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Trademark Infringement Suit Transferred from D.C. to Florida on Defendant’s Rule 12(b)(3) Motion to Dismiss for Improper Venue

Delta Sigma Theta Sorority, Inc. v. Bivins
Record No. 13-252 (BAH) (U.S. District Court for D. D.C., February 19, 2014)

by Colleen K. O’Brien, Associate
Semmes, Bowen & Semmes (www.semmes.com)

In this trademark infringement suit, the plaintiff, Delta Sigma Theta Sorority, Inc. (“Plaintiff” or “sorority”), sought to enjoin the defendants, Letisha D. Bivins (“Bivins”), Alphonso D. Goins (“Goins”), and FratHouse Clothing, LLC (“FratHouse”) (collectively, “the defendants”), from selling merchandise that allegedly infringed upon its registered trademarks, as well as to recover damages from the defendants. Defendants Bivins and Goins filed a Joint Motion to Dismiss pursuant to Federal Rules of Civil Procedure 12(b)(2) for lack of personal jurisdiction; 12(b)(3) for improper venue; and 12(b)(6), for failure to state a claim against Defendant Bivins. The Court granted the motion in part, on the grounds that the venue in the District of Columbia was improper, and transferred the case to the Middle District of Florida. Because the Court found venue to be improper, the Court did not address or resolve the parties’ arguments regarding lack of personal jurisdiction or failure to state a claim. Those portions of the defendants’ joint motion were denied without prejudice so that defendants could refile, if appropriate, in the Florida court.

FratHouse operated a clothing business in Naples, Florida, for which business they maintain a website. The sorority alleged that the FratHouse had engaged in the sale of merchandise bearing the sorority’s trademarks without authorization. The Court had previously allowed jurisdictional discovery as to venue and jurisdictional issues.

The burden was on the plaintiff to establish that venue was proper. All three (3) defendants were residents of the Middle District of Florida, specifically, the city of Naples, Florida. Venue was not proper under 28 U.S.C. § 1391(b)(1), since none of the defendants resided in the District, and also under § 1391(b)(3), since all defendants resided in Florida, making venue available in another district, namely, the Middle District of Florida. Thus, the plaintiff was required to show that venue was proper in the District under 28 U.S.C. § 1391(b)(2), which provides that “[a] civil action may be brought in—(2) a judicial district in which a substantial part of the events or omissions giving rise to the claim occurred, or a substantial part of property that is the subject of the action is situated.”

During the period of jurisdictional discovery authorized by the Court, the plaintiff uncovered the total number of transactions and sales allegedly infringing upon the plaintiff’s marks. In total, the plaintiff discovered that only ten (10) of the defendants’ total transactions since they started operating their business—out of 733 total transactions, or 1.3 percent of the defendants’ sales—were shipped or billed to addresses within the District of Columbia. Only two (2) of those transactions involved goods bearing the allegedly infringing marks. One of those purchases was made by a member of the sorority. The other purchase was cancelled and payment authorization was reversed.

The Court turned to Noxell Corp. v. Firehouse No. 1 Bar-B-Que Restaurant, 760 F.2d 312 (D.C. Cir. 1985) which also involved the intersection of trademark infringement and venue. The Noxell Court had noted that when considering a plaintiff’s choice of venue, “the convenience of the defendant (but not of the plaintiff)” was an appropriate factor to take into account. In Noxell, less than 1.5 percent of the California defendant’s product had been sold in the District of Columbia, with 40 percent of the defendant’s sales occurring in California. Requiring the defendant to litigate in D.C. and some 3,000 miles away from where all employees and corporate records were located exceeded inconvenience and was a hardship upon defendants.

Here, an even smaller percentage of the defendants’ product was sold in the District of Columbia than in Noxell—i.e., only 0.2 percent. The sorority conceded that it brought suit in D.C. solely for its own convenience, which ran directly counter to the venue statute’s “inten[t] to protect defendants.” Further, the sorority did not show any non-Internet advertising engaged in by the defendants, and, failed to show that the Internet advertising—primarily on social media sites—was aimed at D.C. Otherwise, any company with a generally accessible website would be vulnerable to a Lanham Act claim in any district of the United States—a result that would “eviscerate” the protection of the general venue statute.

In sum, and after jurisdictional discovery, the Plaintiff failed to uncover evidence sufficient to show that a substantial part of the events giving rise to the plaintiff’s claim occurred in this district, and failed to show that venue was proper in the District of Columbia under any prong of 28 U.S.C. § 1391(b). The Court exercised its discretion, however, and transferred the case to the Middle District of Florida, since the “interest of justice generally requires transferring a case to the appropriate judicial district in lieu of dismissal.”


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