Fruit of the Loom, Inc. v. En Garde, LLC
Filing
28
MEMORANDUM OPINION AND ORDER by Judge Greg N. Stivers on 8/25/2017. Defendant's Motion to Dismiss (DN 15 ) is GRANTED. Plaintiff's Motion for Preliminary Injunction (DN 4 ) is DENIED AS MOOT. Plaintiff's Motion for Leave to File a Sur-Reply (DN 25 ) is DENIED. cc: Counsel(JWM)
UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF KENTUCKY
BOWLING GREEN DIVISION
CIVIL ACTION NO. 1:17-CV-00112-GNS-HBB
FRUIT OF THE LOOM, INC.
PLAINTIFF
v.
EN GARDE, LLC
DEFENDANT
MEMORANDUM OPINION AND ORDER
This matter is before the Court on Defendant’s Motion to Dismiss (DN 15), Plaintiff’s
Motion for Preliminary Injunction (DN 4), and Plaintiff’s Motion for Leave to File a Sur-Reply
(DN 25). For the reasons outlined below, Defendant’s Motion to Dismiss is GRANTED,
Plaintiff’s Motion for Preliminary Injunction is DENIED AS MOOT, and Plaintiff’s Motion for
Leave to File a Sur-Reply is DENIED.
I.
STATEMENT OF FACTS AND CLAIMS
Plaintiff Fruit of the Loom, Inc. (“FOL”) is a global garment manufacturer which owns
various trademarks registered with the U.S. Patent & Trademark Office (“USPTO”). (Compl. ¶¶
7-9, 12-13, DN 1). Its marks include the word marks FRUIT and FRUIT OF THE LOOM, and
other related marks with design elements that are used in connection with, inter alia, “clothing or
textile goods, including T-shirts, underwear, activewear, and socks . . . .” (Compl. ¶¶ 12-13).
On July 8, 2015, Defendant En Garde, LLC (“En Garde”) filed an intent-to-use trademark
application with the USPTO for the word mark FRUIT OF THE TOMB to be used with
“clothing, namely, t-shirts, pants, hats, socks, swim suits, and shorts . . . .” (Compl. ¶ 21
1
(internal quotation marks omitted)). FOL has filed an opposition with the USPTO Trademark &
Appeal Board, which is still pending. (Compl. ¶ 23).
FOL has alleged that En Garde or someone acting on its behalf has registered the domain
name fruit-of-the-tomb.com. (Compl. ¶ 25). En Garde has also purportedly begun selling
apparel in its locality of Houston, Texas, and has established an online store through Shopify.
(Compl. ¶ 26). According to FOL, “En Garde currently operates an online store selling apparel
and handbags at http://fruit-of-the-tomb.co and http://fruit-of-the-tomb.myshopify.com,” in
which Defendant uses its FRUIT OF THE TOMB mark. (Compl. ¶ 28). En Garde is allegedly
marketing and selling its wares on social media platforms such as Facebook and Twitter.
(Compl. ¶ 29).
FOL filed this lawsuit alleging trademark infringement in violation of 15 U.S.C. § 1114,
trademark dilution in violation of 15 U.S.C. § 1125(c), and federal unfair competition in
violation of 15 U.S.C. § 1125(a). (Compl. ¶¶ 39-54). After FOL moved for a preliminary
injunction, En Garde moved to dismiss this lawsuit due to lack of personal jurisdiction. (Pl.’s
Mot. Prelim. Inj., DN 4; Def.’s Mot. Dismiss, DN 15).
II.
JURISDICTION
This Court has subject-matter jurisdiction of this matter based upon federal question
jurisdiction and because of federal courts’ exclusive jurisdiction over trademark law. See 28
U.S.C. §§ 1331, 1338.
III.
A.
DISCUSSION
Defendant’s Motion to Dismiss
En Garde has moved to dismiss FOL’s claims because this Court lacks personal
jurisdiction over En Garde. (Def.’s Mot. Dismiss 2-11, DN 15). A plaintiff bears the burden of
2
proving that a court has personal jurisdiction over a defendant. See Air Prods. & Controls, Inc.
v. Safetech Int’l, Inc., 503 F.3d 544, 549 (6th Cir. 2007). To survive a motion to dismiss, a
plaintiff must present a prima facie case of personal jurisdiction over the moving party. See
Nationwide Mut. Ins. Co. v. Tryg Int’l Ins. Co., 91 F.3d 790, 792 (6th Cir. 1996). In ruling on a
motion under Fed. R. Civ. P. 12(b)(2) the Court may resolve the motion without an evidentiary
hearing, but it must construe the pleadings, affidavits, and other evidence in the light most
favorable to the plaintiff. See Bird v. Parsons, 289 F.3d 865, 871 (6th Cir. 2002). A court
should not weigh “the controverting assertions of the party seeking dismissal.” Theunissen v.
Matthews, 935 F.2d 1454, 1459 (6th Cir. 1991) (citations omitted).
A federal court has personal jurisdiction over a defendant if: “(1) the defendant is
amenable to service of process pursuant to the forum state’s long-arm statute and (2) the exercise
of personal jurisdiction would not deny due process under federal Constitution.” Coleman v.
Mary Jane M. Elliott, P.C., No. 3:14-CV-00640-CRS, 2015 WL 3407320, at *2 (W.D. Ky. May
21, 2015) (citing Bird, 289 F.3d at 871). At this stage of the litigation and because the Court is
addressing this issue based upon written submissions only, FOL “need only make a prima facie
showing of jurisdiction” to defeat En Garde’s motion to dismiss. Compuserve, Inc. v. Patterson,
89 F.3d 1257, 1262 (6th Cir. 1996) (citing Theunissen, 935 F.2d at 1458-59).
1.
Kentucky’s Long-Arm Statute
En Garde asserts that it is not subject to service of process under Kentucky’s long-arm
statute, KRS 454.210. (Def.’s Mot. Dismiss 5-6). To obtain service of process on En Garde,
KRS 454.210 must authorize personal jurisdiction over it.
See KRS 454.210(3)(a)(“When
personal jurisdiction is authorized by this section, service of process may be made on such
person, or any agent of such person, in any county in this Commonwealth, where he may be
3
found, or on the Secretary of State who, for this purpose, shall be deemed to be the statutory
agent of such person.”).
In Caesars Riverboat Casino, LLC v. Beach, 336 S.W.3d 51 (Ky. 2011), the Kentucky
Supreme Court clarified the scope of KRS 454.210, which had been construed broadly by
Kentucky courts. In Beach, the court explained the proper analysis of the long-arm statute is as
follows:
First, review must proceed under KRS 454.210 to determine if the cause of action
arises from conduct or activity of the defendant that fits into one of the statute’s
enumerated categories. If not, then in personam jurisdiction may not be
exercised. When that initial step results in a determination that the statute is
applicable, a second step of analysis must be taken to determine if exercising
personal jurisdiction over the non-resident defendant offends his federal due
process rights.
Id. at 57.
In its response to this motion, FOL avers that En Garde’s conduct subjects it to personal
jurisdiction under KRS 454.210(2)(a)(2). (Pl.’s Resp. Def.’s Mot. Dismiss 8, DN 9). In relevant
part, the long-arm statute provides that “[a] court may exercise personal jurisdiction over a
person who acts directly or by an agent, as to a claim arising from the person’s . . . [c]ontracting
to supply services or goods in this Commonwealth . . . .” KRS 454.210(2)(a)(2). With regard to
En Garde’s activities within Kentucky, FOL has asserted that En Garde has sold only one
garment bearing the offending mark in Kentucky,1 although FOL’s counsel may have purchased
another t-shirt from En Garde that did not bear the mark.
It is apparent that En Garde’s sale of goods to only one buyer in Kentucky is sufficient to
satisfy KRS 454.210(2)(a)(2). As the Kentucky Supreme Court has commented, “[a] plain
1
En Garde disputes whether this t-shirt bore the alleged infringing mark. (Filteau Decl. ¶ 5, DN
15-2). FOL, however, has provided a photo of a t-shirt bearing graphics and stylized wording of
the FRUIT OF THE TOMB mark. (Pl.’s Resp. Def.’s Mot. Dismiss Ex. H, DN 18-9).
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reading of the statutory language produces the interpretation that the contract need not be made
or executed ‘in this Commonwealth,’ but, rather, only that the contract provide for the supplying
of services or goods to be transported into, consumed or used in Kentucky.” Hinners v. Robey,
336 S.W.3d 891, 896 (Ky. 2011). The buyer’s use of En Garde’s page on the myshopify.com
web platform was the means through which En Garde offered to sell its wares at the stated
prices. When the buyer selected the item to purchase and paid for the item, En Garde had a
contractual obligation to fill the order and mail the item to the purchaser who was located in
Kentucky.
In Beach, the Kentucky Supreme Court addressed the “arising from” requirement found
in KRS 454.210(2)(a). Rejecting a “but for” test, the court held that the proper test is whether
there is a “reasonable and direct nexus between the conduct that caused [the plaintiff’s] injury
and [the defendant’s] business activities in Kentucky.” Beach, 336 S.W.3d at 59. Absent such a
reasonable and direct nexus, there is no personal jurisdiction over a defendant. See id.
Applying that test to FOL’s claims against En Garde, Plaintiff has presented sufficient
evidence to show that its claims arise from the conduct of En Garde in this forum. A t-shirt was
sold via the myshopify.com web platform and delivered to a purchaser in Kentucky. (Filteau
Decl. ¶ 5). The subject t-shirt may have infringed on FOL’s marks or FOL may have been
otherwise injured as a result of that sale. Thus, FOL has satisfied its burden to show that this
transaction falls under one of the enumerated grounds for exercising personal jurisdiction under
Kentucky’s long-arm statute.
2.
Federal Due Process
To exercise personal jurisdiction over En Garde, the Court must next determine whether
the requirements of due process are met—“whether the facts of the case demonstrate that the
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nonresident defendant possesses such minimum contacts with the forum state that the exercise of
jurisdiction would comport with ‘traditional notions of fair play and substantial justice.’”
Theunissen, 935 F.2d at 1459 (quoting Int’l Shoe Co. v. Washington, 326 U.S. 310, 316 (1945)).
Under Sixth Circuit precedent, this Court is to consider the following criteria in making that
determination:
First, the defendant must purposefully avail himself of the privilege of acting in
the forum state or causing a consequence in the forum state. Second, the cause of
action must arise from the defendant's activities there. Finally, the acts of the
defendant or consequences caused by the defendant must have a substantial
enough connection with the forum state to make the exercise of jurisdiction over
the defendant reasonable.
S. Mach. Co. v. Mohasco Indus., Inc., 401 F.2d 374, 381 (6th Cir. 1968).
a.
Purposeful Availment
In this case, En Garde contends that it has not purposefully availed itself of the privilege
of conducting business within Kentucky “because its single sale and online activity do not
establish the ‘substantial connection’ with the forum state that is necessary to meet the first
prong of specific jurisdiction.” (Def.’s Mot. Dismiss 7). FOL maintains that the purposeful
availment requirement is satisfied by the following conduct of En Garde: “(1) by maintaining
multiple websites, accessible in Kentucky, through which En Garde sells apparel online,
including at least one sale in Kentucky; and (2) targeting [FOL] at its principal place of business
in Kentucky through willful trademark infringement.”2 (Pl.’s Resp. Def.’s Mot. Dismiss 9).
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The parties appear to dispute whether the sale of a t-shirt to the person in Sturgis, Kentucky,
was a strawman purchase made for the sole purpose of attempting to obtain personal jurisdiction
over En Garde in this forum. As En Garde correctly notes, “a plaintiff may not manufacture
jurisdiction by engaging in a sale merely to confer jurisdiction in a particular forum.” Mor-Dall
Enters., Inc. v. Dark Horse Distillery, LLC, 16 F. Supp. 3d 874, 881 (W.D. Mich. 2014) (internal
quotation marks omitted) (quoting Dawson v. Pepin, 1:99-CV-316, 2001 WL 822346, at *5
(W.D. Mich. Mar. 29, 2001)). See also Edberg v. Neogen Corp., 17 F. Supp. 2d 104, 112 (D.
Conn. 1998) (“Only those contacts with the forum that were created by the defendant, rather than
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“Traditionally, when an entity intentionally reaches beyond its boundaries to conduct
business with foreign residents, the exercise of specific jurisdiction is proper. Different results
should not be reached simply because business is conducted over the Internet.” Zippo Mfg. Co.
v. Zippo Dot Com, Inc., 952 F. Supp. 1119, 1124 (W.D. Pa. 1997) (internal citation omitted). As
a sister court has explained in analyzing personal jurisdiction over disputes involving internet
transactions:
In the internet context, the interactivity of the website determines whether
personal jurisdiction is appropriate for an out-of-state defendant. There are three
categories of interactivity for a website. The first category is a highly interactive
website, which gives others the ability to download and enter into contracts. This
category is sufficient for a Court to exercise personal jurisdiction. The second
category is “a middle ground where information can be exchanged between the
viewer and the host computer. In such a case, the court examines the level of
interactivity and the commercial nature of the exchange of the information.” The
last category is where the defendant makes information available on an otherwise
passive website. A “passive website is insufficient to establish purposeful
availment for the purpose of due process.”
Visage Spa, LLC v. Salon Visage, Inc., No. 06-10756, 2006 WL 2130512, at *6 (E.D. Mich. July
28, 2006) (internal citations omitted) (internal footnotes omitted) (citation omitted). The Sixth
Circuit has expressed caution in relying on the existence of website as evidence of purposeful
availment because “[a]n Internet website by its very nature can be accessed internationally. . . .
The level of contact with a state that occurs simply from the fact of a website’s availability on
the Internet is therefore an ‘attenuated’ contact that falls short of purposeful availment.” Neogen
Corp., 282 F.3d at 890 (citation omitted). As a sister court noted:
those manufactured by the unilateral acts of the plaintiff, should be considered for due process
purposes. To hold otherwise would allow a plaintiff to manufacture jurisdiction over a nonresident defendant in any forum, regardless of how inconvenient, even when the defendant has
not purposefully directed any activity toward the forum state.” (citation omitted)). In the present
context the Court must construe the facts in the light most favorable to FOL. See Neogen Corp.
v. Neo Gen Screening, Inc., 282 F.3d 883, 887 (6th Cir. 2002) (citation omitted).
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Federal Courts seem to make their jurisdictional decisions based upon the amount
and nature of commercial activity the defendant engages in over the Internet. In
addressing interactive websites, “the exercise of jurisdiction is determined by
examining the level of interactivity and commercial nature of the exchange of
information that occurs on the website.”
Lexmark Int’l, Inc. v. Laserland, Inc., 304 F. Supp. 2d 913, 918 (E.D. Ky. 2004) (internal citation
omitted) (quoting Zippo Mfg. Co., 952 F. Supp. at 1124).
In this case, En Garde’s page on the myshopify.com web platform (which is hosted in
Canada) appears to be more of an active website where it seeks to sell its goods to customers
throughout the United States and potentially around the world. (Filteau Decl. ¶ 2). That alone,
however, is not enough because there is no evidence that “the website is interactive to a degree
that reveals specifically intended interaction with residents of [] [Kentucky].” Neogen Corp.,
282 F.3d at 890 (citing Zippo Mfg. Co., 952 F. Supp. at 1124).
According to En Garde, its total sales between May 2016 and June 2017 amount to
$3,760. (Filteau Decl. ¶ 4). As discussed above, it appears undisputed that En Garde’s sole prelitigation sale was for one t-shirt mailed to a purchaser in Sturgis, Kentucky. (Pl.’s Resp. Def.’s
Mot. Dismiss Ex. H). Besides its web presence, there is no evidence that En Garde has had any
other interactions with Kentucky residents. Thus, this isolated sale drastically differs from
conduct reflecting purposeful availment by En Garde in Kentucky sufficient to authorize
personal jurisdiction consistent with the requirements of due process.
The Sixth Circuit’s decision in Kerry Steel, Inc. v. Paragon Industries, Inc., 106 F.3d 147
(6th Cir. 1997), is instructive. Kerry Steel, a Michigan steel service center, contacted a Paragon
Industries, an Oklahoma pipe fabricator, offering to sell approximately $300,000 in steel coils.
See id. at 148. After the parties engaged in negotiations via telephone and fax, and the buyer
accepted the offer via telephone. See id. The goods were delivered to the Paragon Industries’
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warehouse in Illinois. See id. After the buyer refused to pay for the goods due to an issue with
their quality, Kerry Steel filed suit in state court in Michigan. See id. Following the removal of
the case to federal court, Paragon Industries moved to dismiss the claims due to lack of personal
jurisdiction. See id. After the trial court dismissed the claims, Kerry Steel appealed. In
affirming the dismissal and addressing the lack of purposeful availment by Paragon Industries,
the Sixth Circuit explained:
On the facts presented here, we think it clear that the plaintiff has not made a
prima facie showing that the defendant purposefully availed itself of the benefits
and protection of Michigan’s law. Paragon has no employees or offices in
Michigan, and there has been no showing that any Paragon employee has ever
been in Michigan for the purpose of conducting business there. It was Kerry Steel
that initially contacted Paragon in Oklahoma—and Paragon responded without
leaving home, as it were. The Supreme Court has “emphasized that parties who
‘reach out beyond one state and create continuing relationships and obligations
with citizens of another state’ are subject to regulation and sanctions in the other
State for the consequences of their activities.” Kerry Steel may or may not have
reached out to Oklahoma, but in no way has it been shown that Paragon reached
out to Michigan.
The mere fact that Paragon entered into a contract with a Michigan corporation
does not mean that Paragon purposefully availed itself of the “benefits and
protections” of Michigan law. As the Court explained in [Burger King Corp. v.
Rudzewicz, 471 U.S. 462 (1985)], “an individual’s contract with an out-of-state
party alone” cannot “automatically establish minimum contacts.”
It is immaterial that Paragon placed telephone calls and sent faxes to Kerry Steel
in Michigan. To borrow language employed by this court in [LAK, Inc. v. Deer
Creek Enterprises, 885 F.2d 1293 (6th Cir. 1989)], “[t]he telephone calls and
letters on which the plaintiff’s claim of jurisdiction primarily depends strike us as
precisely the sort of ‘random,’ ‘fortuitous’ and ‘attenuated’ contacts that the
Burger King Court rejected as a basis for haling non-resident defendants into
foreign jurisdictions.”
Not only was there no “reaching out” by Paragon to the Michigan plaintiff, we
have been given no reason to believe that Paragon intended to establish
“continuing relationships and obligations” in Michigan. This is not a case like
Lanier v. American Bd. of Endodontics, 843 F.2d 901, 911 (6th Cir.), cert. denied,
488 U.S. 926, 109 S. Ct. 310, 102 L. Ed. 2d 329 (1988), where the court upheld
Michigan’s exercise of jurisdiction over an out-of-state defendant on the ground
that the “object of the [defendant’s] contacts with Michigan [was] to have
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ongoing, far-reaching consequences in the Michigan dental services market.” The
purchase agreement between Paragon and Kerry Steel represents nothing more
than an isolated transaction, as far as the record discloses. There is no indication
in the record that Paragon intended to create an ongoing relationship in Michigan
with Kerry Steel.
Id. at 151 (internal citations omitted).
The lack of purposeful availment by En Garde in this case is analogous to this Court’s
earlier decision in Advanced Solutions Life Sciences, LLC v. BioBots, Inc., No. 3:16-CV-00709CRS, 2017 WL 2114969 (W.D. Ky. May 15, 2017). In Advanced Solutions, the defendant, a
startup company called BioBots, Inc. (“BioBots”), developed 3D bioprinters using the BIOBOTS
mark.
See id. at *1.
The use of that mark, however, allegedly infringed upon a
BIOASSEMBLYBOT mark owned by Advanced Solutions Life Sciences, LLC (“ASLS”). See
id. BioBots sales to Kentucky residents consisted of one printer to a researcher at the University
of Louisville3 and some laboratory materials via BioBots’ website. See id. at 2. ASLS filed suit
in this district alleging, inter alia, trademark infringement under the Lanham Act. See id. at *12.
After being served with service of process, BioBots moved to dismiss the lawsuit due to
lack of personal jurisdiction. See id. at *1. This Court concluded that BioBots’ sale to Kentucky
fell within KRS 454.210(2)(a)(2) and that ASLS’s claims against BioBots had a direct and
reasonable nexus to BioBots’ sales to Kentucky residents. See id. at *3-4. In analyzing the due
process requirement, however, this Court concluded that exercising personal jurisdiction over
BioBots would violate its federal due process rights. See id. at 7. In reaching that conclusion,
this Court reasoned:
3
While BioBots had a website from which its printers could be purchased, the Kentucky sale
occurred following e-mail and telephone correspondence between BioBots and the purchaser.
See id. at *2.
10
Courts have repeatedly held that as little as a single transaction can establish
purposeful availment, particularly in cases involving a non-resident seller and a
resident buyer. But the crucial distinction appears to be who reached out to
whom.
This case is distinguishable from the cases in which courts have found specific
jurisdiction. BioBots has not welcomed the business of Kentucky residents on a
regular basis, as was the case in Neogen where the defendant expected about
fourteen contracts in the forum state every year. Rather, BioBots has only sold
products to two Kentucky residents. This case is more like Kerry Steel, in which
the plaintiff initiated the contact, the subject contract was an isolated transaction,
and the defendant showed no intention of establishing continuing relationships in
the forum state. Here, the customers reached out to BioBots to initiate these sales.
The University of Louisville researcher initiated contact with BioBots when he
sent it an email a few days after seeing a BioBots 3D bioprinter at a conference in
Boston, Massachusetts. The Kentucky resident who purchased laboratory
materials did so through BioBots’ website, which can be accessed internationally
and does not direct its content toward Kentucky residents in particular. “That the
buyer’s home state was Kentucky is a purely fortuitous consequence, not a
purposeful choice” of BioBots. Moreover, each sale was an isolated transaction,
rather than a continuing contract for goods or services that would intertwine
BioBots with Kentucky.
Id. at *6 (internal citations omitted) (citation omitted).
The case sub judice appears indistinguishable from Advanced Solutions. En Garde did
not engage in business with Kentucky residents on a regular basis, but only had one order
shipped to a Kentucky resident prior to this lawsuit. The sale was initiated by one buyer on En
Garde’s web page, which unquestionably constitutes an isolated transaction.
There is no
evidence to show that this sale was intended to establish an ongoing relationship between En
Garde and the purchaser.
11
While not referenced by FOL as the Calder effects test,4 it argues that “En Garde has also
availed itself of the privilege of acting in Kentucky because it has aimed its willful trademark
infringement at [FOL] in [FOL]’s principal place of business in Kentucky.” (Pl.’s Resp. Def.
Mot. Dismiss 13).
This test “requires that the out-of-forum defendant purposely direct
intentional tortious conduct toward the forum states with the intent to cause harm within the
forum state.” QSR Automations, 2010 WL 1416700, at *3. “[A] plaintiff can establish personal
jurisdiction when it alleges that the defendant ‘expressly aimed’ tortious conduct at the forum in
question and the ‘brunt of the harm’ is felt there.” Carrier Corp. v. Outokumpu Oyj, 673 F.3d
430, 451 (6th Cir. 2012) (citing Calder, 465 U.S. at 789). The Sixth Circuit has read this test
narrowly, and “the mere allegation of intentional tortious conduct which has injured a forum
resident does not, by itself, always satisfy the purposeful availment prong.” Mammoth Resource
Partners, Inc. v. Phoenix Drilling, Inc. No. 1:10CV-36-M, 2010 WL 2651079, at *3 (W.D. Ky.
June 30, 2010) (internal quotation marks omitted) (citing Air Prods. & Controls, Inc., 503 F.3d
at 552).
In Advanced Solutions, this Court also rejected the application of the Calder effects test to
prove purposeful availment. See Advanced Sols., 2017 WL 2114969, at *5-6. Because the Court
4
This test was recognized by the Supreme Court in Calder v. Jones, 465 U.S. 783 (1984). This
Court has previously described facts supporting the application of the test in that case as follows:
[T]wo Florida newsmen allegedly defamed actress Shirley Jones, in a Floridabased tabloid, the National Inquirer. Personal jurisdiction was found over the
defendants in California, despite their lack of activity there. Shirley Jones, a
resident of California, was their target, and thus they intended to harm her there.
Her career was based in California, and thus all injury to her professionally would
occur in California. Also, it was shown that the National Inquirer’s circulation
was greatest in California.
QSR Automations, Inc. v. KRS Corp. LLC, No. 3:09CV-242-S, 2010 WL 1416700, at *3 (W.D.
Ky. Mar. 31, 2010).
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views the facts of Advanced Solutions as very similar to the present case, the Court likewise
concludes that Calder effects test does not alter this Court’s conclusion that it lacks personal
jurisdiction over En Garde. See also QSR Automations, 2010 WL 1416700, at *4 (rejecting the
application of the Calder effects test because “[t]he problem is that there have been no
‘minimum contacts’ with Kentucky so that the exercise of jurisdiction over [the defendant]
would not offend ‘traditional notions of fair play and substantial justice.’” (quoting Int’l Shoe
Co., 326 U.S. at 316)). As in Advanced Solutions, there is no evidence that En Garde “expressly
aimed” its actions at Kentucky or that Kentucky was the “focal point” of En Garde’s allegedly
wrongful conduct and the resulting harm. See Advanced Sols., 2017 WL 2114969, at *6-7.
For these reasons, FOL has failed to meet its burden of proving purposeful availment.
Because that requirement has not been satisfied, it is unnecessary for the Court to address
whether FOL’s claims arise from En Garde’s activities and whether the exercise of jurisdiction
over En Garde would be reasonable under these circumstances.
B.
Plaintiff’s Motion for Preliminary Injunction
FOL has also moved for a preliminary injunction to preclude En Garde from infringing
on FOL’s trademarks. Because the Court lacks personal jurisdiction over En Garde, the Court
will deny this motion as moot.
C.
Plaintiff’s Motion for Leave to File Sur-Reply
Finally, FOL has moved for leave to file a sur-reply. (Pl.’s Mot. Leave File Sur-Reply,
DN 25). “As many courts have noted, ‘[s]ur-replies . . . are highly disfavored, as they usually
are a strategic effort by the nonmoving party to have the last word on a matter.” Liberty Legal
Found. v. Nat’l Democratic Party of the USA, Inc., 875 F. Supp. 2d 791, 797 (W.D. Tenn. 2012)
(citation omitted).
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FOL incorrectly asserts that its sur-reply is necessary because of new arguments raised by
En Garde, the Court disagrees. In its reply, En Garde addressed an exhibit provided in FOL’s
response upon which FOL relied in encouraging the Court’s exercise of personal jurisdiction
over En Garde. While FOL is critical of En Garde’s reply, its reply “is entirely consistent with
the proper purpose of a reply brief, to address the opposing party’s arguments raised in a
response brief.” Liberty Legal Found., 875 F. Supp. 2d at 797-98. Through its proposed surreply FOL seeks leave to respond on that issue,5 which is viewed as an inappropriate attempt to
have a last word on the issue. FOL’s motion to file its sur-reply is denied.
IV.
CONCLUSION
For the foregoing reasons, IT IS HEREBY ORDERED as follows:
1.
Defendant’s Motion to Dismiss (DN 15) is GRANTED;
2
Plaintiff’s Motion for Preliminary Injunction (DN 4) is DENIED AS MOOT;
3.
Plaintiff’s Motion for Leave to File a Sur-Reply (DN 25) is DENIED.
Greg N. Stivers, Judge
United States District Court
August 25, 2017
cc:
counsel of record
5
During the telephonic conference on August 16, 2017, counsel for both parties made arguments
about the subject transaction. Thus, even without the sur-reply, the Court is familiar with the
parties’ respective positions on the issues relating to this transaction.
14
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