Kaniadakis v. Executive Boards of Directors et al

MOTION to dismiss for failure to state a claim , MOTION to dismiss for lack of jurisdiction

M.D. Fla.March 20, 2017

DM2\7613609.8 IN THE UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF FLORIDA TAMPA DIVISION STEVEN J. KANIADAKIS, Plaintiff, v. THE EXECUTIVE BOARDS OF DIRECTORS, SAP, INC., CONCUR, INC., et al. THE EXECUTIVE BOARDS OF DIRECTORS, VERIZON, INC., AOL, INC., TECHCRUNCH, INC., et al, Defendants. : : : : : : : : : : : : : : : : C.A. No. 17-cv-00419-EAK-TBM DISPOSITIVE MOTION DEFENDANTS SAP SE’S AND CONCUR TECHNOLOGIES, INC.’S 1 MOTION TO DISMISS FOR LACK OF PERSONAL JURISDICTION AND FAILURE TO STATE A CLAIM Of counsel: Aleksander J. Goranin (pro hac vice to be filed) DUANE MORRIS LLP 30 South 17th Street Philadelphia, PA 19103-4196 Tel: (215) 979-1868 Fax: (215) 754-4683 Email: agoranin@duanemorris.com Counsel for Defendants SAP SE and Concur Technologies, Inc. Effie D. Silva Florida Bar No. 0630535 DUANE MORRIS LLP 200 South Biscayne Boulevard Suite 3400 Miami, FL 33131-2318 Tel: (305) 960-2248 Fax: (305) 402-8002 Email: esilva@duanemorris.com 1 The SAP and Concur entities that Plaintiff names (“SAP, Inc.” and “Concur, Inc.”) do not exist. This motion is filed on behalf of the existing entities, SAP SE and Concur Technologies, Inc. Case 8:17-cv-00419-EAK-TBM Document 15 Filed 03/20/17 Page 1 of 31 PageID 792 ii TABLE OF CONTENTS Page INTRODUCTION .....................................................................................................................1 FACTUAL BACKGROUND ....................................................................................................4 ARGUMENT .............................................................................................................................7 I. Plaintiff’s Complaint Should Be Dismissed for Lack of Personal Jurisdiction .............7 A. Plaintiff does not adequately plead general jurisdiction in Florida ...................8 B. Plaintiff does not adequately plead specific jurisdiction in Florida ...................9 II. Plaintiff’s Complaint Should Be Dismissed for Failure to State a Claim ....................12 A. Plaintiff does not plead facts supporting a plausible trademark infringement or unfair competition claim (Counts I-III) .................................12 1. Plaintiff does not plead facts indicating that “Calendar Call” was used “in commerce in connection with the sale or advertising of goods or services” .........................................................13 2. Plaintiff does not plead facts supporting a likelihood of confusion between his CALLnDR CALL mark and Concur’s descriptive use of “Calendar Call” for its hackathon project .................................................................................16 3. The undisputed facts in Plaintiff’s complaint conclusively establish trademark fair use under 15 U.S.C. § 1115(a) ......................19 B. Plaintiff does not plead a viable DMCA claim (Count IV) .............................20 C. Plaintiff does not plead facts supporting his fraud claims (Counts V-VII) .................................................................................................22 D. Plaintiff does not plead adequate facts supporting his contract-based claims (Counts VIII and IX) ............................................................................23 E. Plaintiff does not plead a cognizable “cybersquatting” claim (Count X) .........................................................................................................24 CONCLUSION ........................................................................................................................25 Case 8:17-cv-00419-EAK-TBM Document 15 Filed 03/20/17 Page 2 of 31 PageID 793 iii TABLE OF AUTHORITIES Federal Cases Alliance Metals, Inc. of Atlanta v. Hinely Indus., 222 F.3d 895 (11th Cir. 2000) ............................................................................................................................ 16-17 Asahi Metal Indus. Co. v. Superior Court of Cal., 480 U.S. 102 (1987) .................................10 Ashcroft v. Iqbal, 556 U.S. 662 (2009) ............................................................................ 1-4, 12 AWGI, LLC v. Team Smart Move, No. 8:12-cv-2257-T-17MAP, 2013 WL 1181450 (M.D. Fla. Mar. 14, 2013) ....................................................................... 13-14, 16 Bavaro Palace, S.A. v. Vacation Tours, Inc., 203 Fed. Appx. 252 (11th Cir. 2006) ..................................................................................................................................25 Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) ............................................................ 1-2, 12 Blair v. Coats, No. 8:10-CV-1992-T-17AEP, 2010 WL 5477678 (M.D. Fla. Dec. 30, 2010) ....................................................................................................................12 Blowbar, Inc. v. Blow Bar Salon Inc., No. 8:13-cv-1430-T-17EAJ, 2013 WL 6244531 (M.D. Fla. Dec. 3, 2013) .....................................................................................13 Coach House Rest., Inc. v. Coach & Six Rests., Inc., 934 F.2d 1551 (11th Cir. 1991) ..................................................................................................................................18 In re Colonial Mortg. Bankers Corp., 324 F.3d 12 (1st Cir. 2003) .........................................19 Custom Mfg. & Eng’g, Inc. v. Midway Servs., Inc., 508 F.3d 641 (11th Cir. 2007) ..................................................................................................................................16 Daimler AG v. Bauman, 134 S. Ct. 746 (2014) ................................................................. 2, 8-9 Freedom Sav. & Loan Ass’n v. Way, 757 F.2d 1176 (11th Cir. 1985) ....................................17 Furnari v. Shapewriter, Inc., No. 6:10-cv-1463, 2011 WL 253962 (M.D. Fla. Jan. 25, 2011) ............................................................................................................... 10-11 Future Tech. Today, Inc. v. OSF Healthcare Sys., 218 F.3d 1247 (11th Cir. 2000) ..................................................................................................................................11 Grillasca v. Amerada Hess Corp., No. 8:05-cv-1736-T-17TGW, 2006 WL 3313719 (M.D. Fla. Nov. 14, 2006) ............................................................................ 23-24 Case 8:17-cv-00419-EAK-TBM Document 15 Filed 03/20/17 Page 3 of 31 PageID 794 iv Hensley Mfg. v. ProPride, Inc., 579 F.3d 603 (6th Cir. 2009) .......................................... 19-20 Hill v. White, 321 F.3d 1334 (11th Cir. 2003) ...........................................................................4 Hodges v. Buzzeo, 193 F. Supp. 2d 1279 (M.D. Fla. 2002).....................................................24 Hoefling v. City of Miami, 811 F.3d 1271 (11th Cir. 2016) ......................................................4 Int’l Stamp Art, Inc. v. U.S. Postal Serv., 456 F.3d 1270 (11th Cir. 2006) ....................... 19-20 Interactive Prods. Corp. v. a2z Mobile Office Solutions, 326 F.3d 687 (6th Cir. 2003) ................................................................................................................. 5, 14-15 Interstellar Starship Servs., Ltd. v. Epix, Inc., 304 F.3d 936 (9th Cir. 2002) ..........................25 Knight v. E.F. Hutton & Co., 750 F. Supp. 1109 (M.D. Fla. Oct. 11, 1990) ...........................22 KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004) .................................................................................................................................18 Lauzon v. Joseph Ribkoff, Inc., 77 F. Supp. 2d 1250 (S.D. Fla. 1999) ................................ 9-10 Lawson Cattle & Equip., Inc. v. Pasture Renovators LLC, No. 6:04-CV-211- ORL-22JGG, 2004 WL 5570662 (M.D. Fla. Aug. 20, 2004)............................................11 Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009) ......................................4 Marco’s Franchising, LLC v. Marco’s Italian Express, Inc., No. 8:06-cv- 00670-T-17-TGW, 2007 WL 2028845 (M.D. Fla. July 9, 2007) ................................ 17-18 Meier ex rel. Meier v. Sun Intern. Hotels, Ltd., 288 F.3d 1264 (11th Cir. 2002) ......................8 NCC Bus. Servs., Inc. v. Lemberg & Assocs., LLC, No. 3:13-CV-795-J-39MCR, 2014 WL 5510892 (M.D. Fla. June 6, 2014) .....................................................................16 Nelson v. Target Corp., No. 8:07-CV-1990-T-17, 2009 WL 2150893 (M.D. Fla. July 13, 2009) .............................................................................................................24 Patmont Motor Werks, Inc. v. Gateway Marine, Inc., No. 96-cv-2703-TEH, 1997 WL 811770 (N.D. Cal. Dec. 18, 1997) .....................................................................15 Pilkington v. United Airlines, Inc., 921 F. Supp. 740 (M.D. Fla. 1996) ..................................23 Setai Hotel Acquisitions, LLC v. Luxury Rentals Miami Beach, Inc., No. 16- 21289-CIV, 2016 WL 7217730 (S.D. Fla. Dec. 12, 2016) ................................................19 Case 8:17-cv-00419-EAK-TBM Document 15 Filed 03/20/17 Page 4 of 31 PageID 795 v Solis-Ramirez v. U.S. Dept. of Justice., 758 F.2d 1426 (11th Cir. 1985) ..................................4 Twelve Inches Around Corp. v. Cisco Sys., Inc., No. 08-civ-6896(WHP), 2009 WL 928077 (S.D.N.Y. Mar. 12, 2009) ..............................................................................21 United Techs. Corp. v. Mazer, 556 F.3d 1260 (11th Cir. 2009) ...................................... 7-8, 11 Williams v. Samuels, No. 5:13-cv-488-Oc-17PRL, 2015 WL 4935633 (M.D. Fla. Aug. 18, 2015) ............................................................................................................11 Federal Statutes 15 U.S.C. § 1115(a) ...........................................................................................................13, 19 15 U.S.C. § 1115(b)(4) ..............................................................................................................3 Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d) .......................... 2-3, 24-25 Digital Millennium Copyright Act, 17 U.S.C. § 512 .................................................. 2-3, 20-22 Rules FED. R. CIV. P. 9(b)..................................................................................................................22 FED. R. CIV. P. 10(c) ..................................................................................................................4 FED. R. CIV. P. 12(b)(2) .............................................................................................................1 FED. R. CIV. P. 12(b)(6) ............................................................................................... 1, 3-4, 13 Other Authorities J. Thomas McCarthy, 2 McCarthy on Trademarks & Unfair Competition § 11:45 (4th ed.). ................................................................................................................18 Case 8:17-cv-00419-EAK-TBM Document 15 Filed 03/20/17 Page 5 of 31 PageID 796 Defendants SAP SE and Concur Technologies, Inc. respectfully move under Fed. R. Civ. P. 12(b)(2) to dismiss all claims asserted against them in this lawsuit because Plaintiff Steven J. Kaniadakis’ complaint does not allege facts sufficient to establish personal jurisdiction over these defendants in Florida. SAP and Concur additionally move to dismiss all claims against them under Fed. R. Civ. P. 12(b)(6) because the complaint fails to plead facts sufficient to state any claim for relief against them that is plausible on its face, thereby failing to satisfy the well-settled Iqbal-Twombly pleading standard. For either or both of these independent reasons, Plaintiff’s deficient complaint should be dismissed. INTRODUCTION As previously explained in SAP’s and Concur’s opposition to Plaintiff’s preliminary injunction motion (Dkt. # 12), all of Plaintiff’s claims, at bottom, arise out of a decision made by a team of Concur software designers at a May 2-3, 2015 hackathon programming event in New York City. The Concur team decided to adopt the descriptive phrase “Calendar Call” as the title of their software programming project — a project built and used for purposes of that New York event only.2 Plaintiff claims that Concur’s descriptive use of “Calendar Call,” and the posting of a one-minute video presentation of the project to a website maintained by defendant TechCrunch, Inc., infringes the rights he holds in the registered trademark CALLnDR CALL, even though neither Concur nor SAP have ever sold, offered for sale, or advertised any product to consumers under the name “Calendar Call,” nor do SAP or Concur have any plans to do so. Plaintiff also claims that when Concur and SAP representatives 2 A hackathon is a gathering at which computer programmers and other software designers collaborate intensely in a limited time window (typically a few days to a week) to construct new software projects or applications, often for educational purposes. See, e.g., https://en.wipipedia.org/wiki/Hackathon. Case 8:17-cv-00419-EAK-TBM Document 15 Filed 03/20/17 Page 6 of 31 PageID 797 2 responded to Plaintiff’s complaints about the “Calendar Call” video — complaints expressed in an unrelenting letter-writing campaign by Plaintiff to the most senior executives and Executive Board members of SAP — SAP and Concur committed various torts of, inter alia, fraud, breach of contract, tortious interference with contract, and violations of the Digital Millennium Copyright Act and Anticybersquatting Consumer Protection Act. These claims cannot survive a motion to dismiss. As an initial matter, Plaintiff’s complaint fails to plead any factual basis for finding personal jurisdiction over SAP or Concur in Florida. Plaintiff does not allege that either company is incorporated or headquartered in the state, as required for general personal jurisdiction under Daimler AG v. Bauman, 134 S. Ct. 746 (2014) — because the two companies are not, in fact, headquartered or incorporated there. It is a matter of undisputed (and public) fact that SAP SE is incorporated in Germany and manages its U.S. operations through SAP America, Inc., a wholly-owned Delaware corporation headquartered in Pennsylvania. Similarly, Concur Technologies, Inc. is a Delaware corporation headquartered in Washington. Moreover, Plaintiff has not alleged facts sufficient to establish the existence of specific personal jurisdiction over SAP or Concur in Florida over his claims. To the contrary, Plaintiff’s complaint arises out of events he explicitly pleads occurred in New York City, and through the posting of an online video to the TechCrunch website, for which there are no allegations (or facts) suggesting that any of those activities occurred in Florida. Plaintiff’s complaint also fails to state any plausible claim on the merits, as required under the well-known and frequently-applied Iqbal-Twombly plausibility standard. His main claims, for federal- and state-law trademark infringement, do not allege facts supporting Case 8:17-cv-00419-EAK-TBM Document 15 Filed 03/20/17 Page 7 of 31 PageID 798 3 multiple necessary elements of those causes of action, such as a “use in commerce in connection with the advertising or sale of goods and services,” or the plausible existence of a likelihood of confusion. At bottom, Plaintiff’s trademark and unfair competition counts rest on the claim that consumers are likely to confuse and associate Concur’s “Calendar Call” project title with Plaintiff’s CALLnDR CALL mark, despite the undisputed facts that the “Calendar Call” title (a) was employed only for the limited purpose of the two-day hackathon; (b) was selected without any knowledge of Plaintiff’s mark; (c) was chosen because the phrase “calendar call” obviously and accurately describes the functionality of Concur’s hackathon project; and (d) has never been used to advertise or sell any SAP or Concur products to consumers. Quite the opposite from pleading facts supporting a likelihood of confusion, Plaintiff’s allegations, even on their face, clearly demonstrate all of the requisite elements of trademark fair use under 15 U.S.C. § 1115(b)(4), and can therefore be dismissed at the Rule 12(b)(6) stage on that basis. Plaintiff’s pleading of his remaining claims, for fraud, breach of contract, and the like, are similarly devoid of any factual allegations supporting entitlement to relief. As shown below (Argument § II.B-E infra), Plaintiff either pleads causes of action under federal statutes that are wholly inapplicable to SAP’s or Concur’s alleged activities (such as alleged violations of the Digital Millennium Copyright Act or the Anticybersquatting Consumer Protection Act) or recites boilerplate legal conclusions that do not suffice as adequate factual support for a claim. It is axiomatic under controlling pleading standards that “[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not Case 8:17-cv-00419-EAK-TBM Document 15 Filed 03/20/17 Page 8 of 31 PageID 799 4 suffice” at the 12(b)(6) stage. Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). Plaintiff’s complaint offers nothing more, and should be dismissed. FACTUAL BACKGROUND3 Plaintiff is the owner of the registered mark “CALLnDR CALL,” which he alleges is used in connection with “voice calling and electronic messag[ing]” products or services. (Dkt. # 1 at ¶¶ 34, 36 & Ex. A). The claims he asserts in this case arise out of the participation of a team of Concur employees in a May 2-3, 2015 software programming event titled “Disrupt NY Hackathon 2015,” hosted in New York City by co-defendant TechCrunch, Inc. (Id. at ¶¶ 44, 93 & Exs. D, Y, July 31, 2015 letter). As part of the hackathon, Concur’s team designed a software application “to check meetings set in an Outlook calendar,4 retrieve the meeting conference call numbers and then automatically connect the person to that conference by way of a forwarded call.” (Id. at ¶¶ 44-45, 93 & Exs. D, Y, July 31, 2015 letter). Because the goal was to allow users to participate in phone calls linked to their electronic calendar, the employees aptly and descriptively named their project “Calendar Call.” (Id.). Plaintiff does not allege anywhere 3 The facts set forth in this section are taken from the allegations in Plaintiff’s complaint, which are assumed to be true for purposes of a motion to dismiss. Hill v. White, 321 F.3d 1334, 1335 (11th Cir. 2003). The materials relied on for these allegations include the correspondence and other documents Plaintiff attaches to the complaint, which are treated as part of the complaint. “Under Rule 10(c) Federal Rules of Civil Procedure, . . . attachments are considered part of the pleadings for all purposes, including a Rule 12(b)(6) motion.” Solis-Ramirez v. U.S. Dept. of Justice., 758 F.2d 1426, 1430 (11th Cir. 1985); see also Hoefling v. City of Miami, 811 F.3d 1271, 1277 (11th Cir. 2016) (“A district court can generally consider exhibits attached to a complaint in ruling on a motion to dismiss, and if the allegations of the complaint about a particular exhibit conflict with the contents of the exhibit itself, the exhibit controls.”). 4 Outlook is a popular email and personal information management software program developed and distributed by Microsoft Corporation. One of Outlook’s features is an electronic calendar. See, e.g., Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1317 (Fed. Cir. 2009); see generally https://en.wikipedia.org/wiki/Microsoft_Outlook. Case 8:17-cv-00419-EAK-TBM Document 15 Filed 03/20/17 Page 9 of 31 PageID 800 5 in his complaint that anyone at Concur or SAP had knowledge of the CALLnDR CALL mark at the time Concur selected or used the “Calendar Call” name for its hackathon project. On May 3, a Concur employee gave a one-minute presentation on the project, which TechCrunch videotaped and posted on a webpage at www.techcrunch.com, an internet domain owned and maintained by TechCrunch. (Id.). The uniform resource locator (“URL”) for the webpage at issue is https://www.techcrunch.com/video/calendar-call/518803559. (Id. at ¶¶ 93, 102 & Ex. D).5 Plaintiff does not allege that Concur or SAP registered, own, or control the TechCrunch domain or webpage, either now or at any time relevant to Plaintiff’s claims. Plaintiff also does not allege any facts suggesting that SAP or Concur ever sold, offered for sale, or advertised any goods or services under the “Calendar Call” name. Throughout his complaint, Plaintiff references letters, emails, and other communications he directed to multiple people at SAP and Concur (as well as TechCrunch and its parents AOL, Inc. and Verizon, Inc.) to complain about the “Calendar Call” hackathon project and the TechCrunch video. The list of Plaintiff’s targets included SAP’s CEO, the CEO’s secretary, and SAP’s global Executive Board, which Plaintiff persistently contacted over an 18-month period. Unsurprisingly, SAP’s and Concur’s in-house attorneys were tasked with responding to Plaintiff’s letter-writing campaign. Plaintiff attaches those communications to the complaint, references them throughout, and points to certain individual letters and emails as 5 A uniform resource locator is a standardized electronic address that identifies where resources can be found on the internet. See, e.g., Interactive Prods. Corp. v. a2z Mobile Office Solutions, 326 F.3d 687, 690-91, 696-97 (6th Cir. 2003). Case 8:17-cv-00419-EAK-TBM Document 15 Filed 03/20/17 Page 10 of 31 PageID 801 6 the basis for his non-trademark claims. (Id. at Exs. G, H, L, M, N, O, & Y). In particular, Plaintiff relies on letters from Concur’s in-house counsel, dated January 18 and April 21, 2016, as the basis for his fraudulent misrepresentation and silent fraud claims (Counts V- VII). (Id. at ¶ 244 & Exs. G, H). Plaintiff does not, however, allege any facts indicating that the statements made in either letter were, in fact, false. Similarly, as the basis for his breach of contract claim (Count VIII), Plaintiff suggests that during an August 2016 telephone call between Plaintiff and SAP’s Senior Intellectual Property Counsel — as supposedly evidenced in emails dated August 24 and 26, 2016 — SAP entered into a binding contract with Plaintiff pursuant to which SAP would send Plaintiff an advance draft of a letter asking TechCrunch and AOL to take down the “Calendar Call” video. (Id. at ¶¶ 250, 263 & Exs. J, L). Plaintiff’s theory seems to be that SAP breached this supposed contract when, on November 9, 2016, it sent AOL a letter consenting to the takedown of the TechCrunch video without first sending a draft to Plaintiff for his review. (Id. at ¶¶ 256 & Exs. N, O). In his complaint, however, Plaintiff does not allege any facts indicating that he and SAP actually arrived at a meeting of the minds sufficient to form a contract, that SAP’s supposed promise was supported by consideration, or that Plaintiff suffered any damages from the supposed breach. Although Plaintiff has filed suit in Florida, factual allegations in the complaint supporting personal jurisdiction over SAP and Concur in Florida do not exist. Plaintiff does not allege the place of incorporation of either SAP or Concur.6 All that Plaintiff pleads is 6 In actuality, defendant SAP SE is incorporated in Germany, and has its headquarters and principal place of business operations in Walldorf, Germany. (Ex. 1 hereto, Zimmerman Decl. at ¶ 2). SAP SE’s operations in the United States are managed by its wholly owned subsidiary, SAP America Inc., which is incorporated in Delaware with headquarters and principal place of business operations in Newtown Square, Case 8:17-cv-00419-EAK-TBM Document 15 Filed 03/20/17 Page 11 of 31 PageID 802 7 that both companies “resid[e] in North America Headquarters in Newton, P.A.” (id. at ¶ 41), an apparent reference to the Newtown Square, Pennsylvania headquarters and principal place of business of SAP America, Inc., a wholly owned subsidiary of SAP SE (a German company), incorporated in Delaware, that manages its parent’s operations in the U.S. None of those locations relate to Florida. With respect to the specific activities at issue in this case, Plaintiff (correctly) pleads that the hackathon event at which the Concur team used the “Calendar Call” project title took place in New York City, not in Florida. (Id. at ¶ 93 & Ex. D). Moreover, he does not plead that any of the activities associated with posting of the video about the “Calendar Call” project to the TechCrunch website and the https://www.techcrunch.com/video/calendar- call/518803559 URL occurred in Florida. ARGUMENT Plaintiff’s complaint against SAP and Concur is deficient in two fundamental respects — it fails to plead facts supporting personal jurisdiction over these defendants in Florida, and it fails to plead facts supporting any plausible claim of relief. Either defect alone warrants dismissal of Plaintiff’s complaint. I. Plaintiff’s Complaint Should Be Dismissed for Lack of Personal Jurisdiction As an initial matter, Plaintiff fails to plead facts sufficient to establish either general or specific jurisdiction over SAP or Concur in Florida. “A plaintiff seeking the exercise of personal jurisdiction over a nonresident defendant bears the initial burden of alleging in the Pennsylvania. (Id.). Concur, another of SAP SE’s wholly owned subsidiaries, is incorporated in Delaware with headquarters and principal place of business operations in Bellevue, Washington. (Id. at ¶ 3). Case 8:17-cv-00419-EAK-TBM Document 15 Filed 03/20/17 Page 12 of 31 PageID 803 8 complaint sufficient facts to make out a prima facie case of jurisdiction.” United Techs. Corp. v. Mazer, 556 F.3d 1260, 1274 (11th Cir. 2009); see also Meier ex rel. Meier v. Sun Intern. Hotels, Ltd., 288 F.3d 1264, 1268-69 (11th Cir. 2002). Plaintiff’s complaint does not come close to meeting that burden. A. Plaintiff does not adequately plead general jurisdiction in Florida Plaintiff does not plead any facts supporting general jurisdiction in Florida over either SAP or Concur. General jurisdiction arises as a result of a party’s continuous and systematic contacts with the forum state such that the party is “essentially at home” in that state. See Daimler AG v. Bauman, 134 S. Ct. 746, 751 (2014). According to the Supreme Court, typically a corporation is “essentially at home” in either its “place of incorporation” or “principal place of business.” Id. at 760. Plaintiff, however, does not plead that either SAP SE or Concur Technologies, Inc. is incorporated under Florida law or has its principal place of business in Florida. In actuality, they do not — SAP SE is a German corporation headquartered in Walldorf, Germany while Concur is a Delaware corporation headquartered in Bellevue, Washington. (See Ex. 1 hereto, Zimmerman Decl. at ¶¶ 2-3). Under Daimler, SAP SE and Concur cannot be “essentially at home” in Florida. The most the complaint alleges is that “SAP, et al. and Concur, Inc. . . . resid[e] in North America Headquarters in Newton, P.A.” (Dkt. # 1 at ¶ 41) — an apparent reference to the Newtown Square, Pennsylvania headquarters of SAP America, Inc., the wholly owned SAP SE subsidiary that manages its German parent’s operations in the United States. (See Ex. 1 hereto, at ¶ 2). But even as pled, this allegation indicates that SAP and Concur would be “essentially at home” in Pennsylvania, not Florida. Case 8:17-cv-00419-EAK-TBM Document 15 Filed 03/20/17 Page 13 of 31 PageID 804 9 The complaint also includes the vague allegation that “Defendants have online presence” accessible from Florida and that “Defendants conduct business with at least one known company in [the] Tampa Bay area . . . called Tech Data located in Clearwater, FL.” (Dkt. 1 at ¶¶ 24-25). Even if applied to SAP or Concur individually, these barebones statements do not suffice to demonstrate general personal jurisdiction over SAP or Concur in Florida. Plaintiff does not allege anything about the timing, number, duration, or nature of SAP’s or Concur’s specific alleged business in Florida. More importantly, even if these conclusory claims can be treated as some indicia of continuous contact between Florida, on the one hand, and SAP or Concur, on the other, that still does not suffice to establish general jurisdiction under the Supreme Court’s controlling Daimler precedent. Daimler rejected the argument that general jurisdiction existed in every state where “a corporation ‘engages in a substantial, continuous, and systematic course of business,’” calling that assertion “unacceptably grasping” and inconsistent with due process. Daimler, 134 S. Ct. at 761. As noted, general personal jurisdiction exists only in those states where a defendant is “essentially at home,” paradigmatically in the state of its incorporation or principal place of business. Plaintiff’s complaint does not allege any facts to suggest or support that SAP or Concur are incorporated or operate their principal places of business in Florida. B. Plaintiff does not adequately plead specific jurisdiction in Florida Plaintiff also fails to plead adequate facts supporting the exercise of specific personal jurisdiction over SAP or Concur in Florida with respect to Plaintiff’s claims. Specific personal jurisdiction “is exercised when the suit arises out of or is related to a party’s single or isolated contacts with the forum.” Lauzon v. Joseph Ribkoff, Inc., 77 F. Supp. 2d 1250, Case 8:17-cv-00419-EAK-TBM Document 15 Filed 03/20/17 Page 14 of 31 PageID 805 10 1253 (S.D. Fla. 1999). For Florida courts to exercise specific personal jurisdiction over a nonresident (1) “there must be a basis for jurisdiction under Florida’s long-arm statute,” and (2) “maintenance of the suit cannot violate the Due Process Clause of the Fourteenth Amendment.” Furnari v. Shapewriter, Inc., No. 6:10-cv-1463, 2011 WL 253962, at *2 (M.D. Fla. Jan. 25, 2011). The Due Process inquiry requires that the nonresident defendant possess “minimum contacts” with the forum, such that maintenance of the suit comports with “traditional notions of fair play and substantial justice.” Asahi Metal Indus. Co. v. Superior Court of Cal., 480 U.S. 102, 113-16 (1987). Plaintiff’s complaint fails to plead the requisite “minimum contacts” with Florida. As noted, Plaintiff’s federal Lanham Act and state-law trademark infringement and unfair competition claims (Counts I-III) all are based on the Concur team’s decision to use the phrase “calendar call” for their hackathon project. (Dkt. # 1 at ¶ 93 & Ex. D). Quite the opposite from pleading that any of these activities occurred in Florida, the complaint acknowledges that Concur’s conduct and the hackathon itself took place in New York City — indeed, the event was called the “Disrupt NY Hackathon 2015.” (Id.). Plaintiff also complains about the posting of the “Calendar Call” video to the TechCrunch website, and the fact that the URL used for that video includes the phrase “calendar-call,” but Plaintiff makes no allegation in the complaint connecting any of these activities to Florida. For instance, Plaintiff does not (because he cannot) allege that the video was taken in Florida, that it was posted to the website in Florida, or that the content of the TechCrunch website is maintained or controlled out of Florida. None of the allegations in Plaintiff’s complaint suggest that SAP or Concur “purposely availed themselves” of Florida Case 8:17-cv-00419-EAK-TBM Document 15 Filed 03/20/17 Page 15 of 31 PageID 806 11 law, or that it was “reasonably foreseeable” that SAP or Concur would be haled into Florida court over their actions. Future Tech. Today, Inc. v. OSF Healthcare Sys., 218 F.3d 1247, 1250-51 (11th Cir. 2000); Lawson Cattle & Equip., Inc. v. Pasture Renovators LLC, No. 6:04-CV-211-ORL-22JGG, 2004 WL 5570662, at *4, 6-7 (M.D. Fla. Aug. 20, 2004). The same deficiency in pleading facts supporting specific personal jurisdiction exists for Plaintiff’s remaining claims (Counts IV-X), all of which arise out of the responses that SAP and Concur representatives sent to Plaintiff after he saw the “Calendar Call” video on the TechCrunch website and started his wide-ranging letter-writing campaign. For these claims, the only conceivable act linking SAP and Concur to Florida is the fact that Plaintiff resides in Florida and, therefore, SAP and Concur sent their responses to him in that state. Importantly, however, courts in Florida have held that the due-process prong of the specific personal jurisdiction test is not satisfied where “all communications between [Defendant] and Plaintiff were initiated by Plaintiff” — which is precisely the case here. Furnari, 2011 WL 253962, at *7; see also, e.g., Lawson, 2004 WL 5570662, at *6. Indeed, this Court has made clear that the mere “act of providing inadequate responses to letters” or “mailing a letter to a recipient in the forum state” is, without more, insufficient to confer specific personal jurisdiction. Williams v. Samuels, No. 5:13-cv-488-Oc-17PRL, 2015 WL 4935633, at *4 (M.D. Fla. Aug. 18, 2015). Because Plaintiff has not met his “initial burden of alleging in the complaint sufficient facts to make out a prima facie case of [personal] jurisdiction” over SAP or Concur, his complaint against these companies should be dismissed. United Techs., 556 F.3d at 1274. Case 8:17-cv-00419-EAK-TBM Document 15 Filed 03/20/17 Page 16 of 31 PageID 807 12 II. Plaintiff’s Complaint Should Be Dismissed for Failure to State a Claim Apart from the jurisdictional issue, Plaintiff’s complaint also fails because it does not competently present any proper claim for relief. Under the well-settled Iqbal-Twombly pleading standard, to survive a 12(b)(6) motion to dismiss “a complaint must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). A properly pled complaint requires more than “labels and conclusions,” and “a formulaic recitation of the elements of a cause of action” does not suffice. Id. While courts “must accept as true all of the [factual] allegations contained in a complaint,” they need not accept any legal assertions included therein. Id. Indeed, “[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice.” Id. Similarly, “courts do not have to afford . . . deference to a plaintiff’s inferences, and instead may infer from the factual allegations in the complaint obvious alternative explanations which suggest lawful conduct rather than the unlawful conduct the plaintiff would ask the court to infer.” Blair v. Coats, No. 8:10-CV-1992-T-17AEP, 2010 WL 5477678, at *2 (M.D. Fla. Dec. 30, 2010). A. Plaintiff does not plead facts supporting a plausible trademark infringement or unfair competition claim (Counts I-III) In Counts I-III of the complaint, Plaintiff attempts to state causes of action under the federal Lanham Act and Florida state law, all on the theory that the use of the “calendar call” phrase to describe and title the Concur team’s hackathon project, and on the TechCrunch website, is likely to cause confusion with Plaintiff’s CALLnDR CALL mark in the minds of Case 8:17-cv-00419-EAK-TBM Document 15 Filed 03/20/17 Page 17 of 31 PageID 808 13 the consuming public. The same standard applies to both the federal- and state-law trademark and unfair competition claims. See, e.g., Blowbar, Inc. v. Blow Bar Salon Inc., No. 8:13-cv- 1430-T-17EAJ, 2013 WL 6244531, at *2 (M.D. Fla. Dec. 3, 2013). Specifically, to make out a claim for trademark infringement, a plaintiff must establish three elements: “(1) the plaintiff possesses a valid mark, (2) the defendants used the mark in commerce in connection with the sale or advertising of goods or services, and (3) the defendants used the mark in a manner likely to confuse consumers.” AWGI, LLC v. Team Smart Move, No. 8:12-cv-2257-T-17MAP, 2013 WL 1181450, at *2 (M.D. Fla. Mar. 14, 2013). As shown below, Plaintiff has failed to plead facts sufficient to plausibly demonstrate that SAP or Concur used the CALLnDR CALL mark — or even the “calendar call” descriptor — “in commerce in connection with the sale or advertising of goods or services.” Plaintiff also does not plead facts to make a likelihood of consumer confusion between his CALLnDR CALL mark and the “Calendar Call” project title plausible. Indeed, if anything, the complaint’s allegations conclusively establish that the Concur team’s hackathon project title is a paradigmatic case of trademark fair use under 15 U.S.C. § 1115(a), making a Rule 12(b)(6) dismissal of the claims appropriate and necessary. 1. Plaintiff does not plead facts indicating that “Calendar Call” was used “in commerce in connection with the sale or advertising of goods or services” As noted, one necessary element of a trademark claim requires a plaintiff to demonstrate that “defendants used the mark in commerce in connection with the sale or advertising of goods or services.” AWGI, 2013 WL 1181450, at *2. Plaintiff’s complaint pleads no such sales or advertising. Nothing in the complaint pleads or suggests that SAP or Concur ever sold, offered for sale, advertised, or marketed any product or service under the Case 8:17-cv-00419-EAK-TBM Document 15 Filed 03/20/17 Page 18 of 31 PageID 809 14 “Calendar Call” name, let alone Plaintiff’s CALLnDR CALL mark. Indeed, the complaint attaches multiple letters from Concur and SAP representatives repeatedly telling Plaintiff that there is no such commercial use and never has been, e.g.: “Concur is not marketing or selling a product or service named ‘Calendar Call’ and does not intend to make use of Calendar Call for any product or feature of Concur” (Dkt. # 1 at Ex. G, H); and “SAP does not offer or sell any products or services using [CALLnDR CALL] or the name ‘Calendar Call,’ nor are any such products in development” (id. at Ex. P). Notably, the complaint does not allege any facts suggesting that SAP’s or Concur’s statements were untrue or inaccurate. Plaintiff’s failure to plead that SAP or Concur sold or advertised products using the “Calendar Call” name — let alone Plaintiff’s CALLnDR CALL mark — dooms his trademark and unfair competition causes of action. Plaintiff’s complaint also points to the appearance of the phrase “calendar-call” in the https://www.techcrunch.com/video/calendar-call/518803559 URL to which the “Calendar Call” project video was posted. (Id. at ¶¶ 93, 102-03 & Ex. D). This allegation likewise fails to satisfy the requirement of use “in commerce in connection with the sale or advertising of goods and services.” AWGI, 2013 WL 1181450, at *2. The Sixth Circuit’s decision in Interactive Products Corp. v. a2z Mobile Office Solutions, 326 F.3d 687 (6th Cir. 2003), is directly on point. In Interactive Products, the Sixth Circuit explained the distinction between the domain-name portion of the URL — e.g., “www.techcrunch.com” in the above URL — and the “post-domain path” portion — e.g., “/video/calendar-call/518803559.” Id at 691. The court noted that while the domain-name portion may in certain cases serve to designate the source of a product (because it is associated in consumers’ minds with products and Case 8:17-cv-00419-EAK-TBM Document 15 Filed 03/20/17 Page 19 of 31 PageID 810 15 services offered on the website), the post-domain portion of the URL will not. Id. at 696-97. The function of this post-domain portion is simply to show “how the website’s data is organized within the host computer’s files” rather than indicating the source or sponsor of the product. Id. “Because post-domain paths do not typically signify source, it is unlikely that the presence of another’s trademark in the post-domain path of a URL would ever violate trademark law.” Id. at 698; see also, e.g., Patmont Motor Werks, Inc. v. Gateway Marine, Inc., No. 96-cv-2703-TEH, 1997 WL 811770, at *4 n.6 (N.D. Cal. Dec. 18, 1997) (holding that the “goped” part of the URL path www.idiosyn.com/goped is not suggestive of confusion or sponsorship). The analysis in Interactive Products is fully applicable to the URL that Plaintiff places at issue here. While the “www.techcrunch.com” domain-name portion of the URL might in some circumstances be suggestive of sponsorship, that domain-name element does not make any reference to any word or phrase remotely resembling Plaintiff’s mark — the domain name at issue is “www.techcrunch.com,” not “www.callndrcall.com.” Moreover, although the phrase “calendar-call” is embedded in the subsequent post-domain path (“/video/calendar-call/518803559”), as Interactive Products explained, “post-domain paths” like these do not indicate source or sponsorship, but instead are used as an address identifying the location of the video “within the host computer’s files.” Interactive Products, 326 F.3d at 696-97. Put another way, these post-domain paths are not used “in connection with the sale or advertising of goods or services,” as required for a trademark infringement claim — a point reinforced by the fact that the complaint does not allege (because it cannot) that any “Calendar Call” or “CALLnDR CALL” products were offered for sale at the website Case 8:17-cv-00419-EAK-TBM Document 15 Filed 03/20/17 Page 20 of 31 PageID 811 16 addressed by the URL at issue. To the contrary, the complaint attaches screenshots of the webpage showing that no such “Calendar Call” products were for sale there (Dkt. # 1 at Ex. D), defeating any claim that the URL was somehow a “use in commerce” of Plaintiff’s mark. 2. Plaintiff does not plead facts supporting a likelihood of confusion between his CALLnDR CALL mark and Concur’s descriptive use of “Calendar Call” for its hackathon project Separate and apart from “use in commerce,” to successfully plead a trademark infringement claim, Plaintiff must also allege facts indicating that SAP and Concur “used the mark” at issue “in a manner likely to confuse consumers.” AWGI, 2013 WL 1181450, at *2. “The touchstone of liability in a trademark infringement action is not simply whether there is unauthorized [commercial] use of a protected mark, but whether such use is likely to cause consumer confusion.” Custom Mfg. & Eng’g, Inc. v. Midway Servs., Inc., 508 F.3d 641, 647 (11th Cir. 2007). Indeed, courts in the Eleventh Circuit have granted motions to dismiss where a plaintiff “has not plausibly alleged likelihood of confusion [sufficient] to state a claim” under the trademark law. NCC Bus. Servs., Inc. v. Lemberg & Assocs., LLC, No. 3:13-CV-795-J-39MCR, 2014 WL 5510892, at *6-8 (M.D. Fla. June 6, 2014), report and recommendation adopted, No. 3:13-CV-795-J-39MCR, 2014 WL 5514247 (M.D. Fla. July 23, 2014). Like the plaintiff in NCC, Plaintiff’s factual allegations with respect to likelihood of confusion are entirely lacking here. Plaintiff, for instance, does not address any of the seven likelihood-of-confusion factors analyzed in the Eleventh Circuit. See, e.g., Alliance Metals, Inc. of Atlanta v. Hinely Indus., 222 F.3d 895, 907 (11th Cir. 2000) (enumerating the Case 8:17-cv-00419-EAK-TBM Document 15 Filed 03/20/17 Page 21 of 31 PageID 812 17 factors).7 For example, he pleads nothing about “similarity between the products and services offered by the plaintiff and defendant” (factor 3); the “similarity of the sales methods” (factor 4); or the “similarity of advertising methods” (factor 5). There are no such similarities because, as noted, and as Plaintiff’s complaint does not and cannot contradict, SAP and Concur have never sold or advertised any product under the “Calendar Call” name, let alone the CALLnDR CALL mark. (Dkt. # 1, Ex. G, H, P). The complaint also does not contain any allegation suggesting that SAP and Concur selected the phrase “calendar call” for their hackathon project title with an “intent” to “associat[e their] product with the plaintiff’s established mark” (factor 6). Indeed, Plaintiff does not (and cannot) allege that the Concur team — or anyone at SAP or Concur, for that matter — was even aware of Plaintiff’s mark as the time of the May 2-3, 2015 hackathon. The complaint certainly does not plead any facts suggesting that the Concur team chose the descriptive phrase “calendar call” for their project title with the intent to trade on Plaintiff’s reputation and good will. Lastly, “the two factors given the greatest weight in the Eleventh Circuit” are “the strength of the mark [factor 1] and the evidence of actual confusion [factor 7].” Marco’s Franchising, LLC v. Marco’s Italian Express, Inc., No. 8:06-cv-00670-T-17-TGW, 2007 WL 2028845, at *11 (M.D. Fla. July 9, 2007); see also, e.g., Freedom Sav. & Loan Ass’n v. Way, 757 F.2d 1176, 1185 (11th Cir. 1985). On these two key factors, the complaint’s allegations 7 Those seven factors are: “(1) the strength of the plaintiff’s mark; (2) the similarity between the plaintiff’s mark and the allegedly infringing mark; (3) the similarity between the products and services offered by the plaintiff and defendant; (4) the similarity of the sales methods; (5) the similarity of advertising methods; (6) the defendant’s intent, e.g., does the defendant hope to gain competitive advantage y associating his product with the plaintiff’s established mark; and (7) actual confusion.” Alliance Metals, 222 F.3d at 907. Case 8:17-cv-00419-EAK-TBM Document 15 Filed 03/20/17 Page 22 of 31 PageID 813 18 fall down significantly as well. Plaintiff does not even attempt to plead any instances of actual confusion, i.e., that any consumer contacted him attempting to buy Concur’s hackathon program, or vice versa, that a customer contacted SAP trying to buy Plaintiff’s CALLnDR CALL application. This lack of actual confusion is typically fatal for a plaintiff’s trademark claim. Marco’s Franchising, 2007 WL 2028845, at *11. With respect to the strength-of-the-mark factor, Plaintiff’s complaint indicates only that CALLnDR CALL is a descriptive mark, entitled to limited protection. See, e.g., Coach House Rest., Inc. v. Coach & Six Rests., Inc., 934 F.2d 1551, 1560 (11th Cir. 1991). Indeed, the complaint makes the registered CALLnDR CALL mark even weaker still because it contends that the registered phrase should, in practice, be pronounced and treated as the well- known phrase “calendar call” (which, for instance, is used by courts throughout the country to refer to their procedures for setting trial and other scheduling dates). By selecting such a widely used descriptive phrase in the first place, Plaintiff accepted the risk that others — like the Concur team at the hackathon event — would unknowingly select similar descriptive names of their own. “If any confusion results” from selection of a descriptive mark, “that is a risk the plaintiff accepted when it decided to identify its product with a mark that uses a well-known descriptive phrase.” KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 122 (2004). Indeed, as a leading trademark commentator explained, when a descriptive mark is adopted, the “original, descriptive primary meaning is always available for use by others to describe their goods, in the interest of free competition.” J. Thomas McCarthy, 2 McCarthy on Trademarks & Unfair Competition § 11:45 (4th ed.). Case 8:17-cv-00419-EAK-TBM Document 15 Filed 03/20/17 Page 23 of 31 PageID 814 19 3. The undisputed facts in Plaintiff’s complaint conclusively establish trademark fair use under 15 U.S.C. § 1115(a) Trademark law provides a fair use defense, codified at 15 U.S.C. § 1115(a), to prevent “a trademark registrant” from “appropriat[ing] a descriptive term for its exclusive use and so prevent[ing] others from accurately describing a characteristic of their goods.” Int’l Stamp Art, Inc. v. U.S. Postal Serv., 456 F.3d 1270, 1274 (11th Cir. 2006). To establish a fair use defense, a defendant must show that “its use is (1) other than as a mark, (2) in a descriptive sense, and (3) in good faith.” Id. Although fair use is an affirmative defense, Courts of Appeal that have considered the fair use defense at the 12(b)(6) pleading stage have held that “there is no reason not to grant a motion to dismiss where the undisputed facts conclusively establish the affirmative defense as a matter of law.” Hensley Mfg. v. ProPride, Inc., 579 F.3d 603, 613 (6th Cir. 2009). The facts establishing the defense can come from “the facts . . . alleged in [the] complaint, as well as the attached exhibits.” Id.; cf. In re Colonial Mortg. Bankers Corp., 324 F.3d 12, 16 (1st Cir. 2003) (dismissing on the basis of an affirmative defense where the facts establishing the defense are “definitively ascertainable from the allegations of the complaint”). Although the Eleventh Circuit has not spoken to the issue, at least one district court in the Circuit recently dismissed a trademark infringement claim on the basis of the fair use defense. See Setai Hotel Acquisitions, LLC v. Luxury Rentals Miami Beach, Inc., No. 16-21289-CIV, 2016 WL 7217730, at *2-3 (S.D. Fla. Dec. 12, 2016). Here, the undisputed facts alleged and incorporated into the complaint clearly and definitively establish all three elements of the fair use defense. With respect to the first element — use “other than as a mark” — Plaintiff’s facts show that the Concur hackathon Case 8:17-cv-00419-EAK-TBM Document 15 Filed 03/20/17 Page 24 of 31 PageID 815 20 team did not use the “calendar call” phrase to market or sell any Concur or SAP goods or services, but rather as the descriptive title for their hackathon project entry. With respect to the second element — use “in a descriptive sense” — the undisputed facts show the Concur team selected the phrase “calendar call” for the very reason that it was descriptive of their programming project: The phrase describes what the Concur team’s hacked-together, experimental program did, i.e., it allowed calls to be joined from an electronic calendar. (Dkt. # 1 at ¶¶ 44, 93 & Exs. D, Y, July 31, 2015 letter). Lastly, with respect to the “good faith” element, courts analyze “whether the alleged infringer intended to trade on the good will of the trademark owner by creating confusion as to the source of the goods or services.” Int’l Stamp Art, 456 F.3d at 1274. Here, as noted, the complaint does not allege any facts suggesting such bad faith — indeed, Plaintiff cannot even allege that the Concur team was aware of his registered mark at the time of the hackathon event. It is Plaintiff’s “burden to allege [facts suggesting otherwise], if they indeed exist.” Hensley, 579 F.3d at 613. Because Plaintiff does not do so, the fair use defense provides an additional and independent basis for dismissing his trademark claims. B. Plaintiff does not plead a viable DMCA claim (Count IV) In Count IV, Plaintiff attempts to allege a violation of “U.S. Copyright Act 17 U.S.C. § 512(f)(2),” which is a provision of the Digital Millennium Copyright Act (“DMCA”) enacted in 1998. (Dkt. # 1 at ¶¶ 235-41). His factual allegations in support of this count are borderline incomprehensible, which is reason alone for dismissing the claim. To the extent one can discern the attempted cause of action, it appears that Plaintiff is claiming a violation of § 512(f)(2), which is part of a broader provision (§ 512) creating a Case 8:17-cv-00419-EAK-TBM Document 15 Filed 03/20/17 Page 25 of 31 PageID 816 21 safe harbor for online “service providers” (like Google or YouTube), so that they are not exposed to charges of copyright infringement based on their users’ posting of allegedly infringing material online. See, e.g., 17 U.S.C. § 512(c)(1) (“A service provider shall not be liable . . . by reason of the storage at the direction of a user . . . .”).8 The main part of § 512’s framework is a “notice and takedown” procedure by which copyright owners can notify service providers that certain material the provider is hosting infringes the owner’s copyright interests. See, e.g., Twelve Inches Around Corp. v. Cisco Sys., Inc., No. 08-civ-6896(WHP), 2009 WL 928077, at *3 (S.D.N.Y. Mar. 12, 2009) (explaining the scheme). Plaintiff’s claim is asserted under a rarely litigated DMCA provision, § 512(f)(2), which forbids certain kinds of knowing misrepresentations related to § 512’s notice-and- takedown procedure. See 17 U.S.C. § 512(f) (“Any person who knowingly misrepresents under this section . . . .”). For instance, a service provider who “knowingly misrepresents” that it “removed or disabled” copyrighted material under its control when the provider, in fact, did not is potentially subject to liability under § 512(f). Against this background, Count IV of Plaintiff’s complaint cannot state a cognizable cause of action for at least two reasons. First, § 512(f) only permits recovery by four defined classes of persons injured by the misrepresentation — i.e., an “alleged infringer,” a “copyright owner,” a “copyright owner’s authorized licensee,” or the “service provider itself.” 17 U.S.C. § 512(f). Plaintiff does not fall into any of these categories. Second, recovery is available under § 512(f)(2) in relevant part only when the service provider has actually removed or 8 For this reason, this portion of the DMCA (Title II) is entitled “Online Copyright Infringement Liability Limitation Act.” Case 8:17-cv-00419-EAK-TBM Document 15 Filed 03/20/17 Page 26 of 31 PageID 817 22 disabled the material in reliance on the misrepresentation. 17 U.S.C. § 512(f)(2) (permitting recovery for injuries “as the result of the result of the service provider relying upon such misrepresentation in removing or disabling access to the material.”). Here, Plaintiff does not allege any such removal or disabling. In fact, the crux of his complaint is about the continued posting and availability of the “Calendar Call” video on the TechCrunch website. Count IV is plainly deficient as a matter of law and must be dismissed. C. Plaintiff does not plead facts supporting his fraud claims (Counts V-VII) The “elements of common law fraud” in Florida “are (1) a false statement concerning a material fact; (2) knowledge by the person making the statement that the representation is false; (3) the intent by the person making the statement that the representation will induce another to act on it; and (4) reliance on the representation to the injury of the other party.” See Knight v. E.F. Hutton & Co., 750 F. Supp. 1109, 1114 (M.D. Fla. Oct. 11, 1990). Moreover, “in alleging fraud or mistake, a party must state with particularity the circumstances constituting fraud or mistake.” Fed. R. Civ. P. 9(b). Here, Plaintiff’s complaint identifies with arguably sufficient particularity only two statements — both letters from Concur’s in-house counsel to Plaintiff, one on January 18 and the other on April 21, 2016. But Plaintiff has not pled any facts suggesting that any representation made in either of these two letters was, in fact, false or that it concerned a material fact. In the January 18 letter, Concur’s counsel stated that Concur “is not marketing or selling a product or service named ‘Calendar Call’” and that “[i]n order to solve this matter amicably, the information about this contest was removed from the hacker website ‘DevPost’, along with other references to ‘Calendar Call’.” (Dkt. # 1 at Ex. G). Plaintiff, Case 8:17-cv-00419-EAK-TBM Document 15 Filed 03/20/17 Page 27 of 31 PageID 818 23 however, does not allege facts suggesting falsity, e.g., that he went to the DevPost website and still saw material concerning “Calendar Call” posted there. Likewise, all that Concur’s one-paragraph April 21 letter stated was that “[w]e consider this matter closed as Concur is not marketing or selling a product or service named ‘Calendar Call’” and “we are not aware of any current use of Calendar Call by Concur.” (Id. at Ex. H). Again, Plaintiff does not plead any facts indicating that these representations were false, e.g., that Concur was still currently using the “Calendar Call” hackathon project. Absent any indicia of falsity, Plaintiff’s fraud claims cannot survive a motion to dismiss. D. Plaintiff does not plead adequate facts supporting his contract-based claims (Counts VIII and IX) Plaintiff also attempts to present a claim for breach of contract (Count VIII) and tortious interference with contract (Count IX). Both claims require, as a necessary element, facts sufficient to demonstrate the “existence of a valid contract.”9 Plaintiff’s complaint fails to do so. The only purported “contract” to which Plaintiff points is an alleged August 2016 oral agreement with SAP’s in-house counsel under which Plaintiff supposedly would receive an advance draft of a SAP’s letter to AOL consenting to the takedown of the “Calendar Call” video. (Id. at ¶¶ 250, 263 & Exs. J, L, M). But the complaint’s allegations do not support any plausible inference that there was a “meeting of the minds” between Plaintiff and SAP as 9 To state a claim for breach of contract, a plaintiff must demonstrate “(1) the existence of a contract; (2) breach of the contract; and (3) damages resulting from that breach.” Grillasca v. Amerada Hess Corp., No. 8:05-cv-1736-T-17TGW, 2006 WL 3313719, at *5 (M.D. Fla. Nov. 14, 2006). Similarly, to succeed on a claim for tortious interference with a contract, a plaintiff must establish (1) the existence of a valid contract between plaintiff and a third party; (2) defendant’s knowledge of that contract; (3) defendant’s intentional and unjustified interference with that contract; and (4) damage to the plaintiff as a result of the interference. Pilkington v. United Airlines, Inc., 921 F. Supp. 740, 749 (M.D. Fla. 1996), aff'd sub nom., 112 F.3d 1532 (11th Cir. 1997). Case 8:17-cv-00419-EAK-TBM Document 15 Filed 03/20/17 Page 28 of 31 PageID 819 24 to such a promise on SAP’s part. See, e.g., Nelson v. Target Corp., No. 8:07-CV-1990-T-17, 2009 WL 2150893, at *2 (M.D. Fla. July 13, 2009) (“A meeting of the minds is a necessary element of a contract.”). To the contrary, the relevant email exchanges with SAP’s counsel — incorporated into the complaint as Exhibits J, L and M — are inconsistent with any such meeting of the minds. (Dkt. # 1, Exs. J, L, M). Moreover, Plaintiff does not allege that (a) he provided any consideration for SAP’s alleged promise, or (b) he suffered any damages as a result, both of which are additional necessary elements for a viable breach of contract claim. See, e.g., Nelson, 2009 WL 2150893, at *2 (“A lack of consideration means no valid contract was formed.”); Grillasca, 2006 WL 3313719, at *5 (“damages resulting from breach” is one of the three elements to a breach-of-contract action). Plaintiff’s claim for tortious interference with contract (Count IX) fails for another reason. Even assuming Plaintiff’s alleged contract existed, it is black-letter law that a defendant cannot be liable for tortiously interfering with a contract unless the contract is between the plaintiff and a third party.” Hodges v. Buzzeo, 193 F. Supp. 2d 1279, 1285 (M.D. Fla. 2002). Here, the alleged contract is between Plaintiff and SAP, not a third party. Plaintiff’s contract-related claims are not plausibly pled and should be dismissed. E. Plaintiff does not plead a cognizable “cybersquatting” claim (Count X) Plaintiff’s final cause of action charges all “Defendants” with “cybersquatting” under the Anticybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. § 1125(d). Congress enacted the ACPA to protect consumers and holders of distinctive trademarks against defendants who rush out and register internet domain names based on the brands and marks of others (e.g., “www.mcdonalds.com”) “in order to force the rightful owners of the marks to Case 8:17-cv-00419-EAK-TBM Document 15 Filed 03/20/17 Page 29 of 31 PageID 820 25 pay for the right to engage in electronic commerce under their own name.” Interstellar Starship Servs., Ltd. v. Epix, Inc., 304 F.3d 936, 946 (9th Cir. 2002). To succeed on an ACPA claim, “a plaintiff must prove that (1) its mark is distinctive or famous and entitled to protection; (2) the defendant's domain name is identical or confusingly similar to the plaintiff's mark; and (3) the defendant registered or used the domain name with a bad faith intent to profit.” Bavaro Palace, S.A. v. Vacation Tours, Inc., 203 Fed. Appx. 252, 256 (11th Cir. 2006). As the above list of elements demonstrates, the key predicate fact underpinning an ACPA cause of action is that the defendant must register and own the domain name at issue — it must be “the defendant’s domain name.” Id. Here, the only domain name and webpage in dispute is the “www.techcrunch.com” website and the associated URL https://www.techcrunch.com/video/calendar-call/518803559 to which the “Calendar Call” video was posted. (Dkt. # 1 at ¶¶ 93, 102 & Ex. D). But Plaintiff does not allege, because he cannot, that this is SAP and Concur’s domain name, or that SAP and Concur registered that domain. (They clearly did not; the website is owned and controlled by co-defendant TechCrunch or one or more of its corporate parents). Plaintiff simply has no claim against SAP and Concur under the ACPA as a matter of law. CONCLUSION For the foregoing reasons, the Court should grant defendants’ motion and dismiss Plaintiff’s claims against defendants SAP SE and Concur Technologies, Inc. in their entirety. Case 8:17-cv-00419-EAK-TBM Document 15 Filed 03/20/17 Page 30 of 31 PageID 821 26 Dated: March 20, 2017 Respectfully submitted, /s/ Effie D. Silva Of counsel: Aleksander J. Goranin (pro hac vice to be filed) DUANE MORRIS LLP 30 South 17th Street Philadelphia, PA 19103-4196 Tel: (215) 979-1868 Fax: (215) 754-4683 Email: agoranin@duanemorris.com Counsel for Defendants SAP SE and Concur Technologies, Inc. Effie D. Silva, Esq. Florida Bar No. 0630535 DUANE MORRIS LLP 200 South Biscayne Boulevard, Suite 3400 Miami, FL 33131-2318 Tel: (305) 960-2248 Fax: (305) 402-8002 Email: esilva@duanemorris.com CERTIFICATE OF SERVICE I hereby certify that on this March 20, 2017, I electronically filed the foregoing with the Clerk of the Court by using the CM/ECF system. I further certify that I served the foregoing document and the notice of electronic filing by electronic mail and overnight mail to the following non-CM/ECF participant: Steven J. Kaniadakis Pro Se Plaintiff 2895 64th Avenue South St. Petersburg, FL 33712-5554 stevenkdpm@yahoo.com /s/ Effie D. Silva Effie D. Silva Florida Bar No. 0630535 Case 8:17-cv-00419-EAK-TBM Document 15 Filed 03/20/17 Page 31 of 31 PageID 822 Exhibit 1 Case 8:17-cv-00419-EAK-TBM Document 15-1 Filed 03/20/17 Page 1 of 6 PageID 823 Case 8:17-cv-00419-EAK-TBM Document 15-1 Filed 03/20/17 Page 2 of 6 PageID 824 Case 8:17-cv-00419-EAK-TBM Document 15-1 Filed 03/20/17 Page 3 of 6 PageID 825 Case 8:17-cv-00419-EAK-TBM Document 15-1 Filed 03/20/17 Page 4 of 6 PageID 826 Case 8:17-cv-00419-EAK-TBM Document 15-1 Filed 03/20/17 Page 5 of 6 PageID 827 Case 8:17-cv-00419-EAK-TBM Document 15-1 Filed 03/20/17 Page 6 of 6 PageID 828