Judge Richard G. Stearns: ELECTRONIC ORDER entered denying75 Motion to Dismiss for Lack of Jurisdiction. Plaintiffs Reebok International Ltd., LLC, and Reebok International Limited (collectively, Reebok) have sued defendant Autry USA, LLC (Autry USA) for trademark infringement. Autry USA now moves to dismiss the suit for lack of personal jurisdiction or, alternatively, to dismiss Counts III, IV, and V for failure to state a claim. For the following reasons, court will deny both motions. First, as to the Rule 12(b)(2) motion, the court is not convinced that Autry USA can fairly be considered to have waived any personal jurisdiction defense merely because its then-counsel responded to Reebok’s disqualification motion and appeared for an evidentiary hearing on the matter. Cf. Precision Etchings & Findings, Inc. v. LGP Gem, Ltd. , 953 F.2d 21, 25-26 (1st Cir. 1992) (“Feiger justly cannot be deemed to have submitted to the jurisdiction of the district court by filing objections to the magistrate judge’s proposed findings and recommended disposition as was required by 28 U.S.C. § 636(b)(1) and Fed. R. Civ. P. 72(b) in order to preserve his right to de novo review of the recommended disposition.”).
The court need not decide the issue, however, because the exercise of personal jurisdiction here comports with due process. See Mem. in Supp. Mot. to Dismiss [Dkt # 76] at 6 (conceding that, “[b]ecause the requirements of the Massachusetts Long Arm statute are coextensive with the limits imposed by the Fourteenth Amendment, the Court need only conduct the constitutional analysis”).
Autry USA admits that it sold shoes to a Massachusetts-based retailer on two separate occasions. See Massini Decl. [Dkt # 77] para. 6. While it now attempts to minimize the magnitude of each sale and its participation in negotiating the relevant purchase orders, it cannot escape that fact that, at the end of the day, it knowingly supplied allegedly infringing product to a physical store in Massachusetts which also carried the competing Reebok line. These sales suffice to establish relatedness, purposeful availment, and reasonableness.
The Rule 12(b)(6) motion fares no better. As to the false advertising portions of Counts III and IV, Autry USA imposes too high a burden at the pleading stage. It is enough, for present purposes, that Reebok alleges that (1) Autry USA includes the American flag in its logo to “mislead consumers into believing that the shoes they are purchasing are made in the United States,” even though the shoes are manufactured abroad, Compl. [Dkt # 1] 94; see also id. paras. 140-141, and (2) Autry USA’s actions have “undermine[d] Reebok’s competitive position” in the market and lost it “goodwill” and “current and prospective customers,” id. paras. 144, 148, because consumers may choose to purchase Autry USA’s shoes, which display an American flag, over Reebok’s similar shoes, which display a Union Jack flag, under the false impression that Autry USA’s shoes were made in America, see, e.g. , id. para. 143. As to Count V, contrary to Autry’s assertion otherwise, the Complaint expressly defines (with both words and images) the relevant marks. See id. paras. 4-6. (RGS, law)
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