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United States District Court

Northern District of California

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

MARCO BICEGO S.P.A., et al.,

Plaintiffs,

v.

STEPHANIE KANTIS, et al.,

Defendants.

Case No. 17-cv-00927-SI 

ORDER GRANTING IN PART 

DEFENDANTS’ MOTION TO DISMISS 

AND TO STRIKE; GRANTING 

PLAINTIFFS LEAVE TO FILE THIRD 

AMENDED COMPLAINT

Re: Dkt. No. 46

Defendants’ motion to dismiss and to strike was scheduled for a hearing on September 7, 

2017. Pursuant to Civil Local Rule 7-1(b), the Court determined that this matter is appropriate for 

resolution without oral argument and vacated the hearing. For the reasons set forth below, the Court 

GRANTS defendants’ motion to dismiss, GRANTS defendants’ motion to strike in part, and

GRANTS plaintiffs leave to amend. The amended complaint must be filed no later than 

September 14, 2017.

BACKGROUND

I. Factual Background

On February 23, 2017, plaintiffs Marco Bicego USA, Inc. and Marco Bicego S.P.A. filed 

this lawsuit against defendants Kantis Holdings, LLC and Stephanie Kantis. The second amended 

complaint alleges that plaintiffs are “world renowned fine jewelers celebrated over the past 59 

years for their unique and high-quality designs using precious metals, primarily gold, platinum, 

silver and the highest quality diamonds in their work, including their famously received JAIPUR 
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and JAIPUR LINK collection.” Second Amended Complaint (“SAC”) at 1–2 (Dkt. No. 37). 

Defendants are “jewelry accessories manufacturers under the trademark and trade name Stephanie 

Kantis, selling nationally throughout the United States.” Id. at 2.

The present suit arose out of a series of letters the parties exchanged beginning February 2, 

2017. Defendants sent a cease-and-desist letter to plaintiffs, stating that “Ms. Kantis’s signature 

look of her innovative jewelry collection is CORONATION chains . . . in her VERSITAL 

Collection, a collection of statement-making pendants, chains, and bracelets made to mix and 

match,” and asserting that “Marco Bicego is presently advertising and offering for sale a line of 

virtually identical chains, which copies the Kantis Trade Dress and otherwise infringes on her 

copyrights.” Id. at Ex. F. The letter requests, inter alia, that Bicego “immediately pull the 

Infringing Designs from his line and cease marketing and selling goods that infringe on Stephanie 

Kantis‘s trade dress and copyright.” Id.

In a letter dated February 21, 2017, plaintiffs responded questioning defendants’ claims 

and asserting their own intellectual property rights. Id. at Ex. G. On February 23, 2017, plaintiffs 

filed this lawsuit. Compl. (Dkt. No. 1). Five days later, plaintiffs sent a settlement proposal letter 

to defendants and filed their first amended complaint. SAC, Ex. H (Dkt. No. 37); FAC (Dkt. No. 

9).

Two months later, on April 26, 2017, defendants responded directly to plaintiffs in a letter. 

SAC, Ex. I (Dkt. No. 37). In the letter, defendants strongly challenged plaintiffs’ claims, rejected 

plaintiffs’ claims in their complaint and letters, and further developed the factual and legal basis 

for their own trademark, trade dress, and copyright enforcement. Id. The letter closed offering a 

“reasonable discussion” on the matter, rather than litigation. Id. 

II. Procedural Background

The FAC asserted three causes of action: (1) declaratory relief under 28 U.S.C. §§ 2201-

02; (2) violation of the Lanham Act, 15 U.S.C. § 1125(a); and (3) violation of California‘s Unfair 

Competition Law, Cal. Bus. & Prof. Code §§ 17200, et seq. Defendants moved to dismiss the 

Lanham Act and Unfair Competition claims for failure to state a claim, and moved to strike certain 
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allegations as immaterial. In an order filed June 20, 2017, the Court dismissed the Lanham Act 

and Unfair Competition claims with leave to amend. Dkt. No. 36. The Court also granted 

defendants’ motion to strike portions of the complaint which sought declaratory relief regarding 

plaintiffs’ alleged intellectual property rights.1 The Court found that defendants’ February 2, 2017 

letter, which formed the basis for plaintiffs’ declaratory relief claim, “does not contain any 

assertions about whether defendants infringe plaintiffs’ intellectual property rights, or even what 

constitutes plaintiffs’ intellectual property. The letter does not create a real and substantial dispute 

regarding plaintiffs’ intellectual property rights or whether defendants have infringed those rights. 

The Court agrees with defendants that if plaintiffs wish to pursue intellectual property claims 

against defendants, they must do so by alleging affirmative claims for trademark or copyright 

infringement.” Id. at 11:10-15.

On July 6, 2017, plaintiffs filed the SAC, which alleges a single cause of action for 

declaratory relief under 28 U.S.C. §§ 2201–02. Dkt. No. 37. Despite the Court’s order striking 

Paragraphs 10e–f and 19(1)e–f of the FAC, the SAC contains similar allegations and again seeks a 

declaration regarding plaintiffs’ alleged intellectual property rights and defendants’ infringement 

of those rights. 

Defendants have moved to dismiss plaintiffs’ declaratory relief claim for lack of subject 

matter jurisdiction. Defendants have also moved to strike the request for attorneys’ fees and the 

allegations seeking declaratory relief regarding plaintiffs’ intellectual property rights. In 

opposition, plaintiffs seek leave to file a third amended complaint. Opp’n, Ex. A (Dkt. No. 49). 

LEGAL STANDARDS

I. Rule 12(b)(1)

Federal Rule of Civil Procedure 12(b)(1) allows a party to challenge a federal court’s 

 

1

 The paragraphs at issue sought a declaration “that Plaintiffs have substantial intellectual 

property rights in their JAIPUR LINK Collection” and “that, upon information and belief, 

Defendants have appeared either knowingly or by innocent act produced, manufactured and sold 

designs that are covered by the rights of Plaintiffs.” FAC ¶ 10e–f; see also id. at ¶ 19(l)e–f 

(corresponding prayer for relief). 
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jurisdiction over the subject matter of the complaint. As the party invoking the jurisdiction of the 

federal court, the plaintiff bears the burden of establishing that the court has the requisite subjectmatter jurisdiction to grant the relief requested. See Kokkonen v. Guardian Life Ins. Co. of 

America, 511 U.S. 375, 377 (1994) (internal citations omitted). A complaint will be dismissed if, 

looking at the complaint as a whole, it appears to lack federal jurisdiction either “facially” or 

“factually.” Safe Air for Everyone v. Meyer, 373 F.3d 1035, 1039 (9th Cir. 2004) (“A Rule 

12(b)(1) jurisdictional attack may be facial or factual.”); Thornhill Publ’g Co., Inc. v. General Tel. 

& Elecs. Corp., 594 F.2d 730, 733 (9th Cir. 1979). When the complaint is challenged for lack of 

subject-matter jurisdiction on its face, all material allegations in the complaint will be taken as true 

and construed in the light most favorable to the plaintiff. NL Indus. v. Kaplan, 792 F.2d 896, 898 

(9th Cir. 1986). In deciding a Rule 12(b)(1) motion which mounts a factual attack on jurisdiction, 

“no presumptive truthfulness attaches to plaintiff’s allegations, and the existence of disputed 

material facts will not preclude the trial court from evaluating for itself the merits of jurisdictional 

claims. Moreover, the plaintiff will have the burden of proof that jurisdiction does in fact exist.” 

Mortensen v. First Fed. Sav. & Loan Ass’n, 549 F.2d 884, 891 (3d Cir. 1977).

II. Rule 12(f)

Pursuant to Federal Rule of Civil Procedure 12(f), the Court may strike from a pleading 

“any redundant, immaterial, impertinent or scandalous matter.” Fed. R. Civ. P. 12(f). The 

purpose of a Rule 12(f) motion is to avoid spending time and money litigating spurious issues. 

Fantasy, Inc. v. Fogerty, 984 F.2d 1524, 1527 (9th Cir. 1993), reversed on other grounds, 510 U.S. 

517 (1994). Matter is immaterial if it has no essential or important relationship to the claim for 

relief pleaded. Id. Matter is impertinent if it does not pertain and is not necessary to the issues in 

question in the case. Id.

DISCUSSION

I. Subject Matter Jurisdiction

Defendants move to dismiss the SAC for lack of federal subject matter jurisdiction. The 
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SAC alleges that this Court “has jurisdiction under 28 U.S.C. §§ 2201-02, the Declaratory 

Judgment Act.” SAC ¶ 3 (Dkt. No. 37). Defendants argue that the Declaratory Judgment Act

provides no independent basis for jurisdiction and that plaintiffs fail to allege subject matter 

jurisdiction on federal question or diversity grounds. While plaintiffs do not clearly articulate the 

jurisdictional basis for a declaratory relief claim, plaintiffs assert that this case has “a foundation in 

intellectual property laws.” Opp’n at 5 (Dkt. No. 49). Plaintiffs also propose to file a third 

amended complaint alleging jurisdiction for the declaratory relief claim pursuant to the Lanham 

Act, the Copyright Act, and diversity of the parties. Opp’n, Ex. A ¶ 3 (Dkt. No. 49). 

The Court concludes that the SAC fails to establish federal question jurisdiction under 28 

U.S.C. § 1331. It is “well settled” that claims under the Declaratory Judgment Act require an 

independent basis of jurisdiction beyond the Act itself. City of Colton v. Am. Promotional Events, 

Inc.-W., 614 F.3d 998, 1006 (9th Cir. 2010) (citing Staacke v. United States Sec’y of Labor, 841 

F.2d 278, 280 (9th Cir. 1988)). Therefore, any party asserting a claim under the Declaratory 

Judgment Act must also establish federal subject matter jurisdiction arising under a federal 

question or diversity of citizenship. Skelly Oil v. Phillips Petroleum, 339 U.S. 667, 671-72 (1950). 

The SAC does not cite an independent basis for jurisdiction.

In the interest of judicial efficiency, the Court will examine the jurisdictional allegations of 

the proposed TAC to determine whether plaintiffs can establish subject matter jurisdiction in this 

case. When determining federal question jurisdiction in a declaratory judgment case, the court 

must look to the “character of the threatened action.” Medtronic, Inc. v. Mirowski Family 

Ventures, LLC, 134 S. Ct. 843, 848 (2014). The Court must ask whether a “coercive action” 

brought by the declaratory judgment defendant “would necessarily present a federal question.” Id.

(citing Franchise Tax Bd. of Cal. v. Construction Laborers Vacation Trust for Southern Cal., 463 

U.S. 1, 19 (1983)). It is the character of the threatened action—not the defense to that action—

that confers federal question jurisdiction. State of Cal. By & Through Dep't of Water Res. v. 

Oroville-Wyandotte Irr. Dist., 409 F.2d 532, 535 (9th Cir. 1969). 

The Court concludes that plaintiffs could allege jurisdiction under the Lanham Act but not 

pursuant to the Copyright Act. In their initial cease-and-desist letter, defendants threatened action 
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for trademark, trade dress, and copyright infringement. However, in the briefing on the current 

motion, defendants have stated that they have no federally registered copyrights and thus have no 

intent to bring an infringement suit under the Copyright Act. Motion at 7 (Dkt. No. 46); see also

Reply to Opp’n at 3 (Dkt. No. 51). In contrast, defendants have not retracted their statements 

regarding their intent to enforce their trademarks or trade dress. Courts have found threatened 

intellectual property infringement actions provide the basis for subject matter jurisdiction in 

declaratory relief claims. See, e.g., Medtronic, Inc., 134 S. Ct. at 848 (finding the threat of a patent 

infringement action upon the termination of a license provided Declaratory Judgment Act

jurisdiction); M2 Tech., Inc. v. M2 Software, Inc., Nos. 13–41060, 14–40192, slip op. at 676 (5th 

Cir. Oct. 20, 2014) (finding the threat of trademark infringement claim under the Lanham Act 

provided Declaratory Judgment Act jurisdiction). 

Accordingly, because the operative complaint does not adequately allege a basis for 

subject matter jurisdiction, the Court GRANTS defendants’ motion to dismiss. The Court also 

GRANTS plaintiffs leave to file a revised third amended complaint to allege the basis for 

jurisdiction under 28 U.S.C. § 1331, 28 U.S.C. § 1338(a)2, and the Lanham Act. As it appears that 

plaintiffs can allege federal question jurisdiction, the Court finds it unnecessary to address the 

parties’ arguments about diversity jurisdiction.

II. Motion to Strike

Defendants move to strike the paragraphs in the SAC asserting plaintiffs’ intellectual 

property rights. Defendants contend that these paragraphs (Paragraphs 27e–f and 31a.v.) are 

“nearly identical” to the paragraphs that the Court struck in the prior order. Paragraphs 27e-f and 

31a.v. seek a declaration:

[27]e. That Plaintiffs have asserted substantial property rights in their JAIPUR 

LINKS Collection against Defendant to which have been ignored and/or denied by 

Defendants; 

 

2

 Section 1331 establishes “federal question jurisdiction.” Section 1338(a) provides for 

federal subject-matter jurisdiction for “any civil action arising under any Act of Congress relating 

to patents, plant variety protection, copyrights and trademarks.”
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[27]f. That, upon information and belief, Defendants by continuing to deny the 

rights of Plaintiffs, have either knowingly or by innocent act produced, 

manufactured and sold designs that are covered by the rights of Plaintiffs . . . ;

[31]a.v. That Plaintiffs have shown substantial intellectual property rights in their 

JAIPUR LINKS Collection ignored and/or denied by Defendants.

Plaintiffs argue that these paragraphs are proper because they are supported by factual allegations 

regarding plaintiffs’ assertion of their own rights against Kantis. Plaintiffs note that the FAC only 

contained allegations about defendants’ February 2, 2017 cease-and-desist letter − which did not 

make any assertions about plaintiffs’ intellectual property rights − whereas the SAC now contains 

allegations regarding two letters that plaintiffs sent to defendants in which plaintiffs made 

affirmative claims about their own intellectual property.

The Court concludes that Paragraphs 27e-f and 31a.v. are improper and should be stricken. 

The purpose of the Declaratory Judgment Act is “to relieve potential defendants from the 

Damoclean threat of impending litigation which a harassing adversary might brandish, while 

initiating suit at his leisure—or never.” Societe de Conditionnement v. Hunter Engineering Co., 

655 F.2d 938, 943 (9th Cir. 1981). “The apprehension must have been caused by the defendant’s 

actions.” Hal Roach Studios, Inc. v. Richard Feiner and Co., Inc., 896 F.2d 1542, 1556 (9th Cir. 

1990). Here, plaintiffs do not allege that defendants have threatened litigation regarding 

infringement of plaintiffs’ intellectual property rights. Instead, plaintiffs rely on their own letters 

to show that there is a case or controversy regarding plaintiffs’ intellectual property. Plaintiffs 

cannot rely on their own actions to create a case or controversy under the Declaratory Judgment 

Act.3 See id. Accordingly, the Court GRANTS defendants’ motion to strike.

III. Attorneys’ Fees

Defendants move to strike plaintiffs’ request for reasonable attorneys’ fees, arguing that 

 

3

 To the extent that defendants argue that the SAC does not allege a case or controversy 

regarding whether plaintiffs’ jewelry collection infringes defendants’ trademarks or trade dress, 

the Court disagrees. The SAC alleges an exchange of letters and a dispute between the parties 

regarding the use of jewelry designs, reflecting the adverse legal interests of an actual case or 

controversy. See SAC at Exhibits F–I (Dkt. No. ); see also Shell Gulf of Mexico Inc. v. Ctr. for 

Biological Diversity, Inc., 771 F.3d 632, 635 (9th Cir. 2014) (explaining the factors courts weigh 

in assessing standing in DJA cases).
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fees are “plainly not available to the prevailing party in a case under the DJA.” Motion at 9 (Dkt. 

No. 46). In response, plaintiffs argue that they seek fees not solely under the Declaratory 

Judgment Act but also pursuant to intellectual property law. 

Under the “American Rule,” the prevailing party is generally not entitled to collect 

reasonable attorney fees from the loser, barring a statutory exception. See Alyeska Pipeline Serv. 

Co. v. Wilderness Soc'y, 421 U.S. 240, 247 (1975). Section 2202 of the Declaratory Judgment Act 

provides that “[f]urther necessary or proper relief based on a declaratory judgment or decree may 

be granted, after reasonable notice and hearing, against any adverse party whose rights have been 

determined by such judgment.” This provision empowers the court to give supplemental relief at 

its discretion. Rincon Band of Mission Indians v. Harris, 618 F.2d 569, 575 (9th Cir. 1980). The 

Ninth Circuit has not addressed in a published opinion the question of the availability of attorneys’

fees in declaratory relief actions, and district courts within the Ninth Circuit have adopted varying 

approaches. See, e.g., Hewlett Packard Co. v. ACE Prop. & Cas. Ins. Co., No. 99-20207, 2010 

WL 11469575, at *3 (N.D. Cal. Dec. 15, 2010) (awarding fees); Nat'l Merch. Ctr., Inc. v. 

MediaNet Grp. Techs., Inc., 893 F. Supp. 2d 1054 (C.D. Cal. 2012) (denying fees). 

In light of the unsettled state of the law, as well as the fact that this case is still at the 

pleadings stage, the Court will not strike plaintiffs’ request for attorneys’ fees. If plaintiffs prevail 

on their claim for declaratory relief, plaintiffs may request their fees and the Court will address the

propriety of such a request at that time and upon a fuller factual record. 

///

///
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CONCLUSION

For the foregoing reasons and for good cause shown, the Court hereby GRANTS

defendants’ motion to dismiss, GRANTS defendants’ motion to strike in part, and GRANTS 

plaintiffs leave to amend. Plaintiffs must file an amended complaint no later than September 14, 

2017.

IT IS SO ORDERED.

Dated: September 8, 2017

______________________________________

SUSAN ILLSTON

United States District Judge