Buccellati Holding Italia SPA et al v. Laura Buccellati, LLC et al

Filing 33

MEMORANDUM OPINION & ORDER re: 22 MOTION to Dismiss for Lack of Personal Jurisdiction and to Transfer Pursuant to Forum Non Conveniens filed by Lilian Azel, Laura Buccellati, Laura Buccellati, LLC. For the reasons stated above, Defendants' motion to dismiss for lack of personal jurisdiction is GRANTED. The Clerk of the Court is directed to terminate the motion (Dkt. No. 22) and to close this case. (Signed by Judge Paul G. Gardephe on 3/27/2013) (mro)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

USDCSDNY
DOCUMENT
ELECTRONICALL Y FILED
DOC#:
DATE FILED: 3/27/2013

BUCCELLATI HOLDING IT ALIA SPA,
and BUCCELLATI, INC.,
Plaintiffs,

MEMORANDUM
OPINION & ORDER

• against·
11 Civ. 7268 (PGG)

LAURA BUCCELLATI, LLC, LAURA
BUCCELLA TI, LILIAN AZEL, ABC
CORPORATIONS 1·10, and JOHN DOES 1·
10,
Defendants.

PAUL G. GARDEPHE, U.S.DJ.:
In this action, Plaintiffs Buccellati Holding Italia SPA and Buccellati, Inc. allege
that Defendants Laura Buccellati LLC, Laura Buccellati, and Lilian Azel have engaged in
trademark infringement, false designation of origin, trademark dilution, unfair competition, and
unfair and deceptive trade practices.
Defendants have moved to dismiss for lack of personal jurisdiction and improper
venue under Fed. R. Civ. P. 12(b)(2) and (3) or, alternatively, to transfer this action to the
Southern District of Florida pursuant to 28 U.S.C. § 1404(a). Because this Court lacks personal
jurisdiction over the Defendants, the motion to dismiss will be granted.

BACKGROUND

I.

FACTS l
A.

The Parties
Plaintiff Buccellati Holding Italia SPA is an Italian corporation with its principal

place of business in Milan, Italy. (Cmplt. ~ 4) This entity manufactures and sells products
bearing the Buccellati trademarks, including jewelry, watches, silverware, writing instruments,
ornamental boxes, cutlery, belt buckles, and handbags. (Id.) PlaintiffBuccellati, Inc. is a New
York corporation with its principal place of business in the Bronx, New York. (Id.

~

5)

Buccellati, Inc. is the exclusive distributor for Buccellati trademarked products in the United
States. (Id.)
Defendant Laura Buccellati LLC is a Florida limited liability company with its
principal place of business in Miami, Florida.

~~

6) Defendants Laura Buccellati and Lilian

Azel are co-founders of Laura Buccellati LLC, and both reside in Florida. (Id.

~~

7-8)

The Buccellati family has been selling fine jewelry since the 1700's. (Id.

~

10) In

the 1920's, the Buccellati family began manufacturing and selling handbags, clutches, and purses
made of various materials, including leather, gold, silver, and textiles. (IQJ Plaintiffs allege that
"[t]oday the Buccellati brand is synonymous with luxury, quality, and craftsmanship, and
consumers and the trade instantly identify [Plaintiffs] as the source of all products and services
bearing the Buccellati name and trademark." (Id.)
A motion to dismiss for lack of personal jurisdiction is "'inherently a matter requiring the
resolution of factual issues outside of the pleadings[,] ... [and] all pertinent documentation
submitted by the parties may be considered in deciding the motion. ", Yellow Page Solutions,
Inc. v. Bell Atl. Yellow Pages Co., No. 00 Civ. 5563 (MBM), 2001 WL 1468168, at *1
(S.D.N.Y. Nov. 19,2001) (quoting Pilates, Inc. v. Pilates Inst., Inc., 891 F. Supp. 175, 178 n.2
(S.D.N.Y. 1995)). Therefore, the following facts are drawn from the complaint, declarations,
and exhibits submitted by the parties, and are construed in the light most favorable to Plaintiffs.
Id.; see also A.I. Trade Fin., Inc. v. Petra Bank, 989 F.2d 76, 79-80 (2d Cir. 1993); CutCo Indus.,
Inc. v. Naughton, 806 F.2d 361,365 (2d Cir. 1986).
I

2

Plaintiffs' products and services are sold under several trademarks which
Buccellati Holding Italia SPA owns and has registered with the U.S. Patent and Trademark
Office. (ld.

~

11, Ex. A) The Buccellati trademarks are displayed on jewelry, watches,

silverware, writing instruments, ornamental boxes, cutlery, belt buckles, handbags, and other
products. (ld.

~

12) Plaintiffs have retail locations in Manhattan, Beverly Hills, and Aspen,

Colorado. (ld.)
Plaintiffs have extensively advertised and promoted the products manufactured
and services offered under the Buccellati trademarks. (Id.

~

13) Plaintiffs allege that

[m]illions of consumers have been exposed to the Buccellati Trademarks through
extensive advertising campaigns, in mainstream and industry magazines and other
periodicals, as depicted in motion pictures, on the Internet, and in other forms of
unsolicited media coverage. Products bearing the Buccellati Trademarks are
closely associated with Buccellati's reputation in the eyes of the public and the
trade. The Buccellati Trademarks are, thus, invaluable assets to Buccellati.
(ld.) Plaintiffs further allege that over the past five years they have sold "tens of millions of
dollars" in products bearing Buccellati trademarks in the United States alone. (Id.

B.

~

14)

The Alleged Infringement and Unfair Competition
Laura Buccellati is a member of the Buccellati family, but she sold her interest in

the Buccellati companies in 1989. (ld.

~

18) Plaintiffs claim, however, that Laura Buccellati and

Lilian Azel, through Laura Buccellati LLC, are "attempt[ing] to capitalize on the popularity of
the Buccellati Trademarks by using and/or permitting various companies to use [marks that
infringe the Buccellati trademarks]." (ld.

~~

18-19)

Plaintiffs further allege that Laura Buccellati, through Laura Buccellati LLC, has
attempted to register trademarks containing the name Laura Buccellati, both in the United States
and internationally. (ld.

~

21) In the United States, such attempted registration has been refused

3

on the basis that the name Laura Buccellati is likely to be confused with the Buccellati
trademarks. (ld.)
Plaintiffs claim that Laura Buccellati is nonetheless designing, manufacturing,
promoting, importing, and selling consumer products under the Laura Buccellati name and
trademark, and is using other designs, logos, and indicia that are imitations of the Buccellati
trademarks. (Id.

~

17) Plaintiffs further claim that these allegedly infringing marks are used on

"handbags, carryalls, purses, wallets, belts, and scarves." (IQ.) Plaintiffs claim that, in addition
to using marks that infringe on the Buccellati trademarks, Defendants are using
Laura Buccellati's relationship with the Buccellati family in promotional material
to suggest an association with [Plaintiffs], all with the deliberate intention to
cause consumers and the trade to believe that the products bearing the Infringing
Mark[s] are authorized, sponsored, approved, endorsed or licensed by [Plaintiffs],
or that Laura Buccellati LLC, or ... Laura Buccellati, is in some way
commercially affiliated with [Plaintiffs].
(ld.

~

23) Plaintiffs claim that Defendants' use of the alleged infringing marks has "caused (and

will likely continue to cause)[] actual confusion in the marketplace, harm to the business
reputation and goodwill of [Plaintiffs], and damage to [Plaintiffs'] business relations with
consumers and prospective consumers." (ld.

~

24)

This action was filed on October 14,2011. (Dkt. No. 1) On December 5, 2011,
Defendants filed a pre-motion letter asserting, inter alia, that this Court lacks personal
jurisdiction over them. (Dec. 5,2011 Ltr. (Dkt. No. 32) at 2) After conducting a pre-motion
conference (see Dkt. No. 19), the Court issued an order providing for sixty days ofjurisdictional
discovery, including both written discovery and depositions. (Dkt. No. 20) The instant motion
was filed on June 4,2012. (Dkt. No. 22)

4

C.

Jurisdictional Discovery
Much of the jurisdictional discovery focused on Defendants' late 2009 retention

of Tara Solomon, Inc. d/b/a Tara Ink, a public relations firm. (See Tenney Decl., Ex. 3
(Solomon Dep. Tr.) at 10-11; id., Ex. 10) Defendants hired Solomon - who is based in Los
Angeles and Miami Beach - to generate press attention for, and retailer interest in, Defendants'
handbag collection. (Id., Ex. 3 at 8)
Solomon "arranged ... New York desks ide editor appointments to introduce
[Defendants'] Fall/Winter 2010 collection," and spoke with editors at Conde Nast Traveler,
InStyle, Lucky, Marie Claire, Town & Country, Vogue, W, and WWD. Solomon also contacted
a number of "high-end retailers" in New York and Washington, D.C. about Defendants'
collection, including buyers at Bergdorf Goodman, Saks Fifth A venue, Barneys, and Neiman
Marcus. (Id., Ex. 8 at 4, Ex. 9 at 2-4, Ex. 11 at 2, Ex. 12 at 2)
In June 2010, Defendants Laura Buccellati and Azel traveled to New York City
with Solomon for the purpose of meeting with a number of magazine fashion editors. (Id., Ex. 1
(L. Buccellati Dep. Tr.) at 35-36; id., Ex. 9 at 1) The purpose of the meetings was to showcase

Laura Buccellati's Fall 2010 handbag collection and to obtain "free placements in ...
magazines." (Id., Ex. 1 (L. Buccellati Dep. Tr.) at 35-36; id., Ex. 9 at 1) Approximately ten
meetings took place in Manhattan with fashion editors over a two-day period. (Tenney Decl.,
Ex. 13) During the New York meetings with editors, Defendants distributed Laura Buccellati
scarves, catalogs, and press kits. (Tenney DecL, Ex. 3 (Solomon Dep. Tr.) at 23-26)
Jurisdictional discovery also revealed that Defendants' website­
www.laurabuccellati.com- has made only one sale in New York. (L. Buccellati Decl.
13; Azel DecL

~~

~~

10, 12­

9, 11, 12) That sale took place on October 5, 2011, and was made to Plaintiffs'

5

New York-based private investigator, Maxine Kaplan. (Id.) Kaplan purchased a Laura
Buccellati-branded handbag for $1,425, and arranged for it to be shipped to her New York work
address. (Azrin Decl., Ex. A (Kaplan Dep. Tr.) at 9, 20-25, 32, 55-56, 84) No other
merchandise has been sold by Defendants to New York residents, either through Defendants'
website or otherwise. (L. Buccellati Decl. ~~ 10, 12-13; Azel

Decl.~'

9, 11, 12) The website

remains available to New York consumers, however. (Tenney Decl., Ex. 1 (L. Buccellati Dep.)
at 42-43, 154)
DISCUSSION
I.

THE COURT LACKS PERSONAL JURISDICTION OVER DEFENDANTS

A.

Legal Standard

"The plaintiff bears the burden of establishing that the court has jurisdiction over
the defendant when served with a Rule 12(b)(2) motion to dismiss."

~!!..!:!:!~....!..!..~~

Telecasting, Inc., 261 F.3d 196,208 (2d Cir. 2001). "In deciding [such a motion,] a district court
has considerable procedural leeway. It may determine the motion on the basis of affidavits
alone; or it may permit discovery in aid of the motion; or it may conduct an evidentiary hearing
on the merits of the motion." Marine Midland Bank, N.A. v. Miller, 664 F.2d 899, 904 (2d Cir.
1981); accord Credit Lyonnais Sees. (USA), Inc. v. Alcantara, 183 F.3d 151,153 (2d Cir. 1999).
Here, the Court permitted the parties to conduct jurisdictional discovery over a sixty-day period.
(See Dkt. No. 20)
The nature of plaintiff s burden to demonstrate jurisdiction "varies depending on
the procedural posture of the litigation." Ball v. Metallurgie Hoboken-Overpelt, S.A., 902 F.2d
194, 197 (2d Cir. 1990). Prior to discovery, a Rule 12(b)(2) motion will fail where plaintiff has
"[pled] in good faith legally sufficient allegations ofjurisdiction." Id. (internal citation omitted).

6

Where, however, "there has been discovery on the issue of [personal] jurisdiction, the plaintiff's
prima facie showing must include 'an averment of facts that, if credited by the trier, would
suffice to establish jurisdiction over the defendant.' The plaintiff cannot rely merely on
conclusory statements or allegations; rather, the prima facie showing must be 'factually
supported. ", Yellow Page Solutions, Inc. v. Bell At!. Yellow Pages Co., No. 00 Civ. 5663
(MBM), 2001 WL 1468168, at *3 (S.D.N.V. Nov. 19,2001) (quoting Ball, 902 F.2d at 197)
(internal citations omitted); accord Morrison v. N.Y. State Div. for Youth Children & Family
Servs., No. 98 Civ. 643,2000 WL 532762, at *1 (S.D.N.Y. Apr. 25, 2000)
"In a federal question case where a defendant resides outside the forum state, a
federal court applies the forum state's personal jurisdiction rules' if the federal statute does not
specifically provide for national service of process. '" PDK Labs v. Friedlander, 103 F.3d 1105,
1108 (2d Cir. 1997) (citing Mareno v. Rowe, 910 F.2d 1043,1046 (2d Cir. 1990)). "[T]he
Lanham Act does not provide for nationwide service of process[;]" therefore "this Court must
look to New York's jurisdictional statutes to determine personal jurisdiction." Greenlight
Capital, Inc. v. GreenLight (Switz.) S.A., No. 04 Civ. 3136 (HB), 2005 WL 13682, *2 (S.D.N.Y.
Jan. 3,2005) (citing Sunward Elecs., Inc. v. McDonald, 362 F.3d 17,22 (2d Cir. 2004)).
New York's long-arm statute provides that
a court may exercise personal jurisdiction over any non-domiciliary ...
who in person or through an agent: 1. transacts any business within the
state or contracts anywhere to supply goods or services in the state; or 2.
commits a tortious act within the state ... ; or 3. commits a tortious act
without the state causing injury to person or property within the state ... if
he (i) regularly does or solicits business, or engages in any other persistent
course of conduct, or derives substantial revenue from goods used or
consumed or services rendered, in the state, or (ii) expects or should
reasonably expect the act to have consequences in the state and derives
substantial revenue from interstate or international commerce ....
N.V. C.P.L.R. § 302(a).

7

The exercise of personal jurisdiction must also comport with constitutional due
process principles. 2 "In this case, because the plaintiffs' assertion of personal jurisdiction rests
upon a state long-arm statute, the relevant constitutional constraints are those imposed by the
Due Process Clause of the Fourteenth Amendment." Licci ex reI. Licci v. Lebanese Canadian
Bank, SAL, 673 F.3d 50, 60 (2d Cir. 2012). "Where, as here, the plaintiffs premise their theory
of personal jurisdiction upon the New York long-arm statute, [courts] first consider whether the
requirements of the statute have been satisfied before proceeding to address whether the exercise
ofjurisdiction would comport with the Due Process Clause." Id. at 61.

A.

Application of New York's Long-Arm Statute
Defendants argue that two provisions of New York's long-arm statute give this

Court personal jurisdiction over the Defendants: CPLR § 302(a)(1)

the "transacting business"

prong of the long-arm statute - and CPLR § 302(a)(3)(ii), which addresses tortious acts
committed outside New York that cause injury to a person or property inside New York.
PItfs. Opp. Br. 7-15)

1.

Section 302(a)(l) - Transacting Business in New York

CPLR § 302(a)(1) provides, in pertinent part, that a court "may exercise personal
jurisdiction over any non-domiciliary ... who in person or through an agent ... transacts any
business within the state," so long as the plaintiff's "cause of action aris[es] from" that
transaction. CPLR §302(a)(l). Accordingly, "in determining whether personal jurisdiction may

2 "The constitutional analysis under the Due Process Clause consists of two separate
components: the 'minimum contacts' inquiry and the 'reasonableness' inquiry. The 'minimum
contacts' inquiry requires (a court] to consider 'whether the defendant has sufficient contacts
with the forum state to justify the court's exercise of personal jurisdiction.' The 'reasonableness'
inquiry requires [a court] to decide 'whether the assertion of personal jurisdiction comports with
'traditional notions of fair play and substantial justice' that is, whether it is reasonable to
exercise personal jurisdiction under the circumstances of the particular case. '" Licci ex reI. Licci
v. Lebanese Canadian Bank. SAL, 673 F.3d 50,60 (2d Cir. 2012) (internal citation omitted).

8

be exercised under section 302(a)(1), 'a court must decide (1) whether the defendant "transacts
any business" in New York and, if so, (2) whether this cause of action "aris[es] from" such a
business transaction.'" Licci, 673 F.3d at 60 (quoting Best Van Lines, Inc. v. Walker, 490 F.3d
239,246 (2d Cir. 2007)).
"[T]he overriding criterion necessary to establish a transaction of business is some
act by which the defendant purposefully avails itself of the privilege of conducting activities
within New York." Id. at 61 (internal quotation omitted). "As to § 302(a)(I)'s second
requirement, 'a suit will be deemed to have arisen out of a party's activities in New York if there
is an articulable nexus, or a substantial relationship, between the claim asserted and the actions
that occurred in New York. '" HSH Nordbank AG N.Y. Branch v. Street, No. 11 Civ. 9405
(DLC), 2012 WL 2921875, at *4 (S.D.N.Y. July 18,2012) (citing Licci, 673 F.3d at 66). "A
single act within New York will, in the proper case, satisfy the requirements of section
302(a)(1 )." Licci, 673 F. 3d at 62.
"Although Section 302(a)(I) is typically invoked in breach of contract cases[,] it
applies as well to actions in tort when supported by a sufficient showing of facts." Sunward
Elecs., Inc. v. McDonald, 362 F.3d 17, 24 (2d Cir. 2004) (internal quotation and citations
omitted) The Second Circuit has found that a "Lanham Act claim sounds in tort." Id. (citing
PPX Enters., Inc. v. Audiofidelity, Inc., 746 F.2d 120, 124-25 (2d Cir. 1984) (Section 43(a) of
the Lanham Act "created a new statutory tort")).

a.

Analysis

In arguing that Defendants transacted business in New York, and that their cause
of action arises out of that transaction of business, Plaintiffs rely on the following:
1.

the sale of an allegedly infringing bag, over Defendants' website, to Plaintiffs'
New York-based investigator;

9

2.

Solomon's contact with fashion editors in New York to schedule "deskside"
appo intments;

3.

Solomon's contact with retail buyers for large department stores in New York
City;

4.

the two days of meetings with fashion editors in New York City in June 2010;

5.

the distribution of allegedly infringing handbags, catalogs, and media kits to the
fashion editors; and

6.

a contract with Motivators, Inc., a New York company, for women's vanity
mirrors.

(Pltfs. Opp. Br. 8-9)
It is undisputed, however, that Defendants have no office, employees, sales

representatives, distributors, or retailers in New York, and that they do not own or rent any
property in New York. The only sale to a New York resident of Defendants' merchandiseindeed, the only sale ever over Defendants' website

was to Plaintiffs' investigator. Defendants

have sold no other merchandise in New York. Moreover, the New York meetings with fashion
editors led to no publicity for Defendants' products, and there is no evidence that any of
Solomon's efforts led to any purchase of Defendants' products anywhere. Defendants did not
enter into advertising agreements with anyone in New York, nor did they purchase
advertisements in the magazines whose editors they visited. (L. Buccellati Decl. ~~ 9-18; Azel
Decl.

~~

8-17) Under these circumstances, the activities cited by Plaintiffs are not sufficient to

justify this Court's exercise of personal jurisdiction over Defendants. 3

Plaintiffs do not argue that Defendants' interactive website, which allows New York residents
(and consumers worldwide) to purchase Laura Buccellati products, is a sufficient basis for the
exercise of personal jurisdiction under Section 302(a)(I). It is, of course, "well established that
one does not subject himself to the jurisdiction of the courts in another state simply because he
maintains a web site which residents of that state visit." Starmedia Network, Inc. v. Star Media,
Inc., No. 00 Civ. 4647 (DLC), 2001 WL 417118, at *3 (S.D.N.Y. Apr. 23, 2001) (quoting Nat'l
Football League v. Miller, No. 99 Civ. 11846 (JSM), 2000 WL 335566, at *1 (S.D.N.Y. Mar. 30,

3

10

The Court begins with Plaintiffs' purchase - through their New York-based
investigator Maxine Kaplan - of a handbag from the Defendants' website, days before the
Complaint in this action was filed. (Azrin Decl., Ex. A (Kaplan Dep. Tr.) at 9,20-25,32,55-56,
84) It is obvious that Plaintiffs made this purchase - the only sale of Laura Buccelatti
merchandise to a New York resident

in order to bolster their argument that this Court has

personal jurisdiction over Defendants.
While there is not unanimity on this issue, the vast weight of authority is that a
finding of personal jurisdiction may not rest solely on an act such as this instigated by a plaintiff.
Courts in this District and elsewhere have expressed "hostility towards finding jurisdiction under
such potentially manufactured circumstances." Unique Indus., Inc. v. Sui & Sons Int'l Trading
Corp., No. 05 Civ. 2744 (KMK), 2007 WL 3378256, at *5 (S.D.N.Y. Nov. 9,2007) (citing lSI
Brands, Inc. v. KCC Int'l, Inc., 458 F. Supp. 2d 81, 89 (E.D.N.Y. 2006) (noting, in a case where
purchases of counterfeit products were made by plaintiffs agents, "[i]t is beyond dispute that
jurisdiction cannot be manufactured by the Plaintiff')); MatteI, Inc. v. Anderson, No. 04-CV­
5275 (RCC), 2005 WL 1690528, at *2 (S.D.N.Y. July 18,2005) ("'Defendant[] cannot be said
to have 'purposefully' availed [herselfJ of the protections of this forum when it was an act of
someone associated with plaintiff, rather than [her] web site advertising, that brought [her]

2000); see also Savage Universal Corp. v. Grazier Constr., Inc., No. 04 Civ. 1089 (GEL), 2004
WL 1824102, at *9 (S.D.N.Y. Aug. 13,2004). ("It stretches the meaning of 'transacting
business' to subject defendants to personal jurisdiction in any state merely for operating a
website, however commercial in nature, that is capable of reaching customers in that state,
without some evidence or allegation that commercial activity in that state actually occurred.").
"The guiding principle which has emerged from the case law is that whether the exercise of
personal jurisdiction is permissible is directly proportionate to the nature and quality of
commercial activity that an entity conducts over the internet." Citigroup Inc. v. City Holding
97 F. Supp. 2d 549, 565 (S.D.N.Y. 2000) (internal quotations omitted). Here, the only
business Defendants conducted over their website with a New York customer (or anyone else) is
the one transaction with Plaintiffs' investigator. As explained below, this incident is not
sufficient to justify this Court's exercise of personal jurisdiction over Defendants.

11

products into this forum.'" (quoting Millennium Enters., Inc. v. Millennium Music, LP, 33 F.
Supp. 2d 907, 911 (D. Or. 1999»; Edberg v. Neogen Corp., 17 F. Supp. 2d 104,112 (D. Conn.
1998) (noting that "the courts have repeatedly held that jurisdiction may not be manufactured by
the conduct of others"); Elbex Video Kabushiki Kaisha v. Taiwan Regular Elec. Co., No. 93 Civ.
6160 (KMW), 1995 WL 224774, at *2 (S.D.N.Y. Apr. 14, 1995) (finding no personal
jurisdiction where plaintiff arranged for former employee to make purchase from defendant for
purpose of creating jurisdiction);

also Clarus Transphase Scientific, Inc. v. Q-Ray, Inc., No.

C 06-3450 JF (RS), 2006 WL 2374738, at *3 n.3 (N.D. Cal. Aug. 16,2006) ("A plaintiff cannot
manufacture personal jurisdiction in a trademark case by purchasing the accused product in the
forum state." (citing Millennium Enters., 33 F. Supp. 2d at 911»; lell-E-Bath Inc. v. Crystal Mud
Spa, No. 05-1703-KI, 2006 WL 1305113, at *3 n.1 (D. Or. May 8, 2006) ("Plaintiff cannot
manufacture personal jurisdiction."); McGill Tech. Ltd. v. Gourmet Techs., Inc., 300 F.Supp.2d
501,506 (E.D. Mich. 2004) (disregarding a contact with forum state where contact was likely the
product of plaintiffs counsel's family member and initiated for purposes of litigation) (citing,
inter alia, E1ecs. For Imaging, Inc. v. Coyle, 340 F.3d 1344, 1350 (Fed. Cir. 2003»; Millennium
Enters., 33 F. Supp. 2d at 911 (holding that internet purchase of one compact disc by plaintiffs
counsel did not constitute purposeful availment); Sunwest Silver, Inc. v. Int'l Connection, Inc., 4
F. Supp. 2d 1284, 1287 (D.N.M. 1998) ("Courts have held repeatedly that a defendant's
responses to the unilateral acts of a plaintiff are not contacts with the forum state sufficient to
establish personal jurisdiction."); DeSantis v. Hafner Creations, Inc., 949 F. Supp. 419,424
(E.D. Va. 1996) (holding that personal jurisdiction was lacking when the only contact by
defendant with forum state was initiated by plaintiffs counsel's paralegal, for the sole purpose of
establishing personal jurisdiction); Network Profls, Inc. v. Network Int'l Ltd., 146 F.R.D. 179,

l2

181 n.l (D. Minn. 1993) ("[A] plaintiff cannot manufacture personal jurisdiction through
unilateral activities such as telephoning the defendant." (citing Wines v. Lake Havasu Boat Mfg.,
Inc., 846 F.2d 40, 43 (8th Cir. 1988)).
The logic of these cases is that a plaintiff cannot rely solely on its own
manipulative acts to create jurisdiction, and that in such circumstances the defendant cannot be
said to have purposefully availed itself of the privilege of conducting activities in the state
selected by plaintiff. Moreover, in cases where, as here, plaintiffs' causes of action are founded
on notions of consumer confusion, courts have concluded that it is improper to rely on a
transaction - for jurisdictional purposes - in which the purchaser obviously was not confused as
to the source of the merchandise.

~,

lSI Brands, 458 F. Supp. 2d at 88 (noting that

plaintiff's agents' purchase of infringing product had "nothing to do with Plaintiffs action for
infringement since [plaintiff] cannot claim to have been confused as to with whom [they] [were]
dealing" (internal quotation omitted; alterations in original)); cf. McBee v. Delica Co., 417 F.3d
107, 128 (1st Cir. 2005) (denying preliminary injunction for alleged Lanham Act violations
where sales "were all made to [plaintiff's] own investigators, who were brought in to assist in
this litigation and therefore fully understood [plaintiff s] lack of any relationship with
[defendant]"). 4
Under the unusual circumstances of this case, in which Plaintiffs have not offered
evidence of any meaningful contacts between Defendants and New York, this Court will not rely

Even in those cases that rely on a single sale made to a plaintiffs investigator, courts have
cited other contacts between the forum state and the defendant. See,~, See Cartier v. Seah
LLC, 598 F. Supp. 2d 422,425-26 (S.D.N.Y. 2009) (citing, inter alia, distribution of 150,000
copies of defendant's catalog to airline locations in New York State); Philip Morris USA Inc. v.
Veles Ltd., No. 06 Civ. 2988 (ORD), 2007 WL 725412, at *4 (S.D.N.Y. Mar. 12,2007) (citing
plaintiff's undisputed claim that defendant had "significant and continuous revenue from Internet
sales of cigarettes to U.S. consumers in this judicial district").
4

13

on the sale of a handbag to Plaintiffs' investigator as a basis for exercising personal jurisdiction
over the Defendants.
The remaining contacts with New York cited by Plaintiffs are not sufficient to
justify this Court's exercise of personal jurisdiction over the Defendants. The meetings with the
fashion editors and retail buyers led to nothing: no articles were published, no advertisements
were purchased, no contracts were entered into, and no goods were sold as a result of these
meetings. The distribution of free samples and media kits to these editors likewise led to no
commercial activity, and does not constitute the transaction of business in New York.
Meetings and communications that never result in a business relationship or
transaction do not provide a basis for the exercise of personal jurisdiction.

~,

Aguline

Capital Partners LLC v. FinArch LLC, 861 F. Supp. 2d 378, 388 (S.D.N.Y. 2012) ("New York
courts have held that ... exploratory meetings taking place in New York, 'leading to nothing
more than a proposal that was itself the subject of further negotiations over the phone, by mail,
and in meetings outside New York,' are not sufficient contacts to constitute the transaction of
business within the meaning ofCPLR 302(a)(l).") (quoting C-Life Group Ltd. v. Generra Co.,
235 A.D.2d 267,267 (Ist Dep't 1997)); Benson & Assocs. Inc. v. Orthopedic Network ofNJ.,
No. 98 Civ. 1020 (LMM), 1998 WL 388531, at *4 (S.D.N.Y. July 13,1998) ("[M]eetings in the
forum state that are exploratory, unproductive, or insubstantial are insufficient to establish
requisite contacts with the state.") (citing Paine Webber Inc. v. WHY, Inc., No. 95 Civ. 0052
(LMM), 1995 WL 296398, at *3 (S.D.N.Y. May 16,1995)).5

5 The alleged contract with Motivators, Inc. (see Tenney Decl., Ex. 17; Pltfs. Opp. Br. 9) is
entirely unexplained. While it appears from Plaintiffs' partially illegible exhibit (see Tenney
Decl, Ex. 17) that Laura Buccellati was invoiced $743.50 by Motivators, Inc. based in
Westbury, New York - for the purchase of 100 round compact mirrors, Plaintiffs have made no

14

In sum, none of the contacts with New York cited by Plaintiffs are sufficient to
provide a basis for the exercise of personal jurisdiction under CPLR § 302(a)(I).

2.

Jurisdiction Based on a Tortious Act Outside New York

CPLR § 302(a)(3) provides for the exercise of personal jurisdiction where the
defendant "commits a tortious act without the state causing injury to person or property within
the state ... if he ... expects or reasonably should expect the act to have consequences in the
state and derives substantial revenue from interstate or international commerce...." CPLR
§ 302(a)(3 )(ii).

a.

Injury Within New York

Plaintiffs have sufficiently alleged that Defendants committed a tortious act of
trademark infringement and that injury from the alleged act occurred in New York. Accordingly,
Plaintiffs have satisfied the initial two requirements of Section 302(a)(3)(ii).
In order to make out a prima facie case for the exercise of personal jurisdiction
under Section 302(a)(3)(ii), Plaintiffs must allege anticipated in-state economic injury from an
out-of-state tort. Sybron Corp. v. Wetzel, 46 N.Y.2d 197,203-04 (1978). The Lanham Act
imposes liability on any person who "use[s] 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 ...." 15 U.S.C. § 1114(1)(a). Therefore, for
purposes of determining jurisdiction under Section 302(a)(3)(ii), the alleged injury stemming
from infringement of a trademark "in the form of damage to goodwill, lost sales, or lost
customers" will occur "where the trademark owner resides and conducts business," because this
is where the '''first effects' of trademark infringement or dilution are typically felt." Savage

showing that the compact mirrors bear any infringing mark or are otherwise relevant to the
personal jurisdiction determination.

15

Universal Corp. v. Grazier Constr., Inc., No. 04 Civ. 1089 (GEL), 2004 WL 1824102, at *9
(S.D.N.Y. Aug. 13,2004).
Here, Plaintiffs allege that the Defendants' sale of merchandise under the Laura
Buccellati mark infringes their trademarks, threatens the distinctive quality of their trademarks,
and has confused and will confuse consumers. Plaintiffs' allegations demonstrate a tortious act
resulting in an injury in New York, given that they reside and/or conduct business in New York.
While Plaintiffs have not demonstrated sales of Defendants' products in New York - other than
to their private investigator - it is undisputed that New York residents can view Defendants'
website containing the allegedly infringing marks. Under such circumstances, courts have found
the "injury within New York" element to be satisfied. See,

Starmedia Network, Inc. v. Star

Media, Inc., No. 00 Civ. 4647 (DLC), 2001 WL 417118, at *2 (S.D.N.Y. Apr. 23, 2001)
(trademark infringement alleged based on defendant's use of plaintiff's trademarks on
defendant's website; "Under New York law, injury 'within the state' includes harm to a business
in the New York market through lost sales or customers, as well as harm and threatened harm in
the New York market resulting from the confusion and deception of New York computer users
.... Plaintiff's allegations of harm resulting from the potential for confusion and deception
satisfy the requirement of an injury 'within the state."') (internal citations omitted); Energy
Brands, Inc. v. Spiritual Brands, Inc., 571 F. Supp. 2d 458, 470-71 (S.D.N.Y. 2008) ("Glaceau
also persuasively argues that its actual or potential New York customers were confused or
deceived merely by viewing images of Spiritual Water products on defendants' website. This
lends further support to a finding of injury within the state.").

16

b.

Expectation of Consequences

CPLR § 302(a)(3)(ii) requires that a defendant, in addition to causing injury
within New York, must have expected, or reasonably should have expected, its allegedly tortious
actions to have consequences in New York. CPLR § 302(a)(3)(ii).
[T]o establish a reasonable expectation of consequences in New York, the plaintiff must
show an effort by the defendant to serve the New York market. "New York courts have
asserted that the simple likelihood or foreseeability that a defendant's product will find its
way into New York does not satisfy this element, and that purposeful availment of the
benefits of the laws of New York such that the defendant may reasonably anticipate being
haled into New York court is required."
Starmedia, 2001 WL 417118, at *3 (quoting Kernan v. Kurz-Hastings, Inc., 175 F.3d 236, 241
(2d Cir. 1999». "Thus, the defendant must make 'a discernable effort to directly or indirectly
serve the New York market.'" Id. (quoting Kernan, 175 FJd at 241). Here, there is no evidence
of a "discernable effort [by Defendants] to directly or indirectly serve the New York market."

Plaintiffs argue that the "tangible manifestations" of Defendants' desire to serve
the New York market are

(1) posting statements on [Defendants'] website that online purchases are "available to
residents of the United States, for delivery to clients in the United States," including New
York; (2) launching a national marketing campaign; (3) contacting and meeting with New
York-based fashion editors to promote Defendants' infringing handbags; (4) selling
and/or shipping infringing handbags into New York; and (5) contracting with a New
York company to manufacture branded promotional materials.
(Pltfs. Opp. Br. 14 (internal citations omitted»
The existence of Defendants' website carries little weight under the unusual
circumstances of this case. It is undisputed that although Defendants' website has been extant
for three years or more, Defendants' only sale of any merchandise over the website was to
Plaintiffs'investigator. (L. Buccellati Decl.

~~

10, 12-l3; Azel Decl.

17

~~

9, 11, 12) Indeed, since

Laura Buccellati, LLC was founded, the only sale of any merchandise to a New York customer is
the sale to Plaintiffs' investigator. (Id.) Moreover, Defendants have offered uncontradicted
evidence that their business is conducted through private parties, by word of mouth, and through
"trunk shows" at retailers or in private homes

none of which has taken place in New York. (L.

Buccellati Decl. ,,2,6; Azel DecL " 2, 6) In short, nothing about Defendants' website or the
way they have conducted their business demonstrates an attempt to "serve the New York
market" or suggests that they should have expected their conduct to have consequences in New
York.
Defendants' hiring of Solomon, the trip to New York to meet with fashion editors,
and the samples sent to fashion editors in New York, do not change the analysis. While these
facts demonstrate an attempt to attract publicity for Defendants' products - an attempt that was
unsuccessful

there is no evidence that these meetings were directed at the New York market.

Defendants' meetings were with fashion editors of national publications, such as Conde Nast
Traveler, InStyle, Lucky, Marie Claire, Town & Country, Vogue, W, and WWD. (Tenney Decl.,
Ex. 8 at 4)
Finally, "contracting with a New York company to manufacture branded
promotional materials" (PItfs. Opp. Br. 14), is a reference to Motivators, Inc. and Laura
Buccellati's purchase of 100 compact mirrors. As noted above, the facts concerning this incident
are entirely unclear. In particular, Plaintiffs have not offered evidence that the compacts were
branded in a fashion that infringed their trademarks.
The cases cited by Plaintiffs (PItfs. Opp. Br. 13-14) do not support their argument
that the facts discussed above are sufficient for the exercise of personal jurisdiction under CPLR

§ 302(a)(3)(ii). In Parker Waichman Alonso LLP v Orlando Firm. P.C., 09 Civ. 7401 (CM),

18

2010 WL 1956871 (S.D.N.Y. May 14,2010), for example, the defendant lawyer - who operated
an infringing website

admitted that "it [was] his intention to reach New York." There was also

evidence that the defendant had "sign[ed] up six New York clients ... via the website," and that
he had "conducted settlement negotiations in New York for a class action that ultimately settled
for $7 million." Parker Waichman, 2010 WL 1956871, at *10. Similarly, in Am. Network, Inc.
v. Access America/Connect Atl., Inc., 975 F. Supp. 494,498 (S.D.N.Y. 1997), defendant had
"signed up six New York subscribers" through its infringing website. Likewise, in Starmedia,
defendant admitted that the purpose of its website was to "attract new customers, including
customers from New York," and the court found that defendant had "used its website to attract
and service business across the nation, including in New York, and ha[ d] received substantial
revenue from those interstate sales." Starmedia, 2001 WL 417118, at *1, *3; see

Savage

Universal Corp., 2004 WL 1824102, at *9 Gurisdiction found under Section 302(a)(3)(ii) where
defendant used his web sites to pursue "spiteful campaign of trademark infringement and
defamation" against New York-based company).
Given the undisputed evidence that (1) Defendants' business plan had no
component of sales to New York; (2) Defendants never had any New York customers; (3)
Defendants' website generated no sales and no revenue for Defendants, whether from New York
or elsewhere; and (4) the only sale Defendants ever made over their website, and the only sale
they ever made to a New York customer, was their sale to Plaintiffs' New York-based
investigator, the cases cited by Plaintiffs do not demonstrate that this Court has jurisdiction over
the Defendants under Section 302(a)(3)(ii). See Royalty Network Inc. v Dishant.com, LLC, 638
F. Supp. 2d 410,424 (S.D.N.Y. 2009) (finding no jurisdiction under Section 302(a)(3)(ii) where
plaintiff had not "establish[ed] that [through their website] defendants purposefully targeted New

19

York's Indian American population or otherwise targeted their activities toward [New York]
state").
CONCLUSION
For the reasons stated above, Defendants' motion to dismiss for lack of personal
jurisdiction is GRANTED. The Clerk of the Court is directed to terminate the motion (Dkt. No.
22) and to close this case.
Dated: New York, New York
March 27,2013
SO ORDERED.

~~~-

Paul G. Gardephe
United States District Judge

20