Caliko, SA v. Finn & Emma, LLC
| Decision Date | 28 February 2022 |
| Docket Number | 21-CV-3849 (VEC) |
| Parties | CALIKO, SA, Plaintiff, v. FINN & EMMA, LLC, Defendant. |
| Court | U.S. District Court — Southern District of New York |
Plaintiff Caliko, SA has sued Finn & Emma, LLC, alleging: (1) trademark infringement under the Lanham Act; (2) common law trademark infringement; (3) trade dress infringement under federal law; (4) trade dress infringement under New York state law; (5) false designation of origin, false advertising, and unfair competition under the Lanham Act; (6) unfair competition under New York state law; and (7) deceptive acts and practices under N.Y. Gen. Bus. Law §§ 133 and 349. See Compl., Dkt. 1. Defendant has moved to dismiss Plaintiff's complaint for improper venue and failure to state a claim as to any of its causes of action, pursuant to Federal Rules of Civil Procedure 12(b)(3) and 12(b)(6), respectively. See Def. Mem. of Law, Dkt. 19. Plaintiff opposes the motion. See Pl. Mem. of Law, Dkt. 22. For the reasons discussed below, Defendant's motion to dismiss is GRANTED in part and DENIED in part.
BACKGROUND[1]
Plaintiff is a French company that sells baby furniture. Compl., ¶ 9. It has used its federally registered trademark, CHARLIE CRANE, and its unregistered trademark, LEVO, in connection with the sale of baby rockers in the United States since at least April 2015. Id. at ¶¶ 10-12, 13. Plaintiff alleges trade dress rights in its LEVO Rocker. See id. at ¶¶ 16, 18-20.
From approximately March 2018 until 2020, Defendant was an authorized distributor of the LEVO Rocker, and used Plaintiff's CHARLIE CRANE and LEVO trademarks to promote and sell the rocker. Id. at ¶¶ 21-23. In 2018 and 2019, Defendant unsuccessfully attempted to negotiate a license from Plaintiff to use its marks on products manufactured by other companies. Id. at ¶¶ 24-27. According to Plaintiff, when those negotiations were unsuccessful, Defendant decided to “willfully copy the LEVO Rocker by having it manufactured by an unauthorized source in China.” Id. ¶ 28. Plaintiff alleges that it learned from a dissatisfied customer that Defendant used Plaintiff's CHARLIE CRANE and LEVO trademarks to advertise and sell counterfeit rockers. Id. ¶¶ 32-34.
Defendant moves to dismiss for improper venue, arguing that, as a New Jersey corporation, it is not subject to personal jurisdiction in New York and that the alleged infringement did not substantially occur in New York. See Def Mem. of Law at 7.
Pursuant to 28 U.S.C. § 1391(b), venue is proper in: (1) a judicial district in which any defendant resides, if all defendants are residents of the State in which the district is located; (2) a judicial district in which a substantial part of the events or omissions giving rise to the claim occurred; or (3) if there is no district in which any action may otherwise be brought, any judicial district in which any defendant is subject to personal jurisdiction with respect to the case at issue. 28 U.S.C. § 1391(b). For purposes of venue, a corporate defendant is deemed to reside in any judicial district in which that entity is subject to the Court's personal jurisdiction with respect to the civil action in question. 28 U.S.C. § 1391(c)(2).
When responding to a motion to dismiss for lack of venue, the plaintiff bears the burden of establishing that venue is appropriate. See, e.g., Person v. Google Inc., 456 F.Supp.2d 488, 493 (S.D.N.Y. 2006); Caremark Therapeutic Servs. v. Leavitt, 405 F.Supp.2d 454, 457 (S.D.N.Y. 2005). When the motion to dismiss is decided on the basis of the pleadings (rather than on the basis of an evidentiary hearing), the plaintiff need only make a prima facie showing that venue is proper. Reliability Inc. v. Doki, No. 20-CV-7109, 2021 WL 3408589, at *8 (S.D.N.Y. Aug. 4, 2021) (citing Gulf Ins. Co. v. Glasbrenner, 417 F.3d 353, 355 (2d Cir. 2005)).
In deciding a motion to dismiss for lack of venue, the Court may consider materials outside the pleadings. See Caremark, 405 F.Supp.2d at 457. The Court must, however, “accept[] facts alleged in the complaint as true, and draw[] all reasonable inferences in plaintiff's favor.” Id.; see also Phillips v. Audio Active Ltd., 494 F.3d 378, 384 (2d Cir. 2007).
Venue is appropriate under § 1391(b)(1) in any judicial district in which any defendant resides, if all defendants are residents of the State in which the district is located.[2] 28 U.S.C. § 1391(b)(1). Because residency for purposes of venue is defined in terms of personal jurisdiction, see 28 U.S.C. § 1391(c)(2), the inquiry under this subsection collapses into a personal jurisdiction analysis, see, e.g., Bank of Am., N.A. v. Wilmington Tr. FSB, 943 F.Supp.2d 417, 421-22 (S.D.N.Y. 2013); Glob. Merch. Servs., Ltd. v. Sunfrog, LLC, No. 17-CV-10154, 2018 WL 11223365, at *4 (S.D.N.Y. Aug. 9, 2018) ().
Personal jurisdiction of a federal court over a non-resident defendant[3] is governed by the law of the state in which the court sits and by the limits of due process. Chloe v. Queen Bee of Beverly Hills, LLC, 616 F.3d 158, 163 (2d Cir. 2010). Accordingly, the Court must engage in a two-part analysis. Bank Brussels Lambert v. Fiddler Gonzalez & Rodriguez, 171 F.3d 779, 784 (2d Cir. 1999). The Court first looks to the long-arm statute of New York, the forum state. Whitaker v. Am. Telecasting, Inc., 261 F.3d 196, 208 (2d Cir. 2001). If the exercise of jurisdiction is appropriate under New York's long-arm statute, the Court must then decide whether such an exercise comports with due process; a state may authorize personal jurisdiction over an out-of-state defendant only if “the defendant has certain minimum contacts with [the State] such that the maintenance of the suit does not offend traditional notions of fair play and substantial justice.” Daimler AG v. Bauman, 571 U.S. 117, 126 (2014) (cleaned up).
New York's long-arm statute provides for both general and specific jurisdiction, but Plaintiff argues only that Defendant is subject to specific personal jurisdiction. See Compl. ¶¶ 78, 72, see also Decl. of Thomas Lepine, Dkt. 23 ¶¶ 4-5. Pursuant to C.P.L.R. § 302(a)(1), a court may exercise specific jurisdiction over a nondomiciliary that “in person or through an agent . . . transacts any business within the state or contracts anywhere to supply goods or services in the state.” C.P.L.R. § 302(a)(1).
“To establish personal jurisdiction under section 302(a)(1), two requirements must be met: (1) The defendant must have transacted business within the state; and (2) the claim asserted must arise from that business activity.” Eades v. Kennedy, PC Law Offs., 799 F.3d 161, 168 (2d Cir. 2015) (quoting Licci ex rel. Licci v. Lebanese Canadian Bank, SAL, 732 F.3d 161, 168 (2d Cir. 2013)). With respect to the “transacting business” part of the analysis, courts look to “the totality of the defendant's activities within the forum.” Sterling Nat'l Bank & Tr. Co. of N.Y. v. Fidelity Mortg. Invs., 510 F.2d 870, 873 (2d Cir. 1975) (citations omitted). The plaintiff's cause of action must also arise from defendant's transaction of business in the state, which requires “an articulable nexus, or a substantial relationship, between the claim asserted and the actions that occurred in New York.” Henderson v. INS, 157 F.3d 106, 123 (2d Cir. 1998) (cleaned up).
Section 302(a)(1) is a “single act statute, ” which means that “proof of one transaction in New York is sufficient to invoke jurisdiction.” Deutsche Bank Sec., Inc. v. Mont. Bd. of Invs., 7 N.Y.3d 65, 71 (2006) (internal quotation marks and citation omitted).
It is well established that a “single act” of selling counterfeit goods into New York satisfies the long-arm statute under Section 302(a)(1). See Chloe, 616 F.3d at 170 (discussing Baron Phillipe de Rothschild, S.A. v. Paramount Distillers, Inc., 923 F.Supp. 433 (S.D.N.Y. 1996)); see also Poof-Slinky, LLC v. A.S. Plastic Toys Co., No. 19-CV-9399, 2020 WL 5350537, at *4 (S.D.N.Y. Sept. 4, 2020) (). Accordingly, in a trademark infringement action, venue is appropriate in every jurisdiction in which an alleged infringement occurred. Baron Phillipe de Rothschild, 923 F.Supp. at 437; see also Now-Casting Econ., Ltd. v. Econ. Alchemy LLC, No. 18-CV-2442, 2019 WL 4640219, at *8 (S.D.N.Y. Sept. 24, 2019).
Defendant argues that it is not subject to personal jurisdiction in New York because: (1) neither party resides in the state;[4] (2) it has no offices, stores, business locations, or employees in New York; and (3) it ships all orders from New Jersey. See Def. Mem. of Law at 8-9; Def. Reply Mem. of Law, Dkt. 24 at 7-8.[5] Defendant acknowledges, however, that, in 2019, 6.9 percent of its baby rocker sales were to customers in the State of New York. See Def. Raeply Mem. of Law at 8.
Defendant is subject to personal jurisdiction under C.P.L.R. § 302(a)(1). Defendant ships its infringing goods into New York and almost seven percent of its baby rocker sales were to New York customers. Those facts are more than sufficient to establish that Defendant has transacted business in the state. See Compl. ¶¶ 7-8, 72; Pl. Mem. of Law at 8-9; Def. Reply Mem. of Law at 7-8; see also e.g., Energy Brands Inc. v. Spiritual Brands, Inc., 571 F.Supp.2d 458, 469 (S.D.N.Y. 2008) (...
To continue reading
Request your trial