United States District Court, S.D. New York
May 10, 2004.
TRADEM, INC., p/k/a STAIND, Plaintiff, -against- JON C. STAINBROOK, Defendant
The opinion of the court was delivered by: MIRIAM CEDARBAUM, Senior District Judge
Defendant Jon C. Stainbrook, who is proceeding pro se, has moved to
dismiss this action pursuant to Fed.R.Civ.P. 12(b)(2) and 12(b)(3) for
lack of personal jurisdiction and improper venue. Alternatively,
defendant seeks to have this action transferred to the Northern District
of Ohio pursuant to 28 U.S.C. § 1404(a). For the reasons that follow,
defendant's motion to dismiss is granted.
Plaintiff Tradem, Inc., p/k/a/ STAIND is a Delaware corporation with
its principal place of business in New York. Plaintiff is known
professionally as "STAIND," a musical group which performs worldwide.*fn1
Plaintiff owns a registered trademark in the mark "STAIND." Defendant is an Ohio musician who owns a registered
trademark in the mark "THE STAIN" and who performs under that name in the
This action arises out of an assignment and license back arrangement
which the parties entered in 1999. For the sum of $18,000, defendant
assigned his registered trademark "THE STAIN" to plaintiff.
Simultaneously, plaintiff licensed back to defendant the right to use
"THE STAIN," in connection with his musical performances in Ohio,
Kentucky, Michigan and Indiana. The two agreements were signed by
defendant in Ohio on January 28, 1999. The license agreement required
that defendant provide plaintiff with samples of his literature,
brochures, signs and advertising which used "THE STAIN" and to obtain
plaintiff's approval of the materials. According to plaintiff, defendant
failed to submit these materials despite several requests, and on August
23, 2000 plaintiff sent notice that the license would be automatically
terminated within 30 days if defendant did not comply. Defendant did not
send the materials, and plaintiff asserts that this terminated the
On November 6, 2003, defendant's then-attorney sent a letter to
plaintiff's attorney in which several allegations were made against:
plaintiff. According to the letter, plaintiff failed to carry out several
"verbal promises" made to defendant in connection with the assignment and
license back agreements. Defendant also alleges that plaintiff violated defendant's common
law rights in the marks "THE STAIN" or "STAIN" by selling t-shirts and
posters with plaintiff's "STAIND" on them because the assignment did not
extend to use on such merchandise. The letter demanded that plaintiff
"cease and desist" distribution of these items.
On November 20, 2003, plaintiff filed this action against defendant for
his alleged use of "THE STAIN" after termination of the license
agreement. Plaintiff seeks a declaratory judgment pursuant to
28 U.S.C. § 2201 et seq., injunctive relief and damages under the Lanham
Act, 15 U.S.C. § 1051 et seq., for trademark infringement, dilution and
unfair competition, as well as recovery for unfair competition and breach
of contract under New York law.
Plaintiff bears the burden of establishing the court's personal
jurisdiction over defendant. Longwood Res. Corp. v. C.M. Exploration
Co., Inc., 988 F. Supp. 750, 751 (S.D.N.Y. 1997); Alexander &
Alexander, Inc. v. Donald F. Muldoon & Co., 685 F. Supp. 346, 351-52
(S.D.N.Y. 1988)). But where a motion brought under Rule 12(b)(2) is
decided without an evidentiary hearing, the plaintiff need only make a
prima facie showing that jurisdiction exists. Alexander, 685 F. Supp. at
351-52. All pleadings and affidavits are construed in the light most favorable to the
plaintiff, and all doubts are resolved in its favor. Id. at 352.
Plaintiff asserts that personal jurisdiction may be exercised over
defendant pursuant to the New York long arm statute. N.Y.C.P.L.R. §
302(a)(1) provides: "[a]s to a cause of action arising from any of the
acts enumerated in this section, a court may exercise personal
jurisdiction over any non-domiciliary . . . who in person or through an
agent . . . transacts any business within the state . . . " Two
conditions must be met for a New York court to exercise jurisdiction over
a defendant pursuant to this long-arm statute: (1) the non-domiciliary
must "transact business" within the state; and (2) the claim against the
non-domiciliary must arise out of that business transaction. Longwood,
988 F. Supp. at 752. A non-domiciliary transacts business in New York
when he purposefully avails himself of the privilege of conducting
activities within New York, thus invoking the benefits and protections of
its laws. Longwood, 988 F. Supp. at 752.
Plaintiff does not suggest that defendant or his Ohio attorney were
ever physically present in New York during the negotiations for the 1999
assignment and license agreements. Moreover, plaintiff admits that it
reached out to defendant in Ohio for purposes of obtaining the
assignment. Nevertheless, plaintiff points to a number of telephone, fax and mail communications
between the parties during November and December 1998 and January 1999,
and argues that these communications show that the contracts were
negotiated in New York.
Plaintiff relies on three drafts of the trademark agreements sent by
fax and regular mail from defendant's then-counsel in Ohio to plaintiff's
counsel in New York on November 23, 1998, December 7, 1998 and December
15, 1998. It is clear from the cover letters of these drafts that
plaintiff had instructed defendant to make changes to the proposed
agreement. Plaintiff makes much of defendant's attorney's statement in
one cover letter that his client was "anxious" to have the agreement
finalized. However, the fact that defendant was anxious to consummate a
deal which plaintiff had proposed does little to show that the deal was
negotiated in New York. It is also clear from the cover letters that
plaintiff had failed to respond promptly to several communications from
defendant, and that this prompted defendant's timing concern.
Since plaintiff was in New York and defendant was in Ohio, letters and
telephone calls were between the two states. But the jurisdictional issue
is whether defendant was in New York, not whether plaintiff was in New
According to the complaint, plaintiff sent the $18,000 payment: check
from New York to defendant in Toledo, Ohio. Nevertheless, plaintiff relies on a fourth letter, sent from defendant's
attorney in Ohio to plaintiff in which defendant indicated that he would
be sending his W-9 federal tax form to New York in connection with
payment. Plaintiff wrote the check to defendant c/o plaintiff's New York
attorney. However, plaintiff does not allege that defendant was actually
paid in New York or that he deposited the check in New York, rather, it is
clear from the face of the complaint that plaintiff's attorney sent the
check to defendant in Ohio. Thus, plaintiff has not presented any
evidence to support its contention that plaintiff was paid in New York.
Plaintiff cites Liberatore v. Calvino, 742 N.Y.S.2d 291 (N.Y. App.
Div. 2002), as an example of a case in which mail and telephone contacts
were sufficient to subject the defendant to personal jurisdiction in New
York. However, in Liberatore the out-of-state attorney had clearly
projected himself into the forum by purposefully pursuing a legal remedy
for his client in New York for the personal injury she had sustained
here. Id. at 221. In doing so, he availed himself of the benefits of
several New York statutes and threatened litigation in the New York
courts. Id. Thus, the numerous letters and calls directed into New York
to investigate the plaintiff's claim and negotiate a settlement were
sufficient to give rise to personal jurisdiction over the attorney in a
malpractice suit by his client. Id.; see also Parke-Bernet Galleries. Inc. v. Franklyn, 308 N.Y.S.2d 337 (N.Y.
App. Div. 1970) (the defendant was in effect present at an art auction in
New York City by actively participating in the bidding by telephone);
Otterbourg, Steindler, Houston & Rosen, P.C. v. Shreve City Apts.,
Ltd., 543 N.Y.S.2d 978 (N.Y. App. Div. 1989) (the defendant retained a
New York attorney to represent his interests in a bankruptcy proceeding
in New York).
It is clear from the face of the documents that defendant signed the
assignment and license back agreements while in Ohio. Nevertheless,
plaintiff argues that because it signed the agreement here, New York
should be considered the situs of the contract.*fn2 However, it is clear
that plaintiff's signing the contract in New York is irrelevant because
it is defendant who must be found to have transacted business in the
forum. Galgay v. Bulletin Co., Inc., 504 F.2d 1062, 1065-66 (2d Cir.
1974); China Res. Prod. (USA). Ltd, v. China Distrib., Inc., No. 92 Civ.
7119, 1994 WL 440719, *8 (S.D.N.Y. Aug. 16, 1994).
Lastly, plaintiff relies on the "cease and desist" letter defendant
sent in November 2003 and alleged phone calls from defendant to
plaintiff, demanding $6 million to avoid suit on the claims set out in the letter. However, it is clear that sending a
"cease and desist" letter into the forum is not sufficient to establish
the minimum contacts necessary for personal jurisdiction. Cf. PDK Labs,
Inc. v. Friedlander, 103 F.3d 1105, 1109 (2d Cir. 1997) (citing Modern
Computer Corp. v. Ma, 862 F. Supp. 938 (E.D.N.Y. 1994)). In PDK Labs, the
Second Circuit found that the defendant's "activity in New York reache[d]
beyond merely sending a `cease and desist' letter [to plaintiff] and
attempting to settle alleged legal claims." Id. at 1109 (finding that the
defendant's New York attorney had represented the defendant in New York
for almost ten years).
Plaintiff has failed to make a prima facie showing that this court has
personal jurisdiction over defendant because it has not alleged facts
sufficient to support the conclusion that defendant performed any acts
through which he purposefully availed himself of the benefits and
protections of New York law. Plaintiff initiated contact with the Ohio
defendant and proposed a purchase of the rights in his trademark.
Defendant did not come to New York at any point during the negotiations
and did not have New York counsel. Plaintiff has pointed to nothing other
than telephone and written communications between the parties and has not
shown that the defendant used these to project himself into New York or
to avail himself of the benefits of New York law, but simply to
communicate with an entity located in New York. CONCLUSION
For the foregoing reasons, defendant's motion to dismiss the complaint
for lack of personal jurisdiction is granted, and I need not address
defendant's alternative grounds for relief.