AMERICAN GIRL, LLC v. ZEMBRKA, et al
OPINION AND ORDER granting 23 Motion to Dismiss. For the reasons stated herein, Defendants' motion to dismiss Plaintiff's complaint is granted because Plaintiff has not established that the Court has personal jurisdiction over Defendants in this action. Plaintiff's motion for a preliminary injunction is denied, and the previously entered temporary restraining order in this case is dissolved. (Signed by Judge Mary Kay Vyskocil on 4/28/2021) (ab) Transmission to Orders and Judgments Clerk for processing.
DATE FILED: 4/28/2021
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
AMERICAN GIRL, LLC,
-againstZEMBRKA d/b/a WWW.ZEMBRKA.COM and
WWW.ZEMBRKA.COM; and WWW.DAIBHIDH.COM,
OPINION AND ORDER
DISMISSING CASE FOR LACK OF
MARY KAY VYSKOCIL, United States District Judge:
Growing up, many young American girls receive American Girl brand dolls, watch
American Girl brand movies, and read American Girl brand books. These products seek to help
young girls learn life lessons and understand people of different races, religions, and cultures.
The products are incredibly popular with children and parents, leading to numerous awards from
industry and parenting groups and millions of products sold to date. Simply, the American Girl
brand is a quintessential American retail brand.
As is customary with many such iconic brands, however, the success of American Girl
dolls and other products has led to a market for cheaper, low-quality counterfeits. In an effort to
protect the quality of its products and intellectual property, Plaintiff, the creator of American
Girl-branded products, sought and received trademark protection for a number of phrases and
names affiliated with the toys. Plaintiff alleges that despite this legal protection, counterfeit
products still are manufactured, advertised, and sold, including by Defendants here, who operate
websites that appear to the Court to blatantly infringe on Plaintiff’s legally protected rights.
Plaintiff filed this action to attempt to stop such infringement. Plaintiff secured a restraining
order to temporarily bar Defendants from continued sale of infringing products, and now seeks a
preliminary injunction to enjoin Defendants through the pendency of this litigation.
In response, Defendants, who are all based in China, have moved to dismiss this case for
lack of personal jurisdiction and for ineffective service of process. They oppose Plaintiff’s
motion for a preliminary injunction on the same grounds. Unfortunately for Plaintiff, while the
merits of its underlying infringement claims appear facially valid, Defendants are correct that
they are not subject to personal jurisdiction in this Court. As a result, and for the reasons that
follow, Defendants’ motion to dismiss Plaintiff’s complaint is GRANTED, Plaintiff’s motion for
a preliminary injunction is DENIED, and the previously entered temporary restraining order in
this case is dissolved.
The facts as stated herein are taken from Plaintiff’s Complaint, ECF No. 6 (“Cpl.”) and
are accepted as true for the purposes of the motion to dismiss. See Ashcroft v. Iqbal, 556 U.S.
662, 678 (2009).
Plaintiff American Girl, LLC is the creator, manufacturer, and seller of products under
the brand name “American Girl.” See Cpl. ¶ 22. American Girl products “are a coveted line of
dolls, books and doll accessories that are intended to teach girls important lessons about
America’s history and foster pride in the traditions of growing up as a female in America.” Cpl.
¶ 11. American Girl products have received more than 450 different awards from industry
groups, parenting organizations, and others in recognition of their messages and quality. Cpl.
¶ 15-16. Since 1986, consumers have purchased more than one hundred fifty-nine million
American Girl books and more than thirty-three million American Girl dolls. Cpl. ¶ 14.
In order to protect their products and ensure the quality of products marketed under the
“American Girl” brand, Plaintiff has sought and received numerous trademark registrations for
“American Girl” and other phrases and names, for a variety of services and products. Cpl. ¶ 1718. For example, Plaintiff holds trademark registration number 2,200,654 for the use of
“American Girl” on toys, games, and sporting goods. Cpl. ¶ 18, Ex. B. Plaintiff alleges that a
significant portion of its success has resulted from the superior quality of its products and the
ability to restrict use of the “American Girl” name to similarly high-quality goods. Cpl. ¶¶ 2125.
At some point, Plaintiff became aware of allegedly counterfeit and infringing products
being sold online using the “American Girl” name and trademarks. Cpl. ¶ 27. After an
investigation, Plaintiff determined that Defendants, several websites operated by individuals in
China, were responsible for at least some of these sales. Cpl. ¶¶ 27-29.
Defendants’ websites appear to offer for sale products that are nearly indistinguishable
from Plaintiff’s own goods, including by using the trademarked names for each variety of doll
and by using the “American Girl” name. Cpl. ¶¶ 29-30. Plaintiff also alleges that Defendants
copied images from Plaintiff’s website and “have deliberately intended to mimic or resemble
Plaintiff’s Website through their use of the same color scheme, as well as the prominent use of
one of the stylized American Girl Marks in the header, in an obvious intent to deliberately
mislead consumers.” Cpl. ¶ 31. Plaintiff confirms that it never authorized or licensed to
Defendants any ability to sell American Girl products. Cpl. ¶ 34.
Before the filing of this lawsuit, Plaintiff and its counsel investigated the counterfeit and
infringing products for sale on Defendants’ website. As part of that investigation, Plaintiff’s
counsel purchased two products from each of the websites operated by Defendants. Cpl. ¶ 32,
Ex. D. In the ordering process, counsel input a New York address for shipping purposes. Cpl. ¶
32. Plaintiff paid for the products, but they were never delivered. See Plaintiff’s Memorandum
of Law in Opposition to Motion to Dismiss, ECF No. 28 (“Pl Br.”) at 5. Plaintiff was later
refunded for the products they had purchased. See Pl. Br. at 5 n.4.
Plaintiff filed its complaint in March 2021. The action was initially filed under seal to
permit Plaintiff to seek a temporary restraining order without notice to Defendants. See Sealing
Order, ECF No. 1. Plaintiff sought an ex parte temporary restraining order which would, among
other things, freeze Defendants’ websites and financial accounts and enjoin Defendants from
manufacturing, advertising, and selling allegedly infringing products. See Proposed Temporary
Restraining Order, ECF No. 13, at 5-7. Plaintiff claimed ex parte relief was appropriate because
it feared that Defendants would secret away assets or take their websites offline if notice of the
proceeding and application first was given. Id. at 4. The proposed order also sought
authorization for alternative service on Defendants by email and expedited discovery from
Defendants, the companies that hosted Defendants’ websites and their financial institutions. Id.
On March 18, 2021, the Court signed the proposed order with some modifications. See
Temporary Restraining Order and Order to Show Cause, ECF No. 17 (“TRO”). In signing the
Order, the Court noted that Defendants appeared to be marketing and selling products, using
counterfeit versions of Plaintiff’s trademarks, and that the websites and products listed there
were substantially similar or seemingly identical to Plaintiff’s legal versions. TRO at 1-4. The
Court’s order also authorized alternative service by email and for the immediate freezing of
Defendants’ websites and accounts. See TRO at 9-10.
By its terms, the order expired fourteen days after it was signed, and by which point all
Defendants should have been served by the email service regime authorized in the TRO. Before
it expired, Plaintiff filed a letter seeking to extend the TRO through the date the Court had set for
a hearing on Plaintiff’s motion for a preliminary injunction, April 14, 2021. See Letter to Court,
ECF No. 18. Plaintiff confirmed that as of the date of letter—March 30, 2021—all Defendants
had been served by email. Id. Despite being served and having their accounts frozen, no
Defendants responded to the TRO by that point, nor did any Defendant seek, at that time, to
dissolve the TRO. In light of that, the Court extended the TRO through the previously scheduled
hearing. See Order Extending TRO, ECF No. 25.
On the morning of the hearing, and after the date for the submission of opposition papers,
Defendants appeared and filed a joint opposition to the preliminary injunction motion and their
own motion to dismiss the complaint. See Opposition to Preliminary Injunction and Motion to
Dismiss Complaint, ECF No. 23. In support of the motion, Defendants filed a memorandum of
law [ECF No. 23-1] (“Def. Br.”), and affidavits by multiple individuals that own and operate the
Defendants and the websites [ECF Nos. 23-2, 23-3, 23-4].
Counsel for Defendants also appeared at the hearing to oppose the entry of a preliminary
injunction. Defendants admitted their delay in filing papers, despite also acknowledging that
they had received copies of the TRO and other papers before the deadline to respond. See
Transcript of April 14, 2021 Hearing, ECF No. 26 (“Tr.”), at 20:13-19. Defendants consented to
an extension of the TRO while their motion to dismiss the complaint was briefed. Tr. At 20:2021:12, 22:20-23:4.
Thereafter, Plaintiff filed an opposition to Defendants’ motion to dismiss [ECF No. 28]
(“Pl. Br.”) along with an additional declaration of counsel and of its corporate secretary [ECF
Nos. 29-30]. Defendants then filed a reply [ECF No. 31] (“Reply”).
In opposing a Rule 12(b)(2) motion to dismiss for lack of personal jurisdiction, “[a]
plaintiff bears the burden of demonstrating personal jurisdiction over a person or entity against
whom it seeks to bring suit.” Penguin Grp. (USA) Inc. v. Am. Buddha, 609 F.3d 30, 34 (2d Cir.
2010) (citing In re Magnetic Audiotape Antitrust Litg., 334 F.3d 204, 206 (2d Cir. 2003)).
Specifically, the plaintiff must make a prima facie showing that jurisdiction exists by including
an averment of facts that, if credited, would suffice to establish jurisdiction over the defendant.
Id. at 34-35 (quoting Thomas v. Ashcroft, 470 F.3d 491, 495 (2d Cir. 2006), and then quoting In
re Magnetic Audiotape, 334 F.3d at 206).
When evaluating the motion, the Court must “accept all of the complaint’s factual
allegations as true and draw all reasonable inferences in the plaintiff’s favor.” Siegel v. HSBC
N. Am. Holdings, Inc., 933 F.3d 217, 222 (2d Cir. 2019) (quoting Giunta v. Dingman, 893 F.3d
73, 78-79 (2d Cir. 2018)). However, the Court is “not bound to accept conclusory allegations or
legal conclusions masquerading as factual conclusions.” Id. (quoting In re Facebook Initial
Public Offering Derivative Litig., 797 F.3d 148, 159 (2d Cir. 2015)). In reviewing a motion to
dismiss, the Court is limited the “facts stated on the face of the complaint, . . . documents
appended to the complaint or incorporated in the complaint by reference, and . . . matters of
which judicial notice may be taken.” Concord Assocs., L.P. v. Entm’t Props. Tr., 817 F.3d 46,
51 n. 2 (2d Cir. 2016). However, when considering arguments related to personal jurisdiction,
“the Court may look beyond the four corners of the complaint and consider materials outside the
pleadings, including accompanying affidavits, declarations, and other written materials.” Knight
v. Standard Chartered Bank, No. 19-cv-11739 (PAE), __ F. Supp. 3d __, 2021 WL 1226870, at
*1 n.1 (S.D.N.Y. Mar. 31, 2021) (citing Jonas v. Est. of Leven, 116 F. Supp. 3d 314, 323
Plaintiff asserts that Defendants properly are subject to jurisdiction in New York.
Plaintiff admits that the Court cannot assert “general” jurisdiction over Defendants, see See Pl.
Br. at 7, because Defendants operate from China, are not incorporated in any state in the United
States, and, thus, are not “essentially at home” in New York. Goodyear Dunlop Tires Ops., S.A.
v. Brown, 564 U.S. 915, 919 (2011). Instead, Plaintiff asserts that Defendants are subject to
specific personal jurisdiction here. Specific jurisdiction requires that a defendant “purposefully
avail” itself of “the privilege of conducting activities within the forum State.” Ford Motor Co. v.
Montana Eighth Judicial Dist. Ct., __ U.S. __, 141 S. Ct. 1017, 1025 (2021) (quoting Hanson v.
Denckla, 357 U.S. 235, 253 (1958)).
Evaluating personal jurisdiction generally entails a two-stage analysis. See Bank Brussels
Lambert v. Fiddler Gonzalez & Rodriguez, 305 F.3d 120, 124 (2d Cir. 2002). First, the Court
must analyze whether the law of the state—here, New York’s long-arm statute, N.Y.
C.P.L.R. § 302—subjects the individual to jurisdiction. Id. Second, if New York law would
permit the exercise of jurisdiction, the Court then must evaluate whether the exercise of
jurisdiction would comport with constitutional due process protections. Id.; Friedman v.
Bloomberg L.P., 884 F.3d 83, 90 (2d Cir. 2017) (“In determining whether [specific personal]
jurisdiction exists, a court ‘must look first to the long-arm statute of the forum state . . . If the
exercise of jurisdiction is appropriate under that statute, the court must decide whether such
exercise comports with the requisites of due process.’” (quoting Whitaker v. Am. Telecasting,
Inc., 261 F.3d 196, 208 (2d Cir. 2001))).
The New York Long-Arm Statute Does Not Permit the Exercise of Jurisdiction Here
Plaintiff has offered two provisions of the New York long arm statute that it says subjects
Defendants to jurisdiction here. First, Plaintiff claims that Defendants have transacted business
in New York, which subjects them to personal jurisdiction for claims related to that business.
See N.Y. C.P.L.R. § 302(a)(1). Second, Plaintiff claims that Defendants’ infringement activity is
a “tortious act” and Defendants should “reasonably expect the act to have consequences in the
state.” N.Y. C.P.L.R. § 302(a)(3)(ii). Neither of Plaintiff’s arguments is availing.
Transaction of Business
Plaintiff has not pleaded a prima facie case or shown evidence that the Defendants
transact business in New York. The New York long-arm statute provides that “a court may
exercise personal jurisdiction over any non-domiciliary, or his executor or administrator, who in
person or through an agent transacts any business within the state or contracts anywhere to
supply goods or services in the state.” 1 N.Y. C.P.L.R. § 302(a)(1).
The Second Circuit has previously indicated that certain forms of internet commerce,
even where the defendant is not physically located in New York, are sufficient to find that a
defendant “transacted business” here. See Chloé v. Queen Bee of Beverly Hills, LLC, 616 F.3d
158 (2d Cir. 2010) (“[T]he single act of an out-of-state defendant employee shipping an item into
New York, combined with his employer's extensive business activity involving New York, gives
rise to personal jurisdiction over the employee.”). In Chloé, the Second Circuit held that an
individual who shipped an allegedly counterfeit bag into New York was subject to personal
jurisdiction in New York under the “transacting business” prong of the long-arm statute because
of 1) his sale and shipment of one bag and 2) the extensive contacts his employer had with New
York. Id. at 169-171. 2 Relevant to the analysis, the Circuit held that the employer’s contacts
Plaintiff does not argue that by offering products for sale on their website, Defendants have made an “offer” to
contract with Plaintiff. Under this theory, when Plaintiff submitted its order for goods to be shipped into New York,
arguably a contract was created, and jurisdiction may be appropriate. Cf. Nicosia v. Amazon.com, Inc., 834 F.3d
220, 234 (2d Cir. 2016) (noting, under Washington law, that a contract was formed when a plaintiff submitted an
order on Amazon.com). The Court does not decide this issue here because it has not been argued or briefed by the
Parties. I note, however, that if Plaintiff’s order did finalize the formation of a contract, Defendants’ defense,
discussed below, that they have a policy of not shipping to New York and the United States may not be sufficient to
abrogate the contract, since there is no evidence that the purported policy was communicated to Plaintiff before the
order was submitted. See, e.g., Hines v. Overstock.com, 380 F. App’x 22, 24 (2d Cir. 2010) (collecting cases under
New York law holding that uncommunicated conditions of a contract are unenforceable) (summary order).
While a court generally may not impute all of a company’s contacts on to an employee, the facts elicited in Chloé
demonstrated that the individual defendant was more than a normal employee. Instead, he “shared in the profits
from the bags Queen Bee [the corporate defendant] sold, had joint access to the Queen Bee bank account, used
Queen Bee revenue to pay his Beverly Hills rent, and shared in the decision-making and execution of the purchase
and sale of handbags.” Chloé, 616 F.3d at 169. As a result, the Second Circuit held that the contacts could be
included the operation of a “highly interactive website offering  bags for sale to New York
consumers” and fifty-two previous transactions where goods actually were shipped into New
York. Id. at 170-71. Those contacts (which were imputed to the individual Defendant) along
with the individual Defendant’s actually shipping one allegedly infringing bag into New York
himself were sufficient to show that he “transacted business” in New York. Id. at 171. Since
Chloé, courts in this District have split on what specific actions, if any, a defendant must take in
addition to operating a website accessible from New York to constitute “transacting business in
New York” for jurisdictional purposes. Compare e.g., Poof-Slinky, LLC v. A.S. Plastic Toys Co.,
Ltd., No. 19-cv-9399 (ER), 2020 WL 5350537, at *4 (S.D.N.Y. Sept. 4, 2020) (noting that
defendants who did not ship any products to New York are nonetheless subject to jurisdiction
because “the offering for sale of even one copy of an allegedly infringing item, even if no sale
results, is sufficient to give personal jurisdiction over the alleged infringer” (quotation marks
omitted)), with Alibaba Grp. Holding Ltd. v. Alibabacoin Found., No. 18-cv-2897 (JPO), 2018
WL 2022626, at *4 (S.D.N.Y. Apr. 30, 2018) (“[T]he existence of an interactive patently
commercial website that can be accessed by New York residents is not sufficient to justify the
exercise of personal jurisdiction unless some degree of commercial activity occurred in New
I conclude, based on the record before the Court, that Defendants here have not
“transacted business” in New York. Plaintiff cannot point to a single sale that Defendants made
into New York or any action that Defendants took to target their sales activity into this state.
The only instance to which Plaintiff can point is an attempted purchase, by Plaintiff’s counsel, of
products from Defendants’ websites on the same day Plaintiff filed its complaint. Cpl. Ex. D.
imputed to him under longstanding New York law. Id. at 167-68 (citing Kreutter v. McFadden Oil Corp., 522
N.E.2d 40, 44, 71 N.Y.2d 460, 467 (1988)).
However, as Plaintiff admits, no product ever reached New York and Plaintiff was, in fact,
refunded the purchase price. 3 See Pl Br. at 5. This may be because, as Defense counsel
explained at the April 14 hearing, Defendants claim to have a policy of not shipping products to
the United States and to refund any money paid by a potential American purchaser. 4 Tr. at
17:18-18:1. While Defendants’ evidentiary record in support of their motion to dismiss is
conspicuously silent on this supposed policy, see, e.g., Affidavit of Wanglin Yu, ECF No. 23-2,
¶ 17 (noting that the affiant has “never shipped/sold any allegedly infringing product to anyone
including anyone in New York,” but not discussing a policy not to ship goods into the United
States), 5 Plaintiff—who bears the burden to allege jurisdiction—does not allege any sales into
New York or any action by Defendants to target their sales activity to New York.
Instead, Plaintiff rests its argument for C.P.L.R. § 302(a)(1) jurisdiction on cases that
state that “[t]he offering for sale of even one copy of an allegedly infringing item, even if no sale
results, is sufficient to give personal jurisdiction over the alleged infringer under N.Y. CPLR
§ 302(a).” Pl. Br. at 5 (quoting Cartier v. Seah LLC, 598 F. Supp. 2d 422, 425 (S.D.N.Y. 2009)).
These cases are, of course, not binding, and, on careful analysis, do not support Plaintiff’s
argument on the record before the Court. The Cartier case cited by Plaintiff is cited throughout
the Plaintiff’s other precedents as support for this assertion. See, e.g., Poof-Slinky, 2020 WL
Plaintiff admits that it received a refund for the products purchased by counsel on April 10, 2021, and provided
documentation to that effect. See Pl. Br. at 5; see also Declaration of Kerry B. Brownlee in Opposition to Motion to
Dismiss, ECF No. 30, at ¶ 22, Ex. C.
While the refund was received on April 10, 2021, Plaintiff did not mention the refund during the hearing on April
14. While the Court did not specifically inquire about a refund with Plaintiff’s counsel, the Court did ask whether
the products Plaintiff purchased were ever received in New York. Tr. at 9:4-25. Plaintiff’s counsel answered
simply that the products were never received. Id. The Court assumes that Plaintiff’s omission of the fact that a
refund for the order was received three days earlier was an oversight and not an attempt to mislead the Court.
Identical paragraphs, with the same conspicuous absence of any mention of a policy not to sell goods into the
United States, appear in each of the affidavits Defendants’ submitted from operators of the Defendant websites. See
Affidavit of Yanmei Yu, ECF No. 23-3, ¶ 17 (“I have never shipped/sold any allegedly infringing product to anyone
including anyone in New York.”); Affidavit of Yi Fang, ECF No. 23-4, ¶ 17 (“I have never shipped/sold any
allegedly infringing product to anyone including anyone in New York.”).
5350537, at *4 (citing Cartier); Mattel v. AnimeFun Store, No. 18-cv-824 (LAP), 2020 WL
2097624, at *4 n.7 (S.D.N.Y. May 1, 2020) (same). However, the Court is not persuaded by
Plaintiff’s reliance on Cartier, primarily because, in that case, the Defendants actually did sell
allegedly infringing products (there, watches) into New York and admitted to the sale and
shipment of a watch to an agent of the plaintiff. See Cartier, 598 F. Supp. 2d at 425; see also,
Dkt. No. 35 at ¶ 22, Declaration of Rachel Levy in Support of Motion to Dismiss, Cartier v.
Seah LLC, No. 08-cv-4471 (LAK) (acknowledging that a product was sold and shipped to a New
York address belonging to plaintiff’s agent). In addition, at least one of the other cases on which
Plaintiff relies also had consummated sales and shipments of products into New York from at
least some of the Defendants. See Poof-Slinky, LLC, 2020 WL 5350537, at *4 (“Plaintiff
contends, and the Orel Defendants admit, that NAL engaged in at least one transaction with each
Orel Defendant to purchase allegedly counterfeit products for shipment to New York” and citing
Defendant’s memorandum of law acknowledging purchases and shipments). Here, unlike in
Cartier, there is no record evidence to suggest that any product actually has been shipped to or
received in New York.
The Court is unconvinced that a Defendant simply owning a website that is “accessible”
from New York is enough to find that it transacts business here, as Plaintiff argues.6 Unless a
website owner takes affirmative steps to limit access to his website, a web page generally is
Plaintiff cites a previous opinion issued by this Court as authority for the proposition that operating a website,
absent more, is sufficient to “transact business.” See Pl. Br. at 6 (citing Smart Study Co. v. A Pleasant Trip Store,
No. 20-cv-1733 (MKV), 2020 WL 2227016 (S.D.N.Y. May 7, 2020). To the extent any of the conclusions herein
differ with the conclusions in that case, the Court notes that it is not bound by its own prior opinion in a different
case. See Camreta v. Greene, 563 U.S. 692, 710 n.7 (2011) (“‘A decision of a federal district court judge is not
binding precedent in either a different judicial district, the same judicial district, or even upon the same judge in a
different case.’” (quoting 18 J. Moore et al., Moore’s Federal Practice § 134.02[d], p. 134–26 (3d ed.2011)). In
any event, unlike this case, there was no clear admission in Smart Study Co. that no products ever reached or were
shipped to New York.
available to anyone in the world with an internet connection. 7 See generally Peter K. Yu, A
Hater’s Guide to Geoblocking, 25 B.U. J. OF SCI. & TECH. L. 503, 504-506 (explaining that
“geoblocking” allows a content owner to restrict access to a website or other content based on
the user’s location). In order to be subject to jurisdiction, however, a defendant must engage in
business “purposefully directed toward the forum State.” Ford Motor Co. 141 S. Ct. at 1025
(Plaintiff “must show that the defendant deliberately ‘reached out beyond’ its home—by, for
example, ‘exploi[ting] a market’ in the forum State.” (quoting Walden v. Fiore, 571 U.S. 277,
285 (2014))); Asahi Metal Indus. Co. v. Super. Ct., 480 U.S. 102, 112 (1987) (“The substantial
connection between the defendant and forum State necessary for a finding of minimum contacts
must come about by an action of the Defendant purposefully directed toward the forum State.”
(citing Burger King Corp. v. Rudewicz, 471 U.S. 462, 475-76 (1985)) (emphasis in original)); see
also Chloé, 616 F.3d at 171 (quoting Asahi Metal, 40 U.S. at 112). Defendants’ choice not to
take the extra step to limit access to their websites by New Yorkers cannot be said to be conduct
“purposefully directed” at New York. This is especially true where Defense counsel has
represented that Defendants’ company policy is to not ship orders to the United States and to
refund payments received. See Tr. at 17:18-18:1. While Defendants might ideally state on their
websites that products are not shipped to New York or to the United States, failure to do so is not
dispositive since it is Plaintiff’s burden to show that Defendant’s “purposefully” took some
action directed at New York. Penguin Grp., 609 F.3d at 34-35 (“A plaintiff bears the burden of
demonstrating personal jurisdiction” by showing “facts that, if credited, would suffice to
To most people, the most common example of this technology is the use of “geoblocking” to restrict access to
internet streaming websites like Netflix, HBO, and Amazon, based on the users location. Examples of this type of
restriction, as well as user’s attempts to avoid them, abound. See, e.g., Quentin Hardy, National Borders Dissolve,
For Work and for Movies, N.Y. TIMES, Feb. 9, 2015, at B6 (discussing methods to use virtual private networks
(“VPNs”) to avoid geoblocking technology on internet video streaming websites and noting that approximately 20
million people worldwide use such services).
establish jurisdiction over the defendant.” (quoting In re Magnetic Audiotape, 334 F.3d at 206)
While there is some contrary authority within the District, several other judges in the
District have reached the same conclusion as the Court does here, and have held that simply
operating a website, absent more, is insufficient to establish that Defendants “transact business”
in New York within the meaning of C.P.L.R. § 302(a)(1) sufficient to subject a defendant to
jurisdiction in New York. See, e.g., Alibaba Grp. Holding, 2018 WL 2022626, at *4 (“Even the
existence of an interactive ‘patently commercial’ website that can be accessed by New York
residents is not sufficient to justify the exercise of personal jurisdiction unless some degree of
commercial activity occurred in New York.” (quoting ISI Brands, Inc. v. KCC Int'l, Inc., 458 F.
Supp. 2d 81, 87–88 (E.D.N.Y. 2006))); Starmedia Network, Inc. v. Star Media, Inc., No. 00-cv4647, 2001 WL 417118, at *3 (S.D.N.Y. Apr. 23, 2001) (“[I]t is now 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.” (quoting Nat’l Football League v. Miller,
No. 99-cv-11846 (JSM), 2000 WL 335566, at *1 (S.D.N.Y. Mar. 30, 2000))).
In one recent example, the court held that the defendant company did not transact
business in New York by means of its website for the purpose of personal jurisdiction despite
being accessible from this state because no purchases or sales had occurred in New York and
Defendants’ store policy was only to fulfill orders within a 300 mile radius of one of their stores
(none of which were within 300 miles of New York). Guglielmo v. Nebraska Furniture Mart,
Inc., No. 19-cv-11197 (KPF), 2020 WL 7480619, at *8 (S.D.N.Y. Dec. 18, 2020). In reaching
that decision, Judge Failla pointed to several cases holding that “even the existence of an
interactive ‘patently commercial’ website that can be accessed by New York residents is not
sufficient to justify the exercise of personal jurisdiction unless some degree of commercial
activity occurred in New York.” Id. (quoting Alibaba Grp. Holding, 2018 WL 2022626, at *4).
In short, absent some action by Defendant to specifically target New York with its sales and
website, or consummated transactions in the state of New York, Plaintiff cannot establish that
Defendants “transact business” in New York for the purposes of personal jurisdiction. Id. at *9
(“To the extent Plaintiff would argue that Defendant's ‘national web presence’ targets New York,
such national presence, standing alone, is insufficient to support the exercise of personal
jurisdiction”); see also Girl Scouts of U.S. v. Steir, 102 F. App’x 217, 219-20 (2d Cir. 2004)
(affirming dismissal for lack of personal jurisdiction where defendants “manifested no intent
specifically to target New York supporters or to avail themselves of the particular benefits of
New York law.”) (summary order). As a result, Section 302(a)(1) of the long-arm statute does
not justify the exercise of personal jurisdiction over Defendants on the facts before the Court.
Plaintiff alternatively bases jurisdiction in this case on Defendants’ alleged tortious
conduct. The New York long-arm statute provides that
a court may exercise personal jurisdiction over any non-domiciliary . . . who in
person or through an agent commits a tortious act without the state causing injury
to person or property within the state, . . . if he expects or should reasonably
expect the act to have consequences in the state and derives substantial revenue
from interstate or international commerce
N.Y. C.P.L.R. § 302(a)(3)(ii). In other words, Plaintiff may establish specific personal
jurisdiction over Defendants if (1) the defendant committed a “tortious act” outside New York;
(2) the cause of action in this action arose from that tortious act; (3) the tortious act caused injury
to a person or property in New York; (4) the defendant expected or should reasonably have
expected the tortious act to have consequences in New York; and (5) the defendant derives
substantial revenue from interstate or international commerce.” Solé Resort, S.A. de C.V. v.
Allure Resorts Mgmt., LLC, 450 F.3d 100, 106 (2d Cir. 2006).
Plaintiff is correct that it has established the existence of a tortious act and a connection
between the tortious act and the claims in this case. Specifically, plaintiff alleges that
Defendants are committing trademark infringement and have brought claims for relief based on
that infringement. See Touro Coll. V. Fondazione Touro Univ. Rome Onlus, 2017 WL 4082481,
at *11 (S.D.N.Y. Aug. 31, 2017) (for the purposes of N.Y. C.P.L.R. § 302(a)(3), “trademark
infringement constitutes a tort.” (citing Chatwal Hotels & Resorts LLC v. Dollywood Co., 90 F.
Supp. 3d 97, 106 (S.D.N.Y. 2015))).
Plaintiff has not established, however, that Defendants’ infringement caused injury in
New York for the purposes of personal jurisdiction. The New York Court of Appeals previously
has held that the situs of an injury based on copyright infringement occurring over the internet is
“the location of the copyright holder.” Penguin Grp. (USA) Inc. v. Am. Buddha, 946 N.E.2d 159,
162, 16 N.Y.3d 295, 302 (2011). While that opinion limited the ruling to the kinds of facts
before the Court (involving publication of copyrighted material over the internet and not in any
one place), since the Penguin Group case has decided, courts have applied the ruling’s logic to
trademark cases. See, e.g., Alibaba Grp. Holding, 2018 WL 2022626, at *7-8. Under this
controlling law, Defendants’ alleged infringement would cause injury to Plaintiff in California.
See Cpl. ¶ 5 (“Plaintiff American Girl, LLC is a limited liability [company] . . . with its principal
place of business located at 333 Continental Boulevard, TWR 15-1, El Segundo, CA 90245”).
Even if this language from Penguin Group is not dispositive of the issue, Plaintiff
nonetheless fails to establish injury in New York under traditional tort principles applicable to
the New York long-arm statute. Generally, the situs of a commercial tort injury is “the place
plaintiff lost business.” Penguin Grp., 16 N.Y.3d at 305 (quoting American Eutectic Welding
Alloys Sales Co. v. Dytron Alloys Corp., 439 F.2d 428, 433 (2d Cir. 1971)). To establish loss of
business, the plaintiff needs to identify customers who were confused or potentially confused by
the infringement. See, e.g., Energy Brands Inc. v. Spiritual Brands, Inc., 571 F. Supp. 2d 458,
471 (S.D.N.Y. 2008) (finding an injury in New York where “[d]efendants’ goods were
purportedly passed off and sold to New Yorkers who were actually or potentially confused as to
their origin.”). However, Plaintiff also cannot establish an injury in New York using this
analysis because it has failed to allege or offer any evidence of any New York customers who
were confused by the alleged counterfeits or who purchased them. See Alibaba Grp. Holding,
2018 WL 2022626, at *8 (‘Without allegations of specific, non-speculative harm in the form of
actual or potential injury in a New York market for its services, [Plaintiff] cannot establish a
New York-based injury under an economic tort theory.”). As described above in connection
with Defendants’ alleged business contacts, Plaintiff alleges only a single sale to New York for
each Defendant, neither of which ultimately were consummated. While Plaintiff does allude to
an unknown number of customers (whose locations also were unknown and were, thus, not
necessarily in New York) who complained about Defendants’ products, see Pl. Br. at 9 n.8, this
vague reference does not satisfy Plaintiff’s burden to allege personal jurisdiction and to establish
a specific “New York market” influenced by Defendants’ infringement. Cf. Elsevier, Inc. v.
Grossman, 77 F. Supp. 3d 331, 346 (S.D.N.Y. 2015) (“Harm to a business in the New York
market through lost sales or lost customers’ may meet the requirement of injury in the forum
state, but ‘those lost sales must be in the New York market, and those lost customers must be
New York customers.” (internal quotation marks and citations omitted). Because Plaintiff fails
to establish a New York injury, the Court need not analyze the final two elements of the tortious
injury provision of the long-arm statute. 8
While Plaintiff has not alleged an injury in New York, Defendants suggest that Plaintiff’s injury occurred either in
California or Delaware. See Def. Br. at 6. Without deciding the issue, the Court notes that Plaintiff may be able to
refile this case in one of those states and assert jurisdiction on the ground that its injury occurred there. For this
reason, the Court also does not consider Plaintiff’s request that the Court find personal jurisdiction appropriate here
under Federal Rule of Civil Procedure 4(k)(2). See Pl. Br. at 9 n.7. That rule provides that a court may find
As described above, Plaintiff has not established either that Defendants transact business
in New York or that jurisdiction over them is appropriate based on a New York injury resulting
from their tortious conduct. In sum, state law does not permit the exercise of jurisdiction over
Defendants here. In light of that, the Court does not reach the second step of the personal
jurisdiction analysis or consider whether exercising jurisdiction would be consistent with
constitutional due process. Instead, because the exercise of jurisdiction is not permitted by state
law, the case must be dismissed.
In a footnote, Plaintiff includes a request for jurisdictional discovery. See Pl. Br. at 10
n.9. Jurisdictional discovery is appropriate where the plaintiff “has made a threshold showing
that there is . . . a colorable claim of jurisdiction.” WM Int’l, Inc. v. 99 Ranch Mkt. #601, 329
F.R.D. 491, 495 (E.D.N.Y. 2019) (quoting Leon v. Shmukler, 992 F. Supp. 2d 179, 195
(E.D.N.Y. 2014)). Here however, Plaintiff has not even made a threshold showing of personal
jurisdiction. Plaintiff has not alleged a single consummated sale of any of Defendants’ products
into New York. Nor has Plaintiff pointed to any other contact Defendants have made with New
York specifically. In short, Plaintiff’s jurisdictional discovery would not supplement a colorable
claim, but instead would seek to create a claim that jurisdiction is appropriate here. Because of
that, jurisdictional discovery is not appropriate here.
personal jurisdiction if the claims in the case arise under federal law, if the defendant is not subject to jurisdiction in
any state’s courts of general jurisdiction, and if exercising jurisdiction is consistent with the United States
Constitution and laws.” Fed. R. Civ. P. 4(k)(2). While that provision could permit a Court to exercise jurisdiction
over Defendants in this case, where jurisdiction might not otherwise be apparent, Plaintiff has not established the
necessary prerequisites here. Specifically, Plaintiff has failed to establish that Defendants will not be subject to
personal jurisdiction in the courts of another state (i.e. California or Delaware, as suggested by Defendants). Absent
that, the Court cannot consider Rule 4(k)(2) for jurisdiction here because “Rule 4(k)(2) is simply a last-resort
provision for establishing jurisdiction over alien defendants who would otherwise not be subject to the jurisdiction
of any Court.” In re Vitamins Antitrust Litig., 94 F. Supp. 2d 26, 31 (D.D.C. 2000). If this case is refiled in another
District, Plaintiff may be able to present this argument anew in that forum.
As stated herein, Defendant’s motion to dismiss Plaintiff’s complaint is GRANTED. The
Court is aware that this result means that Plaintiff’s claims could go unresolved on their merits if
Plaintiff chooses not to refile the case in a more appropriate forum. This is an especially acute
concern for the Court because the facial evidence of infringement in this case is so persuasive
and Defendants have chosen allegedly to counterfeit products related to a quintessential
American brand. However, despite what outcome the Court may prefer in a vacuum, courts are
bound by the law and cannot subject Defendants to litigation far from their home and without
any allegation or showing that jurisdiction is proper here. While Plaintiff may be able to find an
appropriate forum in which to seek redress for Defendants’ alleged infringements on its brand,
this Court is not it.
In light of the dismissal of this case, Plaintiff’s motion for a preliminary injunction is
DENIED and the temporary restraining order previously entered in this case is dissolved.
The Clerk of Court respectfully is requested to close the Motion at ECF No. 23, to
terminate any other open motions on the electronic docket, and to close the case.
Date: April 28, 2021
New York, New York
MARY KAY VYSKOCIL
MARY KAY VYSKOCIL
United State District Judge
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?