Vivi Holding Eastern Corp v. Wong

Background

Vivi Holding Eastern Corp. and Shao Lung Huang sued Kei Yung Wong, STY & WKY Inc., and Rockville Vivi Tea, Inc. The plaintiffs asserted federal trademark infringement, trademark counterfeiting, and unfair-competition claims, along with a New York breach-of-contract claim. They alleged that Wong had entered into a licensing agreement allowing use of the “Vivi” mark in exchange for a licensing fee, that the defendants did not pay the fee, and that they continued using the plaintiffs’ trademarks after receiving a cease-and-desist letter.

The amended complaint alleged that Vivi Holding Eastern Corp. is a New York corporation with its principal place of business in Flushing, New York, and that Huang resides in New York. It alleged that Wong resides in Flushing, New York and owns STY & WKY and Rockville Vivi Tea. It also alleged that STY & WKY is incorporated and headquartered in Virginia, while Rockville Vivi Tea is incorporated and headquartered in Maryland.

Defendants’ Motion

The defendants moved to dismiss under Federal Rule of Civil Procedure 12(b)(2) for lack of personal jurisdiction, meaning that they argued the court lacked authority over them. They also moved under Rule 12(b)(6), arguing that the amended complaint failed to state a legally sufficient claim. The court decided the personal-jurisdiction issue and did not reach the Rule 12(b)(6) argument.

Personal Jurisdiction

The court explained that personal jurisdiction may be general or specific. General jurisdiction ordinarily exists where an individual is domiciled or where a corporation is incorporated or has its principal place of business. Specific jurisdiction may exist when the claims arise from or relate to the defendant’s contacts with the forum state.

The court found that the plaintiffs had not demonstrated general jurisdiction over Wong. Although the amended complaint alleged that Wong resides, or previously resided, in New York, Wong submitted an affidavit stating that she moved to Maryland in February 2017, and the plaintiffs provided no contrary evidence. The court also found no general jurisdiction over STY & WKY or Rockville Vivi Tea because the complaint identified Virginia and Maryland, respectively, as those companies’ places of incorporation and principal places of business.

The court also found no specific jurisdiction. The plaintiffs relied on Wong’s alleged residence in New York and her ownership of the corporate defendants, but the court concluded that the claims did not arise from those facts. It explained that owning a corporation generally does not by itself subject the owner to personal jurisdiction based on the corporation’s activities.

The plaintiffs also relied on documents showing that Wong signed and had notarized in New York a certificate concerning STY & WKY’s use of a trade name in Virginia. The documents also showed that Wong used a New York return address and received correspondence there. The court held that these facts did not show that Wong or STY & WKY transacted business in New York under New York’s long-arm statute. The plaintiffs had not alleged that any relevant business by the defendants occurred in New York or otherwise created a connection between the claims and New York.

Disposition

Because the plaintiffs had not shown a basis for personal jurisdiction over the defendants, the court granted the defendants’ motion to dismiss. The court did not state that the dismissal was with or without prejudice. It granted the plaintiffs leave to amend because it could not conclude that no amendment could cure the identified defects. Any motion for leave to file a second amended complaint was to be served and filed by February 1, 2023, with the proposed complaint attached.

The Clerk of Court was directed to terminate the motion.