Boyer Works USA, LLC v. Rubik's Brand Limited

Background

Boyer Works USA, LLC sells the Boyer’s SpeedRipper Puzzle, primarily through Amazon.com. Boyer alleged that Spin Master Brand Protection Team, acting for Spin Master Toys UK Limited, caused Amazon to remove Boyer’s listings after reporting possible infringement of a Spin Master trademark. Boyer claimed lost business and asserted claims under federal patent, trademark, copyright, and antitrust laws, as well as New York law.

The opinion states that Spin Master Corp. acquired Rubik’s Brand Limited on January 5, 2021, and that rights to Rubik’s Cube trademarks were assigned to Spin Master Ltd. and Spin Master Toys UK Limited. The opinion identifies Spin Master Toys UK Limited as the owner of the contested mark. The defendants moved to dismiss the third amended complaint for lack of subject-matter jurisdiction, lack of personal jurisdiction, and failure to state a claim.

Subject-Matter Jurisdiction

The court first addressed whether it had power to hear the dispute. It ruled that Spin Master Products and Spin Master Brand Protection Team did not legally exist as suable entities. The court characterized them as departments rather than independent legal entities and dismissed the claims against them for lack of subject-matter jurisdiction.

The court then ruled that Boyer had suffered an economic injury from the removal of its Amazon listings, but that the injury was traceable only to the owner of the relevant intellectual-property rights. Because the court identified Spin Master Toys UK Limited as that owner, it held that Boyer lacked standing—the legal requirement that a plaintiff show an injury connected to the defendant and capable of being remedied by the court—to sue the other legally existing defendants. The court therefore granted the motion for lack of subject-matter jurisdiction as to all legally existing defendants except Spin Master Toys UK Limited.

Personal Jurisdiction

As to Spin Master Toys UK Limited, the court considered whether it had personal jurisdiction, meaning legal authority over that defendant. The court rejected Boyer’s argument that Spin Master Toys UK Limited was subject to general jurisdiction in New York. Although Boyer alleged that the company conducted business and earned revenue in New York, the court held that those allegations did not show that the company was essentially at home there. The court also stated that using Spin Master, Inc.’s Long Island City office and registering to do business in New York did not establish general jurisdiction.

The court noted that Boyer had not alleged specific personal jurisdiction. It nevertheless stated that, even assuming Spin Master Toys UK Limited had sufficient contacts with New York, Boyer’s injuries did not arise from or relate to those contacts, and exercising jurisdiction would violate due process. The court declined to allow jurisdictional discovery because Boyer had not made a colorable claim that jurisdiction existed.

Disposition

The court granted the motion to dismiss as to Spin Master Toys UK Limited without prejudice. In the conclusion, it stated that the motion was granted with prejudice as to all defendants except Spin Master Toys UK Limited and without prejudice as to Spin Master Toys UK Limited. The Clerk was directed to terminate the motion, close the case, and award costs to the defendants.

The court also stated that Boyer’s claims seeking a declaration of noninfringement and cancellation of the mark based on functionality appeared to have some plausibility. The court explained that this was why the dismissal as to Spin Master Toys UK Limited was without prejudice, allowing Boyer to refile in a court that could exercise personal jurisdiction. Judge Hellerstein also advised Boyer’s counsel about duties under court and professional-conduct rules against pursuing frivolous claims or violating duties of candor.