Sticky Holsters, Inc. v. Ace Case Manufacturing, LLC et al
Filing
26
OPINION AND ORDER denying 8 defendant Stanley Platts' Motion to Dismiss for Lack of Personal Jurisdiction; denying 14 plaintiff Sticky Holsters, Inc.'s Motion to Dismiss Ace Case Manufacturing, LLC's Counterclaim. Stanley Platts and Sticky Holsters, Inc. shall file responsive pleadings within ten days of this Opinion and Order. See Opinion and Order for details. Signed by Judge John E. Steele on 4/12/2016. (AMB)
UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
FORT MYERS DIVISION
STICKY HOLSTERS, INC.,
Plaintiff,
v.
Case No: 2:15-cv-648-FtM-29CM
ACE CASE MANUFACTURING, LLC
and STANLEY D. PLATTS,
Defendants.
OPINION AND ORDER
This matter comes before the Court on review of defendant
Stanley Platts' Motion to Dismiss for Lack of Personal Jurisdiction
(Doc. #8) filed on December 11, 2015.
Plaintiff filed an Amended
Response and Memorandum of Law in Opposition to Defendant Stanley
D. Platts' Motion to Dismiss for Lack of Personal Jurisdiction
(Doc.
#13)
plaintiff’s
on
January
Motion
to
15,
2016.
Dismiss
Also
Ace
before
the
Case
Manufacturing,
Counterclaim (Doc. #14) filed on January 26, 2016.
Court
is
LLC’s
Ace Case
Manufacturing, LLC’s filed a Memorandum in Opposition (Doc. #19)
on February 19, 2016.
I.
Background
Plaintiff,
Sticky
Holsters,
Inc.
(“Sticky
Holsters”
or
“plaintiff”) brought this action against Ace Case Manufacturing,
LLC
(“Ace”)
and
Stanley
D.
Platts
(“Platts”)
for
trademark
infringement and unfair competition arising out of the design of
a
holster
for
electronic
devices
and
firearms.
(Doc.
#1.)
Plaintiff is a Florida corporation with its principal place of
business in Collier County, Florida, that is in the business of
manufacturing and selling specialized holsters to carry personal
electronic devices and firearms. (Id. ¶ 2.)
Plaintiff alleges
that Ace is a Missouri corporation with its principal place of
business in Franklin County, Missouri and is in the business of
manufacturing and/or marketing and selling holsters for firearms.
(Id. ¶ 3.)
Platts is an individual that resides in St. Louis
County, Missouri and is the principal officer and/or owner of Ace.
(Id. ¶ 4.)
Plaintiff asserts jurisdiction pursuant to 15 U.S.C.
§ 1121, 28 U.S.C. § 1338, and 28 U.S.C. § 1367. (Id. ¶ 5.)
Plaintiff alleges that it is a well-recognized manufacturer
and seller of holsters for hand-held personal electronic devices
and firearms that are intended to be carried on or near a given
user’s person. (Id. ¶ 8.)
Since February 2011, Sticky Holsters
has continuously used the distinctive Sticky Holsters trademark to
market
its
holster
products
sold
throughout the world. (Id. ¶ 9.)
devoted
substantial
development,
time,
marketing,
and
in
the
United
States
and
Plaintiff alleges that it has
effort,
promotion
and
of
resources
the
Stick
to
the
Holsters
trademark and the holster products bearing and sold under the
Sticky Holsters trademark. (Id. ¶ 10.)
2
Plaintiff alleges that as
a result of said efforts, the public and markets for Sticky
Holsters’ products recognize and rely upon the Sticky Holsters
trademark as an indication of the origin, quality, and function of
Sticky Holsters’ products. (Id. ¶ 11.)
&
Trademark
Office
issued
U.S.
The United States Patent
Trademark
Registration
No.
4,427,517 to plaintiff for use of the Sticky Holsters trademark in
connection
with
“specialty
holsters
for
carrying
electronic
devices” and “holsters for carrying guns and gun accessories.”
(Id. ¶ 13; Doc. #1-1, p. 1.)
Ace is a manufacturer and/or marketer and reseller of holster
products for carrying firearms and related accessories. (Doc. #1,
¶ 14.)
Plaintiff alleges that as early as 2012, Ace unlawfully
and without authorization, represented that it manufactured and/or
was authorized to offer “Sticky Holsters” for sale. (Id. ¶ 15.)
In September of 2014, after becoming aware that Ace was unlawfully
using Sticky Holsters’ trademark, or confusingly similar marks,
without authorization, Sticky Holsters demanded that Ace cease and
desist
any
and
all
Holsters’ trademark.
unlawful
and
(Id. ¶ 16.)
unauthorized
use
of
Sticky
At least on September 17, 2014,
Platts, acting on behalf of Ace, sent correspondence to Sticky
Holsters’ counsel representing that it had discontinued any and
all use of the phrase “Sticky Holster” or “Sticky” in conjunction
with the marketing of its holster products. (Id. ¶ 17.)
Plaintiff
alleges that it relied upon Ace’s false representations that Ace
3
had discontinued the use of the phrase “Sticky Holsters” and the
term “Sticky” in conjunction with its holster sales and that the
terms had been removed from Ace’s website(s). (Id. ¶ 18.)
reliance
on
Platts’
discontinued
its
false
representations,
investigation
and
took
no
Sticky
immediate
In
Holsters
further
action. (Id.)
As of October 12, 2015, Ace was still using the term “Sticky”
and the phrase “Sticky Holsters” in its marketing and search engine
optimization. (Id. ¶ 19.)
Plaintiff alleges that Platts and Ace’s
continued use of Sticky Holsters’ trademark after they were advised
of the Sticky Holsters’ registered trademark was intentional and
willful. (Id.)
The confusion created by Platts and Ace continues
to damage Sticky Holsters. (Id. ¶ 21.)
On October 16, 2015, plaintiff filed suit against Ace and
Platts asserting the following claims:
(1) Fraud against Platts;
(2) Trademark Infringement under the Lanham Act against Ace; (3)
Unfair Competition under the Lanham Act against Ace; and (4) Common
Law Unfair Competition against Ace.
(Doc. #1.)
On December 10,
2015, defendant Ace filed an Answer and Affirmative Defenses to
plaintiff’s Complaint (Doc. #7) and on December 15, 2015, Ace filed
a Counterclaim against Sticky Holsters, Inc. seeking a declaratory
judgment of non-infringement and trademark invalidity. (Doc. #11.)
On December 11, 2015, defendant Platts filed a Motion to Dismiss.
(Doc. #8.)
On January 14, 2016, plaintiff filed a Response in
4
Opposition to Platts’ Motion to Dismiss (Doc. #12), and an amended
Response (Doc. #13) was filed on January 15, 2016.
On January 26,
2016, Sticky Holsters filed a Motion to Dismiss Ace’s Counterclaim
(Doc. #14), to which Ace filed a Response in Opposition (Doc. #19)
on February 19, 2016.
II.
Platts’ Motion to Dismiss Plaintiff’s Complaint for Lack of
Personal Jurisdiction
When ruling on a motion to dismiss under Federal Rule of Civil
Procedure 12(b)(2), the Court must conduct a “two-step inquiry
when determining whether the exercise of personal jurisdiction
over a nonresident defendant is proper.” Thomas v. Brown, 504 F.
App’x 845, 847 (11th Cir. 2013) (citing Horizon Aggressive Growth,
L.P. v. Rothstein-Kass, P.A., 421 F.3d 1162, 1166 (11th Cir.
2005)).
First, the court must determine whether the applicable
state statute governing personal jurisdiction is
satisfied. If the requirements of the long-arm statute
are satisfied, the court must inquire as to, (1) whether
defendant has established sufficient “minimum contacts”
with the state of Florida; and (2) whether the exercise
of this jurisdiction over defendant would offend
“traditional notions of fair play and substantial
justice.”
Future Tech. Today, Inc. v. OSF Health Care Sys., 218 F.3d 1247,
1249 (11th Cir. 2000) (per curium) (citations omitted).
The mere
fact that the plaintiff meets the requirements of the Florida longarm statute for obtaining jurisdiction over nonresidents does not
in and of itself satisfy the due process requirement of minimum
5
contacts.
Internet Sols. Corp. v. Marshall, 39 So. 3d 1201, 1207
(Fla. 2010)(citing Venetian Salami Co. v. Parthenais, 554 So. 2d
499, 502 (Fla. 1989)).
“The plaintiff bears the burden of making out a prima facie
case for personal jurisdiction by presenting sufficient evidence
to withstand a directed verdict motion.” 1 Thomas, 504 F. App’x at
847 (citing Stubbs v. Wyndham Nassau Resort & Crystal Palace
Casino, 447 F.3d 1357, 1360 (11th Cir. 2006)).
“First, the
plaintiff must allege sufficient facts in [its] complaint to
1
On motions for directed verdict and for judgment
notwithstanding the verdict the Court should consider
all of the evidence—not just that evidence which
supports the non-mover's case—but in the light and with
all reasonable inferences most favorable to the party
opposed to the motion. If the facts and inferences point
so strongly and overwhelmingly in favor of one party
that the Court believes that reasonable men could not
arrive at a contrary verdict, granting of the motions is
proper.
On the other hand, if there is substantial
evidence opposed to the motions, that is, evidence of
such quality and weight that reasonable and fair-minded
men in the exercise of impartial judgment might reach
different conclusions, the motions should be denied, and
the case submitted to the jury.
A mere scintilla of
evidence is insufficient to present a question for the
jury.
The motions for directed verdict and judgment
n.o.v. should not be decided by which side has the better
of the case, nor should they be granted only when there
is a complete absence of probative facts to support a
jury verdict. There must be a conflict in substantial
evidence to create a jury question.
Miles v. Tenn. River Pulp and Paper Co., 862 F.2d 1525, 1528 (11th
Cir. 1989)(citing Kaye v. Pawnee Constr. Co., 680 F.2d 1360, 1364
(11th Cir. 1982); Boeing Co. v. Shipman, 411 F.2d 365, 374–75 (5th
Cir. 1969)).
6
initially support long arm jurisdiction before the burden shifts
to
the
defendant
to
make
a
prima
facie
showing
of
the
inapplicability of the statute.” Future Tech. Today, Inc., 218
F.3d at 1249 (citation omitted).
burden
by
raising
“a
If the defendant sustains its
meritorious
challenge
to
personal
jurisdiction” “through affidavits, documents[,] or testimony,” the
burden shifts back to the plaintiff.
Sculptchair, Inc. v. Century
Arts, Ltd., 94 F.3d 623, 627 (11th Cir. 1996).
Plaintiff is then
required to “substantiate the jurisdictional allegations in the
complaint by affidavits or other competent proof, and not merely
reiterate the factual allegations in the complaint.”
Today, Inc., 218 F.3d at 1247 (citation omitted).
Future Tech.
If in conflict,
“the district court must construe all reasonable inferences in
favor of the plaintiff.”
Thomas, 504 F. App’x at 847 (quoting
Madara v. Hall, 916 F.2d 1510, 1514 (11th Cir. 1990)).
A.
Florida’s Long-Arm Statute
Platts
argues
that
plaintiff
cannot
establish
general
jurisdiction nor specific jurisdiction under Florida’s long-arm
statute. 2 (Doc. #8, pp. 10-11.)
Alternatively, Platts argues that
2
Although Platts argues that plaintiff cannot establish
general jurisdiction under Florida’s long-arm statute (Doc. #8,
pp. 10-11), plaintiff states that it is only asserting specific
jurisdiction under Fla. Stat. § 48.193(1)(a)2 — the tortious
activity provision.
(Doc. #13, p. 8.)
Accordingly, the Court
will only address this provision.
7
even if plaintiff can sufficiently establish general or specific
jurisdiction
under
Florida’s
long-arm
statute,
personal
jurisdiction over Platts is precluded by the Corporate Shield
Doctrine. (Id. at 11-13.)
Plaintiff argues to the contrary. (Doc.
#13.)
The relevant portion of Florida’s Long-Arm Statute provides
the following:
(1)(a) 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 following acts:
. . .
2. Committing a tortious act within this state.
Fla.
Stat.
§
48.193(1)(a)2.
Under
Florida
law,
it
is
well
established that physical presence in Florida is not required to
commit a tortious act in Florida. Internet Sols. Corp., 39 So. 3d
at
1207.
Further,
communications
into
“telephonic,
Florida
may
electronic,
form
the
basis
or
written
for
personal
jurisdiction under section [48.193(1)(a)] if the alleged cause of
action arises from the communications.”
Wendt v. Horowitz, 822
So. 2d 1252, 1260 (Fla. 2002). See also RMS Titanic, Inc. v.
Kingsmen Creatives, Ltd., 579 F. App’x 779, 786 (11th Cir. 2014).
Where
the
tort
communications
is
into
based
upon
Florida,
a
defendant’s
however,
8
“there
out
must
of
be
state
some
connexity that exists between the out-of-state communications and
the cause of action such that the cause of action would depend
upon proof of either the existence or the content of any of the
communications . . . into Florida.” Horizon Aggressive Growth,
L.P., 421 F.3d at 1168 (citation omitted). See also Williams Elec.
Co. v. Honeywell, Inc., 854 F.2d 389, 394 (11th Cir. 1988) (“For
personal jurisdiction to attach under the ‘tortious activity’
provision of the Florida long-arm statute, the plaintiff must
demonstrate
that
the
non-resident
defendant
‘committed
a
substantial aspect of the alleged tort in Florida.’”) (quoting
Watts v. Haun, 393 So. 2d 54, 56 (Fla. 2d DCA 1981)).
Count I of plaintiff’s Complaint, alleging fraud, is the only
count asserted against Platts.
(Doc. #1, ¶¶ 23-32.)
Plaintiff
indicates that it is asserting personal jurisdiction based on
defendant’s commission of a tortious act within the state of
Florida. (Id. ¶ 7.)
Plaintiff also alleges that “[a]t least on
September 17, 2014,” Platts falsely represented to plaintiff that
Ace was not using, and had no intention of using, plaintiff’s
trademark, the term “sticky,” or any confusingly similar phrase in
connection with the sale of holsters. (Id. ¶¶ 17, 25-26; see Doc.
#1-4.)
This is sufficient to allege personal jurisdiction under
Fla. Stat. § 48.193(1)(a)2.
In
his
motion
and
accompanying
sworn
Affidavit,
Platts
asserts that he did not author, review, or sign the September 17,
9
2014 correspondence that is relied upon in count I. (Doc. #8, p.
11; Doc. #8-1, ¶ 10.)
Accordingly, Platts argues there is no basis
to assert personal jurisdiction over him as he did not commit a
tort within Florida.
In response, plaintiff has provided copies
of emails between “Stan Platts” and “Kevin Dees” and between “Mike
Sticky” and “Stan Platts” and a sworn Affidavit of Michael J.
Christoff, the President and CEO of plaintiff. 3
13-3.)
Plaintiff
points
out
that
the
(Docs. ##13-2,
September
17,
2014
correspondence was on Platts’ letterhead, contained his name,
typed, at the bottom, and was delivered as an attachment from
Platts’ email address into Florida.
2.)
(Doc. #13, pp. 2-3; Doc. #13-
Plaintiff also points out that the September 17, 2014 letter
is not the only correspondence relied upon for their fraud claim
against Platts. (Doc. #13, p. 3.) Platts also sent correspondence
into Florida containing false representations on September 18,
2013 and October 18, 2013 stating that Ace had changed all of the
wording on its website and invoices to remove “sticky” words.
(Doc. #13-3, p. 4.)
Platts has not provided explanations as to
why the September 17, 2014 correspondence was delivered via his
email address or why the other correspondence that he allegedly
sent into Florida does not support personal jurisdiction.
3
Kevin Dees is counsel for plaintiff.
10
The
Court
finds
that
plaintiff
has
met
its
burden
and
provided
sufficient evidence to support a finding of personal jurisdiction
under Florida’s long-arm statute sufficient to withstand a motion
for directed verdict.
Platts
next
argues
that
the
Corporate
Shield
Doctrine
precludes the exercise of personal jurisdiction over him for acts
performed in his capacity as a corporate employee.
11-13.)
(Doc. #8, pp.
Plaintiff responds that the Corporate Shield Doctrine
does not protect Platts because plaintiff has asserted a claim for
fraud against him individually.
(Doc. #13, p. 10.)
Under the Corporate Shield Doctrine, “acts of a corporate
employee performed in his corporate capacity cannot form the basis
for personal jurisdiction over the corporate employee in his
individual capacity.” Doe v. Thompson, 620 So. 2d 1004, 1006 (Fla.
1993).
“A corporate officer committing fraud or other intentional
misconduct can be subject to personal jurisdiction, however.”
at 1006 n.1.
Platts.
the
Id.
Here, plaintiff has brought a claim for fraud against
Florida law excludes claims for fraud from the purview of
Corporate
Shield
Doctrine.
Accordingly,
plaintiff
has
satisfied Florida’s long-arm statute.
B.
Constitutional Due Process
Once Florida’s long-arm statute has been satisfied, the Court
must then determine if exercising personal jurisdiction over the
defendant would comport with the due process requirements of the
11
Fourteenth Amendment.
Meier ex rel. Meier v. Sun Int’l Hotels,
Ltd., 288 F.3d 1264, 1274 (11th Cir. 2002). See Internet Sols.
Corp., 39 So. 3d at 1207 (“The mere proof of any one of the several
circumstances
obtaining
enumerated
jurisdiction
in
of
section
48.193
nonresidents
does
as
the
not
basis
for
automatically
satisfy the due process requirement of minimum contacts.”) (citing
Venetian Salami Co. v. Parthenais, 554 So. 2d 499, 502 (Fla.
1989)).
“Due process requires that a non-resident defendant have
certain minimum contacts with the forum so that the exercise of
jurisdiction does not offend traditional notions of fair play and
substantial justice.”
Meier, 288 F.3d at 1274 (citing Int’l Shoe
v. Washington, 326 U.S. 310, 316 (1945)).
There are two types of personal jurisdiction categories:
general
jurisdiction
and
specific
jurisdiction.
General
jurisdiction may be exercised over a defendant where its contacts
with the forum state are so continuous and systematic as to justify
suit against it arising from dealings entirely distinct from those
contacts.
Damier
AG
v.
Bauman,
134
S.
Ct.
746,
754
(2014);
Helicopteros Nacionales de Columbia, S.A. v. Hall, 466 U.S. 408,
414 n.9 (1984).
Specific jurisdiction may be exercised where the
suit arises out of the defendant’s contacts with the forum state.
Burger King Corp. v. Rudzewicz, 471 U.S. 462, 472-73 (1985). Here,
plaintiff
is
attempting
to
assert
12
specific
jurisdiction
over
Platts. In specific jurisdiction cases, the Court applies a threepart due process test, which examines:
(1) whether the plaintiff's claims “arise out of or
relate to” at least one of the defendant's contacts with
the forum; (2) whether the nonresident defendant
“purposefully availed” himself of the privilege of
conducting activities within the forum state, thus
invoking the benefit of the forum state's laws; and (3)
whether the exercise of personal jurisdiction comports
with “traditional notions of fair play and substantial
justice.”
Louis Vuitton Malletier, S.A. v. Mosseri, 736 F.3d 1339, 1355 (11th
Cir. 2013) (citations omitted).
The Court will address each prong
in turn.
1)
“[A]
“Arise Out of” or Relatedness
fundamental
element
of
the
specific
jurisdiction
calculus is that plaintiff’s claim must arise out of or relate to
at least one of the defendant’s contacts with the forum.” Id.
Here, plaintiff’s fraud claim arises out of Platts’ allegedly false
representations contained in correspondence sent to plaintiff in
Florida.
This is sufficient to establish that plaintiff’s claims
arise out of Platts’ contacts with Florida.
2)
“The
Purposeful Availment
‘purposeful
availment’
requirement
ensures
that
a
defendant will not be haled into a jurisdiction solely as a result
of ‘random,’ ‘fortuitous,’ or ‘attenuated’ contacts, or of the
‘unilateral activity of another party or third person.’” Burger
King Corp., 471 U.S. at 475 (citations omitted).
13
The Eleventh
Circuit has identified two different tests for determining whether
the “purposeful availment” prong is satisfied in intentional tort
cases.
needs
Mosseri, 736 F.3d at 1357.
to
be
satisfied
jurisdiction. Id.
to
Only one of which, however,
justify
the
exercise
of
personal
The first test is the “effects test,” set out
by the Supreme Court in Calder v. Jones, 465 U.S. 783 (1984).
The
other test is pursuant to the “traditional minimum contacts test.”
Mosseri, 736 F.3d at 1356.
Under the Calder effects test, “a nonresident defendant’s
single tortious act can establish purposeful availment, without
regard to whether the defendant had any other contacts with the
forum state.”
Mosseri, 736 F.3d at 1356.
The effects test
requires that the tort: (1) be intentional, (2) be aimed at the
forum
state,
anticipated
and
would
(3)
be
cause
caused
harm
in
that
the
defendant
forum
state.
should
Id.
have
(citing
Licciardello v. Lovelady, 544 F.3d 1280, 1285-86, 1287-88 (11th
Cir. 2008)).
As recognized by the Eleventh Circuit, a number of
Florida courts have held that that “where a defendant’s tortuous
conduct is intentionally and purposefully directed at a resident
of the forum, the minimum contacts requirement is met, and the
defendant should anticipate being haled into court in that forum.”
Licciardello, 544 F.3d at 1287 (quoting New Lenox Indus. v. Fenton,
510 F. Supp. 2d 893, 904 (M.D. Fla. 2007)).
14
Plaintiff
alleges
that
Platts
knowingly
made
false
representations to plaintiff intending that plaintiff rely on said
representations. (Doc. #1, ¶¶ 25-30.)
Plaintiff further alleges
that plaintiff relied upon the representations and was thereby
damaged. (Id. ¶¶ 31-32.)
Plaintiff is a Florida corporation with
its principal place of business in Florida. (Id. ¶ 2.)
The Court
finds that these allegations are sufficient to satisfy the Calder
effects test. Because the Court finds that plaintiff has satisfied
one of the purposeful availment tests, it need not conduct an
analysis under the other. Mosseri, 736 F.3d at 1357.
3)
Fair Play and Substantial Justice
In addition to finding minimum contacts with the forum state,
the Court must also determine whether the exercise of personal
jurisdiction
over
the
nonresident
defendant
comports
with
traditional notions of fair play and substantial justice under the
principles established in International Shoe and its progeny.
Meier, 288 F.3d at 1276 (citation omitted). In determining whether
the
exercise
of
jurisdiction
would
comport
with
traditional
notions of fair play and substantial justice, the Court looks at
the following factors:
“the burden on the defendant, the forum’s
interest in adjudicating the dispute, the plaintiff’s interest in
obtaining
convenient
and
effective
relief
and
the
judicial
system’s interest in resolving the dispute.” Licciardello, 544
15
F.3d at 1288 (citing World-Wide Volkswagen Corp. v. Woodson, 444
U.S. 286, 292 (1980)).
Platts argues that due to his advanced age of seventy-six,
litigating this dispute in Florida would be burdensome. (Doc. #8,
p. 8.)
The Court acknowledges that due to Platts’ age, litigating
in Florida may be more burdensome than it would be on an individual
of younger years.
that
the
other
Despite this minimal burden, the Court finds
factors
jurisdiction over Platts.
support
the
exercise
of
personal
First, Florida has a strong interest in
hearing the case and protecting Florida residents and corporations
from intentional torts committed by out-of-state actors.
Burger
King Corp., 471 U.S. at 473 (“A State generally has a ‘manifest
interest’ in providing its residents with a convenient forum for
redressing
injuries
inflicted
by
out-of-state
actors.”).
Additionally, plaintiff, a Florida corporation located in Florida,
has an strong interest in litigating in the case in its choice of
forum and where it is located.
Accordingly, Platts’ Motion to Dismiss for Lack of Personal
Jurisdiction (Doc. # 8) is denied.
III. Sticky Holsters, Inc.’s Motion
Manufacturing, LLC’s Counterclaim
to
Dismiss
Ace
Case
“A motion to dismiss a counterclaim pursuant to Federal Rule
of Civil Procedure 12(b)(6) is evaluated in the same manner as a
motion to dismiss a complaint.” Geter v. Galardi S. Enters., Inc.,
16
43 F. Supp. 3d 1322, 1325 (S.D. Fla. 2014) (citation omitted).
Under Federal Rule of Civil Procedure 8(a)(2), a Complaint 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).
This
obligation “requires more than labels and conclusions, and a
formulaic recitation of the elements of a cause of action will not
do.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007)(citation
omitted).
To survive dismissal, the factual allegations must be
“plausible” and “must be enough to raise a right to relief above
the speculative level.”
Id. at 555.
See also Edwards v. Prime
Inc., 602 F.3d 1276, 1291 (11th Cir. 2010).
than
an
unadorned,
accusation.”
Ashcroft
This requires “more
the-defendant-unlawfully-harmed-me
v.
Iqbal,
556
U.S.
662,
678
(2009)
(citations omitted).
In deciding a Rule 12(b)(6) motion to dismiss, the Court must
accept all factual allegations in a complaint as true and take
them in the light most favorable to plaintiff, Erickson v. Pardus,
551 U.S. 89 (2007), but “[l]egal conclusions without adequate
factual support are entitled to no assumption of truth,”
v.
Berzain,
omitted).
654
F.3d
1148,
1153
(11th
Cir.
2011)
Mamani
(citations
“Threadbare recitals of the elements of a cause of
action, supported by mere conclusory statements, do not suffice.”
Iqbal, 556 U.S. at 678.
consistent
with
a
“Factual allegations that are merely
defendant’s
liability
17
fall
short
of
being
facially plausible.”
Chaparro v. Carnival Corp., 693 F.3d 1333,
1337 (11th Cir. 2012) (citations omitted). Thus, the Court engages
in a two-step approach: “When there are well-pleaded factual
allegations,
a
court
should
assume
their
veracity
and
then
determine whether they plausibly give rise to an entitlement to
relief.”
Iqbal, 556 U.S. at 679.
On December 15, 2015, Ace filed a two-count Counterclaim
against Sticky Holsters.
(Doc. #11.)
Count I seeks a declaratory
judgment for non-infringement and count II seeks a declaratory
judgment for trademark invalidity.
(Id.)
Sticky Holsters moves
to dismiss Ace’s counterclaim, arguing that Ace’s claims for
declaratory
judgment
are
redundant
and
duplicative
of
its
affirmative defenses and that Ace has failed to state a claim for
which relief can be granted.
A.
(Doc. #14.)
Ace’s Counterclaims Are Not Redundant and Duplicative of
Its Affirmative Defenses
Plaintiff first moves to dismiss Ace’s Counterclaim on the
basis that the Counterclaim is duplicative and redundant of Ace’s
affirmative defenses.
(Id. at 3-6.)
Specifically, plaintiff
argues that Ace’s affirmative defenses already seek to establish
that Ace has not infringed upon Sticky Holsters’ trademark and
that Sticky Holsters’ trademark is not protectable.
(Id. at 6.)
Ace responds that its Counterclaim establishes the predicate for
18
determining the invalidity and seeks relief different than that
requested in its Affirmative Defense.
(Doc. #19, pp. 2-4.)
A court has broad discretion over whether or not to exercise
jurisdiction over claims for declaratory judgment.
MedImmune,
Inc. v. Genentech, Inc., 549 U.S. 118, 136 (2007); Knights Armament
Co. v. Optical Sys. Tech., Inc., 568 F. Supp. 2d 1369, 1374 (M.D.
Fla. 2008).
“If a district court determines that a complaint
requesting a declaratory judgment will not serve a useful purpose,
the court cannot be required to proceed on the merits before
dismissing the complaint.”
FairWarning IP, LLC v. CynergisTek,
Inc., No. 8:15-cv-100-T-23AEP, 2015 WL 5430355, at *2 (M.D. Fla.
Sept. 14, 2015) (quoting Medmarc Cas. Ins. V. Pineiro & Byrd PLLC,
783 F. Supp. 2d 1214, 1216 (S.D. Fla. 2011)), appeal docketed, No.
16-1096 (Fed. Cir. Oct. 23, 2015); Knights Armament Co., 568 F.
Supp. 2d at 1374-75 (“The Court’s discretion over whether to
sustain a claim for declaratory judgment extends to cases where a
direct action involving the same parties and the same issues has
already been filed.”).
In determining whether a declaratory
judgment action serves a useful purpose, the court should determine
“whether
resolution
of
plaintiff's
claim,
along
with
the
affirmative defenses asserted by defendants, would resolve all
questions raised by the counterclaim.”
at 1217 (citation omitted).
19
Medmarc, 783 F. Supp. 2d
Within its Counterclaim, Ace requests the Court cancel Sticky
Holsters’ trademark.
This is affirmative relief requested by Ace
that cannot be awarded by way of its affirmative defenses. Because
Ace is seeking relief in its Counterclaim that is not otherwise
available to it, the Court finds that Ace’s Counterclaim serves a
useful purpose.
Accordingly, the Court denies plaintiff’s Motion
to Dismiss Ace’s Counterclaim.
B.
Ace’s
Standing
Registration
Plaintiff
next
alleges
for
that
Cancellation
Ace
lacks
cancellation of Sticky Holsters’ trademark.
of
standing
Trademark
to
seek
(Doc. #14.)
In order to seek cancellation of trademark registration, a
party must allege “(1) [t]hat it has standing to petition for
cancellation because it is likely to be damaged, and (2) that there
are valid grounds for discontinuing the registration.” Coach House
Rest., Inc. v. Coach & Six Rests., Inc., 934 F.2d 1551, 1558 (11th
Cir. 1991).
It is well established that “a petitioner seeking
cancellation of a mark has standing if it has prior rights in a
similar mark.”
Id. at 1557.
“In determining standing, the issue
is not necessarily whether the party seeking cancellation is
entitled to registration or owns the mark, but rather whether the
presumptions flowing from the registration are damaging to the
party’s legal and continuous use of the term.”
Z Prods., Inc. v.
SNR Prods., Inc., No. 8:10-CV-699-T-23MAP, 2011 WL 3754963, at *7
20
(M.D. Fla. Apr. 18, 2011) (citing Coach House Rest., Inc., 934
F.2d at 1557)).
Here, the Court finds that Ace has sufficiently alleged
standing.
Ace
has
alleged
that
it
is
in
competition
with
plaintiff, that Ace’s use of the adjective “sticky” to describe
one type of holster it sells predates, or was concurrent with, any
USPTO registration of the mark “sticky holsters,” in applying for
its trademark with the USPTO, plaintiff failed to disclose certain
important
information
regarding
the
mark
being
pursued,
and
plaintiff has since filed suit against Ace alleging trademark
infringement and unfair competition under the Lanham Act and state
common law.
(Doc. #11, ¶¶ 9, 10, 26-32.)
Additionally, contrary,
to plaintiff’s assertions, “there is no requirement that damage be
proved
in
order
to
establish
cancellation proceeding.”
standing
or
to
prevail
in
a
Int’l Order of Job’s Daughters v.
Lindeburg & Co., 727 F.2d 1087, 1092 (Fed. Cir. 1984).
Accordingly,
the
Court
finds
that
Ace
has
sufficiently
alleged standing for its cancellation of trademark claim.
Accordingly, it is now
ORDERED:
1.
Defendant Stanley Platts’ Motion to Dismiss for Lack of
Personal Jurisdiction (Doc. #8) is DENIED.
Defendant Stanley
Platts shall file a responsive pleading within ten (10) days of
this Opinion and Order.
21
2.
Plaintiff Sticky Holsters, Inc.’s Motion to Dismiss Ace
Case Manufacturing, LLC’s Counterclaim (Doc. # 14) is DENIED.
Plaintiff shall file a responsive pleading to Ace’s Counterclaim
within ten (10) days of this Opinion and Order.
DONE AND ORDERED at Fort Myers, Florida, this __12th__ day of
April, 2016.
Copies:
Counsel of record
22
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