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Sunlight Solutions, LLC v. Birnbaum

United States District Court, W.D. New York

February 21, 2008

Sunlight Solutions, LLC., Plaintiff,
v.
Howard Birnbaum, T/A Homegrown Hydroponics, Defendants.

          REPORT & RECOMMENDATION

          Hon. Hugh B. Scott United States Magistrate Judge

         Before the Court is the defendants motion to dismiss the complaint (Docket No. 6).

         Background

         The plaintiff, Sunlight Solutions, LLC (“Sunlight”) initiated this action asserting copyright infringement claims against the defendants, Howard Birnbaum T/A Homegrown Hydroponics (“Birnbaum”). Sunlight asserts it is the sole owner of a copyright to a certain “Retail Store Image, Vau 671-786 ” (hereafter referred to as the “Storefront Image”). Sunlight claims that Birnbaum used Sunlight's Storefront Image on Birnbaum's web cite. The plaintiff also alleges that it is the owner of trademarks “Sunlight Solutions, ” “Sunlight Sheds, ” “Caddy, ” and “Cool Cab.” Sunlight claims that Birnbaum impermissibly used these protected trademarks in advertising Birnbaum's products. Sunlight seeks relief and damages under 17 U.S.C. §§ 503, 504, 505, 1202 and 1203 and other federal statutes.

         More specifically, Sunlight asserts that at an unknown point in time, Birnbaum copied the protected “Storefront Image” graphic used by Sunlight, modified it to delete the business name of Sunlight and replace Sunlight's name with the name of the defendant's business making it appear that Sunlight had changed its name. (Docket No. 1 at ¶ 12). According to Sunlight, in this manner Birnbaum sold merchandise to New York residents via the internet. Sunlight further asserts that Birnbaum impermissibly utilized or “mis-affiliated” Sunlight's copyright protected trademarks including “Sunlight Solutions”, “Sunlight Sheds”, “Caddy” and “Cool Cab” (Docket No. 1 at ¶¶ 31-41).

         Birnbaum contends that while setting up a web site for his business he searched “Google Images” for a photographic representation of a storefront and selected the “Storefront Image” from amongst the results page. Birnbaum asserts that at that time he had no knowledge of Sunlight and that he selected the image under the belief that it was available for public use. (Docket No. 6-2 at ¶¶ 12-14).[1] The defendant has moved to dismiss the complaint alleging a lack of jurisdiction. (Docket No. 6). The defendant, who is a resident of Florida, argues that the complaint does not allege a basis to find that the Court has personal jurisdiction over Birnbaum pursuant to either §301 or §302 of the New York Civil Practice Law and Rules (“C.P.L.R.”). Further, the defendants assert that venue is not proper in the Western District of New York under 28 U.S.C. §1406.

         Discussion

         Timeliness of Motion to Dismiss

         The plaintiff argues that the instant motion to dismiss is untimely. (Docket No. 12 at page 11). Rule 12(a)(1)(A) provides that an answer be filed within 20 days after being served with a summons and complaint. Rule 12(b) provides that the basis for a motion to dismiss shall be asserted in the responsive pleading or advanced by motion prior to pleading.

         The docket reflects that Birnbaum was served with a summons and complaint in this matter on November 15, 2006. An Affidavit of Service was filed on December 5, 2006 (Docket No. 3). A notice of appearance and motion to dismiss were filed on behalf of Birnbaum on April 12, 2007 (Docket Nos. 5 and 6) - more than 20 days after service of the summons and complaint. However, the plaintiff acknowledges that it gave Birnbaum “two extensions” but that the extensions expired prior to the filing. (Docket No. 12 at page 12). Birnbaum asserts that it procured an extension of time to answer, and thus, the defense of lack of personal jurisdiction is not waived. Further, Birnbaum claims that the plaintiff agreed to an unspecified extension of time while the parties discussed a possible resolution of this case. (Docket No. 19 at pages 5-6).

         Because it is preferable to resolve the instant motion to dismiss on the merits, the Court need not attempt to resolve this dispute.

         Personal Jurisdiction

         The resolution of a motion to dismiss for lack of personal jurisdiction requires a two-step analysis. First, the court must determine if New York law would confer upon its courts the jurisdiction to reach the defendant, which in this case could only be possible under the New York long-arm statute, C.P.L.R. §302. If there is a statutory basis for jurisdiction, the court must then determine whether New York's extension of jurisdiction in such a case would be permissible under the Due Process Clause of the Fourteenth Amendment. Bank Brussels Lambert v. Fiddler Gonzalez & Rodriguez, 305 F.3d 120, 124 (2d. Cir. 2002).

         The record does not reflect the extent of discovery had in connection with the instant motion. While plaintiff bears the burden of showing that the court has jurisdiction over the defendant (Metropolitan Life Ins. Co. v. Robertson-Ceco Corp., 84 F.3d 560, 566 (2d Cir.1996)), at the pre-discovery stage the plaintiff defeats the motion simply by pleading in good faith legally sufficient allegations of jurisdiction-i.e., by making a prima facie showing that jurisdiction exists. In such a case, “all allegations [in the complaint] are construed in the light most favorable to the plaintiff and doubts are resolved in the plaintiff's favor, notwithstanding a controverting presentation by the moving party.” A.I. Trade Fin., Inc. v. Petra Bank, 989 F.2d 76, 79-80 (2d Cir.1993).

         The complaint alleges that the Court has jurisdiction over the defendant inasmuch as:

The defendant transacted business in New York State, purposefully availed himself of the benefits of the New York forum, committed tortious acts all or part of which took place in New York State; this cause of action arises out of the specific business and tortious conduct transacted in or taking place in New York State, and out of conduct which caused consequences in New York State. ...

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