Galaxy America, Inc. v. EZ Inflatables, Inc.

UNITED STATES DISTRICT COURT

MIDDLE DISTRICT OF FLORIDA

FORT MYERS DIVISION

GALAXY AMERICA, INC.,

Plaintiff,

v. Case No: 2:19-cv-855-JES-MRM

EZ INFLATABLES, INC., AND

EDGAR ABRAAMYAN,

Defendants.

OPINION AND ORDER

This matter comes before the Court on defendants' Dispositive

Motion to Dismiss Counts VI, VII, and VIII Against Defendants For

Failure To State A Claim and To Dismiss All Claims Against Edgar

Abraamyan For Lack of Personal Jurisdiction (Doc. #49) filed on

June 11, 2020. Plaintiff filed a corrected Response in Opposition

(Doc. #57) on July 14, 2020. For the reasons set forth below, the

motion is denied.

I.

The eight-count First Amended Complaint (FAC) alleges that

plaintiff Galaxy America, Inc. (Galaxy or plaintiff) is a renowned

company in the attractions and amusements industry, manufacturing

some of the most innovative and high-quality inflatable designs

that are sold in the United States marketplace, as well as in over

45 other countries. (Doc. #47, ¶¶ 3, 43.) Galaxy’s designs include

commercial-grade inflatable games, obstacle courses, slides,

jumpers, water slides, climbing walls, and mechanical and

interactive amusements, some of which are marketed using Galaxy’s

TOXIC® trademark and/or Galaxy’s trade dress. (Id. at ¶¶ 5, 57.)

The FAC further alleges that Defendants coveted Galaxy’s lucrative

customer base and success in the marketplace, and as a result,

unlawfully created “knock-off’s” of Galaxy’s products and trade

dress in an effort to lure its customers away from Galaxy. (Id.

at ¶ 16.) The FAC asserts that Defendants intentionally copied,

without Galaxy’s consent, its TOXIC® products that are federally

registered, its trade dress, and its common law marks, and then

sold infringing products. (Id.) Additionally, the FAC alleges

that defendant Edgar Abraamyan (Abraamyan) engaged in unlawful

activity against Galaxy due to his ownership of EZ Inflatables and

his direction, control, and personal participation in the

infringing activities of his alter ego EZ Inflatables, Inc. (EZ

Inflatables). (Doc. #47, ¶¶ 211, 216.)

Defendant EZ Inflatables only challenges three counts of the

FAC, alleging that each fails to state a claim: trade dress

infringement under § 1125(a) (Count VI); Florida common law trade

dress infringement (Count VII); and contributory and vicarious

unfair competition pursuant to § 1125(a) (Count VIII). (Doc. #47;

Doc. #49, pp. 1, 4-15.) Defendant Abraamyan seeks dismissal of

all counts against him based on a lack of personal jurisdiction.

(Doc. #49, pp. 16-20.)

II.

“A court must have the power to decide the claim before it

(subject-matter jurisdiction) and power over the parties before it

(personal jurisdiction) before it can resolve a case. See Ruhrgas

AG v. Marathon Oil Co., 526 U.S. 574, 583–585, 119 S.Ct. 1563, 143

L.Ed.2d 760 (1999).” Lightfoot v. Cendant Mortg. Corp., 137 S.

Ct. 553, 562 (2017). While subject-matter jurisdiction is not

disputed in this case, defendant Abraamyan asserts that the Court

lacks personal jurisdiction over him, and therefore the FAC must

be dismissed in its entirety as to him. (Doc. #49, pp. 16-20.)

"Federal courts ordinarily follow state law in determining

the bounds of their jurisdiction over persons." Daimler AG v.

Bauman, 571 U.S. 117, 125 (2014). The Supreme Court has recognized

two kinds of personal jurisdiction: “general (sometimes called

all-purpose) jurisdiction and specific (sometimes called case-

linked) jurisdiction.” Ford Motor Co. v. Montana Eighth Judicial

Dist. Court, 141 S. Ct. 1017, 1024 (2021) (citation omitted.) The

Supreme Court has summarized the differences:

A state court may exercise general jurisdiction only

when a defendant is essentially at home in the State.

General jurisdiction, as its name implies, extends to

any and all claims brought against a defendant. Those

claims need not relate to the forum State or the

defendant's activity there; they may concern events and

conduct anywhere in the world. But that breadth imposes

a correlative limit: Only a select set of affiliations

with a forum will expose a defendant to such sweeping

jurisdiction. In what we have called the “paradigm”

case, an individual is subject to general jurisdiction

in her place of domicile.

. . .

Specific jurisdiction is different: It covers defendants

less intimately connected with a State, but only as to

a narrower class of claims. The contacts needed for this

kind of jurisdiction often go by the name “purposeful

availment.” The defendant, we have said, must take “some

act by which [it] purposefully avails itself of the

privilege of conducting activities within the forum

State.” The contacts must be the defendant's own choice

and not “random, isolated, or fortuitous.” They must

show that the defendant deliberately “reached out

beyond” its home—by, for example, “exploi[ting] a

market” in the forum State or entering a contractual

relationship centered there. Yet even then—because the

defendant is not “at home”—the forum State may exercise

jurisdiction in only certain cases. The plaintiff ’s

claims, we have often stated, “must arise out of or

relate to the defendant's contacts” with the forum. Or

put just a bit differently, “there must be ‘an

affiliation between the forum and the underlying

controversy, principally, [an] activity or an occurrence

that takes place in the forum State and is therefore

subject to the State's regulation.’”

Ford Motor Co., 141 S. Ct. at 1024–25 (internal citations and some

punctuation omitted.) Florida's long-arm statute provides for

both specific and general personal jurisdiction. Fla. Stat. §§

48.193(1)-(2); Madara v. Hall, 916 F.2d 1510, 1516 n.7 (11th Cir.

1996).

Procedurally, plaintiff is required to allege sufficient

facts in the complaint to make out a prima facie case of personal

jurisdiction. Louis Vuitton Malletier, S.A. v. Mosseri, 736 F.3d

1339, 1350 (11th Cir. 2013)) (citation omitted). A defendant may

move to dismiss a claim by asserting the lack of personal

jurisdiction. Fed. R. Civ. P. 12(b)(2). When a defendant challenges

personal jurisdiction by submitting affidavits or other competent

evidence in support of its position, the burden traditionally

shifts back to the plaintiff to produce evidence supporting

jurisdiction. Posner v. Essex Ins. Co., 178 F.3d 1209, 1214-15

(11th Cir. 1999)(when “the burden shifts back to the plaintiff,

this time requiring plaintiff to prove — not merely allege —

jurisdiction by affidavits, testimony, or other documents.”).

Here, the FAC alleges the Court has personal jurisdiction

over each defendant. (Doc. #47, ¶ 36.) The FAC alleges that

Abraayman is a resident of California over whom the Court may

exercise personal jurisdiction pursuant to the general and

specific jurisdiction provisions of Fla. Stat. § 48.193(1) & (2).

(Doc. #47, ¶ 36.) The FAC continues:

Defendants have intentionally and voluntarily conducted

business in the State of Florida on a continuous,

systematic and substantial basis from at least 2013 to

2019, having also sold infringing products to Galaxy’s

existing customers and potential customers within the

State of Florida during this period. From at least 2011—

2019, Defendants have consistently, continuously, and

systematically conducted business in the State of

Florida, made substantial sales to, and purchases from,

Florida residents, consumers, and companies, including

Plaintiff. Defendant Abraamyan has personally

participated in such activities within and aimed at

Florida residents and consumers.

(Doc. #47, ¶ 89.) The FAC asserts that the Court has personal

jurisdiction over defendant Abraamyan because “EZ inflatables is

the alter ego of Abraamyan and the instrument through which

Abraamyan has committed and continues to commit unlawful, tortious

acts of . . . trade dress infringement . . ., including continuous

and systematic marketing, offers for sale and sales of products,

including products, within and to Florida from 2013 to 2019.” (Id.

at ¶¶ 92, 89, 104, 155, 160.) Plaintiff alleges that defendant

Abraamyan is directing and controlling activities of trade dress

infringement and unfair competition committed by and through his

alter ego, EZ Inflatables, in Florida, from which Abraamyan derives

personal benefit including financial gain, and personally

participates in the unlawful activities. (Id. at ¶¶ 37, 83.) The

FAC also alleges that Abraamyan, as the sole owner of EZ

Inflatables (his alter ego), has actively participated in,

directed, controlled, and supervised the planning, marketing and

sales of EZ Inflatables in the State of Florida, which includes

attending trade shows such as the IAAPA Expo in Orlando, Florida

from 2013 to 2019, advertising, marketing and selling of goods on

EZ Inflatable’s website and on social media websites, transporting

and delivering company products while in the State of Florida, and

selling infringing products to multiple Florida companies. (Id. at

¶¶ 37, 83, 93, 95, 211.) In doing these activities, Plaintiff

asserts that Defendants, including Abraamyan, have intentionally

targeted consumers in the State of Florida. (Id. at ¶ 83.)

Defendant Abraamyan has filed a declaration in opposition to

personal jurisdiction. (Doc. #49-1.) In his declaration, Abraamyan

maintains that (1) he does not and has never resided in Florida;

(2) he does not own any property in Florida; (3) he does not own,

use, possess, or hold a mortgage, lien, or any real property in

Florida; (4) he does not have any bank accounts in Florida; (5)

neither he nor EZ Inflatables have any contracts requiring

performance in Florida; (6) he does not travel to Florida for

personal reasons, and that when he did travel to Florida, it was

for business related to EZ Inflatables; (7) neither he nor EZ

Inflatables maintain any licenses to conduct business in Florida,

and do not have offices, facilities, agent, employees, materials,

or products located within the State; and (8) neither he nor EZ

Inflatables have ever targeted Galaxy’s business in Florida. (Id.

at ¶¶ 3-4, 6-7, 10, 12, 16-17, 26.) Finally, Abraamyan asserts

that even though he has attended the IAAPA Expo on behalf of EZ

Inflatables, the Expo is not directed at Florida or any of its

residents because it is a global trade show. (Id. at ¶ 27.)

Abraamyan argues that Plaintiff has not met the high threshold of

showing he is subject to general jurisdiction in a Florida court.

(Doc. #49, p. 19.) See Helicopteros Nacionales de Colombia, S.A.

v. Hall, 466 U.S. 408, 414 (1984)("It is clear that a very high

threshold must be met in order for general jurisdiction to be

exercised over a nonresident defendant in Florida.").

In response, Plaintiff points to Defendants’ Amended

Responses to Plaintiff’s Request For Admissions, in which

Defendants admit that they sold products to purchasers or took

purchase orders during the IAAPA Expo in Florida, at least once

between 2013 and 2019, and that EZ Inflatables sold at least five

products per year into Florida for at least three of the past five

years. (Doc. #57-8, pp. 6-7, 52.) Plaintiff also relies upon

Robin Whincup’s1 declaration, which asserts that Abraamyan is the

moving force behind EZ Inflatables and that Whincup has personal

knowledge that Defendants have purchased and sold products to

Florida consumers, including Galaxy and Galaxy’s customers, each

year from at least 2013-2017. (Doc. #57-4, ¶ 13.) Attached to

Whincup’s declaration is a spreadsheet dated January 21, 2020,

that Whincup avers is evidence of systematic and continuous sales

by and between Defendants and Galaxy, and Florida.2 (Id. at ¶ 14;

Doc. #57-5, pp. 3-7.) In addition, Plaintiff provides copies of

three websites of Florida companies that sell Defendants’

infringing products, along with Twitter posts that show promotion

1 Robin Whincup is the President and founder of Galaxy, which

is headquartered in Port Charlotte, Florida. (Doc. #47, ¶¶ 2-4,

32; Doc. #57-4, p. 2.)

2 The sales in the spreadsheet purportedly occurred from 2011

through 2017. (Doc. #57-5, pp. 3-7.)

of Defendants’ products, including a promotion in Fort Myers,

Florida. (Doc. #57-6, pp. 2-15, 19-20, 22, 28, 33, 35-57.)

A. General Personal Jurisdiction

A Florida court exercises general personal jurisdiction over

nonresident defendant who is "engaged in substantial and not

isolated activity within this state, whether such activity is

wholly interstate, intrastate, or otherwise, [and] whether or not

the claim arises from that activity." Fla. Stat. § 48.193(2);

Fraser v. Smith, 594 F.3d 842, 849 (11th Cir. 2010). "In order to

establish that [defendant] was engaged in substantial and not

isolated activity in Florida, the activities of [defendant] must

be considered collectively and show a general course of business

activity in the State for pecuniary benefit." Stubbs v. Wyndham

Nassau Resort & Crystal Palace Casino, 447 F.3d 1357, 1361 (11th

Cir. 2006). Section 48.193(2)'s "substantial and not isolated

activity" requirement is "the functional equivalent of the

continuous and systematic contact requirement for general

jurisdiction under the Fourteenth Amendment" to the United States

Constitution. Meier ex rel. Meier v. Sun Int'l Hotels, Ltd., 288

F.3d 1264, 1269 (11th Cir. 2002). Thus, “[t]he reach of this

provision extends to the limits on personal jurisdiction imposed

by the Due Process Clause of the Fourteenth Amendment.” Fraser,

594 F.3d at 846.

Plaintiff relies heavily on the alter-ego theory in an effort

to establish personal jurisdiction. Under Florida law, to pierce

the corporate veil under an alter-ego theory, a plaintiff must

allege: “(1) the shareholder dominated and controlled the

corporation to such an extent that the corporation's independent

existence was in fact non-existent and the shareholders were in

fact alter egos of the corporation; (2) the corporate form must

have been used fraudulently or for an improper purpose; and, (3)

the fraudulent or improper use of the corporate form caused injury

to the claimant.” Molinos Valle Del Cibao, C. por A. v. Lama, 633

F.3d 1330, 1349 (11th Cir. 2011). See also WH Smith, PLC v.

Benages & Assocs., Inc., 51 So.3d 577, 581 (Fla. Dist. Ct. App.

2010). The FAC does not allege that the corporate form was used

for an improper purpose or that the improper use of the corporate

form caused injury to Plaintiff. The Court finds that Plaintiff

has not plausibly alleged facts to support its alter-ego theory

which would suffice to pierce the corporate veil. Eitzen Chem.

(Singapore) PTE, Ltd. v. Carib Petroleum, 749 F. App'x 765, 773

(11th Cir. 2018) (denying a veil-piercing claim where it was not

shown that the corporation was organized for a fraudulent or

illegal purpose or that the corporate form was itself misused.)

The Court finds that general jurisdiction is not otherwise

established over defendant Abraamyan. The paradigm forum for

Abraamyan is California, his state of domicile. Ford Motor Co.,

141 S. Ct. at 1025. Galaxy’s spreadsheet of purported sales

between Galaxy and Defendants from 2011 through 2017 shows there

were numerous sales, but not to the extent that they were

“continuous and systematic.” See Croft, 2010 U.S. Dist. LEXIS

40592, at *8 (where the defendant derived sales and profits from

Florida residents on at least thirty-nine occasions over a three

year span, with at least 6% of worldwide sales going to Florida

residents, the court held it was a classic case of “sporadic and

insubstantial contacts” insufficient for general jurisdiction).

Likewise, evidence of Defendants’ website, Twitter feed, or three

companies in Florida that sell Defendants’ infringing products is

insufficient to show that Abraamyan has engaged in a general course

of business activity in the State for pecuniary benefit. See,

e.g., Trustees of Columbia Univ. In City of New York v. Ocean

World, S.A., 12 So. 3d 788, 795 (Fla. 4th DCA 2009) ("The mere

existence of a website does not show that a defendant is directing

its business activities towards every forum where the website is

visible.") “To hold otherwise would "render any individual or

entity that created . . . a website subject to personal

jurisdiction' for virtually any matter." Regent Grand Mgmt., Ltd.

v. Tr. Hosp'y LLC, No. 18-21445-Civ, 2019 U.S. Dist. LEXIS 4829,

at *17 (S.D. Fla. Jan. 9, 2019). Finally, Abraamyan’s attendance

at trade shows in Florida and marketing the alleged infringing

products is insufficient to warrant the exercise of general

jurisdiction over Abraamyan. See Schulman v. Inst. for Shipboard

Educ., 624 F. App'x 1002, 1005 (11th Cir. 2015) (citing Goodyear

Dunlop Tires Operations, S.A. v. Brown, 564 U.S. 915, 919

(2011))(finding that marketing efforts and attendance at a Florida

trade show, even when coupled with sales to Florida dealers, do

not render the defendant "essentially at home.”).

Considering the totality of all these activities and drawing

all reasonable inferences in favor of Galaxy, the Court finds that

Abraamyan’s contacts with Florida are insufficient to confer

general personal jurisdiction under the Florida long-arm statute’s

general jurisdiction provision.

B. Specific Personal Jurisdiction

Specific jurisdiction authorizes a Court to exercise

jurisdiction over a nonresident defendant when the cause of action

arises from or relates to the defendant's actions within a state.

Fla. Stat. § 48.193(1); Louis Vuitton, 736 F.3d at 1352. Florida

Statute § 48.193(1)(a)(2) permits jurisdiction over a nonresident

defendant who commits a tort outside of the state that causes

injury inside the state of Florida. Licciardello v. Lovelady, 544

F.3d 1280, 1283 (11th Cir. 2008). This provision does not require

a tortfeasor's "physical presence in Florida is not required to

obtain personal jurisdiction". Binder v. Aeschlimann, No. 17-

80290-CIV, 2019 U.S. Dist. LEXIS 51869, at *13 (S.D. Fla. Mar. 25,

2019); Internet Sols. Corp. v. Marshall, 557 F.3d 1293, 1296 (11th

Cir. 2009). "It is well settled in the Eleventh Circuit that

trademark claims under the Lanham Act allege tortious acts for

long-arm purposes[.]" PG Creative Inc. v. Affirm Agency, LLC, No.

18-cv-24299, 2019 U.S. Dist. LEXIS 189001, 2019 WL 5684219, at *4

(S.D. Fla. Oct. 31, 2019); see also Hard Candy, LLC v. Hard Candy

Fitness, LLC, 106 F. Supp. 3d 1231, 1239 (S.D. Fla. 2015)

(recognizing trademark infringement under 15 U.S.C. § 1125(a), and

common law unfair competition involve "tortious acts" under the

long-arm statute).

Abraamyan argues he has not engaged in tortious conduct

expressly aimed at Galaxy in Florida. But even if Abraamyan had

done so, Defendants assert that his role as a corporate

representative with EZ Inflatables does not subject him to specific

personal jurisdiction. (Doc. #49, pp. 16-18; Doc. #49-1, pp. 2-

5.) The crux of Defendants’ argument is that Abraamyan is protected

under the corporate shield doctrine. As this court has previously

explained,

[i]n Florida, the corporate shield doctrine, also known

as the "fiduciary shield" doctrine, provides that "acts

performed by a person exclusively in his corporate

capacity not in Florida but in a foreign state may not

form the predicate for the exercise of personal

jurisdiction over the employee in the forum state."

Kitroser v. Hurt, 85 So. 3d 1084, 1088 (Fla. 2012). The

rationale behind the doctrine is that it "may be unfair

to force an individual to defend an action filed against

him personally in a forum with which his only relevant

contacts are acts performed totally outside the forum

state and not for his own benefit but for the exclusive

benefit of his employer." Id. However, the defendants'

argument is misplaced, as the doctrine does not apply to

intentional torts. See Mosseri, 736 F.3d at 1355

("[U]nder Florida law, this corporate shield doctrine is

inapplicable where the corporate officer commits

intentional torts."); Black v. Bryant, 905 F. Supp.

1046, 1052 (M.D. Fla. 1995) (noting that in accordance

with Florida's long-arm statute, "a non-resident

corporate officer may be haled into court in Florida if

it is alleged that he personally committed an

intentional tort expressly aimed at the plaintiff in the

forum state.").

Skypoint Advisors, LLC v. 3 Amigos Prods. LLC, No. 2:18-cv-356-

FtM-29MRM, 2019 U.S. Dist. LEXIS 124134, at *23-24 (M.D. Fla. July

25, 2019). Since the FAC alleges that defendant Abraamyan actively

and knowingly engaged in an intentional tortious act of trade dress

infringement in Florida (Doc. #47, ¶¶ 87-90, 93, 155-56, 212), the

corporate shield doctrine is not applicable. Plaintiff has

plausibly pled sufficient facts to demonstrate the Court has

specific personal jurisdiction over Abraamyan.

C. Constitutional Due Process

The remaining question is whether exercising jurisdiction

over Abraamyan comports with the Due Process Clause of the

Fourteenth Amendment. To determine whether exercising specific

jurisdiction comports with due process, courts employ a three-part

test, which examines:

(1) whether the plaintiff's claims "arise out of or

relate to" at least one of the defendant's contacts with

the forum; (2) whether the nonresident defendant

"purposefully availed" himself of the privilege of

conducting activities within the forum state, thus

invoking the benefit of the forum state's laws; and (3)

whether the exercise of personal jurisdiction comports

with "traditional notions of fair play and substantial

justice."

Louis Vuitton, 736 F.3d at 1355.

With respect to the first prong, Defendants argue that

Abraamyan’s contacts with Florida are not the “but-for cause” of

Plaintiff’s injuries, and that any alleged acts substantially

occurred in California. (Doc. #49, p. 20.) A "tort 'arises out of

or relates to' the defendant's activity in a state only if the

activity is a 'but-for' cause of the tort." Waite v. All

Acquisition Corp., 901 F.3d 1307, 1314 (11th Cir. 2018). The FAC

alleges defendants EZ Inflatables and Abraamyan have each

committed unlawful, tortious acts of trade dress infringement, and

have marketed, advertised, and sold infringing products in the

State of Florida, which has caused harm to Galaxy and consumers

within Florida. (Doc. #47, ¶¶ 37, 41-42, 92.) The Court finds

Abraamyan’s alleged activities in Florida are the but-for cause of

Plaintiff’s alleged injuries and claims, satisfying the first

prong.

Turning to the second prong, the FAC alleges that EZ

Inflatables and Abraamyan have intentionally targeted customers in

Florida through their website, social media, direct marketing, and

regular attendance at trade shows, and have marketed and sold

products in the State of Florida through these channels. (Doc.

#47, ¶¶ 82-83, 89.) Defendants argue that website sales are “too

narrow a thread” on which to find meaningful contact (Doc. #49, p.

20), but the Court is not persuaded. See, e.g., GLD, LLC v. Gold

Presidents, LLC, No. 20-21617-CIV-MORE, 2021 U.S. Dist. LEXIS

8158, at *9 (S.D. Fla. Jan. 15, 2021) (finding purposeful availment

existed where the defendant created a website to sell watches that

infringed upon the plaintiff’s trade dress, which was accessible

in Florida, even though no sales were completed); EasyGroup Ltd.

v. Skyscanner, Inc., No. 20-20062-CIV, 2020 U.S. Dist. LEXIS

166425, at *29-30 (S.D. Fla. Sept. 11, 2020) ("Easyfly purposefully

availed itself of the privileges of conducting business in Florida.

Easyfly clearly does business over the Internet in the United

States and Florida; is willing to (and does) directly sell its

services to Florida customers; has not limited its sales to any

region or area; and accepts payment from Florida customers.");

Rice v. PetEdge, Inc., 975 F. Supp. 2d 1364, 1371 (N.D. Ga. 2013)

(where the defendant sold trademarked products online into the

forum state and it was defendant’s only contact, the court found

"[d]efendant's creation of a website that allows Georgia customers

to directly purchase its products constitutes purposeful

availment, as defendant financially benefits from doing business

in Georgia.") The Court finds Abraamyan purposefully availed

himself of the privilege of conducting activities within Florida,

satisfying the second prong. Louis Vuitton, 736 F.3d at 1355.

As for the third and final prong, Defendants argue that given

Abraamyan’s non-existent contacts with Florida outside of his role

with EZ Inflatables, fair play and substantial justice merit

dismissal of all claims against him. (Doc. #49, p. 20.) The "fair

play and substantial justice factor is to be applied sparingly."

EasyGroup Ltd., 2020 U.S. Dist. LEXIS 166425, at *33. This inquiry

considers five "fairness factors" to determine whether exercising

jurisdiction over a defendant is reasonable: (1) the burden on the

defendant of litigating in the forum, (2) the forum state's

interest in adjudicating the dispute, (3) the plaintiff's interest

in obtaining convenient and effective relief, (4) the interstate

judicial system's interest in obtaining the most efficient

resolution of controversies, and (5) states' shared interest in

furthering fundamental social policies. Meier ex rel., 288 F.3d at

1276.

Upon careful consideration of each factor, the Court finds

Defendants have not “present[ed] a compelling case that the

presence of some other considerations would render jurisdiction

unreasonable.” Burger King Corp. v. Rudzewicz, 471 U.S. 462, 477

(1985). Litigating this case in Florida would not be unfair in

light of modern methods of transportation and communication,

Maurer Rides USA, Inc. v. Beijing Shibaolai Amusement Equip. Co.,

Ltd., No. 6:10-cv-1718, 2014 U.S. Dist. LEXIS 100989, 2014 WL

3687098, at *5 (M.D. Fla. July 24, 2014), and his routine travel

to Florida. Furthermore, “Florida has a very strong interest in

affording its residents a forum to obtain relief from intentional

misconduct of nonresidents causing injury in Florida.”

Licciardello, 544 F.3d at 1288. The FAC has sufficiently alleged

that Plaintiff has been injured by the intentional misconduct of

Abraamyan, which was expressly aimed at a Florida corporation.

Galaxy should not have to travel to California to seek redress

from persons who knowingly caused injury in Florida. See id.

(noting that “[t]he Supreme Court concluded that ‘[a]n individual

injured in California need not go to Florida to seek redress from

persons who, though remaining in Florida, knowingly cause the

injury in California.’"). Finally, Galaxy “has a strong interest

in obtaining convenient and effective relief in order to protect

its company's reputation, resolve any consumer confusion, and

maintain the value of its trademark[s]." Spectrum Image, Inc. v.

Makozy, No. 19-21702-Civ, 2019 U.S. Dist. LEXIS 143346, 2019 WL

3997164, at *3 (S.D. Fla. Aug. 23, 2019) (alteration added;

citation omitted). The Court finds this is not "one of those rare

cases in which minimum requirements inherent in the concept of

fair play and substantial justice defeat the reasonableness of

jurisdiction." U.S. S.E.C. v. Carrillo, 115 F.3d 1540, 1547 (11th

Cir. 1997) (quotation marks omitted).

Plaintiff has satisfied the specific personal jurisdiction

portion of Florida’s long-arm statute, and exercising specific

personal jurisdiction over defendant Abraamyan does not offend due

process. Accordingly, Defendant’s motion to dismiss all claims

against Abraamyan for lack of personal jurisdiction is denied.

III.

Defendant EZ Inflatable argues that Count VI through Count

VIII of the FAC should be dismissed for failure to state a claim.

(Doc. #49, pp. 1-15.) For the reasons set forth below, that

portion of the motion is denied.

Under Federal Rule of Civil Procedure 8(a)(2), a Complaint

must contain a "short and plain statement of the claim showing

that the pleader is entitled to relief." Fed. R. Civ. P.

8(a)(2). This obligation "requires more than labels and

conclusions, and a formulaic recitation of the elements of a cause

of action will not do." Bell Atl. Corp. v. Twombly, 550 U.S. 544,

555, 127 S. Ct. 1955, 167 L. Ed. 2d 929 (2007) (citation omitted).

To survive dismissal, the factual allegations must be "plausible"

and "must be enough to raise a right to relief above the

speculative level." Id. See also Phx. Entm't Partners, LLC v.

Casey Rd. Food & Bev., LLC, 728 F. App'x 910, 912 (11th Cir.

2018). This requires "more than an unadorned, the-defendant-

unlawfully-harmed-me accusation." Ashcroft v. Iqbal, 556 U.S. 662,

678, 129 S. Ct. 1937, 173 L. Ed. 2d 868 (2009) (citations omitted).

In deciding a Rule 12(b)(6) motion to dismiss, the Court must

accept all factual allegations in a complaint as true and take

them in the light most favorable to plaintiff, Erickson v. Pardus,

551 U.S. 89, 127 S. Ct. 2197, 167 L. Ed. 2d 1081 (2007), but

"[l]egal conclusions without adequate factual support are entitled

to no assumption of truth." Mamani v. Berzaín, 654 F.3d 1148, 1153

(11th Cir. 2011) (citations omitted). "Threadbare recitals of the

elements of a cause of action, supported by mere conclusory

statements, do not suffice." Iqbal, 556 U.S. at 678. "Factual

allegations that are merely consistent with a defendant's

liability fall short of being facially plausible." Chaparro v.

Carnival Corp., 693 F.3d 1333, 1337 (11th Cir. 2012) (internal

citations omitted). Thus, the Court engages in a two-step

approach: "When there are well-pleaded factual allegations, a

court should assume their veracity and then determine whether they

plausibly give rise to an entitlement to relief." Iqbal, 556 U.S.

at 679.

A. Counts VI and Count VII

The FAC alleges claims of trade dress infringement under

§43(a) of the Lanham Act (Count VI) and under Florida common law

(Count VII). (Doc. #47, pp. 55-59.) "The Lanham Act provides

national protection of trademarks in order to secure to the owner

of the mark the goodwill of his business and to protect the ability

of consumers to distinguish between competing producers." Park 'N

Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 198 (1985).

See also Savannah Coll. of Art & Design, Inc. v. Sportswear, Inc.,

872 F.3d 1256, 1260 (11th Cir. 2017). Section 43(a) of the Lanham

Act creates a federal cause of action commonly referred to as trade

dress infringement. FIU Bd. of Trs. v. Fla. Nat'l Univ., Inc.,

830 F.3d 1242, 1265 (11th Cir. 2016). Section 43(a) states:

(1) Any person who, on or in connection with any goods

or services, . . . uses in commerce any word, term, name,

symbol, or device, . . . or any false designation of

origin, false or misleading description of fact, or

false or misleading representation of fact, which —

(A) is likely to cause confusion, or to cause

mistake, or to deceive as to the affiliation,

connection, or association of such person with

another person, or as to the origin, sponsorship, or

approval of his or her goods, services, or

commercial activities by another person .

. .

shall be liable in a civil action by any person who

believes that he or she is or is likely to be damaged by

such act.

15 U.S.C. § 1125(1)(A). Trade dress constitutes a "symbol" or

"device" by which the goods of the applicant may be distinguished

from the goods of others. Wal-Mart Stores, Inc. v. Samara Bros.,

529 U.S. 205, 210-11 (2000). Trade dress is defined as "the total

image of a product," which "may include features such as size,

shape, color or color combinations, texture, graphics, or even

particular sales techniques." Yellowfin Yachts, Inc. v. Barker

Boatworks, LLC, 898 F.3d 1279, 1288 (11th Cir. 2018) (quoting John

H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (11th

Cir. 1983)). A typical trade dress action involves “a good's

packaging or labeling, but the design of a product, or a feature

of a product, may also constitute protectable trade dress.”

Yellowfin Yachts, Inc., 898 F.3d at 1288.

A plaintiff must allege and ultimately prove three elements

to prevail on a trade dress claim under the Act: “1) its trade

dress is inherently distinctive or has acquired secondary meaning,

2) its trade dress is primarily non-functional, and 3) the

defendant's trade dress is confusingly similar.” Id. "As all three

elements are necessary for a finding of trade dress infringement,

any one could be characterized as threshold." Dippin' Dots, Inc.

v. Frosty Bites Distribution, LLC, 369 F.3d 1197, 1202 (11th Cir.

2004).

“Courts may use an analysis of federal infringement claims as

a 'measuring stick' in evaluating the merits of state law claims

[of infringement]." Suntree Techs., Inc. v. Ecosense Int'l, Inc.,

693 F.3d 1338, 1345 (11th Cir. 2012). Thus, the standard for

Plaintiff’s state law trade dress infringement claim is the same

as under the Lanham Act. See ZP NO. 314, LLC v. ILM Cap., LLC, No.

16-00521-B, 2019 U.S. Dist. LEXIS 170244, at *26 (S.D. Ala. Sep.

30, 2019). The Court will therefore consider together whether

Plaintiff has stated a plausible federal and Florida common law

claim for trade dress infringement.

Defendants assert that Plaintiff’s trade dress counts fail

for four reasons. The Court will address each reason in turn.

(1) Failure to Allege Features Constituting Trade Dress

Defendants argue that Plaintiff has failed to state a

plausible trade dress claim because the FAC does not allege “a

sufficient description of what the trade dress consists of and on

what line of goods the amorphous Trade Dress is meant to serve as

a source indicator.” (Doc. #49, pp. 5-6.)

To describe the allegedly infringed trade dress, the FAC

provides the following image:

( ited States of J ter;,

United states Patent and Trabemark Otfice qd

Reg. No, 5,730,087 Gay da la (FLORIDA CORPORATHEN)

Registered Apr. 16, 201) P= Chain: FLomzA Sie

Int. 28 SHittjvitu£<

lrademark FIRST USE 9-01.20); BS COMMERCE 4-aLsr8

(Doc. #47, JF 8.) The FAC asserts that its trade dress designs

consist of

a well-defined black and yellow repeating pattern on the

upper baffles bordering the profiles and upper outline

of its product designs, including upon the upper

sections of the sidewalls, lower walls, slide walls and

arches creating an overall visual connection and

relationship between the curves, tapers, and lines of

the products.

(Id. at G@ 10.) In addition to its yellow and black trade dress,

the FAC alleges that it has a multi-colored trade dress design

23

that includes specific configuration and use of color combinations

including:

yellow, black, green, and gray additional features of

its products in connection with the “floor panels (which

are typically primarily green), inner and out sidewall

baffles (which are typically alternating solid bands of

yellow, grey and/or black baffles typically configured

below the repeating pattern of back and yellow stripes),

obstacles, side walls and bordering in combination and

in relation to the yellow and black repeating pattern of

stripes which appear on the upper border baffles and

cylindrical elements . . .

(Id. at ¶ 11.) The FAC associates the trade dress design with the

products Plaintiff manufactures, markets, offers for sale, and

sells such as fitness equipment, inflatables, obstacle courses,

amusement park rides, and carnival rides. (Id. at ¶ 12.) The FAC

also provides several pictures that depict Galaxy’s alleged trade

dress. See (Id., pp. 17-21 (Figures 1-6, 9.))

“A plaintiff must describe with words the distinctive feature

of trade dress, and a plaintiff who seeks protection for a line of

products ‘faces the particularly difficult challenge of showing

that the appearance of its several products is sufficiently

distinct and unique to merit protection as a recognizable trade

dress.’” Yellowfin Yachts, Inc. v. Barker Boatworks, LLC, 237 F.

Supp. 3d 1230, 1235 (M.D. Fla. 2017). “A plaintiff's inability to

identify and describe a distinctive, aesthetic feature exposes a

trade-dress claim too vague to succeed.” Id.; see, e.g., Yellowfin

Yachts, Inc. v. Barker Boatworks, LLC, No. 8:15-cv-990-T-23TGW,

2015 U.S. Dist. LEXIS 149754, at *5 (M.D. Fla. Nov. 4, 2015)

(citing to cases in finding that plaintiff’s pictures and diagrams

in the complaint were sufficient to describe the alleged trade

dress in defeating a motion to dismiss); Someecards v. SnarkeCards,

LLC, 2014 U.S. Dist. LEXIS 108264, 2014 WL 3866024, at *2 (W.D.N.C.

Aug. 6, 2014)("At the pleadings stage, pictures of trade dress

alone may provide the necessary description of trade dress.");

Weber-Stephen Prods. LLC v. Sears Holding Corp., 2013 U.S. Dist.

LEXIS 153806, 2013 WL 5782433, at *4 (N.D. Ill. Oct. 25,

2013)(holding that "photographs and . . . figures" satisfied the

pleading requirements even though the complaint failed to "clarify

exactly what it mean[t] by 'shroud riveted band design.'").

At this stage of the proceedings, the Court finds that the

allegations in the FAC regarding infringement of Plaintiff’s trade

dress are sufficient to identify a protectable interest. See Hako-

Med USA, Inc. v. Axiom Worldwide, Inc., No. 8:06-CV-1790-T-27EAJ,

2006 U.S. Dist. LEXIS 94240, 2006 WL 3755331, at *11 (M.D. Fla.

Nov. 15, 2006) ("Under . . . the Lanham Act . . . 'the design of

a product itself may constitute protectable trade dress.'"

(quoting John H. Harland Co., 711 F.2d at 980). The FAC, including

the pictures of the alleged trade dress, sufficiently identifies

and describes distinctive, aesthetic features of Galaxy’s trade

dress, such that Plaintiff’s “trade-dress claim [is not] too vague

to succeed.” Yellowfin Yachts, Inc., 237 F. Supp. 3d at 1235.

(2) Distinctiveness of Galaxy’s Trade Dress

Defendants also argue that the FAC fails to state a claim for

trade dress infringement because it makes only conclusory

allegations that its trade dress is inherently distinct and

Plaintiff cannot show the trade dress has acquired secondary

meaning. (Doc. #49, pp. 7-11.) “A trade dress is distinctive and

capable of being protected if it is either (1) inherently

distinctive or (2) has acquired distinctiveness through secondary

meaning.” Tempur-Pedic N. Am., LLC v. Mattress Firm, Inc., No.

8:18-cv-2147-T-33SPF, 2019 U.S. Dist. LEXIS 89803, at *10 (M.D.

Fla. Jan. 11, 2019) (citing Two Pesos, Inc. v. Taco Cabana, Inc.,

505 U.S. 763, 769 (1992) (citation omitted)). For the reasons set

forth below, this portion of the motion is denied.

(a) Inherently Distinctive Trade Dress

A trade dress is inherently distinctive when its "intrinsic

nature serves to identify a particular source of a product." Vital

Pharm., Inc., 472 F. Supp. 3d at 1250; Tempur-Pedic N. Am., LLC,

2019 U.S. Dist. LEXIS 89803, at *10. “The ultimate question in

determining whether a product's trade dress is distinctive is not

whether ‘each element or part’ of the dress is distinctive, but

rather whether the combination of elements, taken ‘as a whole,’

conveys a unique impression.” Vital Pharm., Inc., 472 F. Supp. 3d

at 1251.

The FAC alleges that Galaxy chose to adopt and utilize a

specific trade dress which is “inherently distinctive in the

attractions and amusement industry.” (Doc. #47, ¶ 45.) The FAC

alleges that Plaintiff’s trade dress is applied to its products in

a manner “which wraps certain elements, including baffles,

cylindrical elements, borders, and booms . . . in a manner akin to

product packaging, creating a striking, vivid, recognizable and

consistent overall source identifying, commercial impression of

its products.” (Id. at ¶ 51.) The FAC also alleges that “the

placement, stylization, design, combination, configuration, and

specific use of a unique color scheme [well-defined yellow and

black repeating pattern of stripes, and green and gray] as part of

Galaxy’s trade dress creates a unique overall commercial

impression in the minds of consumers which serves to identify

Galaxy as the source origin of its products and to set Galaxy’s

products apart from others in the attractions and amusement

marketplace.” (Id. at ¶¶ 10, 46, pp. 17-21 (Figures 1-4, 7, 9,11.))

The FAC asserts that Galaxy’s trade dress is entitled to protection

under the Act because it is “distinctive, non-functional, and has

acquired secondary meaning.” (Id. at ¶¶ 10, 191.)

Defendants argue that the Court should ignore Plaintiff’s

mischaracterization that its trade dress is akin to “product

packaging” since Plaintiff is only making this allegation because

the product design cannot be inherently distinctive. (Doc. #49, p.

8.) In ruling on a motion to dismiss, the Court must accept all

factual allegations in the FAC as true and take them in the light

most favorable to Plaintiff. Erickson, 551 U.S. at 93-94. The FAC

has clearly alleged that Plaintiff’s trade dress is applied to its

products in a manner akin to product packaging. While defendants

may disagree that such allegations are accurate, that dispute is

for another day.

Defendants also argue that irrespective of product packaging,

no color mark can ever be inherently distinctive. (Doc. #49, p.

9.) The Court disagrees. The Supreme Court has made clear that

inherent distinctiveness turns on whether consumers would be

predisposed to "equate the [color] feature with the source." Wal-

Mart Stores, 529 U.S. at 211. While it is true that "color is

usually perceived as ornamentation," In re Owens-Corning Fiberglas

Corp., 774 F.2d 1116, 1124 (Fed. Cir. 1985), “a distinct color-

based product packaging mark can indicate the source of the goods

to a consumer, and, therefore, can be inherently distinctive.” In

re Forney Indus., 955 F.3d 940, 945 (Fed. Cir. 2020)(holding that

the “use of color in product packaging can be inherently

distinctive . . . only if specific colors are used in combination

with a well-defined shape, pattern, or other distinctive

design.”).

Plaintiff has sufficiently alleged it employs unique, well-

defined overall color scheme which makes up Galaxy’s trade dress

and serves to identify Galaxy as the source origin of its products

to consumers and to set Galaxy’s products apart from others in the

attractions and amusement marketplace. See Wal-Mart Stores, 529

U.S. at 211. The Court finds the FAC adequately and plausibly

alleges that Galaxy’s trade dress is inherently distinctive.

(b) Acquired Secondary Meaning

Defendants also argue that the FAC does not sufficiently

allege that Galaxy’s trade dress has acquired secondary meaning

and fails to allege that its trade dress acquired secondary meaning

prior to Defendants’ use of Galaxy’s trade dress. (Doc. #49, pp.

10-11.) The Court finds the FAC sufficient as to its allegations

concerning acquired secondary meaning.

Secondary meaning "occurs when, in the minds of the public,

the primary significance of [the] trade dress is to identify the

source of the product rather than the product itself.'" Miller's

Ale House, Inc. v. Boynton Carolina Ale House, LLC, 702 F.3d 1312,

1322 (11th Cir. 2012) (quoting Wal-Mart Stores, 529 U.S. at 211).

Relevant factors in determining whether a trade dress has acquired

secondary meaning are:

(1) The length and manner of its use; (2) the nature and

extent of advertising and promotion; (3) the efforts

made by the plaintiff to promote a conscious connection

in the public's mind between the trade dress and the

plaintiff's business; and (4) the extent to which the

public actually identifies the trade dress with the

plaintiff's products.

GLD, LLC, 2021 U.S. Dist. LEXIS 8158, at *21; Tropic Ocean Airways,

Inc. v. Floyd, 598 F. App'x 608, 612 (11th Cir. 2014).

With respect to secondary meaning, the FAC alleges that:

12. Galaxy has consistently and continuously used its

marketing to promote a conscious connection in the minds

of consumers between the Galaxy Trade Dress and Galaxy

as the sole source of origin of products bearing such

trade dress.

15. Galaxy has also continuously and extensively

utilized its trade dress since at least 2013 in its

marketing materials including its catalogs, brochures,

flyers, social medial campaigns, company websites,

displays, exhibits and other advertising. As a result,

consumers in the attractions and amusement market have

come to identify Galaxy’s trade dress as a sign of the

high-quality and distinctive products produced and sold

by Galaxy. Indeed, through Galaxy’s extensive and

continuous use in commerce, the Galaxy Trade Dress

designs have become well-known indicators of the origin

and quality of Galaxy’s Trade Dress Products, acquiring

substantial secondary meaning in the attractions and

amusements marketplace, including within Florida.

48. Galaxy’s extensive worldwide marketing efforts in

connection with its unique trade dress have resulted in

consumers identifying its trade dress with Galaxy as the

source of products bearing the unique and specific color

combinations, shapes, pattern, placements and design

comprising the Galaxy Trade Dress.

192. Galaxy has extensively and continuously promoted

and used its trade dress in interstate commerce within

the United States since at least 2013 . . . The Galaxy

Trade Dress has also acquired substantial secondary

meaning in the marketplace. Moreover, Galaxy commenced

use of its trade dress long before Defendants’ unlawful

use of Galaxy’s trade dress in connection with the

infringing products.

(Doc. #47, ¶¶ 12, 15, 48, 192.)

Accepting these allegations as true and viewing them in a

light most favorable to Plaintiff, Galaxy has plausibly alleged

that its trade dress has acquired secondary meaning. The FAC

provides sufficient facts about the length of time Galaxy has used

its trade dress (at least since 2013), the nature and extent of

marketing (in catalogs and flyers, on websites and in social

media), the continuous and extensive effort Galaxy has made to

promote a connection in the consumer’s mind between its trade dress

and Galaxy’s business, and that the public has now come to identify

Galaxy’s trade dress with its products. Contrary to Defendants’

argument, the Court finds these allegations are sufficient to show

that Plaintiff’s trade dress may have obtained secondary meaning

prior to Defendants’ use of the trade dress. See (Doc. #47, ¶¶ 18,

192.) Additionally, Plaintiff has alleged that Defendants

intentionally copied Plaintiff's Trade Dress, (Doc. #47, ¶¶ 16,

88), and “proof of intentional copying is probative evidence as to

secondary meaning issue.” Vital Pharm., Inc., 472 F. Supp. 3d at

1259 (quoting Brooks Shoe Mfg. Co. v. Suave Shoe Corp., 716 F.2d

854, 860 (11th Cir. 1983)).

(3) Non-functionality of Galaxy’s Trade Dress

Defendants argue that the FAC does not and cannot allege that

Galaxy’s trade dress is non-functional.3 (Doc. #49, pp. 11-13.)

3 Defendants have provided the Court with records from the

U.S. Patent and Trademark Office as well as records related to

The Court, however, finds the FAC has sufficiently pled this

element of trade dress infringement.

"Functional features are by definition those likely to be

shared by different producers of the same product and therefore

are unlikely to identify a particular producer." Dippin' Dots,

Inc., 369 F.3d at 1203. “[A] product feature is functional . . .

if it is essential to the use or purpose of the [product] or if it

affects the cost or quality of the [product].” TrafFix Devices,

Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 24 (2001)(internal

quotation marks omitted). Likewise, a functional feature “is one

the exclusive use of which would put competitors at a significant

non-reputation-related disadvantage.” Dippin' Dots, Inc., 369 F.3d

at 1203. "These features cannot be appropriated; otherwise,

competitors would be prevented from duplicating the new product

even to the extent permitted by the branches of the law of

intellectual property that protect innovation rather than

designations of source." Id. Functionality is considered with

respect to the design in its entirety. Id.

Here, the FAC alleges that its trade dress - consisting of

the strategic placement of a well-defined yellow and black stripe

U.S. Nuclear Regulatory Commission Regulation—10 C.F.R. § 34.35,

and request the Court take judicial notice of such records. See

(Doc. #49, p. 12, n.5; p. 15.) The Court will do so. See Horne v.

Potter, 392 F. App'x 800, 802 (11th Cir. 2010)(stating that the

court may take judicial notice of public records without converting

a motion to dismiss into a motion for summary judgment).

pattern, as well as the specific configuration of yellow, black,

green and gray color features on its products - is non-functional.

(Doc. #47, ¶ 14.) Specifically, the FAC alleges that Galaxy’s

trade dress is non-functional because it is not essential to the

use and purpose of its attractions and amusement products, nor

does the Galaxy trade dress affect the cost or quality of its

products. (Id. at ¶¶ 14, 50.) The FAC asserts Galaxy’s trade dress

is a source identifier due to its unique, distinctive multi-colored

design, which sets Galaxy’s products apart from its competitors

and creates a commercial impression in the minds of consumers,

identifying Galaxy as the source of such products. (Id. at ¶¶ 14,

49.) In addition, the FAC alleges that Galaxy’s trade dress does

not serve a utilitarian function because it does place competitors

at a non-reputational disadvantage. (Id. at ¶ 50.) Rather, The FAC

asserts that endless alternative color combinations are available

to competitors. (Id.)

Although Plaintiff’s proof of these allegations may

ultimately fail, such allegations are accepted as true in resolving

Defendants’ motion. The FAC has alleged a plausible claim based

on non-functionality.

(4) Likelihood of Confusion

“The touchstone test for a violation of § 43(a) is the

likelihood of confusion resulting from the defendant's adoption of

a trade dress similar to the plaintiff's." AmBrit, Inc. v. Kraft,

Inc., 812 F.2d 1531, 1538 (11th Cir. 1986)). Although "the

likelihood of confusion is generally a question of fact," Garden

Meadow, Inc. v. Smart Solar, Inc., 24 F. Supp. 3d 1201, 1212 (M.D.

Fla. 2014), the Court may determine whether a likelihood of

consumer confusion has been sufficiently alleged. See Yellowfin

Yachts, Inc., 2015 U.S. Dist. LEXIS 149754, at *6-7. The Eleventh

Circuit has identified seven factors when analyzing whether a

likelihood of confusion exists between Defendants’ and Plaintiff’s

trade dress:

(1) strength of the mark alleged to have been infringed;

(2) similarity of the infringed and infringing marks;

(3) similarity between the goods and services offered

under the two marks; (4) similarity of the actual sales

methods used by the holders of the marks, such as their

sales outlets and customer base; (5) similarity of

advertising methods; (6) intent of the alleged infringer

to misappropriate the proprietor's good will; and (7)

the existence and extent of actual confusion in the

consuming public.

Savannah Coll. of Art & Design v. Sportswear, Inc., 983 F.3d 1273,

1280-81 (11th Cir. 2020). The court need not consider all factors

in every case. See id. at 1281. While "the type of mark and the

evidence of actual confusion are the most important" factor, Fla.

Int'l Univ. Bd. of Trustees v. Fla. Nat'l Univ., Inc., 830 F.3d at

1255 (11th Cir. 2016), the court may “accord weight to the

individual likelihood-of-confusion factors based on what the

situation calls for and [need] not simply calculate the number of

factors favoring such a conclusion and the number of factors

militating against it.” Savannah Coll. of Art & Design, 983 F.3d

at 1281.

The FAC addresses all factors and sufficiently alleges

plausible facts to survive a motion to dismiss. With respect to

the strength of Galaxy’s trade dress, the FAC alleges that since

at least 2013 Galaxy has extensively and continuously used its

trade dress to promote, market, exhibit, offer for sale and sell

its products in the United States, including Florida. (Doc. #47,

¶¶ 8, 14.) This is alleged to have resulted in brand recognition

among consumers in the attractions and amusement industry, since

Galaxy is the sole source of origin of products bearing the unique

and specific color combinations, shapes, patterns, and design that

make up its trade dress. (Id. at ¶¶ 14-15, 48.) Such allegations

support a plausible likelihood of confusion.

As to the similarity between Galaxy’s trade dress and

Defendants’ infringing trade dress, the FAC asserts Defendants

have copied its trade dress, including the same color combinations

and placement of the same, or have used confusingly similar color

configurations, style and design. (Id. at ¶¶ 109, 114.) Plaintiff

has provided several side-by-side images, one of Galaxy’s trade

dress and one of Defendants’ infringing product. (Id.) The images

portray similar colors and patterns as shown below:

Fine

i ie j

a SS fj t) :

ly >y Lit

a y =

vn □

Galaxy's Toxic Twister® EZ Inflatables’ Dual Toxic Rush

(Id., p. 36(Figures 16-17.)) Plaintiff’s allegations and images

are sufficient to support a claim of likelihood of confusion based

on Similarity between Galaxy’s trade dress and Defendants’

products.

With regard to the similarity of products and services, the

FAC alleges that Defendants have misappropriated Galaxy’s trade

dress to incorporate it into inflatable attractions and amusement

products—-the same very products that Galaxy’s produces, markets

and sells in an effort to lure Galaxy’s customers away. (Doc. #47,

16.) The FAC asserts that Defendants’ willful and intentional

trade dress infringement are currently causing and likely to cause

customer confusion as to the source of origin of products. (Id. at

25.) The Court finds Plaintiff has adequately pled similarity

of products and services such that consumer confusion is likely to

result. Playboy Enters., Inc. v. Frena, 839 F. Supp. 1552, 1560

36

(M.D. Fla. 1993)("The greater the similarity between products and

services, the greater the likelihood of confusion.").

The FAC also sets forth allegations that Galaxy and Defendants

have similar sales outlets and customers, as well as advertising

methods. In particular, the FAC asserts that Galaxy and Defendants

not only sell their inflatable products to customers in the same

attractions and amusement industry, but Defendants have copied

Galaxy’s marketing strategy and continue to sell and market their

infringing inflatable products through similar trade shows like

the IAAPA Expo, fully interactive websites, i.e.,

www.galaxymultirides.com and www.ezinflatables.com, social media

websites (including Twitter, Facebook, InstaGram, and YouTube),

catalogue distribution, and direct email promotions. (Doc. #47,

¶¶ 13, 21, 24, 61, 82, 84, 87, 109.) The FAC asserts that Defendants

continued marketing and sales through these similar channels are

likely to cause confusion in the minds of consumers as to the

source of origin, affiliation, sponsorship, or connection of such

products with Galaxy. (Id. at ¶¶ 86, 108.)

Under the Rule 12(b)(6) standard, Plaintiff has sufficiently

alleged factual content that allows the court to draw the

reasonable inference that confusion is likely to result due to

similar sales outlets, customers and advertising methods. See

Ambrit, Inc., 812 F.2d at 1538 ("Likelihood of confusion is more

probable if the products are sold through the same channels to the

same purchasers.").

With regard to Defendants’ intent, the FAC alleges that

Defendants intentionally copied its trade dress without Galaxy’s

consent to market and sell its infringing products. (Doc. #47, ¶¶

16, 88.) Despite putting Defendants on notice during a 2018 IAAPA

Expo, that Defendants were infringing on Galaxy’s trademarks and

trade dress, the FAC asserts that Defendants have acted in bad

faith by continuing willfully and maliciously to use Galaxy’s trade

dress for its own financial benefit. (Id. at ¶¶ 19-21, 88.)

Plaintiff alleges that Defendants actions have been with the intent

to confuse, mislead, and deceive consumers as the true source of

Defendant’s products, and to falsely advertise or suggest to

consumers that its infringing products are associated with or

identical to Galaxy’s products. (Id. at ¶ 117.) Galaxy has

plausibly alleged Defendants’ bad faith intent to misappropriate

the proprietor's good will. See Marco's Franchising, LLC v. Marco's

Italian Express, Inc., No. 8:06-cv-00670-T-17-TGW, 2007 U.S. Dist.

LEXIS 49211, at *26 (M.D. Fla. July 9, 2007) ("A finding of

malicious intent on the part of the defendant will . . . incline

a court to find a likelihood of confusion.").

Finally, the FAC alleges that “Defendants’ willful,

intentional, systematic, and unlawful activities have in the past,

[and] are currently causing . . . consumer confusion regarding the

quality and source of origin” bearing Galaxy’s trade dress. (Doc.

#47, ¶ 25.) The FAC also asserts that Defendants’ marketing,

promotion and sales of infringing products to the consuming public

in the State of Florida, has already resulted in actual confusion

and false belief in the minds of the consumers that there is a

connection between Defendants’ products and Galaxy. (Id. at ¶ 115.)

“Evidence of confusion by actual or potential customers is, of

course, the best evidence of a likelihood of confusion.” FIU Bd.

of Trs. v. Fla. Nat'l Univ., Inc., 830 F.3d 1242, 1264 (11th Cir.

2016).

Upon consideration of the seven factors, the Court finds the

allegations in the FAC are sufficient to plausibly demonstrate

that Defendants’ use of Galaxy’s trade dress is likely to cause

confusion among customers or consumers. Plaintiff has sufficiently

pled a plausible claim for trade dress infringement.

The Court denies Defendants’ Motion to Dismiss Count VI—trade

dress infringement under § 1125(a) and Count VII-Florida common

law trade dress infringement.

B. Count VIII

Defendants challenge Count VIII of the FAC, which alleges

that Abraamyan is engaging in contributory or vicarious unfair

competition in violation of Section 1125(a) of the Act. (Doc. #49,

p. 1.) Defendant’s only argument is that this claim should be

dismissed for the same reasons dismissal of Counts VI and VII are

warranted. (Id., p. 5, n.1.) Because the Court has already found

that the FAC is sufficient as to those counts, the Court finds

that dismissal of Count VIII is not warranted. This portion of

Defendant’s motion is therefore denied.

Accordingly, it is now

ORDERED :

Defendants’ Motion to Dismiss Counts VI, VII, and VIII Against

Defendants For Failure To State A Claim and To Dismiss All Claims

Against Edgar Abraamyan For Lack of Personal Jurisdiction (Doc.

#49) is DENIED.

DONE AND ORDERED at Fort Myers, Florida, this 12th day of

May, 2021.

J =" pp

fi hs E. Loo

JQGHN E. STEELE

SHVICR UNITED STATES DISTRICT JUDGE

Copies:

Counsel of record

40