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Under Armour, Inc. v. Battle Fashions, Inc.

United States District Court, D. Maryland

March 6, 2018

UNDER ARMOUR, INC., Plaintiff,
v.
BATTLE FASHIONS, INC., et al., Defendants.

          MEMORANDUM OPINION

          RICHARD D. BENNETT UNITED STATES DISTRICT JUDGE.

         Plaintiff Under Armour, Inc. (“Plaintiff” or “UA”) brings this declaratory judgment action against Defendants Battle Fashions, Inc.[1] 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.

         BACKGROUND

         When 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.)

         Defendant 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.)

         In 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.)

         On 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.[2] On January 29, 2018, Defendants filed the instant Motion to Dismiss. (ECF No. 12.)

         STANDARD OF REVIEW

         A 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 489.

         If a 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).

         ANALYSIS

         I. Personal Jurisdiction

         Before 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.

         Although 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 ...


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