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United States District Court, S.D. New York

July 12, 2004.

Donini International, S.P.A. Plaintiff,
Satec (U.S.A.) LLC and Cleaners Family, Inc. Defendants.

The opinion of the court was delivered by: CHARLES HAIGHT, District Judge


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 request. Id.

  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[1][b] (3d ed. 2001). See also Electronics Communications Corp. v. Toshiba America Consumer Products, Inc., 129 F.3d 240, 243 (2d Cir. 1997), (the holding in Conley v. Gibson "does not permit conclusory statements to substitute for minimally sufficient factual allegations") (citations and internal quotations marks omitted).

  While plaintiff's motion for preliminary injunction was, consistent with the requirements of Local Rule 7.1, accompanied by the required memorandum of law, plaintiff has failed to file a memorandum of law with its papers opposing defendants' motions. The Court declines defendants' requests, stated in reply memoranda from both Satec and Cleaners Family, to grant defendants' motions to dismiss by default. The Court will, rather, decide the motions on the record as it stands.

  Satec's Motion to Dismiss for Failure to State a Claim

  Defendant Satec moves for dismissal on the ground that "Plaintiff fails to show any connection between [Family Cleaners] and [Satec] that would support any basis for [Satec] being made a party to this action." Satec's Motion" at 8. All of plaintiff's claims in this lawsuit derive from the content of the June 2003 and November 2003 editions of Cleaners Family magazine. While responsibility for this content can reasonably be ascribed to Cleaners Family, the company that publishes Cleaners Family magazine, it is not obvious from the Complaint how that responsibility can devolve upon Satec.

  Plaintiff attempts to establish Satec's liability by alleging a conspiracy between Satec and Cleaners Family. "Civil conspiracy is not recognized as an independent tort in [New York]." Walters v. Pennon Assocs., Ltd., 591 N.Y.S.2d 74, 75 (N.Y. App. Div., 1992). "Allegations of conspiracy are permitted only to connect the actions of separate defendants with an otherwise actionable tort." Alexander & Alexander, Inc. v. Fritzen, 68 N.Y.2d 968, 969 (N.Y., 1986) (citations omitted).

  To sustain a claim for conspiracy a plaintiff must allege and prove a corrupt agreement between two or more parties, an overt act, intentional participation in the furtherance of the conspiracy, and a causal connection to the claimed damages. See Melnitzky v. Rose, 299 F. Supp.2d 219, 227 (S.D.N.Y., 2004); Suarez v. Underwood, 426 N.Y.S.2d 208, 210 (N.Y. Sup. Ct., 1980). See also N.Y. CPLR § 3011, Form 429; N.Y.; CPLR § 3013 ("Statements in a pleading shall be sufficiently particular to give the court and parties notice of the transactions, occurrences, or series of transactions or occurrences, intended to be proved and the material elements of each cause of action or defense."). Conclusory claims of conspiracy that are not pleaded with sufficient factual grounding should be dismissed. See Newgold. v. Bon Ray Hotel Corp., 32 N.Y.S.2d 589 (N.Y. App. Div., 1942); Walters v. Pennon Assocs., Ltd., 591 N.Y.S.2d at 75; Suarez v. Underwood, 426 N.Y.S.2d at 210. In the Complaint, plaintiff alleges that "upon information and belief, defendant Satec controls, directly or indirectly operates and/or publishes on a quarterly basis, the Cleaners Family trade magazine." Complaint at para. 17. The Complaint further alleges that "upon information and belief, Satec caused and conspired with Cleaners Family to publish that false and defamatory November 2003 article about Donini and its products." Complaint at para. 19. The principal factual bases for these conclusions seem to be that both entities are alleged to be at least partially owned by the same people, Abraham Cho and Esther Cho, and that both entities are alleged to have the same address. Also relevant is Satec's report that it had several representatives at the April 2002 trade show in the Netherlands, two of whom "were standing approximately ten (10) meters away from a Donini machine, Model T320, and heard a loud explosion — equivalent to a forced slamming of a heavy door, or a sound of a firecracker." Satec's Motion at 5.

  While these facts might provide ground for speculation about conspiracy or actual corporate control, they do not provide sufficient factual bases for alleging either. The Complaint does not allege a specific agreement between Satec and Cleaners Family. It does not allege any specific overt action by Satec. There is also no allegation of sufficient corporate entanglement to justify any imputation of direct responsibility on the part of Satec for the contents of Cleaners Family magazine. In short, the Complaint does not provide a factual basis from which it can be inferred that Satec did anything to cause the offending articles to be published by Cleaners Family or that Satec is otherwise liable for the contents of Cleaners Family magazine. Plaintiff has failed to plead facts sufficient to maintain a claim against Satec. On this basis, Satec's motion is granted. Plaintiffs claims against Satec are dismissed in their entirety without prejudice.*fn1

  Cleaners Family's Motion to Dismiss for Lack of Personal Jurisdiction

  Cleaners Family moves for dismissal on the basis that this Court, sitting in New York, does not have personal jurisdiction over Cleaners Family, which is a New Jersey Corporation with its principal place of business in New Jersey.

  In the Complaint, plaintiff asserts that this Court has jurisdiction under 28 U.S.C. § 1332(a)(2). Complaint at para. 15. A federal district court sitting in diversity must apply the forum state's law to determine the extent of its jurisdiction over parties. See CutCo Industries v. Naughton, 806 F.2d 361, 365 (2d Cir., 1986). Plaintiff also claims that this Court has subject matter jurisdiction under 28 U.S.C. § 1331, 15 U.S.C. § 1121, and 28 U.S.C. § 1367. Complaint at para. 15. 15 U.S.C. § 1121 grants to the federal courts original jurisdiction over Lanham Act claims. 28 U.S.C. § 1331 grants original jurisdiction to the federal courts over all civil actions arising out of the laws of the United States. Plaintiff's first cause of action in the Complaint is brought under 15 U.S.C. § 1125(a)(1)(B), the federal Lanham Act. "In a federal question case, where the defendant resides outside the forum state, federal courts apply the forum state's personal jurisdiction rules if the applicable federal statute does not provide for national service of process. Because the Lanham Act does not provide for national service of process, the New York state long-arm statute governs this inquiry." Sunward Elecs., Inc. v. McDonald, 362 F.3d 17, 22 (2nd Cir., 2004) (citations omitted). Thus, whether subject matter jurisdiction is based on original jurisdiction or on diversity jurisdiction, New York state law governs this Court's ability to assert jurisdiction over the parties in this case.*fn2

  In assessing whether a non-domiciliary is amenable to the jurisdiction of a federal district court, "the court must look first to the long-arm statute of the forum state." Bensusan Rest. Corp. v. King, 126 F.3d 25, 27 (2d Cir. 1997). "If the exercise of jurisdiction is appropriate under that statute, the court must decide whether such exercise comports with the requisites of due process." Id. The jurisdiction of New York courts over non-domiciliaries is established by N.Y. CPLR § 302. § 302(a)(1) provides the only potential basis for jurisdiction in this case.*fn3 N.Y. CPLR § 302(a)(1) provides for jurisdiction over a party that "transacts any business within the state or contracts anywhere to supply goods or services in the state." It "authorizes the court to exercise jurisdiction over nondomiciliaries for tort and contract claims arising from a defendant's transaction of business in [New York]. It is a `single act statute' and proof of one transaction in New York is sufficient to invoke jurisdiction, even though the defendant never enters New York, so long as the defendant's activities [in New York] were purposeful and there is a substantial relationship between the transaction and the claim asserted." Kreutter v. McFadden Oil Corp., 71 N.Y.2d 460, 467 (N.Y., 1988). See also POSVEN v. Liberty Mut. Ins. Co., 303 F. Supp.2d 391, 397 (S.D.N.Y., 2004) ("Under section 302(a)(1), jurisdiction is proper when: (1) the defendant has transacted business in New York; and (2) the cause of action arises out of the subject matter of the transacted business.) (citing Cutco Indus., Inc. v. Naughton, 806 F.2d 361, 365 (2d Cir. 1986)).

  "A nondomiciliary `transacts business' under CPLR 302(a)(1) when he `purposefully avails [himself] of the privilege of conducting activities within [New York], thus invoking the benefits and protections of its laws,'" POSVEN v. Liberty Mut. Ins. Co., 303 F. Supp.2d at 397. (quoting McKee Electric Co. v. Rauland-Borg Corp., 20 N.Y.2d 377, 382 (N.Y., 1967)). This test is, in essence, the same as that established by the United States Supreme Court to evaluate the constitutionality of personal jurisdiction under long-arm statutes. See e.g. World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 297 (1980) ("When a corporation `purposefully avails itself of the privilege of conducting activities within the forum State,' it has clear notice that it is subject to suit there, and can act to alleviate the risk of burdensome litigation by procuring insurance, passing the expected costs on to customers, or, if the risks are too great, severing its connection with the State.") (quoting Hanson v. Denckla, 357 U.S. 235 (1958)).

  In the Complaint, plaintiff asserts that "Cleaners Family is a trade magazine printed in the Korean language and distributed to dry cleaners and laundry cleaning businesses and workers throughout the United States, including New York." Complaint at para. 12. Assuming, as I must on a motion to dismiss, that this is so, Cleaners Family has purposively conducted business in New York by mailing its product to specific consumers in New York. There is some suggestion that Cleaners Family may not charge recipients for the magazine. See Satec's Motion at 4 ("the magazine is offered free of charge to interested readers"). This describes the nature of Cleaners Family's business. It does not alter the fact that it has intentionally conducted that business in New York. Moreover, this business, the distribution of Cleaners Family magazine, is directly related to the causes of action in this case, all of which arise from articles published in the magazine and distributed in New York.

  On these facts, assertion of jurisdiction over Cleaners Family pursuant to N.Y. CPLR § 302(a)(1) is appropriate. Cleaners Family intentionally mailed its magazine to a list of recipients in New York. In choosing to do so, Cleaners Family should have foreseen the possibility of being haled into court in New York. If Cleaners Family wanted to avoid being called to answer in a New York court then it should have refrained from distributing the magazine in New York to New York residents. There is, for these same reasons, no constitutional bar to exercise of jurisdiction over Cleaners Family in this case. See e.g. Keeton v. Hustler Magazine, Inc., 465 U.S. 770, 774 (1984) (assertion of personal jurisdiction over a non-domiciliary magazine publisher found to be constitutional based on the publishers purposeful distribution of its magazine in the state). Cleaners Family's motion to dismiss for want of personal jurisdiction is denied.

  Cleaners Family's Motions for Dismissal for Improper Venue and for Change of Venue

  Defendant Cleaners Family moves for dismissal pursuant to Rule 12(b)(3), Fed.R. Civ. P., claiming improper venue. 28 U.S.C. § 1391(b) states, in pertinent part that a "civil action wherein jurisdiction is not founded solely on diversity of citizenship may, except as otherwise provided by law, be brought only in (1) a judicial district where any defendant resides, if all defendants reside in the same State . . ." 28 U.S.C. § 1391(c) states that "[f]or purposes of venue under this chapter, a defendant that is a corporation shall be deemed to reside in any judicial district in which it is subject to personal jurisdiction at the time the action is commenced."*fn4 Jurisdiction over the subject matter of this case is, as was pointed out supra, not based solely on diversity. Cleaners Family is the only remaining defendant. The Court has already held that Cleaners Family is amenable to the jurisdiction of this Court. It follows that, under 28 U.S.C. § 1391(b) and (c), the Southern District of New York is a proper venue for the present case.*fn5

  To defend itself in this case, Cleaners Family may be required to send representatives across the Hudson River. What minimal hardship this may impose on defendant is outweighed by plaintiff's interest in choosing its forum and by New York's interest in adjudicating claims affecting its citizens. Defendant's motion to dismiss for lack of venue and its motion for change of venue are denied.

  Cleaners Family's Motion to Dismiss Plaintiff's Lanham Act Claim

  Plaintiff's third cause of action is for false description and false representation in violation of 15 U.S.C. § 1125(a)(1)(B). The statute states that "[a]ny person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which . . . in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act." 15 U.S.C. § 1125.

  To sustain its 15 U.S.C. § 1125(a)(1)(B) claim, plaintiff must allege facts that reasonably support the conclusion that "misleading or untruthful statements have been made for the purpose of commercial advertising or promoting a party's goods, services, or commercial activities." Nadel v. Play-By-Play Toys & Novelties, Inc., 208 F.3d 368, 383 (2d Cir., 2000). "In this circuit, to constitute `commercial advertising or promotion' under the Lanham Act, a statement must be: (1) `commercial speech,' (2) made `for the purpose of influencing consumers to buy defendant's goods or services,' and (3) . . . `disseminated sufficiently to the relevant purchasing public.'" Gmurzynska v. Hutton, 355 F.3d 206, 210 (2d Cir., 2004) (citations omitted). Plaintiff's claim in this case is deficient as to the first two of these required prongs.

  First, Cleaners Family is, according to the Complaint, "a trade magazine." Complaint at para. 12. The statements that give rise to this complaint were allegedly made in two articles published in the magazine. A "journalist's article is not commercial advertising, commercial promotion, or commercial speech. Rather, it is speech that is traditionally granted full protection under the First Amendment." Gmurzynska v. Hutton, 355 F.3d at 210-211. See also Boule v. Hutton, 328 F.3d 84, 91-92 (2d Cir. 2003) (advising courts to take care not to allow "over extension" of the Lanham Act to compromise First Amendment freedoms). No matter how critical of plaintiff, and no matter how true or false, the articles in Cleaners Family magazine are not commercial speech. As such, they cannot support a Lanham Act claim.

  Second, Cleaners Family is not in the business of selling any goods or services that could have been promoted by statements contained in the articles in question. Cleaners Family is a trade magazine. The June 2003 and November 2003 articles did not provide commercial promotion for the magazine itself.

  Plaintiff attempts to circumvent these requirements by alleging a conspiracy between Cleaners Family and Satec. The Court has already dismissed claims based on this alleged conspiracy. Even were this not so, where the individual acts of a defendant do not rise to a Lanham Act violation "allegations of conspiracy cannot transform them into such." Gmurzynska v. Hutton, 355 F.3d at 211 (citing World Wrestling Fed'n Entm't, Inc. v. Bozell, 142 F. Supp.2d 514, 532 (S.D.N.Y. 2001)). Plaintiff's claim against Cleaners Family fails to satisfy two essential prongs of a claim under 15 U.S.C. § 1125(a)(1)(B). Speculation about conspiracies cannot be used to remedy these deficits. Plaintiff's claim for relief under the Lanham Act is dismissed with prejudice.*fn6

  Plaintiff's Motion for a Preliminary Injunction Plaintiff seeks an order from the Court "enjoining the defendant during the pendency of this action from using and diluting the Donini trade name and service mark." Show Cause Order at 1. In essence, plaintiff is asking the Court to order Cleaners Family not to write about plaintiff in its magazine or elsewhere. Such a request for prior restraint of expression is subject to a "heavy presumption against its constitutional validity." Metropolitan Opera Assoc. v. Local 100, 239 F.3d 172, 176 (2d Cir., 2001) (quoting Organization for a Better Austin v. Keefe, 402 U.S. 415, 419 (1971) (other citations omitted). In addition to this constitutional concern, the long-standing rule in this Circuit is that equity will not enjoin threatened libel or defamation since there are adequate legal remedies available for damages arising from harmful speech. See Metropolitan Opera Assoc. v. Local 100, 239 F.3d at 177; American Malting Co. v. Keitel, 209 F. 351, 354 (2d Cir. 1913) (declining to issue an injunction against the publication of printed circulars that allegedly defamed the plaintiff's business and trade practices).

  According to the Complaint, Cleaners Family is a trade magazine. It has a First Amendment right to report and comment on issues relevant to the dry cleaning industry. If plaintiff finds that future editions of the magazine include actionable content then they may, as they have done here, seek remedy at law. Plaintiff's motion for an injunction is denied.


  In accordance with the foregoing, the Court makes the following Order:

  1. All claims against defendant Satec are dismissed without prejudice. 2. Defendant Cleaners Family's motion to dismiss for lack of personal jurisdiction is denied.

  3. Defendant Cleaners Family's motion to dismiss for improper venue is denied.

  4. Defendant Cleaners Family's motion for change of venue is denied.

  5. Plaintiff's claim based on alleged violations of 15 U.S.C. § 1125(a)(1)(B) is dismissed with prejudice.

  6. Plaintiff's request for an injunction is denied.

  7. Plaintiff and defendant Cleaners Family, the remaining parties, are directed to comply with Rule 26(f), Fed.R.Civ.P.


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