The opinion of the court was delivered by: CHARLES HAIGHT, District Judge
MEMORANDUM OPINION AND ORDER
In this suit brought under the Lanham Act, 15 U.S.C. § 1125(a),
plaintiff moves for a preliminary injunction. Defendants oppose
plaintiff's motion, and have filed separate motions to dismiss
the complaint or, in the alternative, for change of venue. This
Memorandum Opinion and Order resolves these outstanding motions.
Plaintiff is an Italian corporation that specializes in the
manufacture, sale, and distribution of commercial dry cleaning
equipment. Defendant Satec LLC ("Satec") is a New Jersey
corporation that sells and distributes commercial dry cleaning
equipment manufactured by non-party Satec GMBH, a German
corporation. According to the Memorandum of Law filed by Satec in
support of its motion ("Satec's Motion"), the "two members of"
Satec are Abraham Cho and Esther Cho. Satec's Motion at 4.
Neither Abraham Cho nor Esther Cho is a party to the present suit.
Defendant Cleaners Family, Inc. ("Cleaners Family"), a New Jersey
corporation, publishes a trade magazine that caters to the dry
cleaning and laundry industry. Cleaners Family is a sole
proprietorship of Abraham Cho and Esther Cho. Satec's Motion at
4. Cleaners Family is, however, under the day-to-day charge of
Jung Chull Choi, who is also not party to the present suit. Id.
Plaintiff was a presenter at an April 2002 trade show for the
dry cleaning industry held in the Netherlands. Complaint at para.
26. In particular, plaintiff had on display its model known as
the "Swing T320." Id. During a demonstration of the machine on
April 6, 2002, a section of glass on the door of the machine
broke, allowing some solvents previously contained in the machine
to leak out. Id. What caused the glass to break and how
extensive was the damage to the machine are disputed issues of
fact. Plaintiff claims that the break was minor and due entirely
to a defect in the glass. Defendants claim that the machine
exploded, ejecting pieces of broken glass some distance from the
machine and precipitating the release of noxious fluid and gas.
Defendant Cleaners Family reported its version of these events
in a June 2003 article in Cleaners Family magazine dealing
principally with the potential dangers of hydrocarbon dry
cleaning machines. Complaint at paras. 19-25. Specifically, this
article included a picture or what was purported to be the Swing
T320 machine on display at the April 2002 show with its door
"completely exploded and broken." Complaint at para. 23. The
article went on to provide commentary critical of the manufacture
and safety of Donini dry cleaning machines. Complaint at para.
24. Plaintiff, through counsel in Italy, contacted Satec and Satec
GMBH via letter on July 3, 2003. Complaint at paras. 39-41. In
that letter, plaintiff contested the accuracy of the June 2003
article in Cleaners Family magazine and requested that Satec and
Satec GMBH publish a correction in the next edition of Cleaners
Family magazine. Plaintiff did not receive a response to this
Another article critical of the manufacture and safety of
Donini products appeared in the November 2003 edition of Cleaners
Family magazine. Complaint at paras. 18-19, 36. This article also
referred to events at the April 2002 trade show, again alleging
that the Swing T320 had exploded during a demonstration.
Plaintiff filed the present law suit with the Clerk of the
Southern District of New York on November 26, 2003. In the
Complaint plaintiff asserted that Satec and Cleaners Family
conspired to harm plaintiff's reputation, business prospects, and
trademark by publishing false, misleading, and libelous
statements about Donini and Donini products in the June 2003 and
November 2003 editions of Cleaners Family magazine, in violation
of the Lanham Act, 15 U.S.C. § 1125(a)(1)(B). Plaintiff has also
asserted subject matter jurisdiction under 28 U.S.C. § 1332
(a)(2). The Complaint also contains New York statutory and common
law claims under the principle of supplemental jurisdiction,
28 U.S.C. § 1367(a).
On December 23, 2003 plaintiff moved for a preliminary
injunction to prevent defendants from "using and diluting the
Donini trade name and service mark." On December 23, 2003 I
issued an Order to Show Cause on the motion and scheduled its
return for January 9, 2004. On the consent of counsel for all
parties the hearing scheduled for January 9, 2004 was adjourned until March 1, 2004.
This adjournment provided the defendants with sufficient time to
file the present motions, which include oppositions to
plaintiff's request for an injunction.
I conducted a hearing on the motion for preliminary injunction
on March 1, 2004. I heard testimony from Joseph Reuter, a sales
and export manager working for Satec GMBH, who was present at the
trade show on April 6, 2002, and Ati Winters, who was present and
working at the Donini display on April 6, 2002. At the end of the
hearing I reserved decision on the motion for preliminary
injunction, granted plaintiff additional time to respond to
defendants' motions, and provided defendants additional time to
reply. All parties have made their submissions. Upon a review of
the record before me and for reasons set forth below, I grant
defendant Satec's motion to dismiss, grant in part and deny in
part defendant Cleaners Family's motions, and decline to issue
plaintiff's requested preliminary injunction.
Defendants' Motions to Dismiss
The Court will first address defendants' motions to dismiss the
complaint pursuant to Rule 12(b)(6), Fed.R. Civ. P., for failure
to state a claim upon which relief can be granted.
For the purposes of "a 12(b)(6) motion a court must treat as
true the pleading's factual allegations," Toussie v. Powell,
323 F.3d 178, 180 (2nd Cir., 2003), and draw all reasonable
inferences from those facts in favor of the plaintiff. See Gant
v. Wallingford Board of Education, 69 F.3d 669, 673 (2d Cir. 1995). The Court
must not dismiss the action "unless it appears beyond doubt that
the plaintiff can prove no set of facts in support of his claim
which would entitle him to relief." Conley v. Gibson,
355 U.S. 41, 45-46 (1957); Frasier v. G.E. Co., 930 F.2d 1004, 1007 (2d
Cir. 1991). However, "[c]onclusory allegations or legal
conclusions masquerading as factual conclusions will not suffice
to prevent a motion to dismiss," 2 James Wm. Moore, Moore's
Federal Practice § 12.34[b] (3d ed. 2001). See also
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