Commercial Litigation and Arbitration

Judicial Notice of Internet Evidence — U.S. Patent Office Records on 12(b)(6) Motion Only for the Limited Purpose of Showing Dates of Filings and Actions Described Therein

Morton & Bassett, LLC v. Organic Spices, Inc., 2016 U.S. Dist. LEXIS 120092 (N.D. Cal. Sept. 6, 2016):

Before the Court is the motion to dismiss filed by Defendant-Counterclaimant Organic Spices, Inc. ("Defendant"). Dkt. No. 40 ("Mot."). Defendant moves to dismiss Plaintiff Morton & Bassett, LLC's ("Plaintiff") complaint for trade dress infringement under Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim upon [*2]  which relief can be granted. In the alternative, Defendant moves to strike functional and generic elements of the asserted trade dress. Plaintiff has filed an opposition, Dkt. No. 43 ("Opp."), and Defendant has replied, Dkt. No. 46 ("Reply").

Under Federal Rule of Civil Procedure 78(b) and Civil Local Rule 7-1(b), the Court finds that this matter is suitable for disposition without oral argument. For the foregoing reasons, the Court GRANTS IN PART and DENIES IN PART Defendant's motion to dismiss and DENIES Defendant's motion to strike. The Court also SETS a further case management conference for September 13, at 2:00pm to discuss scheduling in this matter.



Before turning to the substance of Defendant's motion to dismiss, the Court must address its request for judicial notice of certain USPTO records. These records include: (1) copies of five trademarks registered by Plaintiff; (2) a copy of a trademark registered by Defendant; and (3) copies of four trademarks registered by several third parties. Dkt. No. 40-2. Defendant claims that these records are judicially noticeable as materials made publicly available by a governmental entity and, with respect to Plaintiff's trademarks, under the incorporation by reference doctrine.

A. Legal [*10]  Standard

Generally, courts may not look to materials outside of the complaint to rule on a Rule 12(b)(6) motion. Swartz v. KPMG LLP, 476 F.3d 756, 763 (9th Cir. 2007). Under the doctrine of judicial notice, however, courts are permitted to establish and rely on "a fact that is not subject to reasonable dispute because it: (1) is generally known within the trial court's territorial jurisdiction; or (2) can be accurately and readily determined from sources whose accuracy cannot reasonably be questioned." Fed. R. Evid. 201(b). This includes information governmental entities have made publicly available on websites, unless the authenticity or accuracy of the websites or information displayed is disputed. Daniels-Hall v. Nat'l Ed. Ass'n, 629 F.3d 992, 998 (9th Cir. 2010).

B. Analysis

The Court takes judicial notice of the various USPTO records as materials made publicly available by a governmental entity on its website, see Daniels-Hall, 629 F.3d at 998, but "only for the limited purpose of demonstrating that the filings and actions described therein occurred on certain dates," see Pinterest Inc. v. Pintrips Inc., 15 F. Supp. 3d 992, 997 (N.D. Cal. 2014). Defendant's attempt to judicially notice these materials to prove that Plaintiff's asserted trade dress is functional and generic is "entirely improper" at the dismissal stage. Pinterest, 15 F. Supp. 3d at 997. And "[t]o the extent the USPTO records are nonetheless noticeable for the limited purposes discussed above, they are irrelevant for resolving defendant's motion to dismiss." Id.

The Court also addresses the declaration that Defendant filed in connection with its motion to dismiss. See Dkt. No. 40-3 ("Kanach Decl."). While the declaration was used in part to lay the foundation for the USPTO records discussed above, it also seeks to make evidentiary claims. For example, the declarant avers that Plaintiff owns several registered trademarks but has no registered [*12]  trade dress, based on his search. Id. ¶¶ 2-4. These kinds of evidentiary claims are improper at the dismissal stage, where review is confined to the pleadings and materials subject to judicial notice. See Jen v. City & Cnty. of San Francisco, No. 15-cv-03834, 2016 U.S. Dist. LEXIS 89673, 2016 WL 3669985, at *4 (N.D. Cal. Jul. 11, 2016) (disregarding declaration offered with request for judicial notice that made evidentiary claims extrinsic to the judicially-noticeable materials). Accordingly, the Court disregards Paragraphs 2-4, 6, and 11 of the Kanach Declaration.

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