ORDER – No. 17-cv-00898-LB

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United States District Court 

Northern District of California 

UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF CALIFORNIA 

San Francisco Division 

JONATHAN WANG and GOLFBESTBUY, 

INC., 

Plaintiffs, 

v. 

GOLF TAILOR, LLC and TIM OYLER, 

Defendants. 

Case No. 17-cv-00898-LB 

ORDER GRANTING MOTION TO 

DISMISS 

Re: ECF No. 71 

INTRODUCTION 

This case and the three cases consolidated with it involve competing intellectual property 

claims to the designs of a golf club — the XE1 — and a golf training aid — the Speed Whip.1

 The 

plaintiffs (Jonathan Wang and Golf BestBuy) and the defendants (Timothy Oyler and Golf Tailor) 

both claim to have designed the golf club and training aid; both claim the other stole their designs. 

In this case, the plaintiffs seek relief under U.S. copyright statutes (17 U.S.C. § 101 et seq), among 

other laws, arguing that the defendants used copies of the plaintiffs’ designs to counterfeit the golf 

club and golf aid.2

 The defendants countersued the plaintiffs, asserting a claim of trade-secrets 

 

1

 Second Amend. Third-Party Complaint (“SAAC”) – ECF No. 52; First Amend. Compl. (“FAC”) – 

ECF No. 70. Record citations refer to materials in the Electronic Case File (“ECF”); pinpoint citations 

are to the ECF-generated page numbers at the top of documents. 

2

 FAC – ECF No. 70 at 18–26. 
ORDER – No. 17-cv-00898-LB 2

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theft in violation of the California Uniform Trade Secrets Act (“CUTSA”), Cal. Civ. Code §§ 

3426–2426.11. It also raised the affirmative defense — in the form of the plaintiffs’ theft of the 

defendants’ trade secrets — as an affirmative defense to the plaintiffs’ claims of copyright 

infringement of the plaintiffs’ copyrighted drawings and as stand-alone claims for declaratory 

judgment of non-infringement.3 

The defendants’ trade-secrets counterclaim is predicated on allegations that third-party 

defendants Golf Gifts & Gallery said that it would manufacture the products at its own facilities in 

China but instead contracted with Kingstar — owned by Mr. Wang — to manufacture the 

products. Mr. Wang then used the defendants’ trade secrets to obtain Chinese design patents for 

the XE1 and the Speed Whip and used those patents to obtain U.S. Patents.4 The court granted the 

plaintiffs’ motion to dismiss all counterclaims, primarily because Mr. Wang’s alleged bad acts 

happened after Golf Tailor publicly disclosed its trade secrets through product sales and also 

because the allegations of conspiracy are conclusory.5

The defendants cross-sue cross-defendants Golf Gifts & Gallery and its principal Dean Chudy, 

raising four claims: (1) a CUTSA claim of theft of trade secrets, predicated on the crossdefendants’ responsibility for disclosing the trade secrets to Mr. Wang; (2) breach of fiduciary 

duty (under Oklahoma law); (3) contribution to unfair competition in violation of California’s 

Unfair Competition Law (“UCL”), Cal. Bus. & Prof. Code § 17200, and false designation of 

origin under the Lanham Act, 15 U.S.C. § 1125(a); and (4) contribution to trademark infringement 

and counterfeiting in violation of the Lanham Act, 15 U.S.C. § 1114(1).6

 The cross-defendants 

move to dismiss all claims for failure to state a claim under Federal Rule of Civil Procedure 

12(b)(6).7 The court grants the motion and dismisses the complaint with leave to amend. 

 

3

 SAAC – ECF No. 52 at 20–25. 

4 Id. at 16–19 (¶¶ 18–23, 26–31, 33, 35, 38, 40). 

5

 Order – ECF No. 97 at 2, 10–14. 

6

 SAAC – ECF No. 52 at 40–46. 

7

 Motion – ECF No. 71. 
ORDER – No. 17-cv-00898-LB 3

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STATEMENT 

The court assumes familiarity with its order at ECF No. 97, which recounts the plaintiffs’ and 

defendants’ competing claims of theft of the design rights embodied in the XE1 and the Speed 

Whip.8 The Statement in that order sets forth allegations about Golf Gifts & Gallery that supported 

the defendants’ claim that the plaintiffs stole their trade secrets about the design of the products. 

The additional allegations in the cross-complaint generally repeat the allegations about Golf Gifts 

& Gallery and Mr. Chudy. In sum, they are as follows. The plaintiffs’ alleged trade-secrets theft of 

Mr. Oyler’s design occurred because Golf Gifts contracted with Mr. Wang’s company Kingstar to 

manufacture the XE1 and the Speed Whip.9 (Golf Tailor thought that Golf Gifts had its own 

manufacturing facility.10) Mr. Chudy told Golf Tailor that Golf Gifts had its own manufacturing 

facilities in China, and Golf Tailor relied on this representation.11 The defendants allege that “[o]n 

information and belief,” Mr. Chudy and Golf Gifts conspired with the defendants to 

misappropriate the Golf Tailor trade secrets.12 

GOVERNING LAW 

A Rule 12(b)(6) motion to dismiss for failure to state a claim tests the legal sufficiency of a 

complaint. Navarro v. Block, 250 F.3d 729, 732 (9th Cir. 2001). A claim will normally survive a 

motion to dismiss if it offers a “short and plain statement . . . showing that the pleader is entitled to 

relief.” See Fed. R. Civ. P. 8(a)(2). This statement “must contain sufficient factual matter, 

accepted as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 

662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). “A claim has 

facial plausibility when the plaintiff pleads factual content that allows the court to draw the 

reasonable inference that the defendant is liable for the misconduct alleged.” Iqbal, 556 U.S. at 

 

8

 Order – ECF No. 97. 

9

 SAAC – ECF No. 52 at 18 (¶ 33). 

10 Id. at 18, 29, 33–34 (¶¶ 15, 33, 40, 42–43). 

11 Id. at 27, 29 (¶¶ 3, 15). 

12 Id. at 18 (¶ 33). 
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678. “The plausibility standard is not akin to a ‘probability requirement,’ but it asks for more than 

a mere possibility that a defendant has acted unlawfully.” Id. (quoting Twombly, 550 U.S. at 556). 

“Where a complaint pleads facts that are ‘merely consistent with’ a defendant’s liability, it ‘stops 

short of the line between possibility and plausibility of ‘entitlement to relief.’’” Iqbal, 556 U.S. at 

678 (quoting Twombly, 550 U.S. at 557). 

When considering a Rule 12(b)(6) motion, the court must accept as true all factual allegations 

in the complaint as well as all reasonable inferences that may be drawn from such allegations. 

LSO, Ltd. v. Stroh, 205 F.3d 1146, 1150 n. 2 (9th Cir. 2000). Such allegations must be construed 

in the light most favorable to the nonmoving party. Shwarz v. United States, 234 F.3d 428, 435 

(9th Cir. 2000). 

If a court dismisses a complaint, it should give leave to amend unless the “pleading could not 

possibly be cured by the allegation of other facts.” Cook, Perkiss and Liehe, Inc. v. Northern 

Collection Serv. Inc., 911 F.2d 242, 247 (9th Cir. 1990). 

ANALYSIS 

1. CUTSA Claim, Claims Predicated on Contributory Responsibility, and Fiduciary Claim 

The third-party defendants argue that the CUTSA claim does not sufficiently allege a trade 

secret. The court disagrees. In its order at ECF No. 97, the court held that the defendants plausibly 

plead the existence of their trade secrets in the form of their proprietary and secret designs, their 

efforts to retain secrecy, and their communication of confidentiality to Golf Gifts & Gallery.13

But as the court also held, the defendants did not plausibly plead the misappropriation of the 

trade secrets.14 The plaintiffs allege only that Golf Gifts’ representation about its manufacturing 

facility in China makes it responsible for the plaintiffs’ alleged misappropriation of the 

defendants’ alleged design of the XE1 and the Speed Whip. The defendants’ conclusion about the 

cross-defendants’ other acts — allegedly passing trade secrets to the plaintiffs — is just that: a 

 

13 Order – ECF No. 97 at 10. 

14 Id. at 9–12. 
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conclusion predicated only on “information and belief” and not on actual facts.15 The allegations 

are too conclusory to plausibly suggest Golf Gifts, Mr. Chudy’s, or the plaintiffs’ responsibility 

under a theory of co-conspirator liability.16 

In claims three and four, the defendants claim that Golf Gifts and Mr. Chudy are responsible 

under California’s UCL and the Lanham Act for contribution to unfair competition and trademark 

infringement. Again, the defendants’ conclusory allegations are based only on information and 

belief about the alleged passing of trade secrets and do not plausibly plead claims establishing 

contributory responsibility. 

The defendants’ final claim is for breach of fiduciary responsibility in violation of Oklahoma 

law. To the extent that the breach is predicated on theft of trade secrets, it fails because CUTSA 

preempts all common-law claims based on trade-secret misappropriation. K.C. Multimedia Inc. v. 

Bank of Am. Tech. & Operations, Inc., 171 Cal. App. 4th 939, 958–59 (2009); Digital Envoy Inc. 

v. Google Inc., 370 F. Supp. 2d 1025, 1035 (N.D. Cal. 2005). Moreover, read as a whole, the fact 

allegations do not establish any claim for breach of fiduciary responsibility predicated on facts 

other than theft of trade secrets. 

The court dismisses the claims with leave to amend. 

2. Motion to Strike Paragraphs 46–62 

The court denies as moot the motion to strike paragraphs 46 to 62 on the ground that the 

allegations are superfluous and do not support the claims.17 

 

15 SAAC – ECF No. 52 at 43, 45 (¶¶ 86, 99). 

16 Order – ECF No. 97 at 9–12. 

17 Motion – ECF No. 71 at 14.