United States District Court, D. Maryland
Richard D. Bennett United States District Judge
Under Armour, Inc. (“Plaintiff” or “Under
Armour”) 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. (Compl., ECF No.
On March 6, 2018, this Court denied a motion to dismiss for
lack of personal jurisdiction, ruling that Under Armour had
made a prima facie showing of personal jurisdiction
over Battle. (Mem. Op., ECF No. 27.) That ruling did not
resolve the jurisdictional issue as Under Armour was accorded
a period of discovery to establish the existence of personal
jurisdiction. However, now that discovery in this case has
ended, Battle seeks a final decision on personal jurisdiction
based on the evidence, and both parties requested an
evidentiary hearing, which was held on July 10, 2019.
Court finds the facts stated herein based upon its evaluation
of the evidence, including the credibility of witnesses, and
the inferences that the Court has found it reasonable to draw
from the evidence. Kelsey Battle's minimal contacts with
Maryland are insufficient to fall within the ambit of
Maryland's long-arm statute, Md. Code Ann., Cts. &
Jud. Proc., § 6-103(b). Furthermore, there is
insufficient evidence to establish specific jurisdiction over
Mr. Battle so as to comport with due process. Evidence
produced at the hearing on July 10, 2019 established that
Battle's counsel sent two letters to Under Armour in
Maryland and three letters to recipients in California and
New York as part of a litigation strategy to pressure Under
Armour to negotiate a settlement. However, those letters were
of no effect and did not result in any damage to Under
Armour's business relationships. This unsuccessful
attempt does not subject Kelsey Battle to personal
jurisdiction in Maryland. Accordingly, for the reasons that
follow, Defendants' Motion to Dismiss Plaintiff's
First Amended Complaint for Lack of Personal Jurisdiction or,
Alternatively, Motion for Summary Judgment (ECF No. 51) shall
be GRANTED IN PART and DENIED IN PART. Defendant's motion
to dismiss for lack of personal jurisdiction under Rule
12(b)(2) of the Federal Rules of Civil Procedure shall be
GRANTED, and this case shall be transferred to the United
States District Court for the Eastern District of North
Carolina. With respect to the alternative motion for summary
judgment, it is DENIED.
Armour is a Baltimore, Maryland corporation selling athletic
clothing and footwear. (Am. Compl., ECF No. 50.) Under Armour
brought this case as a declaratory judgment action seeking a
declaration that it does not infringe Defendants'
“ICAN” trademark and also seeks cancellation of
the trademark. (Id.)
Fashions, Inc. is a North Carolina corporation that was
dissolved in August 2010. (Cert. of Dissolution, Ex. 10, ECF
No. 52-2.) Kelsey Battle (“Mr. Battle”) is a
North Carolina resident. (Am. Compl., ECF No. 50.) Mr. Battle
owns the “ICAN” trademark. Defendants
counterclaim that Under Armour's “I CAN DO ALL
THINGS” and “I CAN. I WILL.” infringe the
“ICAN” trademark. (Countercl., ECF No. 32.)
Factual and Procedural History
Battle owns United States Trademark Registration No. 3, 081,
141 (“ICAN Mark”) for use on clothing, registered
on April 18, 2006. (Am. Compl. ¶¶ 4, 24, ECF No.
50.) Under Armour 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 his favorite Bible verse on
his shoes (“I can do all things through Christ who
strengthens me.” Philippians 4:13.) (Id. at
¶ 12.) Under Armour also used the phrase “I Can
and I Will” in connection with its products.
(Id. at ¶ 13.)
January 2017, counsel for Battle sent a letter to Under
Armour, demanding that it “[c]ease and desist use of
the trademarks ‘ICAN,' ‘I CAN DO ALL
THINGS,' and ‘ICAN. I WILL' and anything
confusingly similar thereto, in any way whatsoever.”
(Id. at ¶ 14.) Under Armour responded that the
phrase was well-known, commonly used, confusion was unlikely,
and it was aware of its obligations. (Id. at ¶
15.) Negotiations were not successful, and nine months later,
new counsel for Battle sent a second cease-and-desist letter
on October 4, 2017. (Id. at ¶ 16.) Shortly
after, counsel for Battle and Under Armour had a telephone
conversation to discuss the October letter. (Mot. Jih Decl.
¶ 4, ECF No. 52-2 (Sealed).) Battle's counsel asked
Under Armour to request that its design and marketing
partners preserve documents in anticipation of a potential
lawsuit. (Id.) Under Armour stated that it was
“aware of its legal obligations” but did not
commit to making any specific preservation requests.
(Id. at ¶ 5.) Battle's counsel avers that
at the end of the conversation, Under Armour was informed
that Battle's counsel would send letters to Stephen
Curry, his agent, and Under Armour's advertising agency
requesting that they preserve documents, and there was no
objection or expression of concern from Under Armour's
counsel. (Id.) Under Armour's counsel disagrees
with this representation and testified that Battle's
counsel did not state that they would send letters of any
kind to third parties. Having heard testimony, this Court
makes the factual finding that Under Armour's counsel was
not advised of any letters being sent to third parties. This
Court further finds, as discussed infra, that this
was merely a subsequent litigation strategy.
October 13, 2017, Battle's counsel sent document
preservation letters to three non-parties: (1) Wardell
“Steph” Curry II in California, (2) Mr. Jeff
Austin (Curry's agent) in California; and (3) Droga 5
(Under Armour's advertising agency) in New York.
(Id. at ¶¶ 4- 6.) Under Armour's
counsel testified that they were contacted by the recipients
of the letters, causing concern that Battle was trying to
pressure a settlement and would send out more letters.
response, on November 1, 2017, Under Armour filed this
declaratory judgment action (ECF No. 1), and seven weeks
later, on December 20, 2017, Mr. 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 (E.D. N.C. ). On January 29,
2018, Battle filed a Motion to Dismiss for lack of personal
jurisdiction (ECF No. 12), and on March 6, 2018, this Court
denied the motion, stating that Under Armour had made at
least a prima facie showing of personal jurisdiction
over Battle (ECF No. 27).
scheduling order was issued and discovery commenced. (ECF No.
29.) On August 16, 2018, a First Amended Complaint was filed,
followed on August 30, 2018 by the instant motion to dismiss
for lack of personal jurisdiction or alternatively, for
summary judgment. (ECF Nos. 50, 51.) Under Armour has failed to
prove, by a preponderance of the evidence, the existence of a
ground for jurisdiction, so the motion shall be GRANTED IN
PART, and the case shall be transferred to the United States
District Court for the Eastern District of North Carolina.
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
defendant. 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). When a
district court considers a motion to dismiss for lack of
personal jurisdiction without conducting an evidentiary
hearing, the plaintiff need only make a prima facie
showing of personal jurisdiction to defeat the motion.
Fed.R.Civ.P. 12(b)(2); New Wellington Fin. Corp. v.
Flagship Resort Dev. Corp., 416 F.3d 290, 294 (4th Cir.
2005). “However, ‘[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.'” Id. (quoting Production Grp
Int'l v. Goldman, 337 F.Supp.2d 788, 793 n. 2 (E.D.
court requires the plaintiff to establish facts supporting
personal jurisdiction by a preponderance of the evidence
prior to trial, it must conduct an “evidentiary
hearing.” Grayson v. Anderson, 816 F.3d 262,
268 (4th Cir. 2016) (citing New Wellington Fin. Corp. v.
Flagship Resort Dev. Corp., 416 F.3d 290, 294 n. 5 (4th
Cir. 2005). “[O]nly when a material jurisdictional fact
is disputed and that fact overlaps with a fact that needs to
be resolved on the merits by a jury might a court defer its
legal ruling on personal jurisdiction to let the jury find
the overlapping fact.” Id. at 267-68 (4th Cir.
2016); see also Adams v. Bain, 697 F.2d 1213, 1219
(4th Cir. 1982) (noting that, “where the ...