United States District Court, S.D. New York
F.TV Ltd. and FASHION TV PROGRAMMGESELLSCHAFT MbH, Plaintiffs,
BELL MEDIA INC., as successor-in-interest to CHUM LIMITED, and BIGFOOT ENTERTAINMENT, INC. d/b/a FASHION TELEVISION INTERNATIONAL, LTD. Defendants.
OPINION & ORDER
KATHERINE B. FORREST, District Judge.
On December 12, 2014, F. Tv Ltd. and Fashion TV Programmgesellschaft MbH (together, "FTV") commenced this lawsuit against Bell Media Inc. ("Bell"), as successor-in-interest to Chum Limited ("Chum"), and Bigfoot Entertainment, Inc. d/b/a Fashion Television International, Ltd. ("Bigfoot"). Plaintiffs filed an amended complaint on January 21, 2015. (ECF No. 13 ("FAC").) FTV seeks to hold defendants liable for false advertising, tortious interference, and trade libel and seeks a declaratory judgment with regard to its right to use the mark "Fashion Television."
FTV's lawsuit followed its receipt earlier that month of a cease and desist letter authorized by a subsidiary of Bigfoot, Fashion Television International, Ltd. ("FTIL"), relating to FTV's use of certain marks in connection with programming broadcasts. According to FTV, its right to use the marks was resolved by litigation between 1998 and 2002-the results of which are binding on Bigfoot and FTIL.
Before this Court are motions to dismiss by both Bell and Bigfoot. (ECF Nos. 24, 28, 55.) This Opinion deals only with the motion by Bell. (ECF No. 28.) Bell has moved pursuant to rules 12(b)(2) and (6) on the bases that the Court lacks personal jurisdiction and for failure to state a claim. Bell's motion is GRANTED.
I. FACTUAL BACKGROUND
FTV is a television network that has been broadcasting fashion-related content since 1997. (FAC at 1.) In 1998, shortly before FTV launched in the United States, it was sued by Chum-Bell's predecessor-for its use of the name "fashion television." Chum v. Lisowski et al., 98 Civ. 5060 (KMW), 2001 WL 243541, at *1 (S.D.N.Y. Mar. 12, 2001). Chum had used the Fashion Television mark in 1985 and commenced using it in the United States in 1992. Id . In that litigation, it was "undisputed that those of defendants' marks that use the word fashion' in conjunction with TV or television look  similar' to the [Chum] marks." Id. at *2 (first alteration in original). The Court granted summary judgment dismissing Chum's trademark infringement and dilution claims but denied it as to a remaining unfair competition claim. Id. at *7. In connection with its determination on summary judgment, the Court found that the mark "fashion television" was generic. Id. at *8. Following a bench trial on that claim, judgment was entered in favor of FTV. Chum Ltd. v. Lisowski, 198 F.Supp.2d 530, 542 (S.D.N.Y. 2002). No appeal was taken.
In 2006, defendant Bell acquired Chum. (FAC at 2.) In October 2014, Bell and Bigfoot entered into a letter of intent ("LOI") pursuant to which Bigfoot would license the worldwide rights to a series of trademarks. (Declaration of Kevin A. Assaff, ECF No. 30 (Assaff Decl.) ex. B.) Bell and Bigfoot entered into a long-form license agreement effective as of December 24, 2014;. (Declaration of Raymond J. Dowd, ECF No. 56 ("Dowd Decl.") ex. I.) Pursuant to that agreement, in exchange for monetary payments totaling $4 million, Bigfoot acquired Bell's worldwide rights, excluding Canada, to a series of marks including "Fashion Television, " and logos using that name. (Dowd Decl. ex. I ¶ 4.1 & sched. D at BELLMEDIA000032-35.) Bell agreed that it would, if requested and in its sole discretion, assist Bigfoot with respect to any enforcement steps. (Dowd Decl. ex. I at ¶ 6.6.2.) Bigfoot agreed to indemnify Bell for costs associated with such assistance. (See id. ¶ 126.96.36.199.)
A. Jurisdictional Facts as to Bell
Bell is a Canadian media corporation with primary operations in Toronto, Ontario. (Assaff Decl. ¶¶ 2, 22-25.) It broadcasts programming in Canada and obtains advertising dollars in connection with such broadcasts from both Canadian and U.S. advertisers. (See Assaff Decl. ¶¶ 7, 24.) It does not have real property, offices, bank accounts or other assets in New York. (Supplemental Declaration of Kevin A. Assaff, ECF No. 65 ("Supp. Assaff Decl.") ¶ 4.) It does not have any employees in New York. (Supp. Assaff Decl. ¶ 4.) It does not broadcast content or offer goods or services in New York. (Supp. Assaff Decl. ¶ 4.)
Bell's contacts with New York are limited to the following: it is the successorin-interest to Chum; and Chum initiated litigation against FTV in New York in 1998. (ECF No. 64 ("Bell Reply Br.") at 5.) The securities of Bell's ultimate parent, BCE Corporation, are listed on the New York Stock Exchange. (Bell Reply Br. at 5.) Bell uses TeleRep LLC ("TeleRep"), an independent media sales agency that sells advertising time to U.S. advertisers for U.S. and Canadian media clients, which has offices in New York. (Bell Reply Br. at 5.)
Bell is the owner of certain trademarks registered in the U.S. and elsewhere, and among its U.S. registered marks are the "FT Fashion Television" logo. (See Assaff Decl. ¶¶ 16-18, Declaration of Elizabeth A. McNamara, ECF No. 31 ("McNamara Decl.") ¶ 13 & ex. 9.) The logo was registered in 2005 and became incontestable in 2010. (McNamara Decl. ¶¶ 13-14 & exs. 9-10.) This logo was not at issue in the Chum litigation. (See ECF No. 53 ("This use of a logo on a half-hour television episode is a different line of business from FTV's, which is broadcasting an entire 24-7 channel.... Chum applied for the trademark registration in May 1996 and it was granted in 2005.... Accordingly, Chum's use of the logo was never inconsistent with FTV's rights." (citations omitted)).)
Bell licensed a variety of marks using the words "fashion television" or "Fashion TV" and associated logos to Bigfoot through two transactions: an initial assignment in the fall of - and a final agreement in 2015. (Dowd Decl. ex. I sched. C; Assaff Decl. ex. F; Supp. Assaff Decl. ¶ 21.) One document bears a New York address for Bigfoot; and communications may have occurred between Bell in Canada and individuals representing Bigfoot in New York. (Dowd Decl. ex. I.) Invoices relating to the license agreement were sent to Bigfoot in New York. (Dowd Decl. ex. K ("Assaff Tr.") ll. 152:1-10.) While the extent to which the negotiations relating to the license agreement occurred in New York is disputed, the Court finds based on the record before it that the bulk were not in this District.
Bell has two sources of revenue arguably generated in or through New York: one-off content licenses and the acquisition of advertising time on Bell's channels by U.S. companies that lack a Canadian presence. (Assaff Decl. ¶¶ 22-24.) These sources account for only a minute portion of Bell's revenues. (Assaff Decl. ¶ 22.)
TeleRep, which sells advertising time on behalf of Bell to U.S. companies, is a separate company from Bell. (See Assaff Tr. ll. 49:15-24; Dowd Decl. ex. N ("TeleRep Aff.") ¶¶ 1-3, 8 & ex. A.) TeleRep represents many U.S. media companies and broadcast stations and reached 90% of U.S. households, with total advertising sales in excess of $2.8 billion dollars annually across 12 U.S. offices. (TeleRep Aff. ¶ 3.) TeleRep promotes more Canadian companies' than just Bell; it accepts orders for Fashion TV as one of a group of properties, not by itself. (TeleRep Aff. ¶ 8.) TeleRep employs three salespeople ...