Faryl Robin, LLC v. Billdon, LLC

Background

Faryl Robin, LLC filed this action on June 12, 2023. It alleged that it held a limited license to use certain trademark and intellectual-property rights of Billdon, LLC, doing business as Billy Footwear, in connection with goods produced and sold to third-party vendors.

Faryl Robin alleged that Billdon sent a cease-and-desist letter on May 15, 2023, demanding that Faryl Robin stop using Billdon’s brand and intellectual property and claiming to terminate the limited license. Faryl Robin asserted claims for breach of contract, tortious interference with a business relationship, and declaratory judgment. The requested declarations concerned the existence and terms of the license, whether Faryl Robin had violated the agreement, whether Billdon could terminate it on less than 90 days’ notice, and whether Faryl Robin could continue using the intellectual property to complete existing orders.

Faryl Robin also moved for a temporary restraining order and preliminary injunction. The court declined to enter the proposed temporary restraining order, directed service on Billdon, and ordered briefing on the preliminary-injunction motion.

Jurisdictional Issue

Billdon argued in opposition to the preliminary-injunction motion that the court lacked subject-matter jurisdiction, meaning the court lacked legal authority to hear the action. The complaint invoked federal-question jurisdiction under 28 U.S.C. § 1331, asserting that the claims involved a license for intellectual property subject to trademark protections under the Lanham Act, 15 U.S.C. §§ 1051 and following. The complaint did not assert diversity jurisdiction.

The court explained that the mere involvement of a trademark does not automatically create a federal question. For a contract claim involving trademarks, federal-question jurisdiction exists if the complaint seeks a remedy expressly provided by the Lanham Act or asserts a claim requiring interpretation of that law.

Court’s Analysis

The court found that the complaint sought no remedy expressly granted by the Lanham Act and did not require construction of the Lanham Act. Apart from a vague reference to the federal trademark statutes, the Lanham Act was not mentioned in the complaint. The court characterized the dispute as a contract action and held that the fact that the contract concerned trademarks did not convert it into a federal trademark claim.

The court also rejected Faryl Robin’s argument that Billdon’s references to federal trademark protections in the cease-and-desist letter created federal jurisdiction. Federal-question jurisdiction must appear on the face of the complaint, and the letter therefore did not establish jurisdiction. The court noted that Faryl Robin’s reply did not substantively respond to Billdon’s jurisdictional argument.

Disposition

Judge Mary Kay Vyskocil dismissed the case for lack of subject-matter jurisdiction. The court stated that it would entertain the action no further and requested that the Clerk of Court close the case. The opinion also noted that the parties’ contractual disputes were already being litigated in two other forums. The court’s dismissal was jurisdictional and did not decide the underlying contract, interference, or declaratory-judgment claims.