Case 1:07-cv-10967-RWS Document 19 Filed 12/08/08 Page 1 of 29
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`eUNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`
`TOM ARMA, TOMA ARMA STUDIO, INC. &
`TOM ARMA COSTUMES, INC.,
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`07 C ~ V . 10967
`
`Plaintiffs,
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`OPINION
`
`-against-
`
`BUYSEASONS, INC., BUYCOSTUMES &
`JALEM GETZ,
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`......................................
`
`Defendants.
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`A P P E A R A N C E S :
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`Attorneys for Plaintiffs
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`EDWARD C. GREENBERG PC
`570 Lexington Avenue,
`New York, NY 10022
`By: Edward C. Greenberg, Esq.
`
`Floor
`
`Attorneys for Defendants
`
`FOLEY & LARDNER, LLP
`90 Park Avenue
`New York, NY 10016
`By: Yonaton Aronoff, Esq.
`Frank W. DiCastri
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`

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`Case 1:07-cv-10967-RWS Document 19 Filed 12/08/08 Page 2 of 29
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`Sweet, D.J.
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`Defendants Buyseasons, Inc. ("Buyseasons") and Jalem
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`Getz ("Getz") (collectively, the "Defendants") have moved
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`pursuant to Rules 12 (b) (2), 12 (b) (3) and 12 (b) ( 6 ) , Fed. R. Civ.
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`P., to dismiss the Amended Complaint of Plaintiffs Tom Arma
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`("Arma"), Tom Arma Studios, Inc. ("Arma Studios") and Tom Arma
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`Costumes, Inc. ("Arma Costumes") (collectively, the
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`"Plaintiffs"), or in the alternative, to transfer the action to
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`the Eastern District of Wisconsin. As set forth below, the
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`motion to dismiss is granted in part and denied in part. The
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`motion to transfer is denied.
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`I. PRIOR PROCEEDINGS AND FACTS
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`This action was commenced on December 3, 2007, and an
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`Amended Complaint was filed on January 11, 2008. The instant
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`motion was heard and marked fully submitted on March 26, 2008.
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`According to the Amended Complaint, Arma, who resides
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`in Arizona, is a leading commercial photographer and costume
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`Defendants have demonstrated that the additional defendant, "Buycostumes,"
`is not a separate legal entity, but merely the brand name for Buyseasons'
`website, www.buycostumes.com. Plaintiffs do not dispute this, so
`"Buycostumes" will be dismissed from this case and the caption changed
`Getz Aff. ¶ 2 n.1.
`accordingly.
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`

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`Case 1:07-cv-10967-RWS Document 19 Filed 12/08/08 Page 3 of 29
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`designer. Am. Compl. ¶ 5. Arma "does business in the form and
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`style of the co-Plaintiff corporations," Arma Studios and Arma
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`Costumes, which are both Arizona corporations with their
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`principal places of business in Tubac, Arizona. - Id. ¶ ¶ 5-7.
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`Arma Studios is engaged in the creation and licensing of
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`photographic images, while Arma Costumes is engaged in the
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`"creation, design, manufacture and licensing" of children's
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`costumes. Id. -
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`Buyseasons, a Delaware corporation with its principal
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`place of business in New Berlin, Wisconsin, is an internet
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`costume retailer. - Id. ¶ 9. Buyseasons sells costumes through
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`its principal website, www.buycostumes.com. Getz Aff. ¶ 2 n.1.
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`The Amended Complaint alleges that Getz, a resident of
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`Wisconsin, is the President, CEO, and principal shareholder of
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`Buyseasons. - Id. ¶ 10.
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`On May 24, 2004, Plaintiffs and Buyseasons entered
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`into a written "Exclusive On-Line Distribution Agreement"
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`whereby Buyseasons agreed to distribute Tom Arma brand costumes
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`on Buyseasons' website (the "Distribution Agreement"). - Id. ¶ 2,
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`Ex. D. Under the Distribution Agreement, Plaintiffs licensed
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`their intellectual property, including trademarks and
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`photographic images, to the Defendants. After several
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`Case 1:07-cv-10967-RWS Document 19 Filed 12/08/08 Page 4 of 29
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`extensions, the Distribution Agreement expired on November 15,
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`2007. Id. at ¶ ¶ 32-33. Plaintiffs allege that despite the
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`expiration of the Distribution Agreement, Defendants continued
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`to "trad[e] on the name, trademarks and registered photographic
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`images owned by [Pllaintiffs" without authority. - Id. at ¶ 3.
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`Plaintiffs assert that the acts of the Defendants give
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`rise to claims for copyright infringement by Buyseasons, - id. ¶ ¶
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`48-54, 55-61; vicarious copyright infringement against Getz, - id.
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`¶ ¶ 62-75; contributory copyright infringement against Getz, - id.
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`¶ ¶ 76-90; unfair competition against the Defendants, - id. ¶ ¶ 91-
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`98; false designation and trade disparagement against the
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`Defendants, - id. ¶ ¶ 99-106; dilution against the Defendants, - id.
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`¶ ¶ 107-111; and breach of contract. -- Id. ¶ ¶ 112-115.
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`1 1 . THE MOTION TO DISMISS UNDER 1 2 ( B ) ( 6 ) I S GRANTED I N PART AND
`DENIED I N PART
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`Defendants have moved, pursuant to Rule 12(b) (6), to
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`dismiss Plaintiffs' claims for breach of contract and copyright
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`infringement.
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`a . T h e 1 2 (b) ( 6 ) S t a n d a r d
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`

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`Case 1:07-cv-10967-RWS Document 19 Filed 12/08/08 Page 5 of 29
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`In considering a motion to dismiss pursuant to Rule
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`12 (b) (6), Fed. R. Civ. P., the Court construes the complaint
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`liberally, "accepting all factual allegations in the complaint
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`as true, and drawing all reasonable inferences in the
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`plaintiff's favor," Chambers v. Time Warner, 282 F.3d 147, 152
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`(2d Cir. 2002) (citing Gregory v. Daly, 243 F.3d 687, 691 (2d
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`Cir. 2001)). However, mere "conclusions of law or unwarranted
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`deductions" need not be accepted. First Nationwide Bank v. Gelt
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`Funding Corp., 27 F.3d 763, 771 (2d Cir. 1994) (quotation marks
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`and citation omitted). "The issue is not whether a plaintiff
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`will ultimately prevail but whether the claimant is entitled to
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`offer evidence to support the claims." Villager Pond, Inc. v.
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`Town of Darien, 56 F.3d 375, 378 (2d Cir. 1995) (quoting Scheuer
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`v. Rhodes, 416 U.S. 232, 236 (1974)). In other words, "'the
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`office of a motion to dismiss is merely to assess the legal
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`feasibility of the complaint, not to assay the weight of the
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`evidence which might be offered in support thereof.'" Eternity
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`Global Master Fund Ltd. v. Morgan Guar. Trust Co. of N.Y., 375
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`F.3d 168, 176 (2d Cir. 2004) (quoting Geisler v. Petrocelli, 616
`F. 2d 636, 639 (2d Cir. 1980) ) . However, " [t] o survive
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`dismissal, the plaintiff must provide the grounds upon which his
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`claim rests through factual allegations sufficient 'to raise a
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`right to relief above the speculative level."'
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`ATSI Comrnc'ns,
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`Inc. v. Shaar Fund, Ltd., 493 F.3d 87, 98 (2d Cir. 2007)
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`

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`Case 1:07-cv-10967-RWS Document 19 Filed 12/08/08 Page 6 of 29
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`(quoting Bell Atl. Corp. v. Twombly, 127 S. Ct. 1955, 1965
`(2007) ) .
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`b. The Breach of Contract Claim is Dismissed
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`At the outset, the Court notes that Plaintiffs did not
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`respond to Defendants' arguments in support of their motion to
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`dismiss the breach of contract claim, and therefore the Court
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`may deem the claim abandoned. See, e.g., Abbatiello v. Monsanto
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`Co., 522 F. Supp. 2d 524, 530 (S.D.N.Y. 2007) (citing, inter
`-
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`alia, In re Refco Capital Mkts., Ltd. Brokerage Customer Sec.
`-- -
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`Litig., No. 06 Civ. 643 (GEL), 2007 WL 2694469, at *6 (S.D.N.Y.
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`Sept. 13, 2007)); Lipton v. County of Orange, N.Y., 315 F. Supp.
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`2d 434, 446 (S.D.N.Y. 2004) ("This Court may, and generally
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`will, deem a claim abandoned when a plaintiff fails to respond
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`to a defendant's arguments that the claim should be dismissed."
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`(citing Jessamy v. City of New Rochelle, 292 F. Supp. 2d 498,
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`504 (S.D.N.Y. 2003)). Nonetheless, the Court considers the
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`breach of contract claim on its merits, and finds that the claim
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`must be dismissed.
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`In support of their breach of contract claim,
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`Plaintiffs have alleged that Defendants: (i) "[flailed to seek
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`and obtain approvals for the use of Plaintiffs' intellectual
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`Case 1:07-cv-10967-RWS Document 19 Filed 12/08/08 Page 7 of 29
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`property as set forth hereinabove;" (ii) "[flailed to make
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`timely payments to the Plaintiffs;" and (iii) "[flailed to
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`properly account to Plaintiffs as to the specific character,
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`nature and extent of sales of Arma's goods as set out in
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`paragraph 5.1 of the agreement between the parties." Am. Compl.
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`¶ 113. Plaintiffs also incorporate by reference paragraphs 1-
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`
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`107 of the Amended Complaint, -- see id. ¶ 112, none of which
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`allege that Defendants engaged in wrongful conduct during the
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`contract period. Rather, these allegations describe Defendants'
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`wrongful conduct "after the contract period had expired." - Id.
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`at ¶ 41. The claim based on an alleged failure "to seek and
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`obtain approvals for the use of Plaintiffs' intellectual
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`property as set forth hereinabove" similarly relates only to
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`Defendants' post-contract activity, not to any breaches
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`committed while the Distribution Agreement was in place.
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`The bare allegations that Defendants "failed to make
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`timely payments" and "failed to properly account" to Plaintiffs,
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`Am. Compl. ¶ 113, are, without more, conclusory. They are
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`unsupported by any specific facts indicating what particular
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`payments were late, when they were due and made, how such late
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`payments give rise to a claim under the Distribution Agreement,
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`or how such a claim translates into damages.
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`Case 1:07-cv-10967-RWS Document 19 Filed 12/08/08 Page 8 of 29
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`In the absence of a clear statement of a breach, an
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`implication of breach is inappropriate. It is not "proper to
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`assume that the [Plaintiffs] can prove facts which [they have]
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`not alleged or that the defendants have violated the [ I laws in
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`ways that have not been alleged." Associated Gen. Contractors,
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`Inc. v. Cal. State Council of Carpenters, 459 U.S. 519, 526
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`(1983). Although federal complaints do not need to include
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`intricate details, "more than labels and conclusions" are
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`required, and, as noted above, the factual allegations "must be
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`enough to raise a right to relief above a speculative level."
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`Bell Atl. Corp., 127 S. Ct. at 1965; see also De Jesus v. Sears,
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`Roebuck & Co., 87 F.3d 65, 70 (2d Cir. 1996) ("A complaint which
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`consists of conclusory allegations unsupported by factual
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`assertions fails even the liberal standard of Rule 12(b) (6).")
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`(quoting Palda v. Gen. Dynamics Corp., 47 F.3d 872, 875 (7th
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`Cir. 1995) ) .
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`Because Plaintiffs allege no facts supporting a claim
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`for breach of contract, that claim is dismissed.
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`c. The Motion to Dismiss the Copyright Claims is Denied
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`To withstand a motion to dismiss for failure to state
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`a claim, a properly plead copyright infringement claim must
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`Case 1:07-cv-10967-RWS Document 19 Filed 12/08/08 Page 9 of 29
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`allege: "1) which specific original works are the subject of the
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`copyright claim, 2) that plaintiff owns the copyrights in those
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`works, 3) that the copyrights have been registered in accordance
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`with the statute, and 4) by what acts during what time the
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`defendant infringed the copyright." Kelly v. L.L. Cool J., 145
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`F.R.D. 32, 36 (S.D.N.Y. 1992) (citations omitted), aff'd, 23
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`F.3d 398 (2d Cir. 1994). Defendants assert that the Amended
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`Complaint fails to allege the infringing acts with requisite
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`specificity.
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`The Amended Complaint contains a list of 14 registered
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`images, including registration numbers and dates and appended
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`copyright registration certificates, which "serve as a
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`predicate" for Plaintiffs' copyright infringement claims, and
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`alleges that subsequent to the termination of the parties'
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`agreement on November 15, 2007, Defendants "have displayed on
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`their website, and caused to be displayed on other sites, at
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`least 26 images registered in Plaintiff's name." Am. Compl. ¶ ¶
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`15, 17, 42.
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`While "Rule 8 of the Federal Rules of Civil Procedure
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`requires that the particular infringing acts be set out with
`some specificity . . . and broad, sweeping allegations of
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`infringement do not comply," Carell v. Shubert Org., 104 F.
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`

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`Case 1:07-cv-10967-RWS Document 19 Filed 12/08/08 Page 10 of 29
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`Supp. 2d 236, 251 (S.D.N.Y. 2000) (internal citations omitted),
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`the allegations in this case are sufficient under Rule 8 to give
`the Defendants "fair notice of what the . . . claim is and the
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`grounds upon which it rests." Bell Atl. Corp., 127 S. Ct. at
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`1964 (2007) (quoting Conley v. Gibson, 355 U.S. 41, 47 (1957))
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`(alteration in original); cf. Arista Records LLC v. Media Servs.
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`LLC, No. 06 Civ. 15319 (NRB), 2008 WL 563470, at *11 (S.D.N.Y.
`-
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`FeS. 25, 2008) (stating that the rule requiring pleading the
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`original work that is the subject of an infringement claim "does
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`not compel the dismissal of a compiaint that identifies a subset
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`of the infringed works and thus, properly states copyright
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`claims predicated on the identified works"). Accordingly,
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`Defendants' motion to dismiss the copyright claims is denied.
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`111. THE MOTION TO DISMISS THE COMPLAINT AGAINST JALEM GET2 IS
`GRANTED
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`Defendants have conceded that, for purposes of this
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`motion, the Court has personal jurisdiction over Buyseasons.
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`Def. Mem. 10 n.5. However, Defendants have moved for dismissal
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`of the Amended Complaint for lack of personal jurisdiction over
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`Jalem Getz pursuant to Rule 12 (b) (2), Fed. R. Civ. P.
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`a. The Legal Standard
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`Case 1:07-cv-10967-RWS Document 19 Filed 12/08/08 Page 11 of 29
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`"When responding to a Rule 12(b) (2) motion to dismiss
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`for lack of personal jurisdiction, the plaintiff bears the
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`burden of establishing that the court has jurisdiction over the
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`defendant." DiStefano v. Carozzi N. Am., Inc., 286 F.3d 81, 84
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`(2d Cir. 2001) (quoting Bank Srussels Lambert v. Fiddler
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`Gonzalez & Rodriguez, 171 F.3d 779, 784 (2d Cir. 1999)).
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`However, when a defendant challenges personal jurisdiction
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`through a 12(b)(2) motion prior to discovery and no evidentiary
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`hearing has been held, a plaintiff may defeat the motion by
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`making a prima facie showing of personal jurisdiction through
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`the pleadings and affidavits, which must be construed in the
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`See id.; Ball v.
`light most favorable to the plaintiff. - -
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`Metallurgie Hoboken-Overpelt, S.A., 902 F.2d 194, 197 (2d Cir.
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`1990). Here, since an evidentiary hearing has not been held,
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`Arma "need only make a prima facie showing by its pleadings and
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`affidavits that jurisdiction exists," in order to defeat
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`Defendants' motion to dismiss. CutCo Indus., Inc. v. Naughton,
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`806 F.2d 361, 365 (2d Cir. 1986).
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`b. The Forum Selection Clause
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`In order to determine whether jurisdiction over Getz
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`is appropriate, the Court first looks to the forum selection
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`Case 1:07-cv-10967-RWS Document 19 Filed 12/08/08 Page 12 of 29
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`c l a u s e i n t h e D i s t r i b u t i o n Agreement ("Forum S e l e c t i o n C l a u s e N ) .
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`U.S. Bank N a t ' l Ass'n v . A b l e s & H a l l B l d g s . , No. 08 Civ. 2540
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`( D C ) , 2008 WL 4694536, a t *8 (S.D.N.Y. O c t o b e r 27, 2008) ("Where
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`a n agreement c o n t a i n s a v a l i d and e n f o r c e a b l e forum s e l e c t i o n
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`c l a u s e , i t i s n o t n e c e s s a r y t o a n a l y z e j u r i s d i c t i o n u n d e r New
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`Y o r k ' s long-arm s t a t u t e o r f e d e r a l c o n s t i t u t i o n a l r e q u i r e m e n t s
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`of due p r o c e s s . " ) . P l a i n t i f f s h e r e c o n t e n d t h a t t h e Forum
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`S e l e c t i o n C l a u s e e s t a b l i s h e s j u r i s d i c t i o n i n t h i s C o u r t w i t h
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`r e g a r d t o G e t z . The Forum S e l e c t i o n C l a u s e p r o v i d e s :
`
`9 . 2 Governing Law; J u r i s d i c t i o n . T h i s Agreement s h a l l
`be g o v e r n e d by and i n t e r p r e t e d i n a c c o r d a n c e w i t h t h e
`laws o f
`t h e S t a t e of New York a p p l i c a b l e t o c o n t r a c t s
`t h e
`t o b e w h o l l y p e r f o r m e d w i t h i n
`e n t e r e d
`i n t o a n d
`S t a t e of New York.
`I n
`t h e e v e n t o f a n y c l a i m o r
`c o n t r o v e r s y a r i s i n g u n d e r t h i s Agreement,
`t h e p a r t i e s
`h e r e t o h e r e b y
`i r r e v o c a b l y
`s u b m i t
`t o
`t h e p e r s o n a l
`j u r i s d i c t i o n o f
`t h e F e d e r a l and s t a t e c o u r t s l o c a t e d
`i n t h e County of New York, S t a t e o f New York and
`h e r e b y waive a n y o b j e c t i o n
`t h e r e t o on
`t h e b a s i s o f
`l a c k of venue,
`forum non c o n v e n i e n s o r any s i m i l a r -
`- -
`t y p e g r o u n d s .
`
`Am. Compl . , Ex. D.
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`P l a i n t i f f s a r g u e t h a t Getz i s p e r s o n a l l y bound by t h e
`
`Forum S e l e c t i o n C l a u s e b e c a u s e he i s " i n e x t r i c a b l y a s s o c i a t e d
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`w i t h t h e t r a n s a c t i o n and t h e [ D l e f e n d a n t s . "
`
`P 1 . Mem. 9 .
`
`However, P i a i n t i f f s ' a s s e r t i o n m i s t a k e n l y assumes t h a t t h e
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`c l a i m s a s s e r t e d a g a i n s t G e t z a r e s u f f i c i e n t l y r e l a t e d t o t h e t h e
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`

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`Case 1:07-cv-10967-RWS Document 19 Filed 12/08/08 Page 13 of 29
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`expired Distribution Agreement to warrant the Forum Selection
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`Clause's application to its claims. In this Circuit, "when
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`ascertaining the applicability of a contractual provision to
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`particular claims, [courts must] examine the substance of those
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`claims, shorn of their labels." Phillips v. Audio Active Ltd.,
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`494 F.3d 378, 388 (2d Cir. 2007). Where, as in the present
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`action, the rights being asserted do not originate from the
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`contract containing the forum selection clause, the clause does
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`not apply. - -
`See id. at 390; Corcovado Music Corp. v. Hollis
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`Music, Inc., 981 F.2d 679, 682 (2d Cir. 1993) ("The Cheever case
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`illustrates that where a plaintiff sues for copyright
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`infringement and asserts no rights under a contract with the
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`defendant containing a forum-seiection clause, the forum-
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`selection clause has no effect." (citing Cheever v. Acad. Chi.
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`Ltd., 690 F. Supp. 281, 285 (S.D.N.Y. 1988)).
`
`The same analysis applies to Plaintiffs' federal
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`trademark and state unfair competition claims. Plaintiffs'
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`rights in the marks at issue do not arise from the Distribution
`
`Agreement and therefore the Forum Selection Clause does not
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`apply. Compare Phillips, 494 F.3d at 392 (holding that, like
`
`copyright claims, remaining claims "premised on defendants'
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`allegedly improper exploitation" of songs "do not originate from
`the . . . contract and are exempt from operation of the forum
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`

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`Case 1:07-cv-10967-RWS Document 19 Filed 12/08/08 Page 14 of 29
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`selection clause"), with Weingrad v. Telepathy, Inc., No. 05
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`Civ. 2024 (MBM), 2005 WL 2990645, at * 3 (S.D.N.Y. Nov. 7, 2005)
`
`(applying forum selection clause "even after the contract has
`expired, where . . . plaintiff's claims involve rights arising
`out of the contract[,] the entire business relationship between
`
`the parties stems from that contract," and the agreement stated
`
`"that the forum selection clause survives termination or
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`expiration of the agreement").
`
`Further, by its own terms, the Forum Selection Clause
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`applies only to "any claim or controversy arising under this
`
`Agreement." Plaintiffs allege in the Amended Complaint that
`
`"Defendants were at one time a licensee of plaintiffs pursuant
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`to a written agreement, said agreement having expired and of no
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`further effect." Am. Compl. at ¶ 2; see also .- id. at ¶ 33
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`("[Alny and all rights [under the Distribution Agreement] ceased
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`on November 15, 2007."). As the Amended Complaint makes clear,
`
`Plaintiffs' remaining claims against Getz do not assert rights
`
`under the contract, but rather assert rights arising under
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`federal copyright and trademark law, as well as common law
`
`unfair competition. Accordingly, the Forum Selection Clause is
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`insufficient to grant this Court jurisdiction over Getz.
`
`c. New York's Long-Arm Statute
`
`13
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`

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`Case 1:07-cv-10967-RWS Document 19 Filed 12/08/08 Page 15 of 29
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`In the absence of jurisdiction through the Forum
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`Selection Clause, the Court must look to state law to determine
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`whether personal jurisdiction over Getz exists in this Court.
`
`In both diversity and federal question cases, including claims
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`alleging copyright and trademark infringement, the courts'
`
`inquiry as to personal jurisdiction begins with the forum
`
`state's long arm statute. See Bensusan Rest. Corp. v. King, 126
`
`F.3d 25, 27 (2d Cir. 1997); Pearson Educ., Inc. v. Shi, 525 F.
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`Supp. 2d 551, 555 (S.D.N.Y. 2007) ("Because the Lanham Act and
`
`Copyright Act do not provide for national service of process,
`New York's long arm statute . . . governs the instant action."
`
`(internal citation omitted)).
`
`Assessing whether personal jurisdiction is authorized
`
`under New York law requires the Court to determine whether the
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`defendant is either "doing business" in the state within the
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`meaning of New York Civil Practice Law and Rules ("CPLR") $ 301,
`
`or has committed acts within the scope of New York's long-arm
`
`statute, CPLR S 302. See e.g., Karabu Corp. v. Gitner, 16 F.
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`Supp. 2d 319 (S.D.N.Y. 1998) (citing Landoil Res. Corp. v.
`
`Alexander Servs., Inc., 565 N.E.2d 488, 490 (N.Y. 1990). If the
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`exercise of jurisdiction is appropriate under either of these
`
`statutes, the Court must then determine whether such exercise
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`

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`Case 1:07-cv-10967-RWS Document 19 Filed 12/08/08 Page 16 of 29
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`comports with the requisites of due process. Metro. Life Ins.
`
`Co. v. Robertson-Ceco Corp., 84 F.3d 560 (2d Cir. 1996).
`
`In this case, Plaintiffs do not assert facts
`
`sufficient to establish jurisdiction over Getz pursuant to CPLR
`
`5 301, under which a foreign defendant corporation is amenable
`
`to suit in New York if it has engaged in "such a continuous and
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`systematic course of 'doing business' here that a finding of its
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`'presence' in this jurisdiction is warranted[.]" Landoil Res.
`
`Corp., 565 N.E.2d at 490 (citations omitted). Neither does
`
`Plaintiff allege that jurisdiction over Getz is proper on the
`
`basis of personal commission of "a tortious act within the
`
`state" pursuant to 5 302(a)(2). Rather, Plaintiff asserts that
`
`jurisdiction over Getz is proper under section 302(a) (l), which
`
`states:
`
`5
`Personal jurisdiction by acts of non-
`302.
`domiciliaries.
`
`(a) Acts which are the basis of jurisdiction. As to a
`cause of action arising from any of the acts
`enumerated in this section, a court may exercise
`personal jurisdiction over any non-domiciliary, or his
`executor or administrator, who in person or through an
`agent :
`
`(1) transacts any business within the state or
`contracts anywhere to supply goods or services in the
`state; . . .
`
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`Case 1:07-cv-10967-RWS Document 19 Filed 12/08/08 Page 17 of 29
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`N.Y. C.P.L.R. 5 302(a). "To establish personal jurisdiction
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`under this provision, the plaintiff must demonstrate that the
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`defendant engaged in a purposeful business transaction in or
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`directed to New York and that such contacts with the state had a
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`'substantial relationship' to the claim asserted in the
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`underlying litigation." Pearson Educ., Inc., 525 F. Supp. 2d at
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`555 (citing Sole Resort, S.A. de C.V. v. Allure Resorts Mgmt.,
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`LLC, 450 F.3d 100, 103 (2d Cir.2006)).
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`Although Defendants have, for the purposes of this
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`motion, assumed that the Court has personal jurisdiction over
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`Buyseasons, it does not necessarily follow that the Court has
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`jurisdiction over Getz as President and CEO of Buyseasons
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`pursuant to S 302(a)(l). See Pilates, Inc. v. Current Concepts,
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`No. 96 Civ. 43 ( M G C ) , 1996 WL 599654, at *3 (S.D.N.Y. Oct. 18,
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`1998) ("[A] general allegation that an officer controls a
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`corporation is not sufficient to establish personal
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`jurisdiction."). Given that Plaintiffs do not allege in the
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`Amended Complaint any facts that Getz personally engaged in any
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`business in New York sufficient to confer jurisdiction over him
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`as an individual under S 302(a) (l), Plaintiff's argument
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`necessarily relies on New York's agency theory of personal
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`jurisdiction.
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`Case 1:07-cv-10967-RWS Document 19 Filed 12/08/08 Page 18 of 29
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`In order to attribute a corporation's New York
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`contacts to an individual under CPLR § 302(a) (l), New York law
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`requires a Plaintiff to "convince the court that [the
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`corporation] engaged in purposeful activities in this State in
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`relation to [Plaintiff's] transaction for the benefit of and
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`with the knowledge and consent of the [individual defendant] and
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`that [the individual defendant] exercised some control over [the
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`corporation] in the matter."
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`Kreutter v. McFadden Oil Corp.,
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`522 N.E.2d 40, 44 (N.Y. 1988). Although "[pllaintiff need not
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`establish a formal agency relationship" between the individual
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`defendant and the corporation to successfully assert an agency
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`theory, - id., a plaintiff must allege facts sufficient to
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`establish all four elements of the agency test. .- See Anna Sui
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`Corp. v. Forever 21, Inc., No. 07 Civ. 3235 (TPG), 2008 WL
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`4386747, at *2 (S.D.N.Y. Sept. 25, 2008) (applying four-pronged
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`test laid out in Beatie & Osborn LLP v. Patriot Scientific
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`Corp., 431 F. Supp. 2d 367, 389 (S.D.N.Y. 2006)). As a
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`necessary part of this inquiry, a plaintiff must demonstrate
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`that "the out-of-state corporate officers were 'primary actor[s]
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`in the transaction in New York' that gave rise to the
`litigation, and not merely 'some corporate employee[s] . . . who
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`played no part in' it." Karabu Corp., 16 F. Supp. 2d at 323
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`(quoting Retail Software Servs., Inc. v. Lashlee, 854 F.2d 18,
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`22 (2d Cir. 1988) (alteration in original).
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`Case 1:07-cv-10967-RWS Document 19 Filed 12/08/08 Page 19 of 29
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`Here Plaintiffs contend that personal jurisdiction
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`over Getz is proper under an agency theory because Getz
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`"exercises complete control" over Buyseasons, and "personally
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`benefits from its success." P1. Mem. 14. In support of these
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`statements, Plaintiffs have alleged that Getz is "President,
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`Chief Executive Officer (CEO) and principal shareholder and
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`driving force behind co-defendants Buyseasons and BuyCostumes,"
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`Am. Compl. ¶ 10, and that Getz "was actively engaged in the day
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`to day decisions with respect to the use of intellectual
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`property during the term of the contractN and "personally
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`participated in the day to day decisions relating to the use of
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`the marks and images in various forms of advertising and media
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`during the term of the contract." Id. ¶ 37, 38. While Getz, in
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`his Supplemental Affidavit, has refuted a number of the
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`statements in the Arma Declaration regarding the extent to which
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`he exercised control over Buyseasons' relationship with
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`Plaintiffs, see Def. Reply Mem., Ex. A, at this stage in the
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`proceedings the Court must resolve all doubts in favor of the
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`Plaintiffs. However, even if Plaintiffs' allegations
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`demonstrate that Getz played an important role in the
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`negotiation and application of the Distribution Agreement and in
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`the operation of Buyseasons' website generally, Plaintiffs have
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`failed to persuade the court that Getz was a "primary actor" in
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`any conduct targeting New York.
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`Case 1:07-cv-10967-RWS Document 19 Filed 12/08/08 Page 20 of 29
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`Plaintiffs cannot base jurisdiction on "conclusory
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`allegations that the defendant controls the corporation."
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`Karabu Corp., 16 F. Supp. 2d at 324; see Am. Compl. ¶ ¶ 68, 83
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`(alleging that Getz "had/has the right and ability to control
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`and had actual control over the conduct of Buyseasons and the
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`content of its web site)."
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`Further, none of Plaintiffs'
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`allegations identify any post-Distribution Agreement evidence of
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`Getz's control over activities related to Plaintiffs' remaining
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`claims. - See Decl. of Julie Arma ("Arma Decl.") ¶ 6 (stating
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`that Getz negotiated the Agreement on behalf of Buyseasons); - id.
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`at ¶ 7 (stating that "[elvery decision of consequence" relating
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`to the use of the intellectual property at issue had to "go
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`through'' Getz); id. at ¶ 8 (stating that Getz informed her that
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`"he had to personally approve every promotion advertisement and
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`discount involving Tom Arma costumes"); - id. at ¶ 9 (stating that
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`Getz "frequently called [her] at home to inform [her] of
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`infringements of the Tom Arma name" by third parties); - id. at ¶
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`11 (stating that Getz "personally approved layouts of [Tom Arma]
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`products in defendants' catalogues and so represented.").
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`Courts in this district "have . . . routinely granted
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`12(b)(2) motions for lack of personal jurisdiction where the
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`plaintiff made only broadly worded and vague allegations about a
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`defendant's participation in the specific matter at hand."
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`Case 1:07-cv-10967-RWS Document 19 Filed 12/08/08 Page 21 of 29
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`Karabu Corp., 16 F. Supp. 2d at 324. Here, while Plaintiffs do
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`provide detailed accounts of Getz's role in the Distribution
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`Agreement and the company's activities in connection with that
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`Agreement, they offer no specific allegations of the role Getz
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`played in maintaining the website after the Agreement
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`terminated, and accordingly, Plaintiffs have not established
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`that personal jurisdiction over Getz under an agency theory is
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`appropriate.
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`Finally, Plaintiffs contend that personal jurisdiction
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`over Getz is proper under an alter ego theory. Plaintiffs,
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`however, have made no allegations in their Amended Complaint
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`sufficient to establish that Buyseasons has been used as an
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`alter ego by Getz. See Packer v. TDI Sys., Inc., 959 F. Supp.
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`192, 202 (S.D.N.Y. 1997) (listing factors to be considered for
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`finding of alter ego). Therefore, Defendants' motion to dismiss
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`the Amended Complaint against Getz is granted.
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`IV. THE MOTION TO DISMISS THE COMPLAINT AGAINST BUYSEASONS FOR
`LACK OF VENUE IS DENIED
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`Defendants also move to dismiss the Amended Complaint
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`pursuant to Rule 12(b) (3) for improper venue. The standard for
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`defeating a motion to dismiss under Rule 12(b) (3) is similar to
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`the standard under Rule 12 (b) (2). "[TI he burden of showing that
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`Case 1:07-cv-10967-RWS Document 19 Filed 12/08/08 Page 22 of 29
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`venue in the forum district is proper falls on the plaintiff,"
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`U.S.E.P.A. ex rel. McKeown v. Port Auth. of N.Y. L N.J., 162 F.
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`Supp. 2d 173 (S.D.N.Y. 2001); but absent an evidentiary hearing,
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`"'the plaintiff need only make a prima facie showing of
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`[venue].'" Gulf Ins. Co. v. Glasbrenner, 417 F.3d 353, 355 (2d
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`Cir. 2005) (quoting Cutco Indus., 806 F.2d at 364-65). "In a
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`case involving multiple claims, the plaintiff must show that
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`venue is proper for each claim asserted, but dismissal of an
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`improperly venued claim is not warranted if it is factually
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`related to a properly venued claim and the claims could be
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`considered 'one cause of action with two grounds of relief.'
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`U.S.E.P.A. ex rel. McKeown, 162 F. Supp. 2d at 183 (citation
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`omitted).
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`Plaintiffs have asserted that the Forum Selection
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`Clause satisfies any question as to the whether venue in this
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`District is appropriate. However, for the reasons discussed
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`above, the Court finds that the Forum Selection Clause does not
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`apply to the remaining claims.
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`Defendants have, as noted above, assumed that venue in
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`this District is proper in connection with Plaintiffs' copyright
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`claims. At the same time, Defendants argue that the Court
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`should decline to exercise "pendent venue" over Plaintiffs'
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`Case 1:07-cv-10967-RWS Document 19 Filed 12/08/08 Page 23 of 29
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`remaining trademark and common law unfair competition claims.
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`See Def. Mem. 12 n.8. In determining whether pendent venue is
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`appropriate over federal law claims, a court in this district
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`must "determine which of the two federal claims is the 'primary
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`claim,' and apply the venue statute applicable to that claim."
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`Solow Bldg. Co. v. ATC Assocs., 175 F. Supp. 2d 465, 470
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`(E.D.N.Y. 2001); see Hsin Ten Enter. USA, Inc. v. Clark Enters.,
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`138 F. Supp. 2d 449, 463 (S.D.N.Y. 2000) (utilizing primary
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`claim approach to exercise pendent jurisdiction over plaintiff's
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`patent infringement claim).
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`Here, the exercise of pendent jurisdiction over
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`Plaintiffs' trademark infringement claims is appropriate
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`because, contrary to Defendants' contentions, the copyright
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`claims appear to be Plaintiffs' "primary claims." Plaintiffs
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`raise four copyright claims against all Defendants and only
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`three trademark claims. At the very least, Defendants have not
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`convinced the Court that the non-copyright claims are more
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`significant to Plaintiffs' action than the copyright claims.
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`As to Plaintiffs' common law unfair competition
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`claims, "where venue is lacking for a state law claim that
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`arises out of the same nucleus of operative facts as a 'properly
`venued' federal claim . . . . [clourts within this circuit
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`Case 1:07-cv-10967-RWS Document 19 Filed 12/08/08 Page 24 of 29
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`routinely exercise pendent venue." Hsin Ten Enter. USA, Inc.,
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`138 F. Supp. 2d at 462. Plaintiffs' claims all arise f