Fighter's Market, Inc. v. Champion Courage LLC

207 F. Supp. 3d 1145, 2016 U.S. Dist. LEXIS 125122, 2016 WL 4879437
CourtDistrict Court, S.D. California
DecidedSeptember 14, 2016
DocketCase No.: 3:16-cv-01271-GPC-BGS
StatusPublished
Cited by2 cases

This text of 207 F. Supp. 3d 1145 (Fighter's Market, Inc. v. Champion Courage LLC) is published on Counsel Stack Legal Research, covering District Court, S.D. California primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Fighter's Market, Inc. v. Champion Courage LLC, 207 F. Supp. 3d 1145, 2016 U.S. Dist. LEXIS 125122, 2016 WL 4879437 (S.D. Cal. 2016).

Opinion

ORDER DENYING DEFENDANT CHAMPION LTD.’S MOTION TO DISMISS FOR LACK OF PERSONAL JURISDICTION

[ECF No. 11.]

Hon. Gonzal P. Curiel, United States District Judge

Before the Court is Defendant Champion Courage Ltd.’s motion to dismiss for lack of personal jurisdiction pursuant to Federal Rule of Civil Procedure (“Rule”) 12(b)(2). ECF No. 11. Plaintiff filed an opposition, and Champion Courage Ltd. filed a reply. ECF Nos. 16-17. The Court deems the motion suitable for disposition without oral argument pursuant to Civil Local Rule 7.1(d)(1). Based on the reasoning below, the Court DENIES Champion Courage Ltd.’s motion to dismiss for lack of personal jurisdiction.

PROCEDURAL BACKGROUND

On May 26, 2016, Plaintiff Fighter’s Market, Inc. (“Plaintiff’ or “Fighter’s Market”) filed a verified Complaint against Defendants Champion Courage LLC, Champion Courage Ltd., Dean Thompson, Voilettia Ghawa Ane Currey, and Does 1 through 100 inclusive (collectively, “Defendants”). ECF No. 1. The Complaint alleges five causes of action, three of which arise under the Lanham Act and two of which arise under California law: (1) counterfeit[1148]*1148ing, 15 U.S.C. §§ 1114(1)(a), 1116(d), and 1117(b)-(c); (2) federal trademark infringement, 15 U.S.C. § 1114; (3) false designation of origin, passing off, and unfair competition, 15 U.S.C. § 1125(a); (4) state common law trademark infringement; and (5) violation of the California Unfair Competition Law, Cal. Bus. & Prof. Code § 17200. See id. On July 12, 2016, Defendant Champion Courage Ltd. filed a motion to dismiss for lack of personal jurisdiction. ECF No. 11. An opposition was filed on August 5, 2016. ECF No. 16. A reply was filed on August 19, 2016. ECF No. 17.

FACTUAL BACKGROUND

Plaintiff Fighter’s Market is a California corporation with its principal place of business in San Diego, California. ECF No. 1, Compl. ¶ 1. Defendant Champion Courage Ltd. (“Champion Limited”1) is a British Virgin Islands limited company with its principal place of business in Hong Kong. Id. ¶3. Champion Courage LLC (“Champion Courage”) is a California limited liability company with its principal place of business in Florida. Id. ¶ 2. Plaintiff alleges that Dean Thompson and Voilettia Ghawa Ane Currey, both citizens of New Zealand and residents of Hong Kong, are officers, directors, and shareholders of Champion Courage and Champion Limited. Id. ¶¶4-5, 7. Plaintiff also alleges that Champion Courage and Champion Limited are alter egos of Thompson and Currey. Id. ¶¶ 8-9.

Plaintiff owns trademarks registered with the U.S. Patent and Trademark Office, including (1) “KINGZ” in standard characters and in stylized form and (2) “MAEDA” in standard characters. Id. ¶¶ 21, 22, 27. Plaintiff uses the KINGZ and MAEDA trademarks (collectively, “K/M trademarks”) in connection with its KINGZ and MAEDA brands of Brazilian jiu-jitsu “gis” (uniforms) and related apparel, as well as on its website and advertisement materials. Id. ¶¶ 18-20, 23-25, 28-29. Plaintiff also uses an unregistered crown-shaped design mark in connection with its KINGZ-brand gis and owns all copyrights associated with this design. Id. ¶¶ 31, 33-35.

For several months in 2013, Bruno Mun-duruca, Chief Executive Officer and President of Fighter’s Market, discussed with Dean Thompson, an officer of Champion Limited, the possibility of partnering in the manufacture and sale of gis. ECF No. 16-2, Munduruca Decl. ¶¶ 5, 7; ECF No. 11-2, Currey Decl. ¶ 2. The proposed joint venture ultimately failed to move forward. Munduruca Decl. ¶¶5, 7; Currey Decl. 1HI2-3. Munduruca asserts that Plaintiff did not license to Thompson or the other Defendants any of the K/M trademarks during the course of negotiations. Mundu-ruca Decl. ¶6-7. Although Plaintiff never ordered any gis from Defendant and never authorized Defendant to use its trademarks, Thompson informed Munduruca that he had nonetheless set in motion plans to manufacture gis bearing Plaintiffs K/M trademarks. Munduruca Decl. ¶7. Voilettia Currey, a director and shareholder of Champion Limited, asserts that Champion Limited was left with an unsold stockpile of K/M gis a result of the unrealized joint venture. Currey Decl. ¶¶ 1, 5.

In April 2014, Champion Limited sued Plaintiff in San Diego Superior Court for contract and tort claims relating to the unrealized joint venture. Munduruca Decl. ¶ 8; Currey Decl. ¶ 3; ECF No. 11-3, Ex. A at 2.2 On September 2, 2014, the parties [1149]*1149settled the case. Munduruca Decl. ¶ 9; Currey Decl. ¶ 4.

In September 2015, Currey and Thompson negotiated a contract to sell gis with K/M trademarks to a Hong Kong corporation. Currey Decl. ¶¶ 1, 6. All negotiations took place in Hong Kong. Id. Champion Limited and the Hong Kong-based buyer agreed that Champion Limited would first send the gis to a Brazil-based distributor. Id. ¶7. Currey acknowledges that these gis bore Plaintiffs K/M trademarks and asserts that they were from the same stockpile left over from the parties’ unrealized joint venture. Id. ¶¶ 3, 5-7.

In or around March 2016, Plaintiff learned that Defendants were manufacturing gis with Plaintiffs K/M trademarks in China and shipping them to a warehouse in Poway, California, from where they were then shipped to Brazil.3 Compl. ¶ 39; Munduruca Decl. ¶ 10. Plaintiff alleges that Defendants are not and were never authorized distributors or licensees of the K/M trademarks. Compl. ¶43. Nor did Plaintiff authorize Defendants to manufacture or import any products bearing the K/M trademarks. Id. Plaintiff alleges that Defendants knew that Plaintiff owned the K/M trademarks at all relevant times. Id. ¶ 45. Plaintiff alleges that Defendant’s infringement has and continues to harm Plaintiff in California by, inter alia, diluting Plaintiffs trademarks, reducing Plaintiffs revenue, and diminishing Plaintiffs goodwill. See, e.g., id. ¶¶ 44, 46, 69, 74-75, 78.

DISCUSSION

A. Legal Standard on Personal Jurisdiction

“When a defendant moves to dismiss for lack of personal jurisdiction, the plaintiff bears the burden of demonstrating that the court has jurisdiction.” In re Western States Wholesale Natural Gas Antitrust Litigation v. Oneok, Inc., 715 F.3d 716, 741 (9th Cir.2013). If the motion is based on written materials rather than an evidentiary hearing, the plaintiff need only make “a prima facie showing of jurisdictional facts to withstand the motion to dismiss.” Brayton Purcell LLP v. Recordon & Recordon, 606 F.3d 1124, 1127 (9th Cir.2010) (internal citation omitted).

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207 F. Supp. 3d 1145, 2016 U.S. Dist. LEXIS 125122, 2016 WL 4879437, Counsel Stack Legal Research, https://law.counselstack.com/opinion/fighters-market-inc-v-champion-courage-llc-casd-2016.