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

          MEMORANDUM OPINION

          Richard D. Bennett United States District Judge

         Plaintiff 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. 1.)^[1] 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.

         The 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.^[2]

         BACKGROUND

         I. The Parties

         Under 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.)

         Battle 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.)

         II. Factual and Procedural History^[3]

         Mr. 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.)

         In 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.

         On 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.

         In 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. ).^[4] 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).

         A 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.)^[5] 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.

         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 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. Va. 2004)).

         If a 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 ...