Zip-A-Tee Shirt Inc et al v. Coalition to Advance the Proteciton of NBA, NFL, MLB, NHL,and CLC LLC Sport Logos et al
Filing
51
OPINION AND ORDER: DISMISSING CASE for lack of jurisdiction. Signed by Chief Judge Philip P Simon on 5/4/2015. (lhc) (cc: Pla)
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF INDIANA
HAMMOND DIVISION
JAMES CROSS,
Plaintiff,
v.
COALITION TO ADVANCE THE PROTECTION
OF NBA, NFL, MLB, NHL, AND CLC LLC
SPORTS LOGOS d/b/a CAPS MEMBERS
Defendant.
)
)
)
)
)
)
)
)
)
NO. 2:14 CV 451 PPS JEM
OPINION AND ORDER
James Cross, a pro se plaintiff, brings this declaratory judgment action against the
Defendant, Coalition to Advance the Protection of the NBA, NFL, MLB, NHL, and CLC
LLC Sport Logos (“CAPS”). Cross seeks a declaration that he has not committed
trademark infringement by using the logos of popular sports teams on his patented
jerseys. CAPS has moved to dismiss the complaint for lack of personal jurisdiction and
because Cross has failed to adequately state a claim for relief [DE 46]. For the reasons
set forth below, Cross’s case is DISMISSED.
BACKGROUND
The Coalition to Advance the Protection of the NBA, NFL, MLB, NHL, and CLC
LLC Sport Logos, or CAPS, is an unincorporated association that manages intellectual
property on behalf of the licensing arms of the major sports leagues. The CAPS
members are the Collegiate Licensing Company LLC; Major League Baseball Properties,
Inc.; NBA Properties LLC; NFL Properties LLC; and NHL Enterprises, L.P. [DE 41 at ¶
1].
James Cross is an inventor and a businessman who holds two design patents for
the idea of adding a zipper to the front of a sports jersey [DE 24 at 10-13]. He sells
zipper versions of baseball, basketball, and football jerseys through his company Zip-ATee Shirt, Inc.1 Zip-A-Tee Shirt offers zipper jerseys bearing the logos of well-known
teams like the Chicago Bulls, Chicago Bears, and Los Angeles Lakers [DE 24 at 16-18].
In his amended complaint, Cross alleges that CAPS sent him a series of ceaseand-desist letters in February and March 2012 [DE 24 ¶ 8]. The letters claimed that
Cross was infringing the trademarks owned by CAPS members by selling Bulls and
Lakers jerseys without CAPS members’ permission [DE 24 at 7-9]. Cross denied he was
infringing CAPS members’ marks. Id. In response, CAPS sent letters to the companies
that hosted the ZIP-A-Tee Shirt websites, informing the hosting companies about CAPS’
trademark claim [DE 24 ¶¶ 10, 13]. The hosting companies promptly shut the Zip-A-Tee
Shirt websites down. Id.
In his Amended Complaint, Cross seeks a declaration from the Court declaring
that Cross has not infringed any trademarks owned by CAPS members and an
injunction preventing CAPS from interfering with his business [DE 24 ¶¶ 16-23]. Cross
also seeks an unbelievable $700 million in statutory damages for each website CAPS
took down and a ridiculous $5 billion in punitive damages [DE 24 at 5].
CAPS has moved to dismiss on two grounds. First, CAPS asserts that Cross has
1
Zip-A-Tee Shirt, Inc. was originally a plaintiff in this case [DE 1]. Cross dropped Zip-A-Tee Shirt
when he filed his Amended Complaint [DE 24]. This was in response to my order of February 19, 2012,
warning Cross that I would dismiss the corporation if Cross did not find an attorney to represent it [DE
19].
2
failed to state a claim upon which relief can be granted. Second, CAPS argues the Court
lacks personal jurisdiction over it, and so moves to dismiss pursuant to Rule 12(b)(2) of
the Federal Rules of Civil Procedure.
DISCUSSION
Since the jurisdictional issue speaks to the power of the court, I will address it
first. See Sinochem Int’l Co. v. Malaysia Int’l Shipping Corp., 549 U.S. 422, 430-31 (2007); N.
Grain Mktg., LLC v. Greving, 743 F.3d 487, 491 (7th Cir. 2014). A federal court's personal
jurisdiction is determined by the laws of its forum state. Tamburo v. Dworkin, 601 F.3d
693, 700 (7th Cir. 2010). Indiana's long-arm statute allows jurisdiction so long as it's
consistent with the Due Process Clause of the Fourteenth Amendment. Ind. R. Trial. P.
4.4(a); Rodriguez v. Cavitec AG, 2010 WL 2519715, at *4 (N.D. Ind. June 14, 2010). As a
result, the state statutory and federal constitutional inquiries merge, and the
determinative issue is whether the exercise of jurisdiction over CAPS comports with the
federal Due Process Clause. Tamburo, 601 F.3d at 700; McKannan v. National Council of
Young Men's Christian Assocs. of the U.S., 2010 WL 4668437, at *3 (S.D. Ind. Nov. 9, 2010).
Personal jurisdiction can be general or specific depending on the extent of the
defendant's contacts. Mobile Anesthesiologists Chicago, LLC v. Anesthesia Assocs. of Houston
Metroplex, 623 F.3d 440, 444 (7th Cir. 2010). General jurisdiction is proper in the “limited
fora in which the defendant can be said to be ‘at home’” such as a corporation’s state of
incorporation or state of the principal place of business. Advanced Tactical Ordinance Sys.
v. Real Action Paintball, Inc., 751 F.3d 796, 800 (7th Cir. 2014) as corrected (May 12, 2014).
Specific jurisdiction is available for a suit that arises out of the defendant’s forum3
related activity. It is appropriate where (1) the defendant purposefully availed himself
of the privilege of doing business in a state, (2) the alleged injury "arises out of or relates
to" the defendant's activities in that state, and (3) the exercise of jurisdiction comports
with traditional notions of fair play and substantial justice. Tamburo, 601 F.3d at 702.
This test aims to "ensure that an out-of-state defendant is not bound to appear to
account for merely 'random, fortuitous, or attenuated contacts' with the forum state."
Id. (quoting Dudnikov v. Chalk & Vermilion Fine Arts, Inc., 514 F.3d 1063, 1071 (10th Cir.
2008)); see also Burger King Corp. v. Rudzewicz, 471 U.S. 462, 474 (1985).
Cross has the burden of establishing personal jurisdiction, though he need only
make a prima facie showing of the jurisdictional facts and is entitled to have any factual
conflicts resolved in his favor. See Purdue Research Found. v. Sanofi-Synthelabo, S.A., 338
F.3d 773, 782 (7th Cir. 2003).
CAPS provided an affidavit from Lisa Uriguen Armstrong, the president of TM
Management, Inc., which is the entity that administers CAPS on behalf of the CAPS
members [DE 41 ¶ 1]. Armstrong’s affidavit details the rather attenuated connections
between CAPS and Indiana. Armstrong stated that CAPS is administered out of Coeur
d’Alene, Idaho and does not have any offices, employees, or bank accounts in Indiana.
Id. ¶ 4. CAPS does not solicit business in Indiana and has never filed a lawsuit there. Id.
¶¶ 4, 9. Only a very small percentage of CAPS’ activities involve Indiana. For example
only ten of the 1,600 cease-and-desist letters CAPS has sent out in the past five years
were sent to individuals or entities in Indiana. Id. ¶ 6. A similarly small percentage of
CAPS’ other main activity, training and assisting law enforcement with respect to
4
counterfeiting operations, occurred in Indiana. Id. ¶¶ 5-7.
As for CAPS’ actions in this specific case, Armstrong stated that CAPS purchased
a zippered Chicago White Sox jersey from the ZIP-A-Tee Shirt website as part of their
investigation. Id. ¶ 12. And CAPS sent cease-and-desist letters and emails to Cross and
the hosting companies after discovering the White Sox jersey was counterfeit. Id. ¶¶ 1323.
As I said, the burden here is on Cross, and since CAPS submitted an affidavit in
opposition to this Court’s jurisdiction, Cross must go beyond the pleadings and submit
affirmative evidence supporting jurisdiction. See Purdue Research, 338 F.3d at 783. Cross
cannot carry this burden because he hasn’t submitted any evidence at all. That’s not to
say Cross hasn’t been active. After CAPS filed the Motion to Dismiss, Cross filed several
dispositive motions [DE 46, 49, 50]. The problem is that none of these motions address
jurisdiction and the 14-day deadline for his response has expired. See N.D. Ind. L.R. 71(d)(2)(A).
That leaves the Amended Complaint [DE 24]. In the Complaint, Cross alleges
this Court has jurisdiction because CAPS sent him cease-and-desist letters. CAPS
“transmitted five letters via e-mail through the regular post to Plaintiff” alleging
infringement [DE 24 ¶ 8]. This is an insufficient basis for personal jurisdiction. See Red
Wing Shoe Co., Inc. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355, 1360-61 (Fed. Cir. 1998)
(“Principles of fair play and substantial justice afford a patentee sufficient latitude to
inform others of its patent rights without subjecting itself to jurisdiction in a foreign
forum”); see also Speedster Motorcars of Cent. Fla., Inc. v. Ospeck, No. 1:04-CV-000635
JDTTAB, 2004 WL 2745051, at *6 (“without more cease-and-desist letters are
insufficient” to create jurisdiction over the sender).
Cross also alleges that CAPS “conducted business via the Internet and the mail
with Plaintiff” [DE 24 ¶ 5]. Cross has failed to make any factual allegations backing up
this claim, but Armstrong stated in her affidavit that CAPS had purchased a jersey from
the Zip-A-Tee website during its investigation [DE 41 ¶ 12]. This could be what Cross is
referring to. If so, this, too, is insufficient.
This is the reverse of the usual situation, where a court has to decide whether it
has jurisdiction over a defendant-seller that has offered goods over the internet to
customers in the forum state. In those instances, courts have held that the mere sale of
goods over the internet is insufficient to establish jurisdiction. Real Action Paintball, 751
F.3d at 801. Rather, the defendant-seller must somehow have purposefully exploited the
market beyond simply operating an interactive website accessible in the forum state. Id.
at 801. In other words, the defendant had to have “targeted” the forum state. Id. at 803.
Turning the situation around, if the mere sale of a single jersey over the internet
wouldn’t establish jurisdiction, CAPS’ purchase of one doesn’t either, especially since
Cross’s claims did not arise out of this purchase. See Walden v. Fiore, 134 S. Ct. 1115, 1122
(2014) (holding the plaintiff cannot be the only link between the defendant and the
forum); see also Burger King, 471 U.S. at 478 (holding an individual’s contract with an
out-of-state party does not automatically establish minimum contacts in the other
party’s home forum). Cross has not shown that CAPS targeted Indiana by purchasing
the jersey from his website.
6
Since Cross has failed to establish that this court has personal jurisdiction over
CAPS, this case will be DISMISSED.
I will note that even if I am incorrect on the personal jurisdiction issue, I would,
in any event, dismiss this case on the merits. This is because, Cross’s claim is not
plausible. To survive a motion to dismiss under Rule 12(b)(6), "a complaint must
contain sufficient factual matter, accepted as true, to state a claim to relief that is
plausible on its face." Ashcroft v. Iqbal, 129 S.Ct. 1937, 1949 (2009); Bell Atlantic Corp. v.
Twombley, 550 U.S. 544, 555 (2007). A complaint’s “allegations must plausibly suggest
that the plaintiff has a right to relief, raising that possibility above a ‘speculative level’; if
they do not, the plaintiff pleads itself out of court.” E.E.O.C. v. Concentra Health Servs.,
Inc., 496 F.3d 773, 776-77 (7th Cir. 2007).
Cross has not made a plausible claim. As far as I can tell, Cross’s theory is that
his patent gives him the right to sell jerseys with CAPS members’ trademarked logos on
it. That is not how patent law works. “[T]he federal patent laws do not create any
affirmative right to make, use, or sell anything.” See Leatherman Tool Grp. Inc. v. Cooper
Indus., Inc., 131 F.3d 1011, 1015 (Fed. Cir. 1997). A patent grants only the right to exclude
others from “making, using, or vending the thing patented without the permission of
the patentee.” Id. (citing Bloomer v. McQuewan, 55 U.S. 539, 548 (1852). If the Chicago
Bulls started selling a zipper jersey without Cross’s permission, then Cross would have
a case. But, patent or no, Cross cannot sell a his Chicago Bulls zipper jersey without
getting the Bull’s permission. A patent is not a license to violate the trademark laws.
Since Cross has not stated a plausible claim for relief, but for the problem with personal
7
jurisdiction discussed above, his complaint would have been dismissed on the merits.
SO ORDERED.
ENTERED: May 4, 2015
s/ Philip P. Simon
PHILIP P. SIMON, CHIEF JUDGE
UNITED STATES DISTRICT COURT
8
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?