Scar Heal, Inc. v. JJR Media, Inc et al

Filing 31

ORDER denying 12 motion to dismiss. See Order for details. Signed by Judge Virginia M. Hernandez Covington on 7/8/2014. (KAK)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
TAMPA DIVISION
SCAR HEAL, INC.,
Plaintiff,
v.

Case No. 8:14-cv-733-T-33AEP

JJR MEDIA, INC., and
JACOB KAUFFMAN, individually,
Defendants.
____________________________/
ORDER
This cause is before the Court pursuant to Defendants JJR
Media, Inc. and Jacob Kauffman’s Motion to Dismiss or, in the
Alternative, Motion to Transfer Venue, and Motion to Dismiss an
Improper Party, filed on May 27, 2014. (Doc. # 12). Plaintiff
Scar Heal, Inc. filed a response in opposition to the Motion on
June 10, 2014. (Doc. # 16). For the reasons stated below, and
for the reasons stated at the hearing on July 3, 2014, the Court
denies Defendants’ Motion in its entirety.
I.

Background
Scar Heal brought this action against JJR Media, Inc. and

Jacob

Kauffman

infringement

on

(Count

March
I)

and

25,
unfair

2014,

alleging

competition

trademark

(Count

II)

in

violation of the Lanham Act, 15 U.S.C. §§ 1051-1141. (Doc. # 1
at ¶¶ 5, 30, 41).
1

Scar

Heal

owns

the

federally

registered

trademark

“Rejuvaskin®” for an anti-wrinkle cream and alleges that the
mark “has been granted incontestable status by the U.S. Patent
and Trademark Office.” (Id. at ¶¶ 8, 10). According to Scar
Heal, in 2013, “Kauffman, through JJR Media, began advertising,
distributing, marketing, and selling anti-wrinkle cream on the
internet under the name ‘Rejuvalskin,’” which Scar Heal contends
is “visually and audibly confusingly similar” to Scar Heal’s
mark given that it differs by only a single letter. (Id. at ¶¶
17-18).

Scar

Heal

claims

that

Kauffman

and

JJR

use

their

infringing mark in interstate commerce through a number of web
sites, and that they have done so “with the intent of causing
confusion,

mistake,

or

deception,”

to

“gain

an

unfair

and

unjustified competitive advantage” and “reap the benefit of Scar
Heal’s goodwill” in the anti-wrinkle cream industry. (Id. at ¶¶
19, 29, 32, 39, 40, 44).
Scar Heal alleges that, although it demanded in writing
that

Kauffman

and

JJR

stop

using

their

infringing

mark,

Defendants “have continued their wrongful acts.” (Id. at ¶ 20).
As a result, Scar Heal claims that numerous people have confused
JJR’s

products

with

Scar

Heal’s,

and

thus

have

mistakenly

believed Scar Heal was responsible for the Defendants’ products.
(Id. at ¶¶ 21-22).

Scar Heal also contends that Kauffman has

“controlled and directed the activities of JJR Media.” (Id. at ¶

2

16).

Scar

Heal

therefore

asserts

that

Defendants’

“prolific

infringement of Scar Heal’s Rejuvaskin® Mark” has caused injury
such

as

“diversion

customers,

and

the

of

Scar

diminution

Heal’s
of

customers

Scar

Heal’s

and

potential

goodwill,”

for

which Scar Heal claims it is entitled to an injunction against
Defendants’ use of their infringing mark as well as monetary
damages. (Id. at ¶¶ 37, 49).
JJR and Kauffman filed the present Motion to Dismiss on May
27, 2014 (Doc. # 12), to which Scar Heal filed a response in
opposition on June 10, 2014. (Doc. # 16). The Court granted
Defendants’ Motion for Leave to File Reply on June 17, 2014,
(Doc. # 22), but JJR and Kauffman failed to file a reply brief
by the June 20, 2014, deadline, or at any time since. In their
Motion, Defendants contend that this Court is an improper venue
for the case under 28 U.S.C. § 1391, and thus the action should
be dismissed or transferred to the Southern District of Florida
pursuant to 28 U.S.C. § 1406. (Doc. # 12 at 3, 7). Defendants
also assert that Kauffman is an improper party to the suit, and
thus he should be dismissed from the case. (Id. at 7-9).
II.

Venue
A. Legal Standard

Federal Rule of Civil Procedure 12(b)(3) allows a defendant
to move to dismiss an action for improper venue. The cure of
defects

in

venue

is

governed

by

3

28

U.S.C.

§

1406,

which

provides, “The district court of a district in which is filed a
case

lying

venue

in

the

wrong

division

or

district

shall

dismiss, or if it be in the interest of justice, transfer such
case to any district or division in which it could have been
brought.”

28

U.S.C.

§

1406(a).

“Trial

courts

generally

have

broad discretion in evaluating venue arguments and determining
whether to transfer or dismiss the case.” LaFerney v. Citizens
Bank of E. Tenn., No. CV 210-169, 2011 WL 4625956, at *1 (S.D.
Ga. Sept. 30, 2011).
Venue is proper if the district in which the suit was filed
is:
(1)

(2)

(3)

a judicial district in which any defendant
resides, if all defendants are residents of the
State in which the district is located;
a judicial district in which a substantial part
of the events or omissions giving rise to the
claim occurred, or a substantial part of property
that is the subject of the action is situated; or
if there is no district in which an action may
otherwise be brought as provided in this section,
any judicial district in which any defendant is
subject to the court’s personal jurisdiction with
respect to such action.

28 U.S.C. § 1391(b).
A natural person resides “in the judicial district in which
that person is domiciled.” 28 U.S.C. § 1391(c)(1). A corporate
defendant

resides

“in

any

judicial

district

in

which

such

defendant is subject to the court’s personal jurisdiction with

4

respect

to

the

civil

action

in

question.”

28

U.S.C.

§

1391(c)(2).
B. Analysis
There is a dispute between the parties as to where JJR
resides: Defendants contend that both Kauffman and JJR reside in
the Southern District of Florida, specifically in Cooper City,
Florida, while Scar Heal alleges that JJR resides in the Middle
District

of

Defendants

Florida
submit

for

that

the

purposes

venue

is

of

28

improper

U.S.C.
because

§

1391.

neither

Defendant resides in the Middle District of Florida and because
Scar Heal failed to show that “a substantial part of the events
or omissions” took place in this District. (Doc. # 12 at 4-5).
Moreover, Defendants allege that because Scar Heal failed
to show that “a substantial part of the events or omissions
giving rise to the claim occurred in the Middle District of
Florida,” and given that 28 U.S.C. § 1391 is meant to protect
defendants from being “hailed into a remote district having no
real relationship to the dispute,” Scar Heal “failed to make a
prima facie showing that venue is proper in the Middle District
of Florida” for the purposes of 28 U.S.C. § 1391(b)(2). (Id. at
4-5) (citing Jenkins Brick Co. v. Bremer, 321 F.3d 1366, 1371
(11th Cir. 2003) (finding at summary judgment phase of choice of
law dispute that “[o]nly the events that directly give rise to a
claim are relevant. And of the places where the events have

5

taken place, only those locations hosting a ‘substantial part’
of the events are to be considered.”); Hemispherx Biopharma,
Inc. v. MidSouth Capital, Inc., 669 F. Supp. 2d 1353, 1357 (S.D.
Fla. 2009) (internal quotations omitted) (“A central purpose of
the federal venue statute is to ensure that a defendant is not
hailed into a remote district having no real relationship to the
dispute.”)).
According

to

Scar

Heal,

this

Court

has

personal

jurisdiction over JJR with respect to this case under 28 U.S.C.
§ 1391(c)(2), and thus venue is proper for the purposes of 28
U.S.C. § 1391(b)(1). (Doc. # 16 at 2). Scar Heal supports its
contention by conducting a due process analysis to determine
whether it has established constitutional minimum contacts, and
alternatively argues that this Court has personal jurisdiction
over both Defendants because neither JJR nor Kauffman contested
this Court’s personal jurisdiction over them by filing a Fed. R.
Civ.

P.

12(b)(2)

motion.

(Id.

at

4-7)

(citing

Kaplan

v.

DaimlerChrysler, A.G., 99 F. Supp. 2d 1348, 1352 (M.D. Fla.
2000)

(explaining

the

three-step

process

“for

determining

whether constitutional minimum contacts have been established by
the plaintiff” pursuant to Supreme Court precedent); Fed. R.
Civ. P. 12(h)(1)).1

R. Civ. P. 12(h)(1): When Some Are Waived. A party waives
any defense listed in 12(b)(2)-(5) by:
1 Fed.

6

This Court finds that venue is proper under 28 U.S.C. §
1391(b)-(c).
personal

Defendants

jurisdiction

failed

because

to

object

Fed.

R.

Civ.

to

this

P.

Court’s

12(b)(2)

was

neither mentioned nor discussed in their Motion to Dismiss, and,
as

a

result,

the

argument

is

waived.

See

Fed.

R.

Civ.

P.

12(h)(1). In Pardazi v. Cullman Medical Center, 896 F.2d 1313,
1317 (11th Cir. 1990), the Eleventh Circuit stated that “a party
is deemed to have waived any objection to personal jurisdiction
. . . if the party makes a pre-answer motion under Rule 12 and
fails to include such objections in that motion.” The Pardazi
court further found that if a defendant waives its objection to
personal

jurisdiction,

“the

court

may

not,

either

upon

the

defendant's motion or its own initiative, dismiss the suit for
lack

of personal

jurisdiction.”

Id.;

see

also

Chapin

Revenue

Cycle Mgmt., LLC v. JDS eHealth Sys., Inc., No. 8:11-cv-858-T33AEP, 2012 WL 469824, at *3 (M.D. Fla. Feb. 13, 2012) (finding
defendant with principal place of business in Illinois to reside
in the Middle District of Florida for the purposes of 28 U.S.C.
§

1391(c)(2)

withdrawing

because

its

it

objection

conceded
to

personal

personal

jurisdiction

jurisdiction);

Fed.

by
R.

(A) omitting it from a motion in the circumstances
described in 12(g)(2); or
(B) failing to either:
(i) make it by motion under this rule; or
(ii) include it in a responsive pleading or in an
argument allowed by Rule 15(a)(1) as a matter of
course.
7

Civ.

P.

12(h)(1).

Consequently,

JJR

resides

in

the

Middle

District pursuant to 28 U.S.C. § 1391(c)(2), and thus venue is
proper under 28 U.S.C. § 1391(b)(1).
III. “Improper Party”
A. Rule 12(b)(6) Standard
The

Court

will

analyze

Defendants’

motion

regarding

the

sufficiency of Scar Heal’s allegations against Kauffman under
the framework of a Fed. R. Civ. P. 12(b)(6) motion to dismiss
for failure to state a claim. On such a motion, this Court
accepts

as

construes

true
them

all

the

in

allegations

the

light

in

most

the

complaint

favorable

to

and
the

plaintiff. Jackson v. Bellsouth Telecomms., 372 F.3d 1250, 1262
(11th Cir. 2004).
all

reasonable

complaint.

Further, this Court favors the plaintiff with
inferences

from

the

allegations

in

the

Stephens v. Dep’t of Health & Human Servs., 901 F.2d

1571, 1573 (11th Cir. 1990) (“On a motion to dismiss, the facts
stated

in

[the]

complaint

and

all

reasonable

inferences

therefrom are taken as true.”). However:
While a complaint attacked by a Rule 12(b)(6) motion
to dismiss does not need detailed factual allegations,
a plaintiff’s obligation to provide the grounds of his
entitlement to relief requires more than labels and
conclusions, and a formulaic recitation of the
elements of a cause of action will not do. Factual
allegations must be enough to raise a right to relief
above the speculative level.

8

Bell Atl. Corp v. Twombly, 550 U.S. 544, 555 (2007)(internal
citations omitted).

Courts are not “bound to accept as true a

legal conclusion couched as a factual allegation.” Papasan v.
Allain, 478 U.S. 265, 286 (1986). Furthermore, “[t]he scope of
review must be limited to the four corners of the complaint.”
St. George v. Pinellas Cnty., 285 F.3d 1334, 1337 (11th Cir.
2002).
B. Individual Liability for Trademark Infringement
Infringement
individual

or

by

group

a

corporation

of

individuals.

must
See

be

caused

Bentley

by

Motors

an
Ltd.

Corp. v. McEntegart, 976 F. Supp. 2d 1297, 1315 (M.D. Fla. 2013)
(citing Chanel, Inc. v. Italian Activewear of Fla., Inc., 931
F.2d 1472, 1477 (11th Cir. 1991) (finding sufficient evidence at
the summary judgment phase to support the allegation that the
“president

and

CEO”

of

an

infringing

company

“caused

the

infringement as a whole to occur”)). Therefore, under the Lanham
Act,

“[i]f

an

individual

actively

and

knowingly

caused

the

[trademark] infringement, he is personally liable,” and a claim
may be stated against him. See id.
C. Analysis
Defendants contend that Kauffman should be dismissed from
this case because he is protected from personal liability given
that JJR Media is a corporation that can be sued and defend in
its own name. (Doc. # 12 at 7-9). JJR and Kauffman assert that

9

Scar Heal has failed to factually support that Kauffman meets
any

of

the

personally

exceptions
liable

for

for

which

his

or

an

individual

her

can

relationship

be

held

with

a

corporation, and thus the allegations that Kauffman “played a
direct and dominant role with regard to the alleged acts” are
speculative and conclusory. (Id. at 8-9) (emphasis in original)
(citing Twombly, 550 U.S. at 555).
Conversely, Scar Heal asserts that Kauffman can be held
individually

liable

because

“[n]atural

persons,

as

well

as

corporations, may be liable for trademark infringement under the
Lanham Act . . . . If an individual actively and knowingly
caused the infringement, he is personally liable.” (Id.) (citing
Chanel,

931

allegations

F.2d
that

at

1477).

Kauffman

Scar

formed

JJR

Heal
and

submits
has

that

controlled

its
and

directed JJR’s activities since its creation are sufficient to
state a claim against him personally for trademark infringement
under the Lanham Act. (Id.).
This
against

Court

finds

Kauffman

are

that

Scar

sufficient

Heal’s
to

factual

survive

the

allegations
Motion

to

Dismiss. Although Federal Rule of Civil Procedure 8 imposes a
liberal pleading standard, legal conclusions must be supported
by factual allegations. See Iqbal, 556 U.S. at 664. Nonetheless,
the allegations within the four corners of Scar Heal’s complaint
that label Kauffman as personally liable for JJR’s infringing

10

activity are supported by the factual contention that Kauffman
has “controlled and directed the activities of JJR Media” since
the company’s inception. (See Doc. # 1 at ¶ 16).
Furthermore,

Kauffman

is

not

shielded

from

personal

liability given that natural persons who cause infringement “may
be liable for trademark infringement under the Lanham Act.” See
Bentley Motors, 976 F. Supp. 2d at 1315 (citing Chanel, 931 F.2d
at 1477); Babbit Elecs., Inc. v. Dynascan Corp., 38 F.3d 1161,
1184

(11th

controls,

Cir.

1994)

ratifies,

(“[A]

corporate

participates

in,

officer

who

is

moving

or

the

directs,
force

behind the infringing activity, is personally liable for such
infringement

without

regard

to

piercing

of

the

corporate

veil.”).
IV.

Conclusion

Defendants’ Motion to Dismiss is denied. Venue is proper
under 28 U.S.C. § 1391(b)(1) because JJR Media resides in this
district for the purposes of § 1391(c)(2). In addition, Kauffman
is

not

an

“improper

party”

and

the

complaint’s

allegations

against Kauffman withstand a Rule 12(b)(6) attack because Scar
Heal

alleges

that

Kauffman

controlled

and

directed

activities of infringement by JJR Media.
Accordingly, it is
ORDERED, ADJUDGED, and DECREED:
Defendants’ Motion to Dismiss (Doc. # 12) is DENIED.

11

the

DONE and ORDERED in Chambers, in Tampa, Florida, this 8th
day of July, 2014.

Copies: All Counsel of Record

12