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Kenyon v. Clare

United States District Court, M.D. Tennessee, Nashville Division

November 29, 2016

SHERRILYN KENYON, Plaintiff,
v.
CASSANDRA CLARE and DOES 1 THROUGH 50, Defendants.

          MEMORANDUM AND ORDER

          WAVERLY D. CRENSHAW, JR. UNITED STATES DISTRICT JUDGE

         Sherrilyn Kenyon brought this action against Cassandra Clare and Does 1 through 50, alleging multiple federal copyright violations arising from Clare's books, the “Shadowhunter Series.” (Doc. No. 30.) Before the Court is Clare's Motion to Dismiss (Doc. No. 41), arguing that the Court does not have personal jurisdiction over her, and even if it did, Kenyon's claims are time-barred. For the following reasons, Clare's motion is GRANTED IN PART and DENIED IN PART.

         I. ALLEGATIONS

         Beginning in 1998, Kenyon published the “Dark-Hunter Series, ” a series of books, short stories, and other original material. (Doc. No. 30 at 1.) Kenyon owns the trademark rights to certain marks, such as “Dark-Hunter, ” “Dream-Hunter, ” and “Were-Hunter.” (Id. at 4.) In or around 2000, Kenyon registered and began using the website domain name “dark-hunter.com” to promote her Dark-Hunter Series and provide additional content regarding the Dark-Hunter world. (Id. at 5.) Kenyon also produced several television commercials and videos, broadcast on major television networks and streaming sites, including “darkhunter.tv.” (Id.) There is also a variety of Dark- Hunter merchandise, such as a line of Ashton-Drake collectible dolls, clothing, coloring books, jewelry, and novelty items. (Id. at 6.)

         In 2006, Clare began marketing a work that incorporated one of Kenyon's Dark-Hunter trademarks as the name of one of Clare's protagonists. (Id.) Kenyon demanded that Clare remove the term “Darkhunter, ” and Clare replaced the term with “Shadowhunters.” (Id.) Clare and her publishers assured Kenyon that “Shadowhunters” would be used solely for the name of Clare's protagonists and that they would not expand the use of the “Shadowhunters” term or adopt it as a trademark. (Id.) In 2007, Clare published the book, “The Mortal Instruments: City of Bones.” (Id.) In 2009, Clare again assured Kenyon that she would not expand her use of the term “Shadowhunters.” (Id.)

         In late-2008 or early-2009, Clare's publisher printed approximately 100, 000 copies of a Shadowhunters book, mistakenly referring to the story's protagonists as “Darkhunters” instead of “Shadowhunters” on the back cover. (Id.) When Kenyon became aware of the mislabeled Shadowhunters books, she demanded that Clare correct the mislabeling, recall the mislabeled books that have been sold, and make an announcement on her website regarding her mislabeling. (Id. at 8-9.) Clare's publisher destroyed some of the mislabeled books, but refused to recall the books already in stores or sold. (Id. at 9.) The non-recalled books were sold across the country, including in Franklin, Tennessee. (Id.) These books led to confusion in the marketplace, where some purchasers thought that Clare was one of Kenyon's pennames. (Id. at 10.) The confusion exists today, where readers searching for one of Kenyon's books may be led to Clare's books in libraries and elsewhere. (Id. at 11.)

         Recently, Clare began using the website domain name “shadowhunters.com” to promote her novels, which the website describes as “Cassandra Clare's Shadowhunters.” (Id. at 7.) Clare wrote a motion picture called “Mortal Instruments: City of Bones, ” which was released in 2013. (Id.) This motion picture was primarily promoted and discussed through the use of the term “Shadowhunters.” Clare also wrote a television series, titled “Shadowhunters: The Mortal Instruments, ” which was released in 2015. (Id.) This television show is promoted on a website called, “shadowhunterstv.com.” Also in 2015, Clare released redesigned book covers that printed the words “A Shadowhunters Novel” along the right side or bottom of the covers. (Id. at 8.)

         The confusion is intensified by the similarities between the books. (Id. at 11-12.) Both series are derivative works and are “promoted, discussed, and celebrated in similar online forums and at similar conventions.” (Id. at 12.) The books have similar themes and are marketed to similar audiences. (Id.) Both series share a similar origin story. (Id. at 13.) Further, Kenyon uses a creed and tagline that includes the term “shadow, ” stating: “We are Darkness. We are Shadow. We are Rulers of the Night. We are the Dark-Hunters.” (Id.) The visual representations of the Shadowhunters are similar to the visual representations of the Dark-Hunters, including the representations on the book covers, marketing material, graphic novels, website, on the television show and movie, and on marketing materials and merchandise. (Id. at 14.)

         II. PROCEDURAL HISTORY

         On February 5, 2016, Kenyon filed the instant Complaint against Clare. (Doc. No. 1.) On February 19, 2016, Clare's attorneys entered a Notice of Appearance, stating that they “enter their appearance as counsel of record for Defendant Cassandra Clare . . . .” (Doc. No. 3.) On February 26, 2016, Clare waived service of the summons on her, but reserved “all defenses or objections to the lawsuit, the court's jurisdiction, and the venue of the action . . . .” (Doc. No. 12.) On April 8, 2016, the Magistrate Judge issued the Initial Case Management Order, which stated that Clare wished to contest personal jurisdiction. (Doc. No. 16 at 2.) On April 25, 2016, Clare filed a timely motion to dismiss for lack of personal jurisdiction. (Doc. No. 17.)

         III. STANDARD OF REVIEW

         Rule 12(b)(2) allows a defendant to file a motion to dismiss for lack of personal jurisdiction. “In a diversity action, the law of the forum state dictates whether personal jurisdiction exists, subject to constitutional limitations.” Intera Corp. v. Henderson, 428 F.3d 605, 615 (6th Cir. 2005). Tennessee's long-arm statute, Tennessee Code Annotated § 20-2-214, provides that a Tennessee court may exercise jurisdiction over an out-of-state defendant on “[a]ny basis not inconsistent with the constitution of this state or of the United States.” Id. at (6). Accordingly, the long-arm statute has been consistently construed to extend to the limits of federal due process. Gordon v. Greenview Hosp., Inc., 300 S.W.3d 635, 645 (Tenn. 2009).

         For purposes of a motion to dismiss under Rule 12(b)(6), the Court must take all the factual allegations in the complaint as true. Ashcroft v. Iqbal, 556 U.S. 662, 677 (2009). To survive a motion to dismiss, a complaint must contain sufficient factual matter, accepted as true, to state a claim for relief that is plausible on its face. Id. A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged. Id. Threadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice. Id. When there are well-pleaded factual allegations, a court should assume their veracity and then determine whether they plausibly give rise to an entitlement to relief. Id. at 679. A legal conclusion ...


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