Case 3:23-cv-00914-SI Document 18 Filed 05/31/23 Page 1 of 5
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`DIEN LE,
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`Plaintiff,
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`v.
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`TRINH NGOC HUYNH, et al.,
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`Case No. 23-cv-00914-SI
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`ORDER RE MOTION TO DISMISS
`AND MOTION FOR SANCTIONS
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`Re: Dkt. No. 11
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`Defendants.
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`Before the Court is defendants’ motion to dismiss and for monetary sanctions in the amount
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`of $5,000. Dkt. No. 11. Pursuant to Civil Local Rule 7-1(b), the Court finds this matter appropriate
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`for resolution without oral argument and VACATES the hearing scheduled for June 2, 2023. For
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`the reasons set out below, the motion to dismiss is GRANTED IN PART. The motion for sanctions
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`is DENIED.
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`Plaintiff’s allegations are as follows. Plaintiff owns Hue Restaurant, which is located in a
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`BACKGROUND
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`shopping center in San Jose, California, and serves Vietnamese food. Dkt. No. 1, Complaint, at 2–
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`3. Plaintiff owns a valid copyright on his menu. Id. at 3. Plaintiff’s former employee, Trinh Ngoc
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`Huynh, has opened a competing restaurant called Huynh Dining across the street from plaintiff. Id.
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`at 3. Plaintiff alleges defendants’ restaurant has “a confusingly similar name and [the] same
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`offerings.” Id. Plaintiff alleges defendants’ restaurant “features an almost identical menu to
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`Plaintiff’s copyrighted Hue Restaurant menu.” Id.
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`Plaintiff sued on March 1, 2023, alleging copyright infringement, infringement under the
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`Lanham Act, unfair competition under the Lanham Act, and unfair competition under the California
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`Case 3:23-cv-00914-SI Document 18 Filed 05/31/23 Page 2 of 5
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`Business and Professions Code. Id. at 4–7. On March 13, 2023, this Court denied plaintiff’s motion
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`for a temporary restraining order that would prevent defendants from using plaintiff’s menu or using
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`the “Hue Restaurant” mark or any mark or design likely to cause confusion. Dkt. No. 10; see Dkt.
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`No. 9 (motion for temporary restraining order).
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`Defendants now move to dismiss plaintiff’s complaint and seek $5,000 in sanctions. Dkt.
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`No. 11. Defendants argue that plaintiff has no registered trademark or copyright and brought his
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`suit without a good faith basis. Id. at 2.
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`LEGAL STANDARD
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`Under Federal Rule of Civil Procedure 12(b)(6), a district court must dismiss a complaint if
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`it fails to state a claim upon which relief can be granted. To survive a Rule 12(b)(6) motion to
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`dismiss, the plaintiff must allege “enough facts to state a claim to relief that is plausible on its face.”
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`Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). This “facial plausibility” standard requires
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`the plaintiff to allege facts that add up to “more than a sheer possibility that a defendant has acted
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`unlawfully.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). While courts do not require “heightened
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`fact pleading of specifics,” a plaintiff must allege facts sufficient to “raise a right to relief above the
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`speculative level.” Twombly, 550 U.S. at 555, 570.
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`In deciding whether to grant a motion to dismiss, the Court must assume the plaintiff's
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`allegations are true and must draw all reasonable inferences in his favor. See Usher v. City of Los
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`Angeles, 828 F.2d 556, 561 (9th Cir. 1987). However, the Court is not required to accept as true
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`“allegations that are merely conclusory, unwarranted deductions of fact, or unreasonable
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`inferences.” In re Gilead Scis. Sec. Litig., 536 F.3d 1049, 1055 (9th Cir. 2008). A court may
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`“consider certain materials—documents attached to the complaint, documents incorporated by
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`reference in the complaint, or matters of judicial notice—without converting the motion to dismiss
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`into a motion for summary judgment.” U.S. v. Ritchie, 342 F.3d 903, 908 (9th Cir. 2003).
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`Dismissal can be granted with or without leave to amend. Leave to amend should be granted
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`unless the court “determines that the pleading could not possibly be cured by the allegation of other
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`facts.” Lopez v. Smith, 203 F.3d 1122, 1127 (9th Cir. 2000) (quoting Doe v. United States, 58 F.3d
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`Case 3:23-cv-00914-SI Document 18 Filed 05/31/23 Page 3 of 5
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`494, 497 (9th Cir. 1995)).
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`A.
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`Copyright Infringement
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`DISCUSSION
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`To state a claim for copyright infringement, a plaintiff must show both that the plaintiff owns
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`a valid copyright and that the defendant copied protected aspects of the work. See Skidmore as Tr.
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`for Randy Craig Wolfe Tr. v. Led Zeppelin, 952 F.3d 1051, 1064 (9th Cir. 2020). Defendants argue
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`that plaintiff has failed to plead ownership of a valid copyright because plaintiff attached to the
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`Complaint a copyright application, not a registration. Dkt. No. 11-1 at 3. Plaintiff argues that this
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`is irrelevant because a copyright exists upon a work’s creation. Dkt. No. 13 at 2.
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`It is true that upon registration of a copyright, “a copyright owner can recover for
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`infringement that occurred both before and after registration.” Fourth Est. Pub. Benefit Corp. v.
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`Wall-Street.com, LLC, 139 S. Ct. 881, 887 (2019). The author of a work gains exclusive rights upon
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`the work’s creation. Id. at 887. However, a copyright claimant must generally comply with the
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`registration requirements of 17 U.S.C. § 411(a) before he may pursue an infringement claim in court.
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`Id. Thus, “registration is akin to an administrative exhaustion requirement that the owner must
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`satisfy before suing to enforce ownership rights.” Id. In Fourth Estate, the Supreme Court clarified
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`that a lawsuit can be brought “only when the Copyright Office grants registration,” not when an
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`owner submits a completed application. Id. at 888.
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`Plaintiff attached to his complaint as Exhibit A copyright application, not a copyright
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`registration. Dkt. No. 1, Ex. A. This is not sufficient under Fourth Estate. Because plaintiff has
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`failed to adequately plead that registration has been made, his claim for copyright infringement is
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`dismissed.
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`B.
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`Trademark Infringement
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`Defendants also move to dismiss plaintiff’s claims for trademark infringement. Dkt. No.
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`11-1 at 4. Plaintiff has not pled a registered trademark. See Dkt. No. 1. To establish infringement
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`of an unregistered trademark, a plaintiff must show that the mark “(1) is nonfunctional; (2) is either
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`Case 3:23-cv-00914-SI Document 18 Filed 05/31/23 Page 4 of 5
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`inherently distinctive or has acquired a secondary meaning; and (3) is likely to be confused with
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`[the competitor’s] products by members of the consuming public.” Int’l Jensen, Inc. v. Metrosound
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`U.S.A., Inc., 4 F.3d 819, 823 (9th Cir. 1993). This test is the same as the test for trade dress. Id.
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`Defendants first argues that plaintiff “cannot demonstrate that Hue restaurant is a registrable
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`mark” because Hue is the name of a city in central Vietnam. Dkt. No. 11-1 at 4–5. Descriptive
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`terms “describe a person, a place or an attribute of a product.” Japan Telecom, Inc. v. Japan Telecom
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`Am. Inc., 287 F.3d 866, 872 (9th Cir. 2002). A mark will generally not be registrable if it is
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`“primarily geographically descriptive.” 15 U.S.C. § 1052(e)(2). But a trademark that incorporates
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`a geographic term may still be enforceable. See Comm. for Idaho's High Desert, Inc. v. Yost, 92
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`F.3d 814, 821 (9th Cir. 1996) (upholding district court’s conclusion that “Committee for Idaho’s
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`High Desert” mark is “not primarily geographically descriptive” even though “Idaho high desert” is
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`a geographic term”). A mark must be evaluated as a whole. Id. This determination is a question of
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`fact and is premature at the motion to dismiss stage. See id. (applying clear error standard); see also
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`Stuhlbarg Int’l Sales Co. v. John D. Brush & Co., 240 F.3d 832, 840 (9th Cir. 2001) (“Whether a
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`mark is generic is a question of fact.”).
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`Even if the mark itself is generic, it may be enforceable if it has acquired secondary meaning.
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`Levi Strauss & Co. v. Blue Bell, Inc., 632 F.2d 817, 820 (9th Cir. 1980). This, too, is a question of
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`fact. Id. at 821. Defendants have therefore failed to show that plaintiff’s trademark is invalid as a
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`matter of law.
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` Next, defendants argue that even if the mark were enforceable, plaintiff cannot show a
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`likelihood of confusion. Dkt. No. 11-1 at 5–6. Defendants point to the Court’s denial of plaintiff’s
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`motion for a preliminary injunction, in which the Court noted that the names of the parties’
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`restaurants are “distinct” and the designs of the logos are not similar. Id. at 5; see Dkt. No. 10 at 3.
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`But here, too, defendants have failed to show that plaintiff’s claim fails as a matter of law. Plaintiff
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`has pled that defendants’ use of plaintiff’s mark has confused customers and continues to do so.
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`Dkt. No. 1 at 6. Plaintiff’s pleadings allege facts sufficient to “raise a right to relief above the
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`speculative level.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007).
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`Northern District of California
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`Case 3:23-cv-00914-SI Document 18 Filed 05/31/23 Page 5 of 5
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`C.
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`Other Claims
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`Defendants argue that if the federal law claims are dismissed, the Court lacks supplemental
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`jurisdiction over the state law claims. Dkt. No. 11-1 at 6. This argument rests on the assumption
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`that the Court will dismiss the federal law claims. Similarly, defendants argue that the state law
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`claims fail because there are no valid copyright or trademark claims. Dkt. No. 11-1 at 6–7.
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`However, for the reasons explained above, the Court finds that plaintiff has adequately pled his
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`Lanham Act claims. Because defendants’ arguments are dependent on dismissal of the federal
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`claims, the arguments fail.
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`D.
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`Sanctions
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`Defendants ask that the Court award $5,000 in estimated attorney’s fees as a sanction against
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`plaintiff’s conduct in bringing this complaint. Dkt. No. 11-1 at 7–8. Defendants’ only basis for
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`asserting bad faith is that this Court denied plaintiff’s motion for a temporary restraining order and
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`defense counsel told plaintiff’s counsel that it would seek sanctions if plaintiff continued to
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`prosecute the case. Id. at 7. This is not sufficient to show bad faith. Defendants’ motion for
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`sanctions is DENIED.
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`For the foregoing reasons, defendants’ motion to dismiss is GRANTED IN PART.
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`CONCLUSION
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`Plaintiff’s first cause of action is DISMISSED with leave to amend. If plaintiff wishes to amend
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`the complaint, he must do so no later than July 3, 2023. With respect to the remaining claims,
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`the motion to dismiss is DENIED. Defendants’ motion for sanctions is DENIED.
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`IT IS SO ORDERED.
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`Dated: May 31, 2023
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`______________________________________
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`SUSAN ILLSTON
`United States District Judge
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