Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Honus Wagner Co. v. Luminary Group LLC

United States District Court, S.D. Florida

December 21, 2017

HONUS WAGNER COMPANY, Plaintiff,
v.
LUMINARY GROUP LLC and LESLIE BLAIR ROBERTS Defendants.

          ORDER ON MOTIONS TO DISMISS, OR IN ALTERNATIVE CHANGE VENUE; MOTION TO STRIKE; MOTION TO TAKE JUDICIAL NOTICE; MOTION FOR EXTENSION OF TIME; AND MOTION TO AMEND

          BETH BLOOM, UNITED STATES DISTRICT JUDGE

         THIS CAUSE is before the Court upon six motions: Motion to Dismiss or in the Alternative Transfer Venue of Plaintiffs First Amended Complaint, ECF No. [34], filed by Defendant Luminary Group LLC ("Luminary"); Motion to Dismiss or, in the Alternative, to Transfer Venue, ECF No. [47], filed by Defendant Leslie Blair Roberts ("L. Roberts, " together with Luminary, "Defendants"); Defendant Leslie Blair Roberts' Motion Requesting the Court to Take Judicial Notice of Public Records, ECF No. [48]; and Defendants Luminary Group, LLC and Leslie Blair Roberts' Motion to Strike the Affidavit of Raymond M. Roberts (DE 50), the Supplemental Affidavit of Raymond M. Roberts (DE 55), and Plaintiffs Notice of Filing (DE 56), ECF No. [58] (collectively, the "Motions"). On December 12, 2017 Plaintiff filed an opposed Motion for Extension of Time to Amend Pleadings and or [sic] Add Parties and Incorporated Memorandum of Law with Request for Expedited Briefing Schedule or Immediate Ruling, ECF No. [67]. Finally, on December 19, 2017, Plaintiff filed a motion styled as "Plaintiffs Motion for Leave to File Second Amended Complaint to Add an Additional Count, Count XI for Declaratory Judgment, and to Clarify the First Amended Complaint to Reflect the Background History of Honus Wagner Company as per the Affidavits of Raymond M. Roberts ECF Nos. [50 and 55] Filed After the First Amended Complaint." ECF No. [68]. The Court has carefully reviewed the Motions, all opposing and supporting materials, the record in this case and the applicable law, and is otherwise fully advised. For the reasons set forth below, the Motion to Strike is granted in part and denied in part, the Motions to Dismiss are granted based on lack of personal jurisdiction, and the remaining motions are denied as moot.

         I. PROCEDURAL BACKGROUND

         Plaintiff Honus Wagner Company ("Plaintiff) filed its Amended Complaint, ECF No. [20], on September 17, 2017. On October 4, 2017, Luminary filed its Motion to Dismiss or in the Alternative Transfer Venue of Plaintiff s First Amended Complaint, ECF No. [34]. On October 18, 2017, L. Roberts filed her Motion to Dismiss or, in the Alternative, to Transfer Venue, ECF No. [47] (together, with ECF No. [34], the "Motions to Dismiss"). Plaintiff filed Oppositions to both Motions to Dismiss, ECF Nos. [42] and [51] ("Oppositions"), and Luminary and L. Roberts replied, ECF Nos. [49] and [62]. On October 24, 2017, the day after Luminary filed its reply brief, Plaintiff filed an affidavit which purported to relate to Luminary's Motion to Dismiss styled "Affidavit of Raymond M. Roberts, Attorney at Law, Opining That Plaintiff Honus Wagner Company, Domesticated in Florida in 2013, Is a Successor in Interest Under the Decree, ECF No. 20-1, " to which Plaintiff attached twelve exhibits. See ECF No. [50] ("October 24, 2017 R. Roberts Affidavit").[1] In addition, on October 26, 2017, two days after Plaintiff filed its Opposition to Roberts' Motion to Dismiss and prior to L. Roberts' Reply, Plaintiff filed an additional affidavit in support of its Opposition to L. Roberts' Motion to Dismiss styled "Supplemental Affidavit of Raymond M. Roberts, Attorney at Law, Opining That Plaintiff Honus Wagner Company, Domesticated in Florida in 2013, Is a Successor in Interest Under the Decree, ECF No. 20-1, " in which Plaintiff referenced the exhibits attached to ECF No. [50] and attached an additional exhibit. See ECF Nos. [55] and [55-1] ("October 26, 2017 R. Roberts Affidavit").

         Concurrent with the filing of her motion to dismiss, L. Roberts also filed a Motion Requesting the Court to Take Judicial Notice of Public Records. ECF No. [48] ("Motion to Take Judicial Notice"). In addition, on October 30, 2017, Defendants filed a Motion to Strike the October 24, 2017 R. Roberts Affidavit, the October 26, 2017 R. Roberts Affidavit, and Plaintiffs Notice of Filing (ECF No. [56]). ECF No. [58] ("Motion to Strike"). The day prior, however, Plaintiff filed a Notice of Striking as to ECF No. [56]. ECF No. [57]. Additionally, on October 30, 2017, after Defendants' Motion to Strike was filed, Plaintiff filed a second notice of striking styled "Notice of Striking ECF Nos. [50 and 55] Only With Respect to ECF Nos. [34 and 35], " which ostensibly attempted to clarify that ECF Nos. [50] and [55] are related only to the Motion to Dismiss filed by L. Roberts and not Luminary as Plaintiff originally filed them. ECF No. [61]. Plaintiff subsequently filed an opposition styled "Plaintiffs Response in Opposition to Luminary Group, LLC's and Leslue [sic] Blair Roberts' Motion to Strike the Affidavit of Raymond M. Roberts (DE 50), the Supplemental Affidavit of Raymond M. Roberts (DE 55), and Plaintiffs Notice of Filing (DE 56), " ECF No. [63], which appears to respond to both the Motion to Strike and the Motion to Take Judicial Notice. Defendants replied on November 14, 2017. ECF No [64]. Each of these motions is now ripe for review.

         II. FACTUAL BACKGROUND

         According to the Amended Complaint, Johannes Peter Wagner, also known as Honus Wagner or John H. Wagner ("Wagner"), was a well-known shortstop for the Pittsburgh Pirates who was inducted into the Baseball Hall of Fame in 1936. ECF No. [20] ¶ 2. In 1922, after Wagner had retired from baseball, he formed a sporting goods store called the Honus Wagner Company and opened a store front in Pittsburgh, Pennsylvania. Id. ¶ 3. On December 28, 1928, a bankruptcy order was issued in the bankruptcy of the Honus Wagner Sporting Goods Company, a Delaware Corporation. Id. ¶ 8. Plaintiff alleges that Wagner subsequently sold the Honus Wagner Company, [2] "along with the rights to the Honus Wagner name, mark, likeness, and identity" to E.L. Braunstein in 1929. Id. ¶4. 6. While not clear from the Amended Complaint, the sale may have been memorialized in a written agreement (also not before the Court) between John H. Wagner and E.L. Braunstein dated January 21, 1939. See Id. ¶ 8. By 1933, Wagner sued the Honus Wagner Company for an accounting and damages related to monies Wagner claimed he was owed by the Honus Wagner Company. Id. ¶ 5-6. According to the Amended Complaint, Wagner also sought injunctive relief "to stop the use of the Honus Wagner name, likeness, mark, and identity all together" and equitable relief to "give him back the Honus Wagner name, mark, likeness identity, and reputation for his sole use." Id. ¶ 6-7.

         The lawsuit resulted in a decree "entered ... by consent of all the parties, " and signed by the attorney for John H. Wagner; the attorney for E.L. Braunstein, E.L. Braunstein & Co., Inc., and E.L. Braunstein & Co, Inc. trading as United Sporting Goods Company; the attorney for Honus Wagner Company; and the attorney for National Stores Company. ECF No. [21-1] ("Consent Decree"). The Consent Decree states that "all commissions due, or alleged to be due" to Wagner "have been fully paid." Id. at 1. The Consent Decree further states:

That the right to the exclusive use of the name "Honus Wagner" for all commercial and advertising purposes is vested in E.L. Braunstein & Co, Inc., a corporation, E.L. Braunstein and Honus Wagner Company, a corporation, their heirs, executors, administrators, successors and assigns, as appears by Order of Court dated December 28th, 1928, of Watson B. Adair, Esq., Referee in Bankruptcy of the District Court of the Unites States for the Western District of Pennsylvania, made in the Matter of the Honus Wagner Sporting Goods Company, a Delaware Corporation, Bankrupt, at No. 14400 In Bankruptcy, and further acknowledged in the written agreement between Johan H. Wagner and E.L. Braunstein, to the said and same effect, dated January 21st, 1929.

ECF No. [20-1] at 1-2. According to the Amended Complaint, E.L. Braunstein, and later his son-in-law, Murray Shapiro, continued to run the store until March 21, 2011. ECF No. [20] ¶¶ 11-12. The Amended Complaint alleges that after Murray Shapiro died in 2012 "ownership of Honus Wagner Company" passed first to Murray's daughter and then her brother, Allen Shapiro in 2013. Id. ¶ 16. By 2014, Allen Shapiro "move[d] the Honus Wagner Company's principal place of business to Florida and has been transitioning the physical store to the World Wide Web." Id. The Amended Complaint states that the Honus Wagner Company maintains an online store at www.HonusWagner.biz. Id. Plaintiff asserts that based on the foregoing facts, it "owns common law rights in the Honus Wagner name and mark." Plaintiff also alleges that it has registered the mark Honus Wagner with the United States Patent and Trademark Office for use for an "on-line retail store featuring sporting goods" and "for tee shirts, baseballs, and baseball bats." Id. ¶ 17. See also ECF No. [35] at 3 (Defendant Luminary noting that Plaintiff obtained two trademarks for the words "Honus Wagner" in April 2016 and June 2016 for an online retail store featuring sporting goods and for tee shirts, baseballs and baseball bats).[3]

         Luminary is a licensing agency which serves as "business representative for the estate of Honus Wagner" with its principal place of business in Indiana. ECF No. [20] ¶ 18; ECF No. [35] at 3; see also Affidavit of Pete Enfield, ECF No. [35-1] ("Enfield Aff"), ¶ 4. Luminary has registered the URL www.HonusWagner.com. ECF No. [20] ¶ 18; see also Enfield Aff. ¶ 12. The website is available to internet users "everywhere in the world." ECF No. [20]¶ 20. Through this website, Luminary offers to "work with companies who wish to use the name or likeness of Honus Wagner in any commercial fashion." Id. ¶ 18. The website states "[i]f you are interested in using Honus Wagner in a promotion or product campaign, please contact the Luminary Group" and provides a telephone and fax number. Id. The website also includes a fill-in form which allows potential customers to inquire by providing their name, email, subject and message. Id. Luminary further states on the same website that "[Honus Wagner's] name, image, words, signature, and voice are the protectable property rights owned by the estate. Any use of the above, without express written consent of the estate is strictly prohibited." Id.

         Defendant L. Roberts is a resident of South Carolina and the sole heir of the Honus Wagner estate. Id. ¶ 26. Plaintiff alleges that Roberts "claimed ownership of the rights to the Honus Wagner name and mark and either granted [Luminary] a license, or assigned, her alleged rights to [Luminary]." Id. ¶ 21; see also Affidavit of Leslie Blair Roberts, ECF No. [47-3] ("L. Roberts Aff."), ¶ 3. The rights that Luminary offers to license through its website purportedly derive from Defendant L. Roberts, who claims to be the sole heir of the Honus Wagner estate. Id. ¶ 19; see also L. Roberts Aff. ¶ 5-7.

         Plaintiff alleges that Luminary has entered into an agreement with at least one company, The Topps Company, Inc. ("Topps")[4], to license "Plaintiffs intellectual property rights ... to advertise, make and sell products in this jurisdiction, as well as throughout the U.S. and the world." Id. ¶ 22. This includes sales in at least one store, All Star Sports & Collectibles located in Davie, Florida. Id. Plaintiff contends that "Luminary Group owns and controls several other websites directed at this jurisdiction and venue, the U.S. and the world, including but not limited to its company website located at http://luminarygroup.com . . . ." Id. ¶ 20. Plaintiff further alleges, without additional detail, that Luminary has licensed others and/or advertised to license others, and/or sold, advertised, and/or in some way shape, form or fashion infringed Plaintiffs Intellectual Property in this jurisdiction, venue, throughout the U.S. and/or the world." Id. ¶ 22.

         Based on these allegations, Plaintiff alleges that Defendants have infringed on its intellectual property rights and asserts claims under the Lanham Act, as well as state law claims of trademark infringement, unfair competition, and right of publicity under Florida common law, the Florida Deceptive and Unfair Trade Practices Act, and the Indiana State Statutory Right of Publicity. Id. ¶ 24.

         III. MOTION TO STRIKE

         Before reaching Defendants' Motions to Dismiss, the Court first addresses Defendants' Motion to Strike, ECF No. [58]. Defendants move to strike the October 24, 2017 R. Roberts Affidavit ECF No. [50]; the October 26, 2017 R. Roberts Affidavit, ECF No [55]; and Plaintiffs Notice of Filing, ECF No. [56]. Rule 12(f) of the Federal Rules of Civil Procedure permits a court to "strike from a pleading an insufficient defense or any redundant, immaterial, impertinent, or scandalous matter, " granting courts broad discretion in making this determination. Fed.R.Civ.P. 12(f); see also Morrison v. Executive Aircraft Refinishing, Inc., 434 F.Supp.2d 1314, 1318-19 (S.D. Fla. 2005); Williams v. Eckerd Family Youth Alternative, 908 F.Supp. 908, 910 (M.D. Fla. 1995). Under Rule 12(f), "[a] motion to strike will usually be denied unless the allegations have no possible relation to the controversy and may cause prejudice to one of the parties." Harty v. SRA/Palm Trails Plaza, LLC, 755 F.Supp.2d 1215, 1218 (S.D. Fla. 2010) (internal quotation and citation omitted); see also Tarasewicz v. Royal Caribbean Cruises Ltd., No. 14-CIV-60885, 2015 WL 1566398, at *1 (S.D. Fla. Apr. 8, 2015) (same). Courts have broad discretion in considering a motion to strike under Federal Rule of Civil Procedure 12(f). Sakolsky v. Rubin Mem'l Chapel, LLC, No. 07-80354-CIV, 2007 WL 3197530, at *1 (S.D. Fla. Oct. 26, 2007). However, Rule 12(f) motions to strike are considered drastic, granted sparingly and often disfavored. Pujals ex rel. El Rey De Los Habanos, Inc. v. Garcia, 777 F.Supp.2d 1322, 1327 (S.D. Fla. 2011).

         First, Plaintiff has already stricken ECF No. [56] and its attachment, ECF No. [56-1] based on its own Notice of Striking, ECF No. [57]. See ECF No. [63] at 2 (representing that "Plaintiff has completely stricken its Notice of Filing, [DE 56], so Defendants' argument regarding same is moot"). The Court therefore denies as moot that portion of Defendants' Motion to Strike related to ECF No. [56].

         Second, as to the October 24, 2017 R. Roberts Affidavit and October 26, 2017 R. Roberts Affidavit (together, the "R. Roberts Affidavits"), Defendants argue that both were improperly filed in contravention of the Local Rules, contain additional arguments not asserted in Plaintiffs Oppositions to the Motions to Dismiss, and effectively seek to amend the operative complaint. See ECF No. [58] at 2-3. In a combined response to both the Motion to Strike and Motion to Take Judicial Notice, ECF No. [63], Plaintiff appears to concede that the affidavits contain additional arguments not found in Plaintiffs Opposition to L. Roberts' Motion to Dismiss. Plaintiff urges the Court to deny the Motion to Strike because "to understand the true significance" of documents attached by Defendant L. Roberts to its motions, "the Court must examine the history" of Plaintiff and any related entities and proceedings as contained in the R. Roberts Affidavits. ECF No. [63] ¶ 1. Plaintiff further states in a footnote that "Plaintiff contends, regardless of striking some of its own pleadings, that Plaintiffs Response and the [R. Roberts Affidavits] apply to any and all pleadings affected by these new allegations." Id. ¶ 3 n.1. Conflating the standards for admission of expert testimony, a motion to dismiss, and a motion to strike, Plaintiff argues that R. Roberts is qualified as an expert and thus the R. Roberts Affidavits "satisfy the Twombly/Iqbal plausibility test, and as a result, the Court should not strike . . .." Id. at 5.[5] On reply, Defendants reiterate that they "take issue with Plaintiffs attempt to amend or improve upon its allegations . . ." through purported expert testimony and/or procedurally improper affidavits. ECF No. [64] at 2, 5.

         The content and timing of filing of the R. Roberts Affidavits lend credence to Defendants' arguments in favor of striking the R. Roberts Affidavits. Defendant Luminary's Motion to Dismiss was fully briefed on October 23, 2017. See ECF No. [49]. Defendant L. Roberts filed her Motion to Dismiss on October 18, 2017, ECF No. [47], triggering Plaintiffs response date of November 1, 2017. Plaintiff filed an Opposition to L. Roberts' Motion to Dismiss on October 24, 2017. ECF No. [51], and that same day filed the October 24, 2017 R. Roberts Affidavit. For purposes of the Motion to Strike, the Court assumes, without deciding, that the October 24, 2017 R. Roberts Affidavit was erroneously filed as related to Defendant Luminary's fully-briefed Motion to Dismiss and should have been filed as related to Defendant L. Roberts' Motion to Dismiss, per counsel's representation to the Court. ECF No. [61].

         The October 24, 2017 R. Roberts Affidavit was filed contemporaneously with Plaintiffs Opposition to L. Roberts' Motion to Dismiss, ECF No. [51], and thus is not improperly filed as to Defendant L. Roberts. Similarly, the October 26, 2017 R. Roberts Affidavit was filed within the allowed time to respond to L. Roberts' Motion to Dismiss and prior to the filing of L. Roberts' reply, and thus is not improperly filed as to Defendant L. Roberts.

         However, the R. Roberts Affidavits contain additional factual matter not plead in the Amended Complaint and appear to be an attempt by Plaintiffs counsel to amend the operative complaint-apparently as to Defendant L. Roberts only-without seeking leave of Court. This is plainly improper. Flintlock Const. Servs., LLC v. Well-Come Holdings, LLC, 710 F.3d 1221, 1228 (11th Cir. 2013) (finding Eleventh Circuit precedent foreclosed defendant's attempt to amend its complaint without seeking leave of court pursuant to Rule 15(a)(2)); SecurityPoint Media, LLC v. The Adason Grp., LLC, No. 8:07CV444T24TGW, 2007 WL 2298024, at *3 (M.D. Fla. Aug. 7, 2007) ("It is axiomatic that a plaintiff cannot amend the complaint by arguments made by counsel in opposition to a motion to dismiss." (citation omitted)).

         Accordingly, the Court grants Defendants' Motion to Strike the R. Roberts Affidavits as to Defendant L. Roberts, to the extent the allegations contained therein purport to amend the operative complaint. Further, to the extent that facts contained in the R. Roberts Affidavits may be construed as facts propounded to satisfy Plaintiffs burden under the due process prong of personal jurisdiction analysis, the Court will apply those facts as to Defendant Roberts only. Accordingly, Defendants' Motion to Strike ECF No. [50] and [55] is granted in part and denied in part.

         IV. MOTION TO DISMISS

         I. Legal Standard

         A complaint in a civil action must contain "a short and plain statement of the claim showing that the pleader is entitled to relief." Fed.R.Civ.P. 8(a)(2). A motion to dismiss under Rule 12(b)(6) challenges the legal sufficiency of the complaint. See Fed. R. Civ. P. 12(b)(6). To survive such a motion, a claim "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) (quoting Bell Ail. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). Although this pleading standard "does not require 'detailed factual allegations, ' ... it demands more than an unadorned, the-defendant-unlawfully-harmed-me accusation, " meaning that a plaintiff is required to plead sufficient "factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Iqbal, 556 U.S. at 678 (quoting Twombly, 550 U.S. at 556-56). Thus, while a court must accept well-pleaded factual allegations as true, "conclusory allegations ... are not entitled to an assumption of truth-legal conclusions must be supported by factual allegations." Randall v. Scott, 610 F.3d 701, 709-10 (11th Cir. 2010). When considering a motion to dismiss, the Court construes the pleadings broadly and views the allegations in the complaint in the light most favorable to the plaintiff Bishop v. Ross Earle & Bonan, P.A., 817 F.3d 1268, 1270 (11th Cir. 2016); Levine v. World Fin. Network Natl Bank, 437 F.3d 1118, 1120 (11th Cir. 2006).

         Under Federal Rule of Civil Procedure 12(b)(2), a party may also move for dismissal based on lack of personal jurisdiction. When a district court does not conduct a discretionary evidentiary hearing on a motion to dismiss for lack of jurisdiction, "[a] plaintiff seeking to establish personal jurisdiction over a nonresident defendant 'bears the initial burden of alleging in the complaint sufficient facts to make out a prima facie case of jurisdiction.' " Louis Vuitton Malletier, S.A. v. Mosseri, 736 F.3d 1339, 1350 (11th Cir. 2013) (quoting United Techs. Corp. v. Mazer, 556 F.3d 1260, 1274 (11th Cir. 2009)); Madara v. Hall, 916 F.2d 1510, 1514 (11th Cir. 1990) (citation omitted). If "a defendant challenges personal jurisdiction 'by submitting affidavit evidence in support of its position, ' " the plaintiff then bears the burden of producing evidence supporting jurisdiction. Id. (quoting United Techs., 556 F.3d at 1274). When the plaintiffs complaint and the defendant's evidence conflict, the court "construe[s] all reasonable inferences in favor of the plaintiff." Stubbs v. Wyndham Nassau Resort & Crystal Palace Casino, 447 F.3d 1357, 1360 (11th Cir. 2006)

         A. DEFENDANTS' MOTIONS TO DISMISS FOR LACK OF PERSONAL JURISDICTION

         Defendant Luminary and Roberts both move to dismiss the Amended Complaint based on, inter alia, lack of personal jurisdiction. See ECF No. [35] at 9; ECF No [47] at 9. Luminary argues that it lacks any connection to Florida and that Luminary's passive websites that may be viewed in Florida are insufficient to establish personal jurisdiction. ECF No. [35] at 9. In particular, Defendant argues that these websites only "allow[] for the potential of someone to access them in Florida or to submit ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.