Wednesday, April 3, 2013

Hide & Seek Safari - Florida's Long Arm Statute

R&R Games makes a children's game called Hide & Seek Safari.  R&R owns the federal trademark registration for HIDE & SEEK SAFARI.  R&R has discovered a number of "Safari Hide & Seek" and "Hide & Seek Safari" puzzle games online.  R&R has thus sued a number of defendants for trademark infringement and conspiracy to commit trademark infringement.  R&R sued a number of defendants for this action as per below:

  • Smart - Corporate defendant - principal place of business in Belgium.
  • Vandoren - CEO of Smart, lives in Belgium, has not resided/worked in Florida.
  • Smart Tangoes - Delaware corporation (which is a subsidiary of Smart) - principal place of business in California.
  • Whitney - CEO of Smart Tangoes, resides in California
  • Jumbo - subsidiary of a Dutch entity with principal place of business in the Netherlands and offices in Europe

These defendants sought dismissal for lack of personal jurisdiction.  The Court began with Florida's long-arm statute, which permits jurisdiction over a defendant who committed a tortious act within this state.  While Florida's Supreme Court has not decided whether injury alone satisfies this requirement, the Eleventh Circuit applies a broad construction of the long arm statute, allowing a court to exercise personal jurisdiction over a non-resident defendant if a tort committed outside Florida causes injury in Florida.  See Licciardello v. Lovelady, 544 F.3d 1280, 1283 (11th Cir. 2008).

Here, R&R's allegations are that the three corporate defendants above directly infringed the trademark, while the two officers contributed to the infringement.  As trademark infringement is an intentional tort, and R&R is located in Florida, the injury to R&R is here in Florida, and thus satisfies this part of the statute.  Defendants offered evidence that they hadn't targeted Florida in their advertising, and that their sales were not directed to Florida citizens (rather, they sold the items to, and then sold it to Florida citizens).  This argument, however, ignored that there was still a tort committed, and injury in Florida -- sufficient to satisfy the long arm statute.

Due Process 

Having met the statutory requirement, the Court next analyzed whether it was constitutionally proper to hail these defendants into court in Florida.  First, the defendant must have purposefully directed its activities at Florida.  An intentional tort may satisfy this purposeful direction requirement.  And courts "have consistently found the minimum contacts inquiry satisfied because trademark infringement is an intentional tort directed toward the state in which the plaintiff is domiciled." (citations omitted).

All that was left was analyzing whether it is fair to haul these defendants into court in Florida.   For the California defendants (Smart Tangoes and Whitney), "modern methods of transportation and communication" ameliorated any concern about forcing them to litigate in Florida.  For the Belgium defendants (Smart and Vandoren), their international domiciles did not present a "compelling case" sufficient to keep them out of court here.  This was in part because the entity (Smart) owned a subsidiary (Smart Tangoes) which was domiciled here in the U.S., and which the individual (Vandoren) was an officer of.  Additionally, the Belgium defendants have the same lawyer as the California defendants.  And the Belgium defendants travel to the U.S. for trade shows.

As for the last corporate defendant -- Jumbo -- the Court found it would be unfair to subject that entity to personal jurisdiction here in Florida.   It does not conduct business in the U.S., does not have a subsidiary here, and its activities were directed only at the U.K, not Florida.


Having found four of the five moving defendants were subject to jurisdiction in Florida, the Court quickly dispensed with a motion to transfer the matter to California.  Recognizing the numerous localities involved (Canada, Indiana, Belgium, Arkansas, Illinois, etc.), the court determined that Tampa was at least as convenient, and perhaps more so, than California (noting that flights from many of the locations will be shorter to Tampa than to California).  Thus, the Court denied the motion to transfer.

Shotgun Pleading

It was not a complete win for R&R.  R&R's amended complaint identifies 17 defendants.  The amended complaint appears to have only a single count entitled "Federal Trademark Infringement" but also appears to assert claims for direct and contributory trademark infringement, and conspiracy.  The Court found this to be the "hallmark of a 'shotgun' pleading."  R&R is given an opportunity to replead.  (And, indeed, has done so asserting federal trademark infringement, inducement of trademark infringement, contributory infringement, and trademark infringement conspiracy).

Motion to dismiss or transfer is granted in part, denied in part.  Defendant Jumbo is dismissed without prejudice.
R&R Games, Inc. v. Fundex Games, Ltd. et al., Case No. 8:12-cv-1957 (M.D. Fla. Mar. 1, 2013) (J. Whittemore)

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