United States District Court, S.D. Florida
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
BLOOM, UNITED STATES DISTRICT JUDGE
CAUSE is before the Court upon six motions: Motion
to Dismiss or in the Alternative Transfer Venue of Plaintiffs
First Amended Complaint, ECF No. , filed by Defendant
Luminary Group LLC ("Luminary"); Motion to Dismiss
or, in the Alternative, to Transfer Venue, ECF No. ,
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.
; 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.  (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. . 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. . 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.
Honus Wagner Company ("Plaintiff) filed its Amended
Complaint, ECF No. , 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. . On October 18, 2017, L. Roberts
filed her Motion to Dismiss or, in the Alternative, to
Transfer Venue, ECF No.  (together, with ECF No. ,
the "Motions to Dismiss"). Plaintiff filed
Oppositions to both Motions to Dismiss, ECF Nos.  and
 ("Oppositions"), and Luminary and L. Roberts
replied, ECF Nos.  and . 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. 
("October 24, 2017 R. Roberts
Affidavit"). 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.  and attached an additional exhibit.
See ECF Nos.  and [55-1] ("October 26, 2017
R. Roberts Affidavit").
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.  ("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. ). ECF No. 
("Motion to Strike"). The day prior, however,
Plaintiff filed a Notice of Striking as to ECF No. . ECF
No. . 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.
 and  are related only to the Motion to Dismiss filed
by L. Roberts and not Luminary as Plaintiff originally filed
them. ECF No. . 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. ,
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 . Each of these motions is now
ripe for review.
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. 
¶ 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,  "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.
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. 
¶¶ 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.  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
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.  ¶
18; ECF No.  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.
 ¶ 18; see also Enfield Aff. ¶ 12. The
website is available to internet users "everywhere in
the world." ECF No. ¶ 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.
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.
alleges that Luminary has entered into an agreement with at
least one company, The Topps Company, Inc.
("Topps"), 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.
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.
MOTION TO STRIKE
reaching Defendants' Motions to Dismiss, the Court first
addresses Defendants' Motion to Strike, ECF No. .
Defendants move to strike the October 24, 2017 R. Roberts
Affidavit ECF No. ; the October 26, 2017 R. Roberts
Affidavit, ECF No ; and Plaintiffs Notice of Filing, ECF
No. . 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.
Plaintiff has already stricken ECF No.  and its
attachment, ECF No. [56-1] based on its own Notice of
Striking, ECF No. . See ECF No.  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. .
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.  at 2-3. In a
combined response to both the Motion to Strike and Motion to
Take Judicial Notice, ECF No. , 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.  ¶ 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. 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.  at 2, 5.
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. . Defendant L. Roberts filed her
Motion to Dismiss on October 18, 2017, ECF No. ,
triggering Plaintiffs response date of November 1, 2017.
Plaintiff filed an Opposition to L. Roberts' Motion to
Dismiss on October 24, 2017. ECF No. , 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. .
October 24, 2017 R. Roberts Affidavit was filed
contemporaneously with Plaintiffs Opposition to L.
Roberts' Motion to Dismiss, ECF No. , 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
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)).
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. 
and  is granted in part and denied in part.
MOTION TO DISMISS
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).
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.
DEFENDANTS' MOTIONS TO DISMISS FOR LACK OF PERSONAL
Luminary and Roberts both move to dismiss the Amended
Complaint based on, inter alia, lack of personal
jurisdiction. See ECF No.  at 9; ECF No  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.  at 9. In particular, Defendant
argues that these websites only "allow for the
potential of someone to access them in Florida or to submit