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WESLEY E. OVERSON (CA SBN 154737) WOverson@mofo.com JENNIFER LEE TAYLOR (CA SBN 161368) JTaylor@mofo.com NATHAN B. SABRI (CA SBN 252216) NSabri@mofo.com JULIA D. KRIPKE (CA SBN 267436) JKripke@mofo.com MORRISON & FOERSTER LLP 425 Market Street San Francisco, California 94105-2482 Telephone: 415.268.7000 Facsimile: 415.268.7522 Attorneys for Defendants RESTORATION HARDWARE, INC. and GARY FRIEDMAN UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION

EMECO INDUSTRIES, INC., Plaintiff, v. RESTORATION HARDWARE, INC., GARY FRIEDMAN, and Does 1-10, Defendants.

Case No. 3:12-cv-5072 MMC DEFENDANTS RESTORATION HARDWARE AND GARY FRIEDMANS NOTICE OF MOTION AND MOTION TO DISMISS UNDER FED. R. CIV. P. 12(b)(6) Date: Dec. 14, 2012 Time: 9:00 a.m. Ctrm: 7 Hon. Maxine M. Chesney

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TABLE OF CONTENTS Page INTRODUCTION .......................................................................................................................... 2 FACTUAL BACKGROUND ......................................................................................................... 3 LEGAL STANDARD ..................................................................................................................... 4 ARGUMENT .................................................................................................................................. 4 I. PLAINTIFF FAILS TO STATE A CLAIM FOR TRADE DRESS COUNTERFEITING OR INFRINGEMENT (CLAIM 1) ................................................. 5 A. Plaintiffs counterfeiting and infringement claims based on its registered logo fail ................................................................................................................... 5 B. Plaintiffs Section 1114 claim and request for counterfeiting remedies under Section 1116 fail as to its common law trade dress rights. ........................... 7 C. Plaintiff fails to put Defendants on notice of what is claimed as to common law trade dress counterfeiting and infringement ..................................................... 8 II. PLAINTIFF FAILS TO STATE A CLAIM FOR TRADEMARK COUNTERFEITING AND INFRINGEMENT (CLAIM 2) .............................................. 9 A. Plaintiff fails to state a claim for counterfeiting of its THE NAVY CHAIR and 111 NAVY CHAIR trademarks. ................................................. 10 B. Defendants accused phrases are protected by the defense of fair use.. ............... 12 C. Plaintiff fails to put Defendants on notice of what is claimed as to common law trademark counterfeiting and infringement .................................................... 13 III. PLAINTIFF FAILS TO STATE A CLAIM FOR FEDERAL DILUTION (CLAIM 3) ....................................................................................................................................... 13 A. Plaintiff fails to put Defendants on notice of what is claimed as trademark and trade dress dilution ......................................................................................... 13 B. Defendants accused phrases are protected under defense of fair use. ................. 14 IV. PLAINTIFF FAILS TO STATE A CLAIM FOR COMMON LAW TRADE DRESS INFRINGEMENT (CLAIM 4) ............................................................................ 14 A. Plaintiff fails to put Defendants on notice of what is claimed as common law trade dress. ...................................................................................................... 15 V. PLAINTIFF FAILS TO STATE A CLAIM FOR COMMON LAW TRADEMARK INFRINGEMENT (CLAIM 5) ............................................................... 15 A. Plaintiff accuses Defendants of infringement based on descriptive phrases protected as fair use ............................................................................................... 15 B. Plaintiff fails to put Defendants on notice of what is claimed as common law trademark rights .............................................................................................. 15 VI. P PLAINTIFF FAILS TO STATE A CLAIM FOR DILUTION UNDER CAL. BUS. & PROF. CODE 14330 ET SEQ. AND COMMON LAW (CLAIM 6). ........... 16 A. Plaintiff asserts a repealed statute ......................................................................... 16 B. Defendants accused phrases are protected under defense of fair use. ................. 16
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TABLE OF CONTENTS (continued) Page Plaintiff fails to put Defendants on notice of what is claimed as trademark and trade dress dilution ......................................................................................... 16 VII. THE COURT SHOULD DISMISS PLAINTIFFS STATE LAW CAUSES OF ACTION IF THE OTHER CAUSES OF ACTION ARE DISMISSED (CLAIMS 4-7) .................................................................................................................................... 17 CONCLUSION ............................................................................................................................. 18 C.

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TABLE OF AUTHORITIES Page(s) CASES Accuride Intl, Inc. v. Accuride Corp., 871 F.2d 1531 (9th Cir. 1989)................................................................................................... 4 Ashcroft v. Iqbal, 556 U.S. 662 (2009) ...................................................................................................... 8, 14, 16 Autodesk, Inc. v. Dassault Systemes Solidworks Corp., No. C 08-04397 WHA, 2008 U.S. Dist. LEXIS 109800 (N.D. Cal. Dec. 18, 2008) .......... 9, 15 Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) ............................................................................................................ 4, 14 Brookfield Communs. v. W. Coast Entmt Corp., 174 F.3d 1036, 1046 (9th Cir. 1999)......................................................................................... 7 Cairns v. Franklin Mint Co., 292 F.3d 1139 (9th Cir. 2002)........................................................................................... 12, 15 Clicks Billiards, Inc. v. Sixshooters Inc., 251 F.3d 1252 (9th Cir. 2001)................................................................................................... 6 In re Dual-Deck Video Cassette Recorder Antitrust Litig., 11 F.3d 1460 (9th Cir. 1993)............................................................................................. 12, 13 Johnson v. Connolly, No. C 06-6414 VRW, 2007 U.S. Dist. LEXIS 31721 (N.D. Cal. Apr. 18, 2007) .................... 5 Kelly-Brown v. Winfrey, No. 11 Civ. 7875 (PAC), 2012 U.S. Dist. LEXIS 29695 (S.D.N.Y. Mar. 6, 2012) ................. 5 KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004) ................................................................................................................ 12 Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007) ................................................................................. 5, 7, 11 McKeever v. Block, 932 F.2d 795 (9th Cir. 1991)..................................................................................................... 8 NEC Elecs. v. CAL Circuit Abco, 810 F.2d 1506 (9th Cir. 1987)................................................................................................... 4 Ove v. Gwinn, 264 F.3d 817 (9th Cir. 2001)................................................................................................... 17

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Pitts v. Hatfield, No. CV 07-2153-PA (PLA), 2009 U.S. Dist. LEXIS 129550 (C.D. Cal. Feb. 23, 2009) ........ 8 PNY Techs., Inc. v. SanDisk Corp., No. C-11-04689 YGR, 2012 U.S. Dist. LEXIS 55965 (N.D. Cal. Apr. 20, 2012) ................. 17 Sanchez v. Sanchez, No. 10CV1628 JLS (RBB), 2011 U.S. Dist. LEXIS 50988 (S.D. Cal. May 12, 2011)........ 7, 8 Sensible Foods, LLC v. World Gourmet, Inc., No. 11-2819 SC, 2011 U.S. Dist. LEXIS 127397 (N.D. Cal. Nov. 3, 2011)................... passim Smith & Hawken, Ltd. v. Gardendance, Inc., No. C 04-1664 SBA, 2004 U.S. Dist. LEXIS 22934, at *8-9 (N.D. Cal. Nov. 5, 2004) .......... 9 United Mine Workers v. Gibbs, 383 U.S. 715 (1966) ................................................................................................................ 17 Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000) .......................................................................................................... 4, 6, 9 STATUTES 15 U.S.C. 1114 .................................................................................................................... passim 15 U.S.C. 1115 ........................................................................................................................... 12 15 U.S.C. 1116 .................................................................................................................... passim 15 U.S.C. 1125 .................................................................................................................... passim 15 U.S.C. 1127 ....................................................................................................................... 4, 11 28 U.S.C. 1367(c)(3) .................................................................................................................. 17 Cal. Bus. & Prof. Code 14272 to 14401 ................................................................................. 16 Cal. Bus. & Prof. Code 17200 ................................................................................................... 17 OTHER AUTHORITIES Fed. R. Civ. P. 8 ..................................................................................................................... passim Fed. R. Civ. P. 12(b)(6) ............................................................................................................... 1, 4 Local Rule 7-4(a)(3) ........................................................................................................................ 1

26 27 28 Trademark Manual of Examining Procedure 1202.02, available at http://tmep.uspto.gov/RDMS/detail/manual/TMEP/Oct2012/d1e2.xml#/manual/TMEP /Oct2012/TMEP-1200d1e835.xml ............................................................................................ 7

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J. McCarthy on Trademarks & Unfair Competition 6:6, 25:10 ............................................. 4, 5

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NOTICE OF MOTION AND MOTION TO PLAINTIFF AND ITS ATTORNEYS OF RECORD: PLEASE TAKE NOTICE that on December 14, 2012, at 9:00 a.m., or as soon thereafter as the matter may be heard, in Courtroom 7 of the United States District Court, Northern District of California, located at 450 Golden Gate Avenue, San Francisco, California, before the Honorable Maxine M. Chesney, Restoration Hardware, Inc. (Restoration Hardware) and Gary Friedman (Friedman) (collectively, Defendants) shall and hereby do move to dismiss Emeco Industries, Inc.s (Plaintiffs) Complaint, filed October 1, 2012. Defendants seek dismissal of the Complaint pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure. This Motion is based on this Notice of Motion and Motion and supporting Memorandum of Points and Authorities, the pleadings, records and files in this action, and such other written or oral argument as may be presented at or before the time this Motion is taken under submission by the Court. ISSUES TO BE DECIDED (Local Rule 7-4(a)(3)) For the trade dress counterfeiting and infringement cause of action, (a) whether the

cause of action fails as to counterfeiting of Plaintiffs registered logo because Plaintiff does not accuse Defendants of using any infringing logos or designs that are identical to or substantially indistinguishable from Plaintiffs registered logo; (b) whether the cause of action fails as to infringement of Plaintiffs registered logo because Plaintiff does not accuse Defendants of using any infringing logos or designs that are confusingly similar to Plaintiffs registered logo; (c) whether the cause of action fails as to a claim under Section 1114 and remedies under Section 1116 to the extent based on common law rights because these statutes apply only to registered rights; and (d) whether Plaintiff fails to put Defendants on notice of what is claimed. 2. For the trademark counterfeiting and infringement cause of action, (a) whether the

counterfeiting claim fails because the accused phrases are not identical to or substantially indistinguishable from the registered THE NAVY CHAIR or 111 NAVY CHAIR marks; (b) whether the cause of action fails because the accused phrases are protected fair use as descriptive,
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non-trademark uses; (c) whether the cause of action fails as to a claim under Section 1114 and remedies under Section 1116 to the extent based on common law rights because these statutes apply only to registered rights; and (d) whether Plaintiff fails to put Defendants on notice of what is claimed. 3. For the federal dilution cause of action, (a) whether Plaintiff fails to put

Defendants on notice of what is claimed; and (b) whether the cause of action fails as to trademark dilution because the accused phrases are descriptive, non-trademark uses. 4. For the common law trade dress infringement cause of action, (a) whether Plaintiff

fails to put Defendants on notice of what is claimed; and (b) whether the Court should decline to exercise supplemental jurisdiction once it dismisses Plaintiffs federal causes of action. 5. For the common law trademark infringement cause of action, (a) whether the cause

of action fails because the accused phrases are descriptive, non-trademark uses; (b) whether Plaintiff fails to put Defendants on notice of what is claimed; and (c) whether the Court should decline to exercise supplemental jurisdiction once it dismisses Plaintiffs federal causes of action. 6. For the California state dilution cause of action, (a) whether the cause of action

fails because Plaintiff cites as its basis a repealed statute; (b) whether the cause of action fails as to trademark dilution because the accused phrases are descriptive, non-trademark uses; (c) whether Plaintiff fails to put Defendants on notice of what is claimed; and (d) whether the Court should decline to exercise supplemental jurisdiction once it dismisses Plaintiffs federal causes of action. 7. For the California Business & Professions Code Section 17200 claim, whether the

Court should dismiss Plaintiffs claim of unlawful business practices or decline to exercise supplemental jurisdiction once it dismisses Plaintiffs federal causes of action. INTRODUCTION Restoration Hardware advertised INTRODUCING 1940s NAVAL CHAIR in its catalogue and on its website in September (the chairs were withdrawn when this lawsuit was filed). Plaintiffs Complaint related to these advertisements has several deficiencies. Plaintiff never adequately specifies the trade dress it accuses Defendants of infringing, counterfeiting, and
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diluting, nor does it identify what common law trademarks it believes are infringed or being diluted. Additionally, several of Plaintiffs claims fail as a matter of law. For example, Plaintiff asserts a trade dress counterfeiting and infringement claim against Defendants based on a registered logo, which cannot serve as the basis for a trade dress claim against actual chairs that are not being used as a logo. It further accuses Defendants of infringing and counterfeiting its trademarks based on the use of descriptive phrases that are different from Plaintiffs registered word marks and protected by fair usee.g., 1940s NAVAL CHAIR and 1940S ALUMINUM NAVAL CHAIR COLLECTION. It also asserts unregistered trade dress and trademark rights for claims that require registered rights. As set forth herein, the Court should dismiss Plaintiffs Complaint. FACTUAL BACKGROUND As alleged in the Complaint, Defendant Restoration Hardware is a Delaware corporation and has its principal place of business in Marin County in Corte Madera, California. (Compl. 7.) Defendant Friedman is former Chairman and CEO of Restoration Hardware, and currently holds the titles of Chairman Emeritus, Creator and Curator. (Id. 8.) Plaintiff is a privately held Pennsylvania corporation based in Hanover, Pennsylvania. (Id. 6.) Plaintiff alleges trade dress and trademark rights related to its sale of the Navy Chair, a lightweight and durable chair developed in the 1940s and sold to the U.S. Navy. (Id. 13.) It asserts that it owns a trade dress registration for the design of a chair (id. 22, Ex. 1); a registration featuring the outline of a chair (id.); trademark registrations for THE NAVY CHAIR and 111 NAVY CHAIR (id. 23, Ex. 2); and common law rights in the design, trade dress, and trademarks of the Navy Chair product line, which includes a side chair (characterized by Plaintiff as the Navy Chair) an armchair (Navy Armchair), a counter stool (Navy Counter Stool), and a barstool (Navy Barstool). (Id. 24, 32-33.) In its fall 2012 catalog, Restoration Hardware featured a chair described as a 1940s NAVAL CHAIR. (Id. 37.) Restoration Hardware displayed and described chairs and stools on its website as part of a 1940S ALUMINUM NAVAL CHAIR COLLECTION. (Id. 38.)

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LEGAL STANDARD A motion to dismiss should be granted where a party fails to state a claim upon which relief can be granted. Fed. R. Civ. P. 12(b)(6). A party must set out a short and plain statement of the claim showing that the pleader is entitled to relief. Fed. R. Civ. P. 8. [A] plaintiffs obligation to provide the grounds of his entitlement to relief requires more than labels 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) (internal quotations omitted) (holding that plaintiffs failed to state enough facts to state a claim to relief that is plausible on its face and therefore their complaint must be dismissed); see also Sensible Foods, LLC v. World Gourmet, Inc., No. 11-2819 SC, 2011 U.S. Dist. LEXIS 127397, at *18-19 (N.D. Cal. Nov. 3, 2011) (dismissing contract claims as insufficiently clear and holding that defendants lack[ed] adequate notice to prepare a defense to Plaintiffs claim). ARGUMENT Trademark law protects marks used to identify and distinguish goods. Accuride Intl, Inc. v. Accuride Corp., 871 F.2d 1531, 1534 (9th Cir. 1989). A trademark may take the form of a term (or word mark), a symbol (such as a logo), the shape of the product, or even a smell or sound. See, e.g., J. McCarthy on Trademarks & Unfair Competition 6:6 (summarizing types of trademarks). The Supreme Court has reiterated that a wide variety of trademarks may be registered and protected by the Lanham Act, using Nike as an example of a word mark and the swoosh as an example of a logo or symbol mark. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 209 (2000). Trademark law is designed to prevent sellers from confusing or deceiving consumers about the origin or source of a product. NEC Elecs. v. CAL Circuit Abco, 810 F.2d 1506, 1509 (9th Cir. 1987). In addition to protections for trademark infringement, the Lanham Act provides additional penalties for the use of a counterfeit, which the Act defines as a spurious mark which is identical with, or substantially indistinguishable from, a registered mark. 15 U.S.C. 1127 (emphasis added). A counterfeiting claim requires a closer degree of similarity than is required for traditional trademark infringement or unfair competition. J. McCarthy on Trademarks &
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Unfair Competition 25:10. The identicality standard for counterfeiting is in fact so high that a CHEWY VUITTON and a CV design on dog toys shaped like handbags were found not to be counterfeits of LOUIS VUITTON and the LV monogram design in Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 269 (4th Cir. 2007). Similarly, Judge Walker held that FUZZY DUDS was not a counterfeit of COWBOYS FUZZY DUDS when used on nearly identical fleece clothing because of the omission of COWBOYS and the use of block font instead of jagged font in Johnson v. Connolly, No. C 06-6414 VRW, 2007 U.S. Dist. LEXIS 31721, at *1-2, 6 (N.D. Cal. Apr. 18, 2007). Another court recently held on a motion to dismiss that use of a phrase identical to the registered markOWN YOUR POWERwas not counterfeiting because of differences in font and color such that the appearance of the mark as used by defendants, both in itself and in how it appeared on defendants product, is not identical with or substantially indistinguishable from plaintiffs use of the mark. Kelly-Brown v. Winfrey, No. 11 Civ. 7875 (PAC), 2012 U.S. Dist. LEXIS 29695 (S.D.N.Y. Mar. 6, 2012). I. PLAINTIFF FAILS TO STATE A CLAIM FOR TRADE DRESS COUNTERFEITING OR INFRINGEMENT (CLAIM 1)

Plaintiffs first cause of action claims trade dress counterfeiting and infringement of U.S. Registration Nos. 3,191,187 and 2,511,360 1 as well as common law rights in the design of the Navy Chair products. (Compl. 66.) Plaintiffs alleged common law rights are not specified, but may potentially include armchairs and stools in addition to side chairs based upon earlier allegations in the Complaint. A. Plaintiffs counterfeiting and infringement claims based on its registered logo fail.

Plaintiffs allegation that Restoration Hardwares chairs are counterfeits of and infringe Plaintiffs trade dress based upon U.S. Trademark Registration No. 3,191,187 (Id. 66) is specious because that registration is for a logo, not for a product configuration. The registration Registration No. 3,191,187 is for a logo. (Id., Ex. 1.) Registration No. 2,511,360 is for the configuration of a chair. (Id.)
1

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covers the outline of a chair for use on chairs, tables, table bases, desks, file cabinets and many other non-chair pieces of furniture. (Id. Ex. 1.)

This is in contrast to U.S. Trademark Registration No. 2,511,360, which Plaintiff also asserted against Defendants as a basis for its trade dress counterfeiting and infringement claim, which covers a chair configuration with a sculpture-like, one-piece design for use on chairs. (Id. (emphasis added).)

Product configuration trade dress is held to a different standard than other types of trademarks, such as word marks and logos. To be protectable, the owner of the asserted product configuration trade dress has the burden of proving that it is nonfunctional and has secondary meaning. See Wal-Mart, 529 U.S. at 216 (product design protectable only upon showing of secondary meaning); Clicks Billiards, Inc. v. Sixshooters Inc., 251 F.3d 1252, 1258 (9th Cir. 2001) (trade dress plaintiff must prove claimed trade dress is nonfunctional). In fact, applicants are required to prove this to obtain a federal registration for a product configuration trade dress. (See, e.g., Trademark Manual of Examining Procedure 1202.02, available at http://tmep.uspto.gov/RDMS/detail/manual/TMEP/Oct2012/d1e2.xml#/manual/TMEP/Oct2012/ TMEP-1200d1e835.xml) (If examining attorney identifies prima facie case of functionality, burden shifts to the applicant to present competent evidence to rebut functionality. Applicants seeking registration of product design trade dress must provide sufficient evidence to show that the mark has acquired distinctiveness.) If they are able to do so and obtain such a registration, the product configuration trade dress is presumed validnon-functional and with
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secondary meaning. Because Registration No. 3,191,187 is for a logo and not for a trade dress, it was not held to the trade dress standard, yet Plaintiff is treating it as if it is a trade dress registration. Although the registered logo happens to be in the design of a chair, the registered logo is no different from the Nike swoosh or the Starbucks mermaid, which are protectable without a showing of non-functionality and secondary meaning. A counterfeiting claim requires use of a mark that is identical with or substantially indistinguishable from the registered mark. Louis Vuitton Malletier S.A., 507 F.3d at 269. An infringement claim requires use of a mark that is confusingly similar to the asserted mark. Brookfield Communs. v. W. Coast Entmt Corp., 174 F.3d 1036, 1046 (9th Cir. 1999). Plaintiff does not accuse Defendants of using any trademark that is identical with, substantially indistinguishable from, or confusingly similar to Defendants asserted logo. Rather, Plaintiff has attempted to state a trade dress infringement claim against the configuration of a chair based on a trademark registration for a logo. Plaintiff has accordingly failed to state a claim that Defendants have counterfeited or infringed Reg. No. 3,191,187, and that portion of the first cause of action should be dismissed under both 15 U.S.C. 1114(1) and 15 U.S.C. 1125(a). B. Plaintiffs Section 1114(1) claim and request for counterfeiting remedies under Section 1116 fail as to its alleged common law trade dress rights.

Plaintiffs first claim should also be dismissed to the extent it asserts common law rights as a basis for recovery under Sections 32(1) or 34 of the Lanham Act (15 U.S.C. 1114(1) and 1116). Plaintiffs first cause of action cites Section 1114(1) as one of its legal grounds, and seeks the counterfeiting remedies set out in Section 1116; however, common law rights cannot serve as a claim under Section 1114(1). Under the Lanham Act, a plaintiffs path to relief from infringement depends on the nature of the trademark that the plaintiff holds. If the plaintiff holds a federally registered mark, 1114, which expressly contemplates a registrant, is appropriate. If, however, the mark is not registered, 1125(a), which does not contain a registration requirement, is appropriate. Sanchez v. Sanchez, No. 10CV1628 JLS (RBB), 2011 U.S. Dist. LEXIS 50988, at *6-7 (S.D. Cal. May 12, 2011) (dismissing with prejudice Section 1114 claim that did not allege registered rights). Similarly, Section 1116 addresses use of a counterfeit of a
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mark that is registered on the principal register. 15 U.S.C. 1116 (emphasis added). Plaintiffs vaguely asserted common law rights thus cannot serve as the basis for recovery under Section1114 or counterfeiting remedies under Section 1116, and that portion of the first cause of action should be dismissed. C. Plaintiff fails to put Defendants on notice of what is claimed as to trade dress counterfeiting and infringement.

Plaintiffs first claim should also be dismissed for the separate reason that it fails to provide sufficient specificity to enable Defendants to form a defense. The Federal Rules of Civil Procedure require a pleading to contain a short and plain statement of the claim showing that the pleader is entitled to relief. Fed. R. Civ. P. 8(a)(2). Courts have interpreted short and plain statement to require sufficient allegations to put defendants fairly on notice of the claims against them. McKeever v. Block, 932 F.2d 795, 798 (9th Cir. 1991) (Rule 8 pleading standard requires sufficient allegations to put defendants fairly on notice of the claims against them). Thus, Judge Conti dismissed contract claims where a complaint was not sufficiently clear as to what implied contracts had allegedly been breached, holding that defendants lack[ed] adequate notice to prepare a defense to Plaintiff's claim. Sensible Foods, 2011 U.S. Dist. LEXIS 127397, at *18-19 (dismissing contract claims as insufficiently clear and holding that defendants lack[ed] adequate notice to prepare a defense to Plaintiffs claim); see also Pitts v. Hatfield, No. CV 072153-PA (PLA), 2009 U.S. Dist. LEXIS 129550, at *18-19 (C.D. Cal. Feb. 23, 2009) (Complaint failed to comply with Rule 8 where it conflated valid claims with invalid claims and made it extremely difficult to formulate applicable defenses). The Supreme Court has also clarified that Rule 8 requires sufficient factual allegations to support its conclusions, not merely [t]hreadbare recitals of the elements of a cause of action. Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). Plaintiffs first cause of action blends together legal theories and relies on an assortment of facts, some of which are relevant for one of the legal theories, but not the other, to such a degree that it violates Rule 8. Plaintiff fails to specify the trade dress at issue and therefore does not sufficiently put Defendants on notice of the trade dress claim alleged. These deficiencies
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make it difficult, if not impossible for Defendants to form an adequate response, and required dismissal of the first cause of action. See Autodesk, Inc. v. Dassault Systemes Solidworks Corp., No. C 08-04397 WHA, 2008 U.S. Dist. LEXIS 109800, at *12-14 (N.D. Cal. Dec. 18, 2008) (dismissing trade dress claim and holding plaintiff must provide more detail and clarify the total appearance of the product at issue); Smith & Hawken, Ltd. v. Gardendance, Inc., No. C 04-1664 SBA, 2004 U.S. Dist. LEXIS 22934, at *8-9 (N.D. Cal. Nov. 5, 2004) (dismissing trade dress claim where plaintiff did not explain nature, scope or elements making up its allegedly protectable trade dress). Moreover, Plaintiff alleges that it has common law trade dress rights in the Navy Chair trade dress configuration, but never defines what is included in the Navy Chair trade dress configuration, nor does it define what it accuses of being infringing trade dress. (Compl. 99). Earlier in the Complaint, Plaintiff describes a number of chairs that are part of a Navy Chair collection. (Id. 19.) It is not at all clear whether, when Plaintiff asserts Navy Chair trade dress (e.g., id. 94), Plaintiff intends to assert trade dress rights in just its side chair (which it calls the Navy Chair), consistent with its trade dress registration, or trade dress related to its entire Navy Chair collection, which includes chairs that differ significantly from one another: a Navy Armchair with arms, a Navy Counter Stool with longer legs and a slightly different base using a single cross-bar instead of two, and a Navy Barstool with even longer legs and the single cross-bar. (Id. 33-34.) Because Plaintiff never adequately defines its Navy Chair trade dress, Plaintiff also does not allege facts sufficient to show that it has established secondary meaning in this undefined trade dress, as required by Wal-Mart, 529 U.S. at 216, or that every trade dress included in the definition is non-functional. Due to this lack of specificity, the Court should dismiss Plaintiffs first cause of action in its entirety. II. PLAINTIFF FAILS TO STATE A CLAIM FOR TRADEMARK COUNTERFEITING AND INFRINGEMENT (CLAIM 2).

Plaintiffs second cause of action claims trademark counterfeiting and infringement of

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U.S. Registration Nos. 3,016,791 and 3,912,854 2 under 15 U.S.C. 1114 and 1125(a) as well as common law rights in the Navy Chair trademark. (Compl. 80.) Plaintiffs claim accuses Defendants only of using the phrases INTRODUCING 1940s NAVAL CHAIR and INTRODUCING 1940S ALUMINUM NAVAL CHAIR COLLECTION. (Compl. 37-38.) A. Plaintiff fails to state a claim for counterfeiting of its THE NAVY CHAIR and 111 NAVY CHAIR trademarks.

Plaintiff has failed to state a claim for counterfeiting of the registered THE NAVY CHAIR and 111 NAVY CHAIR trademarks. Plaintiff alleges only that Defendants used the phrases INTRODUCING 1940s NAVAL CHAIR and INTRODUCING 1940S ALUMINUM NAVAL CHAIR COLLECTION in a catalog and on a website:

Registration No. 3,016,791 is for the word mark THE NAVY CHAIR. (Compl. Ex. 2.) Registration No. 3,912,854 is for the word mark 111 NAVY CHAIR. (Id.)

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 (Compl. 37-38.) Plaintiff alleges that the advertisements pictured above constitute not just infringement, but counterfeits of Plaintiffs registered 111 NAVY CHAIR trademark, which requires a showing that the accused advertisements use a mark that is identical with or substantially indistinguishable from 111 NAVY CHAIR. 15 U.S.C. 1114, 1127. This is simply not the case. INTRODUCING 1940s NAVAL CHAIR and INTRODUCING 1940S ALUMINUM NAVAL CHAIR COLLECTION are not uses of a mark that is identical with or substantially indistinguishable from the registered mark 111 NAVY CHAIR. The difference between 111 NAVY CHAIR and the accused phrases is far more significant than the difference between LOUIS VUITTON and CHEWY VUITTON, for example, where the court found no counterfeiting. Louis Vuitton Malletier S.A., 507 F.3d at 269. In contrast with Louis Vuitton, where the marks overlapped in their use of the distinctive term VUITTON, the only overlap here is the entirely generic term CHAIRused in connection with chairs. This minor overlap is insufficient to render the accused phrases identical with or substantially indistinguishable from 111 NAVY CHAIR. Plaintiff alleges that the same uses of INTRODUCING 1940s NAVAL CHAIR and INTRODUCING 1940S ALUMINUM NAVAL CHAIR COLLECTION, pictured above, constitute counterfeiting of Plaintiffs registered THE NAVY CHAIR trademark. This claim fails for the same reason. INTRODUCING 1940s NAVAL CHAIR and INTRODUCING 1940S ALUMINUM NAVAL CHAIR COLLECTION are not uses of a mark that is identical with or substantially indistinguishable from the registered mark THE NAVY CHAIR. Again, the minor overlap of the term CHAIR is insufficient to make the accused phrases identical with or
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substantially indistinguishable from THE NAVY CHAIR. Accordingly, the counterfeiting claim in Plaintiffs second cause of action should be dismissed. B. Defendants accused phrases are protected by the defense of fair use.

The affirmative defense of fair use is available at both common law and by statute and defeats trademark claims where a defendants use is otherwise than as a mark; rather, it is used descriptive[ly.] KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 118 (2004) (quoting 15 U.S.C. 1115(b)(4)); Cairns v. Franklin Mint Co., 292 F.3d 1139, 1150 (9th Cir. 2002) (explaining that Section 1115 codifies common law classic fair use). The Supreme Court in KP Permanent Make-Up explained that a trademark owner adopting a mark with a descriptive meaning accepts a risk of confusion, and the use of a similar name by another to truthfully describe his own product does not constitute a legal or moral wrong. 543 U.S. at 119, 122 (internal citations omitted). Thus, where a party used VCR-2 to describe a particular input on a receiver, it was not liable for infringing the registered VCR-2 mark, as its use was fair use as a matter of law. In re Dual-Deck Video Cassette Recorder Antitrust Litig., 11 F.3d 1460, 1467 (9th Cir. 1993). The Court may dismiss a claim at the pleading stage based on the fair use defense. Id. (affirming dismissal). Plaintiffs allegations demonstrate unequivocally that Defendants uses of the two accused phrases incorporating the phrase naval chair are fair descriptions of the products Defendants offered for sale. Plaintiffs chair was allegedly designed in the 1940s on commission by the U.S. Navy during World War II. (Compl. 13.) Plaintiffs chair has been used by the Navy on ships and submarines for decades, and continues to be used by the Navy to this day. (Id.) Against this historical backdrop, Defendants use of the phrases INTRODUCING 1940s NAVAL CHAIR and INTRODUCING 1940S ALUMINUM NAVAL CHAIR COLLECTION in connection with a display of products with a style hearkening back to something first used by the Navy in the 1940s is descriptive. Plaintiff itself even characterizes Defendants use of the phrase 1940s Naval as describing its products. (Id.) These factual allegations do not establish actionable trademark infringement or dilution of the word marks THE NAVY CHAIR of 111 NAVY CHAIRthey establish descriptive, non-trademark, fair use as a matter of law, for Defendants
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phrases. In re Dual-Deck, 11 F.3d at 1467. The Court should therefore Plaintiffs second cause of action in its entirety. C. Plaintiff fails to put Defendants on notice of what is claimed as to common law trademark counterfeiting and infringement.

Plaintiffs second cause of action for trademark counterfeiting and infringement is further flawed for the same reason as Plaintiffs first cause of action. Plaintiff again asserts 15 U.S.C. 1114(1) and 1125(a) as the basis for the claim, and styles the claim as counterfeiting and infringement with a request for remedies under 15 U.S.C. 1116, but then cites common law rights as part of the basis for its claim. (Compl. 80.) Common law rights cannot serve as the basis for a claim under Sections 1114 or 1116. Plaintiffs claim is further confused by the fact that it claims the exclusive right to use the Navy Chair trademark (e.g., Compl. 80), but it does not own a registration for that mark. Instead, its registrations are for THE NAVY CHAIR and 111 NAVY CHAIR. This lack of clarity makes it impossible to determine whether Plaintiff is referring to THE NAVY CHAIR, 111 NAVY CHAIR, or its purported Navy Chair common law rights when it alleges counterfeiting and infringement under Lanham Act sections that apply only to registered rights. Plaintiff has also failed to specify what trademarks are covered by its common law rightsthe same trademarks reflected in its registrations (THE NAVY CHAIR and 111 NAVY CHAIR), the broader Navy Chair trademark, additional trademarks covering the other chairs and stools in its product line, or something else entirely. The Court should therefore dismiss Plaintiffs second cause of action as Plaintiff fails to state a claim for trademark counterfeiting and infringement. III. PLAINTIFF FAILS TO STATE A CLAIM FOR FEDERAL DILUTION (CLAIM 3).

Plaintiffs third cause of action claims federal dilution of Navy Chair trade dress and trademarks under 15 U.S.C. 1125(c). (Compl. 95.) A. Plaintiff fails to put Defendants on notice of what is claimed as trademark and trade dress dilution.

Plaintiffs third cause of action fails because it is nothing more than a formulaic
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recitation of the elements of a cause of action for dilution, which fails to satisfy Rule 8. Iqbal, 556 U.S. at 677-78. Plaintiff asserts in a conclusory manner that its Navy Chair trade dress and trademarks are famous and distinctive and that Restoration Hardwares acts dilute the distinctive quality of the Navy Chair trade dress and trademarks, but it does not even clarify which trademarks and trade dress it intends to include in the cause of action. (Compl. 94-95.) Nor does it specify the trade dress or trademarks at issue, as with Plaintiffs first two causes of action. If Plaintiff truly intends to assert dilution as to every intellectual property right it has assertedcommon law trade dress rights, common law trademark rights, registered trademark rights in 111 NAVY CHAIR and THE NAVY CHAIR, registered trademark rights in a chair logo, and registered product configuration trade dress rightsits factual allegations are woefully insufficient to satisfy Rule 8 and the pleading requirements set out in Iqbal and Twombly. Iqbal, 556 U.S. at 677-78; Twombly, 550 U.S. at 555. Aside from conclusory allegations of fame for Plaintiffs Navy Chair trade dress and trademarks (Comp. 94), Plaintiff has pled no facts showing fame of its logo, the 111 NAVY CHAIR trademark, the THE NAVY CHAIR trademark, the Navy Chair trademark, or the trade dress of other chairs in the Navy Chair product line. Plaintiffs unclear, unsupported, and overbroad allegation of dilution as to every asserted trademark and trade dress right in its Complaint is simply not sufficient under the Iqbal and Twombly standard, and the Court should dismiss Plaintiffs third cause of action in its entirety. B. Defendants accused phrases are protected under defense of fair use.

Plaintiffs third cause of action fails further as to alleged dilution of Plaintiffs trademarks because fair use, as discussed above, bars Plaintiffs recovery. 15 U.S.C. 1125(c)(3) (fair use not actionable as dilution). The Court should therefore dismiss Plaintiffs third cause of action as to trademark dilution. IV. PLAINTIFF FAILS TO STATE A CLAIM FOR COMMON LAW TRADE DRESS INFRINGEMENT (CLAIM 4)

Plaintiffs fourth cause of action claims common law trade dress infringement.

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A.

Plaintiff fails to put Defendants on notice of what is claimed as common law trade dress.

As discussed above, Plaintiff fails to identify the trade dress at issue and the accused trade dress for its common law claims. (See Section III.A.) The Court should therefore dismiss Plaintiffs fourth cause of action in its entirety, as Defendants cannot form a defense if they do not know what trade dress is asserted and what trade dress is accused. Sensible Foods, LLC, 2011 U.S. Dist. LEXIS 127397, at *18-19 (dismissing claims where defendants lack[ed] adequate notice to prepare a defense to Plaintiff's claim); Autodesk, Inc., 2008 U.S. Dist. LEXIS 109800, at *12-14 (dismissing trade dress claims and directing plaintiff to provide more detail and clarify the total appearance of the product at issue). V. PLAINTIFF FAILS TO STATE A CLAIM FOR COMMON LAW TRADEMARK INFRINGEMENT (CLAIM 5)

Plaintiffs fifth cause of action claims infringement of Emecos common law rights in the Navy Chair trademark. (Compl. 108.) A. Plaintiff accuses Defendants of infringement based on descriptive phrases protected as fair use.

Plaintiffs fifth cause of action fails as a matter of law because fair use, which is available both at common law and by statute as discussed above, bars Plaintiffs recovery. Cairns, 292 F.3d at 1150. The Court should therefore dismiss Plaintiffs fifth cause of action in its entirety. B. Plaintiff fails to put Defendants on notice of what is claimed as common law trademark rights.

As discussed above, Plaintiff fails to identify the trademarks at issue for its common law claims. Defendants cannot form a defense if they do not know what trademarks are asserted. Sensible Foods, LLC, 2011 U.S. Dist. LEXIS 127397, at *18-19 (dismissing claims where defendants lack[ed] adequate notice to prepare a defense to Plaintiff's claim). The Court should therefore dismiss Plaintiffs fifth cause of action.

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VI.

PLAINTIFF FAILS TO STATE A CLAIM FOR DILUTION UNDER CAL. BUS. & PROF. CODE 14330 ET SEQ. AND COMMON LAW (CLAIM 6).

Plaintiffs sixth cause of action alleges state law dilution under the Cal. Bus. & Prof. Code 14330 based on the Navy Chair trade dress and trademarks. (Compl. 117.) A. Plaintiff asserts a repealed statute.

The Court should dismiss Plaintiffs sixth cause of action, which alleges a violation of Section 14330 of the California Business and Professions Code (Compl. 117), in its entirety because this statute was part of a now-outdated Trademark Law that was repealed in 2008 and replaced with the Model State Trademark Law. See Cal. Bus. & Prof. Code (progressing directly from 14272 to 14401); see also 2007 Cal. ALS 711 (repealing former Trademark Law, beginning with Cal. Bus. & Prof. Code 14200). 3 B. Defendants accused phrases are protected under defense of fair use.

As an independent basis, the Court should dismiss the trademark dilution portion of Plaintiffs sixth cause of action because fair use, as discussed above, bars Plaintiffs recovery. C. Plaintiff fails to put Defendants on notice of what is claimed as trademark and trade dress dilution.

As discussed above, Plaintiff fails to identify the rights it alleges are famous and diluted, and fails to identify the trade dress and trademarks at issue (See Section II.C.) The Court should therefore dismiss Plaintiffs sixth cause of action in its entirety, as it is nothing more than a formulaic recitation of the elements of a cause of action and provides insufficient information for Defendants to form a defense. Iqbal, 556 U.S. at 677-78; Sensible Foods, LLC, 2011 U.S. Dist. LEXIS 127397, at *18-19 (dismissing claims where defendants lack[ed] adequate notice to prepare a defense to Plaintiff's claim).

Although the title of the cause of action refers to common law, the Complaint text asserts only a violation of Section 14330. (Compl. 117)

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VII.

THE COURT SHOULD DISMISS PLAINTIFFS STATE LAW CAUSES OF ACTION IF THE OTHER CAUSES OF ACTION ARE DISMISSED (CLAIMS 4-7)

Plaintiff relies solely on supplemental jurisdiction to support its state law causes of action, including its cause of action under Cal. Bus. & Prof. Code 17200 for both unlawful and unfair business practices, and has pled neither diversity jurisdiction nor the facts necessary to support diversity jurisdiction. (Compl. 10.) Where federal claims are dismissed before trial, state claims should typically be dismissed as well. United Mine Workers v. Gibbs, 383 U.S. 715, 726 (1966); Ove v. Gwinn, 264 F.3d 817, 826 (9th Cir. 2001) (affirming district court that dismissed state law claims after dismissing federal claims); see also 28 U.S.C. 1367(c)(3) (setting out that district court may decline to exercise supplemental jurisdiction after dismissing claims over which it has original jurisdiction). Here, there are no compelling reasons to retain jurisdiction over the pendent state law causes of action. The Complaint was filed just over one month ago. No Answer has been filed, and no discovery has taken place. The Court should therefore dismiss Plaintiffs state law causes of action if the other causes of action are dismissed. Moreover, the Court should dismiss Plaintiffs Section 17200 cause of action as to the allegation of unlawful business practices. Section 17200 prohibits unlawful, unfair, or fraudulent business acts or practices. Cal. Bus. & Prof. Code 17200. Plaintiff asserts claims under the unlawful and unfair prongs of the statute. (Compl. 120.) Plaintiff does not specify the law Defendants are alleged to have broken, but refers back generally to the acts discussed earlier in the Complaint (Compl. 120) (Restoration Hardwares acts, as alleged above, constitute unlawful and/or unfair business practices). Where an unlawful-prong Section 17200 claim relies on other underlying allegations of unlawful acts, as here, and those underlying allegations fail to state a claim, the unlawful-prong Section 17200 claim fails as well. PNY Techs., Inc. v. SanDisk Corp., No. C-11-04689 YGR, 2012 U.S. Dist. LEXIS 55965, at *46-47 (N.D. Cal. Apr. 20, 2012) (internal quotations omitted). Therefore, once the Court dismisses the causes of action in the Complaint on which this cause of action is based, the allegations of unlawful business practices under Section 17200 must be dismissed.

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CONCLUSION For the foregoing reasons, the Court should dismiss each of Plaintiffs causes of action. The Court should dismiss Plaintiffs first cause of action (trade dress counterfeiting and infringement) as to U.S. Reg. No. 3,191,187 because Plaintiff does not accuse Defendants of using a logo that is identical with, substantially indistinguishable from, or confusingly similar to Plaintiffs registered logo; as to its Section 1114 claim and request for relief under Section 1116 based on common law rights because these statutes only apply to registered rights; and in full because Plaintiff fails to put Defendants on notice of what is being claimed. The Court should dismiss Plaintiffs second cause of action (trademark counterfeiting and infringement) in full because Plaintiff does not accuse Defendants of using marks that are identical with or substantially indistinguishable from Plaintiffs THE NAVY CHAIR or 111 NAVY CHAIR registrations and accuses Defendants of using phrases that are classic fair use as a matter of law; as to alleged common law rights because Plaintiff asserts statutes that only apply to registered rights; and in full because Plaintiff fails to put Defendants on notice of what is being claimed. The Court should dismiss Plaintiffs third cause of action (federal dilution) as to trademark dilution because Plaintiff accuses Defendants of using phrases that are classic fair use as a matter of law; and in full because Plaintiff fails to put Defendants on notice of what is being claimed. The Court should dismiss Plaintiffs fourth cause of action (common law trade dress infringement) in full because Plaintiff fails to put Defendants on notice of what is being claimed. The Court should dismiss Plaintiffs fifth cause of action (common law trademark infringement) in full because Plaintiff accuses Defendants of using phrases that are classic fair use as a matter of law and because Plaintiff fails to put Defendants on notice of what is being claimed. The Court should dismiss Plaintiffs sixth cause of action (state dilution) in full because Plaintiff asserts a repealed statute; as to trademark dilution because Plaintiff accuses Defendants of using phrases that are classic fair use as a matter of law; and in full because Plaintiff fails to
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put Defendants on notice of what is being claimed. The Court should dismiss Plaintiffs seventh cause of action as to the unlawful prong because the underlying causes of action should be dismissed as set out above. Finally, the Court should dismiss any remaining state causes of action once it dismisses all federal causes of action (causes of action 4-7) because there are no reasons to retain jurisdiction. Dated: November 5, 2012 WESLEY E. OVERSON JENNIFER LEE TAYLOR NATHAN B. SABRI JULIA D. KRIPKE MORRISON & FOERSTER LLP

By: /s/ Wesley E. Overson WESLEY E. OVERSON Attorneys for Defendants RESTORATION HARDWARE, INC. and GARY FRIEDMAN

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[PROPOSED] ORDER GRANTING DEFENDANTS MOTION TO DISMISS CASE NO. 3:12-CV-5072 MMC sf-3214497

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION

EMECO INDUSTRIES, INC., Plaintiff, v. RESTORATION HARDWARE, INC., GARY FRIEDMAN, and Does 1-10,

Case No. 3:12-cv-5072 MMC [PROPOSED] ORDER GRANTING DEFENDANTS RESTORATION HARDWARE AND GARY FRIEDMANS MOTION TO DISMISS

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Defendants Restoration Hardware, Inc. and Gary Friedman (collectively, Defendants) have moved to dismiss Plaintiffs Complaint in the above-captioned matter pursuant to Federal Rule of Civil Procedure 12(b)(6). This motion to dismiss came on for hearing on December 14, 2012 at 9:00 a.m. Having considered the arguments of the parties and the papers submitted, Defendants Motion to Dismiss is GRANTED. IT IS HEREBY ORDERED that: 1. Plaintiffs first claim (trade dress counterfeiting and infringement) is dismissed

with prejudice as to U.S. Trademark Registration No. 3,191,187. Plaintiffs first claim is also dismissed with prejudice as to Plaintiffs claim under 15 U.S.C. Section 1114 and request for counterfeiting remedies under 15 U.S.C. Section 1116 to the extent that claim was based on common law rights. The remainder of this claim is dismissed without prejudice for failure to put Defendants sufficiently on notice of what is claimed. Should Plaintiff desire to file an Amended Complaint, Plaintiff must adequately identify its claimed trade dress and the accused trade dress, and must plead its claims based on registered rights and its claims based on unregistered common law rights as separate causes of action. 2. with prejudice. 3. Plaintiffs third claim (federal dilution) is dismissed with prejudice as to trademark Plaintiffs second claim (trademark counterfeiting and infringement) is dismissed

dilution. The remainder of this claim is dismissed without prejudice for failure to put Defendants sufficiently on notice of what is claimed. Should Plaintiff desire to file an Amended Complaint, Plaintiff must adequately identify its claimed trade dress and the accused trade dress, and specifically identify what rights it alleges are famous and at risk of dilution. 4. Plaintiffs fourth claim (common law trade dress infringement) is dismissed

without prejudice for failure to put Defendants sufficiently on notice of what is claimed. Should Plaintiff desire to file an Amended Complaint, Plaintiff must adequately identify its claimed trade dress and the accused trade dress. 5. prejudice.
[PROPOSED] ORDER GRANTING DEFENDANTS MOTION TO DISMISS CASE NO. 3:12-CV-5072 MMC sf-3214497

Plaintiffs fifth claim (common law trademark infringement) is dismissed with

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6. 7.

Plaintiffs sixth claim (state dilution) is dismissed with prejudice. Plaintiffs seventh claim (Cal. Bus. & Prof. Code Section 17200) is dismissed

without prejudice. Should Plaintiff desire to file an Amended Complaint, it may include this claim to the extent it relies upon re-pled claims and not dismissed claims. IT IS SO ORDERED. Dated: _______________________ ______________________________ Hon. Maxine M. Chesney United States District Judge

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[PROPOSED] ORDER GRANTING DEFENDANTS MOTION TO DISMISS CASE NO. 3:12-CV-5072 MMC sf-3214497