United States District Court, S.D. New York
MEMORANDUM OPINION AND ORDER
W. WOOD United States District Judge
Salonclick LLC d/b/a Min New York ("MiN NY"),
brings this action against its former independent contractor,
Defendants Mindy Yang and SuperEgo Management LLC, for
trademark infringement and causes of action related to
Defendants' unauthorized use of Plaintiffs domain names
and social media accounts. Defendants move to dismiss
Plaintiffs causes of action for replevin, conversion, and
trespass on the ground that Plaintiff cannot have a property
right in domain names or social media accounts. Defendants
also move to dismiss Plaintiffs breach of fiduciary duty
cause of action for failing to state a claim. For the reasons
set forth below, Defendants' motion to dismiss is GRANTED
in part and DENIED in part.
LLC was founded by Chad Murawczyk in 1999, and at all times
he has been the sole owner. Am. Compl. ¶ 7, ECF No. 16.
Salonclick LLC has done business under the name "Min New
York, " through which it has manufactured and sold hair
color, hair care, and skin care products. Id. MiN NY
also sells fragrenences and is an "innovative
manufacturer, distributor, retailer and curator that
specializes in formulating and identifying exceptional
fragrance and grooming products for both men and women."
Id.Â¶3. MiN NY has utilized a variety of website
domain names including www.mensgroomingessentials.com,
id. ¶ 7, and www.inventoryofexperiences.com,
id. ¶ 27. Since at least 2007, MiN NY has
utilized the phrase "The Art of Living" as a
tagline in packaging, advertising, and online. Id.
¶ 18. In 2014, MiN NY launched a house brand of perfumes
called "Scent Stories, " for which MiN NY has been
awarded a trademark. Id. ¶¶ 16-17 &
Ex. A. Murawczyk also ran www.newyorkheart.org and its
corresponding Facebook page, a vehicle for advocating against
ivory poaching, which has been affiliated with MiN NY to
promote it as a "socially responsible and concerned
business." Id. ¶ 24.
hired Yang, through her company SuperEgo, as an independent
contractor to assist with "graphic design, public
relations, and marketing, particular social media."
Id. ¶¶ 9, 10. The business relationship
deteriorated, see Id. ¶ 12, and, in December
2015, Murawczyk told Yang that he would no longer be needing
her services, id. ¶ 13. In retribution, Yang
used her access to MiN NY's website and social media
accounts for Yang's own benefit. Id. ¶ 15.
Yang created a new online business www.theartofliving. earth,
id. ¶ 21, and redirected MiN NY's
www.inventoryofexperiences.com, and www.newyorkheart.org -to
Yang's website, id. ¶¶ 26-28. Yang has
also used MiN NY's social media pages-such as the Twitter
page @ScentStories and the New York Heart Facebook page-to
promote Yang's new online business. Id.
¶¶22, 23, 25. For instance, a post on the
@ScentStories Twitter account told a customer to write to the
e-mail address hello@TheArtOfLiving.Earth, an e-mail address
for Yang's new business, for invitations to special
events. Id. ¶ 21 & Ex. B. Yang also created
her own domain name, www.mensgroomingessentials.earth, which
redirected to www.theartofliving.earth. Id.
action was filed in March 2016 in New York State Supreme
Court and was timely removed to this court in April.
See ECF No. 1-2. On May 25, 2016, Defendants filed a
motion to dismiss pursuant to Federal Rule 12(b)(6). ECF No.
14. The case was reassigned to the undersigned on November
order to survive a Rule 12(b)(6) motion to dismiss, a
plaintiff must plead sufficient factual allegations "to
state a claim to relief that is plausible on its face."
Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570
(2007). A claim is facially plausible "when the
plaintiff pleads factual content that allows the court to
draw the reasonable inference that the defendant is liable
for the misconduct alleged." Ashcroft v. Iqbal,
556 U.S. 662, 678 (2009). The Court accepts as true all
well-pleaded factual allegations and draws all reasonable
inferences in favor of the non-moving party. See Famous
Horse Inc. v. 5th Ave. Photo Inc., 624 F.3d 106, 108
move to dismiss count one (replevin), count two (conversion),
and count seven  (trespass) on the ground that
Plaintiff fails to allege a cognizable property or possessory
interest in the domain names and social media accounts that
were allegedly taken unlawfully. Def. Mem. 4, ECF No. 15.
Further, Defendants move to dismiss count eight (breach of
fiduciary duty) for failure to state a claim. Id. at
Replevin, Conversion, and Trespass
alleges that Defendants have committed replevin and
conversion by "wrongfully, without authority or
permission, tak[ing] MiN NY's assets, to wit, the
@ScentStories Twitter account, the inventoryofexperiences.com
domain name, the newyorkheart.org domain name, and the New
York Heart Facebook page, " Am. Compl. ¶¶ 31,
34, and that Defendants have committed trespass by accessing
"without authorization ... multiple computer services
which rightly belong to MiN NY, " id. ¶
62, which also are violations of criminal law, id.
¶ 63. Defendants argue that Plaintiff cannot have a
cognizable property or possessory interest in access to
domain names or social media accounts, and thus that
Plaintiff cannot state a claim. Def. Mem. 4, ECF No. 15.
2006, the Second Circuit Court of Appeals certified to the
New York Court of Appeals the question "whether
electronic data, computer programs, or electronic data saved
in computer programs can support a claim for conversion under
New York law." Thyroff v. Nationwide Mut. Ins.
Co., 460 F.3d 400, 407 (2d Cir.). In its answer, New
York Court of Appeals noted the long-standing general rule
that an action for conversion cannot normally be brought with
respect to intangible property, as well as the
"merger" doctrine exception, which recognizes
"that an intangible property right can be united with a
tangible object for conversion purposes, " such as a
stock certificate for the ownership of a stock share.
Thyroff v. Nationwide Mut. Ins. Co., 8 N.Y.3d 283,
289 (2007) (citing Agar v. Orda, 264 N.Y. 248, 251
(1934)). The New York Court of Appeals concluded that the
time to recognize conversion of intangible property "has
arrived": "It cannot be seriously disputed that
society's reliance on computers and electronic data is
substantial, if not essential. Computers and digital
information are ubiquitous and pervade all aspects of
business, financial and personal communication
activities." Id. at 291-92. The New York Court
of Appeals concluded:
[T]he tort of conversion must keep pace with the contemporary
realities of widespread computer use. We therefore answer the
certified question in the affirmative and hold that the type
of data that Nationwide allegedly took possession
of-electronic records that were stored on a computer and were
indistinguishable from printed documents-is subject to a
claim of conversion in New York. Because this is the only
type of intangible property at issue in this case, ...