Summary
holding that purchase by plaintiff's investigator did not confer specific jurisdiction because the purchase "ha[d] nothing to do with" the trademark ' infringement claims since the purchaser "cannot claim to have been confused as to with whom he was dealing"
Summary of this case from Chloé v. Queen Bee of Beverly Hills, LLCOpinion
04 Civ. 5275 (RCC).
July 18, 2005
MEMORANDUM ORDER
Before the Court is Defendant's motion to dismiss the complaint for lack of personal jurisdiction. For the reasons explained below, Defendant's motion is granted.
I. Background
Defendant Barbara Anderson, a/k/a Barbie Walley, is a resident of Calgary, Alberta, Canada and operates a small unique adult retail store there called Barbie's Shop. In January 2001, Defendant registered the Internet domain name "barbiesshop.com" and maintains a website at www.barbiesshop.com. Plaintiff Mattel is a toy manufacturer organized under the laws of Delaware, with its principal place of business in California. Mattel holds several trademarks relating to its Barbie doll products and accessories and hosts websites at www.barbie.com and www.barbieshop.com. Mattel asserts claims under the Lanham Act for trademark infringement, 15 U.S.C. § 1114(a), trademark dilution, 15 U.S.C. § 1125(c), and cybersquatting, 15 U.S.C. § 1125(d).
II. Discussion
To survive Defendant's motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(2), Plaintiff bears the burden of demonstrating that the exercise of personal jurisdiction is appropriate. Bank Brussels Lambert v. Fiddler Gonzalez Rodriguez, 171 F.3d 779, 784 (2d Cir. 1999). At this stage, prior to discovery, the Court presumes the factual allegations contained in the complaint and affidavits are true and resolves all doubt in favor of the Plaintiff. CutCo Indus. Inc. v. Naughton, 806 F.2d 361, 365 (2d Cir. 1986). Personal jurisdiction in a diversity case is determined by the law of the state in which the district court sits. Bank Brussels, 171 F.3d at 784 (citing Arrowsmith v. United Press Int'l, 320 F.2d 219, 222-25 (2d Cir. 1963)). Accordingly, the acts of a non-domiciliary defendant must be within the scope of New York's long-arm statute and the exercise of personal jurisdiction must comport with federal due process requirements. Id.
Mattel claims that this Court's exercise of personal jurisdiction is appropriate under N.Y.C.P.L.R. § 302(a)(1), which provides that "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 anywhere to supply goods or services in the state." N.Y.C.P.L.R. § 302(a)(1). In support of this theory of personal jurisdiction, Mattel relies on a single sale from Defendant's website — procured by its investigator — which resulted in the shipment of goods to New York. On June 3, 2004, one month before Mattel filed the complaint in this action, its private investigator Michael Falsone placed an order on Defendant's website and had the goods shipped to him in New York. See generally Falsone Decl. On June 4, 2004, he received an email confirmation of his order. See Falson Decl. ¶ 4 and Ex. C.
The contract prong of § 302(a)(1) extends jurisdiction to defendants who "contract anywhere to supply goods or services in the state." N.Y.C.P.L.R. § 302(a)(1). "This provision captures cases where there are minimal contacts in New York, and, for example, a contract is made elsewhere for goods to be delivered or services to be performed in New York." Bank Brussels, 171 F.3d at 789 (noting provision was added in 1979 and citing legislative history). "Thus, even if a defendant never enters the state to negotiate one of these contracts, to complete performance or for any other reason, the second prong of § 302(a)(1) can provide long-arm jurisdiction over a defendant who has minimal contacts with the state and who has entered a contract anywhere to supply goods or services in the state."Id. (citing Island Wholesale Wood Supplies, Inc. v. Blanchard Indus. Inc., 476 N.Y.S.2d 192 (2d Dep't 1984)). If the non-domiciliary does not somehow project him or herself into New York to perform services in New York, however, there will be no personal jurisdiction. Id. at 789 (declining to exercise personal jurisdiction under § 302(a)(1) where Puerto Rican law firm performed all the relevant services in Puerto Rico and did not project itself into New York or purposefully avail itself of the privileges and benefits of performing services in New York).
Mattel has had some success with its strategy of using its private investigator to create circumstances giving rise to personal jurisdiction over alleged cybersquatters in the past.See, e.g., Mattel v. Adventure Apparel, No. 00 Civ. 4085 (RWS), 2001 WL 286728, at *3 (S.D.N.Y. March 22, 2001) (finding exercise of personal jurisdiction appropriate under § 302(a)(1) where defendant's sole contact with New York was sale of allegedly infringing merchandise to Mattel's investigator in New York); Mattel v. Procount Bus. Servs., No. 03 Civ. 7234 (RWS), 2004 WL 502190, at * 2 (S.D.N.Y. March 10, 2004) (finding exercise of personal jurisdiction appropriate under § 302(a)(1) where investigator had single toy purchase on allegedly infringing website shipped to New York); but see Mattel v. Securenet Info. Servs., No. 99 Civ. 11813 (JSM), 2001 WL 521816, at * 1 (S.D.N.Y. May 16, 2001) (declining to follow Mattel v. Adventure Apparel and refusing to exercise personal jurisdiction under CLPR § 302(a)(1) over internet service provider, whose sole contract of service in New York was with Plaintiff's investigator, who secured the account only after stating, falsely, that he would be moving to Canada in the future).
Mattel acknowledges that it is relying on a single transaction to sustain jurisdiction. "Where jurisdiction under section 302(a)(1) is based on a single transaction of business in which the defendant never entered New York, the plaintiff must demonstrate that the cause of action sued upon `substantially' relates to the underlying transaction of business." Mattel v. Securenet Info. Servs., 2001 WL 521816, at *2. That is, Mattel's claims "`must be directly and proximately related to the business transacted in New York,' and a cause of action which bears only a remote and indirect relationship to the New York transaction will not support jurisdiction." Id. (quoting Sherwin v. Indianapolis Colts, Inc., 752 F. Supp. 1172, 1182 (N.D.N.Y. 1990)).
Mattel's claims in this action concern Defendant's alleged infringement of the Barbie trademark. Mattel's claims do not relate to a breach of contract between Falsone and Defendant. Falsone's purchase has nothing to do with Plaintiff's action for infringement since he cannot claim to have been confused as to with whom he was dealing. See Mattel v. Securenet Info. Servs., 2001 WL 521816, at *2 (finding contract to supply internet services was unrelated to plaintiff's trademark infringement claim); see also Millennium Enters v. Millennium Music, 33 F. Supp. 2d 907, 911 (D.Ore. 1999) (finding exercise of personal jurisdiction in infringement action inappropriate where sole contact with forum was a purchase solicited by an acquaintance of plaintiff's counsel and purchaser "knew exactly with whom she was dealing and knew that defendants were not associated in any way with plaintiff"). Accordingly, the Court finds Defendant's single shipment of goods into this district insufficient to establish personal jurisdiction since it was "nothing more than an attempt by plaintiff to manufacture a contact with this forum. . . . Defendant cannot be said to have `purposefully' availed [herself] of the protections of this forum when it was an act of someone associated with plaintiff, rather than [her] web site advertising, that brought [her] products into this forum." Millennium Enters., 33 F. Supp. 2d at 911.
III. Conclusion
For the reasons explained above, this Court does not have personal jurisdiction over the Defendant Barbara Anderson. Accordingly, Defendant's motion is granted. The Clerk of the Court is asked to close the case.
So Ordered.