Rush v. Hillside Buffalo, LLC

314 F.Supp.3d 477

Chuck RUSH, Plaintiff,

v.HILLSIDE BUFFALO, LLC, also known as The Track at Hillside Buffalo, Daniel J. Hutchinson, JM Motorsports, and Nick Johnston, Defendants.

1:18–CV–00653 EAW

United States District Court, W.D. New York.

Signed June 15, 2018

Chuck Rush, North East, PA, pro se.

DECISION AND ORDER

ELIZABETH A. WOLFORD, United States District Judge

INTRODUCTION

Plaintiff Chuck Rush ("Plaintiff") commenced this pro se action on June 13, 2018, alleging that Defendants violated the Lanham Act, 15 U.S.C. § 1051 et seq. , committed larceny under the Uniform Code of Military Justice, 10 U.S.C. § 921, and otherwise converted his property rights by advertising his registered trademark, or a variation thereof, and profiting from this misappropriation. (Dkt. 1). Plaintiff has also filed a motion for a temporary restraining order, a motion for a preliminary injunction, and a motion for an expedited hearing on his preliminary injunction application. (Dkt. 2; Dkt. 4). For the following reasons, Plaintiff's motion for a temporary restraining order is denied. The Court sets a status conference for Thursday, July 5, 2018, at 3:00 P.M., at the United States Courthouse, 2 Niagara Square, Buffalo, NY 14202–3350. All parties and/or their counsel must appear at that status conference.

FACTUAL BACKGROUND ¹

Plaintiff avers that he owns and operates "Crash–A–Rama," which he describes as " ‘[t]he wildest show on wheels,’ featuring men and women running old junk cars in exciting and entertaining events." (Dkt. 2 at 3–4). Plaintiff further avers that he is the sole owner of a registered federal trademark for the name, "Crash–A–Rama." (Id. at 4; see Dkt. 1 at 16–25 (exhibits to Plaintiff's complaint) ). Plaintiff has operated Crash–A–Rama at the Holland International Speedway (the "Speedway") in Holland, New York for eighteen years. (Dkt. 2 at 3–4). However, Defendants recently acquired the Speedway, and they now operate that location under the name "Hillside Buffalo, LLC a/k/a The Track at Hillside Buffalo." (Id. at 4).

Plaintiff avers that on or about May 30, 2018, Defendants "knowingly and purposefully converted [his] business and federal trademark ... into ‘Crash–O–Rama’; all for [D]efendants' exclusive profit and gain and to the detriment of [P]laintiff[.]" (Id. ). Defendants have advertised a "Crash–O–Rama" event to take place on Saturday, June 16, 2018, at the Speedway, and appear to have done so in conjunction with the sale of tickets both online and in print. (Dkt. 2 at 4–6; see Dkt. 1 at 33, 37, 41–46 (exhibits to Plaintiff's complaint) ). Plaintiff avers that this "slight and nearly unnoticeable change" to his registered trademark was intended to capitalize upon Plaintiff's "good reputation, unique auto racing, and successful business history and earnings" by confusing and "trick[ing] the public and consumers ... to sell tickets and generate money only to [Defendants'] benefit." (Dkt. 2 at 4–5).

The next day, Plaintiff notified Defendants by email that they had infringed upon his registered trademark, and he demanded that they "cease and desist" any further misappropriation of the "Crash–A–Rama" name. (Id. at 5). In his complaint, Plaintiff alleges that he sent a second email to Defendants on June 13, 2018, rendering essentially the same notice described in the first email. (Dkt. 1 at 7, 52). Plaintiff avers that his emails have not halted Defendants' continued use of his registered trademark, and thus, he seeks a temporary restraining order to prevent Defendants from holding the "Crash–O–Rama" event on Saturday, June 16, 2018. (See Dkt. 2 at 5–6).²

DISCUSSION

I. Subject Matter Jurisdiction

A. Diversity Jurisdiction

"Federal district courts are required to test their subject matter jurisdiction sua sponte. " Sabatino v. St. Barnabas Med. Ctr. , No. 03 CV 7445 (CSH), 2004 WL 2413940, at *2 (S.D.N.Y. Oct. 28, 2004). "Diversity jurisdiction exists where the parties are citizens of different states and the amount in controversy exceeds $75,000." Ceglia v. Zuckerberg , 772 F.Supp.2d 453, 455 (W.D.N.Y. 2011). " ‘[C]itizens of different States’ means that there must be complete diversity, i.e., that each plaintiff's citizenship must be different from the citizenship of each defendant." Hallingby v. Hallingby , 574 F.3d 51, 56 (2d Cir. 2009) ; see Doctor's Assocs., Inc. v. Distajo , 66 F.3d 438, 445 (2d Cir. 1995) ("It is a long-settled rule that in order to invoke diversity jurisdiction, the petitioner must show ‘complete diversity’—that is, that it does not share citizenship with any defendant."). "A person's citizenship for purposes of diversity is based upon his domicile." Ceglia , 772 F.Supp.2d at 455.

Plaintiff alleges that he is a citizen of the State of Florida, and that Defendants are all citizens of the State of New York for diversity purposes. (Dkt. 1 at 3–5). In doing so, Plaintiff alleges that Hillside Buffalo, LLC is a corporation that is incorporated under the laws of the State of New York, and that it maintains its principal place of business in New York. (Id. at 4). However, Hillside Buffalo, LLC is a limited liability company.

"In general, the citizenship of a limited liability company is determined by the citizenship of each of its members." Carter v. HealthPort Techs., LLC , 822 F.3d 47, 60 (2d Cir. 2016) ; see Nationstar Mortg. LLC v. Pignataro , No. 1: 15–CV–1041 (LEK/DJS), 2016 WL 3647876, at *1 (N.D.N.Y. July 1, 2016) ("A limited liability company takes the citizenship of its members." (citing Bayerische Landesbank, N.Y. Branch v. Aladdin Capital Mgmt. LLC , 692 F.3d 42, 49 (2d Cir. 2012) )). Plaintiff has failed to identify any of Hillside Buffalo, LLC's members, let alone allege their citizenship for diversity purposes. See Courtyard Apartments Prop. 1, LLC v. Rosenblum , No. 17-CV-2909 (DRH)(SIL), 2018 WL 1611386, at *2 (E.D.N.Y. Apr. 3, 2018) ("Plaintiffs have failed to even allege the members, let alone the members' citizenship, of certain of the Plaintiffs...."). "Citizenship of all members must be known to insure that complete diversity exists in this action." Caro v. Fid. Brokerage Servs., LLC , No. 3:12-CV-1066 (CSH), 2013 WL 3929708, at *4 (D. Conn. July 26, 2013). The absence of any such allegations completely compromises Plaintiff's assertion of federal diversity jurisdiction. See PMX Agency LLC v. Blackstreet Capital Holdings, LLC , No. 1:16-CV-03849 (ALC), 2017 WL 3605380, at * 1 (S.D.N.Y. Aug. 21, 2017) (finding the plaintiff's complaint to be "deficient" in the absence of allegations regarding the defendant's members' citizenship).

Therefore, although Plaintiff seeks to invoke principles of diversity of citizenship, he has failed to properly allege a basis for diversity jurisdiction.

B. Federal Question Jurisdiction

Since Plaintiff has failed to allege diversity jurisdiction, this Court has subject matter jurisdiction over this action only if Plaintiff has sufficiently invoked the Lanham Act.³ "A dispute does not invoke federal jurisdiction simply because the plaintiff seeks a remedy that happens to be available in a federal statute. A violation of the federal law is a necessary predicate for claiming the remedies of the Lanham Act." Gibraltar, P.R., Inc. v. Otoki Grp., Inc. , 104 F.3d 616, 618 (4th Cir. 1997). The Lanham Act prohibits a person from the

use in commerce [of] any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive.

15 U.S.C. § 1114(1)(a). The statute defines the term "use in commerce" as "the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark." 15 U.S.C. § 1127. More specifically,

a mark shall be deemed to be in use in commerce ... on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.

Id.

"It is well settled that the scope of ‘in commerce’ as a jurisdictional predicate of the Lanham Act is broad and has a sweeping reach." Planned Parenthood Fed'n of Am., Inc. v. Bucci , No. 97 Civ. 0629 (KMW), 1997 WL 133313, at *3 (S.D.N.Y. Mar. 24, 1997), aff'd , 152 F.3d 920 (2d Cir. 1998). Courts have frequently determined that the "in commerce" standard is satisfied by messages or advertisements sent posted over the Internet. See, e.g. , World Wrestling Fed'n Entm't, Inc. v. Bozell , 142 F.Supp.2d 514, 528–29 (S.D.N.Y. 2001) (stating that the "defendants' use of the Internet also satisfies the Lanham Act's ‘in commerce’ requirement" (citations omitted) ); Bucci , 1997 WL 133313, at *3 ("The nature of the Internet indicates that establishing a typical home page on the Internet, for access to all users, would satisfy the Lanham Act's ‘in commerce’ requirement."); Intermatic Inc. v. Toeppen , 947 F.Supp. 1227, 1239–40 (N.D. Ill. 1996) ("Because Internet communications transmit instantaneously on a worldwide basis there is little question that the ‘in commerce’ requirement would be met in a typical Internet message, be it trademark infringement or false advertising." (quoting 1 Gilson, Trademark Prot. & Prac. § 5.11[2], at 5–234 (1996) ) ); see also Pump Wear, Inc. v. Insulin Pump Packs For You, LLC , No. l:08–CV–570, 2008 WL 11355284, at *1 (N.D.N.Y. Sept. 23, 2008) (stating that the plaintiff "has used the trademark ‘Pump Pak’ in commerce" and "operates a website at the Internet address www.pumpwearinc.com where its products are sold").

Although Plaintiff's allegations invoking the Lanham Act are somewhat unclear and not wholly fleshed out, in reviewing the Complaint as a whole the Court preliminarily finds that it has subject matter jurisdiction to...