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PG Creative, Inc. v. Affirm Agency, LLC

United States District Court, S.D. Florida

October 31, 2019

PG CREATIVE INC., a Florida Corporation, Plaintiff,
AFFIRM AGENCY, LLC, a Wisconsin Limited Liability Company, and STAPLES MARKETING, LLC, a Wisconsin Limited Liability Company, Defendants.



         THIS CAUSE comes before the Court on Defendants' Motion to Dismiss for Lack of Personal Jurisdiction (the “Motion”) [ECF No. 37]. The Court has reviewed the Motion and the record and is otherwise fully advised. For the reasons that follow, the Motion is granted.

         I. BACKGROUND

         A. Factual[1]

         In 2014, Plaintiff PG Creative Inc., an advertising agency, introduced its “Dose of Reality Prevention Campaign, ” which was devised to address the nation's prescription drug epidemic. See Second Amended Complaint (the “Complaint”) ¶ 14, [ECF No. 32]. The campaign includes marketing materials, such as pamphlets, bumper stickers, and flyers, which heavily feature the “Dose of Reality” mark (the “Mark). [ECF No. 32-3]. The Mark includes the words “Dose of Reality” in a stylized font. Compl. ¶ 13. Since 2014, Plaintiff has advertised the Mark on its website, Id. ¶ 18.

         In 2015, Defendants Affirm Agency, LLC, and Staples Marketing, LLC, d/b/a Affirm (collectively the “Defendants”[2]) designed a campaign against prescription drug abuse for the State of Wisconsin (the “Wisconsin Campaign”). Id. ¶ 32. Defendants use the Mark in the Wisconsin Campaign. Id. ¶ 36. Plaintiff claims that Defendants were fully aware that Plaintiff owned the Mark when they intentionally copied it for the Wisconsin Campaign. Id. ¶ 32. In support of its claim, Plaintiff asserts that “a user in the city of Pewaukee, Wisconsin, the home of Defendants” visited Plaintiffs website on May 7, 2015, four months before the Wisconsin Campaign launched. Id. ¶ 22.

         Since the Wisconsin Campaign, Defendants have also helped other states launch similar campaigns featuring the Mark. Id. ¶ 50. In March 2019, the Florida Attorney General's Office (the “Attorney General”) asked Defendants about implementing the Wisconsin Campaign in Florida. [ECF No. 37 at 5].[3] Defendants relayed the Attorney General's interest to the State of Wisconsin, and the State of Wisconsin approved the Attorney General's use. [ECF No. 37 at 10-11]. Ultimately, the Attorney General did not move forward with the project, and Defendants never transmitted any files to Florida. [ECF No. 46-1 at ¶ 4].

         Plaintiff claims Defendants' use of the Mark has caused, and will continue to cause, confusion among Plaintiffs potential clients as to who owns the Mark. Compl. ¶ 76. Specifically, Plaintiff alleges Defendants' actions caused Plaintiffs search rankings[4] for the “Dose of Reality” search term to decline and caused prospective clients--including several at ¶ 2018 Orlando, Florida trade show--to believe Plaintiff had copied Defendants' Wisconsin Campaign. Id. ¶¶ 23-25. Plaintiff asserts that this confusion has caused and continues to cause immediate irreparable harm to Plaintiffs reputation and goodwill in the marketplace. Id. ¶ 52.

         B. Procedural

         On October 17, 2018, Plaintiff filed its Complaint against Defendant Affirm Agency, LLC, bringing four counts sounding in trademark infringement. [ECF No. 1]. Plaintiff soon after filed its First Amended Complaint, adding Defendant Staples Marketing, LLC, d/b/a Affirm. [ECF No. 20]. On December 21, 2018, Defendants filed their first Motion to Dismiss [ECF No. 24], and on April 19, 2019, they filed a related Notice of New Facts (“Notice”) [ECF No. 29].

         On May 7, 2019, Plaintiff filed its Second Amended Complaint against Defendants, incorporating the facts asserted in Defendants' Notice and alleging claims for: (1) service mark infringement in violation of Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1); (2) unfair competition in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) false and misleading representations of fact in violation of Florida's Deceptive and Unfair Trade Practices Act, Fla. Stat. § 501.201 et seq; and (4) common law trademark infringement. Compl. ¶¶ 54, 62, 71, 76-81.

         On May 20, 2019, Defendants moved to dismiss based on: (1) lack of personal jurisdiction and improper venue; (2) failure to join an indispensable party; and (3) sovereign immunity. [ECF No. 37]. In the alternative, Defendants request that the Court transfer the case, pursuant to 28 U.S.C. § 1404(a) or 28 U.S.C. § 1406(a), to the United States District Court for the Eastern District of Wisconsin. Id. As the Court finds that it has no personal jurisdiction over Defendants, it need not address Defendants' additional bases for dismissal or transfer.


         “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)). Plaintiffs must “properly plead[] facts pertinent to the conduct and activities of the defendant in the forum state[.]” Borislow v. Canaccord Genuity Group Inc., et al., No. 14-cv-80134, 2014 WL 12580259, at *5 (S.D. Fla. June 27, 2014) (internal quotation marks omitted) (quoting Elmex Corp. v. Atl. Fed. Savings & Loan Ass'n of Ft. Lauderdale, 325 So.2d 58, 61 (Fla. 4th DCA 1976)); see Mcgee v. Cook, No. 8:09-CV-2543-T-27TGW, 2011 WL 1365024, at *5 (M.D. Fla. Apr. 11, 2011) (holding personal jurisdiction insufficiently pled where complaint contained “insufficient specific allegations” of defendants' “business activities in Florida, their liens on Florida property, or their contracts to provide insurance in Florida”).

         “[T]he facts as alleged in the complaint are taken as true to the extent they are uncontroverted by defendants' affidavits.” Home Ins. Co. v. Thomas Indus., Inc., 896 F.2d 1352, 1355 (11th Cir. 1990) (citation omitted). But when a defendant submits evidence sufficiently challenging personal jurisdiction, “the burden traditionally shifts back to the plaintiff to produce evidence supporting jurisdiction.” United Techs. Corp., 556 F.3d at 1274 (quoting Meier ex rel. Meier v. Sun Intern. Hotels, Ltd., 288 F.3d 1264, 1269 (11th Cir. 2002)). Then, the plaintiff must “affirmatively support its jurisdictional allegations and may not merely rely upon the factual allegations set forth in its complaint.” Kernel Records Oy v. Mosley, No. 09-21597-CIV-TORRES, 2010 WL 2812565, at *3 (S.D. Fla. July 5, 2010) (citation omitted). It is only where parties' supplemental evidence--for example, affidavits and depositions--conflict that courts must construe all reasonable inferences in favor of the plaintiff. See Morris v. SSE, Inc., 843 F.2d 489, 492 (11th Cir. 1988).

         In analyzing a motion to dismiss for lack of personal jurisdiction, the Court first determines “whether the applicable statute potentially confers jurisdiction over the defendant, ” and then determines “whether the exercise of jurisdiction comports with due process.” Republic of Panama v. BCCI Holdings (Luxembourg) S.A., 119 F.3d 935, 942 (11th Cir. 1997) (citation omitted). When, as here, “jurisdiction is based on a federal question arising under a statute that is silent regarding service of process, Rule 4(e) of the Federal Rules of Civil Procedure directs [courts] to look to the state long-arm statute in order to determine the existence of personal jurisdiction.” Sculptchair, Inc. v. Century Arts, Ltd., 94 F.3d 623, 626-27 (11th Cir. 1996). As a result, the Court first looks to Florida's long-arm statute, which may be satisfied through either general or specific jurisdiction. See Dohler S.A. v. Guru, No. 16-23137-CIV, 2017 WL 4621098, at *3-4 (S.D. Fla. Oct. 16, 2017) (analyzing both).

         As Plaintiff argues the Court has specific jurisdiction over Defendants [ECF No. 45 at 22], the Court declines to address general jurisdiction. Specific jurisdiction “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 those contacts related to the plaintiff's cause of action.” Louis Vuitton, 736 F.3d at 1352. If Plaintiff establishes specific jurisdiction exists, the Court must then determine whether personal jurisdiction over Defendants violates the Due Process Clause of the Fourteenth Amendment to the United States Constitution. Id. at 1350. That is, whether the ...

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