BGC Inc. v. Robinson

Background

BGC Inc. alleged that it owned a federally registered trademark covering charitable fundraising, education, and charitable services. It alleged that Rauhmel Fox Robinson and Black Girls Code, Inc. used the mark without alteration on their website, advertising, and social-media accounts for the same services, and attempted to make consumers believe that Black Girls Code, Inc. was BGC or had taken over BGC’s business.

BGC asserted five claims: trademark infringement under the Lanham Act; unfair competition and false designation of origin under the Lanham Act; common-law trademark infringement; violations of California’s Unfair Competition Law; and tortious interference with business relationships. The defendants moved to dismiss all claims against Robinson, arguing that BGC had not adequately alleged that he was responsible for the corporation’s conduct, and argued that BGC lacked a sufficient ownership or other interest in the trademark. They also challenged the tortious-interference claim.

Analysis

A motion under Federal Rule of Civil Procedure 12(b)(6) tests whether the complaint states a legally sufficient claim. The court generally accepts the complaint’s factual allegations as true and asks whether they plausibly support relief.

Claims against Robinson. The court denied in part the motion to dismiss the claims against Robinson. Although BGC included allegations that Robinson was the corporation’s alter ego, the court concluded that BGC did not need to rely on that theory at this stage. An officer or director may be personally liable for torts that the officer or director authorizes, directs, or participates in. BGC alleged that Robinson participated in the alleged infringement through messages on a Twitter account and that he was Black Girls Code, Inc.’s chief executive officer. The court found those allegations sufficient to support possible individual liability.

Trademark standing. The defendants argued that BGC could not sue because the trademark registration identified “Black Girls Code (California Corporation)” as the owner. The court concluded that BGC sufficiently alleged a statutory right to pursue its trademark and related claims. The court noted allegations and records indicating that Black Girls Code Inc. and BGC were successor entities, shared addresses, and were connected to the trademark registration. This conclusion applied to BGC’s first four claims because its California Unfair Competition Law claim depended on the trademark claims.

Tortious interference. The court granted in part the motion to dismiss BGC’s tortious-interference claim. To state that claim, BGC had to allege an economic relationship with a third party, the defendants’ knowledge of that relationship, intentional disruption, actual disruption, and resulting economic harm. BGC specifically identified donorbox but did not allege that it could no longer use donorbox or that using it had become more costly or burdensome. The court therefore found the allegations insufficient as to actual disruption and economic harm. Because amendment did not appear futile, the court granted BGC leave to amend the claim.

Disposition and next steps

The court granted in part and denied in part the defendants’ motion to dismiss. It required BGC to file any amended complaint by July 29, 2022. It vacated the hearing on the motion, left BGC’s preliminary-injunction motion pending, and set an initial case-management conference for August 12, 2022, with the parties’ joint statement due August 5, 2022.