Kythera Biopharmaceuticals, Inc. v. Lithera, Inc.

Decision Date20 February 2014
Docket NumberNo. CV 13–6338 RSWL (SSx).,CV 13–6338 RSWL (SSx).
Citation998 F.Supp.2d 890
CourtU.S. District Court — Central District of California


Philip Ou, McDermott Will and Emery LLP, Menlo Park, CA, Elham Ellie Hourizadeh, McDermott Will and Emery LLP, Los Angeles, CA, John J. Dabney, Katie Bukrinsky, Mary D. Hallerman, McDermottWill and Emery LLP, Washington, DC, for Plaintiff.

Benjamin A. Katzenellenbogen, Emily K. Sauter, Knobbe Martens Olson and Bear LLP, Irvine, CA, for Defendant.

ORDER re: Defendant's Motion to Dismiss the Complaint [20]

RONALD S.W. LEW, Senior District Judge.

Currently before the Court is Defendant Lithera, Inc.'s (Defendant) Motion to Dismiss the Complaint [20]. Plaintiff Kythera Biopharmaceuticals, Inc. (Plaintiff) filed its Opposition on December 17, 2013 [30]. Defendant filed a Reply on December 23, 2013 [31]. This matter was taken under submission on January 2, 2014 [32]. Having reviewed all papers submitted pertaining to the Motion, and having considered all arguments presented to the Court, the Court NOW FINDS AND RULES AS FOLLOWS:

Defendant's Motion to Dismiss is hereby DENIED.

I. Background

Plaintiff is a Delaware corporation with its principal place of business in California. Compl. ¶ 2. Defendant is also a Delaware corporation with its principal place of business in California. Id. at ¶ 3.

Plaintiff is a biopharmaceutical company dedicated to researching and developing pharmaceuticals used in aesthetic medicine, including pharmaceuticals to reduce human body fat. Id. at ¶ 6. Plaintiff was founded in 2005. Id. Since 2006, Plaintiff has used the mark KYTHERA for its pharmaceutical research and development, including in connection with its lead product candidate, ATX–101, which is designed to reduce human body fat. Id. at ¶ 7.

Plaintiff owns a federal trademark registration for KYTHERA, U.S. Reg. No. 3357920, registered December 18, 2007.1Id. at ¶ 9. Plaintiff also owns a federal trademark registration for KYTHERA, U.S. Reg. No. 4012388, registered August 16, 2011.2Id. at ¶ 11.

Plaintiff has invested considerable resources to advertise and promote its goods and services under its KYTHERA marks and trade names. Id. at ¶ 12.

After Plaintiff first used its KYTHERA marks and trade names, Defendant filed an intent to use application in the United States Patent and Trademark Office (“USPTO”) for LITHERA for “pharmaceutical preparations for reducing the size and appearance of adipose deposits in a body.” Id. at ¶ 14. Defendant received a federal trademark registration for LITHERA, U.S. Reg. No. 4067542, registered December 6, 2011. Id. at ¶ 15. Defendant's trademark application alleges a date of first use of Lithera in commerce of September 2011. Id. Defendant advertises its goods and services at Id. at ¶ 14.

The Parties' goods and services are discussed and presented under the KYTHERA and LITHERA marks and names in the same publications, including investor publications, and at the same conferences. Id. at ¶ 20. Plaintiff has demanded that Defendant cease and desist all use of LITHERA and similar names and marks, but Defendant has refused to do so. Id. at ¶ 23.

Plaintiff filed its Complaint on August 29, 2013 [1], alleging trademark infringement, unfair competition, and false designation of origin under 15 U.S.C. §§ 1114, and 1125, and under California law. Plaintiff also included a claim for trademark cancellation under 15 U.S.C. §§ 1052(d), and 1119 [1].

Defendant filed the instant Motion to Dismiss the Complaint on November 25, 2013 [20].

II. Legal Standard

A. Motion to Dismiss Pursuant to Rule 12(b)(6)

Federal Rule of Civil Procedure 12(b)(6) allows a party to move for dismissal of one or more claims if the pleading fails to state a claim upon which relief can be granted. Dismissal can be based on a lack of cognizable legal theory or lack of sufficient facts alleged under a cognizable legal theory. Balistreri v. Pacifica Police Dep't, 901 F.2d 696, 699 (9th Cir.1988). However, a party is not required to state the legal basis for its claim, only the facts underlying it. McCalden v. Cal. Library Ass'n, 955 F.2d 1214, 1223 (9th Cir.1990). In a Rule 12(b)(6) motion to dismiss, a court must presume all factual allegations of the complaint to be true and draw all reasonable inferences in favor of the non-moving party. Klarfeld v. United States, 944 F.2d 583, 585 (9th Cir.1991).

The question presented by a motion to dismiss is not whether the plaintiff will prevail in the action, but whether the plaintiff is entitled to offer evidence in support of its claim. Swierkiewicz v. Sorema N.A., 534 U.S. 506, 511, 122 S.Ct. 992, 152 L.Ed.2d 1 (2002). “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 ‘entitle [ment] to relief’ requires more than labels and conclusions, and a formulaic recitation of a cause of action's elements will not do.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) (internal citation omitted). Although specific facts are not necessary if the complaint gives the defendant fair notice of the claim and the grounds upon which the claim rests, a complaint must nevertheless “contain sufficient factual matter, accepted as true, to state a claim to relief that is plausible on its face.” Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009) (internal quotation marks omitted).

If dismissed, a court must then decide whether to grant leave to amend. The Ninth Circuit has repeatedly held that a district court should grant leave to amend even if no request to amend the pleadings was made, unless it determines that the pleading could not possibly be cured by the allegation of other facts. Lopez v. Smith, 203 F.3d 1122, 1130 (9th Cir.2000).

III. Discussion
A. Request for Judicial Notice

Defendant requests that this Court take judicial notice of Plaintiff's federal service mark registrations, the USPTO's records of the registrations, and Plaintiff's Securities and Exchange Commission public filings. Mot. 3:18–4:14.

“A court may ... consider certain materials—documents attached to the complaint, documents incorporated by reference in the complaint, or matters of judicial notice—without converting [a] motion to dismiss into a motion for summary judgment.” United States v. Ritchie, 342 F.3d 903, 907–08 (9th Cir.2003) (citing Van Buskirk v. CNN, 284 F.3d 977, 980 (9th Cir.2002); Barron v. Reich, 13 F.3d 1370, 1377 (9th Cir.1994)). The incorporation by reference doctrine permits the Court to “take into account documents ‘whose contents are alleged in a complaint and whose authenticity no party questions, but which are not physically attached to the [plaintiff's] pleading.’ Knievel v. ESPN, 393 F.3d 1068, 1076 (9th Cir.2005) (quoting In re Silicon Graphics Inc. Sec. Litig., 183 F.3d 970, 986 (9th Cir.1999)); see also Lee v. City of Los Angeles, 250 F.3d 668, 688 (9th Cir.2001). The Ninth Circuit has “extended the ‘incorporation by reference’ doctrine to situations in which the plaintiff's claim depends on the contents of the document, the defendant attaches the document to its motion to dismiss, and the parties do not dispute the authenticity of the document.” Id. (citing Parrino v. FHP, Inc., 146 F.3d 699, 706 (9th Cir.1998)).

Plaintiff's service mark registrations are attached to its Complaint (Compl. Exs. A–B), and these registrations form the basis of some of Plaintiff's claims of trademark infringement ( see e.g., Compl. ¶¶ 31–36). As such, the Court takes judicial notice of the trademark records for Plaintiff's trademark registrations.

Furthermore, [o]n a motion to dismiss, a court may take judicial notice of matters of public record outside the pleadings.” Plevy v. Haggerty, 38 F.Supp.2d 816, 821 (C.D.Cal.1998) (citing MGIC Indem. Corp. v. Weisman, 803 F.2d 500, 504 (9th Cir.1986); Kramer v. Time Warner, Inc., 937 F.2d 767, 774 (2d Cir.1991)). Such public records include Securities and Exchange Commission (“SEC”) filings. Id. Accordingly, the Court also takes judicial notice of Plaintiff's SEC filings.

B. Trademark Infringement

In its Complaint, Plaintiff has alleged causes of action for: (1) trademark infringement, (2) unfair competition, and (3) false designation of origin under the Lanham Act, 15 U.S.C. §§ 1114 & 1125, and under California law. Compl. ¶¶ 25–36, 40–44.

This Court analyzes these claims together for the purposes of this Motion. [T]he courts have uniformly held that common law and statutory trademark infringement are merely specific aspects of unfair competition.” Hokto Kinoko Co. v. Concord Farms, Inc., 810 F.Supp.2d 1013, 1031 (C.D.Cal.2011) (citing New West Corp. v. NYM Co. of California, Inc., 595 F.2d 1194, 1201 (9th Cir.1979)); see also Grey v. Campbell Soup Co., 650 F.Supp. 1166, 1173 (C.D.Cal.1986) (“The tests for infringement of a federally registered mark under § 32(1), 15 U.S.C. § 1114(1), infringement of a common law trademark, unfair competition under § 43(a), 15 U.S.C. § 1125(a), and common law unfair competition involving trademarks are the same”). A claim for false designation of origin under 15 U.S.C. § 1125 requires proof of the same elements as a claim for trademark infringement under 15 U.S.C. § 1114. Brookfield Commc'ns, Inc. v. West Coast Entm't Corp., 174 F.3d 1036, 1046 n. 6 (9th Cir.1999) (citing 15 U.S.C. §§ 1114(1) & 1125; AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir.1979)). Furthermore, the Ninth Circuit “has consistently held that state common law claims of unfair competition ... are ‘substantially congruent’ to claims made under the Lanham Act.” Cleary v. News Corp., 30 F.3d 1255, 1262–63 (9th Cir.1994) (citing Academy of Motion Picture Arts & Scis. v. Creative House Promotions, Inc., 944 F.2d 1446, 1457 (9th Cir.1991)).

To prove a claim of trademark infringement, a plaintiff must...

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