Rebel Debutante LLC v. Forsythe Cosmetic Grp., Ltd.

• Decision Date: 01 July 2011
• Docket Number: Civil Action No. 1:11cv00113.
• Citation: 101 U.S.P.Q.2d 1887,799 F.Supp.2d 558
• Court: U.S. District Court — Middle District of North Carolina
• Parties: REBEL DEBUTANTE LLC, a North Carolina limited liability Company, and Anna Stubblefield, a/k/a Anna Fields, Plaintiff, v. FORSYTHE COSMETIC GROUP, LTD., a New York corporation, Defendant.

101 U.S.P.Q.2d 1887

799 F.Supp.2d 558

REBEL DEBUTANTE LLC, a North Carolina limited liability Company, and Anna Stubblefield, a/k/a Anna Fields, Plaintiff,

v.FORSYTHE COSMETIC GROUP, LTD., a New York corporation, Defendant.

Civil Action No. 1:11cv00113.

United States District Court, M.D. North Carolina.

July 1, 2011.

Andrew L. Fitzgerald, Brendan G. Stuhan, Strauch Fitzgerald & Green, P.C., Winston–Salem, NC, for Plaintiff.

Alan B. Clement, Gregory T. Casamento, Jason Nardiello, Locke Lord Bissell & Liddell, LLP, New York, NY, Clinton Shepard Morse, Brooks Pierce McLendon Humphrey & Leonard, Greensboro, NC, for Defendant.

MEMORANDUM OPINION AND ORDER ON MOTION TO TRANSFER AND PRELIMINARY INJUNCTION

THOMAS D. SCHROEDER, District Judge.

Before the court is the motion of Plaintiffs Rebel Debutante LLC (“Rebel Debutante”) and Anna Stubblefield, a/k/a Anna Fields (“Stubblefield”) to preliminarily and permanently enjoin Defendant Forsythe Cosmetic Group, Ltd. (“Forsythe”) from using or displaying the mark “Rebel Debutante,” to require Forsythe to recall, destroy or deliver to the court the allegedly offending goods using that mark or similar mark, and for other relief (“Motion”). (Doc. 7.) Defendant Forsythe moves to transfer this case to the Southern District of New York (“Motion to Transfer”) (Doc. 21), which Plaintiffs oppose (Doc. 24). Following briefing by the parties and an evidentiary hearing, the matter is ripe for resolution.

I. BACKGROUND

Stubblefield, a performer, screenwriter, playwright and author, began publishing her writing on the Internet in 2006 at www. rebeldebutante. com and later on the blogs www. rebeldebutante. blogspot. com and www. annafields. net. (Doc. 8–1, Stubblefield Decl. ¶¶ 2–5.) This writing, presumably beginning in 2006 on www. rebeldebutante. com, introduced her moniker “Rebel Debutante.” Stubblefield, in her briefing, describes herself as “the eponymous Rebel Debutante, a woman with a traditional Southern background who was born and raised in North Carolina before moving to Los Angeles to begin a career in the entertainment industry.” (Doc. 8 at 2.) She claims to have “coined” the term “Rebel Debutante” “to refer to a personal style and approach to fashion, society and life flowing out of her experiences growing up in, and rebelling against, Southern society.” ( Id.)

In March 2008, Stubblefield contracted with G.P. Putnam's Sons to author a book entitled “Confessions of a Rebel Debutante.” (Doc. 8–1, Stubblefield Decl. ¶ 5.) The book appeared in hardcover on April 15, 2010, and as of the date of Stubblefield's declaration sold over 25,000 copies. A paperback version was released in February 2011. Stubblefield toured nationwide to promote the book and is at work on follow-on books. ( Id. ¶¶ 6–8.)

On October 16, 2008, Stubblefield filed a Trademark/Service Mark Application with the United States Patent and Trademark Office (“USPTO”) for the mark “REBEL DEBUTANTE.” Her application and “Trademark/Service Mark Statement of Use” listed “use information” as “clothing, namely, t-shirts, shirts, tank tops, pants, shorts, underwear, hooded sweat shirts, [and] tube tops,” and the Statement of Use stated that the mark “is in use in commerce on or in connection with all goods or services listed in the application or Notice of Allowance or as subsequently modified for this specific class.” (Docs. 46–2, 46–3.) The USPTO issued U.S. Trademark Registration No. 3,703,222 for the trademark “REBEL DEBUTANTE” on October 27, 2009, listing the same “use information” as in the Application. (Doc. 8–5.)

In December 2008, Stubblefield and a business partner formed Rebel Debutante. Rebel Debutante is the sole licensee of the “Rebel Debutante” mark. (Doc. 8–1, Stubblefield Decl. ¶ 9.) The company offers, as described by Stubblefield, “fashion-oriented products for young women, including tank tops, T-shirts, long-sleeved shirts, jackets, intimate apparel, and jewelry,” all sold under the “Rebel Debutante” mark. According to Stubblefield's declaration, over $10,000 worth of “Rebel Debutante” clothing and merchandise has been sold through the website www. rebeldebutante. com. ¹ ( Id. ¶¶ 10–11.) Stubblefield states that she intends to expand product sales to retail stores and to offer additional products such as makeup and cosmetics, including nail polish, lipstick, and lip gloss. ( Id. ¶¶ 12–14.)

Forsythe is a New York corporation that has manufactured nail polishes since 1979; it sells its products through distributors and “does not typically sell directly to either customers or retailers.” (Doc. 20–2, Rose Decl. ¶¶ 3, 11, 14.) Forsythe contends that it first considered using the phrase “Rebel Debutante” in November 2009, and actually began using the name on products “at least as early as January 2010” as part of its Spring 2010 collections of nail polish sold under its registered mark “Color Club.” ( Id. ¶¶ 6–7; Doc. 45, Rose Decl. ¶ 3; see Doc. 46–1.) The “Color Club” collection name is displayed in advertising, including on the Internet, point-of-sale displays, and packaging. ( See Doc. 20–1, Rose Decl. ¶¶ 5–7 (describing “Rebel Debutante” marketing under “Color Club”); Doc. 8–12 (Internet advertisement); 4/29/11 Hearing, Plaintiff's Ex. 2 (point-of-sale display).) Forsythe represents that its “Rebel Debutante” collection was not intended to be a permanent collection, has been discontinued, and is no longer offered for sale or advertised. References to the collection or color name “Rebel Debutante” no longer appear on Forsythe's cosmeticgroup.com website. (Doc. 45, Rose Decl. ¶ 4.) Although the collection was known as “Rebel Debutante” and every bottle bore the “Color Club” trademark, only one of the colors in the collection bore the “Rebel Debutante” mark. ( Id. ¶ 6.) Forsythe represents it derived $46,745 in profits from sales of the “Color Club” product bearing the “Rebel Debutante” mark. ( Id.)

Stubblefield demanded that Forsythe cease and desist from further use of the phrase “Rebel Debutante” by letter dated September 1, 2010. (Doc. 8–16.) Forsythe responded, promising to investigate and “respond shortly.” (Doc. 8–17.) However, Forsythe did not respond, and Stubblefield contacted Forsythe again on December 3, 2010. (Doc. 8–18.) Forsythe finally responded on December 13, 2010, and denied any wrongdoing. ( See Doc. 8–19.) The last of this correspondence, from Forsythe, appears to have occurred on January 7, 2010, in a letter in which Forsythe's counsel discounted any likelihood of confusion because the goods sold by Forsythe and those in Stubblefield's trademark registration “are not related and they are characterized by the USPTO in different international classes.” (Doc. 8–20.)

Stubblefield brought this action on February 10, 2011, claiming that Forsythe infringes and dilutes ² her “Rebel Debutante” mark through its use on nail polish. (Doc. 1.) The complaint asserts causes of action under the Lanham Act, North Carolina common law, and North Carolina's Unfair and Deceptive Trade Practices Act, N.C. Gen.Stat. § 75–1 et seq. (“UDTPA”). (Doc. 1.) Stubblefield seeks to enjoin Forsythe from any use or display of the “Rebel Debutante” mark, to require Forsythe to recall from the retail market any infringing goods not yet sold to consumers, to mandate that Forysthe destroy all of its materials using the mark and take corrective measures (including notifying Forsythe's distributors of any injunction) to minimize alleged confusion, and to direct Forsythe to file a report setting out actions taken to comply with any injunction. (Doc. 7 at 5–6; Doc. 51 at 3.)

Prior to considering Stubblefield's Motion for injunctive relief, the court turns first to Forsythe's Motion to Transfer the case to the Southern District of New York.

II. MOTION TO TRANSFER

Forsythe moves to transfer this case to the Southern District of New York pursuant to 28 U.S.C. § 1404(a), arguing that the case is a dispute between two New York parties involving New York evidence and New York witnesses. (Doc. 21 at 4.) Stubblefield disputes this characterization, noting that Rebel Debutante is a North Carolina corporation based in Winston–Salem, and she testified that she moved to North Carolina in August 2009 and is a full-time law student at Wake Forest Law School in Winston–Salem. (Doc. 24 at 1; Doc. 24–1, Stubblefield Aff., Ex. 5.) Forsythe, in turn, points to media reports quoting Stubblefield as “maintain[ing] significant ties to New York” and to her trademark application listing a New York City address for Rebel Debutante's office to contend that this dispute involves significant contacts in New York. (Doc. 25 at 1.)

Section 1404(a) provides that “[f]or the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought.” 28 U.S.C. § 1404(a). The court undertakes a two-step process in determining whether to transfer a case pursuant to section 1404(a). First, section 1404(a) requires that the lawsuit could have been brought in the district or division to which transfer is sought. Because Stubblefield asserts causes of action under the Lanham Act, which would establish federal jurisdiction generally, and Forsythe is organized under the laws of the State of New York with its offices and manufacturing facilities based there (Doc. 20–2, Rose Decl. ¶ 3), this action could have been brought in the Southern District of New York.

Second, the court determines whether transfer is warranted. In considering a motion to transfer, a court should weigh the following discretionary factors:

(1) the plaintiff's initial choice of forum; (2) relative ease of access to sources of proof; (3) availability of compulsory process for attendance of unwilling witnesses, and the cost of obtaining attendance of willing and unwilling witnesses; (4) possibility of a view of the premises, if appropriate; (5) enforceability of a judgment, if...