Helpful Hound, L. L.C. v. New Orleans Bldg. Corp.

333 F. Supp. 3d 593
CourtDistrict Court, E.D. Louisiana
DecidedAugust 9, 2018
DocketCIVIL ACTION NOS. 18-3500; c/w 18-3594
StatusPublished
Cited by2 cases

This text of 333 F. Supp. 3d 593 (Helpful Hound, L. L.C. v. New Orleans Bldg. Corp.) is published on Counsel Stack Legal Research, covering District Court, E.D. Louisiana primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Helpful Hound, L. L.C. v. New Orleans Bldg. Corp., 333 F. Supp. 3d 593 (E.D. La. 2018).

Opinion

SARAH S. VANCE, UNITED STATES DISTRICT JUDGE

*597Before the Court is defendants' motion to dismiss.1 For the following reasons, the motion is granted in part and denied in part.

I. BACKGROUND

This case arises out of a dispute over use of the name "St. Roch Market."2 The original St. Roch Market is located at 2381 St. Claude Avenue, on the neutral ground of St. Roch Avenue. It is one of the few remnants of the once-extensive network of public markets in New Orleans.3 The City leased stalls in St. Roch Market to various food vendors from the 1800s until 1945.4 From 1945 until the 1990s, the City leased the market to the Lama family, who first operated a seafood market and po-boy restaurant at the site before converting the space to a supermarket in 1954.5 The City then leased the space to a different tenant, which operated a seafood market, po-boy restaurant, and Chinese food restaurant until the space was damaged by Hurricane Katrina in 2005.6 The City later renovated the building.7

On February 25, 2014, the City turned over management and operation of St. Roch Market to New Orleans Building Corporation (NOBC), a public benefit corporation created by the City of New Orleans.8 NOBC leased the building to Bayou Secret, LLC on September 29, 2014.9 The lease requires Bayou Secret to operate "a full service neighborhood restaurant" and "fresh foods market using multiple vendors in a 'stalls' concept."10 Exhibit D to the lease provides that Bayou Secret "may utilize existing typeface logo for the St. Roch Market as is presently posted on the building and replicate this logo in additional locations of the building."11 In February 2018, Bayou Secret and related entities opened a food hall called "St. Roch Market" in Miami.12 Other locations of "St. Roch Market," such as in Chicago and Nashville, Tennessee, are also planned.13

Helpful Hound, L.L.C. (allegedly a member of Bayou Secret) applied for registration of "St. Roch Market" on April 6, 2017.14 Although the U.S. Patent and Trademark Office (PTO) refused registration on the Principal Register,15 the PTO allowed registration on the Supplemental Register on September 19, 2017.16 The City and Helpful Hound have since filed *598competing applications for registration of "St. Roch Market" on the Principal Register.17 Both applications remain pending.

On April 3, 2018, Helpful Hound brought a declaratory judgment action against the City and NOBC.18 Helpful Hound's complaint seeks a declaration of noninfringement and a declaration that the registration of its service mark was proper.19 The City and NOBC (collectively, plaintiffs) filed suit the next day against Bayou Secret; St. Roch F & B, LLC; Helpful Hound; St. Roch Design District, LLC; Will Donaldson; Barre Tanguis; and David Donaldson (collectively, defendants).20 According to plaintiffs' complaint, Bayou Secret changed its name to St. Roch F & B in June 2016; St. Roch Design District operates "St. Roch Market" in Miami; Will Donaldson is a manager of Helpful Hound and St. Roch Design District; Tanguis is a member of Helpful Hound and a manager of St. Roch Design District; and David Donaldson is a member of Helpful Hound.21 Plaintiffs' complaint asserts a number of claims under both federal and state law, including trademark cancellation, trademark infringement, trademark dilution, unfair competition, breach of trademark license or implied trademark license, breach of contract, and unauthorized use of assumed name of a governmental entity. Defendants now move to dismiss plaintiffs' claims against St. Roch Design District for lack of personal jurisdiction; plaintiffs' Lanham Act claims under Federal Rule of Civil Procedure 12(b)(6) ; and plaintiffs' claims against the individual defendants under Rule 12(b)(6).22

II. DISCUSSION

A. Personal Jurisdiction over St. Roch Design District

Defendants first contest whether St. Roch Design District is subject to personal jurisdiction in Louisiana.23 Personal jurisdiction is "an essential element of the jurisdiction of a district court, without which the court is powerless to proceed to an adjudication." Ruhrgas AG v. Marathon Oil Co. , 526 U.S. 574, 584, 119 S.Ct. 1563, 143 L.Ed.2d 760 (1999) (internal quotation marks and citation omitted). A district court may exercise personal jurisdiction over a defendant if "(1) the long-arm statute of the forum state creates personal jurisdiction over the defendant; and (2) the exercise of personal jurisdiction is consistent with the due process guarantees of the United States Constitution." Revell v. Lidov , 317 F.3d 467, 469 (5th Cir. 2002). Because Louisiana's long-arm statute, La. R.S. § 13:3201, extends jurisdiction to the limits of due process, the Court need only consider whether the exercise of jurisdiction in this case satisfies federal due process requirements. Dickson Mar. Inc. v. Panalpina, Inc. , 179 F.3d 331, 336 (5th Cir. 1999).

Personal jurisdiction may be either general or specific. Seiferth v. Helicopteros Atuneros, Inc. , 472 F.3d 266, 271 (5th Cir. 2006). General jurisdiction over a foreign defendant exists if the defendant's "affiliations with the State are so 'continuous *599and systematic' as to render them essentially at home in the forum State." Goodyear Dunlop Tires Operations, S.A. v. Brown , 564 U.S. 915, 919, 131 S.Ct. 2846

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Bluebook (online)
333 F. Supp. 3d 593, Counsel Stack Legal Research, https://law.counselstack.com/opinion/helpful-hound-l-lc-v-new-orleans-bldg-corp-laed-2018.