Court: District Court, C.D. California; October 24, 2012; Federal District Court
Defendant Google Inc. filed a Motion to Transfer or, alternatively, to Dismiss Plaintiffs’ State Law Claims. The Court reviewed the submitted documents and arguments, granting the motion in part and denying it in part. The case involves a complaint from Plaintiff CYBERsitter, LLC against Google and ContentWatch, Inc., regarding the use of the CYBERsitter trademark. CYBERsitter, which has been marketing its content-filtering software since 1995, claims ownership of the trademark. ContentWatch markets a competing product called 'Net Nanny.' Google operates a significant search engine and generates revenue through paid advertisements linked to keyword searches, including its AdWords program launched in 2000. CYBERsitter’s president, Brian Milburn, enrolled in the AdWords program and accepted a clickwrap agreement in 2006, which stipulated that all claims related to the agreement would be litigated in Santa Clara County, California. Milburn has not used the AdWords program since December 2010. Recently, he discovered that ContentWatch was advertising its Net Nanny program using the CYBERsitter trademark without authorization, often appearing prominently in search results for the CYBERsitter name.
On June 18, 2012, the Plaintiff initiated a lawsuit against both Defendants, alleging trademark infringement, false advertising, unfair competition, and unjust enrichment. The Plaintiff claims that Defendant Google violated federal and California laws by (1) selling the right to use the CYBERsitter trademark to Content-Watch, which unlawfully used the trademark in online advertisements via Google's advertising program, and (2) allowing and promoting Content-Watch's use of the trademark in its advertisements. In response, Defendant filed a Motion seeking to transfer the case based on a forum selection clause in the Plaintiff's AdWords Agreement or, alternatively, to dismiss the state law claims against it.
The legal framework for transferring the case under Federal Rule of Civil Procedure 12(b)(3) is outlined, indicating that a motion can be made if the case was not filed in the proper venue as dictated by a forum selection clause. The court may consider facts beyond the pleadings and must resolve factual disputes in favor of the non-moving party. Forum selection clauses are generally enforceable unless the opposing party demonstrates that enforcement would be unreasonable, unjust, or the clause is invalid due to factors like fraud. The Plaintiff raised objections to the Declaration and exhibits submitted by Ms. Buer but these were deemed moot as the Court did not rely on them for its analysis. Additional objections regarding the relevance and foundation of certain declarations and exhibits were also noted.
Ms. Buer’s assertion of personal knowledge regarding guidelines or policies related to her role as a legal analyst for Defendant’s Online Legal Support is deemed insufficient without additional supporting facts, leading to the Court's decision to grant Plaintiff's objections to her Supplemental Declaration and the accompanying exhibits, which also lacked proper authentication. The Court denies Defendant's Motion to Transfer, determining that the forum selection clause in the Plaintiff's Agreement does not pertain to the claims involved, as the Agreement specifically addresses the Plaintiff's participation in Google’s advertising programs, not issues related to third-party trademark infringement. The Court distinguishes this case from precedents cited by Defendant, clarifying that it is not disregarding important phrases nor imposing contradictory meanings. Additionally, the Court finds that the Plaintiff's claims are not connected to Defendant’s general policies, reinforcing that the forum selection clause is inapplicable. Regarding the dismissal of Plaintiff's state law claims under FRCP 12(b)(6), the Court emphasizes the requirement for a complaint to present sufficient factual matter to establish a plausible claim for relief, beyond mere labels or conclusions.
A district court is generally required to allow leave to amend a dismissed claim unless it is clear that the claim cannot be remedied by additional allegations. The Communications Decency Act (CDA) protects providers of interactive computer services from liability for content created by others, defining an "information content provider" as one who is responsible for creating or developing the information. The Ninth Circuit specifies that an interactive service provider loses CDA immunity if it "materially contributes" to the illegal content.
In a case concerning false advertising, the plaintiff alleges that the defendant and Content-Watch made misleading statements about the plaintiff's products. The defendant contends that the advertisements were solely created by ContentWatch. The court finds it premature to determine if CDA immunity applies, thus denying the defendant's motion to dismiss the false advertising claim. For other claims, such as trademark infringement and unfair competition, the plaintiff's allegations do not meet the Ninth Circuit's requirement for "material contribution," granting the defendant CDA immunity for those claims. However, if the claims arise from the defendant's conduct unrelated to the advertisement content, CDA immunity does not apply. The plaintiff has provided sufficient facts to support state law trademark infringement claims.
To establish a trademark infringement claim, a registered trademark holder must demonstrate that another party is using a similar mark without consent, in commerce, related to selling goods or services, and in a manner likely to cause consumer confusion (15 U.S.C. 1114(1)(a)). The Plaintiff claims the Defendant unauthorizedly sold third parties the right to use the CYBERsitter trademark in an advertising program, leading to potential consumer confusion. This assertion satisfies the requirements for a trademark infringement claim not protected by CDA immunity.
For the state law claim of contributory infringement, California Business and Professions Code § 14245(a)(3) holds liable anyone who knowingly assists in the use of a registered mark without consent. The Plaintiff alleges that the Defendant encouraged and facilitated third-party use of the CYBERsitter trademark in various ways, which supports an independent claim under state law.
Under California's Unfair Competition Law (UCL), unfair competition includes any unlawful or deceptive business practices (Cal. Bus. Prof. Code § 17200). The Plaintiff claims the Defendant engaged in false and misleading advertising, which, if true, sufficiently states a UCL claim that survives a motion to dismiss based on CDA immunity.
Lastly, the Court will address the Defendant's arguments regarding the unjust enrichment claim in a subsequent section. Overall, the Plaintiff has adequately pled state law claims for trademark infringement, contributory infringement, and unfair competition, warranting the denial of the Defendant's Motion to Dismiss these claims.
The court addressed the issue of whether unjust enrichment constitutes an independent cause of action in California, noting a division among state courts. Certain cases, such as Jogani and McKell, suggest it may be recognized as a standalone claim, while others, including Lectrodryer and First Nationwide Savings, indicate it is not. Federal courts in California have generally ruled that unjust enrichment is not an independent cause of action, viewing it as duplicative of existing legal remedies. Consequently, the court granted the defendant's motion to dismiss the plaintiff’s unjust enrichment claim without leave to amend. However, the court denied the defendant’s motions to transfer and to dismiss the plaintiff’s state law claims. The ruling is finalized with the statement that clickwrap agreements require users to actively acknowledge their acceptance of terms before proceeding on a website.
