United States District Court, M.D. Florida, Orlando Division
REPORT AND RECOMMENDATION
R. HOFFMAN UNITED STATES DISTRICT JUDGE.
UNITED STATES DISTRICT COURT:
cause came on for consideration without oral argument on the
following motion filed herein:
MOTION: DEFENDANT'S MOTION TO DISMISS OR, IN THE
ALTERNATIVE, MOTION TO STAY (Doc. 12)
FILED: March 7, 2019
THEREON it is respectfully RECOMMENDED that the motion be
Deltona Transformer Corporation (Plaintiff) is a Florida
corporation that designs, manufactures, and sells batteries
and battery-related products for the automotive, motorcycle,
and power sports industries. (Doc. 1 at ¶¶ 2, 7-8).
The Plaintiff has advertised and sold its battery products
under four BATTERY TENDER and DELTRAN BATTERY TENDER
trademarks (collectively, the Marks) for more than
twenty-five years. (Id. at ¶¶ 8-10).
Noco Company (Defendant) is an Ohio corporation with its
principal place of business in Ohio. (Id. at ¶
3). The Defendant sells battery-related products that
directly compete with the products that the Plaintiff
advertises and sells under the Marks. (Id. at ¶
case primarily stems from the Defendant's multi-year
marketing campaign of its battery-related products on Amazon.
(Id. at ¶¶ 28-46). The advertisements at
issue included “tender” or “battery
tender” in their taglines and appeared when a user
included the phrase “battery tender” in his or
her search. (Id. at ¶¶ 31, 35, 37, 41,
44). The Plaintiff alleges that the Defendant was not
authorized to reference “tender” or
“battery tender” in the advertisements and, by
doing so, infringed the Marks. (Id. at ¶¶
27-28). Each time the Plaintiff learned of the unauthorized
advertisements, the Plaintiff would contact the Defendant and
demand that it cease using the “tender” and
“battery tender” Marks. (Id. at
¶¶ 33, 36, 42, 45). Each time, the Defendant would
respond by removing the offending advertisement.
(Id. at ¶¶ 34, 37, 43, 46). However,
shortly after the advertisement was removed, the Defendant
would place a new, slightly altered advertisement on Amazon
that again mentioned “tender” or “battery
tender” in the tagline. (Id. at ¶¶
35, 37, 41, 44).
2016, the Defendant expressed an interest in purchasing the
Plaintiff's assets, including the Marks, in order to
“carry on the legacy and passion of the Battery
Tender brand.” (Id. at ¶ 38). The
Plaintiff declined the overtures, which allegedly led the
Defendant to place additional advertisements on Amazon that
used the Marks to refer to the Defendant's own brand
“in an effort to bootstrap its products to and benefit
from the selling power of [the Plaintiff's] brand.”
(Id. at ¶¶ 39-40). However, after December
19, 2018, it does not appear that the Defendant placed any
further unauthorized advertisements on Amazon using the words
“tender” or “battery tender.”
(Id. at ¶¶ 46-47).
the Defendant has continued to use the Marks elsewhere to
advertise its products. (Id. at ¶¶ 47-48).
For example, the Plaintiff points to a message that appeared
on the Defendant's website on January 31, 2019 which
stated, in relevant part, that the Defendant's
“chargers are also battery tenders/maintainers.”
(Id. at ¶ 48).
Plaintiff alleges that the Defendant's unauthorized use
of the Marks in its marketing campaigns is likely to cause
confusion among consumers as to the origin of the
Defendant's products, and is a deliberate attempt to
trade on the goodwill and reputation of the Marks to divert
prospective customers to the Defendant's products.
(Id. at ¶¶ 50-51). As a result, the
Plaintiff filed this action asserting the following claims
against the Defendant: Count I - trademark infringement in
violation of Section 32(a) of the Lanham Act, 15 U.S.C.
§ 1114(1); Count II - false designation of origin and
unfair competition in violation of Section 43(a) of the
Lanham Act, 15 U.S.C. § 1125(a); Count III - common law
trademark infringement; and, Count IV - violation of the
Florida Deceptive and Unfair Trade Practices Act, Fla. Stat.
§ 501.201 et seq. (Id. at 13-16).
Defendant has moved to dismiss the case for want of personal
jurisdiction pursuant to Fed.R.Civ.P. 12(b)(2). (Doc. 12
(Motion to Dismiss)). Alternatively, the Defendant requests
that the case be stayed pending the resolution of a related
cancellation proceeding currently before the Trademark Trial
and Appeal Board of the United States Patent and Trademark
Office (TTAB). (Id.). Finally, in the event the
Court does not dismiss or stay the case, the Defendant
requests that the case be transferred to the United States
District Court for the Northern District of Ohio.
(Id.). In support of these arguments, the Defendant
filed an affidavit from its owner and president, Jonathan
Nook (Doc. 12-1), its standard reseller agreement (Doc.
12-2), and its petition to cancel one of the Marks at issue
in this case (Doc. 12-3).
Plaintiff has filed a response in opposition, arguing that
personal jurisdiction exists in Florida, that the TTAB
proceedings do not warrant a stay of the present litigation,
and that venue is proper in this Court. (Doc. 27). The
Plaintiff relies upon screenshots from the Defendant's
website and social media webpages (Docs. 28-1; 28-2; 28-3;
28-4; 28-5), and screenshots from various webpages showing
the location of retailers in Florida that sell the
Defendant's products (Docs. 28-6; 28-7; 28-8; 28-9;
28-10; 28-11; 28-12; 28-13; 28-14). The Motion to Dismiss was
referred to the undersigned, and the matter is ripe for
Defendant raises three distinct arguments: 1) the Court lacks
personal jurisdiction over the Defendant; 2) the case should
be stayed pending the TTAB's resolution of the
cancellation proceeding; and 3) the case should be
transferred to the Northern District of Ohio. (Doc. 12). The
undersigned will address each argument in turn.
plaintiff claiming that the Court has personal jurisdiction
over a nonresident defendant bears the initial burden of
alleging sufficient facts in the complaint to establish a
prima facie case of personal jurisdiction over the
defendant. United Techs. Corp. v. Mazer, 556 F.3d
1260, 1274 (11th Cir. 2009). A prima facie case is
established if the plaintiff alleges enough facts to
withstand a motion for directed verdict or judgment as a
matter of law. Meier ex rel. Meier v. Sun Intern. Hotels,
Ltd., 288 F.3d 1264, 1269 (11th Cir. 2002). If the
defendant challenges jurisdiction by submitting affidavits
containing specific averments contradicting the
plaintiff's allegations in support of personal
jurisdiction, the burden shifts back to the plaintiff to
produce evidence supporting the existence of personal
jurisdiction. United Techs., 556 F.3d at 1274.
“Where the plaintiff's complaint and supporting
evidence conflict with the defendant's affidavits, the
court must construe all reasonable inferences in favor of the
plaintiff.” Meier, 288 F.3d at 1269.
undertakes a two-step inquiry in determining whether it can
exercise personal jurisdiction over a nonresident defendant.
Cable/Home Communication Corp. v. Network Productions,
Inc., 902 F.2d 829, 855 (11th Cir. 1990). First, the
Court must determine whether the forum state's long-arm
statute provides a sufficient basis for personal
jurisdiction. Sculptchair, Inc. v. Century Arts,
Ltd., 94 F.3d 623, 626 (11th Cir. 1996). Second, if the
Court finds that personal jurisdiction exists under the forum
state's long-arm statute, the Court “must determine
whether sufficient minimum contacts exist between the
defendant[ ] and the forum state so as to satisfy traditional
notions of fair play and substantial justice under the Due
Process Clause of the Fourteenth Amendment.”
Id. (internal quotation omitted).
Florida's Long-Arm Jurisdiction
long-arm statute (which both parties agree applies to this
case) provides for both general and specific personal
jurisdiction. See Fla. Stat. § 48.193(1)-(2).
General personal jurisdiction exists when a defendant
“is engaged in substantial and not isolated activity
within this state . . . whether or not the claim arises from
that activity.” Id. § 48.193(2).
“General personal jurisdiction is based on a
defendant's substantial activity in Florida without
regard to where the cause of action arose.” Louis
Vuitton Malletier, S.A. v. Mosseri, 736 F.3d 1339, 1352
(11th Cir. 2013) (citing Oldfield v. Pueblo De Bahio
Lora, S.A., 558 F.3d 1210, 1220 n.27 (11th Cir. 2009)).
Specific jurisdiction, on the other hand, “authorizes
jurisdiction over causes of action arising from or related to
the defendant's actions within Florida and concerns a
nonresident defendant's contacts with Florida only as to
those contacts related to the plaintiff's cause of
parties appear to agree that the Plaintiff is only asserting
specific personal jurisdiction over the Defendant under Fla.
Stat. § 48.193(1)(a)(2) - the “tortious acts
within Florida” provision - based on the
Defendant's allegedly tortious actions, i.e.,
trademark infringement, within the state. (See Docs.
12; 27). The Defendant contends that it did not
commit a tortious act in Florida because it did not directly
communicate the Amazon advertisements or the message on its
own website into Florida, and therefore §
48.193(1)(a)(2) cannot be satisfied. (Doc. 12 at 8-9). In
response, the Plaintiff contends that the Defendant's
infringing marketing campaigns are enough to satisfy the
requirements of § 48.193(1)(a)(2) because they were
accessible by customers in Florida via a national website and
injured the Plaintiff in Florida. (Id. at
reach of Florida's long-arm statute “is a question
of Florida law, ” therefore the Court is required to
apply the statute “as would the Florida Supreme
Court.” United Techs., 556 F.3d at 1274.
“Florida's long-arm statute is to be strictly
construed.” Sculptchair, 94 F.3d at 627.
Florida long-arm statute provides, in relevant part, as
A person, whether or not a citizen or resident of this state,
who personally or through an agent does any of the acts
enumerated in this subsection thereby submits himself or
herself and, if he or she is a natural person, his or her
personal representative to the jurisdiction of the courts of
this state for any cause of action arising from any of the
Committing a tortious act within this state.
Fla. Stat. § 48.193(1)(a)(2). The Eleventh Circuit has
adopted a “broad interpretation” of this
provision, concluding that a nonresident defendant commits a
tortious act within Florida “when he commits an act
outside the state that causes injury within
Florida.” Louis Vuitton Malletier, S.A.,
736 F.3d at 1353 (emphasis in original) (citing
Licciardello v. Lovelady, 544 F.3d 1280, 1283 (11th
of trademark infringement constitutes a “tortious
act” for purposes of § 48.193(1)(a)(2).
Id. The issue here is whether a nonresident
defendant's allegedly infringing use of a trademark on
the internet is enough to establish specific
jurisdiction. The Eleventh Circuit confronted this
very issue in Licciardello v. Lovelady, 544 F.3d
1280 (11th Cir. 2008) and Louis Vuitton Malletier, S.A.
v. Mosseri, 736 F.3d 1339 (11th Cir. 2013) and held in
Licciardello, the plaintiff (Licciardello) was a
nationally-known entertainer and Florida resident who sued
his former personal manager and Tennessee resident
(Lovelady), for trademark infringement in the Middle District
of Florida. Id. at 1282-83. Licciardello alleged
that Lovelady wrongfully used Licciardello's trademarked
name and picture on Lovelady's website, which was
accessible to the public in Florida and promoted Lovelady as
a personal manager for music artists. Id. at 1282.
The website was created by one of Lovelady's employees in
Tennessee. Id. at 1283. Licciardello argued that
Lovelady's creation of the website in Tennessee
containing an allegedly infringing and deceptive use of
Licciardello's trademarks constituted a tortious act
within Florida pursuant to §
48.193(1)(a)(2). Id. Lovelady moved to dismiss
for lack of personal jurisdiction on the basis that he did
not commit any tort because he did not actually create the
website. Id. The district court granted the motion
to dismiss. Id. at 1282-83.
appeal, the Eleventh Circuit reversed and held that personal
jurisdiction existed under § 48.193(1)(a)(2), because
“although the website was created in Tennessee, the
Florida long-arm statute is satisfied if the alleged
trademark infringement on the website caused injury in
Florida.” Id. at 1283. The Court of Appeals
ignored (and implicitly rejected) Lovelady's argument
that he could not be held liable because he did not directly
create the website. The Court went on to reason that it
“need not decide whether trademark injury necessarily
occurs where the owner of the mark resides, as the Florida
district courts have held, because in this case the alleged
infringement clearly also occurred in Florida by virtue of
the website's accessibility in Florida.”
Id. Thus, as the Eleventh Circuit clarified in a
later decision, Licciardello “instructs that,
under the ‘tortious acts' provision in §
48.193(1)(a)(2), a trademark infringement on an Internet
website causes injury and occurs in Florida ‘by virtue
of the website's accessibility in Florida.'”
Louis Vuitton Malletier, S.A., 736 F.3d at 1353-54
(citing Licciardello, 544 F.3d at 1283).
Eleventh Circuit followed Licciardello in its later
decision Louis Vuitton Malletier, in which the
defendant created websites that marketed and sold counterfeit
and infringing Louis Vuitton merchandise. Id. at
1354. The court found the location where the websites were
created was immaterial in determining whether §
48.193(1)(a)(2) applies. Id. Instead, the court
stated that the relevant inquiry is whether the
defendant's tortious acts caused injury in Florida.
Id. Because the websites were ...