Lavazza Premium Coffees Corp. v. Prime Line Distributors Inc.
1:20-cv-09993-JHR
S.D.N.Y.Dec 10, 2021Background
- Lavazza (Delaware/N.Y.) and Luigi (Italian) contracted with Prime Line (Florida) under a 2017 Distribution Agreement granting Prime Line rights to sell Lavazza products in Florida, a nonexclusive sublicense to use Luigi’s trademarks, payment terms (75 days), an equipment-loan program (machines loaned to customers for exclusive use of Lavazza products), broad confidentiality obligations, a New York choice-of-law clause, and a mandatory forum-selection clause selecting New York County courts.
- Plaintiffs allege Prime Line breached the Agreement by failing to pay roughly $452,974.64, canceling container orders, marketing and selling competitors’ coffee to customers with Lavazza loaned machines, supplying Lavazza-branded cups while those customers served competitors’ coffee (causing confusion), removing and warehousing Lavazza machines without authorization (≈141 machines), disclosing Lavazza pricing differentials, and falsely telling customers Lavazza raised prices during COVID-19.
- Luigi asserts contributory trademark infringement and unfair competition under the Lanham Act based on Prime Line’s alleged role in customers’ misuse of Luigi/Lavazza marks; Lavazza asserts contract and tort claims (breach of payment, exclusive-use, confidentiality; conversion; trespass to chattels; defamation; account stated; tortious interference).
- Prime Line moved to dismiss for lack of personal jurisdiction and for failure to state a claim, and alternatively to transfer venue to the Southern District of Florida under 28 U.S.C. § 1404.
- The court denied dismissal for lack of personal jurisdiction (enforced forum clause as to Lavazza; found CPLR §302(a)(1) + due process supported jurisdiction for Luigi’s Lanham Act claims), denied transfer, granted dismissal of two Lavazza claims (account stated; tortious interference), and otherwise denied Prime Line’s 12(b)(6) motion.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether forum-selection clause in Agreement confers personal jurisdiction over Prime Line for Lavazza’s claims | Lavazza: Prime Line consented to exclusive jurisdiction in NY County by contract | Prime Line: clause applies only to signatory Lavazza; Luigi (non‑signatory) cannot rely on it | Enforceable as to Lavazza’s claims; forum clause confers PJ for Lavazza |
| Whether Luigi (non-signatory) may be bound by or invoke forum clause | Luigi: its trademark interests are licensed under Agreement so enforcement was foreseeable | Prime Line: Luigi did not sign or participate; its Lanham Act claims don’t arise from the Agreement | Court: Luigi not sufficiently "closely related" to enforce clause; forum clause does not by itself confer PJ for Luigi |
| Whether New York long-arm statute and due process permit PJ over Prime Line for Luigi’s Lanham Act claims | Luigi: Prime Line transacted business in NY (negotiated/attended meetings, sent orders/payments, agreed NY law/forum) and claims arise from those contacts | Prime Line: alleged infringement occurred in Florida; contacts with NY insufficient | Court: CPLR §302(a)(1) satisfied and due process met (purposeful availment; exercise reasonable); PJ over Prime Line for Luigi’s claims sustained |
| Whether case should be transferred to SD Fla. under §1404 | Plaintiffs: NY forum is proper under clause and judicial economy favors NY | Prime Line: witnesses/evidence located in Florida; convenience favors transfer | Court: forum-selection clause controlling for Lavazza; public-interest factors insufficient to override; denied transfer for both plaintiffs |
| Whether complaint states claims under Rule 12(b)(6) (selected holdings) | Plaintiffs: factual allegations support breaches, Lanham Act claims, conversion, trespass, defamation | Prime Line: various claims duplicative, barred, or deficiently pleaded | Court: dismissed Lavazza’s account stated and tortious interference (duplicative); denied dismissal as to breach of payment, exclusive-use, confidentiality, Luigi’s contributory infringement/unfair competition, conversion, trespass to chattels, and defamation |
Key Cases Cited
- DiStefano v. Carozzi N. Am., Inc., 286 F.3d 81 (2d Cir. 2001) (plaintiff bears burden to establish personal jurisdiction)
- Bank Brussels Lambert v. Fiddler Gonzalez & Rodriguez, 171 F.3d 779 (2d Cir. 1999) (standards for personal jurisdiction and forum convenience)
- Atlantic Marine Const. Co. v. U.S. Dist. Ct. for W. Dist. of Tex., 571 U.S. 49 (2013) (forum-selection clauses control transfer analysis and carry substantial weight)
- Sunward Electronics, Inc. v. McDonald, 362 F.3d 17 (2d Cir. 2004) (trademark claims may arise from New York licensing contacts; supports exercise of PJ)
- Agency Rent A Car Sys., Inc. v. Grand Rent A Car Corp., 98 F.3d 25 (2d Cir. 1996) (factors for "transacting business" under CPLR §302)
- Ford Motor Co. v. Mont. Eighth Jud. Dist. Ct., 141 S. Ct. 1017 (2021) (purposeful availment test under due process)
- Bristol-Myers Squibb Co. v. Super. Ct., 137 S. Ct. 1773 (2017) (limits on asserting jurisdiction for claims not arising from forum contacts)
- Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010) (doctrine and standards for contributory trademark infringement)
- Patsy’s Italian Rest., Inc. v. Banas, 658 F.3d 254 (2d Cir. 2011) (federal registration presumes nationwide rights)
- Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) (plausibility pleading standard)
- Ashcroft v. Iqbal, 556 U.S. 662 (2009) (plausibility pleading standard)