Erickson Beamon Ltd. v. CMG Worldwide, Inc. et al
Filing
41
MEMORANDUM AND ORDER denying 28 Motion to Enjoin Defendants from Prosecuting Indiana Action; denying 33 Motion to Dismiss for Lack of Jurisdiction. For the aforementioned reasons, defendants' motion to dismiss or, in the alternative, to sta y or transfer is denied. Plaintiff's motion to enjoin the prosecution of the Indiana action is also denied. The Clerk of the Court is directed to terminate the motions pending at docket nos. 28 and 33. (Signed by Judge Naomi Reice Buchwald on 9/25/2013) (ft)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
----------------------------------------X
ERICKSON BEAMON LTD.,
Plaintiff,
MEMORANDUM AND ORDER
- against 12 Civ. 5105 (NRB)
CMG WORLDWIDE, INC., and
THE ESTATE OF BETTE DAVIS,
Defendants.
----------------------------------------X
NAOMI REICE BUCHWALD
UNITED STATES DISTRICT JUDGE
Plaintiff Erickson Beamon Ltd. (“plaintiff”) brings this
action for a declaratory judgment of trademark non-infringement,
non-violation of section 43(a) of the Lanham Act, 15 U.S.C. §
1125(a),
and
non-infringement
of
certain
rights
of
publicity
with respect to its jewelry line called “The Bette Davis Eyes”
collection.
Estate
of
Defendants
late
(collectively,
jewelry
line
movie
CMG
Worldwide,
star
“defendants”)
violates
Bette
have
those
Inc.
Davis
asserted
intellectual
(“CMG”)
(the
that
and
the
“Estate”)
plaintiff’s
property
rights.
Presently before the Court are two motions: defendants’ motion
to
dismiss
the
action
or,
in
the
alternative,
to
stay
or
transfer it to the Southern District of Indiana, and plaintiff’s
cross-motion to enjoin the prosecution of the Indiana action.
1
For the reasons set forth below, we deny defendants’ motion
to dismiss or transfer the action.
We further deny plaintiff’s
cross-motion to enjoin the prosecution of the Indiana action.
BACKGROUND1
Plaintiff
is
a
New
York
corporation
that
designs
distributes jewelry for sale in 75 nations worldwide.
and
(Compl.
¶¶ 1, 16); www.ericksonbeamon.com (last visited Aug. 8, 2013).
One defendant is the Estate, which is co-executed by Michael
Merrill, an individual residing in Massachusetts.
(Id. ¶ 3.)
CMG, the other defendant, is the exclusive licensing agent for
the Estate as to Bette Davis’s intellectual property, is an
Indiana corporation with its principal places of business in
Indianapolis and Los Angeles, California.
(Id. ¶ 2; see Def.
Mem. at 5.)
In or about late 2010, plaintiff launched a jewelry line
called
the
“Bette
Davis
Eyes”
collection.
(Compl.
¶
17.)
Specifically, plaintiff has used that name in the advertisement,
1
The following facts are drawn from the Complaint (“Compl.”); Defendants’
Memorandum of Law in Support of its Motion to Dismiss or, in the Alternative,
to Transfer or to Stay (“Def. Mem.”); the Declaration of Theodore J. Minch in
Support of Defendants’ Motion to Dismiss or, in the Alternative, to Transfer
or to Stay (“Minch Decl.”); the Declaration of J. Brock Herr in Support of
Defendants’ Motion to Dismiss or, in the Alternative, to Transfer or to Stay
(“Herr Decl.”); Plaintiff’s Opposition to Defendants’ Motion to Dismiss or,
in the Alternative, to Transfer or to Stay (“Pl. Opp.”); the Declaration of
Monique Erickson in Opposition to Defendants’ Motion to Dismiss or, in the
Alternative, to Transfer or to Stay (“Erickson Decl.”); Defendants’ Reply
Memorandum in Support of its Motion to Dismiss or, in the Alternative, to
Transfer or to Stay (Def. Reply Mem.”); and the Reply Affirmation of Theodore
J. Minch in Support of Defendants’ Motion to Dismiss or, in the Alternative,
to Transfer or to Stay (“Minch Reply Affirm.”).
2
marketing, and distribution of various jewelry items, including,
but not limited to, the “Erickson Beamon Bette Davis Necklace,”
the “Erickson Beamon Bette Davis Ring,” the “Erickson Beamon
green Bette Davis Eyes Ring,” the “Erickson Beamon Bette Davis
Eyes
Earrings,”
and
the
“Erickson
Bracelet,” (see Def. Mem. at 5-6.),
Beamon
Bette
Eyes
which were distributed for
sale at retailers throughout the United States.
4.)
Davis
(Herr Decl. ¶
While defendants do not submit that plaintiff’s jewelry
items depict any image or likeness of the actress Bette Davis
(see
Minch Decl. Exs. 1-8), it is undisputed that plaintiff
selected and used the “Bette Davis Eyes” name without prior
express authorization from the Estate.
(Id. ¶ 21; Herr Decl. ¶
4.)
In September 2011, upon learning about plaintiff’s jewelry
line, CMG, acting on behalf of the Estate, sent correspondence
to plaintiff advising that it believed the use of Bette Davis’s
name was unauthorized and, as such, constituted an infringement
of the Estate’s rights in and to her name, likeness, and image.
(Def.
Mem.
at
2;
Herr
Decl.
¶
4.)
Nearly
ten
months
of
consistent settlement negotiations ensued thereafter between CMG
and plaintiff’s outside litigation counsel.
(Herr Decl. ¶ 4.)
Defendants concede that throughout these negotiations, CMG did
not threaten litigation “but instead made clear to counsel for
3
Erickson Beamon that CMG and its client, the Estate of Bette
Davis, preferred to work out the issue of Erickson Beamon’s
unauthorized use of the name, image, and/or likeness of Bette
Davis in an amicable fashion.”
(Id.; see also id. Ex. A, at 2.)
Nevertheless, no such settlement was reached.
On
June
29,
2012,
plaintiff
seeking declaratory relief.
filed
(Id.)
the
instant
(Compl. ¶¶ 31-49.)
lawsuit
Specifically,
plaintiff’s complaint for declaratory relief asserts that its
collection was named for the song “Bette Davis Eyes,” recorded
by pop singer Kim Carnes in 1981, and has never used Bette
Davis’s likeness or in any other way affiliated itself with the
(Id. ¶¶ 7-8, 17.)
late actress.
It further maintains that
consumers of its jewelry are unaware of the actress Bette Davis,
despite the popularity of Ms. Carnes’ recording.
Essentially,
popularity
plaintiff’s
of
Ms.
complaint
Carnes’
alleges
recording
of
(Id. ¶ 19.)
that,
“Bette
but
for
Davis
the
Eyes,”
consumers of plaintiff’s jewelry would be completely unfamiliar
with the name Bette Davis.
vehemently
denies
any
(Compl. ¶ 18.)
usurpation
of
Plaintiff therefore
Bette
Davis’s
name,
allege
without
prior
likeness, or rights of publicity.
On
July
2,
2012,
and
defendants
notice, plaintiff’s counsel notified counsel for CMG that it had
4
filed an action for declaratory relief in this Court.
(Id.; see
dkt. no. 1.)
On November 16, 2012, CMG filed a lawsuit in the Southern
District of Indiana.
See Compl., CMG Worldwide, Inc. and The
Estate of Bette Davis v. Erickson Beamon Ltd. et al., No. 1:12cv-1687 (JMS) (S.D. Ind. Nov. 16, 2012) (dkt. no. 1.)
On December 17, 2012, defendants filed the instant motion
to dismiss or, in the alternative, to stay or to transfer this
action to the U.S. District Court for the Southern District of
Indiana.
(Dkt. no. 33.)
On January 18, 2013, plaintiff filed a
one-page motion, with no supporting memorandum of law, to enjoin
defendants from prosecuting the Indiana action.
Four
days
dismiss.
later,
(Dkt.
plaintiff
no.
February 9, 2013.
29.)
opposed
Defendants
(Dkt. no. 28.)
defendants’
filed
their
motion
to
reply
on
(Dkt. no. 38.)
DISCUSSION
I. Defendants’ Motion to Dismiss or Stay the New York Action
Pending Resolution of the Indiana Action
A. Legal Standards
Plaintiff brings her action under the Declaratory Judgment
Act,
28
U.S.C.
§
2201(a).
Primarily
defendants
argue
that
plaintiff’s claims are improperly brought under that provision
because they “were brought in anticipation of the coercive suit
5
for the purposes of gaining home field advantage.”
(Def. Mem.
at 8.)
Where
two
courts
have
concurrent
jurisdiction
over
an
action involving the same parties and issues, courts will follow
a
“first-filed”
possession
of
rule
the
whereby
action
the
decides
court
it.”
which
first
Schnabel
v.
has
Ramsey
Quantitative Sys., Inc., 322 F. Supp. 2d 505, 509-510 (S.D.N.Y.
2004); see also D.H. Blair & Co., Inc. v. Gottdiener, 462 F.3d
95,
106
lawsuits,
(2d
showing
Cir.
the
of
2006)
first
balance
suit
of
(“[W]here
should
there
have
convenience
or
are
two
priority,
special
competing
absent
the
circumstances
giving priority to the second.”) (quoting First City Nat’l Bank
& Trust v. Simmons, 878 F.2d 76, 79 (2d Cir. 1989); Buddy USA,
Inc. v. Recording Indus. Ass’n of Am., Inc., 21 Fed. App’x 52,
55, 2001 WL 1220548, at *2 (2d Cir. 2001).
Moreover, “The court
before which the first-filed action was brought determines which
forum
will
hear
the
case.”
MSK
Ins.,
Ltd.
v.
Employers
Reinsurance Corp., 212 F. Supp. 2d 266, 267 (S.D.N.Y. 2002)
(citing cases).
The presumption in favor of the first-filed suit, however,
“is not to be applied in a rigid or mechanical way.”
Dornoch
Ltd. v. PBM Holdings, Inc., 666 F. Supp. 2d 366, 369 (S.D.N.Y.
2009)
(internal
quotation
marks
6
omitted).
Indeed,
“[t]he
complex problems that can arise from multiple federal filings do
not lend themselves to a rigid test, but require instead that
the district court consider the equities of the situation when
exercising its discretion.” Curtis v. Citibank, N.A., 226 F.3d
133, 138 (2d Cir. 2006).
The “special circumstances” in which a district court may
dismiss the first-filed case without conducting an analysis of
the “balance of convenience” are rare. Emp'rs Ins. of Wausau v.
Fox Entm't Grp., Inc., 522 F.3d 271, 275 (2d Cir. 2008). One
such special circumstance “exists where the first-filed lawsuit
is an improper anticipatory declaratory judgment action.” Id.
Another special circumstance exists “where forum shopping alone
motivated the choice of the situs for the first suit.” William
Gluckin & Co. v. Int'l Playtex Corp., 407 F.2d 177, 178 (2d Cir.
1969).
One
type
of
first,
declaratory
threat
of
special
action
litigation.
circumstance
is
is
response
“When
filed
the
in
present
declaratory
to
action
where
a
the
direct
has
been
triggered by a notice letter, this equitable consideration may
be a factor in the decision to allow the later filed action to
proceed to judgment in the plaintiffs' chosen forum.” Factors
Etc., Inc. v. Pro Arts, Inc., 579 F.2d 215, 219 (2d Cir. 1978),
cert. denied, 440 U.S. 908 (1979); see also Pharm. Resources,
7
Inc. v. Alpharma USPD Inc., 2002 WL 987299, at *3 (S.D.N.Y. May
13, 2002) (An ‘apparent threat’ has been found where there is an
overt statement that a party intends to commence litigation.”)
(quoting Hanson PLC v. Metro–Goldwyn–Mayer Inc., 932 F. Supp.
104, 107 (S.D.N.Y. 1996)); 800–Flowers, Inc. v. Intercontinental
Florist, Inc., 860 F. Supp. 128, 132–33 (S.D.N.Y. 1994).
“Where
a party is prepared to pursue a lawsuit, but first desires to
attempt
settlement
discussions,
that
party
should
not
be
deprived of the first-filed rule's benefit simply because its
adversary used the resulting delay in filing to proceed with the
mirror image of the anticipated suit.”
Ontel Prods., Inc. v.
Project Strategies Corp., 899 F. Supp. 1144 (S.D.N.Y. 1995).
Following
Factors,
district
courts
have
also
found
an
exception to the first-filed rule where declaratory actions are
filed in response to demand letters that give specific warnings
as to deadlines and subsequent legal action.
v.
May
Dep't
1992)(can
declaratory
stating
Stores
infer
forum
action
that
if
Co.,
was
the
808
F.
shopping
filed
Supp.
from
after
sender's
claim
See Fed. Ins. Co.
347,
the
receipt
was
350
fact
of
not
(S.D.N.Y.
that
letter
satisfied
the
notice
by
a
specific date, then defendant would sue); Chicago Ins. Co. v.
Holzer, 2000 WL 777907 at *1 (S.D.N.Y. June 16, 2000) (specific
warning requirement met by a notice letter stating that if the
8
recipient's decision “remains unaltered, we will commence suit
in
a
court
of
appropriate
jurisdiction
in
forty
eight
(48)
hours”); Mondo, Inc. v. Spitz, 1998 WL 17744 at *1 (S.D.N.Y.
Jan.
16,
1998)(reached
similar
conclusion
where
declaratory
judgment action was filed after receipt of a letter stating the
sender's “intention to file suit in California if settlement
negotiations were not fruitful”).
By
contrast,
characterize
a
district
suit
as
courts
anticipatory
have
often
where
it
refused
is
filed
to
in
response to a notice letter that does not explicitly “inform[] a
defendant of the intention to file suit, a filing date, and/or a
specific forum for the filing of the suit . . . .”
Co.,
Ltd.
(S.D.N.Y.
v.
Republic
1995).
For
of
Tea,
example,
Inc.,
a
892
F.
declaratory
J. Lyons &
Supp.
action
486,
491
is
not
anticipatory where it is filed in response to a letter that is
indicative
of
insufficient
negotiations.
sender's
See,
demand
e.g.,
letter
id.
which
at
491
(finding
mentioned
“the
possibility of legal actions” without specifying date or forum,
and when the alleged infringer refused to cease and desist, the
sender merely responded that it would take the refusal “under
advisement”); see also Employers Ins. of Wausau v. Prudential
Ins. Co., 763 F. Supp. 46, 49 (S.D.N.Y. 1991) (finding letter
containing no explicit mention of an intent to sue, tentative
9
filing
date
or
a
forum
to
be
an
invitation
to
initiate
settlement negotiations and not to constitute notice of suit).
A second special circumstance exists “where forum shopping
alone motivated the choice of the situs for the first suit.”
William Gluckin & Co. v. Int’l Playtex Corp., 407 F.2d 177, 178
(2d Cir. 1969); see also Michael Miller Fabrics, LLC v. Studio
Imports Ltd., Inc., No. 12 CV 3858 (KMW) (JLC), 2012 WL 2065294,
at *5 (S.D.N.Y. June 7, 2012).
In order for forum shopping to
constitute a special circumstance, “the first-filing plaintiff
must engage in some manipulative or deceptive behavior, or the
ties
between
tenuous
or
the
de
litigation
minimis
that
and
a
the
full
first
forum
‘balance
of
must
be
so
convenience’
analysis would not be necessary to determine that the second
forum is more appropriate than the first.”
Fox, 522 F.3d at
276.
B. Analysis
There
is
no
dispute
that
the
instant
action
was
filed
before the Indiana action, or that the actions involve similar
parties and issues.
Thus, the question of whether the first-
filed rule applies turns on whether the New York action was, as
defendants contend, improperly anticipatory.
The September 13, 2011 cease and desist letter sent to
plaintiff by counsel for defendants is insufficient, on its own,
10
to
warrant
dismissal
under
the
improper
exception to the first-filed rule.
anticipatory
action
That letter contained no
specific warning of impending litigation, but rather threatened
pursuit of other legal options in the most general terms.
(See
Herr Decl. Ex. A, at 2 (“Should you fail to comply with our
request,
please
be
advised
that
our
client
is
prepared
to
utilize all legal avenues available to ensure that all such
unauthorized
use
ceases
and
that
our
client
compensated for such past unauthorized use.”))
is
fairly
A general threat
of that sort, without further detail as to the impending date
and place of filing, does not rise to the level of special
circumstances.
See,
e.g.,
Hanson
PLC
v.
Metro-Goldwyn-Mayer
Inc., 932 F. Supp. 104, 107 (S.D.N.Y. 1996); Pharm. Res., Inc.,
2002 WL 987299, at *3 (“An apparent threat has been found where
there is an overt statement that a party intends to commence
litigation.” (internal quotation marks omitted)).
Next,
defendants
rely
on
the
nearly
ten
months
of
settlement negotiations – which continued until plaintiff filed
the instant complaint on June 29, 2012 – as a basis to invoke
the
exception
provided
to
copies
the
of
first-filed
that
rule.
correspondence,
We
have
not
been
it
is
well
but
established that even consistent settlement negotiations do not
constitute
a
sufficient
threat
11
of
litigation
to
warrant
an
exception to the first-filed rule.
Supp.
2d
at
511-12
anticipatory
specifically
where
it
if
(“[A]
filed
is
in
declaratory
in
threatening
See, e.g., Schnabel, 322 F.
response
litigation,
response
to
a
judgment
to
but
a
is
negotiating
is
considered
demand
not
letter
anticipatory
letter.”
(citing
Factors, 579 F.2d at 219) (internal quotation marks omitted)).
Further, the considerable lapse in time between the filing of
plaintiff’s complaint in this Court on June 29, 2012 and the
filing of defendants’ complaint in Indiana on November 16, 2012
indicates that plaintiff did not commence the instant action
under an immediate threat of litigation.
Nor do we agree with defendants’ contention that plaintiff
was merely forum shopping when it filed this action in federal
court in New York.
occurs
when
a
(See Def. Mem. at 11.)
litigant
selects
a
forum
“Forum shopping
with
only
a
slight
connection to the factual circumstances of his action, or where
forum shopping alone motivated the choice.”
Supp.
at
513-14.
Thus,
a
party
who
Schnabel, 322 F.
appropriately
files
a
declaratory judgment in the forum most convenient to him to
resolve a ripe legal dispute is not engaged in forum shopping.
See, e.g., J. Lyons & Co., 892 F. Supp. at 491.
Here, plaintiff
is incorporated and headquartered in New York and conducts all
of its domestic business from its showroom here.
12
(Erickson
Decl. ¶¶ 2-3.)
both
Indeed, all of plaintiff’s sales activities,
domestic
Manhattan,
and
New
international,
York
office.
(Id.
are
¶
directed
4.)
Thus,
from
its
plaintiff’s
choice of this forum cannot be said to suggest forum shopping.
Defendants also contend that plaintiff’s suit is improperly
filed here because it seeks only a declaratory judgment; while
the issues raised in the second-filed Indiana action are all
encompassing, the reverse is not true.
Defendants suggest that
we should therefore dismiss the complaint.
12.)
(See Def. Mem. at
“[H]owever, the mere fact than an action is brought as one
for a declaratory judgment does not necessarily mean that it
constitutes an anticipatory filing for purposes of an exception
to
the
first
Strategies
filed
Corp.,
rule.”
899
F.
Ontel
Supp.
Prods.,
1144,
Inc.
1150
v.
Project
(S.D.N.Y.
1995)
(quoting 800-Flowers, Inc. v. Intercontinental Florist, Inc.,
860 F. Supp. 128, 132 (S.D.N.Y. 1994)) (internal quotation marks
omitted).
Indiana
We
further
action,
note
including
that
multiple
plaintiff
here
defendants
and
an
in
the
internet
retailer, have filed motions to dismiss in that court for lack
of
jurisdiction.
See
Def.
Erickson
Beamon,
Ltd.’s
Mot.
to
Dismiss for Lack of Jurisdiction, CMG Worldwide, Inc. and The
Estate of Bette Davis v. Erickson Beamon Ltd. et al., No. 1:12cv-1687 (JMS) (S.D. Ind. Mar. 18, 2013) (dkt. no. 19); Def.
13
PopSugar, Inc.’s Mot. to Dismiss for Lack of Jurisdiction, CMG
Worldwide, Inc. and The Estate of Bette Davis v. Erickson Beamon
Ltd. et al., No. 1:12-cv-1687 (JMS) (S.D. Ind. June 7, 2013)
(dkt. no. 42).
Those motions are currently pending.
Thus, the
resolution of plaintiff’s otherwise valid claim for declaratory
relief in the Indiana action is less than certain.
In sum, absent their reliance on the threat of litigation
argument
rejected
above,
defendants
offer
no
special
circumstances warranting an exception to the first-filed rule
here.
(See
Def.
Reply
Br.
at
12.)
Accordingly,
we
deny
defendants’ motion to dismiss.
II.
Defendants’ Motion to Transfer Venue to the Southern
District of Indiana
If not dismissed, defendants seek an order transferring the
instant action to the Southern District of Indiana.
They submit
that personal jurisdiction over plaintiff exists there, that it
is a proper venue for the instant action, and the balance of
convenience
factors,
as
well
counsel in favor of transfer.
as
the
interests
of
justice,
For the reasons that follow, we
find that transfer to the Southern District of Indiana would be
improper
because
that
court
lacks
plaintiff.
A. Legal Standards
14
personal
jurisdiction
over
Section
1404(a)
permits
a
district
court
to
transfer
a
civil action to “any other district or division where it might
have been brought.”
28 U.S.C. § 1404(a).
The purpose of the
provision is to “protect litigants, witnesses and the public
against unnecessary inconvenience and expense.”
Barrack,
376
U.S.
citation omitted).
612,
616
(1964)
(internal
Van Dusen v.
quotation
and
The burden is on the moving party to make a
clear and convincing showing that the action is one that might
have been brought in the proposed transferee forum, and that
transfer would promote convenience and justice.
See Fteja v.
Facebook, Inc., 841 F. Supp. 2d 829, 832 (S.D.N.Y. 2012).
Before we can transfer an action to another venue, we must
first determine whether the action may properly be transferred
there pursuant to 28 U.S.C. § 1404(a).
at 1153 (S.D.N.Y. 1995).
(1)
the
transferee
action
could
district
in
See Ontel, 899 F. Supp.
In particular, courts must ask whether
have
the
been
first
brought
instance;
in
and
the
(2)
proposed
if
so,
whether the case should be transferred there under § 1404(a) as
a matter of judicial discretion.
See Fox, 522 F.3d at 275;
Michael Miller, 2012 WL 2065294, at *5.
Where the transferee district is a proper venue, “motions
for transfer lie within the broad discretion of the district
court
and
are
determined
upon
15
notions
of
convenience
and
fairness on a case-by-case basis.”
Schoenefeld v. New York, No.
08 Civ. 3269 (NRB), 2009 WL 1069159, at *2 (S.D.N.Y. Apr. 16,
2009) (citing In re Cuyahoga Equip Corp., 980 F.2d 110, 117 (2d
Cir.
1992))
(internal
quotation
marks
omitted).
Among
the
factors to be considered in deciding whether to grant a motion
to transfer venue are: (1) the convenience of the witnesses; (2)
the convenience of the parties; (3) the relative means of the
parties; (4) the locus of the operative events; (5) the relative
ease of access to sources of proof; (6) the weight accorded to
plaintiff’s choice of forum; (7) the availability of process to
compel unwilling witnesses; (8) the forum’s familiarity with the
governing
justice
law;
based
and
(9)
trial
efficacy
upon
the
totality
of
the
and
the
interests
circumstances.
of
See
Schoenefeld, 2009 WL 1069159, at *2; see also New York Marine
and Gen. Ins. Co. v. Lafarge N. Am., Inc., 599 F.3d 102, 112 (2d
Cir. 2010).
The above factors do not comprise an exclusive list, nor
are they to be applied in a mechanical or formulaic manner.
“Rather, they, and any other factors peculiar to the particular
case in question, serve as guideposts to the Court's informed
exercise of discretion.”
Albert Fadem Trust v. Duke Energy
Corp., 214 F. Supp. 2d 341, 343 (S.D.N.Y. 2002).
B. Analysis
16
As
stated
defendants’
above,
proposed
we
must
transferee
first
determine
district
of
whether
the
Southern
District of Indiana is a proper venue for the instant action.
Defendants
submit
that
it
is,
given
its
offices
plaintiff’s business contacts with the forum.
21-22.)
there
and
(See Def. Mem. at
For the reasons that follow, we disagree.
a. Whether the Southern District of Indiana has Personal
Jurisdiction over Plaintiff
We
theories
interpret
of
defendants’
personal
arguments
jurisdiction:
to
First,
rely
they
on
three
claim
that
plaintiff maintains “systemic contact” with Indiana by virtue of
its business dealings there, warranting the exercise of general
jurisdiction.
a
They further contend that plaintiff has committed
substantial
portion
of
the
alleged
infringement
in
the
Southern District of Indiana, giving rise to specific personal
jurisdiction
there.
Lastly,
defendants
argue
that
long-arm
jurisdiction exists because defendants have caused advertising
and promotional materials to be distributed there, resulting in
tortious injury within the transferee forum. (Def. Mem. at 16.)
In
response,
plaintiff
argues
that
it
has
not
“purposely
exploited the [venue’s] market” and thus any contacts it has
with the transferee forum are insufficient to establish personal
jurisdiction.
(Pl. Opp. at 5.)
17
“A
district
court
sitting
in
diversity
has
personal
jurisdiction over a nonresident defendant only if a court of the
state
in
which
it
sits
would
have
jurisdiction.”
Pursue
Research Found. v. Sanofi-Synthelabo, S.A., 338 F.3d 773, 779
(7th
Cir.
2003).
Indiana
courts
assert
jurisdiction
over
defendants in any way that is consistent with the Federal Due
Process Clause.
LinkAmerica Corp. v. Albert, 857 N.E.2d 961,
967 (Ind. 2006).
Plaintiff correctly observes that the Due Process Clause
requires that defendants have minimum contacts with the forum
state.
Int’l
Shoe
Corp.
v.
Washington,
326
U.S.
310,
316
(1945).
Indiana courts interpret minimum contacts to require
that defendants “purposefully direct their business activities
at the state or at least purposefully avail themselves of the
benefits of that state.”
MacDermid Printing Solutions, LLC v.
Clear Stamp, Inc., No. 3:12-CV-259 JVB, 2013 WL 3176887, at *3
(N.D. Ind. June 21, 2013) (citing Tamburo v. Dworkin, 601 F.3d
693 (7th Cir. 2010)); see also Burger King Corp. v. Rudzewicz,
471 U.S. 462, 474-75 (1985).
In almost all cases, there must be
a direct link between the defendant’s activities and the forum
state.
LinkAmerica, 857 N.E.2d at 968.
In addition, the Supreme Court distinguishes between two
types
of
personal
jurisdiction:
18
general
and
specific.
Helicopteros Nacionales de Columbia v. Hall, 466 U.S. 408, 41415 (1984).
General jurisdiction exists where the defendant has
“continuous and systematic” contacts with the forum state.
at
416.
If
such
contacts
exist,
“the
court
may
Id.
exercise
personal jurisdiction over the defendant even in cases that do
not arise out of and are not related to the defendant’s forum
contacts.”
Hyatt Int’l Corp. v. Coco, 302 F.2d 707, 715 (7th
Cir. 2003).
Specific jurisdiction is more limited; in addition
to establishing the existence of minimum contacts, a plaintiff
must
show
that
“arise[s]
out
contacts.
the
or
controversy
plaintiff
“relate[s]
maintains
no
to”
between
the
the
parties
Id.
Here,
of”
alleged
defendant’s
contacts
with
the
forum
Southern
District of Indiana except for internet-based contact via its
website, accessible by users worldwide, on which it advertises
its collection, provides information about retail locations and
links
to
online
retailers.
www.ericksonbeamon.com.
(Erickson
Decl.
¶
10);
see
According to defendants, plaintiff has
offered the unauthorized merchandise for sale and distribution
on its website, www.ericksonbeamon.com, since late 2012.
Decl. ¶ 4; see Defs. Mem. at 6.)
that
its
website
does
not
However, plaintiff maintains
permit
online
registration, or the posting of comments.
19
(Herr
purchases,
user
(Erickson Decl. ¶ 10;
see Pl. Opp. at 8.)
Indeed, plaintiff avers that the only
opportunity for user interaction with its website is an option
to email plaintiff directly by clicking on the “Contact Us” tab.
(Erickson
Decl.
¶10);
see
http://www.ericksonbeamon.com
visited September 20, 2013).
(last
However, the website does provide
a list of retailers nationwide, which includes a listing for the
“French Pharmacie” in Indianapolis, Indiana.
Plaintiff submits
that French Pharmacie ceased being a retailer of its jewelry in
2008 and has purchased no Erickson Beamon products since that
time.2
(See Erickson Decl. ¶ 7).
It further submits that it has
never sold any items from the Bette Davis Eyes collection to the
French Pharmacie in Indianapolis.
Based
on
plaintiff’s
the
above,
website,
we
See id. ¶ 8.
find
that
the
www.ericksonbeamon.com,
accessibility
within
the
of
forum
state is insufficient to subject it to personal jurisdiction
there.
It is undisputed that the website does little more than
provide information to its users.
Decl.
¶
4.)
specifically
Moreover,
targeting
it
users
(Erickson Decl. ¶ 10; Minch
does
in
the
so
universally,
state
of
without
Indiana.
The
Seventh Circuit has found that where a defendant merely operates
a
website,
accessible
2
even
from,
a
but
“highly
does
not
interactive”
target,
the
website,
forum
that
state,
is
the
Plaintiff further submits that any listing of French Pharmacie as an Erickson
Beamon retailer on its website, www.ericksonbeamon.com, is in error. (Id. ¶
11.)
20
defendant
cannot
be
haled
into
offending the Constitution.
court
in
that
state
without
be2 LLC v. Ivanov, 642 F.3d 555,
559 (7th Cir. 2011); see also Advance DX, Inc. v. Health Point
Diagnostix, Inc., No. 1:12-cv-0756-TAB-TWP, 2012 WL 3782026, at
*2 (S.D. Ind. July 17, 2013).
sales
of
plaintiff’s
whatsoever.
Bette
Moreover, defendants point to no
Davis
Eyes
jewelry
in
Indiana
To the contrary, plaintiff maintains that it has
not sold a single item from that collection in Indiana to date.
(Erickson Decl. ¶ 8.)
Nor has plaintiff purposefully availed
itself of doing business in the state, given that it conducts no
business
there,
does
not
advertise
there,
and
distributed its jewelry to a retailer there since 2008.
has
not
(Id. ¶¶
6-8.)
Thus, because plaintiff lacks sufficient contacts with the
Southern District of Indiana, we find that transfer to that
forum would not be proper.
b. Venue and Balance of Convenience Factors
Because we find that the District Court for the Southern
District of Indiana lacks personal jurisdiction over plaintiff,
we need not reach the venue analysis and balance of convenience
factors in order to conclude that the motion to transfer venue
is improper.
See 28 U.S.C. § 1404(a) (providing that a district
21
court may transfer any civil action to any other district “where
it might have been brought”).
III. Plaintiff’s Motion to Enjoin the Prosecution of the
Indiana Action
Finally, in a one-page notice of motion, plaintiff moves
this
Court
to
enjoin
defendants’
prosecution
of
the
Indiana
action, relying solely on City of New York v. Exxon Corp., 932
F.2d 1020 (2d Cir. 1991).
Beyond the failure to submit a memorandum of law in support
of that motion, we find that plaintiff’s reliance on Exxon is
misplaced.
There, the Court of Appeals for the Second Circuit
concluded that a district court sitting in New York had properly
enjoined
litigation
of
the
City’s
damages
under
Comprehensive
Environmental
Response,
Compensation,
Liability
(“CERCLA”),
U.S.C.
9601
Act
42
§§
et
seq.,
the
and
in
bankruptcy proceedings in California, despite the City having
filed its bankruptcy action first, because the California court
was presented with similar issues in related actions and because
litigation
of
the
City’s
CERCLA
claim
in
the
bankruptcy
proceeding could have resulted in a withdrawal of the reference.
See id. at 1025-26.
in this case.
Neither of those considerations is present
Accordingly, we deny the motion to enjoin.
22
CONCLUSION
For
the
aforementioned
reasons,
dismiss or,
in the alternative,
Plaintiff's
motion
to
enjoin
actjion is also denied.
defendants'
motion
is denied.
to stay or trans
the
prosecution
The Clerk of the Court
of
the
SO ORDERED.
New York, New York
September ~ 2013
)
/}
.1:;<4#-,--" ~a:s::~(~ . ~
/
,
NAOMI REICE BUCHWALD
UNITED STATES DISTRICT JUDGE
23
Indiana
is directed to
terminate the motions pending at docket nos. 28 and 33.
DA'I1ED:
to
Copies of the foregoing Order have been mailed on this date
to the following:
Attorneys for Plaintiff
Je~frey Sonnabend, Esq.
So~nabendLaw
60d Prospect Avenue
Brdoklyn, N.Y. 11215
At orne s for Defendant
Th odore J. Minch, Esq.
So~ichMinch LLP
10Q99 Chesapeake Drive, Suite 100
Mc1ordSVille, IN 46055
Bonne L. Mohr, Esq.
La~ Offices of Bonnie L. Mohr, PLLC
381 Lexington Avenue, Suite 1613
Nel York, N.Y. 10168
24
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