Aweida Arts, Inc. v. Pure Glass Distribution, Inc.

157 F. Supp. 3d 929, 2015 U.S. Dist. LEXIS 68537, 2015 WL 9839677
CourtDistrict Court, W.D. Washington
DecidedMay 27, 2015
DocketCASE NO. C14-757RAJ
StatusPublished
Cited by1 cases

This text of 157 F. Supp. 3d 929 (Aweida Arts, Inc. v. Pure Glass Distribution, Inc.) is published on Counsel Stack Legal Research, covering District Court, W.D. Washington primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Aweida Arts, Inc. v. Pure Glass Distribution, Inc., 157 F. Supp. 3d 929, 2015 U.S. Dist. LEXIS 68537, 2015 WL 9839677 (W.D. Wash. 2015).

Opinion

ORDER

The Honorable Richard A. Jones, United States District Court Judge

I. INTRODUCTION

This matter comes before the court on the motion of Defendant Pure Glass Distribution, Inc. (“Pure Glass”), to dismiss this action because the court lacks personal jurisdiction over it, or, in the alternative, to transfer this action to the Central District of California. Pure Glass requested oral argument; Plaintiff Aweida Arts, Inc. (“Aweida”), did not. The court finds oral argument unnecessary. For the reasons stated below, the court DENIES Pure Glass’s motion. Dkt. # 12.

II. BACKGROUND

As the court will soon explain, Pure Glass’s motion requires the court to accept as true the uncontroverted allegations of Aweida’s complaint, and to resolve any conflicts in the evidence in favor of Awei-da. It is through that prism that the court describes the facts relevant to its disposition of Pure Glass’s motion. No one should mistake that description for findings of fact.

Aweida, a Washington corporation whose employees and offices are entirely within the State of Washington, designs and sells what it • calls, at least in this lawsuit, “glass water pipes” — devices commonly used to smoke marijuana. Nathan Aweida, the glass artist who is the sole owner . of Aweida, designs the. pipes. Nothing contradicts Mr. Aweida’s assertions that, his designs have gained substantial renown. Since at least August 2010, he has used the “Swiss Perc” mark in connection with those pipes. The record reflects that Aweida prominently marks the pipes with the words “Swiss Perc” in cursive script.

Aweida representatives encountered Pure Glass at a Las Vegas trade show in August 2011. Pure Glass, a California corporation whose employees .and offices are entirely in the Los Angeles area,; was selling pipes that were similar in appearance and bore the phrase, “Swiss Perc by Pure.” Aweida contends that Pure Glass representatives were falsely telling others that Mr. Aweida had designed the pipes. Shortly thereafter, Mr. Aweida and an employee visited the Pure Glass website, A Facebook icon at the top of the page linked to a “Swiss Perc” page on Face-book. That page, which Aweida maintained, noted that Swiss Perc was a Seattle company.

Aweida took two actions upon discovering Pure Glass’s “Swiss Perc” pipes and them false association with Mr. Aweida. First, it filed an application to register the “Swiss Perc” mark with the United States Patent and .Trademark Office (“PTO”). That led to the discovery that Pure Glass had just recently filed its own' application to register that mark. Aweida filed an [933]*933opposition to that application before the PTO’s Trademark Trial and Appeal Board (“TTAB”). Although the parties conducted some discovery in that opposition proceeding, the TTAB stayed it after Aweida filed this lawsuit. Second, Aweida sent a cease-and-desist letter to. Pure Glass in October 2011. That letter accused Pure Glass of infringing Aweida’s trademark. It also left no doubt that Aweida was a company located in Washington arid that Mr. Aweida, the artist who designed Awei-da’s pipes, was a Seattle resident-. The letter demanded that Pure Glass cease production and sales of the “Swiss Perc” pipes. There is no direct evidence as to whether Pure Glass received the letter. A fact finder could infer that Pure Glass did receive the letter, especially because Pure Glass has not denied its receipt.

When Pure Glass refused to cease the use of the “Swiss Perc” mark, Aweida filed this lawsuit in May 2014. It alleges false designation of origin and unfair competition in violation of the Lanham Act, along with Washington-law claims for trademark infringement, injury to business reputation, and unfair competition in violation of the Washington Consumer Protection Act.

Putting aside the evidence of its dispute with Aweida, there is no evidence that Pure Glass has any relevant contacts with Washington. It does not target Washingtonians as customers, it has never sent representatives to Washington for any purpose, it has no record of a sale to or other business relationship with anyone in Washington, and it has no property in Washington. The Pure Glass website touts its pipes, but does not target the residents of any state. The website provides contact information for the company, but does not permit visitors to order products from the website. ■

Pure Glass asserts, moreover, that a third party, Bio Hazard, Inc., also a California company with no Washington presence, is responsible for the acts about which Aweida complains. It contends that Pure Glass is “currently only a licensor,” and that it has never manufactured glass pipes bearing the “Swiss Perc” mark. -Vo Decl. (Dkt.# 13) ¶¶ 12, 18. It contends that it has -licensed the “Pure Glass Mark” exclusively to Bio Hazard, although it is silent as to whether it authorized Bio Hazard’s use of the “Swiss Perc” mark. Id. ¶ 14. It also asserts that Bio Hazard- is responsible for maintaining the Pure Glass website, although it provides no evidence about when Bio Hazard assumed that responsibility. It does not, for example, say anything about who placed the link to Aw-eida’s Facebook page on Bio -Hazard’s website in 2011. It also provides no evidence to dispel the inference that it controls what Bio Hazard does via the Pure Glass website. Aweida disputes Pure Glass’s assertions about its relationship with Bio- Hazard, noting that Pure Glass suspiciously failed to mention Bio Hazard until it filed the motion now before the court. That observation is persuasive to the court, particularly where Pure Glass, in June 2013 responses to interrogatories in the TTAB proceeding, stated that it “distributes its SWISS PERC goods through -a wholesaler....” - Feil Decl. (Dkt.# 17), Ex. i at Interrog. No. 3 (emphasis added).. The court need not resolve that dispute, however, because Pure Glass’s, assertions about Bio Hazard, even if they are accurate, do not meaningfully change the factual picture relevant to this court. It is undisputedly Pure Glass, not any third party, who- applied to register the “Swiss Perc” trademark and, is embroiled in.the TTAB opposition proceeding with Aweida, The evidence thus supports the inference that if Bio Hazard is using the “Swiss Perc” mark, it is doing so with Pure Glass’s permission. Pure Glass cannot avoid liability for trademark infringement by leaving it to a third party to make [934]*934and sell products -using the infringing mark. Nothing contradicts the reasonable inference that Pure Glass controls Bio Hazard’s use of its marks, including the “Swiss Perc” mark, and thus nothing contradicts the inference that Pure Glass has authorized any infringement for which Bio Hazard might also be liable. Moreover, Pure Glass says nothing about when its licensing agreement with Bio Hazard began, leaving open the possibility that agreement postdates the beginning of Pure Glass’s use of the “Swiss Perc” mark. For example, Pure Glass says nothing about who was responsible for the Pure Glass booth at the August 2011 trade show. For at least these reasons, the court will not further discuss Pure Glass’s relationship with Bio Hazard.

Pure Glass’s motion contends that it is not subject to personal jurisdiction in Washington, and that even if it is subject to jurisdiction here, the court should transfer venue to the Central District of California. The court now considers that motion.

III. ANALYSIS

A. Pure Glass is Subject to Personal Jurisdiction in this Court.

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157 F. Supp. 3d 929, 2015 U.S. Dist. LEXIS 68537, 2015 WL 9839677, Counsel Stack Legal Research, https://law.counselstack.com/opinion/aweida-arts-inc-v-pure-glass-distribution-inc-wawd-2015.