In an opinion Wednesday, Judge Schofield ruled that there was New York jurisdiction over a declaratory judgment action that a New York retailer, Rag & Bone, brought in response to trademark threats from a California volleyball company, Miramar Brands Group, Inc., finding that MBG’s campaign against Rag & Bone’s “Miramar” clothing line was sufficiently directed towards New York for case to proceed here.
The case focuses on Rag & Bone’s “Miramar” comfort-wear line, which it has sold for at least thirteen years. MBG, a California brand-management and licensing company, owns the registered MIRAMAR trademark for volleyball and volleyball-related beachwear. Last August, MBG’s counsel sent Rag & Bone a cease-and-desist letter into New York claiming exclusive rights and demanding Rag & Bone pull the collection. What followed was months of increasingly aggressive back-and-forth, including dueling letters between the parties’ respective New York counsel and an offer from MBG to license Rag & Bone the MIRAMAR name for ten years in exchange for a $10 million up-front fee plus escalating royalties. When Rag & Bone didn’t accept, MGS sent a wave of takedown notices to Amazon, Meta, Klaviyo, Nordstrom, and Saks demanding they stop carrying or advertising the Miramar collection.
Rag & Bone sued first, in New York, seeking a declaration that its use of “Miramar” doesn’t infringe and adding a tortious interference claim over the takedown campaign. MBG responded by filing its own infringement suit in the Central District of California—which promptly stayed itself pending the outcome here—and then moved to dismiss the New York action on personal jurisdiction and venue grounds.
MBG’s chief argument was that a trademark owner “should not subject itself to personal jurisdiction in a forum solely by informing a party who happens to be located there of suspected infringement.” But Judge Schofield found that MBG did much more than informing Rag & Bone of its position—so much so that it crossed the line into having sufficient contacts with New York for purposes of the relevant long-arm statute:
These facts show that MBG, through its conduct in New York, purposefully sought to establish a substantial ongoing business relationship with Plaintiffs, and thus demonstrate a clear intent by MBG to engage purposefully in business activities within the meaning of CPLR 302(a)(1). . . .
While sending a cease-and-desist letter into New York is not alone sufficient to establish personal jurisdiction, combining such demands with a persistent campaign of intertwining legal threats with solicitation of investments. . . constitutes business transacted in New York . . . .