Marfione v. Kai U.S.A., Ltd.

          ORDER GRANTING DEFENDANT BEYER'S MOTION TO DISMISS AND DEFENDANT KAI'S MOTION TO DISMISS

          BARBARA J. ROTHSTEIN UNITED STATES DISTRICT JUDGE

         Plaintiffs Anthony L. Marfione and Microtech Knives, Inc. (“Microtech”) bring the present action against a Microtech competitor, Defendant KAI U.S.A. Ltd. (“Kai”), and Defendant Kale Beyer, a Kai employee, alleging violations of the Lanham Act, 15 U.S.C. § 1125(a)(1)(B), as well as defamation and commercial disparagement. Each Defendant has moved to dismiss Plaintiffs' claims. Specifically, Defendant Kai maintains that it was not the “publisher” of the third-party statements at issue, and, therefore, that it cannot be subject to liability under the Lanham Act as a matter of law; and, for the same reason, that it is immune from Plaintiffs' state law claims pursuant to the Communications Decency Act, 47 U.S.C. § 230. Doc. 28.^[1] Defendant Beyer argues that the Court lacks personal jurisdiction over him. Doc. 29.^[2] Plaintiffs oppose both motions. Pls.' Opp'n to Kai Mot., Doc. 32; Pls.' Opp'n to Beyer Mot., Doc. 31. Having reviewed the parties' briefs together with all relevant materials, the Court finds that it lacks personal jurisdiction over Defendant Beyer, and that Defendant Kai did not “publish” the statements at issue for the purposes of Plaintiffs' claims. Accordingly, the Court grants each Defendant's motion to dismiss. The Court's reasoning follows:

         I. FACTUAL AND PROCEDURAL BACKGROUND

         Plaintiff Anthony L. Marfione, a resident of North Carolina, is the President of Plaintiff Microtech, a corporation organized and existing under the laws of Pennsylvania. (Am. Compl., Doc. 26 ¶ ¶ 1, 3.) Microtech designs, manufactures, assembles, and sells knives. (Id. ¶ 2). Defendant Kai is a corporation that also designs, manufactures, assembles, and sells knives. (Id. ¶ ¶ 10-11). Kai is organized and exists under the laws of Oregon, and ships its “Kershaw” and “Zero Tolerance” (“ZT”) brand knives into Pennsylvania. (Id. ¶ ¶ 4, 12). Defendant Beyer is employed as Kai's social medial specialist. (Id. ¶ 59; Doc. 26-6). Beyer resides and has “a regular place of business” in Oregon. (Id. ¶ ¶ 6-7).

         The parties agree on many of the facts germane to the present motions. (See Kai Mot., Doc. 28 at 3-5; Beyer Mot., Doc. 29 at 3-5; Pls.' Opp'ns, Doc. 32 at 2-3, 5-7, Doc. 31 at 2-3, 6-8). In 2011, Plaintiff Microtech began selling a knife that it named the “Matrix.” (Compl., Doc. 26 ¶ 20). In 2016, Kai issued Microtech a cease and desist letter, claiming that the Matrix infringed a utility patent that Kai had obtained in 2015. (Id. ¶ 22). In response, Microtech “immediately discontinued” selling that version of the Matrix and other knives that it believed utilized Kai's patent. (Id. ¶ 24). By redesigning the Matrix and discontinuing the sale of certain other products, Microtech “resolved” the patent infringement claim, and no patent infringement or other related lawsuit was ever filed against Microtech. (Id. ¶ ¶ 27, 30).

         On January 3, 2017, a knife enthusiast and blogger, Anthony Sculimbrene, ^[3] emailed Kai's Director of Sales and Marketing, Thomas Welk. (Doc. 26 ¶ 34 (citing 1/3/17 Sculimbrene to Welk Email, Doc. 26-1)).^[4] In his email, Sculimbrene stated that he was “working on a series of articles for [another website dedicated to hunting, fishing, and camping gear, regarding] new releases for 2017, ” and asked Welk for information about Kai's new Kershaw and ZT brand knives. (Doc. 26-1 at 2; see Doc. 26-3 at 1). Sculimbrene additionally provided a link to one of his blog posts in which he had written that Kai was 2016's “Company of the Year.” (Doc. 26-1 at 2).

         Welk responded two days later with the specifications for the requested products, which, according to the linked files, included a new Kai knife named the “Natrix.” (Doc. 26 ¶ 25 (citing 1/5/17 Welk to Sculimbrene Email, Doc. 26-2 at 1-2)). Two hours later, Sculimbrene replied: “[T]he in-joke-the Natrix-is my favorite product Kai has released ever. Oh god that is funny.” (Doc. 26 ¶ 38 (quoting 1/5/17 Sculimbrene to Welk Email, Doc. 26-1 at 1)). Welk replied: “Not sure what you mean…joke? Natrix is a genus of colubrid snakes. Four species are in the genus. They are collectively called grass snakes and water snakes. Am I missing something?” (Doc. 26 ¶ 39 (quoting 1/5/17 Welk to Sculimbrene Email, Doc. 26-1 at 1)).

         Approximately two weeks later, on January 20, 2017, Sculimbrene posted to his website an article titled “The Story Behind the Greatest Knife of All Time” (the “Sculimbrene Article”). (Doc. 26 ¶ 45 (citing Sculimbrene Article, Doc. 26-4 at 1-2)). In his Article, Sculimbrene writes that he considers Kai's Natrix knife the “greatest” knife of all time because it has a “dash of storytelling” to it. (Doc. 26-4 at 1). According to the Sculimbrene Article, this “story” includes, for example, Plaintiffs having “blatantly cop[ied]” and “ripped [] off” Kai's knives when Microtech released various versions of their Matrix knives. (Id. at 1). The Sculimbrene Article further claims that Kai's Natrix knife is “aimed at [Plaintiff] Marfione, and it is named after a snake in the grass.” (Id. at 2).

         That afternoon, a link to the Sculimbrene Article was posted on each of Kai's ZT knives' and Kershaw knives' Instagram accounts with the following respective messages: “This is definitely worth a read-this is the story behind the #zt0777 [a ZT knife] & the new @kershawknives #7007 Natrix[;]” and “Wonder what the backstory to the new #7007 Natrix is? See why [Sculimbrene] calls it ‘the greatest knife of all time!'” (Doc. 26 ¶ 60 (citing ZT knives' & Kershaw knives' Instagram Posts, Doc. 26-7)). Also that afternoon, Defendant Beyer posted on his Instagram account a link to the Sculimbrene Article with the following message: “This is the whole backstory behind [one of Kai's knives] and the knockoff, ‘the Matrix' by @microtechknives and how the new @kershawknives struck a chord with its latest model, the #7007Natrix-read it at [Sculimbrene's website.]” (Doc. 26 ¶ 59 (citing Beyer Instagram Post, Doc. 26-6)). Beyer directed his post to Plaintiffs' Instagram accounts and continued: “I invite any sort of response[.] It will, as always, be unedited. Say what you want in response and I will publish it.” (Doc. 26-6).

         The next day, Welk emailed Sculimbrene. (Doc. 26 ¶ 54 (citing 1/21/17 Welk to Sculimbrene Email, Doc. 26-5)). The email's subject line reads: “Your article…[, ]” and the body of Welk's email reads: “Just read it with a big smile on my face…Cheers.” (Doc. 26-5).

         In February 2017, Marfione filed before this Court a lawsuit against Sculimbrene alleging that the Sculimbrene Article contained defamatory statements. (Docket No. 1:17-cv-46 (W.D. Pa., filed Feb. 17, 2017)).^[5]

         In this action, Plaintiffs contend that “Kai and/or [] Welk was the creator and/or developer” of the Sculimbrene Article; that “the Article was originally published by Sculimbrene at the direction of Kai and/or [] Welk;” and that Kai and Beyer each “republished” the Sculimbrene Article when they posted a link to it on their respective Instagram accounts. (Am. Compl., Doc. 26 ¶ ¶ 55-56, 57-72). The Sculimbrene Article, Plaintiffs continue to assert, contains false, misleading, and defamatory statements; and, as a result, Plaintiffs have suffered-and will continue to suffer-“monetary and reputational injury.” (Id. ¶ 80). Through Defendant Beyer's “republication” of the Sculimbrene Article, Plaintiffs contend, Beyer defamed Marfione (Count 2) and commercially disparaged Microtech (Count 4). Through Defendant Kai's “joint development and subsequent republication” of the Sculimbrene Article, Plaintiffs claim that Kai violated the Lanham Act, 15 U.S.C. § 112(a)(1)(B) (Count 1), defamed Marfione (Counts 3, 5, 6, 7), ^[6] and commercially disparaged Microtech (Count 7).

         Defendants now move to dismiss. Defendant Beyer argues that the Court lacks personal jurisdiction over him because he is a resident of Oregon and has no contacts with Pennsylvania. Doc. 29. Defendant Kai maintains that it was not the original publisher of Sculimbrene's Article, nor did it republish the Article, and, therefore, that Kai cannot be subject to liability under the Lanham Act as a matter of law; and, for the same reasons, that it is immune from Plaintiffs' state law claims pursuant to the Communications Decency Act, 47 U.S.C. § 230. Doc. 28. The Court addresses each Defendant's motion in turn.

         II. THE COURT LACKS PERSONAL JURISDICTION OVER DEFENDANT BEYER

         A. Legal Standards

         Federal district courts sitting in Pennsylvania have personal jurisdiction over non-resident defendants to the extent permissible under Pennsylvania law. Mellon Bank (E.) PSFS, Nat. Ass'n v. Farino, 960 F.2d 1217, 1221 (3d Cir. 1992); Fed.R.Civ.P. 4(e). Pennsylvania's long-arm statute extends jurisdiction to the limit of federal due process. Mellon Bank, 960 F.2d at 1221 (citing Pa. Con. Stat. Ann. §5332(b)). Thus, the Court need determine only whether the exercise of personal jurisdiction over Defendant Beyer comports with due process. Id.; Miller Yacht Sales, Inc. v. Smith, 384 F.3d 93, 96 (3d Cir. 2004).

         Due process requires that the defendant has sufficient “minimum contacts [with the forum state] such that the maintenance of the suit does not offend traditional notions of fair play and substantial justice.” Int'l Shoe Co. v. Washington, 326 U.S. 310, 316 (1945); Carteret Sav. Bank, FA v. Shushan, 954 F.2d 141, 145 (3d Cir. 1992). A defendant's contacts with the forum state may support either general or specific jurisdiction. General jurisdiction is not at issue in this case.^[7]Specific jurisdiction “is invoked when the claim is related to or arises out of the defendant's contacts with the forum[; thus, ] the focus must be on minimum contacts.” Carteret Sav. Bank, 954 F.2d at 149 (internal quotations omitted).

         When a defendant raises a jurisdictional defense under Federal Rule of Civil Procedure 12(b)(2), the plaintiff bears the burden of demonstrating that jurisdiction is proper. BP Chems. Ltd. v. Formosa Chem. & Fibre Corp., 229 F.3d 254 259 (3d Cir. 2000). “The plaintiff meets this burden and presents a prima facie case for the exercise of personal jurisdiction by establishing with reasonable particularity sufficient contacts between the defendant and the forum state.” Mellon Bank, 960 F.2d at 1223 (internal quotation omitted). The plaintiff may not rely on “mere allegations” or “the bare pleadings alone[; instead the] plaintiff must respond with actual proofs, ” such as “sworn affidavits or other competent evidence[.]” Time Share Vacation Club v. Atl. Resorts, Ltd. 735 F.2d 61, 66 n.9 (3d Cir. 1984).

         B. Plaintiffs Have Not Demonstrated That Beyer Has ...