The opinion of the court was delivered by: SAMUEL CONTI, Senior District Judge
ORDER GRANTING DEFENDANTS' MOTION TO DISMISS
Kelli Fox and David Fox ("Plaintiffs" or "Foxes") brought this
action against iVillage, Inc., KnowledgeWeb, Inc., and Does
1-100, (collectively "Defendants"), alleging, inter alia,
trademark infringement, breach of contract and cybersquatting.
Presently before the Court is Defendants' motion to dismiss
Plaintiffs' claims pursuant to Federal Rule of Civil Procedure
("FRCP") 12(b)(1). The Court, having reviewed the parties'
submissions, hereby GRANTS Defendants' motion and DISMISSES the
case for want of jurisdiction. II. BACKGROUND
The Foxes, who are astrologers and run their own on-line
astrology business, signed Service Mark and Marketing Agreements
("Agreements") with Defendants, allowing Defendants to use the
Kelli Fox mark as "Astrology Marks" or "Reserved Marks."*fn1
Complaint at 3-4 ("Compl."), Declaration of Aaron L. Danzer in
Support of Motion to Dismiss the Complaint, Ex. B, at 2, 4
("Danzer Decl."). The Agreements define "Astrology Marks" as the
Kelli Fox mark when used in the "Field of Interest" ("FI") and
"Reserved Marks" as the Kelli Fox mark when used "outside the
Field of Interest." Danzer Decl., Ex. B at 2. The FI, as defined
by the Agreements, means "the field of on-line information
services directed primarily toward women and the field of on-line
astrological information services." Id.
The Foxes worked for Defendants from 1999, the year the
agreements were signed, until 2003, a period the Agreements
define as "the term of employment by the Founders [viz., the
Foxes] by the Company [viz., iVillage and KnowledgeWeb] as set
forth" in an employment agreement incorporated by reference.
Id. at 4.
The Agreements' Compensation Section states:
During the Employment Period, the Company shall have
a royalty-free right and license to use the Reserved
Marks. After the Employment Period, the Company
agrees to pay the Founders a 5% royalty on gross
revenues derived from goods and services employing
the Reserved Marks, which goods or services are
produced or authorized by the Company, less any
After Plaintiffs left Defendants' employ, Defendants allegedly
used the Kelli Fox mark for products and services outside the FI,
including "psychic services" and the use of the Kelli Fox mark as
if she were still employed by Defendants. Compl. at 4. The Foxes
assert that Defendants have made a "substantial financial gain
without royalty payments to the Foxes." Id. at 6.
The Foxes filed a Complaint alleging breach of contract,
trademark infringement and dilution, false advertising,
cybersquatting, violation of the right of publicity, and unfair
competition. Id. at 16.
Defendants contend that the Court lacks jurisdiction over the
case because Plaintiffs' claims truly arise under state law.
Defendants' Memorandum in Support of Motion to Dismiss at 16-19
The Federal Courts have "original jurisdiction over all civil
actions arising under the Constitution, laws or treaties of the
United States." 28 U.S.C. § 1331. The Federal Courts have
supplemental jurisdiction over state law claims if the claims are
"so related" to the federal claims that they "form part of the
same case or controversy." 28 U.S.C. § 1367.
A Federal Court may examine the question of subject matter
jurisdiction sua sponte. See Steel Company v. Citizens for
a Better Environment, 523 U.S. 83, 94 (1998). Federal Courts
must normally determine issues of subject matter jurisdiction
before considering a case on its merits. Id. When a court lacks
jurisdiction, the "only function remaining to the court is that
of announcing the fact and dismissing the cause." Id., quoting
Ex parte McCardle, 7 Wall. 506, 514 (1868).
"In our notice pleading regime . . . the district court looks
past the surface allegations to make its own assessment of what
law the claim arises under." International Armor Limousine
Company v. Moloney ...