Poulin Ventures, LLC v. MoneyBunny Co.
1:19-cv-01031
D.N.M.Oct 27, 2020Background
- Poulin Ventures (New Mexico) owns federal and common-law rights in the LADYBOSS marks for apparel and eyewear and sells via www.ladyboss.com; it alleges strong brand recognition and extensive social media following.
- Defendants are MoneyBunny Co. (Wyoming LLC, principal place of business in California) and its founder/manager Lauren Mitchell (California resident). Defendants sold anti–blue light glasses under the mark 'LADYBOSS' via ladybossglasses.com and social media.
- Plaintiff alleges trademark infringement, false designation, dilution, and related New Mexico claims; Plaintiff served the complaint in November 2019 and obtained a clerk’s entry of default in December 2019.
- Defendants retained counsel, moved to set aside the default under Rule 55(c), and moved to dismiss under Rule 12(b)(2) for lack of personal jurisdiction, submitting Mitchell’s affidavit about the company’s online sales and limited New Mexico contacts (~100 sales, <0.5% of sales).
- The Court found a prima facie basis for specific personal jurisdiction over MoneyBunny based on its interactive e-commerce website that shipped to New Mexico residents and configured shipping/tax for New Mexico; the Court vacated the clerk’s entry of default, denied default judgment without prejudice, denied the surreply request, and reserved ruling on personal jurisdiction over Mitchell pending supplemental briefing.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Personal jurisdiction over MoneyBunny | MoneyBunny purposefully directed activities at NM by operating an interactive e-commerce site that shipped to NM and targeted NM consumers, causing infringement in NM | MoneyBunny’s web presence is passive or minimal in NM (only ~100 sales, <0.5% of sales); contacts insufficient for jurisdiction | Court: MoneyBunny has prima facie minimum contacts (interactive site, shipping/tax configured for NM, sales into NM); Rule 12(b)(2) denied for MoneyBunny |
| Personal jurisdiction over Mitchell (individual) | Mitchell personally does business as MoneyBunny and is the managing member, so MoneyBunny’s contacts should impute to her | Mitchell has no physical presence in NM and limited forum contacts; insufficiency of record to impute company contacts | Court: Ruling reserved; ordered supplemental briefing on whether MoneyBunny’s contacts can be imputed to Mitchell |
| Vacating Clerk’s Entry of Default (Rule 55) | Plaintiff contends Defendants willfully ignored properly served process and default should stand; vacatur would prejudice Plaintiff and fees should be awarded | Defendants present meritorious defense (jurisdiction), innocent misunderstanding re TTAB proceedings, prompt appearance after counsel retained | Court: Vacated the clerk’s entry of default (good cause): meritorious defense shown, prejudice to plaintiff insufficient, and default not willful; no fee/cost condition imposed |
| Plaintiff’s motion for default judgment and motion for leave to file surreply | Default judgment and fees appropriate; surreply needed to rebut Defendants’ new registration-priority argument | No default judgment appropriate after vacatur; surreply unnecessary because personal-jurisdiction briefing is the focus | Court: Default-judgment motion denied without prejudice (entry of default vacated); motion for leave to file surreply denied |
Key Cases Cited
- Calder v. Jones, 465 U.S. 783 (U.S. 1984) (effects test for purposeful direction—intentional conduct expressly aimed at forum state)
- Burger King Corp. v. Rudzewicz, 471 U.S. 462 (U.S. 1985) (purposeful availment & due process framework for specific jurisdiction)
- World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286 (U.S. 1980) (foreseeability of harm in forum insufficient alone for jurisdiction)
- Walden v. Fiore, 571 U.S. 277 (U.S. 2014) (forum-focused conduct required; plaintiff’s forum connection, not defendant’s, is critical)
- Old Republic Ins. Co. v. Cont’l Motors, Inc., 877 F.3d 895 (10th Cir. 2017) (distills Calder into three-part purposeful-direction test applied in Tenth Circuit)
- XMission, L.C. v. Fluent LLC, 955 F.3d 833 (10th Cir. 2020) (internet-specific adaptation of purposeful-direction analysis)
- Hemi Grp. LLC v. City of New York, 622 F.3d 754 (7th Cir. 2010) (interactive commercial website sales to a forum resident can support jurisdiction)
- McGee v. Int’l Life Ins. Co., 355 U.S. 220 (U.S. 1957) (single in-forum transaction may support jurisdiction)
- Toys "R" Us, Inc. v. Step Two, S.A., 318 F.3d 446 (3d Cir. 2003) (interactive website contacts must be tied to forum-directed commercial activity to support jurisdiction)
- Dudnikov v. Chalk & Vermilion Fine Arts, Inc., 514 F.3d 1063 (10th Cir. 2008) (Calder and purposeful-direction discussion in Tenth Circuit)