Vicious Brands, Inc. v. Face Co., LLC

Background

Vicious Brands, Inc., doing business as Saints & Sinners, sued Face Co., LLC, Skin Saint, LLC, and Holly Cutler. The complaint alleged trademark infringement, unfair competition, false designation of origin, fraudulent procurement of a trademark, and related California and common-law claims. The dispute concerns Defendants’ use of a double-S mark that Plaintiff alleged was confusingly similar to its marks.

Defendants submitted evidence that they were based in Michigan, had no physical presence in California, and had made 89 sales to California customers involving the allegedly infringing mark. Those sales totaled $12,336.40. Plaintiff submitted evidence describing its business activities and trademark-related connections in California, as well as a test purchase delivered to its counsel’s San Francisco office.

Personal Jurisdiction

The court analyzed specific personal jurisdiction, which allows a court to hear claims connected to a defendant’s conduct in the forum state. Because the claims involved alleged trademark infringement, the court applied the purposeful-direction test. That test asks whether the defendant committed an intentional act, expressly aimed it at the forum state, and caused harm the defendant knew was likely to occur there.

The court held that Defendants’ repeated sales of allegedly infringing products to California customers satisfied the first two parts of the test. The court relied on Ninth Circuit precedent stating that there is no exception to personal jurisdiction merely because sales to the forum state represent a small percentage of a defendant’s total sales. The court also found that, at least after Defendants received notice of Plaintiff’s infringement theory, they could reasonably have expected the sales to harm Plaintiff’s California business and cause confusion among California customers.

The court further held that Plaintiff’s claims arose from Defendants’ California-related conduct because the claims were connected to sales of the allegedly infringing products in California. Defendants therefore had the burden to present a compelling case that exercising jurisdiction would be unreasonable. The court found that they had not met that burden. Although litigating in California would impose some burden on Defendants, they did not identify specific witnesses, show that the burden would deprive them of due process, or identify a conflict with Michigan’s sovereignty. The court also found that California had an interest in protecting consumers and businesses through its trademark and unfair-competition laws.

Venue

Venue is proper when a substantial part of the events giving rise to a claim occurred in the district. In trademark cases, the court explained, that can include the place where consumer confusion is likely to occur, such as where a customer buys the defendant’s product.

The court rejected Defendants’ argument that venue was improper because the relevant events occurred in Michigan. The court distinguished cases involving no sales in the forum district. Here, one test purchase was shipped to Plaintiff’s counsel’s San Francisco office. Although sales arranged by a plaintiff receive reduced weight, the court found that this sale, combined with Defendants’ other California sales and the absence of evidence excluding this district, supported a reasonable inference that at least some non-orchestrated sales occurred in the district. The court therefore denied the motion to dismiss for improper venue.

Transfer to the Eastern District of Michigan

Under 28 U.S.C. § 1404(a), a court may transfer a case to another proper district for the convenience of the parties and witnesses and in the interests of justice. Defendants argued that Michigan would be more convenient because their witnesses and physical evidence were there.

The court gave meaningful weight to Plaintiff’s choice of forum because Plaintiff conducted a significant portion of its business in California and its Nevada headquarters was closer to California than to Michigan. The court found Defendants’ assertions about inconvenience too general because they did not identify particular witnesses or explain the nature of their testimony. The court also noted that no likely nonparty witnesses had been identified and that transferring the case would at most shift, rather than eliminate, inconvenience. The court concluded that transfer was not warranted.

Disposition

The court denied Defendants’ motion to dismiss for lack of personal jurisdiction, denied the motion to dismiss for improper venue, denied the motion to transfer the case to the Eastern District of Michigan, and denied the Motion in full. The order did not decide whether Defendants actually infringed Plaintiff’s trademarks or committed the other alleged violations.