United States District Court, S.D. Florida
P. GAYLES, UNITED STATES DISTRICT JUDGE.
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.
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,
www.preventioncampaigns.com. Id. ¶ 18.
2015, Defendants Affirm Agency, LLC, and Staples Marketing,
LLC, d/b/a Affirm (collectively the
“Defendants”) 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.
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]. 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].
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 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.
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].
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.
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.
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”).
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).
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).
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 ...