Multi Access Ltd. v. Guangzhou Baiyunshan Pharm. Holdings Co.

Full title: MULTI ACCESS LIMITED, Plaintiff, v. GUANGZHOU BAIYUNSHAN PHARMACEUTICAL…

Court: United States District Court, S.D. New York

Date published: Aug 21, 2023

20-cv-7397 (LJL) (S.D.N.Y. Aug. 21, 2023)

Opinion

20-cv-7397 (LJL)

08-21-2023

MULTI ACCESS LIMITED, Plaintiff, v. GUANGZHOU BAIYUNSHAN PHARMACEUTICAL HOLDINGS CO., LTD. AKA GUANGZHOU BAIYUNSHAN PHARMACEUTICAL HOLDING CO., LTD.; WLJ AMERICA CO. INC.; GUANGZHOU WANGLAOJI GREAT HEALTH CO., LTD.; GUANGZHOU WANG LAO JI GREAT HEALTH INDUSTRY CO., LTD. AKA WLJ GREAT HEALTH INDUSTRY CO., LTD.; GUANGZHOU WANGLAOJI PHARMACEUTICAL CO., LTD.; GUANGZHOU WANG LAO JI GREAT HEALTH ENTERPRISE DEVELOPMENT CO., LTD. AKA WLJ GREAT HEALTH ENTERPRISES DEVELOPMENT CO., LTD.; GUANGZHOU PHARMACEUTICAL HOLDINGS LTD. AKA GUANGZHOU PHARMACEUTICAL GROUP; GUANGZHOU WANG LAO JI GREAT HEALTH ENTERPRISE CO., LTD.; GUANGZHOU WANGLAOJI HEALTH INDUSTRY CO., LTD., and TRISTAR FOOD WHOLESALE CO. INC., Defendants.

LEWIS J. LIMAN, UNITED STATES DISTRICT JUDGE:

OPINION AND ORDER

LEWIS J. LIMAN, UNITED STATES DISTRICT JUDGE:

Plaintiff Multi Access Limited's (“MAL” or “Plaintiff') brings an action alleging, inter alia, that Defendants Guangzhou Baiyunshan Pharmaceutical Holdings Co., Ltd. (“GBP”), its direct and indirect subsidiaries, and affiliates, have unlawfully copied and misappropriated MAL's trademarks, trade dress, and copyright with respect to its canned herbal tea beverage bearing the Chinese characters 王老吉 (“Wong Lo Kat”).¹ Dkt. No. 77 ¶¶ 2-3.²

1 In the Cantonese dialect, the Chinese characters 王老吉are pronounced “Wong Lo Kat.” Dkt. No. 77 ¶ 24. In the Mandarin dialect, the characters are pronounced “Wang Lao Ji.” Id. ¶¶ 2425.

2 The defendants in the operative complaint, which will be collectively referred to herein as “Defendants,” include GBP, WLJ (America) Co., Inc. (“WLJ”), Tristar Food Wholesale Co. Inc. (“Tristar”), Guangzhou Wanglaoji Great Health Co., Ltd., Guangzhou Wang Lao Ji Great Health Industry Co., Ltd. (a/k/a WLJ Great Health Industry Co., Ltd.) (“Great Health Industry”), Guangzhou Wanglaoji Pharmaceutical Co., Ltd (“Wanglaoji Pharmaceutical”), Guangzhou Wang Lao Ji Great Health Enterprise Development Co., Ltd. (a/k/a WLJ Great Health Enterprises Development Co., Ltd.), Guangzhou Pharmaceutical Holdings Ltd. (a/k/a Guangzhou Pharmaceutical Group) (“GPHL”), Guangzhou Wang Lao Ji Great Health Enterprise Co., Ltd. (“Great Health Enterprise”), and Guangzhou Wanglaoji Health Industry Co., Ltd. In connection with their opposition to Plaintiff's earlier motion for leave to file an amended complaint, GBP and WLJ submitted a declaration stating that Great Health Industry, Guangzhou Wanglaoji Great Health Co., and Guangzhou Wanglaoji Health Industry Co. are the same entity, although it appears that “Great Health Enterprise Development Co.” and “Great Health Enterprise” remain distinct entities. Dkt. No. 60 ¶¶ 5-7.

The operative complaint alleges thirteen claims for: (1) trademark infringement of one of Plaintiff's marks (the “‘908 Registration”); (2) trademark infringement of Plaintiff's “Red Label” design mark; (3) federal trade dress infringement; (4) federal unfair competition and false designation of origin; (5) federal false advertising; (6) reverse confusion; (7) copyright infringement; (8) trademark infringement and unfair competition in violation of New York common law; (9) violation of the New York anti-dilution statute; (10) unjust enrichment; (11) cancellation of one of defendant GBP's marks (the “‘210 Registration”) for likelihood of confusion; (12) cancellation of the ‘210 Registration for lack of bona fide intent to use; and (13) trademark cancellation for naked licensing. Id. ¶¶ 105-206.

Three of the Defendants-GBP, WLJ (America) Co. Inc. (“WLJ”), and Tristar Food Wholesale Co. Inc. (“Tristar,” and together with WLJ and GBP, “Moving Defendants”)- together move to dismiss Plaintiff's operative complaint pursuant to Federal Rules of Civil Procedure 12(b)(2), (6), and (7). Dkt. No. 141. For the following reasons, the motion to dismiss is granted solely as to Defendant GBP.

BACKGROUND

The following facts are drawn from the amended complaint, Dkt. No. 77 (“Amended Complaint”), and the materials submitted in connection with the motion to dismiss and are construed in the light most favorable to MAL.

I. MAL and its Intellectual Property

Plaintiff MAL is the successor in interest to the U.S. rights formerly held by companies owned by the descendants of Wong Lo Kat (王老吉), the creator of a secret formula for a famous herbal tea sold under his name since the 1800s in the Guangdong Province of China. Id. ¶ 18. In or about 1897, Wong Lo Kat's son, Wong Kwai Fa, and grandson, Wong Heng Yu, established operations in Hong Kong, where their business remains to this day. Id. ¶ 19. In or about 1913, a business separation agreement was reached among Wong Lo Kat's descendants, including those operating the business in Mainland China, concerning the operations in Hong Kong and Mainland China. Id. ¶ 20. Since 1913, the Hong Kong business has been controlled by the son, Wong Kwai Fa, and the grandson, Wong Heng Yu, and their family and successors, separate and apart from the business in Mainland China. Id. The rights in and to the Wong Lo Kat brand in jurisdictions outside of Mainland China, including the United States, remained with Wong Heng Yu and his successors. Id. ¶ 21.

MAL promotes, offers for sale, and sells various herbal tea-related beverages and products containing the secret formula in the United States under the Wong Lo Kat brand (the “Wong Lo Kat Tea Products”). Id. ¶ 26. Wong Lo Kat branded products have been continuously sold in the United States since at least 1897. Id. ¶ 22.

Among MAL's most popular and profitable products are its herbal teas sold in a red can (“Wong Lo Kat Red Can”). Id. ¶ 29. The design of the artwork and graphics comprising the can was completed in 1998 and has been used on the Wong Lo Kat Red Can to the present day. Id. ¶ 30. The Wong Lo Kat Red Can appears as follows:

Image Omitted Id. ¶ 29. The artwork and graphic design on the Wong Lo Kat Red Can is an original work of authorship created and protected under the copyright laws of Hong Kong SAR (the “Wong Lo Kat Work”). Id. ¶ 44. MAL is the owner of the U.S. rights in and to the Wong Lo Kat Work. Id. ¶ 45.

MAL is also the owner of a design mark, U.S. Reg. No. 4657844, which was filed on the basis of foreign registration (“Red Label Design Mark”). Id. ¶ 32; Dkt. No. 77-1. The description of the Red Label Design Mark in its registration states: “The color(s) red, black and brown is/are claimed as a feature of the mark.” Dkt. No. 77 ¶ 33; Dkt. No. 77-1. “The mark consists of an arrangement of bands of various widths of brown, red and black in the following order from top to bottom: brown, red, black, red, black, red, black and red.” Dkt. No. 77 ¶ 33; Dkt. No. 77-1. The design mark appears as follows:

Image Omitted Dkt. No. 77 ¶ 32. MAL has used the Red Label Design Mark in United States commerce since at least as early as 2007. Id. ¶ 34. The label design of the Wong Lo Kat Red Can features the elements enumerated in the Red Label Design Mark, including an arrangement of bands of various widths of colors in the order previously described. Id. ¶ 35.

MAL is also the owner of a family of 王老吉 (Wong Lo Kat)-formative trademarks (collectively, the “Wong Lo Kat Trademarks”). Id. ¶ 46. MAL's federally registered mark, U.S. Reg. No. 2005908 or the ‘908 Registration, claims first use anywhere at least as early as 1897, and first use in United States commerce at least as early as January 1993, in connection with “herbal tea for food purposes; mixture of tea and herbal tea for food purposes” in International Class 30. Id. ¶ 47. This trademark was registered on October 8, 1996, is incontestable, and has been renewed. Id.; Dkt. No. 77-2. The registered mark appears as follows:

Image Omitted Dkt. No. 77 ¶ 47. The ‘908 Registration states that “[t]he Chinese characters in the mark transliterate to ‘wang lao ji,' which mean ‘wang,' ‘old,' and ‘lucky' respectively in English, but when they are used together, they have no meaning.” Id. ¶ 48.

On July 12, 2016, MAL filed multiple applications to register the WONG LO KAT mark in vertical form with the United States Patent and Trademark Office (“USPTO”). Id. ¶ 52.

Those applications were assigned U.S. Application Serial Nos. 87101038 (“‘038 Application”), 87100961 (“‘961 Application”), 87100809 (“‘809 Application”), and 87100791 (“‘791 Application”) (collectively, the “MAL Applications”). Id. The mark in vertical form appears as follows:

Image Omitted Id.; see also Dkt. Nos. 77-3, 77-4, 77-5, 77-6. Each of the MAL Applications provide that “[t]he non-Latin characters in the mark transliterate to ‘Wang Lao Ji' and this has no meaning in a foreign language.” Dkt. No. 77 ¶ 54. The ‘961 Application claims first use anywhere at least as early as 1897 and first use in United States commerce since at least as early as March 23, 2007. Id. ¶ 55. The applications were filed based on MAL's bona fide intent to use the mark in connection with Chinese medicinal products in International Class 5 (the ‘961 Application), tea and herbal tea related products in International Class 30 (the ‘038 Application), beverages and preparations for making beverages in International Class 32 (the ‘809 Application), and tea-based confectionary in International Class 32 (the ‘791 Application). Id. ¶¶ 55-58.

Since at least as early 2007, the Wong Lo Kat Red Can has continuously featured a combination of distinctive source-identifying elements, including: (1) the Chinese characters 王老吉 appearing in the color yellow and shadowed in black positioned vertically³ in the center of the can's principal display panel, (2) a red background, (3) a thicker black or dark brown band followed by a thinner black or dark brown band at the top of the can, and (4) a thinner black band followed by a thicker black band at the bottom of the can, all of which combine to form its trade dress (the “Wong Lo Kat Trade Dress”). Id. ¶ 36. Since its release in 2007, MAL has sold more than 17 million units of herbal tea in a can bearing the Red Label Design Mark and the Wong Lo Kat Trade Dress in the United States. Id. ¶ 37.

3 Chinese characters in horizontal orientation are read in the same manner as Chinese characters in a vertical orientation. Dkt. No. 77 ¶ 53.

II. Defendants GBP and Its Subsidiaries and Affiliates

Defendants GBP and its subsidiaries and affiliates are alleged to have inherited the business of the Mainland China members of the Wong Lo Kat family. As such, GBP is the owner of the registered marks for Wong Lo Kat in the People's Republic of China (“GBP's Registered Marks”). GBP came into possession of GBP's Registered Marks through a chain of transactions. In or about the 1950s, when the Chinese government began seizing private companies and all associated assets, the Wong Lo Kat business that had remained in the People's Republic of China (“PRC”) became a state-owned operation (the “PRC Enterprise”). Id. ¶ 61. In or about 1988 and 1992, the PRC Enterprise applied for registration of a device mark consisting of the Chinese characters for Wong Lo Kat in the People's Republic of China. Id. ¶ 62. The PRC Enterprise subsequently transferred the People's Republic of China Wong Lo Kat registrations to GPHL in or about 1997. Id. GPHL is a state-owned enterprise established by, and under the administration of, the Guangzhou Municipal People's Government State-owned Assets Supervision and Administration Commission in China. Id. ¶ 60. GPHL transferred GBP's Registered Marks to Defendant GBP in 2019. Id. ¶ 62. MAL alleges, upon information and belief, that GPHL is the controlling shareholder of Moving Defendant GBP. Id. ¶ 60.

MAL alleges upon information and belief that Defendants (excluding Tristar and WLJ) are direct and indirect subsidiaries of GBP that all play a role in advertising, promoting, offering for sale, and selling herbal tea and related products under the Wong Lo Kat brand, including what the operative complaint refers to as the “GBP Infringing Products,” Id. ¶ 64. The operative complaint alleges that GBP's annual report and website represent that “many” of the subsidiaries of GBP listed as Defendants are jointly and severally involved in the sale of the GBP Infringing Products. Id. ¶ 65.

GBP itself, however, does not directly produce, sell, or advertise the products bearing the GBP marks in the United States. Dkt. No. 143 ¶ 17; Dkt. No. 144-2 at 62-63. Instead, Great Health Industry, one of its subsidiaries, is “mainly engaged in the production, R&D and sale of beverage, food, healthcare product, and etc...., including the subsidiaries, WLJ Great Health and Wang Lao Ji, and the main products include Wang Lao Ji Herbal Tea.”⁴ Dkt. No. 148-1 at 16, 19; see also Dkt. No. 144-2 at 63, 78, 121. Great Health Industry entered into exclusive sales agency agreements and general agency agreements with Tristar on at least four different occasions from 2014 to 2019. Dkt. No. 77 ¶ 66. Those agreements authorize Tristar, as a “general agent,” to sell Wanglaoji herbal tea produced by Great Health Enterprise, and also allow Tristar, with the consent of Great Health Enterprise, to prevent others from selling beverage products counterfeiting Wangloaji trademarks and to otherwise promote the brand of Wanglaoji in the United States. Dkt. No. 149-6; Dkt. No. 149-7 at ECF pp. 9, 11; Dkt. No. 149-8 at ECF pp. 3, 5; Dkt. No. 149-9.⁵

4 The Report defines “Wang Lao Ji” as “Guangzhou Wang Lao Ji Pharmaceutical Co., Ltd.,” and “WLJ Great Health” as Great Health Industry. Dkt. No. 148-1 at 4. Both are subsidiaries of GBP.

5 Plaintiff utilizes the name “Great Health” to collectively reference some of Defendants (but not GBP itself): Great Health Enterprise, Great Health Industry, Guangzhou Wanglaoji Great Health Co., Ltd., Guangzhou Wang Lao Ji Great Health Enterprise Development Co., Ltd. (AKA WLJ Great Health Enterprises Development Co., Ltd.). Dkt. No. 77 ¶ 66.

III. The Allegations of the Amended Complaint

In or around 2017, MAL became aware of what it describes as the “GBP Enterprise's” promotion, offering for sale, and actual sale of herbal tea products in red cans and bottles in the United States bearing designs and markings similar to the MAL's intellectual property, or the GBP Infringing Products. Dkt. No. 77 ¶ 70. As will be discussed later in this opinion, the “GBP Enterprise” is a name that MAL gives to GBP and those subsidiaries (thus excluding Tristar and WLJ) whom MAL alleges were involved in the sale or marketing of the GBP Infringing Products. Id. ¶ 64. It does not reflect how those entities describe themselves.

The Amended Complaint alleges that Defendants infringe MAL's trademarks. With respect to GBP Infringing Products, the Amended Complaint alleges that Defendants' products copy all of MAL's intellectual property, including prominently featuring a red label with dark colored bands at the top and bottom of the red portions, and the Wong Lo Kat Trademarks. Id. ¶ 76. An image of two of the GBP Infringing Products is depicted below:

Image Omitted Id. ¶ 75. The GBP Infringing Products are also sold in six packs in blue packaging (the “Blue Packaging”) depicted below, which possesses an image of a can that bears likeness to the Wong Lo Kat Red Can:

Image Omitted Id. ¶ 77. MAL alleges that the Blue Packaging contains a number of misleading statements including, “Recognize the authentic Wang Lao Ji (Wong Lo Kat),” “The authentic herbal tea Wang Lao Ji (Wong Lo Kat) is formulated with herbal plant materials,” and “The national brand Wang Lao Ji (Wong Lo Kat) was founded in 1828.” Id. ¶ 83. Defendants also use the Blue Packaging in advertising materials to promote the GBP Infringing Products. Id. ¶ 81.

The Amended Complaint also alleges that the GBP Enterprise places a virtually identical red can image (with the Wong Lo Kat Trademarks in vertical yellow characters) in advertising on billboards in Times Square and in Chinese language newspapers. Id. ¶ 84.

Tristar advertises the GBP Infringing Products with graphics on its delivery trucks that were provided by the GBP Enterprise, and also through print and radio, for which GBP has allegedly paid. Id. ¶ 67. Further, the operative complaint alleges that GBP Enterprise representatives and Tristar attended a two-day event in Chicago sponsored by the GBP Enterprise for the purpose of promoting the GBP Infringing Products. Id. ¶ 68.

The Amended Complaint also alleges that, at least as of December 2018 when MAL learned of it, WLJ opened the Wang Lao Ji herbal tea museum and shop on Grand Street in New York City (the “Grand Street Tea Museum”). Id. ¶ 71. MAL alleges upon information and belief that WLJ was formed in or about July 2018. Id. ¶ 63. The Grand Street Tea Museum is open to the public and Plaintiff alleges that Defendants promote, offer for sale, and sell the GBP Infringing Products there, as well as additional tea products made by the GBP Enterprise. Id. ¶¶ 71, 86. While Mike Lien, Vice President of Tristar, claims to be the sole owner of WLJ, the GBP Enterprise provided all the designs and graphics for the walls of the Grand Street Tea Museum. Id. ¶ 72. MAL alleges that the Grand Street Tea Museum advertises and promotes an inaccurate and misleading history of the brand, as well as touts unsubstantiated health benefits of the GBP Infringing Products, and that the Defendants prominently use a red can with the Wong Lo Kat Trademarks appearing vertically on signage and cups to promote the GBP Infringing Products. Id. ¶¶ 85, 88, 89. Finally, the operative complaint alleges that the GBP Enterprise has claimed ownership and extensive involvement with the Grand Street Tea Museum, and that upon information and belief, the Grand Street Tea Museum sells only GBP Enterprise's products, including the GBP Infringing Products. Id. ¶¶ 73-74.

MAL also alleges that GBP misappropriated the Wong Lo Kat Trademarks by filing the following applications (and in one case, registration) with the USPTO: (1) U.S. Application Serial No. 87474841 (the “‘841 Application”) for the mark Wang Lao Ji filed on intent to use in connection with International Classes 30 and 32, Id. ¶ 96(a); Dkt. No. 77-7; (2) U.S. Application Serial No. 86691579 for the following mark, which was filed on intent to use in connection with International Classes 5, 30, and 32:

Image Omitted Dkt. No. 77 ¶ 96(b); Dkt. No. 77-8; (3) U.S. Reg. No. 6208210 (or the ‘210 Registration) for the same mark, which was filed on July 13, 2015 and registered on December 1, 2020 in connection with International Classes 30 and 32, Dkt. No. 77 ¶ 96(c); Dkt. No. 77-9; and (4) U.S. Application Serial No. 79186883 for the mark WONGLO, which was filed on intent to use in connection with International Classes 5, 30, and 32, Dkt. No. 77 ¶ 96(d); Dkt. No. 77-9. MAL alleges upon information and belief that GBP has not used the WONGLO mark anywhere in the world and has no intent to use the WONGLO mark in the United States. Dkt. No. 77 ¶¶ 97-99.

IV. Jurisdiction-Related Discovery

The parties have undertaken significant jurisdictional discovery in this case, and the parties dispute the meaning and import of the documents produced. Such documents include, among others, those from an opposition action between MAL and GBP before the Trademark Trial and Appeals Board of the USPTO (Opposition No. 91233411) (“TTAB Case”), corporate reports of GBP, the agreements with Tristar, and various emails. The parties also deposed and produced a sworn declaration of Yao Jiangxiong, GBP's corporate representative pursuant to Federal Rule of Civil Procedure 30(b)(6). The following constitute the Court's factual findings on the question of personal jurisdiction.

A. Activities of GBP and the GBP Enterprise

1. The Presence of GBP in the United States and its Role in the GBP Enterprise

GBP, as opposed to the GBP Enterprise, has scant if any presence in the United States. GBP is a Chinese incorporated company with a principal place of business in Guangzhou, Guangdong, China. Dkt. No. 143 ¶¶ 3-4. GBP indicated in an interrogatory response in the TTAB Case that it was “a holding company and part of an interconnected group of related businesses.” Dkt. No. 149-1 at ECF p. 3. Yao's sworn declaration states that none of GBP's members, officers, managers, or directors reside in New York, Dkt. No. 143 ¶ 5; that GBP does not have offices or employees in New York, Id. ¶¶ 6-7; that GBP is not licensed or registered to do business in New York, Id. ¶ 8; that GBP does not have a registered agent in New York, Id. ¶ 9; that GBP does not own, use or possess property in New York or pay taxes in New York, Id. ¶¶ 11-12; that GBP never filed a lawsuit in state or federal court in New York (and, prior to this lawsuit, has never been sued in any such court in New York), Id. ¶¶ 13-14; and that a representative of GBP has never testified in state or federal court in New York, Id. ¶ 15.

GBP's role in the GBP Enterprise is “responsibility] for the renewal of trademarks as well as protection of brands,” including the Wang Lao Ji brand. Dkt. No. 148-17 at 30. Yao testified in his deposition that the “renewal of trademarks” means that “once a trademark is reaching its expiration date, . . . the validity of the trademark needs to be extended.” Id. at 42. That work covered “[a]ll countries.” Id. Renewal work involves “selecting] a professional agency to renew a registered trademark” and “submitting] documents that are required for trademark renewal” to them. Id. at 46. “Under normal circumstances, there's no need for the subsidiaries to provide any documents” because those trademarks are owned by GBP. Id. “Protection of brands” also at times requires collaboration with GBP's subsidiaries to avoid confusion. In a joint letter filed by GBP and its indirect subsidiary, the Food and Beverage Branch of Guangzhou Wanglaoji Pharmaceutical, before the USPTO related to the ‘841 Application, the two entities stated the following:

The above-referenced trademark application for WangLaoJi (Stylized) has been refused on the basis of U.S. Trademark Registration No . 2153322. For the reasons that follow, Food and Beverage Branch of Guangzhou Wanglaoji Pharmaceutical Company Limited hereby gives its consent to Guangzhou Baiyunshan Pharmaceutical Holdings Co., Ltd. to use and register in the United States the WangLaoJi (Stylized) trademark as depicted in U.S. Trademark Application Serial No. 87474841, as the parties believe there is no likelihood of confusion arising from the co-existence of the marks.

Food and Beverage Branch of Guangzhou Wanglaoji Pharmaceutical Company Limited is related to Guangzhou Baiyunshan Pharmaceutical Holdings Co., Ltd. The companies share the same parent company, Guangzhou Pharmaceutical Holding Limited. Therefore, the parties, as affiliated companies, work hand-inhand to avoid confusion in trade that would be contrary to their best interests, and they are in a position, due to their close relationship, to expeditiously correct any situation that could possibly give rise to confusion in the marketing of their respective goods.

Moreover, each party will monitor the marketplace and take steps to notify the other should it come to its attention that any confusion as to source has arisen with respect to the goods identified in the above-referenced application. That party shall take reasonable steps to address such confusion.

Dkt. No. 148-16.

GBP also licenses its marks for use. Yao declared that GBP receives a license fee for the worldwide use of its marks, including use in New York and elsewhere in the United States. Dkt. No. 143 ¶ 18. Yao testified, however, that “Great Health” does not “have GBP's permission to sell tea products bearing the Wang Lao Ji marks outside of China.” Dkt. No. 144-2 at 121-22. He stated that as far as he knew, GBP had not licensed its trademark registered in the United States to Great Health Industry, and had not yet taken any steps to object to Great Health Industry's sale of tea products allegedly bearing the Wang Lao Ji trademarks in the United States, explaining that “[b]ecause we have not signed any agreement, we are in the stage of collecting information and we haven't done that.” Dkt. No. 148-17 at 124.

GBP's role also did not involve the design of packaging with respect to the GBP Infringing Products. Yao declares that GBP was not involved in designing the allegedly infringing packaging identified in the Amended Complaint, Dkt. No. 143 ¶ 19, and that GBP did not review or approve the allegedly infringing packaging identified in the Amended Complaint, Id. ¶ 20. Consistent with his declaration, Yao testified that, with respect to the allegedly infringing red cans, the “design of packaging of this subsidiary is their own responsibility. GBP does not take part in this, nor does it inspect or approve this.” Dkt. No. 148-17 at 86. Yao testified that although GBP was aware that some of Great Health Industry's products that bear the Wang Lao Ji trademarks are sold in the United States, he only knew this is so because that “information can be found in the public domain,” and that “the information GBP ha[s] on Great Health Industry sales of tea products in the U.S. only come[s] from what it sees in the public domain.” Id. at 80. Great Health Industry is “independent as to . . . the production and sales of the products. As long as it is legal, they do not need to report it to GBP.” Id.

Finally, GBP receives and reports consolidated sales target information from its subsidiaries. When those sales targets are missed, the subsidiaries implement an “examination system” to meet their sales targets, and GBP monitors the subsidiaries to ensure that they carry out what they are expected to do according to their own examination systems. Yao testified that GBP receives information from subsidiaries, “consolidates information on sales targets,” “makes recommendations to management of GBP,” and then publishes the sales targets. Id. at 63, 65. In short, GBP is “responsible for the macro targets.” Dkt. No. 144-2 at 71. He explained that “[i]t's not approval [of sales targets] per se. It's consolidation.” Dkt. No. 148-17 at 65. During that process, GBP is “respectful to the[] targets provided to us by our subsidiary.” Id. at 66. If the subsidiary does not meet its sales targets, each subsidiary has an “examination system” which it implements on its own. Id. at 66-67. The “subsidiaries run on a system whereby the general managers [of the subsidiaries] are accountable,” but the subsidiaries oversee the system affecting income of the managers. Id. at 64, 66. When the personal income of a general manager is affected by the subsidiary's examination system, the subsidiary informs GBP to allow GBP to execute any changes in income for general managers. Id. at 66-67. GBP monitors the subsidiaries to carry out what they are expected to do according to their own examination systems and, by doing so, “exercises its right of macro management.” Id. at 67.

Neither WLJ nor Tristar is a part of the GBP Enterprise or a subsidiary of GBP. Dkt. No. 143 ¶ 21. GBP had no role in the formation of WLJ or Tristar. Id. ¶ 22. Nor does GBP control, manage, or supervise WLJ, Tristar, or their businesses, including the alleged marketing, promotion, or sale of any of the GBP Infringing Products. Id.

2. Visits to New York, New Jersey, and Chicago

Certain individuals associated with Great Health Enterprise-but not with GBP itself- have traveled to New York, New Jersey, and Chicago to promote and engage in transactions related to the GBP Infringing Products. In 2017 and 2019, Rao Bing, and an individual identified as Mr. Tsui, the CEO of Great Health Enterprise, visited the New Jersey offices of Tristar to sign exclusive sales agency agreements with Tristar. Dkt. No. 149-3 at 47-52, 64-65, 86-87. In 2017, Rao as well as an individual identified as Mr. Yung, who was affiliated with Great Health Enterprise, traveled to Chicago to promote the GBP Infringing Products. Id. at 6669, 108. The 2017 Annual Report of GBP, reporting on behalf of the GBP “Group”-defined in GBP's reports, including the 2017 Annual Report, as “the Company and its subsidiaries,” see, e.g., Dkt. No. 148-1 at 3; Dkt. No. 148-8 at 2; Dkt. No. 148-9 at 3-describes this event in the following way: “Wang Lao Ji Herbal Tea became the exclusive official drink for Fortune Global Forum to further enhance its internationalization and influence.” Dkt. No. 148-9 at 28. The 2017 Interim Report similarly states that the Group was engaged in “[p]roactively promoting the international construction of Wang Lao Ji brand, by virtue of the discussion forum of ‘Chinese Herbal Tea Culture and Wang Lao Ji in the U.S. Market' in the Chicago roadshow activity of Fortune Global Forum.” Dkt. No. 148-8 at 23. Rao, in September 2018, sought to solicit a West Coast distributor to attend the opening of the Grand Street Tea Museum in Manhattan. Dkt. No. 150-1 at ECF p. 3.

Rao is identified as occupying several roles, but none of them are with GBP. In his emails, Rao's signature block identifies him as “Director, Oversea [sic] business Department, Wang Lao Ji Herbal Tea brand.” Id. at ECF p. 6. In an email from February 26, 2019, his signature block identifies him as the “Director, Oversea [sic] business Department, Guangzhou Wang Lao Ji Great Health Industry Limited.” Dkt. No. 150-2 at ECF p. 2. MAL and GBP are also adversaries in the TTAB Case, and in the interrogatories submitted in the TTAB Case on April 19, 2018, the opposer in the TTAB Case lists Rao as “Director of Overseas Business Department, Guangzhou Wanglaoji Grand Health Co. Ltd.^[6] Dkt. No. 149-1 at ECF p. 4.^[7]

[6] This appears to be a translation error, and the “Grand Health” should instead be “Great Health Industry.”

[7] The TTAB interrogatory response also identifies a “Guo Jiawen” as someone who has knowledge of the products sold under GBP's marks. The response identifies Guo as a “Manager of Overseas Business Department, Guangzhou Wanglaoji Grand Health Co., Ltd.” Dkt. No. 141 at ECF p. 4.

3. Advertisements in New York and Elsewhere

Although the GBP Enterprise engages in advertising for the GBP Infringing Products, GBP itself does not. Yao's declaration states that GBP does not advertise in New York. Dkt. No. 143 ¶ 10. Yao's declaration emphasizes that GBP does not control, manage, or supervise the alleged marketing, promotion, or sale of any of GBP Infringing Products in New York or elsewhere in the United States. Id. ¶ 23. It also states that GBP only exercises the control necessary to guarantee the quality of the accused herbal products bearing GBP's WANG LAO JI marks, and that its quality-control activities do not occur in New York or the United States. Id. ¶ 24. Instead, the 2020 Annual Report indicates that the subsidiaries WLJ Great Health and Wang Jao Li are responsible for the products Wang Jao Li Herbal Tea, among others, in conjunction with the “Great Health Industry segment of the Group.” Dkt No. 148-1 at 16. It specifically provides that “WLJ Great Health and Wang Lao Ji” are “responsible for the products' advertisement investment, and participate in terminal expansion, promotion and customer maintenance, etc.” Id. The response to interrogatories states that the Opposer- defined expansively to include GBP and its subsidiaries and affiliates-REDACTED XXXXX Dkt. No. 149-1 at ECF p. 8.

The GBP Enterprise has advertised at least twice in New York City's Times Square. The email from Rao to the West Coast distributor described marketing of the GBP Infringing Products in Times Square. Rao's email states that to celebrate the “brand's 190th anniversary,” “our Wang Lao Ji brand will be on the Nasdaq Billboard in New York during our Chinese National Day holiday to share the joy with the American people and our friends all over the world and to promote the brand of our Wang Lao Ji Herbal Tea.” Dkt. No. 150-1 at ECF p. 2. The “Opposer” in the TTAB Case also produced documents showing payment for a billboard in Times Square and pictures of an advertisement. Dkt. No. 148-7; Dkt. No. 149-4.

4. Grand Street Tea Museum

The GBP Enterprise, but not GBP specifically, opened the Grand Street Tea Museum in New York City. The 2018 and 2021 Corporate Social Responsibility reports of GBP describe the Grand Street Tea Museum. The reporting entity of these reports is GBP, “including] its subsidiaries and joint ventures.” Dkt. No. 148-10 at ECF p. 3; Dkt. No. 148-11 at 2. The report states that “[w]e have . . . established the first overseas Chinese Herbal tea museum in New York, US.” Dkt. No. 148-10 at ECF p. 4. The description includes a photograph that is also featured on the website of defendant Guangzhou Wanglaoji Health Industry Co., Ltd. One of the individuals in the photo, Chen Qeiping, is an “assistant to the general manager” of GBP's parent company, GPHL. Dkt. No. 148-17 at 112-14. Press releases from Great Health Industry and news articles include comments from GBP subsidiaries describing the opening of the Grand Street Tea Museum. Dkt. Nos. 148-24, 148-25. There were, however, no press releases and no comments from GBP. Id.

5. Tristar Agreements

Great Health Enterprise signed an authorization letter and sales agency agreement with Tristar for the latter to serve as the exclusive agent of Great Health Enterprise in America. Dkt. Nos. 149-6-149-9. In 2014, Great Health Industry signed a “general agency” agreement with Tristar for the duration of 2014. Dkt. No. 149-9. In 2016, Great Health Enterprise authorized Tristar to serve as an exclusive agent and authorized Tristar “to supervise and crack down [on] the fake product or the other red cans which is [sic] not authorized American version in American Market.” Dkt. No. 149-6; see also Dkt. No. 149-3 at 93-97. In 2017, Great Health Industry entered into “Cooperation Agreement on Agency Sales of Wang Lao Ji” with Tristar. Dkt. No. 149-7. RFDACTE XXXXX Id. at ECF p. 8. In 2019, Great Health Enterprise and Tristar signed another “Sales Agency Partnership Agreement of Wanglaoji Herbal Tea,” with similar conditions as the 2017 agreement. Dkt. No. 149-8.

Pursuant to those agreements, Tristar sent cease and desist letters to Gold City Supermarket in Flushing, New York to cease participating in the grey market. Dkt. No. 149-3 at 99. Tristar also advertises the GBP Infringing Products on its delivery trucks. Dkt. No. 148-18 at 114; Dkt. No. 148-29. The Opposer's responses in the TTAB Case also indicate that GBP's canned tea drinks were imported by Tristar and are “sold all over the [United States].” Dkt. No. 149-1 at ECF p. 7. GBP and Tristar, during discovery in the TTAB Case, also produced bills of lading, indicating that products were loaded in China and destined for New York City ports with the Consignee designated as Tristar. Dkt. No. 147 at 4 n.6; Dkt. No. 149-2.

GBP is not a party to these agreements. Consistent with GBP's non-party status, Yao's declaration states that GBP does not manufacture, market, import, sell, or contract to supply any goods, including any of the GBP Infringing Products, to any entity or individual in New York or elsewhere in the United States, including WLJ. Dkt. No. 143 ¶ 17.

PROCEDURAL HISTORY

Plaintiff filed its original complaint on September 10, 2020. Dkt. No. 1. The complaint named only GBP and WLJ as Defendants. Id. GBP and WLJ filed a motion to dismiss on March 5, 2021, with a supporting memorandum and declaration. Dkt. Nos. 27-29. The parties then filed a joint letter motion for discovery on April 16, 2021, Dkt. No. 30, which the Court granted on April 17, 2021, Dkt. No. 31. Plaintiff filed its opposition to the motion to dismiss on September 21, 2021, Dkt. No. 45, with two supporting declarations, Dkt. Nos. 47-49. Also on September 21, 2021, Plaintiff filed a motion for leave to file an amended complaint with a supporting memorandum, which withdrew its claim under New York General Business Law §§ 349 and 350, and named the remaining Defendants in addition to GBP and WLJ. Dkt. Nos. 50, 51. Plaintiff also moved to strike the declaration supporting GBP and WLJ's motion to dismiss. Dkt. No. 52. On November 8, 2021, GBP and WLJ filed an opposition to the motion for leave to file an amended complaint with two supporting declarations, as well as an opposition to the motion to strike with a supporting declaration. Dkt. Nos. 57-63. On November 15, 2021, GBP and WLJ filed a reply brief in support of the motion to dismiss, as well as a supporting declaration. Dkt. Nos. 65-68. On November 29, 2021, Plaintiff filed its reply memorandum in support of its motion for leave to file an amended complaint with a supporting affirmation, as well as a reply memorandum in support of its motion to strike. Dkt. Nos. 70-74. On November 30, 2021, the Court granted the motion for leave to file an amended complaint and denied as moot the motion to strike and the motion to dismiss. Dkt. No. 76.

Plaintiff then filed the Amended Complaint on December 3, 2021. Dkt. No. 77. Defendants GBP, WLJ, and Tristar filed a motion to dismiss the Amended Complaint on January 14, 2022, with a supporting memorandum and two supporting declarations. Dkt. Nos. 99-102. On February 4, 2022, the parties jointly requested an extension of time for briefing to conduct additional jurisdictional discovery. Dkt. No. 105. The Court granted that motion on February 7, 2022. Dkt. No. 108. On April 22, 2022, the Court stayed the case while the parties sought additional discovery that had been impeded by a surge of COVID-19 cases in China. Dkt. Nos. 126-27. On June 29, 2022, the Court denied without prejudice the motion to dismiss, and noted that the parties agreed that Defendants would withdraw and refile the motion at a time when the outstanding deposition related to jurisdictional discovery was completed. Dkt. No. 132.

On February 3, 2023, GBP, Tristar, and WLJ filed a renewed motion to dismiss with a supporting memorandum and two supporting declarations. Dkt. Nos. 141-43. Plaintiff filed its memorandum of law in opposition on March 3, 2023, along with two supporting declarations. Dkt. Nos. 146-150. Defendants filed a reply memorandum in support, along with a supporting affirmation, on March 31, 2023. Dkt. Nos. 152-55. On July 19, 2023, Plaintiff filed a motion for alternative service, with a supporting memorandum and three declarations. Dkt. Nos. 15963. GBP, Tristar, and WLJ filed their response on August 9, 2023. Dkt. No. 166.

LEGAL STANDARD

“A plaintiff bears the burden of establishing personal jurisdiction over a defendant.” GlaxoSmithKline LLC v. Laclede, Inc., 2019 WL 293329, at *3 (S.D.N.Y. Jan. 23, 2019); see also DiStefano v. Carozzi N. Am., Inc., 286 F.3d 81, 84 (2d Cir. 2001). The showing required of a plaintiff “varies depending on the procedural posture of the litigation.” Dorchester Financial Secs., Inc. v. Banco BRJ, S.A., 722 F.3d 81, 84 (2d Cir. 2013) (citation omitted); see also SUEZ Water New York Inc. v. E.I. du Pont de Nemours & Co., 578 F.Supp.3d 511, 527 (S.D.N.Y. 2022). “[W]here the parties have conducted extensive discovery regarding the defendant's contacts with the forum state, but no evidentiary hearing has been held-‘the plaintiff's prima facie showing, necessary to defeat a jurisdiction testing motion, must include an averment of facts that, if credited by [the ultimate trier of fact], would suffice to establish jurisdiction over the defendant.'” Metro. Life Ins. Co. v. Robertson-Ceco Corp., 84 F.3d 560, 567 (2d Cir. 1996) (quoting Ball v. Metallurgie Hoboken-Overpelt, S.A., 902 F.2d 194, 197 (2d Cir. 1990)). “At that point, the prima facie showing must be factually supported.” Ball, 902 F.2d at 197. “This showing may be made through pleadings, affidavits, and supporting materials.” McGraw-Hill Glob. Educ. Holdings, LLC v. Mathrani, 295 F.Supp.3d 404, 409 (S.D.N.Y. 2017). “[T]he court applies a ‘standard . . . akin to that on a motion for summary judgment,' construing the ‘pleadings documents, and other evidentiary materials . . . in the light most favorable to the plaintiff and all doubts are resolved in its favor.'” Vasquez v. Hong Kong & Shanghai Banking Corp., Ltd., 477 F.Supp.3d 241, 250 (S.D.N.Y. 2020) (quoting Melnick v. Adelson-Melnick, 346 F.Supp.2d 499, 503 (S.D.N.Y. 2004)). “[T]he Rule 56 standard . . . guides the Court as to the documents it may consider outside of the pleadings,” and “a court, in resolving a Rule 12(b)(2) motion made after jurisdictional discovery, may consider only admissible evidence.” Id. at 251 (emphasis in original). “Conclusory allegations based only on information and belief are not sufficient to provide such factual support.” Grp. One Ltd. v. GTE GmbH, 523 F.Supp.3d 323, 332 (E.D.N.Y. 2021) (internal quotation marks omitted).

DISCUSSION

I. Personal Jurisdiction Under New York's Long Arm Statute

Defendants move for dismissal of the entire action on the basis that GBP is not subject to this Court's personal jurisdiction and that GBP is a necessary party that cannot be joined and is indispensable. Dkt. Nos. 141, 142. On personal jurisdiction, Defendants argue that there is no general jurisdiction because GBP is not “at home” in New York, Dkt No. 142 at 7, and that there is no specific jurisdiction because GBP has no relationship with New York, Id. at 8-19. Plaintiff does not dispute that this Court does not have general jurisdiction over GBP. Dkt. No. 147 at 21. It does, however, argue that this Court has specific jurisdiction pursuant to two subsections of New York's long arm statute, N.Y. C.P.L.R. §§ 302(a)(1) and 302(a)(2). Id. at 15-22.

“[T]he Court engages in a ‘two-step analysis' to determine personal jurisdiction over a non-domiciliary.” Spin Master Ltd. v. 158, 463 F.Supp.3d 348, 362 (S.D.N.Y. 2020). “First, the Court applies the forum state's long-arm statute.” Id. (citing Chloe v. Queen Bee of Beverly Hills, LLC, 616 F.3d 158, 163 (2d Cir. 2010)). Second, “[i]f the long-arm statute permits personal jurisdiction, the second step is to analyze whether personal jurisdiction comports with the Due Process Clause of the United States Constitution.” Id. (citing Chloe, 616 F.3d at 164).

New York's long arm statute, under the header of “[a]cts which are the basis of jurisdiction,” provides the following in part:

(a) As to a cause of action arising from any of the acts enumerated in this section, a court may exercise personal jurisdiction over any non-domiciliary, or his executor or administrator, who in person or through an agent:

1. transacts any business within the state or contracts anywhere to supply goods or services in the state; or

2. commits a tortious act within the state, except as to a cause of action for defamation of character arising from the act[.]

N.Y. C.P.L.R. § 302(a).

A plaintiff must meet two requirements to establish personal jurisdiction under Section 302(a)(1): “(1) The defendant must have transacted business within the state; and (2) the claim asserted must arise from that business activity.” Eades v. Kennedy PC Law Offices, 799 F.3d 161, 168 (2d Cir. 2015) (quoting Licci ex rel. Licci v. Lebanese Canadian Bank, SAL, 732 F.3d 161, 168 (2d Cir. 2013)). “[A] non-domiciliary defendant need not be physically present in New York to ‘transact business,' so long as the defendant has engaged in ‘purposeful activity,' for example, ‘some act by which the defendant purposefully avails itself of the privilege of conducting activities within the forum State, thus invoking the benefits and protections of its laws.'” Spin Master Ltd., 463 F.Supp.3d at 362 (quoting Best Van Lines, Inc. v. Walker, 490 F.3d 239, 246-47 (2d Cir. 2007)). As for Section 302(a)(2), “the Second Circuit has held that ‘a defendant's act or omission must have occurred within the State' in which a plaintiff seeks the exercise of personal jurisdiction.” Edwardo v. Roman Cath. Bishop of Providence, 579 F.Supp.3d 456, 468-69 (S.D.N.Y. 2022), aff'd, 66 F.4th 69 (2d Cir. 2023) (quoting Bank Brussels Lambert v. Fiddler Gonzalez & Rodriguez, 171 F.3d 779, 790 (2d Cir. 1999)). “Notwithstanding this requirement, jurisdiction under Section 302(a)(2) may extend to out-of-state individuals who did not themselves commit a tort in New York, but ‘who can be deemed responsible for such a tort based upon theories of agency . . . .'” Id. (quoting LaChapelle v. Torres, 1 F.Supp.3d 163, 169 (S.D.N.Y. 2014)).

“Where . . ., the claim is that the foreign corporation is present in New York state because of the activities there of its subsidiary, the presence of the subsidiary alone does not establish the parent's presence in the state.” Jazini v. Nissan Motor Co., 148 F.3d 181, 184 (2d Cir. 1998). “For New York courts to have personal jurisdiction in that situation, the subsidiary must be either an ‘agent' or a ‘mere department' of the foreign parent.” Id. (citing Koehler v. Bank of Bermuda Ltd., 101 F.3d 863, 865 (2d Cir. 1996)); see also GEM Advisors, Inc. v. Corporation Sidenor, S.A., 667 F.Supp.2d 308, 318 (S.D.N.Y. 2009) (Sullivan J.) (applying the “agent” and “mere department” theories in the context of N.Y. C.P.L.R. § 302(a)); Uebler v. Boss Media AB, 432 F.Supp.2d 301, 305 (E.D.N.Y. 2006) (same); Porter v. LSB Indus., Inc., 600 N.Y.S.2d 867, 872 (4th Dep't 1993) (“A finding of agency for jurisdictional purposes will not be inferred from the mere existence of a parent-subsidiary relationship.”).^[8]

[8] Plaintiff does not argue that this Court may exercise personal jurisdiction based on a theory that any of the entities are operating as “mere departments” of GBP.

To establish an agency relationship for the purposes of Section 302(a), a plaintiff “need not establish a formal agency relationship,” but instead the plaintiff must demonstrate that the agent acted “for the benefit of and with the knowledge and consent of the [defendant] and that [the defendant] exercised some control over [the agent] in the matter.” Kreutter v. McFadden Oil Corp., 522 N.E.2d 40, 44 (N.Y. 1988); see also Edwardo v. Roman Cath. Bishop of Providence, 66 F.4th 69, 74 (2d Cir. 2023) (same); CutCo Indus., Inc. v. Naughton, 806 F.2d 361, 366 (2d Cir. 1986) (“To be considered an agent for jurisdictional purposes, the alleged agent must have acted in the state ‘for the benefit of, and with the knowledge and consent of the nonresident principal.” (quoting Grove Press, Inc. v. Angleton, 649 F.2d 121, 122 (2d Cir. 1981))); Emerald Asset Advisors, LLC v. Schaffer, 895 F.Supp.2d 418, 430-31 (E.D.N.Y. 2012) (same). “To establish agency under section 302, the non-resident principal must request not just the alleged agent's general presence in New York but also the activities giving rise to suit.” Edwardo, 66 F.4th at 74. “[T]he plaintiff must show that the subsidiary ‘does all the business which [the parent corporation] could do were it here by its own officials.'” Jazini, 148 F.3d at 184 (quoting Frummer v. Hilton Hotels Int'l, Inc., 227 N.E.2d 851, 854 (N.Y. 1967)); see also Cortlandt St. Recovery Corp. v. Deutsche Bank AG, London Branch, 2015 WL 5091170, at *6 (S.D.N.Y. Aug. 28, 2015).

A. Allegations of Specific Contacts

Plaintiff argues that a variety of purported contacts with New York and the United States suffice to establish personal jurisdiction over GBP. Plaintiff's argument, however, suffers from two primary flaws. First, Plaintiff's evidence fails to show that GBP itself-as opposed to its subsidiaries or affiliates-has sufficient contacts with New York for the purposes of the long arm statute, or with the United States for the purposes of Federal Rule of Civil Procedure 4(k)(2). Second, Plaintiff's evidence fails to show an agency relationship between GBP and any of its subsidiaries or affiliates.

Plaintiff relies on a handful of documents that show, at best, that GBP may have known that its affiliated or subsidiary entities were engaging in activities in the United States and that GBP had an economic interest in them doing so. That such documents exist is unsurprising. It is undisputed that subsidiaries, sub-subsidiaries, or affiliates of GBP conducted business in New York. GBP was a holding company. It had an investment interest directly or indirectly in these subsidiaries and it may be assumed that it had an economic stake in activities in the United States. But even though a parent may own the subsidiary and have an interest in the subsidiary's success in the United States, that does not subject the parent to personal jurisdiction on the basis of the subsidiaries' contacts. See Jazini, 148 F.3d at 181; Porter, 600 N.Y.S.2d at 872. For these reasons, GBP's motion to dismiss the Amended Complaint against it for lack of personal jurisdiction is granted. The Court addresses each allegation of contacts by Plaintiff in turn.

1. Outreach Activities of Rao

Plaintiff first alleges that individuals associated with the “GBP Enterprise” had various contacts with the United States in New York, New Jersey, and Chicago. Dkt. No. 147 at 8.

The flaw in this theory is that the “GBP Enterprise” (or the “GBP Group,”^[9] as stated in the opposition brief) is a term of Plaintiff's invention. What Plaintiff refers to as the “GBP Group” or “GBP Enterprise” is in fact a conglomeration of entities that may enjoy contractual or other relationships among themselves, and may also share some common interests, but that, from the record, are separately incorporated and separately managed. The conduct of one of the entities may not be ascribed to the others, and to GBP specifically, merely by calling them all members of the same “Group” or “Enterprise.” Arguing that such a description of “group” or “enterprise” is sufficient to confer personal jurisdiction over GBP is simply “akin to arguing for veil piercing, but ‘attempting to avoid that high bar.'” Henao v. Parts Auth., LLC, 557 F.Supp.3d 490, 496 (S.D.N.Y. 2021) (quoting Mendez v. Pure Foods Mgmt. Grp., 2016 WL 183473, at *6 (D. Conn. Jan. 14, 2016)). Courts in this District have consistently held that allegations that multiple companies operate as a single integrated enterprise are alone insufficient to support personal jurisdiction over each member of the purported enterprise. See id. (“The cases holding that the single integrated enterprise theory is one of liability and not jurisdiction are persuasive.”); Tese-Milner v. De Beers Centenary A.G., 613 F.Supp.2d 404, 414 (S.D.N.Y. 2009) (rejecting personal jurisdiction under both N.Y. C.P.L.R. § 302 and Rule 4(k)(2), and stating that “the Court has not encountered, and Plaintiff does not offer, any legal support for the contention that ‘integrated enterprise' has any legal meaning for the purposes of the relevant personal jurisdiction law”); In re Ski Train Fire in Kaprun, Austria on Nov. 11, 2000, 230 F.Supp.2d 376, 384 (S.D.N.Y. 2002) (rejecting the “one enterprise” theory as a means of conferring jurisdiction under the “mere department” theory); Bellomo v. Pennsylvania Life Co., 488 F.Supp. 744, 745 (S.D.N.Y. 1980) (“Nor does the parent subject itself to jurisdiction merely by holding the affiliate group out to the public as a unitary enterprise.”). Where, as here, no allegation is made that the companies engage in a common enterprise, simply labeling the Defendants all as members of an enterprise-without any supporting allegation that they were operated as a single integrated enterprise-cannot be sufficient to create personal jurisdiction.

[9] Plaintiff defines “GBP Group” as GBP and the other Chinese Defendants in this case. The “Chinese Defendants,” as defined in Plaintiff's opposition brief, are “Guangzhou Wang Lao Ji Great Health Industry Co., Ltd. (aka WLJ Great Health Industry Co., Ltd.); Guangzhou Wanglaoji Pharmaceutical Co., Ltd.; Guangzhou Wang Lao Ji Great Health Enterprise Development Co., Ltd. (aka WLJ Great Health Enterprises Development Co., Ltd.); and Guangzhou Pharmaceutical Holdings Ltd. (aka Guangzhou Pharmaceutical Group).” Dkt. No. 147 at 2 n.4.

Plaintiff points to the facts that (1) in 2017 and 2019, Rao and Tsui, the CEO of Great Health Enterprise, visited New Jersey to sign exclusive sales agency agreements with Tristar in its office, Dkt. No. 149-3 at 47-52, 64-65, 86-87; (2) in 2017, Rao and another individual affiliated with Great Health Enterprise, Yung, traveled to Chicago to promote the GBP Infringing Products at an event “to further enhance [their] internationalization and influence,” Dkt. No. 148-9 at 28, Dkt. No. 149-3 at 66-69, 108; and (3) in September 2018, Rao sent an email to a West Coast distributor touting marketing of the GBP Infringing Products in Times Square, including an advertisement on the Nasdaq Billboard at that location, Dkt. No. 150-1 at ECF p. 1.

The record is uncontroverted, however, that Rao is not an employee of GBP and there is no evidence that, in any of that conduct, he was acting at the direction of or even with the advance knowledge of GBP. He was an employee of Great Health Industry. The signature of Rao in his emails identifies him as “Director, Oversea [sic] business Department, Wang Lao Ji Herbal Tea brand.” Id. While that signature appears to be ambiguous, Rao's signature in other emails identifies him as “Director, Oversea [sic] business Department, Guangzhou Wang Lao Ji Great Health Industry Limited.” Dkt. No. 150-2. In its responses to interrogatories in the TTAB Case, the “Opposer” lists Rao as “Director of Overseas Business Department, Guangzhou Wanglaoji Grand Health Co. Ltd.”^[10] Dkt. No. 149-1 at ECF p. 4.

[10] The interrogatory asked the Opposer to “[i]dentify the person or people within Opposer's organization who are most knowledgeable about the products or services distributed, imported, marketed or sold, or proposed to be distributed, imported, marketed and sold under Opposer's Marks in the United States since the date of their first sale to present.” The Opposer identified two individuals: “Rao Bing, Position: Director of Overseas Business Department, Guangzhou Wanglaoji Grand Health Co., Ltd.; and Guo Jiawen, Position: Manager of Overseas Business Department, Guangzhou Wanglaoji Grand Health Co., Ltd.” Dkt. No. 149-1 at ECF pp. 3-4. That response does not constitute an admission that Rao or Guo Jiawen were employees or agents of GBP. To the contrary, it merely reflects that Rao and Guo Jiawen were employees of Great Health Industry, see Dkt. No. 60 ¶¶ 5-7 (stating that the names refer to the same entities); supra notes 1, 6, and that Great Health Industry undertakes production and marketing of the products.

Plaintiff argues that Rao's contacts nonetheless should be ascribed to GBP because Great Health Industry, by virtue of its subsidiary relationship, was an agent of GBP. Dkt. No. 147 at 4-7. But GBP's equity interest in Great Health Industry does not turn Rao's conduct into GBP's conduct for personal jurisdiction purposes. As previously noted, “[a] finding of agency for jurisdictional purposes will not be inferred from the mere existence of a parent-subsidiary relationship,” and “complete stock control . . . [is] intrinsic to the parent-subsidiary relationship and, by [itself], not determinative.” Porter, 600 N.Y.S.2d at 872-73. GBP is “a holding company,” as evidenced by both its name, its submissions in the TTAB Case, and Yao's declaration. Dkt. No. 149-1 at ECF p. 3; Dkt. No. 143 ¶¶ 16-17. Great Health Industry engages in a different business than GBP. Great Health Industry is “mainly engaged in the production, R&D and sale of beverage, food, healthcare product, and etc. . . ., including the subsidiaries, WLJ Great Health and Wang Lao Ji, and the main products include Wang Lao Ji Herbal Tea.” Dkt. No. 148-1 at 16, 19. And New York courts have held that “[w]here the defendant over which jurisdiction is sought to be exercised is a holding company, the business of that company is the business of investment. Where a subsidiary is engaged in a completely different line of business, it cannot be said that the business of the parent is carried out by the subsidiary.” Gallelli v. Crown Imports, LLC, 701 F.Supp.2d 263, 272 (E.D.N.Y. 2010). In that instance, “the subsidiary of a holding company carries on its business as an investment of the holding company, and not as an agent of the holding company.” Id.; see also J.L.B. Equities, Inc. v. Ocwen Fin. Corp., 131 F.Supp.2d 544, 549 (S.D.N.Y. 2001) (“The mere fact that Ocwen is the Bank's holding company is not sufficient to establish personal jurisdiction over Ocwen.”). Plaintiff thus cannot show that an agency relationship existed between GBP, the holding company, and Great Health Industry and its subsidiaries-which were engaged in manufacture, advertisement, and sale of products-sufficient to support personal jurisdiction. See Gallelli, 701 F.Supp.2d at 274 (finding no personal jurisdiction when the business of the holding company was “manag[ing] its investments” and the businesses of subsidiaries was “beer brewing and distribution”); Gurvey v. Cowan, Liebowitz & Latman, PC, 2009 WL 691056, at *4 (S.D.N.Y. Mar. 17, 2009) (denying personal jurisdiction over a holding company when business was conducted by subsidiaries); Breakaway Courier Corp. v. Berkshire Hathaway, Inc., 144 N.Y.S.3d 692, 693 (1st Dep't 2021) (finding no personal jurisdiction over a holding company); Porter, 192600 N.Y.S.2d at 873-74 (“LSB is a holding company whose business is investment, which differs from the business of Summit, which is distribution of machine tools. The business of the parent is carried out entirely at the parent level, and Summit cannot be deemed to be conducting the parent's business as its agent.”).

The existence of the “examination system” also does not show an agency relationship or that GBP exercises control over its subsidiaries sufficient to support personal jurisdiction. From the evidence, the examination system is driven by the subsidiaries. GPB receives sales targets from subsidiaries, Dkt. No. 148-17 at 65-66, is “respectful to the[] target,” Id. at 66, consolidates them into a macro target, Id. at 63, 65; Dkt. No. 144-2 at 71, and issues those sales targets because “[a]s a listing company, . . . we need to . . . [and] are expected to publish this kind of information,” Dkt. No. 148-17 at 66. Yao explained that “it's not approval per se. It's consolidation.” Id. at 65. “Each subsidiary has its own particular examination system” and the subsidiaries themselves determine whether to make any changes to the income of general managers for compliance with the targets. Id. at 64-66. Changes in income are then provided to GBP for execution. Id. at 66-67. “What GBP does is monitoring and implementing,” in that it “monitors its subsidiaries to make sure that the subsidiaries carry out what they are expected to do according to their own examination systems,” and by doing so, “exercises its right of macro management.” Id. at 67 (emphasis added).

Those facts are not enough to turn reporting entities into agents of GBP. Holding companies that take majority stakes in companies may receive records of performance and consolidate the results because the performance of the assets they own affect their own performance. See Ocwen Fin. Corp., 131 F.Supp.2d at 550 (“[Consolidated financial statements are required by generally accepted accounting principles where the parent corporation owns more than 50% of the subsidiary's stock.”). But that does not make the subsidiaries agents of the parent for purposes of personal jurisdiction. Here, the subsidiaries are self-regulating for enforcement of any general macro sales targets, and GBP implements what the subsidiaries tell them as to the income of general managers. Such monitoring only shows that “the business of [GBP] is that of a holding company that manages its investments.” Gallelli, 701 F.Supp.2d at 274; see also Ocwen Fin. Corp., 131 F.Supp.2d at 550 (declining to find personal jurisdiction when the parent “maintains a very limited role with respect to its subsidiaries” and issued a “consolidated annual report”); Volkswagenwerk Aktiengesellschaft v. Beech Aircraft Corp., 751 F.2d 117, 120 (2d Cir. 1984) (stating for the purposes of the “mere department” test that “the officers of any corporation that owns the stock of another necessarily exercise a considerable degree of control over the subsidiary corporation and the discharge of that supervision alone is not enough to subject the parent to New York jurisdiction”). The agency test requires showing that “the subsidiary ‘does all the business which [the parent corporation] could do were it here by its own officials.'” Jazini, 148 F.3d at 184 (quoting Frummer, 227 N.E.2d at 854). In the absence of evidence that GBP engages in or controls the sales and marketing activities of its subsidiaries, its monitoring of sales is inadequate to confer personal jurisdiction, as “[t]he mere sale of the product is not considered the act of doing all the business which [the holding parent corporation] could do were it here by its own officials.” Gallelli, 701 F.Supp.2d at 272, 274 (citation omitted); cf. Alcon Vision, LLC v. Lens.com, Inc., 2020 WL 4810778, at *5 (E.D.N.Y. Aug. 11, 2020) (finding no personal jurisdiction for a holding company that received royalty income for licensing when there was no evidence that the holding company exercised control over sales and marketing activities, there was no evidence that the licensing agreement “subjected [the holding company] to ongoing obligations in New York State,” and there was no evidence of “purposefully avail[ment] . . . in other ways”).

2. Advertisements

Next, Plaintiff points to the advertisement of the GBP Infringing Products in Times Square to support personal jurisdiction over GBP. Plaintiff argues that GBP, in the TTAB Case, produced an image of a Times Square advertisement and a document that purportedly shows that the advertisement was part of GBP's expenses. They also point to the image of the Nasdaq billboard in Rao's email to the West Coast distributor. Dkt. No. 147 at 9-10.

There is no evidence of GBP participating in advertising or marketing activity in New York that could support personal jurisdiction. The sworn declaration of Yao, GBP's Rule 30(b)(6) witness, states that “GBP does not advertise in New York” and that it “does not own, use or possess property in New York.” Dkt. No. 143 ¶¶ 10-11. In addition, “GBP does not control, manage, or supervise the alleged marketing, promotion, or sale of [GBP Infringing Products] in New York or elsewhere in the United States,” Id. ¶ 23, and “GBP exercises the control necessary to guarantee the quality of the accused herbal tea products bearing GBP's WANG LAO JI marks only,” Id. ¶ 24 (emphasis added).

The isolated documents to which Plaintiff points are not inconsistent with that evidence. The email containing a photo of one of the Times Square advertisements comes from Rao, who identifies as an employee of Great Health Industry and not GBP. See supra Section I.A.1. Further, the interrogatory responses from the Opposer in the TTAB Case state that the persons having information as to “intended advertising, promotion and/or sales” are, in fact, two employees of Great Health industry (one of which is Rao), and not GBP. See Dkt. No. 149-1 at ECF p. 4. The 2020 Annual Report indicates that Great Health Industry and Guangzhou Wang Lao Ji Pharmaceutical Co., Ltd. are responsible for the products Wang Jao Li Herbal Tea and most importantly, that “[Great Health Industry] and [Guangzhou Wang Lao Ji Pharmaceutical Co., Ltd.] shall directly be responsible for . . . advertisement investment, and participate in terminal expansion, promotion and customer maintenance, etc.” Dkt. No. 148-1 at ECF p. 21 (emphasis added).^[11]

[11] For this reason, the Court rejects Plaintiff's assertion that Yao's declaration should be given “no weight” because it is “contradicted by other evidence.” Dkt. No. 147 at 19.

Plaintiff argues that GBP funded the advertising conducted by its subsidiaries in New York. However, the document to which it points does not reflect that GBP-rather than another entity in the “GBP Group” or “Enterprise,” such as Great Health Industry-provided any funding. Dkt. No. 149-4. The only identifying information is the header, which states “Dealer's Name: Tristar Food Wholesale Co., Inc.” Id. The image of the advertisement also does not provide such information. See Dkt. No. 148-7. GBP's response to discovery requests-which are based in part on an expansive definition of “Opposer,” as will be described in Section I.B.1- provide no basis to believe that an entity producing a document in a disputed administrative proceeding is also the same entity engaging in the activity identified in the document. Nor does the document clearly refer to the advertisements that Plaintiff relies upon to confer specific jurisdiction. The document includes annual advertising fees for each year from 2012 to 2017. The 2015 column presumably referring to the advertisements at issue states that the “Advertising Fee” “exclud[es] [the] Times Square advertising fee” and also states that the “Type of Advertisement” is both “Poster, radio”-categories that seem inapplicable to Times Square. Dkt. No. 149-4. See King Cnty., Wash. v. IKB Deutsche Industriebank, AG, 769 F.Supp.2d 309, 319 (S.D.N.Y. 2011) (rejecting exercise of specific jurisdiction because plaintiffs “offer only speculation, rather than evidence”); Data Commc'n, Inc. v. Dirmeyer, 514 F.Supp. 26, 32 (E.D.N.Y. 1981) (“This court cannot sustain jurisdiction by blindly accepting these unsupported, speculative assertions.”); see also Transcan Sys., Inc. v. Seldat Distribution, Inc., 177 N.Y.S.3d 252, 255 (2d Dep't 2022) (“[P]laintiff failed to allege, beyond mere speculation, that Dadoun was acting on behalf of any entity other than Seldat Distribution.”).

Moreover, even if GBP provided funding to a subsidiary or affiliate that such subsidiary or affiliate subsequently used for advertising in New York, such conduct alone would not subject GBP to jurisdiction in New York. See Vendetti v. Fiat Auto S.p.A., 802 F.Supp. 886, 895 (W.D.N.Y. 1992) (“[Intercompany loans and transfers of idle cash for investments between FAUSA and Fiat U.S.A., Inc. does not establish that Fiat U.S.A., Inc., a New York corporation, has any control over the financial operations of FAUSA, rather, such transfers constitute normal business practices between subsidiaries in a multi-national entity.”); see also Edwardo, 66 F.4th at 74 (requiring “the non-resident principal must have ‘exercised some control over' the alleged agent” for the purposes of Section 302); CutCo Indus., Inc., 806 F.2d at 366 (stating that “some control is necessary to establish agency” for the purposes of Section 302). The financial dependency of a subsidiary on its parent corporation is one among several factors that can make the subsidiary a “mere department” and subject the parent to personal jurisdiction based on the subsidiary's contacts. See Jazini, 148 F.3d at 184 (outlining the four-part multi-factor test for “mere department” including “financial dependency of the subsidiary on the parent corporation”). No case has ever held that financial dependency alone is enough to make the subsidiary's contacts those of the parent. See In re Ski Train Fire in Kaprun, Austria on Nov. 11, 2000, 230 F.Supp.2d at 384 (stating that “receiving] some funding from the parent” is not enough to show that a subsidiary is a “mere department” of the parent). There is no evidence here that the funding was accompanied by any mechanisms for control and direction.

3. The Grand Street Tea Museum

Plaintiff further argues that the record reflects that GBP's claimed ownership of the Grand Street Tea Museum subjects it to personal jurisdiction in New York. Dkt. No. 147 at 10. The evidence, however, does not support its claim.

Plaintiff points to the 2018 and 2021 Corporate Social Responsibility reports, which state that “[w]e have . . . established the first overseas Chinese Herbal tea museum in New York, U.S. -Wang Lao Ji Herbal Tea Overseas Museum, promoting herbal tea culture to go overseas,” Id. at ECF p. 4; see also Dkt. No. 148-11 at 27; Dkt. No. 149 ¶ 13. The description includes a photograph that is available online. Several press releases and news articles mention the opening of the tea museum. Dkt. Nos. 148-24, 148-25. However, the Corporate Social Responsibility reports do not reflect that GBP owns or played any role in establishing the Grand Street Tea Museum. The Corporate Social Responsibility reports describe the operating conduct of the companies in which GBP has a direct or indirect interest. See Dkt. No. 148-10 at ECF p. 3; Dkt. No. 148-11 at 2. Thus, no significance can be ascribed to the report's statement that “we” have opened a tea museum in New York. There is no evidence that the “we” refers to GBP itself as opposed to one of its subsidiaries.

Moreover, the remainder of the evidence establishes, consistent with the Corporate Social Responsibility reports, that the Grand Street Tea Museum is an initiative of Great Health Industry. While Plaintiff cites various websites showing and describing the tea museum in New York “on Defendants' website,” the websites make no mention of GBP. Instead, the Copyright Notice on the website identifies Great Health Industry as its owner. Dkt. No. 148-20 at ECF p. 15; Dkt. No. 148-21. The website's “Company Profile” page identifies Guangzhou Wanglaoji Health Industry Co., Ltd. as the subject of the website,^[12] states that “it is authorized to use the brand of ‘Wanglaoji' to produce and sell Wanglaoji Red Can,” and only briefly identifies it as a “subsidiary of Gunagzhou Baiunshan Pharmaceutical Group Co., Ltd. under the State-owned Assets Supervision and Administration Commission of Guangzhou.” Dkt. No. 154-2 at ECF p. 2. Similarly, the press releases identify that the news was provided by Great Health Industry and includes comments from affiliate entities (including Great Health Industry), and do not include any comments from GBP itself. See Dkt. No. 148-25. Plaintiff points to a photograph of the opening, which depicts a person who is not an employee of Great Health Industry, but was identified by Yao as an “assistant to the general manager” of GBP's parent company, not GBP itself. Dkt. No. 148-17 at 112-14. Attenuated contacts of GBP's parent are insufficient to confer personal jurisdiction over GBP as they are separate legal entities. Cf. Vendetti, 802 F.Supp. at 892 (“The ‘doing business' test does not subject a subsidiary corporation to personal jurisdiction simply because a state has jurisdiction over the parent corporation, even if the parent is the sole shareholder of the subsidiary.”); Freeman v. Gordon & Breach, Sci. Publishers, Inc., 398 F.Supp. 519, 521 (S.D.N.Y. 1975) (stating that “the presence of the parent corporation in New York is not alone sufficient basis for asserting personal jurisdiction over the subsidiary”). The evidence does not demonstrate that GBP itself “purposefully avail[ed] itself of the privilege of conducting activities within New York.” Ehrenfeld v. Bin Mahfouz, 881 N.E.2d 830, 834 (N.Y. 2007).

[12] GBP and WLJ have submitted a declaration stating that this entity is the same as Great Health Industry. See supra note 1.

4. Tristar Agreements

Plaintiff next argues that specific jurisdiction exists based on the agency and sales agreements with Tristar for exclusive distribution of the GBP Infringing Products as well as Tristar's enforcement of GBP's trademarks. Dkt. No. 147 at 16. “The second clause of section 302(a)(1) provides for jurisdiction where the defendant has only ‘minimal contacts' with New York but contracts to deliver goods or services to the state.” Chloe, 616 F.3d at 169-70.

The agency and sales agreements do not provide a basis for the Court to assert jurisdiction over GBP. The agreements with Tristar are signed by Great Health Industry or Great Health Enterprise Development Co. and not by GBP; GBP is not a party to the agreements. See Dkt. Nos. 149-6-149-9. REDACTED XXXXX REDACTF XXXXX Dkt. No. 149-7 at ECF p. 8; Dkt. No. 149-8 at ECF p. 3, but that language does not reflect that it is GBP itself-rather than Great Health Industry-that is providing the license or any authority to Tristar.

For the same reason, the advertisements on Tristar's trucks in New York do not create personal jurisdiction over GBP. The advertisements presumably were generated as a result of the cooperation agreement and sales agency partnership agreements. See Dkt. No. 148-18 at 114; Dkt. No. 149-7 at ECF p.11; Dkt. No. 149-8 at ECF p.5. The contracts provide that Tristar may “with the prior written consent of [Great Health Industry], conduct brand promotion activities for Wang Lao Ji Herbal Tea Products,” and that “[Great Health Industry] shall provide assistance for the brand promotion,” and that “prior written consent shall be obtained if [Great Health Industry] is required to bear any expenses.” Dkt. No. 149-7 at ECF p.11; Dkt. No. 149-8 at ECF p.5. The contracts do not show that GBP contracted to provide any assistance with Tristar or to allow Tristar conduct brand promotion activities in the United States. Indeed, Rao denied that GBP had knowledge of these activities in New York or that it consented to the activities. He testified that “Great Health” does not “have GBP's permission to sell tea products bearing the Wang Lao Ji marks outside of China.” Dkt. No. 148-17 at 121-22. GBP only knew about the conduct after the fact due to “information [that] can be found in the public domain,” as “the information GBP ha[s] on Great Health Industry sales of tea products in the U.S. only come[s] from what it sees in the public domain,” Id. at 80, and Great Health Industry is “independent as to . . . the production and sales of the products. As long as it is legal, they do not need to report it to GBP.” Id,^[13] That uncontroverted testimony is independently sufficient to reject the application of specific jurisdiction under New York's long arm statute. Plaintiff must establish that GBP had knowledge of the allegedly tortious conduct and consented to that conduct. See Edwardo, 66 F.4th at 75 (“Edwardo alleges only that Defendants had knowledge of and consented to the trip to New York. He does not allege that Defendants had knowledge of Magaldi's tortious conduct in New York.”); Hinrichsen v. Hinrichsen Found., 2018 WL 369184, at *7 (S.D.N.Y. Jan. 9, 2018) (stating the knowledge and consent requirement for agency).^[14]

[13] The Court rejects Plaintiff's argument that the Court can exercise personal jurisdiction over GBP on the theory that GBP supplied infringing goods to a distributor. Dkt. No. 148 at 18. There is no evidence that GBP engages in the production or sales of products or supplies them to a United States distributor.

[14] GBP, as well as Tristar, also produced bills of lading in the TTAB Case indicating that products were loaded in China and directed to a final destination of New York City ports. Those bills of lading show that the shipper/exporter is “Shantou Sino-Europe Trade Co.” and the Consignee is Tristar. Dkt. No. 147 at 4 n.6; Dkt. No. 149-2. There is no mention of GBP and thus the bills of lading cannot serve as evidence of an agency relationship. At best, they are indicative of personal jurisdiction over Tristar, but not GBP.

B. Remaining Documentation

Plaintiff also submits additional documentation from the TTAB Case and a USPTO proceeding. The Court addresses each set of documents in turn.

1. TTAB Proceedings

Plaintiff first relies on responses by the “Opposer” to interrogatories in the TTAB Case to establish personal jurisdiction. Dkt. No. 147 at 3. Those responses, however, do not bear the weight that Plaintiff puts on them. The interrogatories ask for responses with respect to the Opposer (or “you” and “your,” within the meaning of the questions) and define the “Opposer” broadly as including the following:

Guangzhou Baiyunshan Pharmaceutical Holding Co., Ltd., each of its employees, officers, agents, predecessors in interest, parent entities, licensees, affiliates and/or anyone acting in concert with or on its behalf. Affiliates shall mean any entity directly or indirectly controlling, controlled by, or under common control with,

Guangzhou Baiyunshan Pharmaceutical Holding Co., Ltd. For purposes of this definition, the term “control” (including the correlative meanings of the terms “controlled by” and “under common control with”), as used with respect to any entity, shall mean the possession, directly or indirectly, of the power to direct or cause the direction of management policies of such entity, whether through the ownership of voting securities or by contract or otherwise.

Dkt. No. 155-3 at ECF p. 7. Thus, when an interrogatory response identifies conduct of the “Opposer” in the United States, the response cannot be read to indicate that the conduct was that of GBP. It simply reflects that GBP followed the instructions and answered not only on behalf of itself, but also with respect to all of the other entities included in the definition of Opposer.

The Opposer's responses to the interrogatories, moreover, do not show contacts or contacts by an agent to establish personal jurisdiction. The Opposer, in response to the question of “[t]he date and place where the Opposer's business was founded, and the nature of its legal status, whether corporation, partnership, joint venture, familial organization or other,” stated that it was a “a holding company and part of an interconnected group of related businesses.” Dkt. No. 149-1 at ECF p. 3. Such “interconnectedness” does not indicate an agency relationship with subsidiaries or contacts with the United States. See supra Sections I.A.1 (citing cases for the proposition that allegations of an enterprise theory is unavailable for personal jurisdiction); Id. (citing cases for distinguishing the principal/agent relationship for a holding company); Porter, N.Y.S.2d at 872 (a parent-subsidiary relationship alone does not demonstrate agency).

The interrogatory responses also provide that REDACTED XXXXX Dkt. No. 149-1 at ECF p. 8. The response is not surprising. As discussed, the definition of Opposer is broad. It does not establish that GBP itself spent monies in the United States on advertising. Yao, in his sworn declaration, stated that GBP does not advertise in New York. Dkt. No. 143 ¶ 10. The 2020 Annual Report states that Great Health Industry and Wang Lao Ji are responsible for advertising investment. Dkt. No. 148-1 at ECF p. 21. Further, the interrogatory response is bereft of any mention of New York. The allegations do not establish personal jurisdiction under Section 302. See also Herlihy v. Sandals Resorts Int'l, Ltd., 795 Fed.Appx. 27, 29-30 (2d Cir. 2019) (affirming dismissal for failing to establish connection with forum state).

2. Documents Filed with the USPTO

Finally, Plaintiff argues that a letter jointly filed by the Food and Beverage Branch of Guangzhou Wanglaoji Pharmaceutical Co. Ltd. (“Food and Beverage Branch”) and GBP in proceedings before the USPTO supports personal jurisdiction over GBP in New York. Dkt. No. 147 at 6. The letter was filed in response to the USPTO's refusal to register GBP's trademark application because GBP's subsidiary, Guangzhou Wanglaoji Pharmaceutical Co., Ltd., owned a similar design mark. Dkt. No. 148-16. The Food and Beverage Branch appears to be wholly owned by Guangzhou Wanglaoji Pharmaceutical Co., Ltd. Dkt. No. 148-12. The letter states that the Food and Beverage Branch gave its consent to GBP to use and register the WangLaoJi stylized trademark in the ‘841 Application, and provided the following:

Food and Beverage Branch of Guangzhou Wanglaoji Pharmaceutical Company Limited is related to Guangzhou Baiyunshan Pharmaceutical Holdings Co., Ltd. The companies share the same parent company, Guangzhou Pharmaceutical Holding Limited. Therefore, the parties, as affiliated companies, work hand-inhand to avoid confusion in trade that would be contrary to their best interests, and they are in a position, due to their close relationship, to expeditiously correct any situation that could possibly give rise to confusion in the marketing of their respective goods.

Moreover, each party will monitor the marketplace and take steps to notify the other should it come to its attention that any confusion as to source has arisen with respect to the goods identified in the above-referenced application. That party shall take reasonable steps to address such confusion.

Dkt. No. 148-16. Plaintiff argues that the letter shows “joint management of the trademarks and the GBP Infringing Products.” Dkt. No. 147 at 6.

Under New York law, however, cooperation and collaboration are not the same as an agency relationship. The letter, in and of itself, does not indicate whether one entity controls another. See DISH Network L.L.C. v. Kaczmarek, 2021 WL 4483470, at *6 (E.D.N.Y. June 24, 2021), report and recommendation adopted as modified sub nom. DISH Network LLC v. Kaczmarek, 2021 WL 4485870 (E.D.N.Y. Sept. 30, 2021) (“These insinuations of assistance and collaboration, even when fully credited, do not allege Kaczmarek's control over the Defoes such that their acts could be imputed to him [for the purposes of Section 302].”); In re Parmalat Sec. Litig., 375 F.Supp.2d 278, 295 (S.D.N.Y. 2005) (differentiating between “simple collaboration or an agency relationship”). All the letter establishes is that the Food and Beverage Branch works “hand-in-hand” to avoid confusion and that they “notify the other.” Dkt. No. 148-16. More important, the Amended Complaint does not allege any conduct in New York attributable to the Food and Beverage Branch.^[15]Thus, even if the Food and Beverage Branch's conduct could be imputed to GBP for jurisdictional purposes, that would not establish that GBP had any involvement in any of the activities giving rise to the claims in the suit. See Edwardo, 66 F.4th at 74. Indeed, there are no allegations showing a nexus between the Food and Beverage Branch and Plaintiff's claims. See Knight v. Standard Chartered Bank, 531 F.Supp.3d 755, 770 (S.D.N.Y. 2021) (dismissing claim in part because even if negative performance review was made by supervisor, the complaint did not allege any nexus between the supervisor and New York); Phillips v. Reed Grp., Ltd., 955 F.Supp.2d 201, 226 (S.D.N.Y. 2013) (describing the nexus requirement).

[15] Plaintiff, in an organizational chart, asserts that the Food and Beverage Branch is a separate corporate entity based on a response to a TTAB interrogatory, with it being wholly owned by Guangzhou Wanglaoji Pharmaceutical Co., Ltd. Dkt. No. 148-12. Plaintiff, however, does not attest to the accuracy of the chart. Dkt. No. 148 ¶ 14.

II. Personal Jurisdiction Under Federal Rule of Civil Procedure 4(k)(2)

Plaintiff argues that GBP is subject to jurisdiction under Federal Rule of Civil Procedure 4(k)(2). Dkt. No. 147 at 25. Rule 4(k)(2) provides that:

[f]or a claim that arises under federal law, serving a summons or filing a waiver of service establishes personal jurisdiction over a defendant if: (A) the defendant is not subject to jurisdiction in any state's courts of general jurisdiction; and (B) exercising jurisdiction is consistent with the United States Constitution and laws.

Fed. R. Civ. P. 4(k)(2). The Rule requires that “(1) that plaintiff's cause of action arise under federal law; (2) that the defendant is not subject to the jurisdiction of the courts of any one State; and (3) that the defendant's total contacts with the United States as a whole are sufficient to confer the Court with personal jurisdiction over the defendant without offending due process.” Aerogroup Int'l, Inc. v. Marlboro Footworks, Ltd., 956 F.Supp. 427, 434 (S.D.N.Y. 1996). It was “designed to ‘correct[] a gap' in the enforcement of federal law in international cases,” which was the “lacuna ‘when the defendant was a non-resident of the United States having contacts with the United States sufficient to justify the application of United States law and to satisfy federal standards of forum selection, but having insufficient contact with any single state to support jurisdiction under state long-arm legislation or meet the requirements of the Fourteenth Amendment limitation on state court territorial jurisdiction.'” Porina v. Marward Shipping Co., 521 F.3d 122, 126 (2d Cir. 2008) (quoting Fed R. Civ. P. 4, Advisory Committee Note to the 1993 Amendments). An exercise of personal jurisdiction through Rule 4(k)(2) must “comport[] with the Due Process Clause of the Fifth Amendment.” Dardana Ltd. v. Yuganskneftegaz, 317 F.3d 202, 207 (2d Cir. 2003).

Plaintiff cannot obtain personal jurisdiction over GBP through the vehicle of Rule 4(k)(2). Plaintiff has not only failed to show GBP's contacts with New York but has also failed to show contacts with the United States. “For purposes of alleging presence within the judicial district sufficient to satisfy the Due Process Clause, a parent-subsidiary relationship does not itself create jurisdiction over the person unless the subsidiary is the alter ego of the parent or a mere agent acting at the parent's directions.” Miami Prod. & Chem. Co. v. Olin Corp., 449 F.Supp.3d 136, 179 (W.D.N.Y. 2020) (quoting Alki Partners, L.P. v. Vatas Holding GmbH, 769 F.Supp.2d 478, 489 (S.D.N.Y. 2011)). “As there is no discernable difference between federal common law principles of agency and New York agency law,” Id. at 180 (internal quotation marks omitted) (collecting cases), Plaintiff's failure to show an agency relationship with Tristar, WSJ, or GBP's subsidiaries under New York agency law suffices to show that Plaintiff cannot show an agency relationship that complies with the Due Process Clause. Rule 4(k)(2) thus does not support personal jurisdiction. See, e.g., Stutts v. De Dietrich Grp., 465 F.Supp.2d 156, 166 (E.D.N.Y. 2006) (rejecting application of Rule 4(k)(2) when “plaintiffs fail to sufficiently allege facts demonstrating such an intimate relationship between Buchi AG and Buchi Analytical for jurisdictional purposes”); Daventree Ltd. v. Republic of Azerbaijan, 349 F.Supp.2d 736, 764 (S.D.N.Y. 2004) (similar); Jerge v. Potter, 2000 WL 1160459, at *5 (W.D.N.Y. Aug. 11, 2000) (“Ashton-Potter and similar subsidiaries are separate corporations, not departments or divisions within MDC. MDC does not do business in the United States to the extent that it could be said to avail itself purposefully of the benefits and protections of United States laws.”).

III. Whether GBP is an Indispensable Party

Having successfully shown that GBP should be dismissed from this action due to a lack of personal jurisdiction, Moving Defendants argue that GBP is an indispensable party and that the inability to join GBP requires dismissal of the entire action. Dkt. No. 142 at 20-24. They argue that GBP is a necessary party because the Court cannot afford complete relief between Plaintiff and the remaining defendants because GBP owns the trademarks and GBP has an interest in the subject matter of the case. Id. They further state that GBP will not be bound by any finding of infringement or order enjoining the use or registration of the marks. Id. at 21. For its part, Plaintiff argues that if GBP is an indispensable party, then it must follow that the Court can exercise jurisdiction over it. The Court is not persuaded by either argument.^[16]

[16] Plaintiff conflates the requirements of personal jurisdiction and dismissal due to failure to join a necessary party. Those are separate inquiries-whether there is a way to shape or limit a judgment to reduce prejudice to GBP is not equivalent to addressing whether GBP has sufficient contacts with the United States or New York to confer personal jurisdiction. And that a judgment or injunction may or may not prevent other licensees from using the marks in the United States does not establish that GBP itself has contacts with the United States.

“A party may seek dismissal under Rule 12(b)(7) for failure to join an indispensable party where (i) the absent party is ‘required,' (ii) joining the absent party would not be ‘feasible,' and (iii) ‘it is determined in equity and good conscience that the action should not proceed among the existing parties.'” WM Int'l, Inc. v. 99 Ranch Mkt. #601, 329 F.R.D. 491, 496 (E.D.N.Y. 2019) (quoting Garner v. Behrman Bros IV, LLC, 260 F.Supp.3d 369, 380 (S.D.N.Y. 2017)). Rule 19(a) provides the following:

(1) Required Party. A person who is subject to service of process and whose joinder will not deprive the court of subject-matter jurisdiction must be joined as a party if:

(A) in that person's absence, the court cannot accord complete relief among existing parties; or

(B) that person claims an interest relating to the subject of the action and is so situated that disposing of the action in the person's absence may:

(i) as a practical matter impair or impede the person's ability to protect the interest; or

(ii) leave an existing party subject to a substantial risk of incurring double, multiple, or otherwise inconsistent obligations because of the interest.

Fed. R. Civ. P. 19(a). “[I]f for some reason it is impossible for the third party to be joined, such as . . . one where the Court does not have personal jurisdiction over the individual, the Court must determine the proper course of action pursuant to Rule 19(b).” Fanbrella, Inc. v. EDT Prod., Inc., 185 F.R.D. 144, 148 (E.D.N.Y. 1999); see also Nastro v. D 'Onofrio, 263 F.Supp.2d 446, 454 (D. Conn. 2003). The court must decide whether “in equity and good conscience, the action should proceed among the existing parties or should be dismissed.” Fed.R.Civ.P. 19(b). Rule 19(b) states:

The factors for the court to consider include:

(1) the extent to which a judgment rendered in the person's absence might prejudice that person or the existing parties;

(2) the extent to which any prejudice could be lessened or avoided by:

(A) protective provisions in the judgment;

(B) shaping the relief; or

(C) other measures.

(3) whether a judgment rendered in the person's absence would be adequate; and

(4) whether the plaintiff would have an adequate remedy if the action were dismissed for nonjoinder.

Fed. R. Civ. P. 19(b); see also Rostropovich v. Koch Int'l Corp., 1995 WL 104123, at *10-11 (S.D.N.Y. Mar. 7, 1995).

Moving Defendants have not shown that GBP is an indispensable party. “[A] plaintiff asserting claims under the Lanham Act may choose not to name a trademark owner without running afoul of Rule 19 because trademark ‘[i]nfringers who may be found jointly and severally liable are not necessary parties' for purposes of the rule.” WM Int'l, Inc., 329 F.R.D. at 497 (quoting Fifth Ave. of Long Island Realty Assocs. v. Caruso Management Co., Ltd., 2009 WL 412126, at *17 (E.D.N.Y. Feb. 17, 2009)); see also id. (collecting cases); Rostropovich, 1995 WL 104123, at *10 (stating that “joint tortfeasors are merely permissive parties to an action”). Thus, an entity cannot immunize itself from a Lanham Act action by having a foreign affiliate register the allegedly infringing marks and then licensing back from that affiliate the right to use the marks. The effect of dismissal of the entire action in such a case would be to allow joint tortfeasors to utilize infringing marks on the sole basis that personal jurisdiction cannot be exercised over the owner or registrant of the infringing marks. Insofar as Rule 19 has “a moral content . . . as it requires a court to decide ‘whether in equity and good conscience the action should proceed . . . or should be dismissed . . .,'” Earl v. Peverett, 1991 WL 33281, at *2 (S.D.N.Y. Mar. 7, 1991) (emphasis in original) (citation omitted), such an outcome would deprive plaintiff of its ability to enforce its rights under the Lanham Act. See WM Int'l, Inc., 329 F.R.D. at 498 (“[I]f Plaintiffs are not permitted to litigate claims without Tian Liu and Tian Liu cannot be served, despite Plaintiffs' extensive efforts, Plaintiffs will be deprived of the opportunity to prevent future infringement.”).

That proposition applies with full force here. GBP may have registered the allegedly infringing marks and GBP may not have individually exploited the marks in the United States, but Great Health Industry, Tristar, and WLJ allegedly did utilize GBP's marks in the United States. Indeed, if GBP's account is to be credited, these entities used the marks without being authorized to do so in the United States. Dkt. No. 148-17 at 121-22, 124. Plaintiff alleges its marks have been infringed. It has sued for, inter alia, violations of the Lanham Act, copyright infringement, unfair competition, and cancellation of the trademarks. For relief, it demands damages, an injunction, and cancellation and refusal to register certain trademarks of GBP. Dkt. No. 77 at 41-43. If Plaintiff is denied relief in the United States because the marks that Great Health Industry, Tristar, and WLJ exploited were registered by a different corporation over whom no court in the United States has jurisdiction, then any would-be infringer could avoid liability and act with impunity by the mere contrivance of having a foreign affiliate (or any foreign corporation it is able to convince) apply in the United States for trademark registration and then claiming that the case could not be adjudicated without affecting the ownership rights of that entity.^[17]

[17] The Court grants the motion to dismiss based on Rule 12(b)(6) and finds that the unjust enrichment claim is preempted only to the extent that it seeks to recover based on the same rights as those protected by the Copyright Act. However, the unjust enrichment claim is not preempted to the extent that it seeks to recover based on trademark rights. Plaintiff pleads unjust enrichment on both trademark rights and its copyrighted work. Dkt. No. 77 ¶ 190. See Monbo v. Nathan, 623 F.Supp.3d 56, 141 n.36 (E.D.N.Y. 2022) (“Because Plaintiffs' unjust enrichment claim with respect to the SPE Defendants concerns a claim of trademark infringement, not copyright infringement, the preemption rules of the Copyright Act are inapplicable.”); Transcience Corp. v. Big Time Toys, LLC, 50 F.Supp.3d 441, 454 (S.D.N.Y. 2014) (“[T]he Copyright Act does not fully preempt state law claims where the claims also seek to protect trademark rights.”); MyPlayCity, Inc. v. Conduit Ltd., 2012 WL 1107648, at *23 (S.D.N.Y. Mar. 30, 2012) (finding portion of unjust enrichment claim preempted with respect to copyrighted products, but finding that unjust enrichment claim not preempted with respect to trademark rights because the Lanham Act does not preempt state law); RBC Nice Bearings, Inc. v. Peer Bearing Co., 676 F.Supp.2d 9, 34 (D. Conn. 2009) (same).

The Court can shape relief to avoid prejudice to GBP while also rendering an adequate judgment for Plaintiff based on Tristar, WLJ, and Great Health Industry's alleged infringement. “Trademark owners are indispensable parties under Rule 19 for purposes of canceling a trademark.” WM Int'l, Inc., 329 F.R.D. at 496-97 (emphasis added). To adjudicate this case, the Court need not grant Plaintiff's requested relief of cancellation or refusal to register a trademark. It can consider Plaintiff's request for “damages and an injunction,” Id. at 498 n.3, which would accord Plaintiff relief, Dkt. No. 77 at 42-43. That determination is “consistent with the ‘recognized philosophy of Rule 19' to use caution and ‘avoid dismissal wherever possible.'” WM Int'l, Inc., 329 F.R.D. at 497 (quoting Stabilisierungsfonds Fur Wein v. Kaiser Stuhl Wine Distributors Pty. Ltd., 647 F.2d 200, 208 (D.C. Cir. 1981)).

Further, a finding of trademark infringement by Tristar, Great Health Industry, and WLJ would not necessarily “cast[] doubt” on GBP's marks themselves. Dkt. No. 142 at 23. If GBP is not a party and it is not in privity with a party, then a judgment would not necessarily prevent GBP itself from exploiting the marks. Only the Defendants who are in privity, see Taylor v. Sturgell, 553 U.S. 880, 892-95, 894 n.8 (2008) (outlining circumstances constituting privity and due process limitations), would be bound by a judgment. And only the Defendants and those in active concert and participation with them would be bound by an injunction. Fed.R.Civ.P. 65. It may be that a judgment and monetary relief will have some impact on GBP through its ownership stakes in some of the Defendants. It may be that such an injunction may affect how GBP chooses to do business in the future. It may also be that GBP chooses in the future not to do business through the corporations who are Defendants here. And it may also be that if GBP seeks in the future to use the marks in the United States either directly or through another affiliate, Plaintiffs or some other party will be able to challenge that usage. But those results would be the indirect consequence of the conduct of parties and are not reasons to deny Plaintiff any relief.^[18]

[18] Although Moving Defendants argue that Plaintiff has an adequate alternative in the TTAB Case, Tristar and Great Health are not parties to the TTAB Case, and the TTAB suit will not be resolve claims that Plaintiff may have against unauthorized users of GBP's marks, including the remedies of seeking damages and an injunction for the use of infringing marks by those parties.

CONCLUSION

Defendants' motion to dismiss is GRANTED IN PART and DENIED IN PART. The Clerk of Court is respectfully directed to close Dkt. No. 141. For the reasons explained in an accompanying Order, this Opinion and Order will be filed temporarily under seal until the Court can review any redactions the parties propose. The Clerk of Court is respectfully directed to file this Opinion and Order under seal, viewable only to the Court and the parties to this action.

SO ORDERED.