Tempur Sealy International, Inc. et al v. WonderGel, LLC et al, No. 5:2016cv00083 - Document 41 (E.D. Ky. 2016)
Court Description: MEMORANDUM OPINION & ORDER: the court finds that granting the relief requested will not harm others as it is very limited in scope & Purple will still be able to advertise its product; the court is persuaded that a temporary restraining order/preliminary injunction is appropriate under these circumstances. Signed by Judge Joseph M. Hood on 4/1/16.(KJR)cc: COR
Download PDF
<![CDATA[
Tempur Sealy International, Inc. et al v. WonderGel, LLC et al Doc. 41 Eastel'll [)~ , I L lot:ntuaq APR ... 1 2016 UNITED STATES DISTRICT COURT EASTERN DISTRICT OF KENTUCKY CENTRAL DIVISION at LEXINGTON R~~ LEXINGTON CLERK u.s~'!:r.CARR 'rtlCT COURT TEMPUR SEAL INTERNATIONAL, INC., et al., Civil Action No. 5:16-cv-83-JMH Plaintiffs, v. MEMORANDUM OPINION AND ORDER WONDERGEL, LLC, et al., Defendants. *** This matter is before the Court upon Plaintiffs' Motion for a Temporary Restraining Order/Preliminary Injunction, Defendants' Court Motion to Dismiss, conducted a hearing on parties presented arguments. denying the Temporary Motion to [DE 2 9] . these On March 30, motions during 2016, which the both The Court announced its oral ruling, Dismiss Restraining [DE 11], and and granting the Motion Injunction. Order/Preliminary for a This memorandum opinion supplements the Court's oral rulings announced during the hearing and the separate Order entered contemporaneously herewith. I. Both parties are engaged mattresses, among other products. products created exclusively online. and published an in the business of selling Defendants market and sell their Around online December commercial 2015, (the Defendants "Goldilocks Dockets.Justia.com Video"), which features one of Defendants' During the commercial, not identify it by name. character makes mattress and derogatory falls mattresses, back statements on to the about the Goldilocks the mattress but does Tempur-Contour a "in manner and accompanied by a facial expression and sound effects that suggest that the mattress is extremely hard and painful for those who use it, The Goldilocks Video has received over three million views II on YouTube.com and over 14 million views on Purple's Facebook page. The video has been shared over fifty-three thousand times and appears on Purple's commercial website, onpurple.com. On February, desist letter, misleading 19, demanding statements advertising. 2 016, Plaintiffs sent Purple a that regarding Purple remove Plaintiffs' all cease and false products and from its A week later, Purple responded, stating essentially that Purple was not required to make any changes to its advertising and that it had filed a complaint in the United States District Court for the District 2:16-cv-162-BSJ. In of Utah to that action, "protect Purple its interests." seeks a See declaratory judgment that neither it nor the Goldilocks Video violates the Lanham Act, committed 15 the U.S.C. crimes § of 1125(a) (1) (B), unlawful that Plaintiffs monopolization, intentional interference with economic relations, and abuse of process. II. 2 have Defendants moved the Court to dismiss this matter based on lack of personal jurisdiction or, alternatively, to transfer or stay the matter based on the first-to-file rule. As stated on the record during the hearing, the Court declines to apply the firstto-file rule. See Zide Sport Shop of Ohio, Inc. Assocs., 16 F. App'x 433, Inc., 437 (6th Cir. v. Ed Tobergate 2001) dispense with the rule "where equity so demands"). (courts may The court sees no reason to apply the rule in the context of a coercive action filed subsequent to Defendant's anticipatory suit filed in Utahwhich is, at its heart, an action for a declaratory judgment. Certified Restoration Dry Cleaning Network, 511 F.3d 535, 551 (6th Cir. 2007) LLC v. See Tenke Corp., ("[T]he first-filed rule is not a strict rule and much more often than not gives way in the context of a coercive action filed subsequent to a declaratory judgment."). While Plaintiffs have the burden of establishing that the Court has personal jurisdiction over Defendants, only a prima facie showing is required at this stage of litigation. v. Neo Gen Screening, Defendants contend Inc., that 282 F.3d 883, they have § 56 contacts with The Kentucky long-arm is not per se coextensive with the limits of federal due process. 51, 2002). 454.210, while construed liberally in favor of long- arm jurisdiction, S.W.3d (6th Cir. insufficient Kentucky for this action to go forward. statute, KRS 887 See Neogen Corp. (Ky. Caesars Riverboat Casino, LLC v. Beach, 336 2011). The 3 Court finds that the long-arm statute is satisfied, detail below, business however, Defendants' in the because as explained in greater internet sales constitutes transacting Commonwealth. See KRS 454.210 (2) (a) (1). § Further, the alleged violations of the Lanham Act likely constitute a tortious injury under §§ 454.210 (2) (a) (3) and 454.210 (2) (a) (4). With respect to federal due process concerns, inquiry is whether the such minimum facts contacts demonstrate that with Kentucky that the relevant Purple possesses the exercise of jurisdiction would comport with "traditional notions of fair play and substantial justice." 1459 (6th Cir. 1991) (quoting Int' 1 Shoe Co. U.S. 310, 316 (1945)) 935 F.2d 1454, Theunissen v. Matthews, v. Washington, 326 Specific personal jurisdiction exists when: (1) the defendant purposefully avails himself of the forum state, invoking the benefits and protections of the forum state's laws; ( 2) the cause of action arises from the defendant's activities there; and (3) the acts of the defendant have a substantial enough connection with jurisdiction over Mohasco Indus. the forum the Inc., otate defendant 401 F.2d 374, to make reasonable. 381 the S. exercise of Co. v. Mach. (6th Cir. 1968). Whether a forum state may assert jurisdiction over a nonresident defendant "focuses on the relationship among the defendant, the litigation." 775 (1984) Keeton v. Hustler Magazine, Inc., (internal quotation marks omitted). 4 the forum, and 465 U.S. 770, Defendants rely on the Supreme Court's decision in Walden v. Fiore, 134 S.Ct. 1115 (2014), to argue that Plaintiffs' connection to Kentucky is improperly being attributed to Defendants. Unlike Purple, the defendant in Walden had no identifiable connection to the The forum state. Supreme Court made clear, however, that personal jurisdiction must be based on contacts that the "defendant himself" creates with the forum state. 134 S.Ct. at 1122 Walden, (quoting Burger King Corp. v. Rudzewicz, 471 U.S. 462, 475 (1985)). Courts have "consistently rejected" attempts to satisfy the minimum contacts requirement by demonstrating plaintiff and the forum state. de Colombiar S.A. v. between the (citing Helicopteros Nacionales Id. 466 U.S. Hall, connections 408, 417 (1984)). Further, the court must look to the defendant's contacts with the forum state itself-not just defendant's contacts with persons who reside in the forum state. examines Id. Defendants' It is through this lens that the Court conduct-both the use of their website, www.onpurple.com, and the alleged violations of the Lanham Act. "The operation of an Internet website can constitute the purposeful availment of the privilege of acting in a forum state under the first Mahasco factor a degree that reveals residents of the state.'" Cir. 2002) Purple's (quoting website, 'if the website is interactive to specifically intended interaction with Bird v. Parsons, 289 F.3d 865, 874 (6th Neogen customers Corp., in all 5 282 F.3d at fifty 890). states may Through purchase Purple's products. There is no charge for shipping to forty-eight states, including Kentucky. Website users in Kentucky, as well as those in all other states, may do the following: engage in online chat with Purple's representatives; sign up for Purple's email list; locate Purple's customer service number; contact Purple via email; The and register and save their information on the website. Court recognizes that Plaintiffs have not alleged Defendants have actually served customers in Kentucky. Plaintiffs have the burden of proving personal that And while jurisdiction, Defendants do not contest having website-based sales in Kentucky. As Plaintiffs are only required to make a prima f acie showing of jurisdiction at this point, the Court is satisfied that Plaintiffs purposefully availed themselves of acting in Kentucky. The Court must also consider whether the Plaintiffs' claims "If a defendant's arise from Purple's contacts with Kentucky. contacts with the forum state are related to the operative facts of the controversy, then an action will be deemed to have arisen from those contacts." 1267 (6th Cir. 1996). have substantial activities. 1089 (6th CompuServe, Inc. v. Patterson, 89 F. 3d 1257, Further, a plaintiff's claims need only a connection with the defendant's Third Nat'l Bank v. WEDGE Grp., Inc., Cir. 1989). Purple's activity in forum state 882 F.2d 1087, Kentucky springs completely from its website through which it markets its mattresses and other products. Plaintiffs 6 allege that Purple engaged in violations of the Lanham Act through a Accordingly, prominently on its website. commercial featured the operative facts in this matter are related to the alleged contacts between Purple and Kentucky. Finally, in order to exercise personal jurisdiction, the Court must find that doing so is reasonable in light of the connection that allegedly exists between Purple and Kentucky. of the first two factors presumption that that reasonable. find it the to allegations its at Kentucky consumers, have and the Utah has an suggest, that does not in overshadow this the Kentucky, The prima facie showing this Court's is particular to significantly harm a Kentucky business. action, factors the Court concludes that it in protecting the as Defendants making personal jurisdiction over Defendants in Kentucky reasonable. the foregoing, a jurisdiction is businesses. Plaintiff, interest in interest potential as well as Although lawsuit legitimate residents issue a creates While Purple may 89 F.3d at 1268. defend outweighed by Kentucky's of analysis Mahasco the exercise of personal CompuServer Inc., burdensome interests of Satisfaction Based upon Plaintiffs have made a personal jurisdiction over Defendants. III. Plaintiffs seek the entry of a temporary restraining order/preliminary injunction requiring the Defendants to remove 7 and cease using the advertisement known as the "Goldilocks Video" Plaintiffs bear the and any and all related marketing material. burden of establishing that they are entitled to such relief. Overstreet v. Lexington-Fayette Urban Cty. Gov't, See 305 F.3d 566, In determining whether to grant such relief, 573 (6th Cir. 2002). the Court considers the following factors: (1) whether the movant has a strong likelihood of success on the merits; (2) whether the movant would suffer irreparable injury absent the relief sought; ( 3) whether granting the cause substantial interest would injunction. be harm to served Summit restraining order or injunction would others; by Cty. Blackwell, 388 F.3d 547, 550 and issuing Democratic ( 4) the whether the restraining Cent. (6th Cir. 2004). & Exec. public order or Comm. v. No one factor is a prerequisite to relief but, rather, the factors are to be balanced against each other. Overstreet, 305 F.3d at 573. The Lanham Act provides, in relevant part: (a) ( 1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact . (B) In commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, 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. 8 15 u.s.c. § 1125. Defendants do not dispute that Plaintiffs' Tempur-Contour Collection mattress is the mattress featured and referred to as the "hard" mattress in the Goldilocks Video. It is further undisputed that, in reference to the "hard" mattress, the Goldilocks character states the following: Looking for some shoulder pain? Try a hard mattress. It may feel like a rock and put pressure on your hips, but it's the perfect way to tell your partner: "Hey baby, want some arthritis?" At another point, the character refers to the "hard" mattress as a "prison bed." The Court is persuaded that these are misleading statements under the Lanham Act. likely false or When a Tempur-Contour mattress is shown in the commercial, the actor suggests that the mattress causes shoulder pain, is "rock hard," puts pressure on The Court has considered your hips, and may cause arthritis. Defendants' argument that the entire commercial is obviously in jest, but the Court unaware of any "humor exception" that would make literally false statements acceptable under the Lanham Act. Defendants' be statements concerning the "hard" mattress can hardly considered puffery, negative as heal th effects permissible advertising. F. 3d 1357, 1368 (2013) defined as "subjective these statements clearly cross the regarding potential line beyond what is See Hall v. Bed Bath & Beyond, Inc., 705 (citation and alteration omitted) claims about 9 products, which (puffery cannot be proven either true or false."). Hilfiger Licensing, Inc. v. Defendants also rely on Tommy Nature Labs, LLC, 221 F.Supp.2d 410 (S.D.N.Y. 2002), in which the court found that the defendants had not committed false advertising under Section 43(a) of the Lanham Act for using a label that read, "If you like Tommy Hilfiger, your pet will love Timmy Holedigger." The court characterized the statement as "unverifiable puff"-easily distinguishable from the statements at issue here. Further, in the Hilfiger matter, the plaintiff's product was portrayed in a flattering light as opposed to a disparaging one, as is the case here. Defendants contend that the Tempur-Contour mattress is not sufficiently recognizable such that viewers will recognize it as Plaintiffs' product. Based on the evidence presented, the Court is persuaded otherwise. Plaintiffs have Plaintiffs have spent millions of dollars across many forms of advertising to promote Plaintiffs' trade dress and the brand is extremely prevalent among mattress consumers. In excess of $300,000,000 in sales of products bearing the Tempur Sealy trade dress in the Tempur-Contour line have been YouTube sold. public Further, comment mattress in the video." Purple's section that representative stated in a "Tempurpedic was the hard The Court is satisfied that a significant number of viewers have and would continue to recognize the mattress as Plaintiffs' product. 10 The Court must also consider whether the Plaintiff would suffer irreparable injury in the absence of the relief requested. Because Plaintiffs have demonstrated a strong likelihood of showing that Defendants made false or misleading statements in violation of the Lanham Act, Corp. Jan. v. 19, JRN, the Court presumes irreparable harm. Inc., 2012) 3:11-CV-260-H, 2012 WL 170196, (citing Lorillard Tobacco Co. *6 See KFC (6th Cir. Amouri's Grand v. Foods, Inc., 453 F.3d 377, 381-82 (6th Cir. 2006)). Additionally, the Court notes that the Goldilocks video is wildly popular, having been viewed millions of times and, no doubt, the number of views is increasing daily. The Court finds that granting the relief requested will not harm others, as it is very limited in scope and Purple will still be able to advertise its products. not be significantly affected Thus, Purple's business should and complete access to Purple's products. consumers will Finally, still have the Court finds that the public interest will be protected, as false advertisements should be removed from the public's view. It is always in the public's best interest "to prevent consumers from being misled." Audi AG v. D'Amato, 469 F.3d 534, 550 (6th Cir. 2006) after balancing these factors, the Court is Accordingly, persuaded that a temporary restraining order/preliminary injunction is appropriate under these circumstances. 11 This the ~ l__-aay of April, 2016. Judge 12
]]>
Some case metadata and case summaries were written with the help of AI, which can produce inaccuracies. You
should read the full case before relying on it for legal research purposes.
This site is protected by reCAPTCHA and the Google
Privacy Policy and
Terms of Service apply.
