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UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF FLORIDA

Miami Division

CASE NO: 22-CV-22399-DPG

FRIDA KAHLO CORPORATION, a 

Panamanian corporation, and FRIDA 

KAHLO INVESTMENTS, S.A., a 

Panamanian corporation, 

Plaintiffs, 

v. 

MARA CRISTINA TERESA ROMEO 

PINEDO, an individual, and FAMILIA

KAHLO S.A. DE C.V., a Mexican corporation, 

Defendants.

________________________________________/

DEFENDANTS’ MOTION TO DISMISS

Defendants, MARA CRISTINA TERESA ROMEO PINEDO (“Mara Cristina”), an 

individual, and FAMILIA KAHLO S.A. DE C.V. (“Familia Kahlo”), a Mexican corporation, 

respectfully move this Court to dismiss Plaintiffs’, FRIDA KAHLO CORPORATION (“FKC”), a 

Panamanian corporation, and FRIDA KAHLO INVESTMENTS, S.A. (“FKI”), a Panamanian 

corporation, Complaint [ECF 1] pursuant to Federal Rule of Civil Procedure 12(b)(1), 12(b)(2), 

and 12(b)(6), and in support thereof Defendants state as follows:

INTRODUCTION

The present action was filed by Plaintiffs on July 29, 2018 [ECF 1] against Defendants, a 

Mexican citizen and Mexican corporation, which do not reside in the United States nor are 

domiciled or incorporated in the state of Florida, see Defs. Comp. Exhibit “A” at pp. 2–3, ¶¶ 3-7; 

5, ¶¶ 2–14, for, inter alia, an alleged Copyright- and Lanham Act violation. Defendant Familia 

Kahlo was served via letter rogatory in Mexico on October 18, 2022. Similarly, Mara Cristina was 

served via letter rogatory in Mexico on October 20, 2022. See [ECF 9]. 

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This case is not novel, in fact, it is not the first time the parties are before the Court. See 

Frida Kahlo Corporation v. Pinedo, No. 18-21826-Civ-Scola, 2021 WL 4147876 (S.D. Fla. Sept. 

13, 2021). Previously, Plaintiffs filed an action against Defendants in a haphazardly attempt to strip 

Defendant Mara Cristina, the rightful owner of the Frida Kahlo mark and name, and Defendant 

Familia Kahlo of the rights conferred to them by the intellectual property laws of Mexico—where 

the underlying disputes and issues of law originate. See Id. That action was dismissed by the Court 

for similar reasons as those laid out herein by Defendants. Once again, Plaintiffs are attempting to 

bypass the laws of Mexico and the legal disputes that are ongoing in Panama and Spain by filing 

this action in the United States to attempt to gain some form of authentication of its false claims to 

the intellectual property rights of the Frida Kahlo mark. 

Plaintiffs’ Complaint [ECF 1] asserts that the present action “concerns Defendants’ tortious 

interference with Frida Kahlo Corporation’s licensees in July 2022, and the rights of the parties 

with respect to the name and image of Frida Kahlo in connection with art exhibitions and phone 

covers.” [ECF 1] at ¶ 12. However, FKC fails to mention that the intellectual property rights to the 

Frida Kahlo trademark were vested in Defendants under section XII of Article 90 of Mexico’s 

Industrial Property laws. See Frida Kahlo Corporation v. Pinedo, No. 18-21826-Civ-Scola, [ECF

7] at ¶¶ 13-15. Nevertheless, Plaintiffs attempt to misguide this Court by stating that FKC “was 

formed in 2004, with the mission to educate, share and preserve the art, image, and legacy of the 

world-famous Mexican artist, Magdalena Carmen Frida Kahlo y Calederon (aka ‘Frida Kahlo’), 

through the worldwide commercialization and licensing of the FRIDA KAHLO brand.” [ECF 1] 

at ¶ 15. Such was not the case. Defendant Mara Cristina and her family, the closest living 

descendants of Frida Kahlo, have championed the legacy of one of Mexico’s greatest painters and 

cultural icons. Frida Kahlo Corporation was created in 2004 for the purpose of commercializing 

the name and brand, Frida Kahlo. Unfortunately, that commercialization led to those operating 

FKC to make like a thief in the night with the property rights to the brand, right from under the 

Defendants and the descendant family’s nose. 

The Complaint alleges that Defendants have (i) infringed on Plaintiffs’ copyright by 

sending cease and desist letters1 to Plaintiffs’ licensees in Florida, (ii) created a derivative work of 

1 Plaintiffs’ claims depend, to some extent as detailed herein, on three identified cease and desist letters; however, 

Plaintiffs do not provide the letters with the Complaint, see generally [ECF 1], rather opting to plead out of context 

excerpts from the letters. Id. at ¶ 33. Defendants have attached the respective letters as Defs. Composite Exhibit “B” 

as the contents of the letter were plead to and should be considered as part of the four-corners of the Complaint. 

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Plaintiffs’ copyright, (iii) tortiously interfered with Plaintiffs’ business opportunities, and (iv) 

called into question Plaintiffs’ rights, and therefore, a declaratory judgment from this Court is 

warranted. See generally [ECF 1]. Plaintiffs’ allegations do not only fail to state a claim under the 

appropriate federal and state statutes but also fail to establish a prima facie case of personal 

jurisdiction over Defendants and that this Court has subject matter jurisdiction over the Frida Kahlo 

mark to declare the rights between the Parties as to the mark. Therefore, for the reasons detailed 

herein, the Court should dismiss the Complaint. 

MEMORANDUM OF LAW

I. Standard for a Motion to Dismiss 

For the purposes of a motion to dismiss a district court “must accept all of the plaintiff's 

allegations as true in determining whether a plaintiff has stated a claim for which relief could be 

granted.” Blake v. Batmasian, 191 F. Supp. 3d 1370, 1373 (S.D. Fla. 2016) (citing Hishon v. King 

& Spalding, 467 U.S. 69, 73 (1984)). Furthermore, “[t]o survive a motion to dismiss, a complaint 

must contain sufficient factual matter, accepted as true, to state a claim to relief that is plausible 

on its face.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). Moreover, “[a] claim has facial 

plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable 

inference that the defendant[s] [are] liable for the misconduct alleged.” Id. 

However, when defendants “[mount] a factual attack to standing under Federal Rule of 

Civil Procedure 12(b)(1) asserting lack of subject matter jurisdiction, a court can ‘consider 

extrinsic evidence such as deposition testimony and affidavits’ and is not ‘constrained to view [the 

facts] in the light most favorable to the plaintiff.’” Schaevitz v. Braman Hyundai, Inc., 437 F. Supp. 

3d 1237, 1246 (S.D. Fla. 2019) (quoting Houston v. Marod Supermarkets, Inc., 733 F.3d 1323, 

1335–36 (11th Cir. 2013) (cleaned up)). 

II. This Court lacks Personal Jurisdiction over Defendants. 

A federal district court sitting in diversity undertakes a two-step inquiry in ruling on a 

motion to dismiss for lack of personal jurisdiction. “First, it must determine whether the exercise 

of jurisdiction is appropriate under the state long-arm statute. Second, it must determine whether 

the exercise of jurisdiction violates the Due Process Clause of the Fourteenth Amendment to the 

United States Constitution.” McCullough v. Royal Caribbean Cruises, Ltd., 268 F. Supp. 3d 1336, 

1343 (S.D. Fla. 2017) (citing United Techs. Corp. v. Mazer, 556 F.3d 1260, 1274 (11th Cir. 2009)). 

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Under the first prong, district courts must analyze the states long-arm statute and construe it as the 

state’s supreme court would. See Lockard v. Equifax, Inc., 163 F. 3d 1259, 1265 (11th Cir. 1998).

There are two components of jurisdiction under Florida’s long arm statute: general and specific. 

Stubbs v. Wyndham Nassau Resort & Crystal Palace Casino, 477 F.2d 1357, 1360 (11th Cir. 2006). 

A. General Jurisdiction

Florida’s general jurisdiction provision states that a defendant who is engaged in substantial 

and non-isolated activities within the state, whether such activities are wholly interstate, intrastate 

or otherwise, is subject to the jurisdiction of the courts of the state, whether or not the claim arises 

from the activity(ies). § 48.193(2), Fla. Stat. This provision allows the district court to assert 

general personal jurisdiction over a nonresident defendant, who has substantial and non-isolated 

activity within Florida even when that activity is unrelated to the cause of action being litigated. 

Id. However, when applying Florida’s long-arm statute a federal district court must also ensure 

that if the law subjects a nonresident defendant to personal jurisdiction such exercise of jurisdiction 

also conforms with the due process clause of the Fourteenth Amendment. See Ford Motor Co. v. 

Montana Eight Jud. Dist. Ct., 141 S.Ct. 1017, 1024 (2021) (holding that “[t]he Fourteenth 

Amendment’s Due Process Clause limits a state court’s power to exercise jurisdiction over a 

defendant.). Furthermore, the United States Supreme Court has held that “an individual is subject 

to general jurisdiction in her place of domicile.” Ford Motor Co., 141 S.Ct. at 1024 (citing Daimler 

AG v. Bauman, 571 U.S. 117, 137 (2014).

Finally, Florida’s long-arm statute “must be strictly construed, and any doubts about the 

applicability of the statute are resolved in favor of the defendant and against a conclusion that 

personal jurisdiction exists.” Interim Healthcare, Inc. v. Interim Healthcare of Se. La., Inc., No. 

19-cv-62412, 2020 WL 3078531, at *8 (S.D. Fla. June 10, 2020) (quoting Gadea v. Star Cruises, 

Ltd., 949 So.2d 1143, 1150 (Fla. 3d DCA 2007)).

i. Defendant Mara Cristina is not subject to general jurisdiction under 

Florida’s Long-Arm statute.

As the Supreme Court held in Ford Motor Co., an individual is subject to general 

jurisdiction if that individual is domiciled in that state. Ford Motor Co., 141 S.Ct. at 1024. 

Furthermore, under Florida law a person is subject to general jurisdiction in Florida if the 

individual’s contacts are substantial and non-isolated. Stubbs, 477 F.2d at 1360. However, such 

contacts do not exist in the present case. 

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First, Defendant Mara Cristina does not live in Florida nor is she even a citizen of the 

United States, she is a citizen of Mexico and domiciled in Mexico City. See Defs. Comp. Exhibit 

A at p. 5, ¶¶ 2–14. Second, Plaintiffs do not, at any point in their pleadings, allege that Defendant 

Mara Cristina “is engaged in substantial and no[n] isolated activity within [the] state,” triggering

section 48.193, Florida Statutes. In fact, Plaintiffs simply raise boilerplate allegations that both 

Defendants acted in their individual capacity, or through agents, to tortiously target Plaintiffs’ 

business contracts and advantageous business relationships in Florida. [ECF 1] at ¶ 6. Such 

allegations would fall in the specific jurisdiction bucket of section 48.193 and have no bearing on 

whether this Court has general jurisdiction over Mara Cristina. Therefore, given the lack of facts 

in the Complaint that Mara Cristina, as an individual, was engaged in substantial and non-isolated

activity(ies) in Florida, this Court must dismiss her from this action for lack of general personal 

jurisdiction. 

ii. Defendant Familia Kahlo is not subject to general jurisdiction under 

Florida’s Long-Arm statute. 

Federal courts have long held that “[a]bsent exceptional circumstances, general jurisdiction 

over a corporation exists only in its place of incorporation and principal place of business.” In re: 

Zantac (Ranitidine) Products Liability Litigation, 546 F. Supp. 3d 1192, 1204 (S.D. Fla. 2021) 

(citing Daimler AG v. Bauman, 571 U.S. 117, 138-39 n.19 (2014)). However, “‘[a] court may 

assert general jurisdiction over foreign (sister-state or foreign-country) corporations to hear any 

and all claims against them when their affiliations with the State are so ‘continuous and systematic’ 

as to render them essentially at home in the forum State.’” Id. (quoting Goodyear Dunlop Tires 

Operations, S.A. v. Brown, 564 U.S. 915, 919 (2011)). 

Here, Defendant Familia Kahlo is a Mexican corporation duly incorporated in Mexico and 

has no buildings, headquarters, or operations in Florida making it a corporate citizen of Mexico. 

See Defs. Comp. Exhibit A at pp. 2–3, ¶¶ 3–7. Thus, pursuant to the long-held position by our 

Supreme Court, Familia Kahlo is not subject to general jurisdiction due to its domicile and 

incorporation. See Daimler, 571 U.S. at 138–39. Moreover, Plaintiffs have not plead any facts that 

demonstrate that Defendant Familia Kahlo has “affiliations with [Florida] [that] are so ‘continuous 

and systematic’ as to render [it] essentially at home in the forum State.” See generally [ECF 1]; 

see also Goodyear, 564 U.S. at 919. 

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At best, Plaintiffs allege that Defendant Familia Kahlo sent cease and desist letters into the 

forum state and that in doing so it carried out a tortious act in Florida. See [ECF 1] at ¶ 6. However, 

as with the case of Defendant Mara Cristina, the alleged tortious acts by way of the cease and 

desist letters are more akin to acts that would subject Defendant Familia Kahlo to specific personal 

jurisdiction—which will be discussed in turn herein—not general personal jurisdiction. Therefore, 

given the lack of facts in the Complaint that Familia Kahlo, as a corporation, had affiliations in 

Florida that were so continuous and systematic as to render it “at home” in Florida, this Court must 

dismiss it from this action for lack of general personal jurisdiction.

B. Specific Jurisdiction 

In Ford Motor Co., the Supreme Court explains that a defendant “must take ‘some act by 

which [it] purposefully avails itself of the privilege of conducting activities within the forum State 

. . .” and that “the contacts must be the defendant’s own choice and not ‘random, isolated, or 

fortuitous,’” to subject him, her, or it to the specific jurisdiction of the forum state. Ford Motor 

Co., 141 S.Ct. at 1024–25. Ultimately, “the plaintiff’s claims . . . ‘must arise out of or relate to the 

defendant’s contacts with the forum.’” Id. at 1025 (quoting Bristol-Myers Squibb Co. v. Sup. Ct. 

of Cal., San Francisco Cty., 582 U. S. __, __, 137 S.Ct. 1773, 1780 (2017)). In other words, “there 

must be ‘an affiliation between the forum and the underlying controversy, principally, [an] activity 

or an occurrence that takes place in the forum State and is therefore subject to the State’s 

regulation.’” Id.

However, if a contact with the forum state does satisfy Bristol-Myers, and the progeny of 

specific jurisdiction cases, a court must still determine whether exercising specific jurisdiction 

violates the defendant’s due process. The Eleventh Circuit uses a three-part Due Process test to 

determine if enforcing jurisdiction over nonresident defendants violates the Fourteenth 

Amendment. First, whether the plaintiff’s claims arise out of or relate to at least one of the 

defendant’s contacts with the forum; second, whether the nonresident defendant purposefully 

availed himself of the privilege of conducting activities within the forum state, thus invoking the 

benefit of the forum state’s laws; and third, whether the exercise of personal jurisdiction comports 

with traditional notions of fair play and substantial justice. Louis Vuitton Malletier, S.A. v. Mosseri, 

736 F.3d 1339, 1355 (11th Cir. 2013). 

As to the first prong, a court should “focus on the direct causal relationship between the 

defendant, the forum, and the litigation.” Id. at 1355–56. Furthermore, when looking at the 

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purposeful availment prong a court may apply the traditional minimum-contacts test, or, in 

intentional-tort cases, may utilize the effects test. First, under the minimum contacts test a court 

assesses 

the nonresident defendant’s contacts with the forum state and ask whether those 

contacts: (1) are related to the plaintiff’s cause of action; (2) involve some act by 

which the defendant purposefully availed himself of the privileges of doing 

business within the forum; and (3) are such that the defendant should reasonably 

anticipate being hailed into court in the forum. 

Louis Vuitton Malletier, S.A., 736 F.3d at 1357. To do this, the court must “identify all contacts 

between a nonresident defendant and a forum state and ask whether, individually or collectively, 

those contacts satisfy [the] criteria.” Id. On the other hand, “[u]nder the ‘effects test,’ a nonresident 

defendant’s single tortious act can establish purposeful availment, without regard to whether the 

defendant had any other contacts with the forum state.” Id. at 1356. “This occurs when the tort: 

(1) was intentional; (2) was aimed at the forum state; and (3) caused harm that the defendant should 

have anticipated would be suffered in the forum state.” Id. As to the third prong, a court should 

consider: “(1) the burden on the defendant; (2) the forum’s interest in adjudicating the dispute; (3) 

the plaintiff’s interest in obtaining convenient and effective relief; and (4) the judicial system’s 

interest in resolving the dispute.” Id. at 1358.

Furthermore, the initial burden is on Plaintiffs to “plead sufficient facts to support the 

exercise of personal jurisdiction.” Miller v. Gizmodo Media Group, LLC, 383 F. Supp. 3d 1365, 

1370 (S. D. Fla. 2019). However, once Defendants establish a prima facie case that this Court lacks 

specific personal jurisdiction the burden shifts back to Plaintiffs to demonstrate the contrary. Id.

“A plaintiff’s claim must ‘arise out of or relate to at least one of the defendant’s contacts 

with the forum.’” Id. (quoting Louis Vuitton Malletier, S.A., 736 F.3d at 1355). Here, Plaintiffs 

have failed to plead any facts or put forward any evidence that demonstrates that Defendants have 

any contacts with the state of Florida. Absent a showing that more than the alleged tortious cease 

and desist letters were used to interfere with Plaintiffs’ business operations, Plaintiffs fail to meet 

their burden under the first part of the Eleventh Circuit’s three-part test. 

i. Defendant Mara Cristina is not subject to specific jurisdiction under Florida’s LongArm statute. 

Plaintiffs fail to meet their burden under the first step of the Eleventh Circuit’s three-part 

test, however, even if the Court were to find that the first step was satisfied, Plaintiffs also fail to 

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meet their burden as to the second part of the test—Florida’s Long Arm Statute. The Long Arm 

Statute outlines nine statutory basis for an individual to be subject to specific personal jurisdiction 

in Florida, including in relevant but not limited to:

1. Operating, conducting, engaging in, or carrying

on a business or business venture in this state or 

having an office or agency in this state. 2.

Committing a tortious act within this state. 6.

Causing injury to persons or property within this state 

arising out of an act or omission by the defendant 

outside this state, if, at or about the time of the injury, 

either: a. The defendant was engaged in solicitation or 

service activities within this state; orb. Products, 

materials, or things processed, serviced, or 

manufactured by the defendant anywhere were used 

or consumed within this state in the ordinary course 

of commerce, trade, or use.

§ 48.193, Fla. Stat. Moreover, these requirements under Florida law also go toward determining if 

Defendants meet the traditional minimum contacts’ test. Here, they do not. 

Plaintiffs allege that “Defendants intended to cause Primo Entertainment, OEG Latino and

Garber IMC to cease production and promotion of the Exhibitions, thus interfering with their 

relationships with Plaintiffs, and causing harm to the relationship between Plaintiffs and their 

licensees.” [ECF 1] at ¶ 39. Plaintiffs’ boilerplate arguments do not rise to the constitutional 

standard of specific personal jurisdiction that the Supreme Court requires be demonstrated for a 

court to exercise jurisdiction over a nonresident defendant. In Burger King Corp., the Supreme 

Court held that for a person to be subject to specific personal jurisdiction that person must 

“purposefully avail” him or herself to the benefits of the forum state. Burger King Corp., 471 U.S.

at 475. The Supreme Court has also held that to purposefully avail oneself to the jurisdiction of a 

state, a person must have the “privilege of conducting activities within the forum State” and that 

“the contacts must be the defendant’s own choice and not ‘random, isolated, or fortuitous.’” Ford 

Motor Co., 141 S.Ct. at 1024–25. 

Plaintiffs fail to plead that Defendant Mara Cristina had more than just random contacts 

with the forum, in fact, they pled no such facts that she had any contacts with the forum. Rather, 

Plaintiffs plead that Defendant Mara Cristina, by way of the company she is a part of, acted in the 

forum when the cease and desist letters were sent. However, that does not consider the plain fact 

that the letters were not sent by Mara Cristina—not even in her official capacity within Defendant 

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Familia Kahlo. Instead, the letters were sent by the company’s general manager. If a shareholder 

of a company in the United States could be hailed into a foreign jurisdiction simply because they 

are a shareholder without taking any active steps to avail themselves of that jurisdiction, our federal 

jurisprudence on personal jurisdiction would be meaningless—such is the position that is being 

taken by Plaintiffs here. 

In fact, Plaintiffs’ only argument is that Defendants’ cease and desist letters satisfy 

Florida’s long-arm statute, without providing more. This argument has been unpersuasive in a 

plethora of federal courts across the country, and it should hold true here. The use of cease and 

desist letters to enforce the rights of a person or entity are insufficient to satisfy the minimum 

contacts requirement. See Red Wing Shoe Co., Inc. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355, 

1361 (Fed. Cir. 1998) (holding that three cease and desist letters sent by a defendant were, alone, 

insufficient to justify personal jurisdiction in a declaratory judgment claim).

Furthermore, Plaintiffs fail to demonstrate that Defendants purposefully availed 

themselves of the jurisdiction of Florida under the effects test, which states that “a nonresident 

defendant’s single tortious act can establish purposeful availment when the tort was: (1) 

‘intentional; (2) [ ] aimed at the forum state; and (3) caused harm that the defendant should have 

anticipated would be suffered in the forum state.’” Miller, 383 F. Supp. 3d at 1373 (citing Louis 

Vuitton Malletier, S.A., 736 F.3d at 1356). Plaintiffs cannot succeed under the effects test because, 

as a matter of law, the use of cease and desist letters “do[es] not constitute ‘express aiming’ at 

the forum sufficient to establish the constitutionally required minimum contacts with the forum.” 

Impact Productions, Inc. v. Impact Productions, LLC, 341 F. Supp. 2d 1186, 1191–92 (D. Col. 

2004) (emphasis added).

Therefore, as a threshold matter, Defendant Mara Cristina cannot be subject to specific 

jurisdiction when the Complaint fails to allege any facts that show that Mara Cristina, as an 

individual, took any actions in Florida to tortiously harm Plaintiffs. Without more, Plaintiffs do 

not meet their burden to demonstrate to this Court that it has specific personal jurisdiction over 

Defendant Mara Cristina. Thus, Plaintiffs fail to satisfy the first prongs of the effects test and the 

inquiry should end there. 

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ii. Defendant Familia Kahlo is not subject to specific jurisdiction under Florida’s LongArm statute

The facts in the Complaint are not much different for Defendant Familia Kahlo. The same 

issue arises with exercising specific jurisdiction over the foreign corporation as with Defendant 

Mara Cristina. First, Defendant Familia Kahlo is a foreign corporation with no alleged contacts in 

the forum state, outside of three cease and desist letters directed at third parties for the purpose of 

enforcing the Defendant’s intellectual property claims. However, assuming arguendo that the first 

prong of the effects test is satisfied—which it is not for the same reasons outlined for Defendant 

Mara Cristina, Plaintiffs still fail to satisfy the remaining prongs of the three-step test. 

The second prong, whether the Defendant purposefully availed itself of the forum also fails 

for the simple fact that federal courts have long held that cease and desist letters to enforce 

intellectual property rights do not avail a party to a forum’s jurisdiction. See Red Wing Shoe Co., 

Inc., 148 F.3d at 1361. Therefore, unless Plaintiffs can show this Court that the cease and desist 

letters were utilized for reasons other than to enforce the rights that Defendant Familia Kahlo has 

according to Mexico’s intellectual property laws and the Berne Convention,

2 Plaintiffs fail to 

satisfy the second prong of the test laid out in Louis Vuitton. 

Finally, Plaintiffs fail to meet the requirements under the third step of the Eleventh Circuit’s 

three-step test – whether fair play and substantial justice weigh in favor or against the exercise of 

jurisdiction. When determining whether fair play and substantial justice calls for the exercise of 

specific personal jurisdiction over a nonresident defendant, this Court must look to five factors: 

“the burden on the defendant, the forum state’s interest in adjudicating the dispute, the plaintiff’s 

interest in obtaining convenient and effective relief, the interstate judicial system’s interest in 

obtaining the most efficient resolution of controversies, and the shared interest of several states in 

advancing fundamental substantive social policies.” Miller, 383 F. Supp. 3d at 1375 (citing Burger 

King Corp., 471 U.S. at 476-77). 

2 See Golan v. Holder, 565 U.S. 302, 306–08 (2012) (discussing the history and adoption of the Berne Convention, 

which grants foreign copyright holders protections in signatory member states, by Congress); see also 17 U.S.C. 

§104A (the application of the Berne Convention in the Copyright Act, providing protection for “restored” works, 

otherwise known as works in foreign nations that maintain the same protections here—with some exceptions provided 

for in the Act. None of which apply to the work at issue here.).

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iii. The remaining Louis Vuitton factors militate against the exercise of personal 

jurisdiction 

Without question, the burden on Defendants in this case is great as they are not residents 

of Florida, nor of any other state of the United States. Defendants are citizens of, and domiciled, 

in Mexico. See Defs. Comp. Exhibit A at pp. 2–3, ¶¶ 3-7; 5, ¶¶ 2–14; . The burden for them to 

litigate in another country is great. This action is but another attempt by FKC to continue to 

undermine the proper channels by which it can challenge the property rights of Defendants in 

Mexico. Therefore, the first factor should weight against the exercise of jurisdiction. 

Second, the state of Florida has no interest in the adjudication of this dispute as it gains no 

value from who maintains the rightful title of the Frida Kahlo name and subsequent trademarks 

derived therefrom. Plaintiffs are Panamanian companies and Defendants are Mexican citizens. 

Regardless of whether this Court could adjudicate on the issue, it would be of little use to the state 

of Florida in terms of economic impact or impact on Floridian citizens. Therefore, the second 

factor also weighs against the exercise of jurisdiction. 

Third, the Plaintiffs’ interest in obtaining convenient and effective relief will not come 

from the litigation of the present case. Defendants have several pending litigations against FKC in 

foreign countries, which may render any outcome of this present case moot. As such, even in the 

unlikely event that this Court were to find that it had subject matter jurisdiction and personal 

jurisdiction, it would be necessary for a stay to be issued by this Court pending the resolution of 

the foreign litigation. Otheriwise, this Court and the parties may exhaust extensive amounts of 

resources litigating this case simply to have it become moot should a foreign court rule in favor of 

Defendants. Therefore, the third factor also weighs against the exercise of personal jurisdiction 

over Defendants. 

Fourth, the interstate judicial system has no interest or stake in the outcome of this dispute, 

nor would exercising personal jurisdiction over Defendants help in obtaining a more efficient 

resolution to controversies for the interstate judicial system. In fact, exercising personal 

jurisdiction in this case would have the opposite effect. Thus, the appropriate measure is for this 

Court to dismiss the case and allow Defendants to pursue their claims in the foreign courts, which 

would lead to the efficient resolution of disputes within the interstate judicial system. Thus, the 

fourth factor also weighs against exercising specific personal jurisdiction. 

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Finally, the interest of states to advance social policies weigh in favor of Defendants in this 

case. The only claim made by Plaintiffs to subject Defendants to personal jurisdiction in Florida 

is the use of cease and desist letters that were utilized to inform infringers of Defendants’ 

intellectual property rights. If the Court takes those letters, alone, to be sufficient to subject a 

foreign defendant to personal jurisdiction it would go against the social policy that cease and desist 

letters are encouraged to resolve infringement disputes before legal action is taken. Likewise, it 

would defeat the purpose laid out by the plethora of federal cases that have held that such letters 

are insufficient to satisfy the minimum contacts requirement for personal jurisdiction. Therefore, 

this Court should deny exercising personal jurisdiction over Defendants and dismiss the present 

action. 

C. Rule 4(k)

Finally, several federal courts, including the present one, have held that Federal Rule of 

Civil Procedure 4(k)(2) applies only in limited circumstances to exercise general personal 

jurisdiction over foreign defendants. See Giuliani v. NCL (Bahamas) Ltd., 558 F. Supp. 3d 1230, 

1244 (S.D. Fla. 2021) (Gayles, J.) (calling into question the application of Rule 4(k)(2) for general 

jurisdiction purposes in the aftermath of Daimler AG v. Bauman, 571 U.S. 117, 137 (2014)); 

Thompson v. Carnival Corp., 174 F. Supp. 3d 1327, 1337–38 (S.D. Fla. 2016).

Moreover, as to Defendant Familia Kahlo, a multitude of federal courts, including the 

federal circuit, have long held that the sending of cease-and-desist letters is insufficient to exercise 

personal jurisdiction over a foreign defendant. See Red Wing Shoe Co., Inc., 148 F.3d at 1361 

(holding that three cease and desist letters sent by a defendant were, alone, insufficient to justify 

personal jurisdiction in a declaratory judgment claim); Breckenridge Pharmaceutical, Inc. v. 

Metabolie Laboratories, Inc., 444 F.3d 1356, 1366 (Fed. Cir. 2006) (on appeal from the Southern 

District of Florida); Yahoo! Inc. v. La Ligue Contre Le Racism Et L’Antisemitisme, 433 F.3d 1199, 

1208 (9th Cir. 2006); Beacon Enterprises, Inc. v. Menzies, 715 F.2d 757, 762–63 (2d Cir. 1983);

see also 5 Patry on Copyright § 17:176 n.1 (2022) (collecting cases holding that cease and desist 

letters in patent, trademark, and copyright contexts are insufficient to satisfy personal jurisdiction 

requirements). 

Therefore, absent a showing that more has been done by Defendants causing some form of 

tortious act or contact with the forum state, jurisdiction over Defendants would be improper. As 

such, this Court lacks personal jurisdiction over Defendants pursuant to section 48.193, Florida 

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Statutes, and therefore, Defendants must be dismissed from this action for lack of personal 

jurisdiction. 

III. This Court lacks subject matter jurisdiction to grant any declaratory judgment 

requested in Count III, and therefore, this Count should be dismissed. 

Attacking a complaint for lack of subject matter jurisdiction comes in two forms, facial 

attacks, and factual attacks. Lawrence v. Dunbar, 919 F.2d 1525, 1528–29 (11th Cir. 1990). 

“‘Facial attacks’ on the complaint ‘require[ ] the court merely to look and see if [the] plaintiff has 

sufficiently alleged a basis of subject matter jurisdiction, and the allegations in his complaint are 

taken as true for the purposes of the motion.’” Id. (citing Menchaca v. Chrysler Credit Corp., 613 

F.2d 507, 511 (5th Cir. 1980), cert. denied, 449 U.S. 953 (1980)). Whereas “‘[f]actual attacks,’ on 

the other hand, challenge ‘the existence of subject matter jurisdiction in fact, irrespective of the 

pleadings, and matters outside the pleadings, such as testimony and affidavits, are considered.’” 

Id. Here, it is necessary for the Court to look beyond the four-corners of the Complaint and look 

at the original assignment contracts from which Plaintiffs derived the ability to claim any right to 

the Frida Kahlo name, brand, or mark. 

A. This Court lacks subject matter jurisdiction over the Assignment Contracts.

Plaintiffs have alleged in the Complaint that this Court has subject matter jurisdiction under 

the Copyright- and Lanham Act pursuant to 28 U.S.C. § 1331. [ECF 1] at ¶ 2. Moreover, Plaintiffs 

allege that “[a] case and controversy exists under Article III of the United States Constitution,”

[ECF 1] at ¶ 72, based on the cease and desist letters that Defendants sent Plaintiffs’ licensees. Id.

Plaintiffs also allege that Defendants have no such “rights of publicity in the United States for 

images or names used in connection with art exhibitions.” Id. at ¶ 74. However, to address 

Plaintiffs’ alleged rights concern in the Complaint this Court would first need to determine whether 

Plaintiffs have legal right and title to the Frida Kahlo name or brand. 

To do so, the Court would need to examine the underlying contracts that assigned the 

ownership of the Frida Kahlo trademarks to Plaintiff FKC, as well as the right to register new 

trademarks based on the assigned right to use and commercialize the Frida Kahlo name. However, 

this Court is precluded from analyzing such a right and whether Plaintiffs have the right to the 

Frida Kahlo name, and the subsequent registration of trademarks deriving from the name, because 

of the Parties original assignment agreements’ forum selection clause. See Frida Kahlo 

Corporation v. Pinedo, 2021 WL 4147876, at *3 (Scola, J.) (holding that the forum selection clause 

Case 1:22-cv-22399-DPG Document 12 Entered on FLSD Docket 12/01/2022 Page 13 of 19
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in the assignment of trademark rights agreements vest jurisdiction in the courts of Mexico City, 

Mexico); see also Defs. Comp. Exhibit “C” at 12, 31, 44, 52.

Plaintiffs filed this action as another attempt to have a United States court adjudicate a 

matter it simply cannot because the proper courts have not adjudicated the matter in Mexico. As 

John Adams famously said, “ours is a government of laws and not of men.” As such, Plaintiffs 

cannot disregard the governing forum selection clause in the original assignment agreements that 

gave FKC arguable property rights in the Frida Kahlo name and potential future marks that derived 

from that name.3

This Court lacks subject matter jurisdiction, as it did previously, to adjudicate whether 

Plaintiffs have legal right and title to the Frida Kahlo name, and subsequent trademarks derived 

therefrom, under the assignment agreements, as they contain a mandatory forum selection clause.

Thus, depriving this Court of subject matter jurisdiction to adjudicate the alleged rights implicated 

by Plaintiffs in Count III of the Complaint. See [ECF 1] at ¶ 77. It has been established by the 

Eleventh Circuit that a district court need “only enforce[ ] those clauses that unambiguously 

designate the forum in which the parties must enforce their rights under the contract.” Jiangsu 

Hongyuan Pharm. Co., Ltd. v. DI Glob. Logistics Inc., 159 F. Supp. 3d 1316, 1323 (S.D. Fla. 2016) 

(citing Fla. Polk Cnty. v. Prison Health Servs., Inc., 170 F.3d 1081, 1083 n. 8 (11th Cir.1999)). “A 

mandatory clause . . . ‘dictates an exclusive forum for litigation under the contract.’” Id. (quoting 

Glob. Satellite Commc'n Co. v. Starmill U.K. Ltd., 378 F.3d 1269, 1272 (11th Cir.2004)). Such a 

clause is at issue in the present case: 

each and every dispute arising with regard to the 

interpretation or fulfillment of this agreement shall 

be directed to the courts of Mexico City, Federal 

District, and thus the parties expressly waive any 

other jurisdiction that could correspond to them by 

reason of their current or future place of residence. 

Defs. Comp. Exhibit “C” at 12, 31, 44, 52 (emphasis added).

The forum selection clauses provide that litigation can only be conducted before a court in 

Mexico City and that disputes to the agreements—and the property rights conferred therein—must

be adjudicated in that jurisdiction, waiving the right to bring such claims before other jurisdictions.

3 Defendants continue to challenge the validity of the assignment agreements and the rights vested in Plaintiff FKC 

abroad, as was maintained in the previous action filed before this Court and Judge Scola.

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Id. Therefore, this Court lacks subject matter jurisdiction, by way of the forum selection clauses,

to adjudicate whether the assignment contracts vest in Plaintiffs the right and title to the Frida 

Kahlo name, and subsequent trademarks derived therefrom, because the ability to do so is vested 

solely in the courts of Mexico City. Therefore, this Court must dismiss Count III for lack of subject 

matter jurisdiction. 

B. The plain text of the Declaratory Judgment Act further supports the lack of subject 

matter jurisdiction in this case. 

Congress established the Declaratory Judgment Act to create a remedy for those seeking 

clarity in disputes related to rights such as those that Plaintiffs argue here. See 28 U.S.C. § 2201. 

Namely, the Act states that a remedy is available when a federal court has before it “a case of 

actual controversy within its jurisdiction.” Id. (emphasis added). These words have a significant 

meaning in this case—“within its jurisdiction.” The plain and ordinary reading of those words in 

the context of section 2201 clearly means that declaratory relief may be provided by a federal court 

if all notions of jurisdiction are satisfied. See Borden v. Katzman, 881 F.2d 1035, 1037–38 (11th 

Cir. 1989) (citing Skelly Oil Co. v. Phillips Co., 339 U.S. 667 (1950)); see also Primax Recoveries, 

Inc. v. Sevilla, 324 F.3d 544, 548 (7th Cir. 2003) (citing Public Service Commission v. Wycoff Co., 

344 U.S. 237, 248 (1952) (“[T]he jurisdiction of the district court [in a declaratory relief suit] 

depends on whether the court would have jurisdiction over that suit.”)

Thus, a case in controversy is “within” the jurisdiction of a court when it is “within” the

geographical jurisdiction of the court, i.e., the court can exert personal jurisdiction over the 

defendants, and “within” the court’s subject matter jurisdiction, i.e., the court is not precluded from 

adjudicating the merits of the case. Borden, 881 F.2d at 1037. Therefore, for declaratory relief to 

even be available to a party, a court must have both personal and subject matter jurisdiction over 

the case in controversy to be able to consider declaratory relief. See Borden, 881 F.2d at 1037; 

Primax, 324 F.3d at 548. 

Here, as stated herein, this Court lacks both personal jurisdiction over Defendants and 

subject matter jurisdiction to consider declaratory relief cause of action. Therefore, given that there 

exists no “case of actual controversy within” this Court’s jurisdiction, Count III for Declaratory 

Judgment should be dismissed. 

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IV. Plaintiffs fail to state a claim for Copyright infringement because as a matter of law,

Defendants Mexican copyright predates Plaintiffs’, therefore, Count I should be 

dismissed. 

Count I for Copyright Infringement claims that Defendants infringed Plaintiffs’ rights by 

“[making] a derivative work of FKC’s Copyrighted Works without the permission of the Frida 

Kahlo Corporation.” [ECF 1] at ¶56. First, the alleged infringement would be in violation of 17 

U.S.C. § 106A, which Plaintiffs fail to even cite to in the Complaint. Section 106A states, in part,

that “the author of a work of visual art shall have the right to claim authorship of that work . . . 

[and] shall have the right to prevent any intentional distortion mutilation, or other modification of 

that work. . . .” 17 U.S.C. § 106A(a)(1)–(3). Thus, it is clear that this section is implicated by the 

allegations in the Complaint. Plaintiffs claim a right to the registered works cited to, Registration 

Number VA 2-222-720 and VA 2-222-724, and that Defendants made a derivative work of the 

registered works without Plaintiffs’ permission. [ECF 1] at ¶¶ 54–63. However, Plaintiffs’ claim 

fails as a matter of law for one simple reason—Defendants’ alleged derivative work is actually 

registered with the USPTO’s Mexican counterpart and predates Plaintiffs. 

This Court must look to the four-corners of the Complaint when determining the 

sufficiency of a claim, however, when asked, according to Federal Rule of Evidence 201, to take 

judicial notice, a court must do so. See Fed. R. Evid. 201(c)(2) (emphasis added) (“The court must

take judicial notice if a party requests it and the court is supplied with the necessary information.”).

Moreover, in this circuit judicial notice may be requested at the motion to dismiss stage, especially 

when the notice requested is of public records. See Universal Express, Inc. v. U.S. S.E.C., 177 Fed. 

App’x 52, 53–54 (11th Cir. 2006) (citing Bryant v. Avado Brands, Inc., 187 F.3d 1271, 1278 (11th 

Cir.1999)). Here, Defendants invoke Rule of Evidence 201 and ask that the Court take judicial 

notice of the public record filings of the alleged “derivative work” with the Public Registry of 

Copyrights in Mexico by Defendant Mara Cristina on January 14, 2016. See Exhibit “D.”

The public record of the copyright filing in Mexico shows that the alleged “derivative 

work” was actually registered in Mexico in January of 2016, at least two years before the first 

work was registered by Plaintiffs on March 8, 2018, and the second on September 9, 2020. See

[ECF 1] at ¶¶ 20–21. Moreover, pursuant to section 104A of the Copyright Act, Defendants 

registration of the work in Mexico is recognized by the United States as a signatory member to the 

Berne Convention—which allowed for the reciprocity of copyright recognition among member 

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states to create a uniform copyright rights enforcement scheme across the globe.4 Therefore, 

Defendants have a properly registered work, the work cited to as derivative in the Complaint, see

[ECF 1] at ¶ 42, that predates those claimed by Plaintiffs as having been infringed upon. 

The fact is, the allegations made by Plaintiffs about the accessibility of their registered 

works for the taking to make derivative works can actually be said about Plaintiffs works as 

Defendants’ predates theirs. Nevertheless, the timeline of registrations and authority under which 

they are recognized is important for only one reason—the ability to state a claim. “To establish a 

claim of copyright infringement, a plaintiff must prove, first, that he owns a valid copyright in a 

work, and, second, that the defendant copied original elements of that work.” Leigh v. Warner 

Bros, Inc., 212 F.3d 1210, 1214 (11th Cir. 2000) (citing Feist Publications, Inc. v. Rural Tel. Serv. 

Co., 499 U.S. 340, 361 (1991)). 

Plaintiffs’ only claim for copyright infringement is that the alleged “derivative work” was 

made as an illegal copying of the elements from Plaintiffs’ registered works. [ECF 1] at ¶¶ 55–63. 

That claim fails as a matter of law because of the mere fact that Defendants’ alleged “derivative 

work” was actually in existence at least two years before Plaintiffs’ earliest registration of a work. 

It is a factual impossibility for Defendants to have taken elements from Plaintiffs’ registered works 

when the alleged infringing work was created and predates Plaintiffs’ own works. Therefore, as a 

matter of law, Plaintiffs fail the second prong of a copyright infringement claim, as laid out in 

Leigh v. Warner, and thus, Count I should be dismissed for failure to state a claim. 

CONCLUSION

This case is of paramount importance to Mexico and Mexican culture as it involves the 

rights of the true owners of the Frida Kahlo name and brand—Defendant Mara Cristina and Familia 

Kahlo. Before this Court is another attempt by Plaintiff FKC to bypass the laws of Mexico and the 

contracts to which it agreed to outside of the United States to even acquire the right to us the Frida 

Kahlo name. Regardless of Plaintiffs’ several bites at the apple, they still fall short of having claims 

that this Court can adjudicate. 

First, Plaintiffs fail to demonstrate how Defendants’ actions—limited as they are—are 

sufficient to warrant the exercise of personal jurisdiction over Defendants, foreigners to Florida 

and the United States. Similarly, Plaintiffs fail to show how the rights it claims are within this 

4 See Golan, 565 U.S. at 306 (discussing the history of the Berne Convention and its adoption by Congress).

Case 1:22-cv-22399-DPG Document 12 Entered on FLSD Docket 12/01/2022 Page 17 of 19
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Court’s jurisdiction to warrant the exercise of this Court’s declaratory powers as provided by the 

Declaratory Judgment Act. Finally, Plaintiffs fail to plead, because it is a factual impossibility to 

do so, that it has a claim for copyright infringement. All of Plaintiffs’ allegations fall short of the 

burdens which they carry and for those reasons the Court should dismiss the Complaint. 

Simply because Plaintiffs dislike the fact that Defendant Familia Kahlo is enforcing its 

intellectual property rights—conferred on Defendant Mara Cristina by Mexican law, who in turn 

conferred them on Familia Kahlo—through the use of cease and desist letters, does not mean that 

Plaintiffs can hail Defendants into court. Our federal courts have long held this standard, and 

Plaintiffs have completely disregarded that here today by, once again, attempting to hail 

Defendants into American courts for actions which Defendants are entitled to take. Plaintiffs

continue to use this Court and the federal judiciary as a battering ram against Defendants, 

continuously attacking them for actions which do not amount to causes of action in an attempt to 

continue to drain Defendants’ resources. Accordingly, for the reasons detailed at length above this 

Court should dismiss Plaintiff’s complaint. 

WHEREFORE, Defendants, MARA CRISTINA TERESA ROMEO PINEDO, an 

individual, and FAMILIA KAHLO S.A. DE C.V., a Mexican corporation, respectfully request that 

this Honorable Court dismiss Plaintiffs’ Complaint [ECF 1] pursuant to Federal Rule of Civil 

Procedure 12(b)(1), 12(b)(2), and 12(b)(6), and grant Defendants such further relief as the Court 

deems necessary, just, and proper.

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CERTIFICATE OF SERVICE

I hereby certify that on December 1, 2022, I electronically filed the foregoing document 

with the Clerk of the Court using CM/ECF. I also certify that the foregoing document is being 

served this day on all counsel of record or pro se parties identified on the attached Service List in 

the manner specified, either via transmission of Notices of Electronic Filing generated by CM/ECF 

or via First Class U.S. Mail for those counsel or parties who are not authorized to receive 

electronically Notices of Electronic Filing.

Respectfully Submitted,

EPGD ATTORNEYS AT LAW, P.A.

Attorneys for Intervenors

777 SW 37th Ave. Ste. 510

Miami, FL 33135

T: (786) 837-6787

F: (305) 718-0687

Joanna@epgdlaw.com

Oscar@epgdlaw.com

BY: /S/ Joanna Andrade Lehmann

Joanna Andrade Lehmann, Esq.

Florida Bar No.: 1014578

SERVICE LIST

Roberto M. Suarez, Esq. William R. Trueba, Jr., Esq.

Florida Bar No. 95762 Florida Bar No. 117544

Trueba & Suarez, PLLC Trueba & Suarez, PLLC

9150 S. Dadeland Blvd., Suite 1008 9150 S. Dadeland Blvd., Suite 1008

Miami, Florida 33156 Miami, Florida 33156

Telephone: (305) 482-1001 Telephone: (305) 482-1001

Facsimile: (786) 516-2826 Facsimile: (786) 516-2826

rsuarez@lex188.com wtrueba@lex288.com

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