.2d 1393, 1401 (9th Cir. 1986).
`
`
`CV-549 (01/18)
`
` CIVIL MINUTES - GENERAL
`
`Page 5 of 12
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`Case 2:18-cv-02960-CAS-E Document 42 Filed 02/11/19 Page 6 of 12 Page ID #:391
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
` CIVIL MINUTES – GENERAL ‘O’
`2:18-cv-02960-CAS(Ex)
`February 11, 2019
`Date
`BOOST BEAUTY, LLC. V. WOO SIGNATURES, LLC. et al.
`
`Case No.
`Title
`
`IV. DISCUSSION
`In their third motion to dismiss, defendants move to dismiss plaintiff’s copyright
`claims and its claim for counterfeiting. Mot. at 1.
`A.
`Plaintiff’s Copyright Claims
`To state a claim for copyright infringement, “two elements must be proven: (1)
`ownership of a valid copyright, and (2) copying of constituent elements of the work that
`are original.” Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991).
`The second element contains two parts: “copying” and “unlawful appropriation.”
`Rentmeester v. Nike, Inc., 883 F.3d 1111, 1117 (9th Cir. 2018) (dismissing a plaintiff’s
`copyright claims on a motion to dismiss because the allegedly infringing work was not
`substantially similar to the copyrighted work). Plaintiffs must allege both components
`because “independent creation is a complete defense to copyright infringement,” and
`because “a defendant incurs no liability if he copies only the ‘ideas’ or ‘concepts’ used in
`the plaintiff's work. To infringe, the defendant must also copy enough of the plaintiff's
`expression of those ideas or concepts to render the two works ‘substantially similar.’” Id.
`(citing Mattel, Inc. v. MGA Entertainment, Inc., 616 F.3d 904, 913–14 (9th Cir. 2010)).
`Accordingly, “the second Feist prong, regarding copying of constituent elements of an
`original work, requires plaintiffs to allege ‘that the works at issue are substantially similar
`in their protected elements.’” Blizzard Entm't, Inc. v. Lilith Games (Shanghai) Co., 149
`F. Supp. 3d 1167, 1172–73 (N.D. Cal. 2015) (citing Cavalier v. Random House, Inc., 297
`F.3d 815, 822 (9th Cir. 2002))
`In its second amended complaint, plaintiff did not attach a copy of defendant’s
`infringing work, but alleged that “Defendant[s] willfully misappropriated information
`from Plaintiff, . . . copied Plaintiff’s advertisement and made their advertisement non-
`descript so that when the consumer of the Product . . . does a search for BoostLash®,
`intending to find Plaintiff’s website, they are instead directed to Defendant’s website.”
`SAC ¶ 45. The Court previously acknowledged that plaintiff was not legally obligated to
`attach a copy of defendant’s infringing work to state a claim for copyright infringement.
`Oct. Order at 8 (citing 3 Nimmer on Copyright § 12.09 (2018)). However, the Court
`found that plaintiff failed to state a claim because plaintiff failed to allege sufficient facts
`to claim substantial similarity between plaintiff’s work and defendants’ infringing work.
`As it explained, the Court failed to understand how a “non-descript” advertisement could
`constitute a word-for-word copy of original work, subject to a valid copyright. Id.
`However, the Court granted leave to amend because, at oral argument, plaintiff
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`CV-549 (01/18)
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` CIVIL MINUTES - GENERAL
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`Page 6 of 12
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`Case 2:18-cv-02960-CAS-E Document 42 Filed 02/11/19 Page 7 of 12 Page ID #:392
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
` CIVIL MINUTES – GENERAL ‘O’
`2:18-cv-02960-CAS(Ex)
`February 11, 2019
`Date
`BOOST BEAUTY, LLC. V. WOO SIGNATURES, LLC. et al.
`
`Case No.
`Title
`
`represented that it would amend its complaint and attach a copy of defendants’ infringing
`work within twenty-one days.
` In its third amended complaint, plaintiff still did not attach a copy of defendants’
`infringing work. Instead, plaintiff amended some of its allegations. Specifically, in its
`Third Amended Complaint, plaintiff now claims that defendants copied plaintiff’s
`advertisement, and
`plaintiff is informed and believes, and thereon alleges that the information
`surrounding the expression defendants copied from the plaintiff (the balance of the
`advertisement) were intentionally unlabeled and source-ambiguous in that an
`ordinary consumer of the Product would not be able to tell, unless investigating
`closely, that the advertisement did not belong to Plaintiff.
`TAC ¶ 44. Plaintiff further alleges that defendants copied plaintiff’s work “word for
`word.” Id. ¶ 49.
`Defendants moved to dismiss the claim, arguing that plaintiff “has failed to attach
`or even describe with any specificity the purported infringement.” Mot. at 3. Defendants
`contended that they required more particularized allegations “to know whether the works
`are substantially similar.” Id.
`At oral argument, the Court inquired as to why plaintiff had once again failed to
`file the allegedly infringing work, and plaintiff responded that it would file the infringing
`work that day. Subsequently, plaintiff filed a supplemental declaration, which contained
`a copy of defendants’ allegedly infringing work. See Dkt. 40. Now in receipt of the
`allegedly infringing work, the Court finds that plaintiff’s allegations sufficiently notify
`defendants of the allegedly infringing conduct, and accordingly state a claim for
`copyright infringement. While, “[o]n a motion to dismiss, the court may decide as a
`matter of law ‘[w]hether there is sufficient objective similarity under the extrinsic test,’”
`the Court here declines to conduct this analysis. Sugarfina, Inc. v. Sweet Pete's LLC, No.
`17-CV-4456-RSWL-JEM, 2017 WL 4271133, at *7 (C.D. Cal. Sept. 25, 2017). Given
`plaintiff’s delayed filing of the allegedly infringing work, the Court finds that this issue is
`better decided on a motion for summary judgment, when the issue has been briefed.
`B.
`Plaintiff’s Claim for Counterfeiting
`In plaintiff’s sixth claim for relief, plaintiff alleges federal trademark infringement
`and counterfeiting in violation of 15 U.S.C. § 1114. The Court previously denied
`
`CV-549 (01/18)
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` CIVIL MINUTES - GENERAL
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`Page 7 of 12
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`Case 2:18-cv-02960-CAS-E Document 42 Filed 02/11/19 Page 8 of 12 Page ID #:393
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
` CIVIL MINUTES – GENERAL ‘O’
`2:18-cv-02960-CAS(Ex)
`February 11, 2019
`Date
`BOOST BEAUTY, LLC. V. WOO SIGNATURES, LLC. et al.
`
`Case No.
`Title
`
`defendants’ motion to dismiss plaintiff’s trademark infringement claim. Oct. Order at 11.
`However, the Court found that plaintiff failed to state a claim for counterfeiting. Id. at
`12.
`
`In its TAC, plaintiff alleges that “[d]efendants have adopted and used in commerce
`identical or confusingly similar versions of the Mark without Plaintiff’s consent, by way
`of using a sham copy of the Mark to sell their product.” TAC ¶ 92. Plaintiff argues that
`this states a claim for counterfeiting under the Lanham Act based on defendants alleged
`use of “an identical but unauthorized, replication of Plaintiff’s Mark to sell Defendants’
`knock-off products” by employing plaintiff’s mark as a GoogleAd word. Opp’n at 9.
`Defendants argue that plaintiff’s allegations fail to state a claim for counterfeiting.
`Mot. at 5. Defendants contend that “no factual allegations are pled to show that
`Defendants used Plaintiff’s registered trademark on [a] counterfeit product. To the
`complete contrary, the entire gravamen of the claim is that Defendants are selling a
`different, competing product under the different name ‘WooLash.’” Id. In response,
`plaintiff argues that it need not allege that “a counterfeit mark [is] affixed to a product to
`constitute counterfeiting.” Opp’n at 9.
`“Counterfeiting is the act of producing or selling a product with a sham trademark
`that is an intentional and calculated reproduction of the genuine trademark. A
`‘counterfeit mark’ is a false mark that is identical with, or substantially indistinguishable
`from, the genuine mark.” 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair
`Competition § 25:10 (5th ed. 2018) (emphasis added). A counterfeit mark for purposes
`of 15 U.S.C. § 1117(c) is “a counterfeit of a mark that is registered on the principal
`register in the United States Patent and Trademark Office for such goods or services sold,
`offered for sale, or distributed and that is in use, whether or not the person against whom
`relief is sought knew such mark was so registered.” 15 U.S.C. § 1116(d)(1)(B)(i) (West).
`“To succeed on a claim of trademark counterfeiting, Plaintiff must establish that:
`(1) Defendants intentionally used a counterfeit mark in commerce; (2) knowing the mark
`was counterfeit; (3) in connection with the sale, offer for sale, or distribution of goods;
`and (4) its use was likely to confuse or deceive.” SATA GmbH & Co. Kg v. Wenzhou
`New Century Int'l, Ltd., No. CV 15-08157-BRO (EX), 2015 WL 6680807, at *5 (C.D.
`Cal. Oct. 19, 2015) (citing State of Idaho Potato Comm'n v. G & T Terminal Pkg., Inc.,
`425 F.3d 708, 721 (9th Cir. 2005)). For the purposes of 15 U.S.C. § 1117, the Ninth
`Circuit has further required that “the mark in question be (1) a non-genuine mark
`identical to the registered, genuine mark of another, where (2) the genuine mark was
`
`CV-549 (01/18)
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` CIVIL MINUTES - GENERAL
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`Page 8 of 12
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`Case 2:18-cv-02960-CAS-E Document 42 Filed 02/11/19 Page 9 of 12 Page ID #:394
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
` CIVIL MINUTES – GENERAL ‘O’
`2:18-cv-02960-CAS(Ex)
`February 11, 2019
`Date
`BOOST BEAUTY, LLC. V. WOO SIGNATURES, LLC. et al.
`
`Case No.
`Title
`
`registered for use on the same goods to which the infringer applied the mark.” Louis
`Vuitton Malletier, S.A. v. Akanoc Sols., Inc., 658 F.3d 936, 945-46 (9th Cir. 2011)
`(emphasis added).
`At oral argument, the Court requested plaintiff to clarify in what capacity
`defendants have allegedly used plaintiff’s Mark to sell defendants’ products, and whether
`plaintiff alleges that defendants are attaching “BoostLash” to defendants’ products. As
`indicated in its brief, plaintiff confirmed that its claim is predicated on defendants’
`alleged use of plaintiff’s Mark as a GoogleAd word. Plaintiff further stated that it did not
`allege that defendants were attaching plaintiff’s Mark to defendants’ competing product.
`Plaintiff argued, however, that under Network Automation, Inc. v. Advanced Systems
`Concepts, Inc., 638 F.3d 1137 (2010), defendants’ alleged use of plaintiff’s mark as a
`search engine term gives rise to a counterfeiting claim. Plaintiff is wrong.
`Counterfeiting is “[t]he unlawful forgery, copying, or imitation of an item.”
`COUNTERFEITING, Black's Law Dictionary (10th ed. 2014). As the Ninth Circuit has
`explained, a “counterfeit is something that purports to be something that it is not.”
`United Pac. Ins. Co. v. Idaho First Nat. Bank, 378 F.2d 62, 69 (9th Cir. 1967). At the
`heart of counterfeiting, then, is a good that has been copied and which has been sold,
`offered for sale, or distributed with a counterfeit mark. Moreover, to succeed on a
`counterfeiting claim, a registered mark must have been registered with regard to “the
`same goods to which the infringer applied the mark.” Louis Vuitton Malletier, 658 F.3d
`at 945–46 (emphasis added). A defendant must allegedly have “applied the mark” to its
`product to engage in counterfeiting. See, e.g., Gibson Brands, Inc. v. John Hornby
`Skewes & Co., No. CV1400609DDPSSX, 2016 WL 7479317, at *6 (C.D. Cal. Dec. 29,
`2016) (holding that the defendant “cannot be held liable for counterfeiting [plaintiff’s]
`marks because every allegedly infringing guitar ...bears [defendant’s] trade name, and
`there is no evidence that they are counterfeits of [plaintiff’s products] body shapes or
`headstocks”); Idaho Potato Commn, 425 F.3d at 721 (affirming a finding of
`counterfeiting where the defendant purchased empty potato bags containing plaintiff’s
`marks and then packaged their own potatoes into those bags); SATA GmbH, 2015 WL
`6680807, at *5 (issuing an injunction where defendant had etched plaintiff’s mark on
`fake paint canisters). 1
`
`
`1
`Plaintiff argued that it could not be required to allege that defendant affixed
`plaintiff’s Mark to the product because, if that were the case, the holder of a service mark
`could never allege counterfeiting. Opp’n at 9. The Court finds this argument inapposite:
`
`Page 9 of 12
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` CIVIL MINUTES - GENERAL
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`Case 2:18-cv-02960-CAS-E Document 42 Filed 02/11/19 Page 10 of 12 Page ID #:395
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
` CIVIL MINUTES – GENERAL ‘O’
`2:18-cv-02960-CAS(Ex)
`February 11, 2019
`Date
`BOOST BEAUTY, LLC. V. WOO SIGNATURES, LLC. et al.
`
`Case No.
`Title
`
`Here, while plaintiff claims that defendants “sold the exact same, but competing,
`product” – namely eyelash enhancement serum—plaintiff has confirmed that it does not
`allege that defendants have applied plaintiff’s Mark to the product. TAC ¶ 43. Plaintiff’s
`claim is predicated on defendants’ alleged use of plaintiff’s mark as an internet search
`term. As a matter of law, this does not constitute counterfeiting.
`Network Automation does not hold otherwise. As this Court explained when it
`denied defendants’ motion to dismiss plaintiff’s trademark infringement claim, Network
`Automation held that “the use of a trademark as a search engine keyword that triggers the
`display of a competitor's advertisement is a ‘use in commerce’ under the Lanham Act.”
`638 F.3d at 1144. The Ninth Circuit thus recognized that a trademark infringement claim
`could be predicated on the unauthorized use of a trademark as a search engine term. Id.
`However, despite the fact that the defendant in Network Automation openly
`acknowledged that it used an exact replica of the plaintiff’s trademark as a search term
`(the term “ActiveBatch”), the Network Automation court did not suggest, much less find,
`that this conduct could give rise to a counterfeiting claim. It could give rise to a
`trademark infringement claim. “To find that anything less than an ‘identical’ or
`‘substantially indistinguishable’ product can give rise to a counterfeit claim would risk
`
`
`plaintiff is not the holder of a service mark. However, the Court notes that at least one
`out-of-circuit district court has held that there is “no statutory requirement that the
`counterfeit mark be placed on the product itself.” Tiffany & Co. v. Costco Wholesale
`Corp., 127 F. Supp. 3d 241, 255 (S.D.N.Y. 2015). That case is not binding on this Court,
`and its facts are clearly distinguishable. In Tiffany & Co., the defendant replicated
`engagement rings produced and marketed by the plaintiff, the jewelry company Tiffany’s
`& Co.. Id. The defendant then sold the rings out of a display case showcasing the
`Tiffany mark. Id. In light of this, and after finding that the defendant acted in bad faith,
`the Tiffany & Co. court found that the plaintiff established trademark counterfeiting as a
`matter of law despite the fact that the defendant had not stamped the rings themselves
`with Tiffany and Co.’s registered mark. Id. In contrast to the allegations in Tiffany &
`Co., here, plaintiff does not allege that defendants displayed plaintiff’s mark alongside
`defendants’ product as a means of “trick[ing] the consumer into believing he or she is
`getting the genuine article, rather than a ‘colorable imitation.’” Gibson Brands, 2016 WL
`7479317, at *5 (citing Gucci Am., Inc. v. Guess?, Inc., 868 F. Supp. 2d 207, 242
`(S.D.N.Y. 2012)). Plaintiff alleges that defendants purchased online search engine terms,
`which a consumer would never see.
`
`CV-549 (01/18)
`
` CIVIL MINUTES - GENERAL
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`Page 10 of 12
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`

`Case 2:18-cv-02960-CAS-E Document 42 Filed 02/11/19 Page 11 of 12 Page ID #:396
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
` CIVIL MINUTES – GENERAL ‘O’
`2:18-cv-02960-CAS(Ex)
`February 11, 2019
`Date
`BOOST BEAUTY, LLC. V. WOO SIGNATURES, LLC. et al.
`
`Case No.
`Title
`
`rendering ‘all trademark infringement claims . . . counterfeiting claims,’ and, along with
`it, open up the wider range of statutory penalties and remedies.” Gibson Brands, 2016
`WL 7479317, at *7 (C.D. Cal. Dec. 29, 2016) (citing Adams v. Grand Slam Club/Ovis,
`No. 12-CV-2938-WJM-BNB, 2013 WL 1444335, at *7 (D. Colo. Apr. 9, 2013)).
`In sum, the Court finds that plaintiff fails to state a claim for counterfeiting.
`Generally, leave to amend a complaint which has been dismissed should be freely
`granted. Fed. R. Civ. P. 15(a). However, a “court may exercise its discretion to deny
`leave to amend due to ‘undue delay, bad faith or dilatory motive on part of the movant,
`repeated failure to cure deficiencies by amendments previously allowed, undue prejudice
`to the opposing party . . . , [and] futility of amendment.’” Carvalho v. Equifax Info.
`Servs., LLC, 629 F.3d 876, 892–93 (9th Cir. 2010) (quoting Foman v. Davis, 371 U.S.
`178, 182 (1962)). In light of the fact that plaintiff has failed to state a claim for
`counterfeiting on three occasions, and in light of plaintiff’s representations that plaintiff
`does not allege that defendants applied plaintiff’s mark to their product, the Court finds it
`appropriate to deny leave to amend in this case. Accordingly, plaintiff’s counterfeiting
`claim is DISMISSED with prejudice.
`C.
`Sanctions
`In its opposition to defendants’ motion to dismiss the third amended complaint,
`
`plaintiff argues that defendants should be sanctioned, under 28 U.S.C. § 1927, because
`defendants’ motion “is not supported by evidence or law.” Opp’n at 10. Plaintiff is in
`error. Defendants’ motion cited numerous legal authorities, and defendants accurately
`recognized that plaintiff failed to timely amend its complaint with the documents
`requested by the Court. Defendants’ motion did not “unreasonably and vexatiously”
`“multipl[y] proceedings” in this case. 28 U.S.C.A. § 1927 (West). Plaintiff’s request is
`DENIED.
`//
`//
`//
`//
`
`
`CV-549 (01/18)
`
` CIVIL MINUTES - GENERAL
`
`Page 11 of 12
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`Case 2:18-cv-02960-CAS-E Document 42 Filed 02/11/19 Page 12 of 12 Page ID #:397
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
` CIVIL MINUTES – GENERAL ‘O’
`2:18-cv-029