Tempur Sealy International, Inc. et al v. WonderGel, LLC et al
Filing
41
MEMORANDUM OPINION & ORDER: the court finds that granting the relief requested will not harm others as it is very limited in scope & Purple will still be able to advertise its product; the court is persuaded that a temporary restraining order/preliminary injunction is appropriate under these circumstances. Signed by Judge Joseph M. Hood on 4/1/16.(KJR)cc: COR
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APR ... 1 2016
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF KENTUCKY
CENTRAL DIVISION at LEXINGTON
R~~ LEXINGTON
CLERK u.s~'!:r.CARR
'rtlCT COURT
TEMPUR SEAL INTERNATIONAL,
INC., et al.,
Civil Action No.
5:16-cv-83-JMH
Plaintiffs,
v.
MEMORANDUM OPINION AND ORDER
WONDERGEL, LLC, et al.,
Defendants.
***
This matter is before the Court upon Plaintiffs' Motion for
a Temporary Restraining Order/Preliminary Injunction,
Defendants'
Court
Motion to Dismiss,
conducted
a
hearing
on
parties presented arguments.
denying
the
Temporary
Motion
to
[DE 2 9] .
these
On March 30,
motions
during
2016,
which
the
both
The Court announced its oral ruling,
Dismiss
Restraining
[DE 11], and
and
granting
the
Motion
Injunction.
Order/Preliminary
for
a
This
memorandum opinion supplements the Court's oral rulings announced
during the hearing and the separate Order entered contemporaneously
herewith.
I.
Both
parties
are
engaged
mattresses, among other products.
products
created
exclusively online.
and
published
an
in
the
business
of
selling
Defendants market and sell their
Around
online
December
commercial
2015,
(the
Defendants
"Goldilocks
Video"),
which features one of Defendants'
During the commercial,
not identify it by name.
character makes
mattress
and
derogatory
falls
mattresses,
back
statements
on
to
the
about
the Goldilocks
the
mattress
but does
Tempur-Contour
a
"in
manner
and
accompanied by a facial expression and sound effects that suggest
that the mattress is extremely hard and painful for those who use
it,
The Goldilocks Video has received over three million views
II
on YouTube.com and over 14 million views on Purple's Facebook page.
The
video has
been shared over
fifty-three
thousand times
and
appears on Purple's commercial website, onpurple.com.
On February,
desist
letter,
misleading
19,
demanding
statements
advertising.
2 016,
Plaintiffs sent Purple a
that
regarding
Purple
remove
Plaintiffs'
all
cease and
false
products
and
from
its
A week later, Purple responded, stating essentially
that Purple was not required to make any changes to its advertising
and that it had filed a complaint in the United States District
Court
for
the
District
2:16-cv-162-BSJ.
In
of Utah to
that
action,
"protect
Purple
its
interests."
seeks
a
See
declaratory
judgment that neither it nor the Goldilocks Video violates the
Lanham
Act,
committed
15
the
U.S.C.
crimes
§
of
1125(a) (1) (B),
unlawful
that
Plaintiffs
monopolization,
intentional
interference with economic relations, and abuse of process.
II.
2
have
Defendants moved the Court to dismiss this matter based on
lack of personal jurisdiction or,
alternatively,
to transfer or
stay the matter based on the first-to-file rule.
As stated on the
record during the hearing, the Court declines to apply the firstto-file rule.
See Zide Sport Shop of Ohio, Inc.
Assocs.,
16 F. App'x 433,
Inc.,
437
(6th Cir.
v. Ed Tobergate
2001)
dispense with the rule "where equity so demands").
(courts may
The court sees
no reason to apply the rule in the context of a coercive action
filed subsequent to Defendant's anticipatory suit filed in Utahwhich is, at its heart, an action for a declaratory judgment.
Certified Restoration Dry Cleaning Network,
511 F.3d 535, 551 (6th Cir. 2007)
LLC v.
See
Tenke Corp.,
("[T]he first-filed rule is not
a strict rule and much more often than not gives way in the context
of a coercive action filed subsequent to a declaratory judgment.").
While
Plaintiffs have the burden of establishing that
the
Court has personal jurisdiction over Defendants, only a prima facie
showing is required at this stage of litigation.
v.
Neo Gen Screening,
Defendants
contend
Inc.,
that
282 F.3d 883,
they
have
§
56
contacts
with
The Kentucky long-arm
is not per se coextensive with the limits of
federal due process.
51,
2002).
454.210, while construed liberally in favor of long-
arm jurisdiction,
S.W.3d
(6th Cir.
insufficient
Kentucky for this action to go forward.
statute, KRS
887
See Neogen Corp.
(Ky.
Caesars Riverboat Casino, LLC v. Beach, 336
2011).
The
3
Court
finds
that
the
long-arm
statute
is
satisfied,
detail below,
business
however,
Defendants'
in
the
because as
explained in greater
internet sales constitutes transacting
Commonwealth.
See
KRS
454.210 (2) (a) (1).
§
Further, the alleged violations of the Lanham Act likely constitute
a tortious injury under §§ 454.210 (2) (a) (3) and 454.210 (2) (a) (4).
With respect to federal due process concerns,
inquiry is whether the
such
minimum
facts
contacts
demonstrate that
with
Kentucky
that
the relevant
Purple possesses
the
exercise
of
jurisdiction would comport with "traditional notions of fair play
and substantial justice."
1459
(6th Cir.
1991)
(quoting Int' 1 Shoe Co.
U.S. 310, 316 (1945))
935 F.2d 1454,
Theunissen v. Matthews,
v.
Washington,
326
Specific personal jurisdiction exists when:
(1) the defendant purposefully avails himself of the forum state,
invoking the benefits and protections of the forum state's laws;
( 2)
the cause of action arises
from the defendant's
activities
there; and (3) the acts of the defendant have a substantial enough
connection
with
jurisdiction
over
Mohasco Indus.
the
forum
the
Inc.,
otate
defendant
401 F.2d 374,
to
make
reasonable.
381
the
S.
exercise
of
Co.
v.
Mach.
(6th Cir. 1968).
Whether
a forum state may assert jurisdiction over a nonresident defendant
"focuses on the relationship among the defendant,
the litigation."
775 (1984)
Keeton v. Hustler Magazine, Inc.,
(internal quotation marks omitted).
4
the forum,
and
465 U.S. 770,
Defendants rely on the Supreme Court's decision in Walden v.
Fiore, 134 S.Ct. 1115 (2014), to argue that Plaintiffs' connection
to Kentucky is improperly being attributed to Defendants.
Unlike
Purple, the defendant in Walden had no identifiable connection to
the
The
forum state.
Supreme Court made clear,
however,
that
personal jurisdiction must be based on contacts that the "defendant
himself" creates with the forum state.
134 S.Ct. at 1122
Walden,
(quoting Burger King Corp. v. Rudzewicz, 471 U.S. 462, 475 (1985)).
Courts have "consistently rejected" attempts to satisfy the minimum
contacts
requirement
by
demonstrating
plaintiff and the forum state.
de Colombiar
S.A.
v.
between
the
(citing Helicopteros Nacionales
Id.
466 U.S.
Hall,
connections
408,
417
(1984)).
Further,
the court must look to the defendant's contacts with the forum
state itself-not just defendant's contacts with persons who reside
in the forum state.
examines
Id.
Defendants'
It is through this lens that the Court
conduct-both
the
use
of
their
website,
www.onpurple.com, and the alleged violations of the Lanham Act.
"The
operation
of
an
Internet
website
can
constitute
the
purposeful availment of the privilege of acting in a forum state
under the first Mahasco factor
a
degree
that
reveals
residents of the state.'"
Cir.
2002)
Purple's
(quoting
website,
'if the website is interactive to
specifically
intended
interaction
with
Bird v. Parsons, 289 F.3d 865, 874 (6th
Neogen
customers
Corp.,
in
all
5
282
F.3d at
fifty
890).
states
may
Through
purchase
Purple's products.
There is no charge for shipping to forty-eight
states, including Kentucky.
Website users in Kentucky, as well as
those in all other states, may do the following: engage in online
chat with
Purple's
representatives;
sign up for
Purple's
email
list; locate Purple's customer service number; contact Purple via
email;
The
and register and save their information on the website.
Court
recognizes
that
Plaintiffs
have
not
alleged
Defendants have actually served customers in Kentucky.
Plaintiffs
have
the
burden
of
proving
personal
that
And while
jurisdiction,
Defendants do not contest having website-based sales in Kentucky.
As Plaintiffs are only required to make a prima f acie showing of
jurisdiction at this point, the Court is satisfied that Plaintiffs
purposefully availed themselves of acting in Kentucky.
The Court must also consider whether the Plaintiffs' claims
"If a defendant's
arise from Purple's contacts with Kentucky.
contacts with the forum state are related to the operative facts
of the controversy, then an action will be deemed to have arisen
from those contacts."
1267
(6th Cir. 1996).
have
substantial
activities.
1089
(6th
CompuServe, Inc. v. Patterson, 89 F. 3d 1257,
Further, a plaintiff's claims need only a
connection
with
the
defendant's
Third Nat'l Bank v. WEDGE Grp., Inc.,
Cir.
1989).
Purple's
activity
in
forum
state
882 F.2d 1087,
Kentucky
springs
completely from its website through which it markets its mattresses
and other products.
Plaintiffs
6
allege
that
Purple
engaged in
violations
of
the
Lanham
Act
through
a
Accordingly,
prominently on its website.
commercial
featured
the operative facts in
this matter are related to the alleged contacts between Purple and
Kentucky.
Finally, in order to exercise personal jurisdiction, the Court
must find that doing so is reasonable in light of the connection
that allegedly exists between Purple and Kentucky.
of
the
first
two
factors
presumption that that
reasonable.
find
it
the
to
allegations
its
at
Kentucky consumers,
have
and
the
Utah
has
an
suggest,
that
does
not
in
overshadow
this
the
Kentucky,
The
prima
facie
showing
this
Court's
is
particular
to
significantly harm
a
Kentucky business.
action,
factors
the Court concludes that
it
in protecting the
as
Defendants
making personal
jurisdiction over Defendants in Kentucky reasonable.
the foregoing,
a
jurisdiction is
businesses.
Plaintiff,
interest
in
interest
potential
as well as
Although
lawsuit
legitimate
residents
issue
a
creates
While Purple may
89 F.3d at 1268.
defend
outweighed by Kentucky's
of
analysis
Mahasco
the exercise of personal
CompuServer Inc.,
burdensome
interests
of
Satisfaction
Based upon
Plaintiffs have made a
personal
jurisdiction
over
Defendants.
III.
Plaintiffs
seek
the
entry
of
a
temporary
restraining
order/preliminary injunction requiring the Defendants to remove
7
and cease using the advertisement known as the "Goldilocks Video"
Plaintiffs bear the
and any and all related marketing material.
burden of establishing that they are entitled to such relief.
Overstreet v.
Lexington-Fayette Urban Cty.
Gov't,
See
305 F.3d 566,
In determining whether to grant such relief,
573 (6th Cir. 2002).
the Court considers the following factors:
(1) whether the movant
has a strong likelihood of success on the merits;
(2) whether the
movant would suffer irreparable injury absent the relief sought;
( 3)
whether granting the
cause
substantial
interest
would
injunction.
be
harm
to
served
Summit
restraining order or injunction would
others;
by
Cty.
Blackwell, 388 F.3d 547, 550
and
issuing
Democratic
( 4)
the
whether
the
restraining
Cent.
(6th Cir. 2004).
&
Exec.
public
order
or
Comm.
v.
No one factor is a
prerequisite to relief but, rather, the factors are to be balanced
against each other.
Overstreet, 305 F.3d at 573.
The Lanham Act provides, in relevant part:
(a) ( 1) Any person who, on or in connection with any goods
or services, or any container for goods, uses in commerce
any word,
term,
name,
symbol,
or device,
or any
combination thereof, or any false designation of origin,
false or misleading description of fact, or false or
misleading representation of fact .
(B)
In
commercial
advertising
or
promotion,
misrepresents the nature, characteristics, qualities, or
geographic origin of his or her or another person's
goods, services, or commercial activities,
Shall be liable in a civil action by any person who
believes that he or she is or is likely to be damaged by
such act.
8
15
u.s.c.
§
1125.
Defendants do not dispute
that
Plaintiffs'
Tempur-Contour Collection mattress is the mattress featured and
referred to as the "hard" mattress in the Goldilocks Video.
It is
further undisputed that, in reference to the "hard" mattress, the
Goldilocks character states the following:
Looking for some shoulder pain?
Try a hard mattress.
It may feel like a rock and put pressure on your hips,
but it's the perfect way to tell your partner: "Hey baby,
want some arthritis?"
At another point, the character refers to the "hard" mattress as
a "prison bed."
The
Court
is
persuaded
that
these
are
misleading statements under the Lanham Act.
likely
false
or
When a Tempur-Contour
mattress is shown in the commercial, the actor suggests that the
mattress causes shoulder pain,
is "rock hard," puts pressure on
The Court has
considered
your hips,
and may cause arthritis.
Defendants'
argument that the entire commercial is obviously in
jest, but the Court unaware of any "humor exception" that would
make literally false statements acceptable under the Lanham Act.
Defendants'
be
statements concerning the "hard" mattress can hardly
considered puffery,
negative
as
heal th effects
permissible advertising.
F. 3d 1357, 1368 (2013)
defined
as
"subjective
these
statements
clearly cross
the
regarding potential
line beyond what
is
See Hall v. Bed Bath & Beyond, Inc., 705
(citation and alteration omitted)
claims
about
9
products,
which
(puffery
cannot
be
proven either true or false.").
Hilfiger Licensing,
Inc.
v.
Defendants also rely on Tommy
Nature Labs, LLC,
221 F.Supp.2d 410
(S.D.N.Y. 2002), in which the court found that the defendants had
not committed false advertising under Section 43(a) of the Lanham
Act for using a label that read, "If you like Tommy Hilfiger, your
pet will
love
Timmy Holedigger."
The
court
characterized the
statement as "unverifiable puff"-easily distinguishable from the
statements at issue here.
Further,
in the Hilfiger matter,
the
plaintiff's product was portrayed in a flattering light as opposed
to a disparaging one, as is the case here.
Defendants contend that the Tempur-Contour mattress is not
sufficiently recognizable such that viewers will recognize it as
Plaintiffs'
product.
Based
on
the
evidence
presented, the Court is persuaded otherwise.
Plaintiffs
have
Plaintiffs have spent
millions of dollars across many forms of advertising to promote
Plaintiffs' trade dress and the brand is extremely prevalent among
mattress consumers.
In excess of $300,000,000 in sales of products
bearing the Tempur Sealy trade dress in the Tempur-Contour line
have been
YouTube
sold.
public
Further,
comment
mattress in the video."
Purple's
section that
representative
stated in a
"Tempurpedic was
the
hard
The Court is satisfied that a significant
number of viewers have and would continue to recognize the mattress
as Plaintiffs' product.
10
The
Court must also
consider whether
the
Plaintiff would
suffer irreparable injury in the absence of the relief requested.
Because Plaintiffs have demonstrated a strong likelihood of showing
that Defendants made false or misleading statements in violation
of the Lanham Act,
Corp.
Jan.
v.
19,
JRN,
the Court presumes irreparable harm.
Inc.,
2012)
3:11-CV-260-H,
2012 WL 170196,
(citing Lorillard Tobacco Co.
*6
See KFC
(6th Cir.
Amouri's Grand
v.
Foods, Inc., 453 F.3d 377, 381-82 (6th Cir. 2006)).
Additionally,
the Court notes that the Goldilocks video is wildly popular, having
been viewed millions of times and, no doubt,
the number of views
is increasing daily.
The Court finds that granting the relief requested will not
harm others, as it is very limited in scope and Purple will still
be able to advertise its products.
not
be
significantly
affected
Thus, Purple's business should
and
complete access to Purple's products.
consumers
will
Finally,
still
have
the Court finds
that the public interest will be protected, as false advertisements
should be removed from the public's view.
It is always in the
public's best interest "to prevent consumers from being misled."
Audi AG v. D'Amato, 469 F.3d 534, 550 (6th Cir. 2006)
after balancing
these
factors,
the
Court
is
Accordingly,
persuaded
that
a
temporary restraining order/preliminary injunction is appropriate
under these circumstances.
11
This the
~
l__-aay
of April, 2016.
Judge
12
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