Wolo Mfg. Corp. v. ABC Corp.

Decision Date07 November 2018
Docket Number17-CV-5333(SJF)(SIL)
Citation349 F.Supp.3d 176
Parties WOLO MANUFACTURING CORP., Plaintiff, v. ABC CORP., d/b/a Vixenhorns.com, XYZ Corp., d/b/a Hookedontronics.com, Aftak Corp., d/b/a Aftakcorp.com, and Arie Feldman, Defendants.
CourtU.S. District Court — Eastern District of New York

Robert B. Golden, Jeffrey Mark Rollings, Lackenbach Siegel LLP, Scarsdale, NY, for Plaintiff.

Brian Pete, Peter T. Shapiro, Lewis Brisbois Bisgaard & Smith LLP, New York, NY, Geoffrey Lottenberg, Pro Hac Vice, Lewis Brisbois Bisgaard & Smith LLP, Fort Lauderdale, FL, for Defendants.

ORDER

FEUERSTEIN, District Judge:

I. Introduction

On September 12, 2017, plaintiff Wolo Manufacturing Corp. ("plaintiff" or "Wolo") commenced this action against defendants ABC Corp., d/b/a Vixenhorns.com ("Vixen"); XYZ Corp., d/b/a Hookedontronics.com ("Tronics"); Aftak Corp. ("Aftak"), d/b/a Aftakcorp.com; and Arie Feldman ("Feldman") (collectively, "defendants"), asserting claims, inter alia , for copyright infringement pursuant to the Copyright Act, 17 U.S.C. § 501, et seq. ; trademark infringement, false designation of origin and unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) ; and trademark infringement and dilution, deceptive acts and practices, injury to business reputation and dilution, and unfair competition under New York state law. On December 19, 2017, plaintiff filed an amended complaint against defendants, asserting claims, inter alia , for copyright infringement pursuant to the Copyright Act; trademark infringement, false designation of origin, unfair competition, and false advertising pursuant to the Lanham Act; and trademark infringement and dilution, deceptive acts and practices, injury to business reputation and dilution, unfair competition, misappropriation and unjust enrichment under New York state law. Pending before the Court is defendants' motion: (i) to dismiss plaintiff's claims against Feldman in the amended complaint in their entirety pursuant to Rule 12(b)(2) of the Federal Rules of Civil Procedure for lack of personal jurisdiction; and (ii) for partial dismissal of plaintiff's claims against the remaining defendants in the amended complaint pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure for failure to state a claim for relief.1 For the reasons set forth below, defendants' motion is granted in part and denied in part.

II. Background

A. Factual Allegations2

Plaintiff "designs and sells a variety of automotive accessories, including horns, alarms, sirens, warning lights, and light bars[,]" (Amended Complaint ["Am. Compl."], ¶ 18), and its goods "are sold by leading automotive goods retailers such as Pep Boys, AutoZone, O'Reilly Auto Parts, and Advance Auto Parts." (Id. , ¶ 19). Plaintiff "additionally sells its products directly to customers via its own website, https://wolo-mfg.com/ (‘Wolo's Website’) and through third party websites, such as Amazon." (Id. , ¶ 20). "Wolo's Website contains and displays photographs of its authentic goods[,]" as well as "written descriptions, details and specifications relating to its products, and ... written instructions and videos demonstrating the installion [sic] of its products." (Id. , ¶¶ 21-22).

Plaintiff alleges, "[u]pon information and belief," (i) that Feldman is "the owner, president, officer, manager, member, operator and/or is directing the business and actions, of the Defendant Entities[,]"3 (Am. Compl., ¶¶ 6, 13, 35), and that he "alone directs and controls all of the activities of the Defendant Entities[,]" (id. , ¶ 35); (ii) that "Defendants contract to supply goods and/or services, and/or transact business in New York and within this judicial district; and the tortious acts of Defendants complained of in this Complaint, including, without limitation, the willful and illegitimate use of Wolo's copyrights, trademarks and goodwill, have caused harm to Wolo within this judicial district[,] [so] personal jurisdiction exists over Defendant [sic] pursuant to CPLR §§ 301 and 302 [,]" (id. , ¶ 14); and (iii) that "Defendants' customers include residents of New York State and Defendants have shipped goods into New York State and within this Judicial District, including goods which form the basis of this Complaint." (Id. , ¶ 16). Plaintiff further alleges that defendants "maintain ‘active’ websites which permits [sic] customers to purchase goods from [them] directly from their websites." (Id. , ¶ 15).

According to plaintiff, defendants are its "direct competitors" and "sell a variety of automotive horns and related accessories." (Am. Compl., ¶¶ 36, 66). Plaintiff alleges, "[u]pon information and belief," (i) that "Vixen and/or Feldman (and/or any combination of Defendants), own(s) and operate(s) the website https://vixenhorns.com (the ‘Vixen Website’), which offers for sale and sells a variety of automotive horns and related accessories[,]" (id. , ¶ 37); (ii) that "Tronics and/or Feldman (and/or any combination of Defendants), own(s) and operate(s) the website http://www.hookedontronics.com (the ‘Tronics Website’), which offers for sale and sells a variety of automotive horns and related accessories, including Vixen automotive products[,]" (id. , ¶ 38); (iii) that "Aftak and/or Feldman (and/or any combination of Defendants), own(s) and operate(s) the website http://www.aftakcorp.com (the ‘Aftak Website’), which offers for sale and sells a variety of automotive horns and related accessories, including Vixen automotive products[,]" (id. , ¶ 39); (iv) that "Defendants (and/or any combination of Defendants) offer for sale and sells their products on Amazon.com and Jet.com[,]" (id. , ¶ 40); and (v) that "Defendants (or a combination thereof)" use the Vixen Website, the Tronics Website and the Aftak Website "to advertise and promote Defendants' automotive products and accessories." (Id. , ¶¶ 43, 46, 49).

Plaintiff "owns U.S. Copyright Registration No. TX 8-391-412 (the ‘Copyright Registration’) for two-dimensional artwork and text material (collectively, the ‘Work’)." (Am. Compl., ¶ 23 and Ex. 1; see also Id. , ¶¶ 69-70). Specifically, the Work consists of "Installation Instructions for Model 853 Philly Express Train Horn." (Id. , Ex. 1). The Certificate of Registration indicates, inter alia , that the effective date of registration for the Work is August 21, 2017, and the date of first publication of the Work is December 31, 2008. (Id. ; see also Id. , ¶ 26).

"The Work was and is reproduced and distributed by Wolo with certain of its products and is additionally displayed and/or available for download on the Wolo Website." (Am. Compl., ¶ 24). Plaintiff alleges, inter alia , (i) that "[w]ithout license or authority from Wolo, Feldman (and/or any combination of Defendants) caused Vixen[:]" (A) "to copy Wolo's Work, and without license or authority from Wolo, Vixen reproduced and published two (2) different unauthorized copies of the Work (one for Vixen's horn model number VXH4114 and the other for Vixen's horn model number VXH4114B) (collectively the ‘Infringing Works’)[,]" (id. , ¶ 41 and Ex. 3), and (B) "to publish and make the Infringing Works available for view, display, and further copying by the public by posting it to the Vixen Website[,]" (id. , ¶ 42 and Ex. 4); and (ii) that "[b]y publishing and displaying the Infringing Works on the Vixen Website, Defendants (or a combination thereof) have utilized the Work without license or authority from Wolo, thereby infringing Wolo's Copyright, to generate revenue through the marketing, advertising, and sale of Defendants' goods." (Id. , ¶ 44).

Plaintiff similarly alleges: (i) that "[w]ithout license or authority from Wolo, Feldman (and/or any combination of Defendants)" caused Tronics and Aftak "to publish and make the Infringing Works available for view, display, and further copying by the public by posting it" to the Tronics Website and Aftak Website, respectively, (Am. Compl., ¶¶ 45, 48 and Ex. 5 and 6); and (ii) that "[b]y publishing and displaying the Infringing Works" on the Tronics Website and Aftak Website, respectively, "Defendants (or a combination thereof) have utilized the Work without license or authority from Wolo, thereby infringing Wolo's Copyright, to generate revenue through the marketing, advertising, and sale of Defendants' goods." (Id. , ¶¶ 47, 50).

In addition, plaintiff alleges: (i) that "Defendants (or a combination thereof) copied [its] Work, and without license or authority from [it], published unauthorized copies of the Work and made it available for view, display, and further copying by the public by posting it to Amazon.com and Jet.com in connection with the sale of Defendants' products[,]" (Am. Compl., ¶ 51 and Ex. 7); (ii) that, "[u]pon information and belief, Defendants (or a combination thereof) use the Infringing Work to advertise and promote Defendants' automotive products and accessories offered for sale and sold on Amazon.com and Jet.com[,]" (id. , ¶ 52); (iii) that "[b]y publishing and displaying the Work on Amazon.com and Jet.com postings, Defendants (or a combination thereof) have utilized the Work without license or authority from Wolo, thereby infringing Wolo's Copyright, to generate revenue through the marketing, advertising, and sale of Defendants' goods[,]" (id. , ¶ 53); and (iv) that, "[u]pon information and belief, due to the verbatim copying and display of the Work, Defendants were aware of and obtained the Work from Wolo and intentionally copied the Work." (Id. , ¶ 54).

Plaintiff further alleges that "[i]n connection with its business and products, [it] has adopted and used, and ... is the owner of numerous registered and common law trademarks." (Am. Compl., ¶ 28; see also Id. , ¶ 83). The amended complaint identifies one (1) such trademark as "the carbon fiber-look mark -- the ornamental appearance of carbon fiber style graphics applied in an arbitrary fashion to a portion of a Wolo-product (the Mark’),"4 (id. , ¶ 29), and attaches a picture of one (1) of...

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