United States District Court, N.D. Georgia, Atlanta Division
OPINION AND ORDER
WILLIAM S. DUFFEY, Jr., District Judge.
This matter is before the Court on the Defendants' Motion to Dismiss Plaintiff Websters Chalk Paint Powder, LLC's ("Plaintiff") Complaint for lack of personal jurisdiction over Defendant Lisa Rickert ("Rickert") and Defendant Annie Sloan Interiors Limited ("ASI"), and for failure to state a claim against all Defendants , and on Plaintiff's Motion to Strike the Defendants' Reply as untimely .
Plaintiff is a limited liability company based in Georgia that manufactures, distributes, and sells a "specially-formulated powder, " or a paint additive, that can be mixed with other paints. Am. Compl. at 2. Defendant ASI is a foreign corporation organized under the laws of the United Kingdom with its principal place of business in Oxford, United Kingdom. ASI manufactures decorative paint, and sells its products to an exclusive distributor in the United States. ASI is the owner and licensor of the registered trademarks "ANNIE SLOAN®" and "CHALK PAINT®." The decorative paints marketed and sold under the "CHALK PAINT®" brand are specifically designed for furniture, but they can also be used on walls, floors, and in paintings.
Defendant Jolie Design & Decor, Inc. ("JDD") is a corporation organized under the laws of Louisiana with its principal place of business in New Orleans, Louisiana. Defendant Annie Sloan Unfolded ("ASU") is the assumed corporate name of JDD. JDD is the exclusive licensee and distributor of ANNIE SLOAN®" products and the "CHALK PAINT®" brand in the United States. JDD sublicenses the use of "CHALK PAINT®" and "ANNIE SLOAN®" to retail sellers in the United States.
Defendant Rickert is a Louisiana citizen. Rickert is a founder of JDD and serves as one of its corporate officers. Defendant Chalk It Up Norcross, LLC ("CIUN") is a limited liability company based in Norcross, Georgia. CIUN is a retailer that sells the "CHALK PAINT®" brand of decorative paint, and other "ANNIE SLOAN®" products, as a sub-licensee of JDD.
Plaintiff alleges that it is the owner of a common-law trademark entitled "WEBSTERS CHALK PAINT POWDER." In 2010 and 2011, Annie Sloan, the founder of Defendant ASI, filed a trademark application with the United States Patent and Trademark Office ("USPTO") to register the "CHALK PAINT®" brand. The USPTO initially denied these applications as "merely descriptive, " requesting ASI to provide additional information regarding whether the term "CHALK PAINT®" had a particular meaning in the industry or whether it was considered a term of art within the industry. On June 26, 2012, ASI responded to the USPTO's requests for additional information, and stated:
Although CHALK PAINT decorative paint does contain a small amount of calcium carbonate, [ASI] has never marketed the use of calcium carbonate in our brand of decorative paints or used the word "chalk" as interchangeable with calcium carbonate. ASI has never portrayed the word "chalk" in the CHALK PAINT mark as an indicator of ingredients. Nor is it widely perceived as such by the product's purchasing class. The word "chalk" in the CHALK PAINT mark has nothing to do with calcium carbonate, but rather, was meant to be suggestive of what I perceived to be a velvety matte-or, "chalky"-finish. Also, "CHALK PAINT" is not a term of art in the industry in which ASI's goods are manufactured, nor does it identify a geographical place... ASI's use in commerce of the CHALK PAINT mark has been substantially exclusive and continuous [for] at least five years immediately preceding the date of application for federal registration.
On October 30, 2012, the USPTO granted ASI's application, No. 4232734, to register the "CHALK PAINT®" mark, and subsequently in the same year, granted ASI's application, No. 4322847, for a stylized version of the "CHALK PAINT®" mark.
On July 5, 2012, Plaintiff submitted a trademark application to the USPTO to register "WEBSTERS CHALK PAINT POWDER, " and requested the USPTO to cancel ASI's registration for the "CHALK PAINT®" mark. ASI opposed Plaintiff's application. To date, the USPTO has not acted on Plaintiff's application. A comparison of Plaintiff's logo and ASI's logo, containing the "CHALK PAINT®" mark is illustrated below:
On May 14, 2012, Debbie Hayes, the brand compliance manager of ASU, sent a letter to Plaintiff stating that ASI was the owner of the "CHALK PAINT®" mark, and that Plaintiff's use of ASI's trademark in its circular logo, and to market and sell its products, violated federal and international trademark laws. On June 8, 2012, ASI's counsel sent Plaintiff a letter demanding that Plaintiff cease use of the "CHALK PAINT®" mark in connection with the sale of its products. On June 22, 2012, Plaintiff's counsel wrote a letter to ASI's counsel, and stated that "CHALK PAINT®" had not acquired distinctiveness in the home decorating industry, and that Plaintiff's continued use of the term to market its product did not pose a risk of confusion with ASI's registered trademark.
At some point after these communications with Plaintiff, ASI notified Etsy, an online marketplace for arts and crafts, that Plaintiff's online storefront on Etsy's website violated ASI's trademark rights. Etsy investigated ASI's claim, determined that Plaintiff's online storefront violated Etsy's Copyright and Intellectual Property policy, and removed a portion of Plaintiff's online content from its website. ASI also informed Facebook that Plaintiff's business page violated ASI's trademark rights in the "CHALK PAINT®" brand. Facebook also investigated ASI's claim, and removed Plaintiff's business page because it determined that Plaintiff's business page violated Facebook's Statement of Rights and Responsibilities.
B. Procedural History
On October 18, 2013, Plaintiff filed a six (6) count Amended Complaint against the Defendants seeking (i) a declaration that "CHALK PAINT®" is an invalid and unenforceable trademark because it is a generic term that is merely descriptive of the product's ingredients or the general class of goods sold in the paint industry, (ii) cancellation of the "CHALK PAINT®" trademark under 15 U.S.C. § 1064(3) because of Defendants' alleged fraudulent representations in ASI's trademark applications, (iii) for damages under 15 U.S.C. §1120 as a result of ASI's alleged fraudulent representations in the trademark applications, (iv) for damages under 15 U.S.C. § 1125(a) for the infringement of Plaintiff's claimed right to the common law trademark "WEBSTERS CHALK PAINT POWDER, " (v) for damages for tortious interference with business relations under Georgia law, and (vi) for damages under O.C.G.A. § 10-1372(a) for deceptive trade practices and disparagement of Plaintiff's goods.
On October 31, 2013, the Defendants moved to dismiss the Amended Complaint. The Defendants argue that the claims against Defendants Rickert and ASI should be dismissed for lack of personal jurisdiction. The Defendants also argue that the Amended Complaint should be dismissed because it fails to state a claim upon which relief can be granted.
On December 3, 2013, Plaintiff moved to strike Defendants' Reply to Plaintiff's Response to the Motion to Dismiss for failure to file a reply within fourteen (14) days after service of the responsive pleading as required by Local Rule 7.1(C).
A. Personal Jurisdiction over Rickert and ASI
1. Legal Standard
A plaintiff must allege sufficient facts in its complaint to make out a prima facie case of personal jurisdiction over a defendant. Diamond Crystal Brands, Inc. v. Food Movers Int'l, Inc. , 593 F.3d 1249, 1257-58 (11th Cir. 2010) (quoting United Techs. Corp. v. Mazer , 556 F.3d 1260, 1274 (11th Cir. 2009)). If the plaintiff makes its prima facie showing of personal jurisdiction, the defendant may challenge the allegations of jurisdiction with evidence. See id. Upon the defendant's submission of jurisdictional evidence, "the burden traditionally shifts back to the plaintiff to produce evidence supporting jurisdiction." Id . (quoting United Techs. , 556 F.3d at 1274); accord Meier ex rel. Meier v. Sun Int'l Hotels, Ltd. , 288 F.3d 1264, 1269 (11th Cir. 2002). Where there are conflicts between the evidence, the court makes all reasonable inferences in favor of the plaintiff. Diamond Crystal , 593 F.3d at 1257 (quoting Meier , 288 F.3d at 1269); Morris v. SSE, Inc. , 843 F.2d 489, 492 (11th Cir. 1988).
A district court has personal jurisdiction over a nonresident defendant if the exercise of jurisdiction (1) is permitted under the state's long-arm statute and (2) does not violate the Due Process Clause of the Fourteenth Amendment. Diamond Crystal , 593 F.3d at 1257-58. In Georgia, the two inquiries are distinct because the Georgia long-arm statute imposes obligations that a plaintiff must establish that are independent of procedural due process requirements. Id. at 1259. To satisfy the Georgia long-arm statute, the plaintiff must establish that jurisdiction is permitted under an express statutory provision, interpreted and applied literally. Id. at 1259 & n.10 (construing Innovative Clinical & Consulting Servs., LLC v. First Nat'l Bank of Ames , 620 S.E.2d 352 (Ga. 2005)).
To satisfy the constitutional requirement, the defendant must have "fair warning" of litigation in Georgia by establishing "minimum contacts" with the state. Id. at 1267. If such "minimum contacts" are shown, the defendant can escape the exercise of personal jurisdiction over it only by making "a compelling case' that the exercise of jurisdiction would violate traditional notions of fair play and substantial justice." Id . (citing Burger King Corp. v. Rudzewicz , 471 U.S. 462, 477 (1985)).
i. Long-Arm Statute
Georgia's long-arm statute confers personal jurisdiction over non-resident defendants under six circumstances. See Ga. Code Ann. § 9-10-91. Plaintiff asserts that Defendants are subject to jurisdiction under the first of these, which provides jurisdiction over a defendant who "[t]ransacts any business within" Georgia. O.C.G.A. § 90-10-91(1). This section requires that the defendant have "purposefully done some act or consummated some transaction" in Georgia. Diamond Crystal , 593 F.3d at 1260 (quoting Aero Toy Store, LLC v. Grieves , 631 S.E.2d 734, 736-379 (Ga.Ct.App. 2006)). The defendant's physical presence in the state to perform the act is not required. Id. at 1264.
A nonresident defendant's "mail, telephone calls, and other intangible acts'" that occur outside of Georgia must be examined to determine "whether it can fairly be said that the nonresident has transacted any business within Georgia." Id . The defendant, however, must "fairly be said" to have literally "transacted" business in Georgia. Id .; see also id. at 1264 n.18 ("Transact' means to prosecute negotiations, ' to carry on business, ' to carry out, ' or to carry on.'" (quoting Webster's Third New Int'l ...