The opinion of the court was delivered by: Thomas J. McAVOY Senior United States District Judge
Plaintiff commenced the instant action claiming that Defendant First Night, Inc. is infringing on Plaintiff International Alliance of First Night Celebrations, Inc.'s use and management of the FIRST NIGHT mark. Defendant moves to dismiss this case on the ground of lack of personal jurisdiction or, in the alternative, to transfer the case.
Plaintiff International Alliance of First Night Celebrations, Inc. ("FNI") is a non-profit corporation organized and existing under the laws of the Commonwealth of Massachusetts. It has a principal place of business in Johnson City, New York. Defendant First Night, Inc. ("FNB") also is a non-profit corporation organized and existing under the laws of the Commonwealth of Massachusetts. Its principal place of business is in Boston, Massachusetts.
Defendant FNB owns the trademark "First Night" (the "Mark") to identify "posters and commemorative programs dealing with art festivals" and "entertainment services, namely, presenting an annual arts festival." Duly licensed First Night celebrations are celebrated on New Year's eve.
Plaintiff FNI was organized under the direction of Defendant FNB to, among other things, promote and foster the concept of First Night, to authorize cities to hold First Night events, and to ensure compliance with licensing standards. On August 16, 1993, FNB licensed FNI to assist other communities in developing and creating First Night celebrations, to promote the concept of First Night, and to sub-license the Mark. FNB granted to FNI a nontransferable and exclusive license to use the Mark for an initial five-year term. After the five-year term, subject to compliance with certain conditions precedent, FNB agreed to transfer all rights into the Mark to FNI. The license agreement was drafted in Massachusetts, executed in Massachusetts, and contains a Massachusetts choice of law provision.
In July 2008, FNB informed FNI that it would be "taking back" the Mark. Plaintiffs commenced the instant litigation claiming that FNB's conduct in connection with its efforts to take back the Mark constitutes a misappropriation of FNI's intellectual property rights in violation of 15 U.S.C. § 1114, unfair competition in violation of 15 U.S.C. § 1125(a), common law unfair competition, breach of contract, tortious interference with contractual relations, and tortious interference with prospective business relations.
Defendant FNB now moves to dismiss this claim on the ground that the Court lacks personal jurisdiction over it.
When the Court is presented with a motion pursuant to Fed. R. Civ. P. 12(b)(2), "[i]f the court chooses to rely on pleadings and affidavits, the plaintiff need only make a prima facie showing of personal jurisdiction over defendant. CutCo Indus., Inc. v. Naughton, 806 F.2d 361, 364 (2d Cir. 1986). "[I]f the court holds an evidentiary hearing . . . the plaintiff must demonstrate personal jurisdiction by a preponderance of the evidence." Id.
Personal jurisdiction over a defendant in a diversity action is determined by the law of the forum in which the court sits. Arrowsmith v. United Press International, 320 F.2d 219, 223 (2d Cir. 1963) (en banc). Although, as alluded to, the plaintiff has the ultimate burden of establishing jurisdiction over defendant by a preponderance of the evidence . . . until an evidentiary hearing is held, it need make only a prima facie showing by its pleadings and affidavits that jurisdiction exists. . . . Those documents are construed in the light most favorable to plaintiff and all doubts are resolved in its favor.