Lee v. Learfield Commc'ns, LLC

• Decision Date: 15 September 2020
• Docket Number: CIVIL ACTION No. 20-839
• Citation: 486 F.Supp.3d 1041
• Parties: Paige LEE, et al. v. LEARFIELD COMMUNICATIONS, LLC, et al.
• Court: U.S. District Court — Eastern District of Louisiana

486 F.Supp.3d 1041

Paige LEE, et al.

v.LEARFIELD COMMUNICATIONS, LLC, et al.

CIVIL ACTION No. 20-839

United States District Court, E.D. Louisiana.

Signed September 15, 2020

Thomas Patrick Henican, Riess LeMieux, LLC, Andrew T. Lilly, Lilly, PLLC, New Orleans, LA, for Paige Lee, Business Moves Consulting, Inc., Brandmixer, Inc., Curtis Bordenave.

Kenneth L. Tolar, Brad Elliot Harrigan, Tolar, Harrigan & Morris, New Orleans, LA, for Anthony Lawrence Collection, LLC, Defron Fobb.

SECTION I

ORDER & REASONS

LANCE M. AFRICK, UNITED STATES DISTRICT JUDGE

Before the Court are two motions to dismiss—the first¹ filed by defendant Collegiate Licensing Company, LLC ("Collegiate"), and the second motion² filed by defendant Thaddeus Reed ("Reed") (collectively, "defendants"). Both motions move for dismissal of plaintiffs’ Paige Lee, Business Moves Consulting, Inc. ("Business Moves"), Brandmixer, Inc. ("Brandmixer"), and Curtis Bordenave ("Bordenave" and collectively, "plaintiffs") claims, pursuant to Rules 12(b)(1) and 12(b)(7) of the Federal Rules of Civil Procedure. Plaintiffs oppose³ the motion. For the following reasons, the motions are granted.

I.

Plaintiffs allege that defendants are infringing on plaintiffs’ rights to the name and registered trademark, "THEEILOVE,"⁴ which was approved by the USPTO on June 19, 2018.⁵ Plaintiffs state that, in violation of this trademark, defendants "advertised, marketed, sold and/or distributed merchandise, and/or participated in the advertising, marketing, sale and/or distribution of merchandise," that, according to plaintiffs, not only "improperly" bore the name and mark, "THEEILOVE," but also "improperly and deceptively" bore the ® designation.⁶ Consequently, plaintiffs asserted seven claims against defendants: (1) federal trademark infringement pursuant to 15 U.S.C. § 1114(1) ;⁷ (2) federal unfair competition pursuant to 15 U.S.C. § 1125(a) ;⁸ (3) unfair competition pursuant to unspecified state laws of Louisiana, Texas, Mississippi, Tennessee, and Georgia;⁹ (4) violation of unspecified deceptive and unfair trade practices acts and false advertising laws of those same states;¹⁰ (5) commercial defamation;¹¹ (6) conspiracy, pursuant to unspecified state and federal laws;¹² and (7) a claim for judgment of non-infringement.¹³

Defendants cast this lawsuit as being "about who owns the trademark rights to ‘Thee I Love.’ "¹⁴ Defendants assert that the phrase has been the alma mater for Jackson State University ("JSU"), which is not a party to the case.¹⁵ Defendants state that through JSU's use of "THEE I LOVE" since the 1940s,¹⁶ the university has obtained common law trademark rights, pursuant to the Lanham Act, 15 U.S.C. § 1125, and Mississippi law,¹⁷ as well as registered trademark rights, pursuant to Mississippi state law.¹⁸ In connection with the federal trademark that plaintiffs seek to defend through this lawsuit, defendants state that "JSU is in the process of petitioning to cancel plaintiffs’ U.S. Registration for THEEILOVE! (& design)" and that "[i]n due course, JSU plans to oppose the registration of the pending application for THEE I LOVE, U.S. Ser. No. 88/707,020 if and when a notice of allowance is issued and defend its various pending applications for THEE I LOVE[.]"¹⁹

Plaintiffs acknowledge that "JSU does own two Mississippi trademarks[ ]"—one for use "on license plates and in its alma mater[,]" and the other for use on t-shirts.²⁰ However, plaintiffs maintain that, in the instant matter, "there's no assault on any marks JSU claims to own."²¹

Defendants further assert that their connection to the phrase "THEE I LOVE" is through JSU.²² Specifically, Collegiate states that it has a contract with JSU to act as an agent for the university in granting licenses for various designs, trademarks, and service marks, including the trademark "Thee I Love."²³ Collegiate argues that, because it "does not even select JSU's licensees and does not itself own the mark," it "has less than all substantial rights" in the relevant designs, trademarks, and service marks.²⁴ Reed, similarly is, according to the complaint, a "licensed vendor of Jackson State University,"²⁵ and it assumes Collegiate's arguments on this point.

Accordingly, defendants argue that JSU's absence from this lawsuit and inability to be joined requires that the case be dismissed.²⁶ Specifically, defendants argue that plaintiffs failed to name JSU as a defendant; that "as owner of the trademark [plaintiffs] claim to own, [JSU] is an indispensable party to the litigation[;]"²⁷ and that, because JSU—"an arm of the State of Mississippi"—"enjoys sovereign immunity under the Eleventh Amendment" and so cannot be joined without stripping the Court of subject matter jurisdiction, the claims against Collegiate and Reed "fail as a matter of law" and must be dismissed.²⁸

Additionally, defendants claim that plaintiffs Bordenave and Business Moves are "trademark pirates,"²⁹ stating that this "assault upon JSU's trademark is but the latest example of a long-running pattern of abusive conduct, whereby Mr. Bordenave seeks to register trademarks to which he has no prior connection in the hope of converting or holding for ransom goodwill created through the efforts, traditions, and creativity of others."³⁰

The Court will first address whether JSU must be joined to this litigation pursuant to Rule 12(b)(7). If JSU must be joined, pursuant to Rule 19(a), the Court will then determine whether sovereign immunity interferes with joinder. If sovereign immunity does interfere with joinder, the Court will decide whether the case can nevertheless proceed absent JSU, pursuant to Rule 19(b), or whether, because that required party must be joined, pursuant to Rule 12(b)(7), the Court lacks subject matter jurisdiction, pursuant to Rule 12(b)(1).

II.

A. Rule 12(b)(1)

Federal Rule of Civil Procedure 12(b)(1) requires dismissal of an action if a court lacks jurisdiction over the subject matter of the plaintiff's claim. F. R. Civ. P. 12(b)(1). A case is properly dismissed pursuant to Rule 12(b)(1) "for lack of subject-matter jurisdiction when the court lacks the statutory or constitutional power to adjudicate the case." Krim v. pcOrder.com, Inc. , 402 F.3d 489, 494 (5th Cir. 2005) (citing Home Builders Ass'n of Miss., Inc. v. City of Madison , 143 F.3d 1006, 1010 (5th Cir. 1998) ).

Rule 12(b)(1) allows a party to challenge a court's subject matter jurisdiction based upon the allegations on the face of the complaint. See Barrera-Montenegro v. United States , 74 F.3d 657, 659 (5th Cir. 1996) ; see also Lopez v. City of Dallas , No. 03-2223, 2006 WL 1450520, at *2 (N.D. Tex. May 24, 2006). "The burden of proof for a Rule 12(b)(1) motion to dismiss is on the party asserting jurisdiction." Ramming v. United States , 281 F.3d 158, 161 (5th Cir. 2001).

When applying Rule 12(b)(1), a court may dismiss an action for lack of subject matter jurisdiction "on any one of three separate bases: (1) the complaint alone; (2) the complaint supplemented by undisputed facts evidenced in the record; or (3) the complaint supplemented by undisputed facts plus the court's resolution of disputed facts." Spotts v. United States , 613 F.3d 559, 565–66 (5th Cir. 2010) ; see also Den Norske Stats Oljeselskap As v. HeereMac Vof , 241 F.3d 420, 424 (5th Cir. 2001) ; Barrera-Montenegro , 74 F.3d at 659. When examining a factual challenge to subject matter jurisdiction that does not implicate the merits of plaintiff's cause of action, a district court has substantial authority "to weigh the evidence and satisfy itself as to the existence of its power to hear the case." Arena v. Graybar Elec. Co. , 669 F.3d 214, 223 (5th Cir. 2012) ; see also Berry v. NLRB , No. 15-6490, 2016 WL 1571994, at *2 (E.D. La. Apr. 19, 2016) (Morgan, J.) ("The standard of Rule 12(b)(1), ‘while similar to the standard of Rule 12(b)(6), permits the court to consider a broader range of materials in resolving the motion.’ ") (citation omitted).

The party asserting jurisdiction carries the burden of proof when facing a Rule 12(b)(1) motion to dismiss. Randall D. Wolcott, M.D., P.A. v. Sebelius , 635 F.3d 757, 762 (5th Cir. 2011) (citing Ramming , 281 F.3d at 161 ); see also Hozenthal v. Balboa Ins. Co. , No. 07-4644, 2008 WL 11357735, at *2 (E.D. La. July 15, 2008) (Africk, J.) (quoting Paterson v. Weinberger , 644 F.2d 521, 523 (5th Cir. 1981) ).

Matter outside the complaint forms the basis of the instant motions to dismiss for lack of subject matter jurisdiction. Accordingly, the Court will look outside the four-corners of the complaint to assure itself of its power to hear the case.

B. Rule 12(b)(7)

Rule 12(b)(7) of the Federal Rules of Civil Procedure provides for the dismissal of claims when a plaintiff fails to join a required party to the lawsuit pursuant to Rule 19 of the Federal Rules of Civil Procedure. To determine whether to dismiss an action for failure to join a required party, a court must first determine, pursuant to Rule 19(a), whether a party must be joined. Rule 19(a) provides that a party must be joined where:

(A) in that person's absence, the court cannot accord complete relief among existing parties; or

(B) that person claims an interest relating to the subject of the action and is so situated that disposing of the action in the person's absence may:

(i) as a practical matter impair or impede the person's ability to protect the interest; or

(ii) leave an existing party subject to a substantial risk of incurring double, multiple, or otherwise inconsistent obligations because of the interest.

F. R. Civ. P. 19(a).

The initial burden of proof for the party advocating joinder only requires a showing of "the possibility that an unjoined party is arguably indispensable," Boles v. Greeneville Hous. Auth. , 468 F.2d 476, 478 (6th Cir. 1972), and when "an initial appraisal of the facts indicates that a possibly necessary party is absent, the burden of disputing this initial appraisal falls on the party who opposes...