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Chicago IP Litigation Tracking Northern District of Illinois IP Cases

Tag Archives: 12(b)(2)

De Minimis Sales Create Specific Jurisdiction

Posted in Jurisdiction

Valtech, LLC v. 18th Ave. Toys, Ltd., No 14 C 134, Slip Op. (N.D. Ill. Feb. 12, 2015) (Kocoras, J.).

Judge Kocoras denied defendant’s Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction or to transfer to the E.D. New York — this Lanham Act trade dress case involving packaging for magnetic, plastic blocks.

Plaintiff did not allege general jurisdiction, only specific jurisdiction based upon sales of accrued products into Illinois.  The Court held as follows:

  • Although defendant’s sales to Illinois were “very minimal,” they still sold accused product in the state.
  • Defendants “aimed” their accused products at all fifty states via the Internet.
  • Illinois had a substantial interest in providing a forum for its residents, such as Valtech, to seek redress.
  • Defendants failed to show that the E.D. New York was clearly more convenient than the N.D. Illinois.
  • The public interest factors were neutral.

Social Media Alone Does Not Create Personal Jurisdiction

Posted in Jurisdiction

Telemedicine Sol’ns LLC v. WoundRight Techs, LLC, No. 13 C 3431, Slip Op. (N.D. Ill. Mar. 14, 2014) (Dow, J.).

Judge Dow granted defendant WoundRight Technologies’ (“WoundRight”) Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction in this Lanham Act case involving plaintiff Telemedicine Solutions’ (“Telemedicine”)  & WOUND ROUNDS federal registration.  Despite no physical or sales contacts with Illinois, Telemedicine argued that WoundRight “expressly aimed” its alleged infringing activities at Illinois using Google Ad Words, its website and social media.

Of particular note, the Court held as follows:

  • “Express aiming” required more than an intentional tort to create jurisdiction from internet activity.  There must be some connection to Illinois.
  • Telemedicine’s residence in Illinois is not enough, unless without evidence that WoundRight knew that or otherwise directed its alleged harm at Illinois.
  • WoundRight, further, had not targeted Illinois or generated Illinois contacts except by “happenstance.”

Interactive Website Does Not Create Personal Jurisdiction

Posted in Jurisdiction

Flava Works, Inc. v. Gunter d/b/a myVidster.com, No. 10 C 6517, Slip Op. (N.D. Ill. Dec. 13, 2012) (Shadur, Sen. J.).

Judge Shadur granted defendant LeaseWeb USA (“LeaseWeb”) Fed. R. Civ. P. 12(b)(2) & (6) motion to dismiss for lack of personal jurisdiction and failure to state a claim.  Plaintiff Flava Works pointed largely to Lease Web’s interactive website.  But that website was not enough for general or specific jurisdiction.  And LeaseWeb’s single Illinois customer was similarly insufficient.  FlavaWorks offered no argument or proof that the customer was related to the alleged copyright infringement in this case.

The Court also dismissed LeaseWeb because FlavaWork’s complaint alleged no facts that would make it liable for copyright infringement.


Passive Website Alone Cannot Create Jurisdiction

Posted in Jurisdiction

Sage Prods, Inc. v. Primo, Inc., No. 12 C 3620, Slip Op. (N.D. Ill. Mar. 5, 2013) (Coleman, J.).

Judge Coleman granted defendant Primo’s Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction in this trade dress case involving a boot designed to cushion and prevent heel ulcers.  Primo did not avail itself of Illinois by soliciting sales in Illinois or regularly selling to Illinois customers.  Primo did contract with a third party sales rep, but that rep only made calls to two Illinois customers after general conversations at a Las Vegas trade show.  And neither Illinois entity returned the phone calls.  And operating a website that was accessible in, but did not target, Illinois was not sufficient to create jurisdiction.  Finally, Primo’s website was passive.  It did not provide any forms for purchasing or the ability to directly purchase the accused boot.



Induced Infringement Claims Need Not Use the Word “Induce”

Posted in Pleading Requirements

Snap-On Inc. v. Robert Bosch, LLC, No. 09 C 6914, Slip Op. (N.D. Ill. July 11, 2012) (Kocoras, J.).

Judge Kocoras denied defendants’ Beissbarth GmbH (“Beissbarth”) and Robert Bosch, GmbH’s (“Bosch Germany”) (collectively “German Defendants”) Fed. R. Civ. P. 12(b)(6) motion to dismiss.  As an initial matter, the court denied plaintiff Snap-On’s argument that the motion was an improper Rule 12(b) motion pursuant to Rule 12(g)(2) because the German Defendants previously filed a Rule 12(b)(2) motion to dismiss for lack of personal jurisdiction.  The Court ordered limited jurisdictional discovery prior to deciding that motion.  That discovery had become “highly contested.”  The German Defendants sought and received the Court’s leave to file this Rule 12(b)(6) motion because were the motion granted, it would have removed the need for that discovery.  The Rule 12(b)(6) motion, therefore, was not filed for dilatory purposes and it promoted the policies behind Rule 12(g).

Of particular note, the Court held the following with respect to the Rule 12(b)(6) motion:

  • General allegations that all defendants directly infringed were sufficient.  Snap-On was not required to make separate infringement allegations as to each defendant by name.
  • Snap-On’s claim that the German Defendants used the product in Illinois was sufficient to plead direct infringement.
  • Snap-On was not estopped from pursuing inducement claims based upon Snap-On’s statements to the Court regarding claiming direct infringement against the German Defendants.  Those statements were about direct infringement as opposed to joint infringement claims, and had no bearing upon indirect infringement claims.
  • Snap-On’s allegations were sufficient to plead inducement.  Snap-On alleged the German Defendants worked with defendant Robert Bosch USA to develop, price, and market the accused products and that Snap-On sent Bosch a warning letter prior to the US introduction of the accused product.  Snap-On’s failure to use the words “induce” or “inducement” did not doom its claim because Snap-On still pled the elements of inducement.

Passive Website Written in Chinese Does Not Create Illinois Personal Jurisdiction

Posted in Jurisdiction

Labtest Int’l., Inc., d/b/a Intertek Consumer Goods N. Am. v. Centre Testing Int’l. Corp., No. 10C2897, Slip Op. (N.D. Ill. Feb. 1, 2011) (Dow, J.).

Judge Dow granted defendant CTI’s Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction in this copyright infringement action. The Court did not have jurisdiction over CTI:

  • CTI was a Chinese entity with no U.S. offices.
  • CTI’s only possible contact with Illinois regarding the copyrighted subject matter was via its passive website.
  • Plaintiff Intertek offered no proof that anyone from Illinois downloaded the allegedly infringing chart.
  • CTI’s only connection was work in China for an entity with a parent entity in Illinois.

The Court did not award Intertek its fees and costs for defending the case or the case filed by Intertek in Connecticut. Intertek had credible arguments for each, and it was not forum shopping even if the arguments were eventually proven wrong.

Infringement Claims Against Corporate Officers Require Active Participation

Posted in Pleading Requirements

Free Green Can, LLC v. Green Recycling Enters., LLC, No. 10 C 5764, Slip Op. (N.D. Ill. Jan. 28, 2011 (Coleman, J.).

Judge Coleman granted the individual defendants’ and Aslan Financial Group’s Fed. R. Civ. P. 12(b) motion to dismiss plaintiff Free Green Can’s trademark infringement and related state law claims. As an initial matter, the Court lacked subject matter jurisdiction as to all state law claims because while Free Green Can pled diversity of citizenship, it did not plead that the amount in controversy exceeded $75,000. Because Aslan Financial Group was only accused of state law claims, it was dismissed.

The federal trademark claims against the individual defendants were dismissed pursuant to Fed. R. Civ. P. 12(b)(6) because the individual defendants were accused of infringement based upon corporate acts of defendant Green Recycling Enterprises, of which each was an officer. But in order to state a claim for infringement, or any tort, by corporate officers or employees Free Green Can was required to allege each individual defendant had actively participated in the tortious acts. Because there were no such allegations, the infringement claims were dismissed.

Defendant Waived Personal Jurisdiction by Its Actions, If Not Its Filings

Posted in Jurisdiction

Salud Natural Entrepreneur, Inc. v. Nutricento Internacional, Inc., No. 09 C 4417, Slip Op. (N.D. Ill. Jan. 27, 2011) (Zagel, J.).

Judge Zagel denied defendant Azteca Products’ ("Azteca") Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction in this Lanham Act case. Azteca’s officer, a non-lawyer, purported to file an answer on Azteca’s behalf. Azteca then hired counsel who participated in Rule 26 scheduling conferences. Azteca’s officer then filed a Rule 12(b)(2) motion to dismiss without counsel, which the Court struck because it was not filed by counsel, and a corporate entity cannot act pro se. The Court then entered a default judgment and an injunction against Azteca. Azteca hired counsel and asked through counsel that the default be vacated. The Court vacated the judgment and agreed to consider whether Azteca’s personal jurisdiction arguments had been waived. Noting the "bizarre posture of the case, the Court held that Azteca had not preserved its jurisdiction arguments.

The answer did not waive Azteca’s arguments because as a pro se filing it was treated as never having been filed. But counsel did participate in Rule 26(f) conferences, although he filed no notice of appearance, and offered no suggestion that Azteca would challenge jurisdiction during that time. Furthermore, jurisdiction was challenged for the first time more than thirty days after the other defendants settled based upon discussions that Azteca did not participate in. Regardless of the legal impact of Azteca’s filings, by the time Azteca challenge jurisdiction, plaintiff had developed a "reasonable expectation" that Azteca would defend itself in Illinois.

Unrelated Sales Do Not Create Specific Jurisdiction

Posted in Jurisdiction

Merrill Primack v. Polto, Inc., No. 08 C 4539, Slip Op. (N.D. Ill. Jul. 8, 2010) (Dow, J.).

Judge Dow granted defendants’ Fed. R. Civ. P. 12(b)(2) motion to dismiss this Lanham Act case over plaintiff’s "Credit Lifeline" mark for lack of personal jurisdiction. Plaintiff did not claim general jurisdiction, relying only upon specific jurisdiction. Defendants’ only Illinois contacts were the sale of 212 books unrelated to the Credit Lifeline mark into Illinois. And defendants’ offer for sale of its Credit Lifeline book via an interactive website could not alone create specific jurisdiction. Similarly, injury to intellectual property alone did not create jurisdiction based upon the effects test. Harm to the plaintiff in the jurisdiction did not satisfy the test by itself. Defendant’s actions must have been intentional, aimed at the forum state and defendant had to know that plaintiff’s harm was likely to be suffered. But there was no indication that defendant was even aware of plaintiffs’ Credit Lifeline mark, or of plaintiff, from defendant’s first use of the mark in 2001 until, at the earliest, when plaintiff registered its mark in 2008.

Finally, the Court held that there was no persuasive reason that exercising personal jurisdiction would have comported with "fair play and substantial justice." 

Jurisdiction Over Declaratory Patent Claims Based Upon Location of Enforcement

Posted in Jurisdiction

Chicago Bd. Options Exchange Inc. v. Realtime Data, LLC d/b/a IXO, No. 09 C 4486, Slip. Op. (N.D. Ill. Jan. 8, 2009) (Lindberg, Sen. J.).

Judge Lindberg granted declaratory judgment for defendant Realtime’s Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction. The parties agreed that the Court lacked general jurisdiction and focused their arguments on specific jurisdiction. Because plaintiff Chicago Board Options Exchange ("CBOE") brought declaratory judgment claims, the analysis focused upon whether Realtime’s patent enforcement activities were directed at the jurisdiction. CBOE argued that specific jurisdiction was created by Realtime’s Texas patent infringement suit against, among others, Chicago-based defendants, including eventually CBOE. But the Court held that Realtime’s Texas action alone did not create specific jurisdiction, and the Court did not consider the Texas suit against CBOE because CBOE was not added to the Texas action until after the instant suit was filed.

De Minimis Sales Do Not Create Specific Jurisdiction

Posted in Jurisdiction

Guiness World Records Ltd. v. John Doe, d/b/a World Records Academy, No. 09 C 2812, Slip Op. (N.D. Ill. Oct. 20, 2009) (Shadur, Sen. J.)

Judge Shadur granted defendant World Records Academy’s (Academy”) Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction in this trademark dispute regarding plaintiff’s GUINESS WORLD RECORD and WORLD RECORD trademarks. Academy’s website alone did not create specific jurisdiction because it did not allow users to purchase Academy’s products, it only told them how to buy the products. Academy did have limited sales into Illinois – three sales to two customers – and sent form email solicitations to world record holders from Illinois. And the Court held that Academy’s emails and de minimis sales could not create jurisdiction, either general or specific. The Court reasoned that if de minimis sales created jurisdiction, alleged intellectual property infringers could be hailed into almost any jurisdiction nationwide.

Owner Can Be Personally Liable for Corporate Trademark Infringement

Posted in Jurisdiction

More Cupcakes, LLC v. Lovemore LLC, No. 09 C 3555, Slip. Op. (N.D. Ill. Sep. 29, 2009) (Kocoras, J.)

Judge Kocoras denied defendants (collectively “Lovemore”) Fed. R. Cir. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction and Fed. R. Cir. P.12(b)(6) motion to dismiss the individual Lovemore defendants’ (collectively "Lovemore individuals") based upon the fiduciary shield doctrine in this Lanham Act dispute regarding plaintiff More Cupcake’s LOVE MORE mark for use on t-shirts. The Court did, however, grant Lovemore’s §1404 motion to transfer the case to the Eastern District of New York.

The parties agreed that the Court lacked general jurisdiction and argued only specific jurisdiction. The Court held that it had specific jurisdiction based upon the effects test. Lovemore’s alleged infringing acts were aimed at More Cupcakes in Illinois when Lovemore approved sales of allegedly infringing t-shirts to Illinois addresses after being warned of the alleged infringement in a Patent & Trademark Office proceeding and in settlement talks with More Cupcakes. Lovemore’s interactive website coupled with sales to Illinois also created specific jurisdiction. The fact that Lovemore’s most recent Illinois sale was to More Cupcakes’ counsel did not impact the analysis. Lovemore still knowingly sold product within Illinois. 

The fiduciary shield doctrine did not apply to the individual defendants, who were both owners and operators of Lovemore. The fiduciary shield doctrine denies personal jurisdiction over individuals who contact Illinois solely for the benefit of their employees and not themselves. But the doctrine does not apply to owners of a company that have discretion over whether or not they do business in Illinois. As Lovemore owners, therefore, the Lovemore individuals are not protected by the fiduciary shield doctrine.

For similar reasons, while corporate officers are generally not personally liable for corporate trademark infringement claims, More Cupcakes’ claims against the Lovemore individuals survived. Both individuals were owners of Lovemore and the Complaint alleged that they personally directed the allegedly infringing acts.

Finally, the Court transferred the case to the Eastern District of New York.  While More Cupcakes’ chosen forum deserves deference, the material events regarding the alleged infringement all occurred in New York where the t-shirts were designed, made, offered for sale and sold. And the Court held that the convenience factors, such as locations of documents and witnesses, were all neutral.

Nondisclosure Arbitration Clause Does Not Include Patent Infringement Claims

Posted in Jurisdiction

The Ticketreserve, Inc. v. Viagogo, Inc., No. 08 C 502, Slip Op. (N.D. Ill. Aug. 11, 2009) (Kendall, J.).

Judge Kendall denied defendants’ Fed. R. Civ. P. 12(b)(3) motion in limine for improper venue and granted defendant Viagogo, Inc.’s (“Viagogo”) Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction. Defendants agreed that venue was improper based on an arbitration clause in a nondisclosure agreement the parties requested when they explored a joint venture. Defendants agreed that the patented technology was disclosed pursuant to the nondisclosure agreement.

But because plaintiff’s international patent on the same technology as the U.S. patent, issued before the nondisclosure agreement the patent infringement claim was expressly excluded from the nondisclosure agreement and its arbitration claims.

The Court then dismissed Viagogo for lack of personal jurisdiction. Viagogo had no contract with Illinois to create personal jurisdiction. And while the viagogo.com interactive website likely created specific jurisdiction for its owner, the evidence suggested that Viagogo Ltd., which did not contest personal jurisdiction owned and operated the website, not Viagogo, Inc.

Request for Jurisdictional Discovery Does Not Overcome Lack of Evidence

Posted in Jurisdiction

Poparic v. Lincoln Square Video, No. 08 C 3491, Slip Op. (N.D. Ill. Jun. 25, 2009) (Kocoras, J.).

Judge Kocoras granted defendant Taste of Europe’s Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction.  Plaintiff alleged that Taste of Europe sold a single copy of plaintiff’s copyrighted movie in its Indiana store and argued only that the Court had general jurisdiction over Taste of Europe, without addressing specific jurisdiction.  Taste of Europe presented evidence that it was an Indiana-based business that did not advertise in Illinois or conduct any business in or with Illinois.  Plaintiff did not present any evidence of Taste of Europe’s Illinois connections, but sought jurisdictional discovery.  The Court, however, found that it lacked personal jurisdiction, holding that jurisdictional discovery was not appropriate where plaintiff had identified no evidence showing Illinois connections to overcome Taste of Europe’s proofs.

Single Visit to Jurisdiction Before Notice of a Trademark Does Not Create Jurisdiction

Posted in Jurisdiction

Merrill Primack v. Pearl B. Polto, Inc., No. 08 C 4539, Slip Op. (N.D. Ill. Jul. 8, 2009) (Dow, J.).

Judge Dow granted the Polto defendants’ (collectively "Polto") Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction in this Lanham Act dispute regarding plaintiff’s "Credit Lifeline" mark.  Plaintiff alleged only specific jurisdiction, not general jurisdiction.  Plaintiff’s evidence of specific jurisdiction was based upon the following facts: 1) Polto’s 2006 trip to Chicago to put on a Credit Lifeline seminar; and 2) Polto’s interactive website.  Polto, however, had not been aware of plaintiff’s trademark during the 2006 trip.  Plaintiff did not file for its trademark until 2008.  So, when Polto made its 2006 trip there was no evidence of notice of plaintiff’s mark.  Furthermore, no one attended Polto’s 2006 Chicago seminar and Polto returned to Philadelphia immediately after leaving the seminar site.  Finally, the Court held that Polto’s interactive website by itself could not confer specific jurisdiction.

Website Not Sufficient to Create Personal Jurisdiction

Posted in Jurisdiction

Richter v. INSTAR Enterprises Int’l, Inc., No. 08 C 50026, Slip Op. (N.D. Ill. Jan. 23, 2009) (Kapala, J.).

Judge Kapala granted defendant INSTAR’s Fed. R. Civ. P. 12(b)(2) motion to dismiss plaintiff’s copyright infringement claims for lack of personal jurisdiction. INSTAR did not have sufficient contacts with Illinois for general jurisdiction. INSTAR did not maintain offices or otherwise regularly do business in Illinois. Its contacts with Illinois were: 1) its interactive website; and 2) INSTAR’s customer’s resale of its products within Illinois. Additionally, INSTAR produced undisputed evidence that less than .1% of its business came from Illinois and that none of the accused products were sold directly into Illinois.

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Personal Service Creates Jurisdiction Over Individuals, Not Corporations

Posted in Jurisdiction

C.S.B. Commodities, Inc. v. Urban Trend (HK) Ltd., No. 08 C 1548, Slip Op. (N.D. Ill. Jan. 7, 2009) (Dow, J.).

Judge Dow granted corporate defendant Urban Trend’s (“Urban Trend”) and denied the individual defendant’s respective Fed. R. Civ. P. 12(b)(2) motions to dismiss plaintiff’s Lanham Act unfair competition and related state law claims for lack of personal jurisdiction. Plaintiff served the individual defendant, who was Urban Trend’s president, while he was representing Urban Trend at a trade show in Illinois. The Court held that personal service created jurisdiction over the individual defendant, even though the Court may not have had jurisdiction but for personal service. And while the individual defendant was in Illinois as part of his job responsibilities representing Urban Trend at the trade show, the Fiduciary Shield Doctrine did not protect him. As Urban Trend’s president, the individual defendant would have gained independent economic benefit from selling Urban Trend’s products at the trade show. And as president, the individual defendant had at least some control over whether to sell or promote products in Illinois.

The Court, however, held that personal service upon Urban Trend’s president was not sufficient to create jurisdiction over Urban Trend. And tradeshow attendance alone was not sufficient to create specific jurisdiction over Urban Trend. There was no evidence that Urban Trend’s tradeshow efforts were particularly focused on Illinois sales, or that Urban Trend completed any sales.

Trade Show Presentations Do Not Create Jurisdiction Without Price Terms

Posted in Jurisdiction

Compliance Software Sol’ns. Corp. v. MODA Tech. Partners, Inc., No. 07 C 6752, 2008 WL 2960711 (N.D. Ill. Jul. 31, 2008) (Manning, J.)

Judge Manning granted defendants’ (collectively “MODA”) Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction. MODA was a Pennsylvania resident, as were its employees. Its alleged Illinois contacts were: 1) attendance at an Illinois trade show, Pittcon, where it demonstrated its software – software that allegedly infringed plaintiff CSSC’s patent and copyright covering CSSC’s environmental monitoring software; and 2) signing a contract with an Illinois choice of law provision.

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Using a Trademark in Telemarketing is a Use in Commerce

Posted in Jurisdiction

Medline Indus., Inc. v. Strategic Comm. Sol’ns., No. 07 C 2783, __ F. Supp.2d __, 2008 WL 2091141 (N.D. Ill. May 5, 2008) (Castillo, J.).

Judge Castillo dismissed some defendants for lack of personal jurisdiction (the wrong defendants) and denied defendant Strategic Commercial Solutions (“SCS”). Fed. R. Civ. P. 12(b)(6) motion to dismiss. Plaintiff Medline alleged that defendants violated its trademark and related federal and state laws by selling “Medline Savings” packages with telemarketers.

Personal Jurisdiction

The Court did not have personal jurisdiction over the Wong defendants. The Wong defendants, all individuals, did not direct any of their allegedly infringing and fraudulent calls to Illinois residents. Their only contacts with Illinois were calls to and from Illinois banks regarding processing payments and refunds. These secondary contacts were not sufficient to create personal jurisdiction.

SCS similarly did not have sufficient contacts with Illinois. But Fed. R. Civ. P. 4(K)(2) provided for national, and therefore, there was personal jurisdiction in Illinois because SCS argued it was not subject to jurisdiction in any U.S. state or territory.

Telemarketing and Consumer Fraud and Abuse Act

SCS argued that Medline could not bring its Telemarketing and Consumer Fraud and Abuse Act claim because it was not a “private person” that was “adversely affected” by the telemarketing as required by the Act. But the Court held that while Medline was not an aggrieved consumer, the alleged unfair use of Medline’s trademarks could have caused Medline the harm it alleged.

Trademark Infringement

The Court noted that it was not aware of a similar case in which a party was accused of trademark infringement for using marks in telemarketing. But SCS’s alleged use of Medline’s marks was a use in commerce.

Prior Illinois Contacts do Not Create Jurisdiction

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Hyperquest, Inc. v. Nugen I.T., Inc. and Dayle Phillips, No. 08 C 0485, Slip OP. (N.D. Ill. Jun. 18, 2008) (Norgle, J.)

Judge Norgle dismissed plaintiff’s copyright infringement case for lack of personal jurisdiction, pursuant to Fed. R. Civ. P. 12(b)(2). The Court agreed with plaintiff that the alleged injury was suffered in Illinois because plaintiff was an Illinois resident. But that was not enough to create personal jurisdiction. Plaintiff identified no supported facts showing that defendants intended to impinge upon an Illinois interest or otherwise purposely availed themselves of Illinois.

And the individual defendants’ contract with plaintiff in Illinois did not create personal jurisdiction either. All of the individual defendants’ contracts occurred before the corporate defendant was incorporated. And after incorporation, the defendants did no business in Illinois or with Illinois residents. Defendants did maintain a website, but plaintiff’s evidence regarding the website was insufficient.

No Nationwide Service for Lanham Act

Posted in Jurisdiction

Digisound-WIE, Inc. v. BeStar Techs., Inc., No. 07 C 6535, 2008 WL 2095605 (N.D. Ill. May 16, 2008) (Lindberg, Sen. J.).

Judge Lindberg granted individual defendants Mr. and Ms. Greiling’s Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction. Both Greilings were German citizens and residents. Mr. Greiling was previously Managing Director of plaintiff’s parent company, but no longer held that role. First, the Court held that the Greilings were not amenable to Fed. R. Civ. P. 4(k)(2) nationwide service of process because the Lanham Act, which created federal question jurisdiction in this trade secret misappropriation case, did not provide for nationwide service, as some acts do. As a result, the Greilings’ general contacts with the United States were irrelevant. The issue was whether the Greilings had sufficient minimum contacts with Illinois for specific jurisdiction.

The Court did not have specific jurisdiction over Ms. Greiling because she had no contacts with Illinois. She had never been to or conducted business in Illinois and she had no other attachments to Illinois.

Mr. Greiling was a closer question, but the Court held that it lacked specific jurisdiction over him as well. Mr. Greiling was formerly Managing Director of plaintiff’s parent entity, and plaintiff was an Illinois entity. But Mr. Greiling was no longer employed by plaintiff’s parent. And plaintiff provided no facts indicating that Mr. Greiling had any contacts with Illinois during the time relevant to the case.

The Court also denied plaintiff’s request for jurisdictional discovery. Plaintiff had not made a prima facie case for personal jurisdiction and jurisdictional discovery was not appropriate without the prima facie showing of jurisdiction.

Jursidictional Effects Test Doctrine Still Requires Some Connection to the Forum

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Medallion Products, Inc. v. H.C.T.V., Inc., No. 06 C 2597, 2007 WL 3085913 (N.D. Ill. Oct. 18, 2007) (Darrah, J.).

Judge Darrah dismissed defendant Broadcast Arts Group (“BAG”) for lack of personal jurisdiction, but held that the Court had personal jurisdiction over defendant ICC, Woodridge Specialty Products Corp. and an individual defendant (collectively “ICC Defendants”). Plaintiffs argued that BAG’s tortious acts against plaintiffs, all Illinois residents, created personal jurisdiction based upon the effects test doctrine. But the Court held that the alleged tortious acts against were not sufficient for jurisdiction because BAG was a Florida resident and all of its allegedly tortious acts were performed in Florida or Pennsylvania, at the request of non-Illinois residents. 

The alleged tortious acts of the ICC Defendants, however, did create personal jurisdiction pursuant to the effects test doctrine. The ICC Defendants allegedly entered an agreement to develop, market and sell a counterfeit pet-stain removal product that was packaged in bottles using plaintiff’s “Urine Gone” logo. The alleged acts and resulting injury would have occurred in Illinois.

The Court also held that plaintiffs met the Fed. R. Civ. P. 8 pleading standards as clarified in Atlantic Corp. v. Twombly, ____ U.S. ____, 127 S. Ct. 1955 (2007). So, the Court denied defendant’s motion to dismiss plaintiffs’ state law claims.

Chicago Focused Website Creates Personal Jurisdiction

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Chicago Architecture Foundation v. Domain Magic LLC, No. 07 C 764, Slip Op. (N.D.Ill. October 12, 2007) (Norgle, J.).

Judge Norgle denied defendant’s Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction. Although defendant was a Florida corporation, defendant’s website – www.chicagoarchitecturefoundation.com – played upon plaintiff Chicago Architecture Foundation’s (“CAF”) name and only included links to other Chicago businesses. The Court, therefore, held that defendant’s website targeted the Northern District creating general personal jurisdiction.

Additionally, as a Fed. R. Civ. P. 37 sanction for failing to answer interrogatory responses as the Court ordered, the Court held that defendant generated revenue from the use of CAF’s trademark. 

Practice tip: Answer discovery requests on time and, if you cannot for some reason, at least answer them by the Court ordered deadline. 

Defendant Gets Fees Because Plaintiff Knew Court Lacked Jurisdiction

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Canadian Thermal Windows, Inc. v. Magic Window Co., No. 07 C 1784, 2007 WL 2481295 (N.D. Ill. Aug. 27, 2007) (Moran, Sen. J.).

Judge Moran granted defendant’s Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction. Defendant’s business is focused on southeastern Michigan. Defendant’s only connections to Illinois were a passive website, which cannot create jurisdiction, and purchases of certain supplies which were wholly unrelated to defendant’s alleged infringing activities. The Court, therefore, held that it lacked personal jurisdiction. In addition, the Court awarded defendant its attorneys fees and costs for moving to transfer or dismiss the case because plaintiff knew that defendant’s business was localized in southeastern Michigan without any ties to Illinois based on the parties’ ongoing business relationship.