IP Law Daily, TRADEMARK—S.D.N.Y.: Trademark infringement, dilution lawsuit dismissal denied, (Sep 26, 2022)

By Jonathan Anderson

Defendants sought to dismiss the suit asserting defective service of process, absence of personal jurisdiction, and forum non conveniens.

The federal district court for the Southern District of New York has denied a motion to dismiss a trademark infringement and dilution lawsuit filed by a New York-based artist and designer. The defendants, a group of individuals and unregistered entities in New York and Singapore, sought to dismiss the suit asserting defective service of process, absence of personal jurisdiction, and forum non conveniens. The court found that a discrepancy in an affidavit for service of process did not render the service invalid and that the defendants are subject to personal jurisdiction. Further, the court found that defendants failed to show Singapore offers an adequate alternative forum and that the public interest weighs more heavily in keeping the case in New York (Donnelly v. Anand, September 22, 2022, Castel, P.).

Background. The plaintiff designs and produces sculptures, paintings, and collectible vinyl figurines. Some of the defendants live and operate in New York, while others live and operate in Singapore. At the time of the complaint, the defendants were offering for sale numerous counterfeit items on websites that allegedly infringe on plaintiffs’ trademarks and copyrights. Plaintiff sued alleging counterfeiting, trademark infringement and trademark dilution under the Lanham Act, 15 U.S.C. § 1114, et seq., and infringement claims under the Copyright Act, 17 U.S.C. § 501.

Service of process. First, the defendants argued that the complaint should be dismissed under Rule 12(b)(5), alleging that service of process was defective because of a discrepancy in an affidavit of a Singapore notary public. The discrepancy concerned the date of service, which plaintiffs argued was an obvious and inconsequential error and which they sought to cure through a subsequent affidavit. The court found that the discrepancy was a technical error that did not render service invalid.

Absence of personal jurisdiction. Second, if service was properly effectuated, the Singapore defendants argued that they are not subject to personal jurisdiction in New York and that the complaint should be dismissed under Rule 12(b)(2). Further, the defendants argued that exercise of personal jurisdiction would be contrary to the constitutional guarantee of due process. The Singapore defendants emphasized their physical presence in Singapore and asserted that sales in New York accounted for only 4 percent of their profits. The court held that the record established a prima facie case for personal jurisdiction over the Singapore defendants, concluding that the sales to New York and one of the individual defendant’s ownership and control of the defendant entities were enough for the court to exercise jurisdiction. The court further held that the exercise of personal jurisdiction satisfies the guarantee of due process.

Forum non conveniens. Third, the defendants argued that the court should exercise discretion to dismiss the claims because of forum non conveniens. This doctrine permits a court in limited circumstances “to dismiss a claim even if the court is a permissible venue with proper jurisdiction over the claim.” A three-step analysis guides the exercise of such discretion: (1) determination of the degree of deference afforded to the plaintiff’s forum choice; (2) whether the defendant’s alternative proposed forum can adjudicate the dispute; and (3) balancing the private and public interests raised by the forum choice.

In applying the analysis, the court first held that the plaintiff’s choice of forum was afforded substantial deference. Second, the court found that the defendants failed to demonstrate that the courts of Singapore can provide an adequate alterative forum. Third, the court wrote that because the defendants failed to show Singapore offers an adequate alternative forum, the court need not consider the final factor. However, the court wrote, “issues of expense, efficiency and convenience would weigh in favor of proceeding in this District. On the question of public interest, this District has a local interest in controversies about infringing activities herein and there are no administrative difficulties in proceeding with this action.” Public considerations also weigh against the defendant’s motion.

The case is No. 1:21-cv-09562-PKC.

Attorneys: Nehemiah Salomon Glanc (Aaron Richard Golub, Esquire, P.C.) for Brian Donnelly. Sanjay Chaubey (Law Offices of Sanjay Chaubey) for Jonathan Anand.

Cases: Trademark NewYorkNews