Elan International, Inc. v. Sen Collection, Inc.

Filing 49

ORDER denying 39 Defendant's Motion to Dismiss Plaintiff's Amended Complaint for Lack of Personal Jurisdiction. Signed by Magistrate Judge Jonathan Goodman on 1/24/2017. (jf00)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
MIAMI DIVISION
CASE NO. 15-23620-CIV-GOODMAN
[CONSENT CASE]
ELAN INTERNATIONAL, INC.,
Plaintiff,
v.
SEN COLLECTION, INC.,
Defendant.
__

/

ORDER DENYING DEFENDANT’S MOTION TO DISMISS
Plaintiff Elan International, Inc. (“Elan”) filed an amended complaint [ECF No.
34] and Defendant Sen Collection, Inc. (“Sen”) filed a motion to dismiss for lack of
personal jurisdiction. [ECF No. 39]. Elan filed an opposition response, Sen filed a reply
and Elan filed a sur-reply. [ECF Nos. 42; 43; 46]. The Undersigned ordered Sen to
provide an additional factual clarification about the shipping of its products into
Florida. [ECF No. 47]. In compliance with this Order, Sen filed: (1) a supplemental
affidavit of its owner Trang Phung (“Phung”); (2) communications between Letty
Biggins (“Biggins”), a Florida store owner, and Phung; and (3) invoices reflecting Sen’s
sales, on a wholesale basis, to Florida stores. [ECF Nos. 48-1; 48-2; 48-3].

The Undersigned has reviewed the amended complaint, the parties’ filings and
the record. For the reasons outlined below, I find that the court does have personal
jurisdiction over Sen, and, as a result, the Undersigned denies Sen’s motion to dismiss.
Factual Background and Procedural Posture
Elan is a Florida-based apparel company that uses its federally registered
trademark SEN to identify mass-market women’s apparel. [ECF No. 34, ¶ 1]. On
September 11, 2012, Elan registered its SEN mark with the United States Patent and
Trademark Office (“USPTO”). [ECF No. 34, ¶ 7].
Sen is also in the women’s apparel business and sells its own brand of clothes
(“Sen Couture”) out of its California-based retail store. [ECF Nos. 34, ¶ 1; 39, p. 1]. Sen
filed an application to register its similar mark on November 11, 2013 and then filed an
action before the Trademark Trial and Appeal Board (“TTAB”) to cancel Elan’s SEN
mark. [ECF No. 34, ¶¶ 13-17]. That TTAB action is still pending. [ECF No. 34, ¶ 18].
Elan then filed this action against Sen in the Southern District of Florida, seeking
declaratory judgments. [ECF No. 1, pp. 7-10]. Sen moved to dismiss the complaint for
lack of personal jurisdiction [ECF No. 12] and Elan moved for leave to file an amended
complaint [ECF No. 19]. The Undersigned granted Elan’s motion and denied as moot
the motion to dismiss. [ECF No. 33].
Elan filed an amended complaint [ECF No. 34], which now includes three counts:
(1) for a declaratory judgment that there is no confusion between Elan’s SEN mark and
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Sen’s mark; (2) for trademark infringement; and (3) for false designation of origin. [ECF
No. 34, pp. 7-10]. Sen filed a renewed motion to dismiss for lack of personal jurisdiction.
[ECF No. 39], which is now ripe for my review.
Legal Standard for Motion to Dismiss for Lack of Personal Jurisdiction
On a Federal Rule of Civil Procedure 12(b)(2) motion to dismiss for lack of
personal jurisdiction, “the plaintiff bears the initial burden of ‘alleg[ing] sufficient facts
to make out a prima facie case of jurisdiction’ over the nonresident defendant.” Keim v.
ADF MidAtlantic, LLC, No. 12-80577-CIV, 2016 WL 4248224, at *2 (S.D. Fla. Aug. 10,
2016) (quoting Posner v. Essex Ins. Co., 178 F.3d 1209, 1214 (11th Cir. 1999) (per curiam)).
A prima facie case is established if the plaintiff’s evidence can withstand a
directed verdict motion. Consol. Dev. Corp. v. Sherritt, Inc., 216 F.3d 1286, 1291 (11th Cir.
2000); Promex, LLC v. Perez Distrib. Fresno, Inc., No. 09-22285-CIV, 2010 WL 3452341, at
*2 (S.D. Fla. Sept. 1, 2010). The “district court must accept the facts alleged in the
complaint as true, to the extent they are uncontroverted by the defendant's affidavits.”
Madara v. Hall, 916 F.2d 1510, 1514 (11th Cir. 1990) (citations omitted). If the parties'
affidavits can be “harmonized,” then the court can make a decision based on the facts
before it. See Venetian Salami Co. v. J.S. Parthenais, 554 So. 2d 499, 502–03 (Fla. 1989).
However, if the affidavits conflict, “the district court must construe all reasonable
inferences in favor of the plaintiff.” Madara, 916 F.2d at 1514 (citations omitted).

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The analysis of whether personal jurisdiction exists over a non-resident
defendant is a two-part determination involving a state long-arm statute and the Due
Process Clause of the Fourteenth Amendment. See Posner, 178 F.3d at 1214; Sculptchair,
Inc. v. Century Arts, Ltd., 94 F.3d 623, 626 (11th Cir. 1996).
First, the court must consider whether the forum state’s long-arm statute, in this
case Florida’s long-arm statute, is satisfied. Robinson v. Giarmarco & Bill, P.C., 74 F.3d
253, 256 (11th Cir. 1996). If the requirements of Florida's long-arm statute are met, then
the second step is to determine whether there are sufficient minimum contacts to satisfy
the Due Process Clause so that the suit does not offend “traditional notions of fair play
and substantial justice.” Int'l Shoe Co. v. Washington, 326 U.S. 310, 316 (1945). Both must
be satisfied before a court may exercise personal jurisdiction over a nonresident
defendant. Robinson, 74 F.3d at 256 (internal citations omitted).
Allegations as to Jurisdiction in the Amended Complaint
Elan alleges that the court has specific personal jurisdiction 1 over Sen under the
“conducting business” prong of Florida’s long-arm statute or § 48.193(1)(a)(1) because:
“(1) a substantial part of the events or omissions giving rise to Elan’s claim occurred in
Personal jurisdiction can arise either specifically or generally. “[S]pecific
jurisdiction is founded on a party's activities in the forum that are related to the cause of
action alleged in the complaint[.]” Stubbs v. Wyndham Nassau Resort & Crystal Palace
Casino, 447 F.3d 1357, 1360 n. 3 (11th Cir. 2006) (internal citation omitted). In contrast,
general jurisdiction “arises from the defendant’s contacts with the forum that are not
directly related to the cause of action being litigated.” Id. Elan does not allege that this
Court has general jurisdiction over Sen in the amended complaint.
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this District, and (2) Defendant alleges that it engages in business in this state through
one or more local distributors or wholesalers.” [ECF No. 34, ¶ 4]. 2
Elan also alleges that the court has specific personal jurisdiction over Sen under §
48.193(1)(a)(2) because “Defendant committed a tortious act within this state.” [ECF No.
34, ¶ 4]. Elan alleges that “Defendant’s use of the SEN mark gives rise to a likelihood of
confusion” because Sen “sells SEN branded clothing to two third-party companies
called Style N Wine and Style So Chic located in Delray Beach, Florida and Palm Beach
Gardens, Florida, respectively. Defendant has identified these companies as ‘wholesale’
purchasers of its SEN branded clothing and has admitted in sworn testimony that
Defendant has sold ‘a lot more’ than a dozen units of Defendant’s SEN-branded
clothing to Style So Chic in Florida.” [ECF No. 34, ¶ 4].
Affidavits, Testimony, and Additional Record Evidence as to Jurisdiction
To support the dismissal motion, Sen attached Phung’s initial affidavit, which
states that Biggins came into its California store in the Summer of 2011 and purchased
apparel which she brought back to Florida. [ECF No. 39-1, ¶ 5]. Biggins owned Style So
Chic, a fashion boutique located in Palm Beach Gardens, Florida. [ECF No. 39-1, ¶ 5].
As shown below, since the Undersigned finds that Elan has stated a prima facie
case for specific jurisdiction under § 48.193(1)(a)(2), the “committing a tortious act
within in the state” prong, I do not need to analyze the “conducting business prong.”
under Florida’s long-arm statute. Even if I did, Elan would be unlikely to establish a
prima facie case under § 48.193(1)(a)(1). Although Elan does not actually concede to an
inability to prove the “doing business” type of jurisdiction, it discusses this alternative
only briefly -- in an inconspicuous footnote that is devoid of any legal analysis or
factual support. [ECF No. 42, p. 2, n. 1].
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2

The affidavit also says that Biggins tried to contact Sen again (to discuss her interest in
purchasing wholesale apparel to re-sell from her Florida store) by email on December
17, 2012 but mistakenly sent the email to Elan. [ECF No. 39-1, ¶ 6].
According to Phung’s Affidavit, a Delray Beach, Florida-based boutique, Style N
Wine, contacted her in early 2013 about its “interest in purchasing wholesale orders
from SEN Collection that it could, in turn, sell from its Florida store.” [ECF No. 39-1, ¶
8]. The Affidavit states that these third parties later “contact[ed] SEN COLLECTION in
California to make purchases from it in California.” [ECF No. 39-1, ¶ 9].
In its response, Elan attached an excerpt from Sen’s supplemental interrogatory
answers in the TTAB action. In those answers, Sen represented that it has been selling
women’s apparel since January 1, 2010 from its Los Angeles store, its two websites “and
via wholesale” to Style N Wine and Style So Chic. [ECF No. 42-1, p. 3]. The answers
also said that Sen “intends to continue wholesaling [its] Goods under [its] Mark to
department stores and boutiques.” [ECF No. 42-1, p. 3] (emphasis supplied).
In addition, Elan also attached portions of a deposition which Phung provided in
the TTAB action. In her deposition, Phung testified that her company sold items to
Biggins for “resale.” [ECF No. 42-2, p. 5]. Phung further testified that she sold “a lot
more” than a dozen units to Style So Chic. [ECF No. 42-2, p. 6].
In its reply, Sen emphasized that there is no record evidence that it shipped or
sent anything to the two Florida stores [ECF No. 43, pp. 3-5]. Noting that Sen was
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technically correct but pointing out that Sen was correct only because it was silent on the
issue of whether it shipped any merchandise to Florida, the Undersigned required Sen
to disclose how the products were shipped. [ECF No. 47].
Sen’s supplemental affidavit (signed by Phung) discloses that it shipped 43
dresses to Florida in 6 separate shipments. [ECF No. 48-1, ¶ 5]. Sen also filed copies of
its invoices for only 5 shipments, not 6, concerning only 39 dresses, leaving 4 dresses
unaccounted for. [ECF No. 48-3]. Sen’s sales for those 39 dresses totaled $6,555
(including shipping costs) and the dresses sold had wholesale prices of $140, $150, $180,
$215, and $300. [ECF No. 48-3]. Sen also filed communications demonstrating that these
transactions were commercial and that it knew the dresses would be resold in the
Florida stores. [ECF No. 48-2].
Long-Arm Statute: § 48.193(1)(a)(2) “committing a tortious act within [Florida]”
Elan’s amended complaint contains Lanham Act claims which constitute
“tortious act” allegations within the meaning of Florida's long–arm statute. Louis Vuitton
Malletier, S.A. v. Mosseri, 736 F.3d 1339, 1355 (11th Cir. 2013) (finding that trademark
claims are tortious acts for purposes of Florida’s long-arm statue).
Even though Sen did not have a physical presence in Florida, jurisdiction under §
48.193(1)(a)(2) may apply when an out-of-state defendant, such as Sen, commits a tort
that produces injury in Florida. Licciardello v. Lovelady, 544 F.3d 1280, 1283 (11th Cir.
2008); Promex, LLC, 2010 WL 3452341, at *5.
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In Promex, the defendant sold allegedly infringing dietary supplements either
through a website or telephone order, which allegedly created consumer confusion in
Florida. 2010 WL 3452341, at *5. The Promex Court found that because defendant had
sold and shipped allegedly infringing dietary supplements to three Florida-based
companies for purposes of re-sale, the “Defendant allegedly committed a tortious act
outside the state that causes injury in Florida[.]” Id. The Promex Court also found that
the defendant’s shipment of just 12 units to only one Florida-based reseller was
“sufficient to assert specific personal jurisdiction over Defendant[.]” Id. at *6.
From the amended complaint, Phung’s initial affidavit, and discovery from the
TTAB proceedings, the following jurisdictional facts are undisputed: (1) Sen sold its
allegedly infringing product “via wholesale” to two Florida-based retailers; (2) Sen
made such sales to these Florida retailers on multiple occasions since 2012 in quantities
in excess of 12 units; (3) Sen knew the allegedly infringing products would be resold at
retail stores in Florida to Florida residents; (4) Sen admitted knowing of the existence of
Elan in Florida at the time of these sales (by reason of the misdirected email sent by
Style So Chic to Elan). [ECF Nos. 34; 39-1; 42-1; 42-2].
What the initial Phung affidavit and the TTAB filings do not address, which Sen
focuses on its reply, is that there is no evidence, one way or the another, that Sen shipped
its clothing to Florida.

[ECF No. 43]. In the initial affidavit, Phung purposefully

attempts to avoid any specific discussion of shipping in an apparent attempt to
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distinguish Promex and to support its argument that this Court lacks personal
jurisdiction over Sen.
Specifically, Sen argued that in Promex, the court’s decision to exert personal
jurisdiction over the defendant required defendant’s activity to be directed to Florida by
shipping its products to that state. [ECF No. 43, p. 4 (citing Promex, LLC, 2010 WL
3452341 at *5) and noting that the court used its discretion to assert personal
jurisdiction over a defendant that committed a tortious act out of state because there
was proof that the tortious acts were directed to Florida through the proof of shipment].
Sen’s supplemental, Court-ordered filings about shipping completely undermine
the argument it raised in its reply. The supplemental affidavit and invoices show that
Sen itself shipped 43 dresses, with wholesale prices of $140, $150, $180, $215, and $300,
to Florida in 6 separate shipments totaling $6,555. 3 [ECF Nos. 48-1, ¶ 5; 48-3]. This
amount substantially exceeds the proof of the 12 units that were found to be sufficient
to establish personal jurisdiction in Promex. 2010 WL 3452341, at *6. Although the
affidavit explains that Sen shipped the merchandise at its customers’ request using their
account number, the significant point is that Sen was in fact the shipper.
In addition, the email communications demonstrate that these transactions were
commercial and that Sen knew the dresses would be resold in Florida stores. For
example, a December 3, 2012 email said, “Hello, Letty [Biggins]. I am ready now to
If we use $200 for the average price of the missing 4 dresses that would generate
an additional $800 in revenue -- bringing the sales of the 43 dresses to $7,355.
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3

wholesale.” [ECF No. 48-2, p. 2]. And a December 6, 2012 email said, “I am in the
process of drafting the contract and will send it over soon.” [ECF No. 48-2, p. 3].
Had Phung's initial affidavit not been silent on shipping and instead candidly
discussed the specific facts revealed in Sen’s later, Court-mandated filings, then Sen's
involvement in intentionally shipping merchandise to Florida would have been
revealed, thereby undermining the motion to dismiss and bolstering Elan’s
jurisdictional allegations in the amended complaint. Now that the record is more
complete, the Undersigned finds that the requirements of Florida’s long-arm statute
have been met because Sen committed tortious acts in Florida by selling and then
shipping, on multiple occasions, the alleging infringing products to Florida and by also
knowing that those infringing dresses would be resold to Florida’s residents by Florida
stores.
Due Process Clause
The Eleventh Circuit has a three-part test to determine whether an exercise of
specific personal jurisdiction comports with due process. The court must examine “(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

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jurisdiction comports with traditional notions of fair play and substantial justice.” Louis
Vuitton Malletier, S.A., 736 F.3d at 1355 (internal citations and quotations omitted).
The plaintiff bears the burden of establishing the first two prongs, and if the
plaintiff does so, a defendant must make a “compelling case” against the third prong.
Diamond Crystal Brands, Inc. v. Food Movers Int'l, Inc., 593 F.3d 1249, 1267 (11th Cir. 2010).
The first prong requires a “direct causal relationship between the defendant, the
forum, and the litigation.” Louis Vuitton Malletier, S.A., 736 F.3d at 1355-56 (internal
citations omitted). Here, Elan’s trademark claims arise out of Sen’s contacts with Florida
businesses. Sen’s ties to Florida involve the selling and shipping of the allegedly
infringing goods into Florida and accepting payment from Florida clients. Thus, there is
a direct causal relationship between Sen, Florida, and Elan’s trademark claims.
Purposeful availment, the second prong, is determined by the minimum contacts
test, where the court assesses whether the defendant's contacts with the state “(1) are
related to the plaintiff's cause of action; (2) involve some act by which the defendant
purposefully availed himself of the privileges of doing business within the forum; and
(3) are such that the defendant should reasonably anticipate being haled into court in
the forum.” Id. at 1357 (internal citation omitted).
Here, Sen’s contacts with Style So Chic and Style N Wine are directly connected
to Elan’s trademark claims. Sen purposely sold 43 allegedly infringing products in 6
shipments, knowing that those products would be resold by the Florida businesses. Sen
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communicated to the Florida businesses that it was ready to wholesale the products and
Phung testified that she fully intended to continue selling the allegedly infringing
products. Even though Sen did not have a Florida office or agent, my view remains
unchanged that Sen enjoyed doing business in Florida.
In fact, it is clear that Sen anticipated being haled into a Florida court, because
Sen has admitted that it continued selling the products for years after knowing about
Elan’s trademark and that its customers confused Elan’s business for Sen’s business. Sen
was so seemingly worried that lawsuits would arise between Elan and itself over Elan’s
mark that Sen brought a TTAB cancellation action against Elan. Based on these
circumstances, the Undersigned is not convinced that this Florida-filed lawsuit comes as
a surprise to Sen.
The third prong, fair play and substantial justice, is also met. See Int'l Shoe Co.,
326 U.S. at 320. In this analysis, we consider: (1) “the burden on the defendant[;]” (2)
“the forum's interest in adjudicating the dispute[;]” (3) “the plaintiff's interest in
obtaining convenient and effective relief[;]” and (4) “the judicial system's interest in
resolving the dispute.” Lovelady, 544 F.3d at 1288.
It is true that Sen is a California defendant with only one store in California and
that litigating this lawsuit in Florida will come at a greater cost and inconvenience than
litigation in California. However, this is always the case for out-of-state defendants, so
this factor alone does not result with a fundamental unfairness finding for Sen,
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especially in light of the fact that Sen failed to offer any evidence of its “finances or any
other limitations [on it] to show that [it] would be burdened by having to litigate the
case in Florida.” Louis Vuitton Malletier, 736 F.3d at 1358.
Florida has a strong interest in hearing the case and protecting consumers from
confusion that results from trademark infringement. Elan has an undeniable interest in
litigating the case in its chosen forum as its potential witnesses, including Style So Chic
and Style N Wine, are located in Florida. Thus, the Court has an interest in efficiently
resolving the dispute in the forum where the case has been pending for over two years.
Conclusion
Therefore, Sen’s motion to dismiss for lack of jurisdiction is denied. Sen shall file
an answer to Elan’s complaint by February 6, 2017. The Court will also set this case for a
telephonic trial scheduling conference through a separate order.
DONE AND ORDERED in Chambers, in Miami, Florida, on January 24, 2017.

Copies furnished to:
All counsel of record

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