Wine & Canvas Dev., LLC v. Weisser

• Decision Date: 07 August 2012
• Docket Number: Case No. 1:11–cv–01598–TWP–DKL.
• Citation: 886 F.Supp.2d 930
• Parties: WINE & CANVAS DEVELOPMENT, LLC, Plaintiff, v. Theodore WEISSER, Christopher Muylle, YN Canvas CA, LLC, Art Uncorked, and www. art- uncorked. com, Defendants.
• Court: U.S. District Court — Southern District of Indiana

886 F.Supp.2d 930

WINE & CANVAS DEVELOPMENT, LLC, Plaintiff,

v.Theodore WEISSER, Christopher Muylle, YN Canvas CA, LLC, Art Uncorked, and www. art- uncorked. com, Defendants.

Case No. 1:11–cv–01598–TWP–DKL.

United States District Court,

S.D. Indiana,

Indianapolis Division.

Aug. 7, 2012.

P. Adam Davis, Davis & Sarbinoff LLP, Indianapolis, IN, for Plaintiff.

Charles Johnson Meyer, William A. McKenna, Woodard Emhardt Moriarty McNett & Henry, LLP, Indianapolis, IN, for Defendants.

ENTRY ON PENDING MOTIONS

TANYA WALTON PRATT, District Judge.

Plaintiff Wine & Canvas Development, LLC (“Wine & Canvas”), is an Indiana limited liability company. As its name suggests, Wine & Canvas organizes parties where guests can take a painting class while enjoying cocktails. Wine & Canvas has named the following as defendants in its complaint: (1) YN Canvas CA, LLC (“YN Canvas”), a Nevada limited liability company with its principal place of business in California; (2) www. art- uncorked. com (the “AU Website”), the corporate website for Art Uncorked; (3) Theodore Weisser (“Mr. Weisser”), an officer of YN Canvas who resides outside of Indiana; and (4) Christopher Muylle (“Mr. Muylle”), an officer of YN Canvas who resides outside of Indiana (collectively, “Defendants”). Art Uncorked is also a named defendant in this dispute. However, Art Uncorked is actually YN Canvas's new name; thus, for purposes of this entry, any references to YN Canvas will also apply to Art Uncorked.

On November 29, 2011, Wine & Canvas filed an eleven-count complaint in Hamilton County Circuit Court, which included claims for trademark infringement, false designation of origin, trademark dilution, sales of counterfeit items/services, unfair competition, declaratory judgment, civil action under the Indiana Crime Victims Act, breach of contract, fraud, permanent injunctive relief, and request for writ of attachment. On December 2, 2011, Defendants removed the lawsuit to this Court because Counts I through IV present a federal question under the Lanham Act. See28 U.S.C. § 1331 (2006); 15 U.S.C. §§ 1051–1141n. This matter comes before the Court on the following motions: (1) Defendants' Motion to Dismiss for Lack of Personal Jurisdiction; (2) Defendants' Motion to Dismiss for Failure to State a Claim on Counts I (trademark infringement), IV (counterfeiting), IX (fraud), X (permanent injunction), and XI (attachment); or in the alternative, Motion for a More Definite Statement on Count IX; (3) Defendants' Motion to Strike Count VI (declaratory judgment); and (4) Plaintiff's Motion to Strike Defendants' Reply in Support of their Motion to Dismiss for Lack of Personal Jurisdiction.

For the reasons set forth below, the Court rules as follows: (1) Defendants' Motion to Dismiss for Lack of Personal Jurisdiction (Dkt. 16) is GRANTED in part and DENIED in part; (2) Defendants' Motion to Dismiss for Failure to State a Claim (Counts I, IV, IX, X, and XI) (Dkt. 14) is GRANTED; (3) Defendants' Motion to Strike (Count VI) (Dkt. 14) is GRANTED; and (4) Plaintiff's Motion to Strike Defendants' Reply (Dkt. 30) is DENIED as moot.

I. BACKGROUND

Anthony Scott, (“Mr. Scott”), one of the founders of Wine & Canvas, was friends with Mr. Weisser and Mr. Muylle. In fact, Mr. Weisser and Mr. Scott were childhood friends and have known each other for more than two decades. In January 2011, Mr. Weisser's company, Weisser Management Group, LLC, (“WMG”), was hired by Wine & Canvas to assist in business development, including licensing and franchising. Although the parties dispute who initiated the relationship, it is seemingly undisputed that Wine & Canvas and Mr. Weisser began negotiations in April 2011 regarding Mr. Weisser operating a Wine & Canvas location in San Francisco, California. Shortly thereafter, Mr. Muylle joined Mr. Weisser as a business partner in the proposed venture. The two then formed YN Canvas for the purpose of operating the Wine & Canvas San Francisco location. From this point forward, the stories diverge.

Wine & Canvas asserts that, in conjunction with Defendants, it developed a business arrangement where the parties would form a new limited liability company that would license the Wine & Canvas trademarks and concept to other businesses, as well as operate a Wine & Canvas location in San Francisco. On July 30, 2011, Mr. Weisser and Mr. Muylle met with Wine & Canvas in Indiana on their way to California, and delivered a set of executed documents that they represented as being consistent with the previously discussed business arrangement. However, Wine & Canvas later discovered that the documents included a materially revised license agreement and confidentiality agreement that were not consistent with the planned arrangement. After receiving assurances from Mr. Weisser and Mr. Muylle that they would execute documents consistent with the planned arrangement, Wine & Canvas sent representatives to California to help launch the San Francisco store. After its successful launch, Mr. Weisser and Mr. Muylle terminated their business relationship with Wine & Canvas based on the alleged revised agreements but continued to use the Wine & Canvas concept and goodwill. Simply put, Wine & Canvas alleges that Defendants pulled an old-fashioned bait-and-switch with the agreements.

Defendants, on the other hand, assert that Mr. Scott presented Mr. Weisser and Mr. Muylle with the license and confidentiality agreements in Indiana. The two men then signed the agreements at the insistence of Mr. Scott. As a result, YN Canvas operated as a licensee/franchisee of Wine & Canvas, which provided YN Canvas with some assistance and oversight in its operations. Later, when Mr. Weisser and Mr. Muylle refused to sign additional agreements, including a non-compete agreement and an increased royalty rate, YN Canvas terminated the license agreement and changed its business name to Art Uncorked, LLC. Additional facts will be added below as needed.

II. MOTION TO DISMISS FOR LACK OF PERSONAL JURISDICTION

A. Mr. Weisser and YN Canvas

Defendants assert that this Court lacks personal jurisdiction over Mr. Weisser (YN Canvas's owner and operator) and YN Canvas because they do not have sufficient minimum contacts with Indiana, the forum state. As noted in Mr. Weisser's declaration, he is not a resident of Indiana; he does not own, in whole or in part, any real property located in Indiana; and he does not personally incur or remit any taxes in Indiana. Moreover, according to Mr. Weisser's declaration, YN Canvas only has two places of business, both located in California; it has no offices, agents, employees or other presence in Indiana; it has never conducted business in Indiana; it does not own, in whole or in part, any real property located in Indiana; it has not incurred or remitted any taxes in Indiana; it does not have any customers located in Indiana; and it does not direct any advertising into Indiana. Given these scant connections to Indiana, Defendants argue, this action must be dismissed against Mr. Weisser and YN Canvas for lack of personal jurisdiction.

Federal Rule of Civil Procedure 12(b)(2) requires dismissal of a claim where personal jurisdiction is lacking. As an initial matter, a brief review of the mechanics of analyzing a Rule 12(b)(2) motion is warranted. After the defendant moves to dismiss under Rule 12(b)(2), “the plaintiff bears the burden of demonstrating the existence of jurisdiction.” Purdue Research Found. v. Sanofi–Synthelabo, S.A., 338 F.3d 773, 782 (7th Cir.2003). The extent of plaintiff's burden is dependent upon the method in which the court determines the issue of personal jurisdiction. Id. “When the ... court holds an evidentiary hearing to determine [personal] jurisdiction, the plaintiff must establish [personal] jurisdiction by a preponderance of the evidence.” Id. But where, as here, the court determines personal jurisdiction based only on reference to submissions of written materials, the plaintiff simply needs to make a prima facie case of personal jurisdiction. GCIU–Employer Ret. Fund v. Goldfarb Corp., 565 F.3d 1018, 1023 (7th Cir.2009). In determining whether the plaintiff has met the prima facie standard, the plaintiff is entitled to a favorable resolution of all disputed relevant facts. uBID, Inc. v. GoDaddy Grp., Inc., 623 F.3d 421, 423–24 (7th Cir.2010). If the defendant has submitted evidence in opposition to the implementation of jurisdiction, however, “the plaintiff must go beyond the pleadings and submit affirmative evidence supporting the exercise of jurisdiction.” Purdue, 338 F.3d at 782–83. This evidence submitted by the defendant may include affidavits unless the affidavits merely contain conclusory assertions that the court lacks personal jurisdiction over the defendant. Id. at 783 n. 13 (citing Meier v. Sun Int'l Hotels, Ltd., 288 F.3d 1264, 1269 (11th Cir.2002)).

Here, Defendants submitted evidence in opposition to the exercise of jurisdiction. Therefore, Wine & Canvas had to offer evidence beyond the pleadings in support of exercising jurisdiction. To that end, Wine & Canvas submitted a verified response brief in which Mr. Scott verified the factual representations contained in the Statement of Facts section of the brief. A verification is equivalent to an affidavit when it comports with the requirements of Federal Rule of Civil Procedure 56(e). See Neal v. Kelly, 963 F.2d 453, 457 n. 2 (D.C.Cir.1992) (noting that “[t]o the extent that a verified pleading meets the requirements of an affidavit set out in Rule 56(e), then it may properly be considered as equivalent to a supporting or opposing affidavit”); Colon v. Coughlin, 58 F.3d 865, 872 (2d Cir.1995); Sheinkopf v. Stone, 927 F.2d 1259, 1262 (1st Cir.1991). Thus, to the extent that the verified response brief contained factual representations that were within Mr. Scott's personal knowledge, Wine & Canvas's response brief satisfied its duty to offer additional evidence beyond the...