The opinion of the court was delivered by: William M. Skretny Chief Judge United States District Court
Plaintiff Mola, Inc. alleges that the defendants, Kacey Enterprises, LLC, and Jerry
A. Kacey, intentionally copied and infringed their federal trade dress for a soft light studio photography reflector - the "Mola beauty dish." Specifically, Plaintiff asserts four causes of action: federal trade dress infringement; federal trademark dilution; dilution of trade dress under N.Y. Gen. Bus. Law § 360-1; and deceptive trade practices under N.Y. Gen. Bus. Law § 349. Plaintiff seeks a preliminary and permanent injunction against Defendants, treble damages under 15 U.S.C. § 1117(a) and N.Y. Gen. Bus. Law § 349(h), costs, and reasonable attorneys' fees.
Presently before this Court is Defendants' Motion to Dismiss*fn1 Plaintiff's complaint for lack of personal jurisdiction, improper service,*fn2 and improper venue, pursuant to Rules 12(b)(2) and 12(b)(3) of the Federal Rules of Civil Procedure. In the alternative,
Defendants move to change venue to the Western District of Washington, pursuant to 28 U.S.C. § 1404(a). For the following reasons, Defendants' motion is denied in part and granted in part.
The following facts are alleged in the complaint and are also drawn from declarations filed in support of Defendants' Rule 12(b)(2) motion. See Langenberg v. Sofair, No. 03 CV 8339, 2006 WL 2628348, at *5 (S.D.N.Y. Sept. 11, 2006) ("courts are authorized to rely on affidavits submitted by the parties in deciding a Rule 12(b)(2) motion to dismiss").
Plaintiff is a corporation incorporated under the laws of the Province of Ontario, Canada, with a principal place of business in Toronto, Ontario, Canada. (Complaint, Docket No. 1 at ¶ 6.) Plaintiff ships its Mola beauty dishes sold in the United States from freight forwarders located in Grand Island and Tonawanda, New York. (Id.) Defendant Kacey Enterprises is a limited liability company incorporated in the State of Washington, with its principal place of business in Snohomish, Washington. (Id. at ¶ 7.) Defendant Jerry A. Kacey is a resident of Washington. (Id. at ¶ 8.)
Plaintiff is the creator of the Mola beauty dish (ornamental design patent no. Des. 298,469) a soft light studio photography reflector, which has been sold publically and commercially by Plaintiff in the United States under the Mola trademark since December 1989. (Id. at ¶¶ 1, 10, 14.)
Before March 2009, Defendants obtained a Mola "Demi" beauty dish, and in February 2010, obtained a Mola "Mantti" beauty dish, for the purpose of making a mold of Plaintiff's designs. (Id. at ¶¶ 20, 26.) Since March 2009, Defendants have made and continue to make, advertise, promote, sell and distribute imitations of the Mola beauty dish under the name "Kacey Beauty Reflector." (Id. at ¶ 21.) Although Plaintiff's Mola beauty dish is made from different materials, Defendants' beauty dish appears substantially similar, if not identical to, Plaintiff's beauty dish. (Id. at ¶ 23.)
"Kacey Beauty Reflectors" are sold through a website maintained by Defendants. (Id. at ¶ 28.) All products are shipped with a shipping label clearly identifying the packages as sent from Kacey Enterprises. (Jerry A. Kacey Affidavit, Docket No. 11 at ¶ 5.) Kacey Enterprises made $4,346.80 in total sales in New York in 2010, $1,001 of which was from the sale of seven "Kacey Beauty Reflectors." (Jerry A. Kacey Affidavit, Docket No. 4 at ¶ 4.) Kacey Enterprises had $106,317.77 in total sales in 2010. (Jerry A. Kacey Affidavit, Docket No. 11 at ¶ 1.)
On several occasions from May 2009 through February 2010, Plaintiff asserted its sole and exclusive ownership of all intellectual property rights in the trade dress of the Mola beauty dish, and requested that Defendants cease and desist from their wrongful acts. (Compl. at ¶ 27.)
Plaintiff commenced this action on December 23, 2010, by filing a complaint in the United States District Court for the Western District of New York. Defendant filed a Motion to Dismiss, or in the alternative, to Change Venue, on January 28, 2011. (Docket No. 4.) Briefing on the motion concluded on March 24, 2011, at which time this Court took the matter under advisement without oral argument.
A. Motion to Dismiss Standard
When challenged with a motion to dismiss pursuant to Rule 12(b)(2), the plaintiff bears the burden of establishing that the court has personal jurisdiction over the defendant. See In re Magnetic Audiotape Antitrust Litig., 334 F.3d 204, 206 (2d Cir. 2003) (per curiam); Robinson v. Overseas Military Sales Corp., 21 F.3d 502, 507 (2d Cir. 1994). If the court relies on pleadings and affidavits to resolve the motion, rather than a full evidentiary hearing, the plaintiff need make only a prima facie showing of personal jurisdiction to carry its burden. See Distefano v. Carozzi N. Am., Inc., 286 F.3d 81, 84 (2d Cir. 2001); Bank Brussels Lambert v. Fiddler Gonzalez & Rodriguez, 171 F.3d 779, 784 (2d Cir. 1999) (citing Marine Midland Bank v. Miller, 664 F.2d 899, 904 (2d Cir. 1981)); Langenberg v. Sofair, No. 03-CV-8339, 2006 WL 2628348, at *2 (S.D.N.Y. Sep. 11, 2006).
In determining whether the plaintiff has made this showing, the court is not obligated to draw "argumentative inferences" in the plaintiff's favor. Robinson, 21 F.3d at 507 (citing Atl. Mut. Ins. Co. v. Balfour Maclaine Int'l Ltd., 968 F.2d 196, 198 (2d Cir. 1992)). But the pleadings and affidavits, and all doubts arising therefrom, are construed in the light most favorable to the plaintiff. See CutCo Indus., Inc. v. Naughton, 806 F.2d 361, 365 (2d Cir. 1986); see also Langenberg, 2006 WL 2628348, at *5 ("courts are authorized to rely on affidavits submitted by the parties in deciding a Rule 12(b)(2) motion to dismiss").
B. Defendants' Motion to Dismiss
Plaintiff alleges four causes of action against Defendants. In the first cause of action, brought pursuant to 15 U.S.C. §1125(a), Plaintiff alleges that Defendants have infringed upon its federal trademark rights. Plaintiff's second and third causes of action, pursuant to 15 U.S.C. §1125(c) and N.Y. Gen. Bus. Law § 360-1, allege that Defendants' actions are likely to cause dilution of Plaintiff's federal trademark rights. Plaintiff's fourth cause of action, brought pursuant to N.Y. Gen. Bus. Law § 349, alleges that Defendants have engaged in deceptive and misleading acts constituting unfair competition.
Defendants argue that all four causes of action should be dismissed either under Rules 12(b)(2) and 12(b)(3) for lack of personal jurisdiction and improper venue, or in the alternative, that the suit should be transferred to the Western District of Washington. This Court will address each of Defendants' challenges in turn.
1. Lack of Personal Jurisdiction
"Personal jurisdiction of a federal court over a non-resident defendant is governed by the law of the state in which the court sits -- subject of course, to certain constitutional limits of due process." Robinson, 21 F.3d at 510 (internal citations omitted). To determine personal jurisdiction over a non-domiciliary in a case involving a federal question, the Court must engage in a two-step analysis. See Chloe v. Queen Bee of Beverly Hill, LLC, 616 F.3d 158, 163 (2d Cir. 2010) (citing Best Van Lines, Inc. v. Walker, 490 F.3d 239, 243-44 (2d. Cir. 2007)). The Court must first apply the forum state's long-arm statute. Id. If the forum state's long-arm statute permits personal jurisdiction, the court must then analyze whether personal jurisdiction comports with the Due Process Clause of the United States Constitution. Id.
a. New York's Long-Arm Statute
New York's long-arm statute, N.Y. C.P.L.R. § 302(a), authorizes the exercise of personal jurisdiction over non-domiciliaries in certain circumstances. Specifically, a court may exercise personal jurisdiction over any non-domiciliary, who "in person or through an agent: transacts any business within the state or contracts ...