Kaia Foods, Inc. v. Bellafiore, Case No. 14–cv–01708–JCS

• Decision Date: 03 October 2014
• Docket Number: Case No. 14–cv–01708–JCS
• Citation: 70 F.Supp.3d 1178
• Court: U.S. District Court — Northern District of California
• Parties: Kaia Foods, Inc., Plaintiff, v. T.J. Bellafiore, Defendant.

70 F.Supp.3d 1178

Kaia Foods, Inc., Plaintiff

v.T.J. Bellafiore, Defendant.

Case No. 14–cv–01708–JCS

United States District Court, N.D. California.

Signed October 3, 2014

Michael Lawrence Rodenbaugh, Marie Elizabeth Richmond, Rodenbaugh Law, San Francisco, CA, for Plaintiff.

Jeffrey Andrew Cohen, John Michael Begakis, Cohen and Richardson, Los Angeles, CA, for Defendant.

ORDER GRANTING DEFENDANT'S MOTION TO TRANSFER OR DISMISS

Re: Docket No. 14

JOSEPH C. SPERO, United States Magistrate Judge

I. INTRODUCTION

Defendant T.J. Bellafiore, an individual, brings a Motion to Dismiss for Lack of Venue, or, in the Alternative, to Transfer Venue (“Motion”) in this trademark infringement action, asserting that venue in this District is improper and that the action should have been brought in the Central District of California. The parties have consented to the jurisdiction of the undersigned United States Magistrate Judge pursuant to 28 U.S.C. § 636(c). For the reasons stated below, the Motion is GRANTED and the action is transferred to the Central District of California.

II. BACKGROUND

A. Complaint

Plaintiff Kaia Foods, Inc. (“Kaia”) is based in Oakland, California. Complaint ¶ 4. Kaia and its predecessor-in-interest, Alive & Radiant Foods, “produce and sell healthy, organic snacks, including air-dried, organic vegetable chips.” Id . ¶ 6. Plaintiff contends it holds a common-law trademark for KALE IN A KRUNCH and KALE KRUNCH, which it refers to collectively as the “KALE KRUNCH trademark.” Plaintiff's Opposition to Defendant's Motion to Dismiss (“Opposition”) at 2. In particular, Plaintiff alleges in the Complaint that “[a]s early as April 2008, Plaintiff's predecessor-in-interest launched an air-dried organic kale chip product, which it marketed under the KALE IN A KRUNCH trademark.” Complaint ¶ 7. Plaintiff further alleges that “[c]urrently, Kale Krunch is available for purchase throughout the United States at numerous health food stores, as well as online at Plaintiff's website and other third-party websites, such as Amazon.com.” Id . ¶ 8.

According to Plaintiff, Defendant Bellafiore has knowingly and in bad faith infringed Kaia's trademark. In support of its allegation that Defendant was aware of Kaia's mark, Kaia alleges that “[o]n November 7, 2008, Defendant placed an order for Plaintiff's “Kale in a Krunch” chips via Plaintiff's website; the name on the order was T.J. Bellafiore and included a corresponding email address.” Id ¶ 9. Kai further alleges that Defendant registered the domain name “kaleinyourkitchen.com” on December 4, 2010 and the domain name “Kale.krunch.com” on March 18, 2011. Id . ¶¶ 10–11. As of March 19, 2011, the Whois record for the latter domain name allegedly listed a mailing address in Culver City, California.Id . ¶ 11.

Kaia alleges that on April 15, 2011, Defendant filed a federal trademark application with the United States Patent and Trademark Office (“USPTO”) for “KALE KRUNCH” in which Defendant claimed that the mark was “in use” and that the date of first use in commerce was April 15, 2011. Id . ¶ 13. The trademark allegedly was registered on October 22, 2013 with Registration No. 4422321 and the registration lists the owner as T.J. Bellafiore, dba Kale in Your Kitchen, located in Culver City, California. Id . Kaia alleges that Defendant “copied Plaintiff's Kale Krunch recipe and has been marketing kale-based snacks under the KALE KRUNCH trademark online via the domain .” Id . ¶ 14. According to Kaia, currently that domain “resolves to a website that prominently displays the KALE KRUNCH trademark at the top of the page.” Id .

Kaia asserts claims for federal trademark infringement under the Lanham Act, 15 U.S.C. § 1125 (Claim One), violation of the Anti-cybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. § 1125(d) (Claim Two) and unfair competition under the California Business and Professions Code, §§ 17200 et seq . (Claim Four). Kaia also brings a claim seeking the cancellation of Defendant's trademark registration for the KALE KRUNCH mark on the basis that Defendant allegedly “misrepresented that no other person had the right to use the trademark” (Claim Three).

B. The Motion

Defendant brings a motion seeking dismissal of this action on the basis of improper venue or transfer to the Central District of California, pursuant to Fed. R. Civ. P. 12(b)(3) (authorizing motion to dismiss for improper venue) and 28 U.S.C. § 1406(a) (providing that “[t]he district court of a district in which is filed a case laying venue in the wrong division or district shall dismiss, or if it be in the interest of justice, transfer such case to any district or division in which it could have been brought”). Defendant T.J. Bellafiore's Motion to Dismiss for Lack of Venue, or, in the Alternative, to Transfer Venue (“Motion”) at 1. Defendant invokes 28 U.S.C. § 1391(b), governing venue in civil actions, arguing that subsection (1), providing for venue in “a judicial district in which a defendant resides, if all defendants are residents of the State in which the district is located,” does not apply because Defendant does not reside in the Northern District of California but rather, in Los Angeles County, in the Central District of California. Id . at 6–7.¹ Defendant further asserts that subsection (2) does not apply because “a substantial part of the events or omissions giving rise to the claim” did not occur in this district. Id . at 7–9.

In support of the Motion, Defendant Bellafiore has filed a declaration stating that she has been does business in Los Angeles County as “Kale in Your Kitchen” since 2011 and that at all relevant times she is and has been a permanent resident of Los Angeles. Declaration of T.J. Bellafiore (“Bellafiore Decl.”), ¶ 1, 3, 5. According to Ms. Bellafiore, she sells her kale snacks to “Los Angeles and Palm Springs-based customers in person and through [her] website.” Id . ¶ 4. She states that when an order is placed through her website or directly, she mails or delivers the order in person and therefore, that she has “personal knowledge of the location of every customer who has purchased Kale snacks from her directly or through her website.” Id . ¶ 8. According to Ms. Bellafiore, “[s]ince [she] began [her] business, the majority of [her] sales of Kale Snacks have been in person, or over the phone, to Los Angeles and Palm Springs-based clientele that [she has] developed” and that she has “never marketed any Kale Snacks to customers in Northern California” and has not “ever sold Kale Snacks directly to customers living in California or the San Francisco area.” Id . ¶¶ 8–9. She further states as follows:

[S]ince I began my business, a much smaller portion of my sales of Kale Snacks have been made through my website, to my Los Angeles-based clientele. I have never sold Kale Snacks through my website to any customers located in Northern California or the San Francisco area. I have also never targeted or advertised my website, to any customers located in Northern California or the San Francisco area.

Id. ¶ 11. Finally, Ms. Bellafiore states that she is the registered owner of the trademark KALE KRUNCH, USPTO Registration No. 4422321 and the domain name , which she uses “to display the [KALE KRUNCH] mark and offer Kale Snacks for sale.” Id. ¶¶ 6–7.

In its Opposition brief, Kaia argues that venue in this district is proper because: “(1) substantial events giving rise to this action occurred in the Northern District, and (2) consumer confusion, due to Defendant's infringing acts, is likely to occur in this District.” Opposition at 1. Kaia's argument is based on the fact that Kaia is located in this district and therefore, the injury resulting from Defendant's alleged conduct will occur here. Opposition at 2. Kaia also offers a declaration by its CEO, Nicholas Kelley, stating that Kaia is located in Oakland, California and that it sells kale snacks under the Kale Krunch trademark that are sold directly to consumers via its website and “through numerous third-party retailers.” Declaration of Nicholas Kelley in Support of Plaintiff's Opposition to Defendant's Motion to Dismiss (“Kelley Decl.”), ¶¶ 2–3. Kelley further states that “Kale Krunch is currently available for purchase in at least forty (40) Whole Foods Markets and more than forty (40) independent health food stores in Northern California.” Id . ¶ 4. According to Kelley, “[r]etail sales for Kale Krunch in Whole Foods Markets in Northern California since 2011, are $4,445,670.” Id . ¶ 5.

Kaia argues that in tort cases, a substantial part of the events upon which the claim is based occur where the harm is felt by the plaintiff and therefore, venue is proper in the Northern District. Opposition at 5 (citing Twitter v. Skootle Corp., 2012 WL 2375486, at *6 (N.D.Cal. June 22, 2012) ). Kaia also asserts that Defendant knew that any harm would be suffered in this district because she purchased Plaintiff's product in 2008. Id . at 6. Moreover, Kaia argues, Defendant's “bare assertion that she is located in the Central District and supposedly does not do business in this District is a far cry from the ‘strong showing’ that could upset Plaintiff's choice of forum.” Id . (citing Decker Coal Co. v. Commonwealth Edison Co., 805 F.2d 834, 843 (9th Cir.1986) ; Natural Wellness Centers of Am., Inc. v. J.R. Andorin, Inc., 2012 WL 216578, at *10 (N.D.Cal. Jan. 24, 2012) ; Warfield v. Gardner, 346 F.Supp.2d 1033, 1044 (D.Ariz.2004) ).

Kaia also argues that venue is proper in the Northern District because consumer confusion is likely to occur in this District. Id . at 6–8. Kaia cites the rule that “[i]n a trademark infringement action, the actionable wrong takes place both where the infringing labels are affixed to the goods and where confusion of purchasers is likely to occur.” Id . at 7 (quoting Ansel Adams Publishing Rights Trust v. PRS Media Partners, L.L.C., 2010 WL 4974114 (N.D.Cal. Dec. 1, 2010) and citing Sutter Home Winery, Inc. v. Madrona Vineyards, L.P., 2005 WL...