Franklin v. X Gear 101, LLC, 17 Civ. 6452 (GBD) (GWG)

CourtUnited States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
Writing for the CourtGABRIEL W. GORENSTEIN, United States Magistrate Judge
PartiesJAQUAN FRANKLIN, Plaintiff, v. X GEAR 101, LLC, et al., Defendants.
Docket Number17 Civ. 6452 (GBD) (GWG)
Decision Date23 July 2018

JAQUAN FRANKLIN, Plaintiff,
v.
X GEAR 101, LLC, et al., Defendants.

17 Civ. 6452 (GBD) (GWG)

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK

July 23, 2018


REPORT AND RECOMMENDATION

GABRIEL W. GORENSTEIN, United States Magistrate Judge

Plaintiff Jaquan Franklin brings this action pro se alleging defendants Joshua Tydlacka and X Gear 101, LLC ("X Gear"), GoDaddy, Inc. and GoDaddy.com, LLC (collectively, "GoDaddy"), and Instagram, LLC ("Instagram"), infringed on a copyright and trademark Franklin owns in a certain logo by selling goods bearing the identical logo or publishing images bearing the identical logo without Franklin's authorization or consent. See Complaint for Copyright Infringement, Trademark Infringement, Unfair Competition and Related Claims, filed Aug. 24, 2017 (Docket # 1) ("Compl."), ¶¶ 1-2. He seeks relief under the Lanham Act, 15 U.S.C. §§ 1051-1127; the Copyright Act, 17 U.S.C. § 101 et seq.; and under state law for claims of trademark infringement, unfair competition, conversion, and unjust enrichment. Compl. ¶¶ 36-62. X Gear, Tydlacka, GoDaddy, and Instagram now move to dismiss Franklin's complaint for lack of personal jurisdiction and for failure to state a claim. See Fed. R. Civ. P. 12(b)(2), 12(b)(6).1 For the following reasons, Instagram and GoDaddy's motions should be

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granted, and X Gear and Tydlacka's motion should be granted in part and denied in part.

I. BACKGROUND

For purposes of deciding the motion to dismiss for failure to state a claim, we assume all facts alleged by Franklin to be true.

A. Parties

Franklin resides in New York, New York. Compl. ¶ 8. Since at least 2013, he has sold clothing items and other goods bearing his "ORIGINAL WORK" label at sneaker expos and trade shows around the country, as well as through various social media platforms including defendant Instagram's photo-sharing platform and through a website, http://www.owmxn.com. Id. ¶¶ 14, 16-18. He also sells clothing and other goods bearing the ORIGINAL WORK label at a retail location in New York. Id. ¶ 21.

X Gear is a Texas-based retail clothing business with an online store and social media presence. Id. ¶¶ 9, 22. Tydlacka resides in Texas at the same address as X Gear, presumably a business address. Id. ¶ 10. He is the sole owner of X Gear, having organized the company under

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Texas law. Pl. Mem. at 2.

The GoDaddy defendants are Delaware companies with their principal places of business in Scottsdale, Arizona. Compl. ¶¶ 11-12. They provide web hosting services, including to X Gear. Id. ¶¶ 33-34.

Instagram is also a Delaware company with its principal place of business in Menlo Park, California. Id. ¶ 13. Instagram is "a photo sharing . . . application" on which both Franklin and X Gear market their products. Id. ¶¶ 18, 35.

B. Allegations and Causes of Action in Complaint

Franklin alleges that he owns a federally registered copyright (Registration No. 2-060-393) and registered trademark2 in a logo entitled "ORIGINAL WORK," which depicts a cartoon bear face with two bandages crisscrossing its mouth and differently hued and stylized eyes. See id. ¶¶ 1, 20, 37; Certificate of Registration, dated Aug. 3, 2016 (annexed as Ex. B. to the Compl.) ("Copyright Reg."). Since 2013, he has "sold t-shirts, caps and other clothing items" carrying the ORIGINAL WORK logo to consumers at sneaker expos, at his retail store in New York City, and through his online store. Pl. Mem. at 1-2; Compl. ¶ 18. The Complaint alleges that, sometime after seeing Franklin's products at a sneaker expo in Houston, Texas, Pl. Mem. at 2, X Gear and Tydlacka "introduced and began marketing, selling, [and] offering for sale clothing under [Franklin's] ORIGINAL WORK logo at various sneaker expo events," without Franklin's consent or permission, Compl. ¶¶ 23, 32. The Complaint alleges that the Tydlacka and X Gear design "is a substantial[ly] identical replica[] and copy" of Franklin's logo, id. ¶ 31, and that their use of the logo has "already caused instances of actual confusion in the marketplace," id. ¶ 32. The

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infringing design is a cartoon bear face with an open mouth showing sharp-looking teeth and oval-shaped eyes with crosses over the iris in each. Id. ¶ 31.

Image materials not available for display.

[Plaintiff's design on left; alleged infringing design on right]

The Complaint alleges that Tydlacka and X Gear have violated Franklin's trademark and copyright, and brings various common law claims against them for these violations. Id. ¶¶ 36-62. Franklin seeks an injunction against further sale of clothing merchandise bearing the infringing logo and also seeks ill-gotten profits, statutory damages, and punitive damages. Id. ad damnum ¶¶ 1-7

The Complaint's only allegations that explicitly reference Instagram and GoDaddy are that GoDaddy provides web hosting services to X Gear and Tydlacka, id. ¶¶ 33-34, and that Instagram provides an application on which X Gear and Tydlacka publish images of the infringing logo, id. ¶ 35; see also baws.clothing, Instagram Profile, dated Aug. 22, 2017 (annexed as Ex. D to Compl.) ("BAWS Instagram Profile"). We thus construe the Complaint to allege that Instagram and GoDaddy are contributorily liable for trademark and copyright infringement because they induced X Gear and Tydlacka's actions. Compl. ¶¶ 33-35. Because pro se pleadings "must be construed liberally and interpreted to raise the strongest arguments that they suggest," Sykes v. Bank of Am., 723 F.3d 399, 403 (2d Cir. 2013) (citation and internal quotation marks omitted), we also address the claims as if the Complaint sought to hold them directly liable.

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C. Procedural History

Franklin filed his Complaint on August 24, 2017. Although all the defendants moved to dismiss the Complaint, Franklin filed an opposition only to the motion filed by X Gear and Tydlacka. The Court sua sponte extended Franklin's deadline to file a response to the GoDaddy defendants and Instagram's motions. See Order, filed Mar. 16, 2018 (Docket # 51). Franklin never responded to these motions, however. The Court had warned Franklin that if he failed to make the filing, the Court would assume that he was "not contesting these motions and his claims against GoDaddy, Inc., GoDaddy.com, LLC, and Instagram, LLC will be dismissed under Federal Rule of Civil Procedure 41(b)." Id. While we might view Franklin as having abandoned his claims, we will nonetheless address them in light of Franklin's pro se status.

II. GOVERNING LAW

A. Standard of Review Under Rule 12(b)(2)

On a defendant's motion to dismiss for lack of personal jurisdiction under Fed. R. Civ. P. 12(b)(2), the plaintiff "bears the burden of showing that the court has jurisdiction over the defendant." In re Magnetic Audiotape Antitrust Litig., 334 F.3d 204, 206 (2d Cir. 2003) (per curiam); accord DiStefano v. Carozzi N. Am., Inc., 286 F.3d 81, 84 (2d Cir. 2001) (per curiam) (citation omitted); Bank Brussels Lambert v. Fiddler Gonzalez & Rodriguez, 171 F.3d 779, 784 (2d Cir. 1999). If a court does not conduct an evidentiary hearing on the issue of personal jurisdiction, as is the case here, "the plaintiff need only make a prima facie showing that the court possesses personal jurisdiction over the defendant." DiStefano, 286 F.3d at 84 (citing Bank Brussels Lambert, 171 F.3d at 784); accord Dorchester Fin. Sec., Inc. v. Banco BRJ, S.A., 722 F.3d 81, 84-85 (2d Cir. 2013) (per curiam) ("Prior to discovery, a plaintiff challenged by a jurisdiction testing motion may defeat the motion by pleading in good faith, legally sufficient

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allegations of jurisdiction. At that preliminary stage, the plaintiff's prima facie showing may be established solely by allegations.") (citation and internal quotation marks omitted). "This prima facie showing 'must include an averment of facts that, if credited by the ultimate trier of fact, would suffice to establish jurisdiction over the defendant.'" In re Terrorist Attacks on Sept. 11, 2001, 714 F.3d 659, 673 (2d Cir. 2013) (quoting Chloé v. Queen Bee of Beverly Hills, LLC, 616 F.3d 158, 163 (2d Cir. 2010)). Plaintiff can also "make this showing through his own affidavits and supporting materials." Whitaker v. Am. Telecasting, Inc., 261 F.3d 196, 208 (2d Cir. 2001) (citation and internal quotation marks omitted). In deciding whether the plaintiff has met this burden, a court must view the pleadings and affidavits in the light most favorable to the plaintiff, with all doubts resolved in his favor. See, e.g., Dorchester Fin. Sec., Inc., 722 F.3d at 85; DiStefano, 286 F.3d at 84. Conclusory allegations do not satisfy a plaintiff's burden. See In re Terrorist Attacks, 714 F.3d at 676; Megna v. Biocomp Labs. Inc., 166 F. Supp. 3d 493, 496 (S.D.N.Y. 2016). Rather, "the prima facie showing must be factually supported." Beeney v. InSightec, Inc., 2014 WL 3610941, at *2 (S.D.N.Y. July 7, 2014) (citation and internal quotation marks omitted).

B. Standard of Review Under Rule 12(b)(6)

A defendant may move to dismiss pursuant to Fed. R. Civ. P. 12(b)(6) where the plaintiff "fail[s] to state a claim upon which relief can be granted." To survive such a motion, a complaint 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) (internal quotation marks omitted) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). As the Supreme Court noted in Iqbal,

[a] claim has facial plausibility when the plaintiff pleads factual content that

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allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged. The plausibility standard is not akin to a "probability requirement," but it asks for more than a sheer possibility that a defendant has acted unlawfully. 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
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