Under Armour, Inc. v. Battle Fashions, Inc.

294 F. Supp. 3d 428
District Court, D. Maryland·Decided March 6, 2018·No. Civil Action No. RDB–17–3223·Published·Cited by 10 cases

Opinion

Richard D. Bennett, United States District Judge

Plaintiff Under Armour, Inc. ("Plaintiff" or "UA") brings this declaratory judgment action against Defendants Battle Fashions, Inc.1 and Kelsey Battle (collectively, "Defendants" or "Battle") seeking a Declaratory Judgment, pursuant to 28 U.S.C. § 2201, that its use of the phrases "I Can Do All Things" and "I Can. I Will." do not infringe on Defendants' "ICAN" trademark. (ECF No. 1.) Currently pending *431before this Court is Defendants' Motion to Dismiss for Lack of Jurisdiction. (ECF No. 12.) The parties' submissions have been reviewed, and no hearing is necessary. See Local Rule 105.6 (D. Md. 2016). For the reasons stated below, Defendants' Motion to Dismiss for Lack of Jurisdiction (ECF No. 12) is DENIED.

BACKGROUND

When reviewing a motion to dismiss, this Court accepts as true the facts alleged in the plaintiff's complaint. See Aziz v. Alcolac, Inc. , 658 F.3d 388, 390 (4th Cir. 2011). Plaintiff Under Armour is a Maryland corporation engaged in the sale of performance products. (ECF No. 1 at ¶¶ 2, 10.) UA uses the phrases "I Can Do All Things" and "I Can. I Will." in association with and in the promotion of its products. (Id. at ¶ 11.) Specifically, UA uses the phrase "I Can Do All Things" in connection with a line of products associated with professional basketball player Stephen Curry, who is known for writing the Bible verse "I can do all things through Christ who strengthens me" on his shoes. (Id. at ¶ 12.) UA then uses the phrase "I Can. I Will." in association with its products generally. (Id. at ¶ 13.)

Defendant Battle Fashions is a corporation organized and existing under North Carolina law and with its principal place of business in North Carolina. (Id. at ¶ 3.) Defendant Kelsey Battle is a North Carolina resident and does business as Battle Fashions and ICAN clothing. (Id. at ¶ 4.) On January 10, 2017, Defendants sent UA a cease-and-desist letter asserting that UA was infringing on Battle's rights in the trademark "ICAN." and demanding UA "[c]ease and desist the use of the trademarks 'ICAN,' 'I CAN DO ALL THINGS,' and 'I CAN. I WILL.' and anything confusingly similar thereto." (Id. at ¶ 14.) UA responded that it uses "I can" as "part of formative and descriptive phrases," that numerous third parties use the phrase, and confusion was unlikely. (Id. at ¶ 15.)

In addition to sending Under Armour the cease-and-desist letter, Defendants wrote to third parties, including Stephen Curry, his agent, and UA's advertising agency Droga5, asserting that UA was infringing on Battle's ICAN trademark. (Id. at ¶ 7.) The letters further demanded that the third parties, given their relationships with UA, take action to preserve evidence and cease routine document destruction policies. (Id. ) UA asserts that "[t]hese third party letters were intended to and had an immediate impact on UA in Maryland." (Id. )

On November 1, 2017, almost ten months after unsuccessful negotiations, Under Armour filed this action for Declaratory Judgment, seeking a declaration that its actions have not violated the Lanham Act, 15 U.S.C. §§ 1114, 1125, or any other state trademark or unfair competition laws, as alleged by the Defendants. (ECF No. 1.) Seven weeks later, on December 20, 2017, Kelsey Battle filed suit as an individual plaintiff against Under Armour in the United States District Court for the Eastern District of North Carolina, asserting trademark infringement under the Lanham Act, 15 U.S.C. §§ 1114, 1125 and unfair competition under North Carolina state law. See Battle v. Under Armour , Case No. 5:17-cv-00627-BO.2 On January 29, 2018, Defendants filed the instant Motion to Dismiss. (ECF No. 12.)

*432STANDARD OF REVIEW

A motion to dismiss under Rule 12(b)(2) of the Federal Rules of Civil Procedure for lack of personal jurisdiction challenges a court's authority to exercise its jurisdiction over the moving party. Combs v. Bakker , 886 F.2d 673, 676 (4th Cir. 1989). The jurisdictional question is "one for the judge, with the burden on the plaintiff ultimately to prove the existence of a ground for jurisdiction by a preponderance of the evidence." Id. ; Sigala v. ABR of VA, Inc. , 145 F.Supp.3d 486, 489 (D. Md. 2014). While a court may hold an evidentiary hearing or permit discovery for the jurisdictional issue, it may also resolve the issue on the basis of the complaint, motion papers, and other supporting legal memoranda. Consulting Eng'rs Corp. v. Geometric Ltd. , 561 F.3d 273, 276 (4th Cir. 2009) ; see also Sigala , 145 F.Supp.3d at 489.

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Under Armour, Inc. v. Battle Fashions, Inc., 294 F. Supp. 3d 428 (D. Md. 2018).

294 F. Supp. 3d 428 (Under Armour, Inc. v. Battle Fashions, Inc.) — published by Counsel Stack Legal Research, free access to 12M+ legal documents.

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