Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA429514
`ESTTA Tracking number:
`09/08/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91192093
`Defendant
`Zero Motorcycles, Inc.
`MIKE RODENBAUGH
`RODENBAUGH LAW
`548 MARKET STREET
`SAN FRANCISCO, CA 94104
`UNITED STATES
`mike@rodenbaugh.com
`Other Motions/Papers
`Mike Rodenbaugh
`mike@rodenbaugh.com
`/Mike Rodenbaugh/
`09/08/2011
`Notice of Appeal with Attached Order.pdf ( 23 pages )(134708 bytes )
`Notice of Appeal filing receipt.pdf ( 2 pages )(42515 bytes )
`ZERO - REPLY TO TTAB re POTENTIAL APPEAL OF CIVIL ACTION No. 2.txt
`( 3 pages )(4501 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`NOTICE IS HEREBY GWEN that
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`ZERO MOWJIRCYCLES. INC.
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`the United States Cour: of Appeals for the Ninth {.‘..Ercuét from:
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`E Qrder (specify):
`Denying Leave and Dismissing Case
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`Case4:tO—cv~O129C3—SBA Docume->nt64
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`FEEedO7./“$8/11 Page1of22
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`UNITED STATES DISTRICT COURT
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`FOR THE NORTHERN DISTRICT OF CALIFORNIA
`
`OAKLAND DIVISION
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`ZERO MOTORCYCLES, INC., a Delaware
`corporation,
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`Plaintiff,
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`vs.
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`Case No: C 10-01290 SBA
`
`ORDER DENYING PLAINTIFF’S
`MOTION FOR LEAVE TO AMEND
`AND GRANTING DEFENDANTS’
`MOTION TO DISMISS
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`PIRELLI TYRE S.P.A. and PIRELLI & C.
`
`Docket 32, 33
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`S.PA.,
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`Defendants.
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`Plaintiff Zero Motorcycles, Inc., filed the instant declaratory relief action against
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`Defendants Pirelli & C.S.p.A. and Pirelli Tyre S.p.A. (collectively “Defendants”) seeking a
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`declaration that its use of the ZERO mark and ZERO—formative marks does not infringe
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`Defendants’ ZERO and ZERO—formative registered trademarks. The parties are presently
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`before the Court on: (1) Plaintiff’s Motion for Leave to File Amended Complaint, Dkt. 33;
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`and (2) Defendants’ Motion to Dismiss for Lack of Personal Jurisdiction, Dkt. 32. Having
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`read and considered the papers filed in connection with this matter and being fully
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`informed, the Court hereby DENIES Plaintiff’s motion for leave to amend and GRANTS
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`Defendants’ motion to dismiss. The Court, in its discretion, finds this matter suitable for
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`resolution without oral argument. E Fed. R. Civ. P. 78(b); N.D. Cal. Civ. L.R. 7—l(b).
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`

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`Case4:10—cv-01290-38/A Docume->nt64
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`Page.2 of22
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`I.
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`BACKGROUND
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`A.
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`FACTUAL SUMMARY
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`Plaintiff is a manufacturer of electric motorcycles, which it markets and sells in
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`“many foreign countries” under the ZERO MOTORCYCLES mark—a mark which it has
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`used since 2007. Compl. ‘][‘][ 8-9, 12. Plaintiff owns United States trademark registrations
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`for ZERO for use on electric Vehicles, namely motorcycles, and ZERO-formative marks
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`consisting of ZERO MOTORCYLES, ZERO DS, ZERO S, ZERO SS, ZERO X and ZERO
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`MX. Li. ‘]I 13. Defendants Pirelli & C.S.p.A. (“Pirelli & C.”) and Pirelli Tyre S.p.A.
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`(“Pirelli Tyre”) allegedly manufacture and sell Various products, including tires for
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`Vehicles, and own a number of trademarks which incorporate the ZERO mark. Li. ‘H 17-
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`1 8.
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`Defendant Pirelli & C. is the parent entity and 100% owner of Defendant Pirelli
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`Tyre. Giannesi Decl. ‘]I 3, Dkt. 32-1. Both entities are organized under Italian law as a
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`societa per azioni, a type of Italian corporate body, and have their principal places of
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`business in Milan, Italy. Li. ‘][‘][ 6, 12. Neither maintains any presence in California nor
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`conducts any business in the state. Li. ‘][‘][ 7-17. Though Pirelli & C. does not directly
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`transact business in California, it indirectly owns subsidiaries which do, including Pirelli
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`Tire LLC. Rosenzweig Decl. ‘]I 4, Dkt. 49-2. Specifically, at the time the Complaint was
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`filed, Pirelli Tire LLC was owned by Pirelli North America, Inc. (“Pirelli North America”),
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`which, in turn, was owned by Pirelli Tyre Holland N.V., which, in turn, was owned by
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`Pirelli Tyre, which, as noted, was owned by Pirelli & C. Li.1
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`According to Plaintiff, “[i]n March 2009, Defendants began a global campaign
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`against Plaintiff’s trademark applications by commencing a series of opposition and
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`cancellation filings against Plaintiff’s marks in the [United States Patent and Trademark
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`Office (“PTO”)], European Union and Switzerland.” Li. ‘]I 21. In particular, Plaintiff avers
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`1 Defendants indicate that as of June 1, 2010, Pirelli North America became owned
`by Pirelli Tyre, which remains owned by Pirelli & C. Second Rosenweig Decl. ‘]I 4, Dkt.
`49-2.
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`FER-;=dO7./'38/11
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`that on June 10, 2009, Defendants submitted a Combined Declaration of Use and
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`Incontestability to the PTO to ensure that their ZERO mark remained on the PTO’s
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`Principal Register. Pl.’s Opp’n to Defs.’ Mot. to Dismiss (“Pl.’s Opp’n”) at 3, Dkt. 36.2
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`The declaration claimed that the ZERO mark was in use in the United States, and attached
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`an exemplar consisting of marketing material showing a tire with the P ZERO mark. Id.;
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`Rodebaugh Decl. Ex. 1, Dkt. 37-1. Plaintiff claims that the representation of use was false
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`ostensibly because the exemplar was for the P ZERO mark, as opposed to the ZERO mark.
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`Plaintiff also points to a Notice of Opposition filed by Defendants in the PTO on
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`September 29, 2009, in response to Plaintiff’s trademark applications. Defendants’
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`opposition claimed that Plaintiff’s use of ZERO—formative marks would “be likely to cause
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`confusion, or to cause mistake, or to deceive in violation of Section 2(d), 15 U.S.C.
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`§ 1052(d).” Ld. Ex. 3 ‘]I 19. Similarly, on December 16, 2009, Defendants filed a Petition
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`for Cancellation before the PTO, which again claimed that Plaintiff’s use of ZERO-
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`formative marks was likely to cause confusion. Ld. Ex. 4 ‘]I 15, Dkt. 37-2. Plaintiff alleges
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`that Defendants’ submissions to the PTO are part of a campaign of harassment to prevent it
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`from using ZERO or ZERO—formative marks.
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`B.
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`PROCEDURAL HISTORY
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`On March 26, 2010, Plaintiff filed the instant action in this Court seeking
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`declaratory and injunctive relief. Plaintiff alleges that a justiciable controversy has arisen
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`regarding Plaintiff’s use of the ZERO mark and ZERO—formative marks by virtue of
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`Defendants’ actions before the PTO and their corresponding refusal to discuss settlement.
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`The Complaint alleges four claims for relief, as follows: (1) a declaration of non—trademark
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`infringement; (2) a declaration of no unfair competition; (3) cancellation of United States
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`Trademark Registration No. 2749340; and (4) a permanent injunction to enjoin Defendants
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`2 Under 15 U.S.C. § 1058, a previously—registered mark is subject to cancellation in
`ten years unless the registrant files an affidavit with the PTO showing that mark is still in
`use. It was in connection with this requirement that Defendants submitted the affidavits
`referenced by Plaintiff. E Carron Decl. Ex. 5, Dkt. 50-1.
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`from further prosecuting their cancellation and opposition proceedings in the PTO, and
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`anywhere in the world.
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`In response to the Complaint, Defendants filed a motion to dismiss for lack of
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`personal jurisdiction, pursuant to Federal Rule of Civil Procedure 12(b)(2). The crux of
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`Defendants’ motion is that Defendants are Italian entities over which the Court lacks
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`general or specific jurisdiction. Pursuant to the stipulation of the parties, the Court
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`subsequently granted Plaintiff leave to conduct jurisdictional discovery and denied
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`Defendants’ motion to dismiss without prejudice. Dkt. 25. After Plaintiff conducted its
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`jurisdictional discovery, Defendants renewed their motion to dismiss. Dkt. 32.
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`Two days after Defendants filed their renewed motion to dismiss, Plaintiff separately
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`filed a motion for leave to file an amended complaint. Dkt. 33. Plaintiff seeks to join
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`Pirelli North America and Pirelli Tire LLC, both of which are United States subsidiaries of
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`Defendants, as party—defendants. In addition, Plaintiff requests leave to include three
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`additional claims for:
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`(1) disparagement under the Lanham Act § 43(a); (2) unfair
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`competition under California Business & Professions Code § 17200; and (3) trade libel
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`under California law. E Pl.’s Proposed First Am. Compl. (“FAC”) (Ex. A to Pl.’s Mot.
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`for Leave to Amend). Defendants oppose Plaintiff’s motion on the ground that the
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`proposed amendments are futile and that there is no basis for joining Pirelli North America
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`and Pirelli Tire LLC in this action. Dkt. 54. Defendants also claim that Plaintiff has
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`unduly delayed in seeking leave to amend.
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`II.
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`PLAINTIFF’S MOTION FOR LEAVE TO AMEND
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`A.
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`LEGAL STANDARD
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`Rule 15(a)(2) provides that leave to amend a complaint should be “freely given
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`when justice so requires.” Fed. R. Civ. P. 15(a)(2); Moss v. United States Secret Serv., 572
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`F.3d 962, 972 (9th Cir. 2009). Rule 15 “is to be applied with extreme liberality.”
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`Eminence Capital, LLC v. Aspeon, Inc., 316 F.3d 1048, 1051 (9th Cir. 2003). “Four
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`factors are commonly used to determine the propriety of a motion for leave to amend.
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`These are: bad faith, undue delay, prejudice to the opposing party, and futility of
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`FER-;=dO7./'38/11 Pagefi of22
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`amendment.” Ditto V. McCurdy, 510 F.3d 1070, 1079 (9th Cir. 2007) (citations and
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`internal quotation marks omitted). The party opposing the amendment carries the burden
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`of showing why leave to amend should not be granted. DCD Programs, Ltd. V. Leighton,
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`833 F.2d 183, 187 (9th Cir. 1987). The decision to grant or deny a request for leave to
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`amend rests in the discretion of the trial court. E California V. Neville Chem. Co., 358
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`F.3d 661, 673 (9th Cir. 2004).
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`Defendants oppose Plaintiff’s motion on the ground that the joinder of new claims
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`and parties is futile. Leave to amend under Rule 15 (a) “need not be granted when the
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`proposed amendment is futile.” Nordyke v. King, —— F.3d ——, 2011 WL 1632063, at *8 n.12
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`(9th Cir. May 2, 2011). “A proposed amended complaint is futile if it would be
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`immediately subject to dismissal.” I_d (internal quotation marks omitted). The test for
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`assessing futility is “identical” to the test applied on a Rule 12(b)(6) motion. Li. Thus, in
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`assessing the allegations of a proposed pleading, the Court “accept[s] as true all well-
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`pleaded allegations of material fact, and construe[s] them in the light most favorable to the
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`non—moving party.” Daniels—Hall v. National Educ. Ass’n, 629 F.3d 992, 998 (9th Cir.
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`2010). The facts alleged must be sufficient to push the claims “across the line from
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`conceivable to plausible[.]” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 557 (2007)). In
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`addition, the allegations must “give the defendant fair notice of what the
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`claim is and the
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`grounds upon which it rests.” Li. at 555 (internal quotations and citation omitted).
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`“Threadbare recitals of the elements of a cause of action, supported by mere conclusory
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`statements, do not suffice.” Ashcroft v. Iqbal, 129 S.Ct. 1937, 1949 (2009).
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`B.
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`PROPOSED CLAIMS
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`1.
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`Disparagement under the Lanham Act
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`Plaintiff first proposes joining a claim for disparagement under the Lanham Act.
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`The Lanham Act allows for product disparagement claims in cases in which there is a
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`“misrepresentation of ‘the nature, characteristics, qualities, or geographic origin’ of
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`‘another person’s goods, services, or commercial activities.’” Li at 903 (quoting 15 U.S.C.
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`§ 1125(a)(1)(B)). To state a claim for product disparagement, the plaintiff must allege
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`File-;=dO7./'38/11 Pageéi (33222
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`that: (1) that the defendant made a false or misleading statement offact in commercial
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`advertising or promotion about the plaintifi”’s goods or services; (2) that the statement
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`actually deceives or is likely to deceive a substantial segment of the intended audience;
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`(3) that the deception is material in that it is likely to influence purchasing decisions;
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`(4) that the defendant caused the statement; and (5) that the statement results in actual or
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`probable injury to the plaintiff. E Zenith Elects. Corp. V. Exzec, Inc., 182 F.3d 1340,
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`1348 (Fed. Cir. 1999); see also Southerland Sod Farms V. Stover Seed Co., 108 F.3d 1134,
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`1139 (9th Cir. 1997) (reciting same elements for a Lanham Act false advertising claim).3
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`The facts alleged in Plaintiff’s proposed amended complaint fail to state a plausible
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`claim for product disparagement under the Lanham Act. Plaintiff predicates its proposed
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`claim on “two public, false assertions of fact that disparage [Plaintiff] and its products and
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`marks: 1) Pirelli has sworn that it has used a ZERO mark in US [sic] commerce, identical
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`to Plaintiff’s ZERO mark; and 2) Pirelli has sworn that [Plaintiff] is confusing relevant
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`consumers and diluting Pirelli’s allegedly famous ZERO—formative marks. . . .” E Pl.’s
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`Reply at 9, Dkt. 56. These allegations fail to state a claim for product disparagement
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`because the alleged misstatements were made to the PTO, and not in the course of
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`commercial advertising or promotion. In addition, the alleged misstatements pertain to
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`Plaintiff’s marks, not its goods or services. E Freecycle Network, 505 F.3d at 904.
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`Accordingly, Plaintiff’s claim for product disparagement under the Lanham Act is futile,
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`since it “would be immediately subject to dismissal.” Nordyke, 2011 WL 1632063, at *8
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`n. 12.
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`2.
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`Unfair Competition Law
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`Next, Plaintiff seeks to add a claim for violation of California’s Unfair Competition
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`Law (“UCL”), which makes actionable any “unlawful, unfair or fraudulent business act or
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`3 It is not entirely clear from the proposed amended complaint whether Plaintiff is
`attempting to allege that Defendants disparaged Plaintiff’s products or its marks—or both.
`See FAC ‘][‘][ 65, 68. To the extent that Plaintiff is purporting to state a claim for trademark
`disparagement, the Ninth Circuit has held that “no such claim exists under the Lanham
`Act.” Freecycle Network, Inc. v. Oey, 505 F.3d 898, 904 (9th Cir. 2007). Therefore, the
`Court considers whether Plaintiff has stated a claim for product disparagement.
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`practice.” Cal. Bus. & Prof. Code § 17200; see Birdsong V. Apple, Inc., 590 F.3d 955, 959
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`(9th Cir. 2009) (“Each prong of the UCL is a separate and distinct theory of liability.”). In
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`its proposed claim under the UCL, however, Plaintiff does not specifically identify the
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`conduct that allegedly violates the UCL. Instead, Plaintiff merely incorporates “paragraphs
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`1-71 of this Complaint,” and asserts that the facts alleged therein constitute “unlawful,
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`unfair and/or fraudulent activities under Cal. Bus. and Prof. Code § 17200 and/or common
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`law.” FAC ‘][‘][ 72-73. This Court has previously found that this type of vague, broad and
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`conclusory pleading is insufficient to state a claim for relief. E Rashdan v. Geissberger,
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`No. C 10-00634 SBA, 2011 WL 197957, at *10 (N.D. Cal. Jan. 14, 2011) (“Incorporating
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`the preceding 188 paragraphs of the Complaint fails to provide Defendants with ‘fair
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`notice’ of the basis of Plaintiff’s []claim.”). Nevertheless, the allegations set forth in
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`paragraphs one through seventy-one of the proposed amended complaint are insufficient to
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`state a claim under any of the three prongs of the UCL.
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`a)
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`Unlawful
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`“[A]n action based on [the UCL] to redress an unlawful business practice ‘borrows’
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`violations of other laws and treats these violations .
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`.
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`. as unlawful practices, independently
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`actionable under section 17200 et seq. and subject to the distinct remedies provided
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`thereunder.” Farmers Ins. Exch. v. Super. Court, 2 Cal.4th 377, 383 (1992) (quotations and
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`citations omitted); Chabner v. United Omaha Life Ins. Co., 225 F.3d 1042, 1048 (9th Cir.
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`2000). “[A] UCL claim of any kind “must identify the particular section of the statute that
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`was violated, and must describe with reasonable particularity the facts supporting the
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`violation.” Baba v. Hewlett-Packard Co., No. C 09-05946 RS, 2010 WL 2486353, at *6
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`(N.D. Cal. June 16, 2010).
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`In his proposed amended complaint, Plaintiff fails to cite any particular statute or
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`allege any particular facts demonstrating that Defendants engaged in unlawful activity.
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`Nonetheless, in its reply brief, Plaintiff attempts to clarify that Defendants’ statements to
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`the PTO amount to violations of the Lanham Act and constitute perjury under federal law.
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`Pl.’s Reply at 12. Setting aside that Plaintiff’s argument is improperly presented for the
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`Case4:10—cv~O129C3—SBA Documentm FER-;=dO7./'38/11 Page8 of22
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`first time in its reply, see Zamani V. Carnes, 491 F.3d 990, 997 (9th Cir. 2007), in neither
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`the proposed pleading nor its reply does Plaintiff specifically identify the provision of the
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`Lanham Act that Defendants allegedly violated. The absence of such allegations is fatal to
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`a claim brought under the unlawful prong of the UCL. E Baba, 2010 WL 2486353, at *6.
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`Nor does Plaintiff allege facts showing a “willful intent to provide false testimony,”
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`which is required to sustain a claim for perjury. E United States V. Armstrong, 620 F.3d
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`1172, 1176 (9th Cir. 2010). Plaintiff avers that Defendants lied to the PTO about the
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`ZERO mark being used in commerce ostensibly because the exemplar attached to
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`Defendants’ Combined Declaration of Use and Incontestability consisted of a print
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`advertisement for a tire using the P ZERO mark, as opposed to the ZERO mark.
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`Rodenbaugh Decl. Ex. 1. However, the fact that Defendants submitted the allegedly false
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`statement with the exemplar undermines any assertion of a willful intent to deceive the
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`PTO, since the PTO obviously could assess the accuracy of Defendants’ representation by
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`comparing it to the exemplar. Stated another way, if Defendants’ intent were to deceive the
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`PTO, it would be illogical for them to have attached an exemplar which ostensibly
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`contradicts their representation. As for Defendants’ other statement regarding the
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`likelihood of customer confusion, such statement was not presented under penalty of
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`perjury. Rather, that allegation was made by Defendants’ attorneys in a pleading submitted
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`to the PTO. Ld. Ex. 3 ‘]I 9. In sum, the Court finds that Plaintiff has failed to allege a
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`plausible claim for engaging in an unlawful business practice under the UCL.
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`b)
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`Unfair
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`An unfair business practice under the UCL is “one that either offends an established
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`public policy or is immoral, unethical, oppressive, unscrupulous, or substantially injurious
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`to consumers.” McDonald v. Coldwell Banker, 543 F.3d 498, 506 (9th Cir. 2008); Glenn
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`K. Jackson Inc. v. Roe, 273 F.3d 1192, 1203 (9th Cir. 2001). Such a claim requires a
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`plaintiff to “tether” its allegation of unfair competition to a constitutional or statutory
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`provision or regulation carrying out such a statutory policy. E Ferrington v. McAfee,
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`Inc., No. C 10-1455 LHK, 2010 WL 3910169, at *11—13 (N.D. Cal. Oct. 5, 2010) (citing
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`Case4:tO—cv~O129C3—SBA Docume->nt64
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`FER-;=dO7./'38/11
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`Pagefié of22
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`Lozano V. AT & T Wireless SerVs., 504 F.3d 718 (9th Cir. 2007)); see also Cel—Tech
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`Comms. V. L.A. Cellular Tel. Co., 20 Cal.4th 163, 185 (1999) (tethering test applies in
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`actions brought by a business competitor challenging anti—competitiVe practices).
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`Though not entirely clear from the proposed pleading, Plaintiff appears to allege that
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`Defendants acted “unfairly” by engaging in a concerted effort before the PTO and other
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`fora to challenge Plaintiff’s use of the ZERO mark. ’ FAC ‘][‘][ 40-44. However,
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`there are no allegations that tether such claim to any constitutional, statutory or regulatory
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`proVision. To the contrary, it is clear from the allegations presented that Defendants did
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`little more that seek to protect its intellectual property rights with respect to its use of the
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`ZERO mark. Tellingly, Plaintiff has failed to cite to any decisional authority holding that
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`liability under the UCL may be predicated upon such conduct.4 The Court therefore finds
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`no legal or factual basis for Plaintiff’s proposed claim for Violation of the unfair prong of
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`the UCL.
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`c)
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`Fraudulent
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`Conduct is considered “fraudulent” under the UCL if the conduct is “likely to
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`deceive.” Morgan V. AT & T Wireless SerVs., Inc., 177 Cal.App.4th 1235, 1254 (2009).
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`Although a UCL claim need not plead the elements of common law fraudulent deception, it
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`must allege the existence of a duty to disclose, Berryman V. Merit Prop. Mgmt., Inc., 152
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`Cal.App.4th 1544, 1557 (2007), as well as reliance, In re Tobacco II Cases, 46 Cal.4th 298,
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`328 (2009). In addition, the fraudulent conduct must be alleged with particularity under
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`Rule 9(b). E Kearns V. Ford Motor Co., 567 F.3d 1120, 1125 (9th Cir. 2009) (“we haVe
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`specifically ruled that Rule 9(b)’s heightened pleading standards apply to claims for
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`Violations of the CLRA and UCL.”). In the instant action, Plaintiff’s proposed UCL claim
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`4 In its reply, Plaintiff cites to seVeral district court decisions emanating from outside
`the Ninth Circuit for the proposition that groundless legal and administratiVe actions may
`constitute unfair competition. Pl.’s Reply at 13. The allegations of the proposed pleading
`fail to demonstrate that Defendants undertook friVolous or malicious legal action. In
`addition, because none of those cases inVolVed a claim under California’s UCL or inVolVed
`circumstances analogous to those at issue, none of those cases is germane to the matter
`before the Court.
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`fails to allege any facts demonstrating that the public was deceived, that Defendants
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`Violated any duty to disclose, or that any person relied on Defendants’ alleged
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`misrepresentations. Plaintiff’s wholly Vague assertions of fraudulent conduct are
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`insufficient to establish a plausible claim. E Twombly, 550 U.S. at 557.
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`3.
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`Trade Libel
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`Plaintiff’ third and final proposed claim is for trade libel. In California, a
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`disparaging statement about a competitor’s product that causes the competitor to suffer
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`pecuniary damages is actionable as trade libel. E Microtec Research Inc. V. Nationwide
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`Mut. Ins. Co., 40 F.3d 968, 972-73 (9th Cir. 1994). To state a claim for trade libel, a
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`plaintiff must allege facts demonstrating a “(1) publication, (2) which induces others not to
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`deal with plaintiff, and (3) special damages.” Aetna Cas. and Sur. Co. Inc. V. Centennial
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`Ins. Co., 838 F.2d 346, 351 (9th Cir. 1998). To properly allege damages, the pleader must
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`specifically identify the customers or transactions lost as a result of the disparagement; a
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`general decline in business will not suffice. E Passport Health, Inc. V. TraVel Med, Inc.,
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`No. 2:09—cV—01753—GEB—JFM, 2009 WL 3824743, at *5 (E.D. Cal. NoV. 16, 2009).
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`Plaintiff has failed to allege sufficient facts to sustain a claim for trade libel. First,
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`Plaintiff has failed to allege any false or disparaging statements regarding Plaintiff’s
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`property. Instead, Plaintiff has simply alleged that Defendants made false statements to the
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`PTO regarding the similarity of their respectiVe marks. Such a statement does not impugn
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`the quality or character of Plaintiff’s motorcycles or any of its other products. There also
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`are no facts alleged that Defendants’ statements caused others not to “deal with” Plaintiff.
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`Lastly, Plaintiff has failed to identify any particular customers or transactions lost as a
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`result of Defendants’ conduct. In short, Plaintiff has failed to allege sufficient facts to state
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`a plausible claim for trade libel. The Court therefore denies Plaintiff’s request for leaVe to
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`amend to add a claim for trade libel.
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`C.
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`PROPOSED PARTIES
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`Finally, Plaintiff seeks to join United States subsidiaries, Pirelli Tire LLC and its
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`parent entity, Pirelli North America, as party—defendants in this action. Without citing any
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`legal authority or providing any reasoned analysis, Plaintiff summarily asserts that these
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`subsidiaries should be joined because they “conspired and acted in concert with Defendants
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`to obstruct Plaintiff’s attempts to register and secure its trademark rights.” Pl.’s Mot. at 4.
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`Yet, the proposed amended complaint is devoid of any factual allegations which support
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`such a claim. Nor are there any allegations that either had any involvement with
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`Defendants’ filings with the PTO which form the basis of Plaintiff’s claims. Because
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`Plaintiff has failed to aver any factual or legal basis for joining Pirelli Tire LLC and Pirelli
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`North America, the Court denies Plaintiff’s request to join them as parties to this action.
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`D.
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`CONCLUSION
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`The Court finds that the joinder of additional claims and parties in this action is not
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`warranted. Plaintiff’s proposed claims for disparagement under the Lanham Act, unfair
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`competition and trade libel lack merit, and Plaintiff has failed to articulate any cognizable
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`claims against Pirelli Tire LLC and Pirelli North America. In addition, the Court is
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`persuaded by Defendants’ contention that Plaintiff has engaged in undue delay. The “facts”
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`underlying Plaintiff’s proposed claims were available to Plaintiff when it initiated this
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`lawsuit in 2010. Yet, Plaintiff fails to explain why it waited until over a year after filing
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`suit to seek the joinder of these claims and parties. Thus, the Court, in its discretion, denies
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`Plaintiff’s motion for leave to amend on the grounds of futility and undue delay. The
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`Court now turns to Defendants’ motion to dismiss for lack of personal jurisdiction.
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`E)ocument64
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`III. DEFENDANTS’ MOTION TO DISMISS FOR LACK OF PERSONAL
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`JURISDICTION
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`A.
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`LEGAL STANDARD
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`District courts have the authority to dismiss an action for lack of personal
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`jurisdiction. Fed. R. Civ. P. 12(b)(2). “Where, as here, the existence of personal
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`jurisdiction is challenged and the defendant appears specially to contest its presence in the
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`jurisdiction, the plaintiff has the burden to come forward with some evidence to establish
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`jurisdiction.” Dist. Council No. 16 of Int’l Union of Painters & Allied Trades V. B & B
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`Glass Inc., 510 F.3d 851, 855 (9th Cir. 2007). “The court may consider evidence presented
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`in affidavits to assist it in its determination and may order discovery on the jurisdictional
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`issues.” E Doe v. Unocal Corp., 248 F.3d 915, 922 (9th Cir. 2001). “When a district
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`court acts on a defendant’s motion to dismiss without holding an evidentiary hearing, the
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`plaintiff need make only a prima facie showing of jurisdictional facts to withstand the
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`motion to dismiss.” Li. (citing Ballard v. Savage, 65 F.3d 1495, 1498 (9th Cir. 1995)). The
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`Court accepts as true any uncontroverted allegations in the complaint and resolves any
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`conflicts between the facts contained in the parties’ evidence in the plaintiff’s favor.
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`Glencore Grain Rotterdam B.V. v. Shivnath Rai Harnarain Co., 284 F.3d 1114, 1119 (9th
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`Cir. 2002). However, for personal jurisdiction purposes, a court “may not assume the truth
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`of allegations in a pleading which are contradicted by affidavit.” Alexander v. Circus
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`Circus Enters. Inc., 972 F.2d 261, 262 (9th Cir. 1992) (internal quotations omitted).
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`Personal jurisdiction over a nonresident defendant is analyzed under a two—part test.
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`Chan v. Soc’y Expeditions, Inc., 39 F.3d 1398, 1404 (9th Cir. 1994). First, the exercise of
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`jurisdiction must satisfy the requirements of the applicable state long—arm statute. Ld.
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`Because California’s long—arm statute, Cal. Civ. Proc. Code § 410.10, extends jurisdiction
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`to the limit of federal due process, the Court need only analyze the second part of the test.
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`E Glencore Grain Rotterdam B.V. v. Shivnath Rai Harnarain Co., 284 F.3d 1114, 1123
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`(9th Cir. 2002).
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`Due process requires that a defendant have sufficient “minimum contacts” with the
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`forum state. Int’l Shoe Corp. V. Washington, 326 U.S. 310, 316 (1945); Burger King Corp.
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`V. Rudzewicz, 471 U.S. 462, 474 (1985). The minimum contacts must be such that a
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`defendant “should reasonably anticipate being haled into court” in the forum state. World-
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`Wide Volkswagen Corp. V. Woodson, 444 U.S. 286, 297 (1980). Under a minimum
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`contacts analysis, jurisdiction may either be “general” or “specific.” Doe, 248 F.3d at 923.
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`General jurisdiction depends on the defendant’s “substantial, continuous and systematic”
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`contacts with the forum, “even if the suit concerns matter not arising out of his contacts
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`with the forum.” Glencore, 284 F.3d at 1123. Specific jurisdiction exists “where the cause
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`of action arises out of or has a substantial connection to the defendant’s contacts with the
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`forum.” Li. Here, Plaintiff claims that the Court has both general and specific personal
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`jurisdiction over Defendants.
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`B.
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`GENERAL JURISDICTION
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`1.
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`Continuous and Systematic Contacts
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`General jurisdiction exists when a defendant maintains “continuous and systematic”
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`contacts with the forum state, even if the cause of action has no relation to those contacts.
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`Helicopteros Nacionales de Colombia, S.A. V. Hall, 466 U.S. 408, 414 (1984). The
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`standard for establishing general jurisdiction is high, and requires that a defendant’s
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`contacts be the “kind of activity that approximates physical presence within the state’s
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`borders.” Bancroft & Masters v. Augusta Nat’l Inc., 223 F.3d 1082, 1086 (9th Cir. 2000)
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`(emphasis added). The requisite showing of personal jurisdiction is heightened where, as
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`here, the defendants are foreign domiciles. Rano v. Sipa Press, Inc., 987 F.2d 580, 588 (9th
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`Cir. 1993) (“litigation against an alien defendant requires a higher jurisdictional barrier
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`than litigation against a citizen from a sister state.”); see also Asahi Metal Indus. Co. v.
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`Superior Court, 480 U.S. 102, 115 (1987) (“[g]reat care and reserve should be exercised
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`when extending our notions of personal jurisdicti