United States District Court, D. Maryland
RICHARD D. BENNETT UNITED STATES DISTRICT JUDGE.
Under Armour, Inc. (“Plaintiff” or
“UA”) brings this declaratory judgment action
against Defendants Battle Fashions, Inc. and Kelsey Battle
(collectively, “Defendants” or
“Battle”) seeking a Declaratory Judgment,
pursuant to 28 U.S.C. § 2201, that its use of the
phrases “I Can Do All Things” and “I Can. I
Will.” do not infringe on Defendants'
“ICAN” trademark. (ECF No. 1.) Currently pending
before this Court is Defendants' Motion to Dismiss for
Lack of Jurisdiction. (ECF No. 12.) The parties'
submissions have been reviewed, and no hearing is necessary.
See Local Rule 105.6 (D. Md. 2016). For the reasons
stated below, Defendants' Motion to Dismiss for Lack of
Jurisdiction (ECF No. 12) is DENIED.
reviewing a motion to dismiss, this Court accepts as true the
facts alleged in the plaintiff's complaint. See Aziz
v. Alcolac, Inc., 658 F.3d 388, 390 (4th Cir. 2011).
Plaintiff Under Armour is a Maryland corporation engaged in
the sale of performance products. (ECF No. 1 at ¶¶
2, 10.) UA uses the phrases “I Can Do All Things”
and “I Can. I Will.” in association with and in
the promotion of its products. (Id. at ¶ 11.)
Specifically, UA uses the phrase “I Can Do All
Things” in connection with a line of products
associated with professional basketball player Stephen Curry,
who is known for writing the Bible verse “I can do all
things through Christ who strengthens me” on his shoes.
(Id. at ¶ 12.) UA then uses the phrase “I
Can. I Will.” in association with its products
generally. (Id. at ¶ 13.)
Battle Fashions is a corporation organized and existing under
North Carolina law and with its principal place of business
in North Carolina. (Id. at ¶ 3.) Defendant
Kelsey Battle is a North Carolina resident and does business
as Battle Fashions and ICAN clothing. (Id. at ¶
4.) On January 10, 2017, Defendants sent UA a
cease-and-desist letter asserting that UA was infringing on
Battle's rights in the trademark “ICAN.” and
demanding UA “[c]ease and desist the use of the
trademarks ‘ICAN, ' ‘I CAN DO ALL THINGS,
' and ‘I CAN. I WILL.' and anything confusingly
similar thereto.” (Id. at ¶ 14.) UA
responded that it uses “I can” as “part of
formative and descriptive phrases, ” that numerous
third parties use the phrase, and confusion was unlikely.
(Id. at ¶ 15.)
addition to sending Under Armour the cease-and-desist letter,
Defendants wrote to third parties, including Stephen Curry,
his agent, and UA's advertising agency Droga5, asserting
that UA was infringing on Battle's ICAN trademark.
(Id. at ¶ 7.) The letters further demanded that
the third parties, given their relationships with UA, take
action to preserve evidence and cease routine document
destruction policies. (Id.) UA asserts that
“[t]hese third party letters were intended to and had
an immediate impact on UA in Maryland.” (Id.)
November 1, 2017, almost ten months after unsuccessful
negotiations, Under Armour filed this action for Declaratory
Judgment, seeking a declaration that its actions have not
violated the Lanham Act, 15 U.S.C. §§ 1114, 1125,
or any other state trademark or unfair competition laws, as
alleged by the Defendants. (ECF No. 1.) Seven weeks later, on
December 20, 2017, Kelsey Battle filed suit as an individual
plaintiff against Under Armour in the United States District
Court for the Eastern District of North Carolina, asserting
trademark infringement under the Lanham Act, 15 U.S.C.
§§ 1114, 1125 and unfair competition under North
Carolina state law. See Battle v. Under Armour, No.
5:17-cv-00627-BO. On January 29, 2018, Defendants filed the
instant Motion to Dismiss. (ECF No. 12.)
motion to dismiss under Rule 12(b)(2) of the Federal Rules of
Civil Procedure for lack of personal jurisdiction challenges
a court's authority to exercise its jurisdiction over the
moving party. Combs v. Bakker, 886 F.2d 673, 676
(4th Cir. 1989). The jurisdictional question is “one
for the judge, with the burden on the plaintiff ultimately to
prove the existence of a ground for jurisdiction by a
preponderance of the evidence.” Id.;
Sigala v. ABR of VA, Inc., 145 F.Supp.3d 486, 489
(D. Md. 2014). While a court may hold an evidentiary hearing
or permit discovery for the jurisdictional issue, it may also
resolve the issue on the basis of the complaint, motion
papers, and other supporting legal memoranda. Consulting
Eng'rs Corp. v. Geometric Ltd., 561 F.3d 273, 276
(4th Cir. 2009); see also Sigala, 145 F.Supp.3d at
court does not hold an evidentiary hearing or permit
discovery, a plaintiff need only make “a prima
facie showing of a sufficient jurisdictional basis to
survive the jurisdictional challenge.” Consulting
Eng'rs Corp., 561 F.3d at 276. When considering
whether the plaintiff has made the requisite showing,
“the court must take all disputed facts and reasonable
inferences in favor of the plaintiff.” Carefirst of
Maryland, Inc. v. Carefirst Pregnancy Ctrs., Inc., 334
F.3d 390, 396 (4th Cir. 2003). Notably, “‘a
threshold prima facie finding that personal
jurisdiction is proper does not finally settle the issue;
plaintiff must eventually prove the existence of personal
jurisdiction by a preponderance of the evidence, either at
trial or at a pretrial evidentiary hearing.'”
New Wellington Fin. Corp. v. Flagship Resort Dev.
Corp., 416 F.3d 290, 294 n. 5 (4th Cir. 2005) (emphasis
in original) (citation omitted).
a court can exercise personal jurisdiction over a
non-resident defendant, a court must determine that (1) the
exercise of jurisdiction is authorized under the state's
long-arm statute pursuant to Rule 4(k)(1)(a) of the Federal
Rules of Civil Procedure; and (2) the exercise of
jurisdiction conforms to the Fourteenth Amendment's due
process requirements. Carefirst, 334 F.3d at 396;
Sigala, 145 F.Supp. at 489. To satisfy the first
prong, a plaintiff must specifically identify a provision in
the Maryland long-arm statute that authorizes jurisdiction.
Ottenheimer Publishers, Inc. v. Playmore, Inc., 158
F.Supp.2d 649, 652 (D. Md. 2001). As Judge Hollander of this
Court has recently noted, when interpreting the reach of
Maryland's long-arm statute, Md. Code Ann., Cts. &
Jud. Proc., § 6-103(b), this Court must adhere to the
interpretations of the Maryland Court of Appeals. Tulkoff
Food Prod., Inc. v. Martin, No. ELH-17-350, 2017 WL
2909250, at *4 (D. Md. July 7, 2017) (citing Carbone v.
Deutsche Bank Nat'l Trust Co., No. RDB-15-1963, 2016
WL 4158534, at *5 (D. Md. Aug. 5, 2016); Snyder v.
Hampton Indus., Inc., 521 F.Supp. 130 (D. Md. 1981),
aff'd, 758 F.2d 649 (4th Cir. 1985)).While it is
preferable that a plaintiff identify the statute authorizing
jurisdiction in its complaint, the plaintiff alternatively
may reference the applicable statute in its response to a
defendant's motion to dismiss. Johansson Corp. v.
Bowness Constr. Co., 304 F.Supp.2d 701, 704 n.1 (D. Md.
2004). Under Armour asserts that this Court has personal
jurisdiction over Defendants because this action arises from
Battle's business transactions in Maryland. Md. Code.
Ann., Cts. & Jud. Proc. § 6-103.
Maryland courts “have consistently held that the
state's long-arm statute is coextensive with the limits
of personal jurisdiction set out by the Due Process Clause of
the Constitution, ” Carefirst, 334 F.3d at
396, courts must address both prongs of the personal
jurisdiction analysis. Metro. Reg'l Info. Sys., Inc.
v. American Home Realty Network, Inc., 888 F.Supp.2d
691, 699 (D. Md. 2012); CSR, Ltd. V. Taylor, 411 Md.
457, 475-76 (2009). Under the second prong, courts determine
whether the exercise of personal jurisdiction comports with
the Fourteenth Amendment's due process requirements. For
a non-resident defendant, “due process requires only
that . . . a defendant . . . have certain minimum contacts .
. . such that the maintenance of the suit does not offend
traditional notions of fair play and substantial
justice.” Int'l Shoe Co. v. Washington,
326 U.S. 310, 316 (1945) (quoting Milliken v. Meyer,
311 U.S. 457, 463 (1940)). A ...