Michaels v. Agros Trading Confectionery Spolka Akcyjna

Filing 97

REQUEST FOR ADDITIONAL BRIEFING. Signed by Hon. Jeremiah J. McCarthy on 7/27/2023. (JD)

Case 1:16-cv-01015-LJV-JJM Document 97 Filed 07/27/23 Page 1 of 4

UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF NEW YORK
DAVID T. MICHAELS,
Plaintiff,
v.

REQUEST FOR ADDITIONAL
BRIEFING
Case No. 1:16-cv-1015-LJV-JJM

UNITOP SP. Z.O.O.,
Defendants.
UNITOP SP. Z.O.O.,
Counterclaimant,
v.
DAVID T. MICHAELS,
Counterdefendant.

The parties’ familiarity with the relevant facts is presumed. The Domain Names at
issue were ordered transferred pursuant to a November 20, 2016 WIPO Administrative Panel
Decision [57-2]. 1 Plaintiff/counterdefendant David Michaels “filed this action to stop the Panel’s
decision from being implemented”. Complaint [1], ¶ 64, 102.
However, his discussion of Abitron Austria GmbH v. Hetronic International, Inc.,
600 U.S.___, 2023 WL 4239255 (2023) and Yegiazaryan v. Smagin, 599 U.S.___, 143 S. Ct.
1900 (2023) in his Supplemental Memorandum of Law [96] has led me to question whether this
court would have subject matter jurisdiction to grant that relief. I must consider that issue even

Bracketed references are to CM/ECF docket entries, and page references are to CM/ECF
pagination.

1

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though the parties do not raise it. See Grupo Dataflux v. Atlas Global Group, L.P., 541 U.S. 567,
593 (2004) (“district courts have an independent obligation to address subject-matter jurisdiction
sua sponte”).

DISCUSSION
Although Michaels seeks declaratory relief “pursuant to 28 U.S.C. §§2201(a) and
2202” (Complaint [1], ¶5), “it is well settled that the Declaratory Judgment Act does not by itself
confer subject matter jurisdiction on the federal courts and, thus, there must be an independent
basis of jurisdiction before a district court may issue a declaratory judgment”. Norton v. Town of
Brookhaven, 2023 WL 3477123, *3, n. 4 (2d Cir. 2023) (Summary Order).
Michaels alleges that “[s]ubject matter jurisdiction exists in this case pursuant to
28 U.S.C. §1331 . . . and 28 U.S.C. §1338(a)”. Complaint [1], ¶5. 28 U.S.C. §1331 gives the
court “jurisdiction of all civil actions arising under the Constitution, laws, or treaties of the
United States”, and §1338(a) gives the court “jurisdiction of any civil action arising under any
Act of Congress relating to . . . trademarks”.
Michaels bases his claim for relief relative to the Domain Names upon 15 U.S.C.
§§1114(2)(D)(iv) and 1114(2)(D)(v). See Complaint [1] at 17, ¶B. Section 1114(2)(D)(iv)
provides that “[i]f a registrar, registry, or other registration authority takes an action . . . based on
a knowing and material misrepresentation by any other person that a domain name is identical to,
confusingly similar to, or dilutive of a mark, the person making the knowing and material
misrepresentation shall be liable for any damages, including costs and attorney's fees, incurred
by the domain name registrant as a result of such action. The court may also grant injunctive

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relief to the domain name registrant, including the reactivation of the domain name or the
transfer of the domain name to the domain name registrant” (emphasis added).
Section §1114(2)(D)(v) provides that “[a] domain name registrant whose domain
name has been suspended, disabled, or transferred under a policy described under clause (ii)(II)
may, upon notice to the mark owner, file a civil action to establish that the registration or use of
the domain name by such registrant is not unlawful under this chapter. The court may grant
injunctive relief to the domain name registrant, including the reactivation of the domain name or
transfer of the domain name to the domain name registrant” (emphasis added). Clause (ii)(II) [15
U.S.C. §§1114(2)(D)(ii)(II)] refers to “any action of refusing to register, removing from
registration, transferring, temporarily disabling, or permanently canceling a domain name . . . in
the implementation of a reasonable policy by such registrar, registry, or authority prohibiting the
registration of a domain name that is identical to, confusingly similar to, or dilutive of another’s
mark” (emphasis added).
Therefore, whether Michaels’ claim “arises under” these sections depends on the
meaning of the word “mark”. 15 U.S.C. §1127 states that “[t]he term ‘mark’ includes any
trademark”, and both Yegiazaryan and Abitron lead me to conclude that this means a trademark
obtained under the laws of this country. “[T]he presumption against extraterritoriality . . .
represents a canon of construction, or a presumption about a statute’s meaning . . . . [T]he
presumption is informed by the commonsense notion that Congress generally legislates with
domestic concerns in mind.” Yegiazaryan, 143 S. Ct. at 1908; Abitron, 2023 WL 4239255, *3.
“In nearly all countries, including the United States, trademark law is territorial i.e., ‘a trademark is recognized as having a separate existence in each sovereign territory in
which it is registered or legally recognized as a mark.’ 5 McCarthy § 29:1, at 29-4 to 29-5. Thus,

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each country is empowered to grant trademark rights and police infringement within its borders.”
Abitron, 2023 WL 4239255, *8. “Because of the territorial nature of trademarks, the probability
of incompatibility with the applicable laws of other counties is . . . obvious.” Id.
The WIPO Administrative Panel clearly had this distinction in mind. “The
registrability or otherwise of any given trade mark is a territorial issue. The fact that the USPTO
regards the term ‘Sesame Snaps’ as generic and/or descriptive does not necessarily mean that the
term may not be distinctive elsewhere.” [57-2] at 18. “[T]he Panel finds that the Domain Names
are identical or confusingly similar to the Complainant’s SESAME SNAPS trade mark, which is
not only a registered trade mark in Canada, but . . . is likely also, in the view of the Panel, to be a
common law or unregistered trade mark in Canada.” Id. at 12. “The Panel does not regard the
Complainant’s . . . position in the United States as relevant to its trade mark position in Canada,
it being its Canadian trade marks upon which it is relying in this administrative proceeding.” Id.
at 18 (emphasis added).
Therefore, since the WIPO Administrative Panel Decision involved Canadian
trademarks, I tentatively conclude that Michaels’ claims do not “arise under” federal law. On or
before August 2, 2023 (the date scheduled for oral argument of defendants’ motion for summary
judgment [57]), the parties may, if so inclined, argue in writing why this tentative conclusion is
erroneous. Additional time will be granted if requested.
SO ORDERED.
Dated: July 27, 2023

__________________________________
JEREMIAH J. MCCARTHY
United States Magistrate Judge

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