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Netsurion, LLC v. Asurion, LLC

United States District Court, S.D. Florida

June 28, 2019

NETSURION, LLC, Plaintiff,
ASURION, LLC, Defendant.



         THIS CAUSE comes before the Court on Defendant Asurion, LLC's Dispositive Motion to Dismiss or Transfer for Lack of Personal Jurisdiction [ECF No. 16], filed on May 17, 2019. At issue here is whether Plaintiff's claims for declaratory judgment of trademark non-infringement arise from Defendant's conduct pursuant to Florida Statutes section 48.193(1)(a)(1), such that specific personal jurisdiction may be exercised over an out-of-state Defendant. Having considered the parties submissions, oral argument on June 12, 2019, the record, and applicable case law, it is

         ORDERED AND ADJUDGED that Defendant's Motion to Dismiss [ECF No. 16] is GRANTED as set forth herein.


         Plaintiff offers complex network and cyber-security services for businesses seeking to improve their network security platforms. Compl. ¶¶ 10-15. Defendant provides technical support services for mobile devices, home appliances, and consumer electronics under the mark Asurion. Id. at ¶ 16. While Plaintiff's services are sold to businesses through managed service providers and point-of-sales distributors, Defendant directly services consumers. Id. at ¶¶ 14, 16. Both Plaintiff and Defendant have trademark registration for their respective marks. Id. at ¶¶ 15, 18. On August 30, 2017, Plaintiff petitioned the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office to amend the identification of services listed on its trademark application (“TTAB Proceeding”). Id. at ¶ 15 n.1. In the TTAB proceeding, Defendant opposed Plaintiff's application and the parties engaged in discovery. Id. at ¶ 19; Pl.'s Opp. ¶ 8.

         On March 29, 2019, counsel for Defendant called Plaintiff's counsel and stated that unless Plaintiff transitioned to a different name and mark, Defendant would initiate litigation against Plaintiff. Compl. ¶ 16. On April 4, 2019, Plaintiff Netsurion, LLC filed a four-count Complaint for declaratory judgment [ECF No. 1] against Defendant Asurion, LLC seeking a declaration that its usage and registration of the Netsurion mark: (1) does not constitute trademark infringement (Count I); (2) is not likely to dilute Defendant's Asurion mark (Count II); (3) does not conflict with Defendant's rights pursuant to 15 U.S.C. section 1052(d) (Count III); and (4) has not harmed or damaged Defendant (Count IV). See generally Compl.

         On May 17, 2019, Defendant filed a Motion to Dismiss or Transfer for Lack of Personal Jurisdiction [ECF No. 16] (“Motion”). Travelling under the mistaken premise that Plaintiff's Complaint alleges general personal jurisdiction, Defendant's Motion focuses on Plaintiff's inability to meet the jurisdictional paradigm set forth by the United States Supreme Court in Daimler AG v. Bauman, 571 U.S. 117 (2014). See generally Def.'s Mot. Dismiss. In support of its Motion, Defendant submitted the Declaration of Bettie Colombo, the Senior Director of Corporate Communications for Asurion [ECF No. 16-1]. In her declaration, Ms. Colombo notes that Asurion is not incorporated in Florida, has a principal place of business in Nashville, Tennessee, employs approximately 4% of its over 19, 000 employees in Florida, and has two call centers in Florida. Id.

         On May 31, 2019, Plaintiff filed its Response in Opposition to Defendant's Motion [ECF No. 19] (“Opposition”) alleging that Defendant is subject to specific personal jurisdiction in Florida. Plaintiff's Opposition includes two declarations-one by Kevin Watson, the Chief Executive Officer of Netsurion, LLC [ECF No.19-1] and another by Anna B. Naydonov, Esq. [ECF No.19-2]-and fifteen exhibits. In relevant part, the evidence submitted by Plaintiff demonstrates the following uncontroverted facts: Asurion employs 4% of its employees in Florida [ECF No. 16-1]; has two call centers, including a 72, 000 square foot office space in Orlando [ECF No. 19-3]; operates cell phone repair centers and forward stocking locations in several cities across the State [ECF Nos. 19-4; 19-5]; promotes its services and Floridian clients on its website [ECF No. 19-7]; and has eleven subsidiaries registered with the Florida Department of State [ECF No. 19-10]. In addition, Plaintiff provided evidence of cease and desist letters sent by Defendant to two Florida-based entities [ECF No. 19-15].

         In its Reply in Support of Motion [ECF No. 20] (“Reply”), Defendant advances that it has not engaged in the type of trademark enforcement activity necessary to confer the Court with specific personal jurisdiction in a trademark non-infringement action. In support of its argument, Defendant submitted the Declaration of Emily Warth, the Assistant General Counsel for Asurion, LLC [ECF No. 20-1]. In her declaration, Ms. Warth notes that Asurion has not engaged in judicial trademark enforcement activity against Netsurion in the State of Florida, nor filed any trademark infringement lawsuit against any other party in the State. Wrath Decl. ¶¶ 3, 5. Defendant also submitted evidence regarding a previous, unrelated lawsuit against Asurion [ECF No. 20- 2] and Plaintiff's discovery requests in the TTAB Proceeding [ECF No. 20-3]. On June 11, 2019, Defendant submitted a Notice of Supplement Authority, which contained the recently decided Eleventh Circuit case, Hinkle v. Cirrus Design Corp., No. 18-10404, 2019 WL 2233644, at *1 (11th Cir. May 23, 2019) [ECF No. 21].

         The parties do not disagree about the aforementioned facts. Rather, the heart of the jurisdictional dispute centers on the applicable legal framework used to assess specific personal jurisdiction in a trademark non-infringement suit. Plaintiff argues that Buccellati Holding Italia SPA v. Laura Buccellati, LLC, No. 13-CIV-21297-KMM, 2014 WL 11880964, at *1 (S.D. Fla. Jan. 24, 2014), requires the Court to find specific personal jurisdiction in light of Defendant's prevalent commercial use of the Asurion mark in Florida.[1] Defendant disagrees and advances that pursuant to United Bully Kennel Club, Inc. v. Am. Bully Kennel Club, Inc., No. 11-CIV-80682, 2011 WL 13228570, at *1 (S.D. Fla. Oct. 5, 2011), Plaintiff must demonstrate that its claims specifically arise out of Defendant's trademark enforcement activities. As explained below, the Court rejects both parties' invitations and resolves this legal issue in favor of Defendant.


         To withstand a motion to dismiss pursuant to Rule 12(b)(2), a plaintiff must plead sufficient facts to establish a prima facie case of jurisdiction over the non-resident defendant. Diamond Crystal Brands, Inc. v. Food Movers Int'l, Inc., 593 F.3d 1249, 1257 (11th Cir. 2010). In considering the adequacy of a plaintiff's proffer, a district court is constrained to accept uncontroverted allegations in the Complaint as true and to resolve factual disputes in the plaintiff's favor. See Madara v. Hall, 916 F.2d 1510, 1514 (11th Cir. 1990). Where a defendant challenges jurisdiction by submitting affidavit evidence in support of its position, the burden shifts back to the plaintiff to produce jurisdictional evidence. Diamond, 593 F.3d at 1257. Any factual conflict in the parties' evidence must be construed in the light most favorable to the plaintiff. PVC Windoors, Inc. v. Babbitbay Beach Const., N.V., 598 F.3d 802, 810 (11th Cir. 2010).

         A court may assert either general or specific jurisdiction over a defendant. In Florida, general personal jurisdiction arises when a defendant engages in “substantial and not isolated activity” in the State. Fla. Stat. § 48.193(2). There is no allegation here that Defendant Asurion has sufficient contacts with the State of Florida to properly invoke general jurisdiction.[2] Therefore, Defendant's Motion to Dismiss stands or falls on a specific jurisdiction analysis.

         Where a defendant challenges specific personal jurisdiction, the plaintiff has the twin burden of establishing that personal jurisdiction over the defendant comports with the forum state's long-arm statue, as well as the requirements of the Due Process Clause. See PVC Windoors, 598 F.3d at 807. Both prongs of the jurisdictional analysis must be satisfied for a federal ...

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