Le v. Huynh

Background

Dien Le alleged that he owns Hue Restaurant, a Vietnamese restaurant in a shopping center in San Jose, California, and owns a valid copyright in its menu. He alleged that Trinh Ngoc Huynh, his former employee, opened a competing restaurant called Huynh Dining across the street. According to Le, the competing restaurant had a confusingly similar name, the same offerings, and an almost identical menu.

Le sued on March 1, 2023, asserting copyright infringement, trademark-related claims, and claims under the California Business and Professions Code. The court had previously denied Le’s request for a temporary restraining order seeking to prevent the defendants from using his menu or the “Hue Restaurant” mark, or a confusingly similar mark or design.

Copyright claim

A copyright-infringement claim requires allegations that the plaintiff owns a valid copyright and that the defendant copied protected parts of the work. The defendants argued that Le had attached only a copyright application, not a copyright registration. The court explained that, under the Supreme Court’s interpretation of 17 U.S.C. § 411(a), a copyright owner generally must obtain registration before bringing an infringement lawsuit; submitting an application is not enough.

Because Le attached a copyright application rather than a registration and did not adequately plead that registration had been made, the court dismissed the copyright-infringement claim. In the conclusion, the court identified this as the first cause of action and dismissed it with leave to amend. The court gave Le until July 3, 2023, to amend if he wished to do so.

Trademark and other claims

The defendants also sought dismissal of Le’s trademark claims. They argued that “Hue” could not be a registrable mark because it is the name of a city in central Vietnam, and that Le could not show a likelihood that consumers would be confused. The court rejected dismissal at this stage. It explained that whether the mark is primarily geographically descriptive, whether it has acquired a secondary meaning, and whether consumers are likely to be confused involve factual questions. The court also found that Le had alleged customer confusion sufficiently to raise his claim above the speculative level.

The defendants argued that the court should dismiss the state-law claims if the federal claims were dismissed and that those claims failed because the copyright and trademark claims were invalid. The court rejected those arguments because they depended on dismissal of the federal claims, and it found that Le had adequately pleaded his Lanham Act claims. The court therefore denied the motion to dismiss as to the remaining claims.

Sanctions and disposition

The defendants requested $5,000 in attorney’s fees as monetary sanctions, arguing that Le acted in bad faith by bringing and continuing to prosecute the case. Their stated basis was the earlier denial of Le’s temporary restraining-order request and defense counsel’s warning that sanctions would be sought if the case continued. The court found this insufficient to show bad faith and denied the sanctions motion.

Judge Susan Illston therefore ruled that the motion to dismiss was GRANTED IN PART: the first cause of action was dismissed with leave to amend, and the motion was denied as to the remaining claims. The motion for sanctions was DENIED.