JL POWELL CLOTHING LLC v. POWELL et al

Filing 58

ORDER ON DEFENDANTS MOTION TO DISMISS OR TRANSFER VENUE denying 49 Motion to Dismiss; denying 49 Motion to Change Venue By JUDGE NANCY TORRESEN. (dfr)

UNITED STATES DISTRICT COURT
DISTRICT OF MAINE
JL POWELL CLOTHING LLC and
JL POWELL LLC,

)
)
)
Plaintiffs
)
v.
)
)
JOSHUA L. POWELL,
) Civil No. 2:13-CV-00160-NT
Individually and doing business as
)
THE FIELD, doing business as
)
FIELD OUTFITTING, doing business )
as FIELD OUTFITTING COMPANY, )
)
Defendant. )
ORDER ON DEFENDANT’S MOTION TO DISMISS OR TRANSFER VENUE
Before the Court is the Defendant’s motion to dismiss or transfer this action
(ECF No. 49). The Court held oral argument on this motion on June 13, 2013. For
the following reasons, the Defendant’s motion is denied.
Procedural History1
This case began on April 25, 2013, with the filing of a complaint (ECF No. 1)
and motion for temporary restraining order and preliminary injunction by JL
Powell Clothing LLC against Joshua L. Powell, individually and d/b/a The Field
Outfitting Company, and Brownells, Inc., also d/b/a The Field Outfitting Company
(ECF No. 3). The complaint alleged trademark infringement and breach of contract
claims and sought specific enforcement of a contract provision. The motion for
The names in this case are confusingly similar. The Court will refer to the Plaintiffs by their
full names: JL Powell Clothing LLC and JL Powell LLC. The Defendant, Joshua L. Powell, will be
referred to as “Powell.” Powell’s former company, JL Powell Inc., will be referred to by its full name.
The catalog – once owned by JL Powell Inc. and now owned by JL Powell Clothing LLC – will be
referred to as “J.L. Powell.”
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temporary restraining order and preliminary injunction seeks to enjoin Powell from
any further use of his name and endorsement in connection with his new company.
On May 10, 2013, the Defendant filed a motion to dismiss or transfer venue (ECF
No. 33) arguing that the Court lacked personal jurisdiction over Powell, claiming
that the complaint failed to allege that JL Powell Clothing LLC had standing to
enforce the contracts at issue, and arguing that the complaint failed to state a
claim. On May 31, 2013, Plaintiff JL Powell Clothing LLC filed an Amended
Complaint (ECF No. 39), which added JL Powell LLC as a plaintiff and dismissed
Brownells, Inc. as a defendant. The Amended Complaint eliminated the breach of
contract claims and added factual allegations. On June 10, 2013, the Defendant
filed a second motion to dismiss or transfer the Amended Complaint that is now
before the Court.
Background
The following facts are taken from the Amended Complaint. JL Powell
Clothing, LLC is a catalog and e-commerce company that distributes the J.L. Powell
catalog, which offers for sale the J.L. Powell line of high-end sportswear and
accessories. Powell built the J.L. Powell catalog around his name and image. He
was its sole model, and his catalogs often contained personal messages signed by
him. Am. Compl. ¶¶ 8, 11.
In 2010, a group of investors organized a company called Blue Highways III
LLC (“Blue Highways”) to invest in and acquire J.L. Powell, Inc. Id. ¶ 14. A twostep contribution transaction effected the acquisition. First, Blue Highways

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contributed $2.5 million to a new entity, JL Powell LLC, of which Blue Highways
was the sole member. Second, JL Powell Inc. contributed all of its assets to JL
Powell LLC pursuant to two agreements: a Contribution Agreement and a Bill of
Sale and Assignment Agreement. Id. ¶ 16.
Section 7.1(b) of the Contribution Agreement provides:
In connection with this Agreement and the transfer and assignment by
[JL Powell Inc.] of all [JL Powell Inc.] Intellectual Property to [JL
Powell LLC], Joshua L. Powell (the “Founder”) hereby grants to [JL
Powell LLC] throughout the world the sole and exclusive right, license,
and permission to use his name and endorsement to exploit, turn to
account, advertise, and otherwise profit from [JL Powell LLC’s] goods
and services bearing such name, image, and/or endorsement. The
grant made hereunder shall be exclusive to [JL Powell LLC], and the
Founder agrees that he shall not, on behalf of himself or any other
person or entity, grant any similar right of any kind in connection with
any business competitive in any respect with [JL Powell LLC] or any of
its affiliates and/or subsidiaries.
Id. ¶ 20. For this provision, Powell executed the Contribution Agreement in his
personal capacity. Id. He also entered into an Employment Agreement with JL
Powell LLC to stay on as chief executive officer. Id. ¶ 30.
In May of 2010, following the acquisition, JL Powell LLC filed applications
with the United States Patent and Trademark Office to register the marks “J.L.
Powell” and “The Sporting Life.” The marks were registered on January 11, 2011,
and April 5, 2011, respectively. Id. ¶¶ 22, 26.
On April 2, 2012, JL Powell LLC’s board terminated Powell’s employment,
and Powell and JL Powell LLC executed a Separation Agreement and Release. Id. ¶
30.

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Also in 2012, JL Powell LLC defaulted on loans made to it by Blue Highways
which were secured by JL Powell LLC’s assets. On January 31, 2013, Blue
Highways accepted all of JL Powell LLC’s assets in full satisfaction of its debts.
Blue Highways contributed all of JL Powell LLC’s assets to JL Powell Clothing
LLC, a new of which Blue Highways was the sole member. Id. ¶¶ 31-32.
The Amended Complaint alleges that sometime before April of 2013, Powell
began a catalog and e-commerce company called “The Field,” which sells high-end
clothing and accessories. Sometime around the first week of April, The Field began
distributing catalogs to customers nationwide, including some J.L. Powell
customers. Id. ¶¶ 33, 34, 36. The Field also launched its e-commerce website, which
allows customers to download a digital version of the catalog and order products.
The website allegedly uses “JL Powell” and “the sporting life” as meta-tags.2 Id. ¶¶
35, 40.
The Amended Complaint alleges that The Field catalog and website use
Powell’s name, endorsement, and image to advertise and promote The Field’s goods.
The cover of The Field’s first catalog bears the name “J. Powell.” Id. ¶ 38. One of
The Field’s suppliers, Rancourt & Co. (“Rancourt”), based in Lewiston, Maine,
posted on its website an interview with Michael Rancourt, President of Rancourt,
which was filmed by The Field. Id. ¶ 49. Alongside the link to the interview was the
following text: “The Field is a new catalog and ecommerce outfitter specializing in
high end goods for the sporting life. We are happy to be part of this new venture
A meta-tag is: “An HTML tag that contains descriptive information about a webpage and
does not appear when the webpage is displayed in a browser.” The American Heritage Dictionary
1106 (5th ed. 2011).
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from Josh Powell, the man behind the JL Powell company.” Id. The Amended
Complaint alleges that Powell permitted Rancourt to use his name on the Rancourt
website and that The Field’s website posted a link to the Rancourt website. Id.
J.L. Powell started to receive emails from customers asking whether The
Field is a new J.L. Powell catalog because they noticed Powell’s name and image in
The Field catalog and on The Field’s website. Some customers complained about the
sloppy quality of The Field. Id. ¶ 50.
Discussion
The Defendant moves to dismiss the Amended Complaint for lack of subject
matter jurisdiction under Federal Rule of Civil Procedure 12(b)(1) because the
Plaintiffs lack standing to bring their claims, for lack of personal jurisdiction under
Rule 12(b)(2), and for failure to state a claim under Rule 12(b)(6). The Defendant
also requests that this Court transfer this action to the Northern District of Illinois
under 28 U.S.C. § 1404(a). The Court will address each of these arguments in turn.
I.

Standing
The Defendant argues that the Plaintiffs lack standing to sue him. He claims

that JL Powell LLC could not have assigned its rights to use his name and
endorsement to JL Powell Clothing LLC, because the Contribution Agreement
requires his prior written consent to any assignment of JL Powell LLC’s rights. The
Defendant argues that because JL Powell LLC is an empty shell, it cannot enforce
the Contribution Agreement either. Finally, the Defendant argues that the

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Amended Complaint insufficiently alleges JL Powell Clothing LLC’s ownership of
the registered trademarks “J.L. Powell” and “The Sporting Life.”
A. Legal Standard
Federal Rule of Civil Procedure 17(a)(1) requires that actions be “prosecuted
in the name of the real party in interest.” “The effect of this passage is that the
action must be brought by the person who, according to the governing substantive
law, is entitled to enforce the right.” 6A Charles Alan Wright, Arthur R. Miller &
Mary Kay Kane, Federal Practice and Procedure § 1543 (3d ed. 2010).
In an action involving an assignment, the court typically must consider
two issues. First, it must determine exactly what has been assigned to
make certain that the plaintiff-assignee is the real party in interest
with regard to the particular claim involved in the action. . . . Second,
the court must assure itself that a valid assignment has been made.
Id. at § 1545.
B. Plaintiffs’ Standing to Enforce the Contribution Agreement
Even if the Defendant is correct that JL Powell LLC could not assign its
rights under Section 7.1(b) to JL Powell Clothing LLC, the Amended Complaint
does not allege that JL Powell LLC has been dissolved. JL Powell LLC thus still has
the power to bring suits, see Del. Code Ann. Tit. 6, § 18-106, and has standing to
enforce Section 7.1(b).
C. Plaintiffs’ Standing to Enforce the Trademarks
The Lanham Act provides that trademarks “shall be assignable with the good
will of the business in which the mark is used . . . .” 15 U.S.C. § 1060. The Amended
Complaint alleges that JL Powell LLC registered the “J.L. Powell” and “The

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Sporting Life” trademarks. It further alleges that in January of 2013, Blue
Highways accepted all of JL Powell LLC’s assets in full satisfaction of loans that it
made to JL Powell LLC, and that Blue Highways contributed all of the assets to JL
Powell Clothing LLC. The Amended Complaint thus clearly alleges that JL Powell
Clothing LLC currently owns the J.L. Powell and The Sporting Life trademarks and
has standing to enforce these marks.
II.

Personal Jurisdiction
The Defendant contends that this Court does not have specific personal

jurisdiction over him because he has had insufficient contacts with Maine, and this
Court’s exercise of personal jurisdiction over him violates the Due Process Clause of
the Fourteenth Amendment.
A.

Relevant Law

The due process clause imposes several requirements on the exercise of
personal jurisdiction over out-of-state defendants. First, the defendant
must have sufficient “minimum contacts” with the state. For specific
jurisdiction, the plaintiff’s claim must be related to the defendant’s
contacts.
Harlow v. Children’s Hosp., 432 F.3d 50, 57 (1st Cir. 2005). “An exercise of
jurisdiction must be authorized by state statute and must comply with the
Constitution. The Maine long arm statute extends ‘to the fullest extent permitted by
the due process clause of the United States Constitution.’ This leaves us with the
constitutional inquiry.” Id. (quoting 14 M.R.S.A. § 7045-A(1)).
The Due Process Clause requires that the Court’s assertion of personal
jurisdiction over the defendant comply with “traditional notions of fair play and

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substantial justice.” Int’l Shoe Co. v. Washington, 326 U.S. 310, 316 (1945).
Specifically, the Court’s “analysis under the Due Process Clause has three distinct
components: relatedness, purposeful availment, and reasonableness. An affirmative
finding on each of these elements is needed to support a specific jurisdiction
finding.” BlueTarp Fin., Inc. v. Matrix Constr. Co., Inc., 709 F.3d 72, 80 (1st Cir.
2013) (citation omitted).
The plaintiff bears the burden of proof on personal jurisdiction. BlueTarp,
709 F.3d at 79. “The most commonly used method of determining a motion to
dismiss for want of personal jurisdiction is for the district court to consider only
whether the plaintiff has proffered evidence that, if credited, is enough to support
findings of all facts essential to personal jurisdiction.” Boit v. Gar-Tec Prods., Inc.,
967 F.2d 671, 675 (1st Cir. 1992). This method requires that the plaintiff make a
prima facie showing that the Court has personal jurisdiction over the defendant. Id.
B.

The Factors
1. Relatedness

“To satisfy the relatedness prong, the cause of action must arise from or
relate to the defendant’s contacts with the forum state.” Bluetarp, 709 F.3d at 80.
The Plaintiffs have brought causes of action for trademark infringement and
specific performance of section 7.1(b) of the Contribution Agreement. These causes
of action are based on: (1) the first issue of The Field catalog which bears Powell’s
name on the front cover and uses Powell’s name and endorsement within; (2) The
Field website which uses Powell’s name and endorsement allows visitors to

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download a digital version of the catalog and uses “JL Powell” and “The Sporting
Life” as meta-tags; and (3) Rancourt’s post on its website and the link on The Field
website to Rancourt’s post.
The Plaintiffs proffered a declaration by Peter W. Culley, a resident of
Portland, Maine, who stated that on June 7, 2013, he received a copy of The Field
catalog. See Decl. of Peter W. Culley (ECF No. 50-1) (“Culley Decl.”). The cover of
the catalog attached as Exhibit 1 to Culley’s declaration does not contain Powell’s
name or endorsement, but Culley also states that he received issues of The Field
catalog earlier in 2013 and discarded them. Culley Decl. ¶ 4. The Court makes the
reasonable inference that Culley received the initial issue of The Field catalog that
contained Powell’s name and signature.
The Plaintiffs also have proffered a declaration of Joshua E. Spooner, a
Maine lawyer, who visited The Field’s website, looked at merchandise in the digital
version of The Field catalog, and purchased an item. Decl. of Joshua E. Spooner
(“Spooner Decl.”) ¶ 3 (ECF No. 41). After learning that the item he purchased was
out of stock, Spooner spoke to The Field on the phone and was recommended
another item, which he purchased and received at his home in Topsham, Maine. Id.
Screenshots of The Field website and the digital version of The Field catalog from
April 24, 2013, are attached to Spooner’s Declaration. Spooner Decl. Ex. 1, at 2-4
(ECF No. 41-1). One of the screenshots contains a small image of an issue of The
Field, which has “J. Powell” on its cover. Id. at 2. A second screenshot, which allows
the visitor to subscribe to The Field, download the digital version of The Field, and

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sign up to receive emails from The Field, also has an image of issue one of The
Field, with “J. Powell” on the cover. Id. at 3. And the digital version of the catalog
contains the introductory message signed by Powell. Id. at 4.
Finally, the Plaintiffs proffered evidence that on April 9, 2013, Rancourt
promoted on its website “this new venture from Josh Powell, the man behind the JL
Powell company,” and provided a link to The Field’s website, which Rancourt
removed at Powell’s direction after the Plaintiffs filed suit. Decl. of Michael
Rancourt (“Rancourt Decl.”) ¶¶ 9, 11 (ECF No. 40-1). “The Field Daily,” The Field’s
blog, featured the interview filmed in Lewiston, Maine at Rancourt and a link to the
Rancourt website. Rancourt Decl. ¶ 7, Ex. 2, at 6 (ECF No. 40-3). And The Field
catalog directed customers to “The Field Daily” for more information about
Rancourt, which would lead them to the link to the Rancourt website and its
reference to J.L. Powell. Rancourt Decl. Ex. 1, at 4 (ECF No. 40-2).
In McBee v. Delica Co., 417 F.3d 107 (1st Cir. 2005), and Cossaboon v. Maine
Medical Center, 600 F.3d 25 (1st Cir. 2010), the First Circuit addressed the impact of
a company’s website on the personal jurisdiction analysis. While the issue before
the Court in McBee was the extraterritorial reach of the Lanham Act, its analysis
drew upon personal jurisdiction case law. The Court observed:
To put the principle broadly, the mere existence of a website that is
visible in a forum and that gives information about a company and its
products is not enough, by itself, to subject a defendant to personal
jurisdiction in that forum.
Something more is necessary, such as interactive features which
allow the successful online ordering of the defendant’s products. The
mere existence of a website does not show that a defendant is directing
its business activities towards every forum where the website is
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visible; as well, given the omnipresence of Internet websites today,
allowing personal jurisdiction to be premised on such a contact alone
would “eviscerate” the limits on a state’s jurisdiction over out-of-state
or foreign defendants.
McBee, 417 F.3d at 124 (citations omitted) (quoting Jennings v. AC Hydraulic A/S,
383 F.3d 546, 549-50 (7th Cir. 2004)). In Cossaboon, the First Circuit examined
Maine Medical Center’s website as a basis for general jurisdiction in New
Hampshire and observed that “[i]n addressing what ‘more’ is required to support
the exercise of general jurisdiction based on website activity, courts have focused on
the extent to which the defendant has actually and purposefully conducted
commercial or other transactions with forum state residents through its website.”
Cossaboon, 600 F.3d at 35. The court decided that even though the hospital website
had some interactive features, it did not “sell or render services online. Instead, the
site is primarily informational and discusses the healthcare services provided at
MMC’s facility in Maine.” Id.
In Auburn Manufacturing, Inc. v. Steiner Industries, 493 F. Supp. 2d 123 (D.
Me. 2007), Auburn Manufacturing brought an action for false designation of origin,
trademark infringement, and deceptive trade practices, among other claims, against
Steiner Industries (“Steiner”), a competing manufacturer of welding supplies, and
W.W. Grainger, Inc. (“Grainger”), and Lab Safety Supply, Inc. (“Lab Safety”),
distributers of Steiner’s products. Auburn alleged that Grainger and Lab Safety
falsely advertised Steiner’s products as “FM approved,” a certification for products
that have passed vigorous safety tests, like Auburn’s products. Id. at 125-26.

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Steiner and Lab Safety moved to dismiss, arguing that the court lacked
personal jurisdiction over them. The court concluded that it had personal
jurisdiction over Lab Safety because Lab Safety’s website, which was accessible in
Maine, allowed customers to purchase products, Lab Safety distributed catalogs to
Maine, and Lab Safety derived 0.55% of its gross revenues from the sale of products
shipped to Maine. Id. at 128. Uncomfortable with deciding personal jurisdiction on
the basis of Lab Safety’s website alone without clear guidance from the First
Circuit, the court relied on Lab Safety’s distribution of catalogs to Maine to find
personal jurisdiction. Id. at 130. The court found that the relatedness prong was
satisfied because Lab Safety’s catalogs distributed in Maine contained the language
that allegedly falsely designated the products’ origin, and customers could order the
products through the catalog. Id.
Here we have a website that does business, and has done business in one case
in Maine, and distributes its catalog to customers in Maine. The Defendant argues
that in Auburn Manufacturing, the distributers were advertising and selling
allegedly infringing products to Maine, whereas here the alleged infringement is in
the catalog and website and not the products themselves. This distinction is
unpersuasive. The Court concludes that the Defendant’s allegedly infringing
conduct is sufficiently related to Maine.
2. Purposeful Availment
To satisfy the purposeful availment prong, a defendant’s contacts with the
forum state must “represent a purposeful availment of the privilege of conducting

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activities in the forum state, thereby invoking the benefits and protections of that
state’s laws and making the defendant’s involuntary presence before the state’s
courts foreseeable.” United Elec., Radio and Mach. Workers of Am. v. 163 Pleasant
St. Corp., 960 F.2d 1080, 1089 (1st Cir. 1992). “We have called it akin to a ‘rough
quid pro quo,’ that is, ‘when a defendant deliberately targets its behavior toward the
society or economy of a particular forum, the forum should have the power to
subject the defendant to judgment regarding that behavior.’” BlueTarp, 709 F.3d at
82 (quoting Carreras v. PMG Collins, LLC, 660 F.3d 549, 555 (1st Cir. 2011)). “In the
purposeful availment inquiry the focus is on the defendant’s intentions, and the
cornerstones are voluntariness and foreseeability.” BlueTarp, 709 F.3d at 82
(citations omitted). In Auburn Manufacturing, the court found purposeful availment
and explained:
While there is no evidence that any of the Steiner products that carried
the alleged false designation of origin were purchased in Maine, Lab
Safety advertised, promoted, and sold its products directly through its
catalogs to Maine residents. Lab Safety’s catalog distribution
constituted an offer to sell the falsely designated products in Maine
and a purposeful invocation by Lab Safety of the benefits and
protections provided by Maine. . . . Lab Safety has “availed” itself of
the Maine market by virtue of its catalog distribution and in sales
resulting from such catalog distribution. Therefore, it should not come
as a surprise to Lab Safety that it might be haled into court in this
forum based upon that activity.
Auburn Mfg., 493 F. Supp. 2d at 130 (citations omitted).
The Defendant advertises its products in Maine and sells its products in
Maine through its website and its catalog. The Court finds that the Defendant
directed The Field catalog to Maine thus advertising and promoting its products to

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Maine customers. The Plaintiff has proffered evidence of a sale by The Field to a
Maine customer and a conversation between the Maine customer and The Field.
The Field’s website is interactive and permits visitors to download a digital version
of the catalog, purchase products, view additional promotional content, request the
catalog, and sign up to receive the catalog in the mail and emails from The Field.
While the website alone is likely insufficient to establish relatedness or purposeful
availment, the website plus the catalog, plus the sale, plus The Field’s relationship
with Rancourt is sufficient to establish purposeful availment.
3. Reasonableness
“The final piece of the puzzle is that an exercise of jurisdiction must be
reasonable, in other words, consistent with principles of justice and fair play.”
BlueTarp, 709 F.3d at 83. The Court’s determination of reasonableness is guided by
the “gestalt factors.” Id. These five factors are:
(1) the defendant’s burden of appearing, (2) the forum state’s interest
in adjudicating the dispute, (3) the plaintiff’s interest in obtaining
convenient and effective relief, (4) the judicial system’s interest in
obtaining the most effective resolution of the controversy, and (5) the
common interests of all sovereigns in promoting substantive social
policies.
United Elec., Radio and Mach. Workers of Am., 960 F.2d at 1088. Appearing in
Maine does not place an undue burden on the defendant; this forum has as great of
an interest as any in protecting its residents; and the Plaintiffs will obtain
convenient and effective relief here. Factors four and five are neutral. The gestalt

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factors do not alter the Court’s conclusion that the Plaintiffs have made their prima
facie showing that the Court has personal jurisdiction over the Defendant.3
III.

Failure to State a Claim
Rule 8 of the Federal Rules of Civil Procedure requires that a complaint

contain “a short and plain statement of the claim showing that the pleader is
entitled to relief” and that “each allegation must be simple, concise, and direct.”
Fed. R. Civ. P. 8(a)(2) & 8(d)(1). A motion to dismiss under Rule 12(b)(6) tests
whether a plaintiff has alleged sufficient non-conclusory, non-speculative facts that
“plausibly narrate a claim for relief.” Schatz v. Republican State Leadership Comm.,
669 F.3d 50, 55 (1st Cir. 2012); see also Ashcroft v. Iqbal, 556 U.S. 662, 678-79
(2009). The Court takes all the complaint’s well-pled facts as true and draws all
reasonable inferences in the plaintiff’s favor. Schatz, 669 F.3d at 55.
The Amended Complaint brings three federal trademark infringement
claims: dilution of a famous mark under 15 U.S.C. § 1125(c), (Count I), unfair
competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), (Count II),
and trademark infringement under Section 32(1) of the Lanham Act, 15 U.S.C. §
1114(1), (Count III); two state trademark infringement claims: deceptive trade
practices under the Maine Uniform Deceptive Trade Practices Act, 10 M.R.S.A. §§
1211-1216, (Count IV), and trademark dilution under the Maine Anti-Dilution

The ultimate burden of proving this Court’s personal jurisdiction over the Defendant by a
preponderance of the evidence remains with the Plaintiffs. See Fed. R. Civ. P. 12(i); Boit, 967 F.2d at
676 (denying a 12(b)(2) motion to dismiss using the prima facie standard defers final determination
of the motion until trial).
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Statute, 10 M.R.S.A. § 1530, (Count V); and one claim for specific performance of
the Contribution Agreement (Count VI).
A. Unfair Competition and Trademark Infringement
(Counts II, III, and IV)
1. Relevant Trademark Law
Section 43(a) of the Lanham Act governs claims for infringement of
unregistered marks. It provides:
Any person who, in 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, which -(A) is likely to cause confusion, or to cause mistake, or to deceive
as to the affiliation, connection, or association of such person
with another person, or as to the origin, sponsorship, or approval
of his or her goods, services, or commercial activities by another
person . . .
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.
15 U.S.C. § 1125(a)(1).
Section 32(1) of the Lanham Act governs claims for infringement of registered
marks. It provides that:
Any person who shall, without the consent of the registrant-(a) use in commerce any reproduction, counterfeit, copy, or
colorable imitation of a registered mark in connection with the
sale, offering for sale, distribution, or advertising of any goods or
services on or in connection with which such use is likely to
cause confusion, or to cause mistake, or to deceive . . .
shall be liable in a civil action by the registrant for the remedies
hereinafter provided.
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15 U.S.C. § 1114(1).
The “false designation of origin” claim under section 43(a) is a close
cousin to a claim for infringement of a federally registered mark
authorized by section 32 of the Lanham Act, 15 U.S.C. § 1114. An
infringement claim under section 32 requires that the mark be a
federally registered trademark. But a section 43(a) claim . . . does not
require that the mark or name be federally registered, and is
commonly used to prevent infringement of unregistered trademarks.
PHC, Inc. v. Pioneer Healthcare, Inc., 75 F.3d 75, 78 (1st Cir. 1996) (citation
omitted).
Like the federal trademark infringement statutes, Maine’s Uniform
Deceptive Trade Practices Act, 10 M.R.S.A. §§ 1211-1216, provides injunctive relief
against a person who causes a “likelihood of confusion or of misunderstanding as to
the source, sponsorship, approval or certification of goods or services” or “as to
affiliation, connection or association with, or certification by, another.” 10 M.R.S.A.
§ 1212(1)(B)-(C); 10 M.R.S.A. § 1213 (injunctive relief).
“To succeed on a claim of trademark infringement, a plaintiff must establish
(1) that its mark is entitled to trademark protection, and (2) that the allegedly
infringing use is likely to cause customer confusion.” Boston Duck Tours, LP v.
Super Duck Tours, LLC, 531 F.3d 1, 12 (1st Cir. 2008); see also KP Permanent MakeUp, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 118 (2004). “Both registered and
unregistered trademarks may be eligible for protection against infringing uses.”
Borinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112, 116 (1st Cir. 2006).
“When a party seeks protection for an unregistered trademark, it is incumbent on
that party to demonstrate affirmatively that its mark is distinctive . . . . When a
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party seeks protection for a registered trademark, its burdens are lighter.
Registration is ‘prima facie evidence of the validity of the registered mark.’” Id.
(quoting 15 U.S.C. § 1115(a)).
To establish trademark infringement, a plaintiff must show “that the
allegedly infringing conduct carries with it a likelihood of confounding an
appreciable number of reasonably prudent purchasers exercising ordinary care.”
Int’l Ass’n of Machinists and Aerospace Workers, AFL-CIO v. Winship Green
Nursing Ctr., 103 F.3d 196, 201 (1st Cir. 1996). The First Circuit uses an eightfactor test to determine whether there is a likelihood of confusion. These factors,
sometimes referred to as the “Pignons factors,” are:
(1) the similarity of the marks, (2) the similarity of the goods, (3) the
relationship between the parties’ channels of trade, (4) the relationship
between the parties’ advertising, (5) the classes of prospective
purchasers, (6) the evidence of actual confusion, (7) the defendant’s
intent in adopting the mark and (8) the strength of the plaintiff’s
mark.
Swarovski Aktiengesellschaft v. Building No. 19, Inc., 704 F.3d 44, 49 n.2 (1st Cir.
2004) (citing Pignons S.A. Mecanique de Precision v. Polaroid Corp., 657 F.2d 482,
487-91 (1st Cir. 1981)). “These factors are not to be applied mechanically. Courts
may consider other factors and may accord little weight to factors that are not
helpful on the particular facts of a case.” Beacon Mut. Ins. Co. v. OneBeacon Ins.
Grp., 376 F.3d 8, 15 (1st Cir. 2004).
2. The Amended Complaint’s Allegations
The Amended Complaint alleges that both J.L. Powell and The Field sell and
advertise high-end sportswear and accessories to a niche market. It alleges that
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both companies advertise and sell their products through their catalogs and
corresponding e-commerce websites. The Amended Complaint alleges that the front
cover of the first issue of The Field bears the name “J. Powell,” and The Field’s
website uses “JL Powell” and “The Sporting Life” as meta-tags. The Amended
Complaint also alleges that since the first issue of The Field catalog was mailed to
customers, customers have contacted JL Powell Clothing LLC asking whether The
Field is a J.L. Powell catalog because they noticed that Powell’s name and image
appear in The Field. These factual allegations are sufficient to state a claim for
trademark infringement under both federal and state law.
B.

The Fair Use Defense

The Defendant claims that the allegations in the Amended Complaint
establish that the Lanham Act’s fair use defense applies. The Lanham Act provides
the following defense:
That the use of the name, term, or device charged to be an
infringement is a use, otherwise than as a mark, of the party’s
individual name in his own business or of the individual name of
anyone in privity with such party, or of a term or device which is
descriptive of and used fairly and in good faith only to describe the
goods or services of such party, or their geographic origin . . . .
15 U.S.C. § 1115(b)(4). “[A] properly raised affirmative defense can be adjudicated
on a motion to dismiss so long as (i) the facts establishing the defense are
definitively ascertainable from the complaint and the other allowable sources of
information, and (ii) those facts suffice to establish the affirmative defense with
certitude.” Rodi v. S. New Eng. Sch. Of Law, 389 F.3d 5, 12 (1st Cir. 2004). The
allegations in the Amended Complaint do not establish with certitude that Powell
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can avail himself of the fair use defense. The Amended Complaint alleges that
Powell sold the exclusive right to use his name and endorsement to JL Powell LLC,
agreed that he would not use or permit anyone else to use his name or endorsement
in business competitive with JL Powell LLC, and agreed that he would not assert
his right to use his name under the doctrine of fair use. The Amended Complaint
does not establish the fair use defense with certitude, and the Plaintiffs’ trademark
infringement claims cannot be dismissed on this ground.
B. Trademark Dilution (Counts I and V)
The Trademark Dilution Revision Act provides injunctive relief to “the owner
of a famous mark that is distinctive, inherently or through acquired distinctiveness”
against
another person who, at any time after the owner’s mark has become
famous, commences use of a mark or trade name in commerce that is
likely to cause dilution by blurring or dilution by tarnishment of the
famous mark, regardless of the presence or absence of actual or likely
confusion, of competition, or of actual economic injury.
15 U.S.C. § 1125(c)(1). It states that
a mark is famous if it is widely recognized by the general consuming
public of the United States as a designation of source of the goods or
services of the mark’s owner. In determining whether a mark possesses
the requisite degree of recognition, the court may consider all relevant
factors, including the following:
(i) The duration, extent, and geographic reach of advertising and
publicity of the mark, whether advertised or publicized by the
owner or third parties.
(ii) The amount, volume, and geographic extent of sales of goods
or services offered under the mark.
(iii) The extent of actual recognition of the mark.
(iv) Whether the mark was registered . . . on the principal
register.
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15 U.S.C. §§ 1125(c)(2)(A).
Section 1125(c) defines “dilution by blurring” as “association arising from the
similarity between a mark or trade name and a famous mark that impairs the
distinctiveness of the famous mark.” 15 U.S.C. § 1125(c)(2)(B).
In determining whether a mark or trade name is likely to cause
dilution by blurring, the court may consider all relevant factors,
including the following:
(i) The degree of similarity between the mark or trade name and
the famous mark.
(ii) The degree of inherent or acquired distinctiveness of the
famous mark.
(iii) The extent to which the owner of the famous mark is
engaging in substantially exclusive use of the mark.
(iv) The degree of recognition of the famous mark.
(v) Whether the user of the mark or trade name intended to
create an association with the famous mark.
(vi) Any actual association between the mark or trade name and
the famous mark.
15 U.S.C. §§ 1125(c)(2)(B).
Maine’s anti-dilution statute states:
Likelihood of injury to business reputation or of dilution of the
distinctive quality of a mark registered under this chapter, or a mark
valid at common law, or a trade name valid at common law, shall be a
ground for injunctive relief notwithstanding the absence of competition
between the parties or the absence of confusion as to the source of
goods or services.
10 M.R.S.A. § 1530.
The Amended Complaint alleges that the “J.L. Powell” mark was registered
on January 11, 2011, and “The Sporting Life” was registered on April 5, 2011. It
alleges that both marks have been used since March of 2006 to market and sell

21

goods to customers throughout the United States. And it alleges that the volume of
the goods sold under the marks since 2006 is approximately $40 million. At this
stage of the proceedings, these allegations are sufficient to establish that the marks
are famous.
Count I asserts only dilution by blurring. The Amended Complaint alleges
that the Defendant began The Field on April 9, 2013, after “J.L. Powell” and “The
Sporting Life” became famous. It alleges that The Field uses “J. Powell” on its front
cover, and Powell’s signature appears in the issue. The Court can reasonably infer
from the federal registration of “J.L. Powell” that JL Powell Clothing LLC’s use of
the mark has been substantially exclusive. The Amended Complaint alleges that
there is no association between The Field and JL Powell Clothing LLC, and the
Court can reasonably infer from Powell’s use of his name, image, and endorsement
in The Field Powell’s intent to create an association between his new venture and
his previous catalog company. Taking all the facts in the Amended Complaint as
true and making all reasonable inferences in the Plaintiffs’ favor, the Amended
Complaint alleges sufficient facts to state a claim for trademark dilution by blurring
under 15 U.S.C. § 1125(c) and dilution under 10 M.R.S.A. § 1530.
C. Specific Performance of the Contribution Agreement
(Count VI)
The Defendant argues that the Plaintiffs have failed to state a claim for
specific performance of Section 7.1(b) of the Contribution Agreement because (1)
Powell is not in any “business competitive” with JL Powell LLC, (2) the
Contribution Agreement is unenforceable because it was superseded by later
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agreements, and (3) Section 7.1(b) of the Contribution Agreement is unenforceable
because it is terminable at will. These arguments are unpersuasive.
1. Competitive Business
In Section 7.1(b), Powell agreed:
The grant made hereunder shall be exclusive to [JL Powell LLC], and
the Founder agrees that he shall not, on behalf of himself or any other
person or entity, grant any similar right of any kind in connection with
any business competitive in any respect with [JL Powell LLC] or any of
its affiliates and/or subsidiaries.
Am. Compl. ¶ 20. The Amended Complaint alleges that JL Powell LLC and JL
Powell Clothing LLC are affiliated companies “[b]y virtue of common and
overlapping ownership and control”; and it alleges that Blue Highways is the sole
member of both JL Powell LLC and JL Powell Clothing LLC. The Amended
Complaint also alleges that “The Field catalog and website are targeted at precisely
the same customers as JL Powell—high end goods for the sporting life. The Field
catalog has been distributed to some of JL Powell’s customers.” Am. Compl. ¶ 36.
The Amended Complaint sufficiently alleges that Powell’s uses of his name and
endorsement in The Field are in connection with a business that is competitive with
JL Powell LLC’s affiliate, JL Powell Clothing LLC.
2. Supersession
The Defendant argues that the Plaintiffs fail to state a claim for specific
performance for Section 7.1(b) of the Contribution Agreement because the
Contribution Agreement was superseded by Powell’s Employment and Separation
Agreements. These agreements are referenced in the Amended Complaint, but the

23

substance of the agreements that the Defendant relies upon in his brief are not part
of the Amended Complaint. For purposes of the Defendant’s motion to dismiss for
failure to state a claim, the Court declines to look beyond the allegations of the
Amended Complaint to consider the Employment and Separation Agreements. The
Court defers its consideration of the Defendant’s argument that the Contribution
Agreement is superseded to its decision on the Plaintiffs’ motion for preliminary
injunction where the Court has the benefit of a more developed record.
3. Terminable at Will
The Defendant argues that JL Powell LLC cannot enforce 7.1(b) of the
Contribution Agreement because it is a license of unspecified duration and therefore
terminable at will, citing Delaware Financial Management Corp. v. Vickers, No.
Civ.A. 96C-10-032, 1999 WL 458633 (Del. Super. Ct. June 9, 1999). The Defendant’s
argument is unpersuasive. Vickers stands for the proposition that a personal
services contract is terminable at will.4

Section 7.1(b) is not an agreement for

services; Vickers is entirely distinguishable. The Defendant refers to Section 7.1(b)
as a license. To the extent that there is authority that establishes that a license is
terminable at will if of unspecified duration, the Defendant has not cited it, and the
Court is not inclined to research the matter on the Defendant’s behalf.
4. Defendant’s Motion to Transfer Venue
In Vickers, Charles and Frances Vickers contracted with Delaware Financial Management
Corporation (“DFMC”) to help them get financing to save their convenience stores. Their agreement
with DFMC did not have a duration term and provided that DFMC would receive payment when it
secured financing for the Vickers. Id. at *3. Ultimately, DFMC failed to find any financing for the
Vickers, the Vickers sold their boat to free up some funds to save their stores and terminated their
relationship with DFMC, and DFMC sued. Id. at *3-4. The court held that the Vickers were within
their rights to unilaterally terminate the contract with DFMC because personal services contracts
are terminable at will. Id. at *7.
4

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Finally, the Court turns to the Defendant’s motion to transfer venue. The
Defendant has moved to transfer this case to the Northern District of Illinois under
28 U.S.C. § 1404(a), which states:
For the convenience of parties and witnesses, in the interest of justice,
a district court may transfer any civil action to any other district or
division where it might have been brought or to any district or division
to which all parties have consented.
Venue is appropriate in a district in which “a substantial part of the events or
omissions giving rise to the claim occurred,” 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)(2)-(3). “Section 1404(a) is intended to place
discretion in the district court to adjudicate motions for transfer according to an
‘individualized, case-by-case consideration of convenience and fairness.’ A motion to
transfer under § 1404(a) thus calls on the district court to weigh in the balance a
number of case-specific factors.” Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 29
(1988) (quoting Van Dusen v. Barrack, 376 U.S. 612, 622 (1964)). The party seeking
transfer to another venue bears the burden of proof, and there is a strong
presumption in favor of the plaintiff’s choice of forum. Coady v. Ashcraft & Gerel,
223 F.3d 1, 11 (1st Cir. 2000). In addition to the convenience of the parties and
witness, other considerations in § 1404(a) decisions can include: (1) where the claim
arose; (2) the location of evidence; (3) judicial economy; (4) the local interest of the

25

home forum; (5) the relative congestion of the courts;5 (6) the first-filed rule,6 and (7)
the parties’ contractual agreements.7
The Defendant points to the Separation Agreement, which the Defendant
claims provides that the parties will subject any claim under the Agreement –
except for claims by JL Powell LLC for injunctive or equitable relief – to arbitration
in Chicago. Count VI is brought under the Contribution Agreement, not the
Separation Agreement, and this action is for injunctive relief. The Court gives the
arbitration clause in the Separation Agreement no weight in its analysis.
There is no evidence that litigating this action in Chicago will be more
convenient to anyone other than the Defendant’s Chicago-based counsel. Attorneys’
convenience may not play a role in the Court’s determination. See 28 U.S.C. §
1404(a). The Defendant resides in Michigan, and while certainly Chicago is more
convenient to Michigan than Portland, Maine, it is not enough to overcome the
Plaintiff’s choice of forum. The two witnesses at the preliminary injunction hearing
are Maine-based, and Maine is a convenient forum for them. Where the claim arose
and the location of evidence are neutral factors, as is the home forum’s interest and
the relative congestion of the two districts. The Defendant has filed a mirror-image
declaratory judgment action in Illinois. Def. Joshua L. Powell’s Mot. to Dismiss or
Transfer Am. Compl. Ex. A (ECF 33-1). Since the Illinois action was filed after the
Plaintiffs filed suit here, the Court gives that action minimal weight.
15 Charles Alan Wright, Arthur R. Miller & Edward H. Cooper, Federal Practice and
Procedure § 3847 (3d ed. 2007).
6
“‘Where identical actions are proceeding concurrently in two federal courts . . . the first filed
action is generally preferred in a choice-of-venue decision.’” Coady, 223 F.3d at 11 (quoting Cianbro
Corp. v. Curran–Lavoie, Inc., 814 F.2d 7, 11 (1st Cir. 1987)).
7
Stewart Org., 487 U.S. at 29.
5

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The Defendant’s motion to transfer this action to the Northern District of
Illinois is denied.
Conclusion
The Defendant’s motion to dismiss or transfer is DENIED.
SO ORDERED.
Dated this 9th day of August, 2013.
/s/ Nancy Torresen
United States District Judge

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