Appeal from declaratory judgment and injunction of the United States District Court for the Southern District of New York, Brieant, J., declaring that appellee's product sold as "Saunette Suit" does not infringe any trademark of appellant to give rise to any consumer confusion with any product sold by appellant and enjoining appellant from maintaining an action in the United States District Court for the Central District of California.
Mansfield, Meskill and Newman, Circuit Judges.
Appellee Beacon Enterprises, Inc. (Beacon), a New York corporation, commenced this diversity action against pro se appellant Mary Rose Menzies, a resident of California, seeking a declaratory judgment that certain of its products did not infringe Menzies' trademarks. Personal jurisdiction over Menzies in the Southern District of New York was premised on Beacon's allegation that Menzies "is regularly doing business within the City and State of New York" and that "a part of that business is directly related to the subject matter of the present action." para. 2 Complaint. In her motion to dismiss and her answer, Menzies asserted, inter alia, that the court lacked personal jurisdiction over her in New York. Without notice to the parties, the district court treated Menzies' pro se motion to dismiss as a motion for summary judgment, determined that it had personal jurisdiction over Menzies, and granted summary judgment on the merits for Beacon, the nonmoving party. We reverse the district court's judgment because, at the early stage this litigation was terminated, (1) Beacon had not established the court's personal jurisdiction over Menzies under either New York's general jurisdictional statute, N.Y. Civ. Prac. Law § 301 (McKinney 1972), or the relevant provision of New York's long-arm jurisdictional statute, N.Y. Civ. Prac. Law § 302(a)(1) (McKinney Supp. 1982-83), and (2) Menzies was not afforded an adequate opportunity to offer evidence in opposition to summary judgment. We remand for further proceedings on the jurisdictional question and, if necessary, on the merits.
The facts, garnered from an undeveloped record, are stated here as they are set forth in the parties' pleadings and at a brief hearing held on April 2, 1982. Beacon markets a line of so-called "exercise and weight reducing devices," including a garment advertised as the "Saunette Suit." This vinyl fabric suit retains heat and moisture and, according to Beacon, "promotes weight reduction much in the way that a sauna achieves such result[s]." para. 5 Complaint. Menzies advertises and sells a similar garment labelled "Sauna Suit," which, according to her advertisements, "works like a portable sauna." Menzies apparently runs her small mail order business from her California home. She has a federally registered trademark for "Sauna Suit," as well as for "Super-Sauna" and "Sauna Girdle," other weight reducing garments. In addition, Menzies owns federal copyrights for the label and packaging of the "Sauna Suit," "Super Sauna" and "Sauna Girdle."
The present controversy arose when Menzies sent a letter dated December 11, 1981 from California to Beacon at its New York City headquarters. Menzies' letter: (1) informed Beacon of her trademarks and copyrights in "Sauna Suit," "Super-Sauna" and "Sauna Girdle;" (2) alleged that Beacon's use of the mark "Saunette Suit" violated federal copyright and trademark law; and (3) threatened that "if your company does not cease and desist, appropriate legal action will be taken." Less than two weeks later, on December 23, 1981, Beacon filed its complaint in the instant action. Although devoid of statutory citations, Beacon's jurisdictional allegations apparently sought to place Menzies within the scope of both New York's general jurisdictional statute, N.Y. Civ. Prac. Law § 301 (McKinney 1972)*fn1 and the relevant section of New York's long-arm jurisdictional statute, N.Y. Civ. Prac. Law § 302(a)(1) (McKinney Supp. 1982-83).*fn2
Beacon's substantive claim was the Menzies "does not possess any exclusive right in or to the use of the words 'saunette suit,' which are the descriptive words of the language, in regard to the sale of a sauna-type weight reducing garment." Beacon also alleged that the packaging of its "Saunette Suit" bore no resemblance to that of Menzies' products and that Beacon's marketing of its product did not cause confusion, mistake or deception. Beacon further claimed that Menzies' December 11 letter created a sufficient controversy to warrant a declaration of the parties' rights and an order enjoining Menzies from making any charges of trademark infringement against Beacon or its agents, distributors or customers.
On February 10, 1982 Menzies, pro se, filed an answer denying the primary allegations contained in the complaint. Menzies specifically denied any business activity in New York and stated, "defendant has no manufacturing facilities, no sales offices, no advertising offices, no agents or distributors in the Southern District of New York or elsewhere in the state of New York at this time." By her answer Menzies further asserted insufficiency of service of process, improper venue and failure to state a claim. She alleged as "affirmative defenses" that Beacon's marketing of the "Saunette Suit" violated her trademarks and copyrights and constituted unfair competition. Although Rule 12(b) of the Federal Rules of Civil Procedure requires that a motion to dismiss be filed prior to filing of a responsive pleading, Menzies did not file her "motion to dismiss" until March 4, 1982. In that motion, she alleged lack of personal jurisdiction, improper venue, lack of subject matter jurisdiction (because the $10,000 jurisdictional amount had not been met) and failure to state a claim.
On March 30, 1982 Menzies commenced a pro se action in the United States District Court for the Central District of California (the California action) against Beacon and Thrifty Corporation, a customer of Beacon. In the California action, Menzies alleged that Beacon and Thrifty were violating her federal trademarks and copyrights and engaging in unfair competition by marketing the "Saunette Suit." Menzies sought injunctive relief and damages. Beacon responded to Menzies' suit by filing a motion in the United States District Court for the Southern District of New York seeking an injunction against the California action.
On April 2, 1982 the New York district court held a consolidated pretrial conference and hearing on the motion to dismiss. Menzies, still appearing pro se, personally attended. On several occasions, the court asked the parties to produce samples of their products and trade dress, but Menzies had not brought any samples with her from California.*fn3 Menzies was able only to produce an advertising insert describing and depicting the "Sauna Suit." Counsel for Beacon produced a packaged sample of its product.
Several times during this hearing Menzies sought to interject her jurisdictional defense. When the court finally addressed the issue, Menzies asserted that her products had been sold in New York only by mail. She also stated that Beacon was the only entity to which she had written requesting cessation of infringement. The only evidence produced by Beacon that was relevant to the issue of Menzies' business activity in New York was her "cease and desist" letter and an unsupported statement by Beacon's counsel that "a colleague of my client who is selling a similar product [in an unspecified location] received similar letters, and his customers received similar letters." At the close of the hearing, the judge informed Menzies: "I have a very good understanding of what your product looks like. You have told me it is wrapped in plastic and that it has the mark printed on the outside and that it has this insert that has been marked as an exhibit here today. . . . I am going to take care of your case on the merits. If you don't like the result, you may apply to the Court of Appeals."
By an order filed April 27, 1982, the district court construed Menzies' motion to dismiss as one for summary judgment and granted summary judgment for Beacon, the nonmoving party. The court determined that it had personal jurisdiction over Menzies because "it was apparent on the oral argument that sufficient activity takes place in New York with respect to defendant's product." The court further found that there was no trademark infringement by Beacon, stating: "Certainly no confusion can follow between the relatively weak mark of 'Sauna Suit' and the equally weak mark of 'Saunette Suit,' particularly where Beacon Enterprises' name appears clearly on its own product." Consistent with the memorandum-decision, judgment was entered (1) declaring that "a product sold as 'Saunette Suit' and in association with the name ...