Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

Modern Trade Comms., Inc. v. PSMJ Resources, Inc., No. 10 C 5380, Slip Op. (N.D. Ill. Aug. 19, 2011) (Pallmeyer, J.).

Judge Pallmeyer granted defendants PSMJ Resources' ("PSMJ") and Oser Communications' ("Oser") motion to dismiss for lack of personal jurisdiction in this Lanham Act case involving plaintiff Modern Trade Communications' ("MTC") rights in its Metal Construction News mark for a metal industry trade publication. At the Metalcon tradeshow in 2010, Oser distributed a daily publication entitled Metal Daily News at PSMJ's direction. MTC alleged that the Metal Daily News title infringed its Metal Construction News mark, which MTC used to publish an official show guide at the same conference. 

PSMJ was a Massachusetts company without offices or personnel in Illinois. It approximated that 3% of its revenue at the 2009 Metalcon show in Florida was from Illinois residents. PSMJ's website was not interactive. PSMJ did produce six training seminars unrelated to Metalcon in Illinois. PSMJ's small revenues from Illinois residents did not create general jurisdiction. While related to Metalcon, PSMJ's contract with a third party in Illinois did not create specific jurisdiction. And PSMJ's production of the 2002 Metalcon in Illinois did not create specific jurisdiction because the accused Metal Daily News was only distributed at the 2010 Metalcon in Las Vegas. The Court, therefore, had neither general nor specific jurisdiction over PSMJ.

Oser was an Arizona company without offices or personnel in Illinois, although Oser did distribute publications at two to three trade shows per year in Chicago. Oser's website was passive, except that the 2010 Metal Daily News was available on the site for downloading. Attendance at two to three trade shows each year in Chicago did not create the systematic contacts necessary for general jurisdiction. Oser's website was not sufficient to create specific jurisdiction. MTC made no allegation that the website was targeted at Illinois, and the availability of the publication as a free download was not sufficient either. And MTC did not allege how Oser's alleged infringement in Las Vegas was tied to Oser's Illinois activities. Furthermore, the sale of an advertisement in the Metal Daily News to an Illinois resident, even combined with the website allegations, was not sufficient to create specific jurisdiction.

The Court also denied MTC's motion to amend because it did not allege any new facts that might create personal jurisdiction.

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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." 

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Alta Mere Indus., Inc. v. DBC Window Tinting, Inc., No. 10 C 266, Slip Op. (N.D. Ill. May 6, 2010) (Darrah, J.).

Judge Darrah granted defendant Impact's Fed. R. Civ. 12(b)(2) motion to dismiss plaintiff Alta Mere's Lanham Act claims regarding its marks related to automotive window tinting and alarm systems. Impact operated a local Texas business and had no other identified Illinois contacts. Alta Mere argued that the Court had specific jurisdiction over Impact because of Impact's interactions with other defendants who were Alta Mere franchisees, as well as two letters allegedly sent to Impact warning that a franchise agreement governing defendant Cader's use of the Alta Mere marks were governed by Illinois law.

The Court considered jurisdiction over each defendant separately and, therefore, did not consider the other defendants' Illinois contacts in analyzing jurisdiction over Impact. Impact alleged that it never received Alta Mere's letters. But even if Impact had received them, correspondence sent to a defendant outside the forum could not alone create jurisdiction. The letters were "random, fortuitous, or attenuated contacts."

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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.

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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.

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Occidental Hoteles Mgt., S.L. v. Hargrave Group, LLC, No. 08 C 2165, Slip Op. (N.D. Ill. Jul. 24, 2009) (Gottschall, J.)

Judge Gottschall held that the Court lacked personal jurisdiction over plaintiff’s trademark claims related to defendant’s use of the sites in a suit which allegedly incorporates plaintiff’s marks, to tell the alleged story of plaintiff’s alleged negligence.  Defendant did not maintain offices or employees in Illinois and did not maintain an agent for service in Illinois. In fact, defendant’s only Illinois connection was the listing on a website of defendant’s of a martial arts instructor in Illinois. The fact that defendant also maintained interactive websites could not create general jurisdiction pursuant to Zippo. Interactive websites alone can at most create specific jurisdiction. The Court also lacked specific jurisdiction. The websites in suit were not interactive, and the only site with an Illinois connection, the marital arts site, was not in the suit.

While a Court generally cannot transfer a cure pursuant to § 1409(a) without first having jurisdiction and venue, courts can do so in the interests of justice. In this case, the Court held that justice required a transfer to the Northern District of Oklahoma. Both parties alternatively sought transfer and the case had already been in the Northern District of Illinois for fifteen months.

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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.

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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.

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UTStarcom, Inc. v. Starent Networks, Corp., No. 07 C 2582, Slip Op. (N.D. Ill. Mar. 25, 2009) (Lindberg, Sen. J.).

Judge Lindberg denied the individual defendant's Fed. R. Civ P. 12(b)(2) motion to dismiss for lack of personal jurisdiction.  The individual defendant's four business trips to Illinois and prior work in California for plaintiff did not create general jurisdiction.  But the Court did have specific jurisdiction over the individual defendant.  Individual defendant was president of defendant Starent.  As president, he had authority over Starent's alleged pattern of hiring away plaintiff's employees and allegedly misappropriating plaintiff's trade secrets from those employees.  Because the alleged trade secret misappropriation harmed plaintiff's Illinois-based business in Illinois, the Court had general jurisdiction over Starent and its president, the individual defendant.

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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.

Similarly, the Court lacked specific jurisdiction. While plaintiff was allegedly harmed in Illinois, the effects doctrine was not satisfied because INSTAR was not charged with an intentional tort and INSTAR's unrefuted evidence showed that it did not intend to infringe plaintiff's copyrights. INSTAR's website did not create specific jurisdiction either. There was no evidence that INSTAR made any sales into Illinois from its website. And the only evidence of anyone from Illinois accessing the website was based upon plaintiff's representatives accessing the site. Finally, the entry of INSTAR's products into the stream of commerce did not create specific jurisdiction because there was no evidence that INSTAR knew or expected that the stream of commerce would take its products into Illinois.

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Judge Conlon denied defendants' (collectively “Wound Care Plus”) motion to dismiss plaintiff Wound Care Education Institute's (“WCEI”) trademark and copyright infringement case for lack of personal jurisdiction, improper venue and forum non conveniens. WCEI provided wound treatment education to health professionals across the country using copyrighted materials, and is largely based in the Northern District. It alleged that Wound Care Plus attended three of its seminars and then began running competing seminars, including at least one in Chicago, using course materials that were substantially similar to or exact copies of WCEI's copyrighted course materials. Wound Care Plus also operated a website which allowed its customers to register online for the Wound Care Plus seminars.

Personal Jurisdiction

The Court held that it had specific personal jurisdiction over Wound Care Plus, a New York resident, because it advertised its Chicago seminars in national publications seeking to register Illinois customers. Additionally, Wound Care Plus's website created jurisdiction because it was an active, commercial website that allowed Wound Care Plus's customers to register for, among others, its Chicago seminar online.

Venue

Venue was proper in the Northern District, despite the fact that Wound Care Plus did not reside in Illinois because a substantial part of the events giving rise to WCEI's claims, the Chicago seminars, occurred within the Northern District.

Forum Non Conveniens

The Court noted that the motion should have been brought pursuant to 28 U.S.C. Section 1404(a), instead of the common law forum non conveniens.  Forum non conveniens was inapplicable to this case because the alternate forum was not abroad or a state court. 

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Morton Grove Pharms., Inc. v. Nat'l. Pediculosis Assoc., __ F. Supp.2d __, 2007 WL 4259422 (N.D. Ill. Nov. 30, 2007) (Bucklo, J.).

Judge Bucklo granted in part defendants Fed. R. Civ. P. 12(b)(2) motion to dismiss and denied defendants’ motion to transfer the case to the Eastern District of Michigan. Plaintiff manufactures a line of lotions and shampoo which are FDA-approved for treating lice and scabies.  Defendants are a Michigan non-profit group, Ecology Center, Inc., and related individuals (collectively the "Center"), as well as the National Pediculosis Association. The Center mailed two newsletters related to passage of Michigan legislation to approximately 19,000 addresses of which 44 were in Illinois.  99% of the Center's donors were from Michigan, with just .23% from Illinois (18 Illinois-based donors total).  The Center's strongest ties to Illinois consisted of two donations totaling $270,000 from an Illinois-based foundation and an interactive website which accepts donations, although none have come from Illinois.  The Court previously held that these contacts did not create general jurisdiction.* 

The Court held that the Center’s act of sending even the two newsletters with the allegedly misleading and defamatory statements created specific jurisdiction over the Center. But the Court held that there was not specific jurisdiction over individual defendant William Weil. Weil’s name appeared in the newsletter, but he submitted an affidavit stating that he did not participate in mailing the newsletter and had no knowledge that it was being sent to any Illinois residents.

The Court did not transfer the case to the Eastern District of Michigan because the Center did not show that Michigan was clearly more convenient than the Northern District. Each party’s witnesses were in their preferred jurisdiction – the plaintiff’s in Illinois and the Center’s in Michigan – and the interests of justice are served by keeping the case in the Northern District. While median times to trial in both districts were comparable, plaintiff’s related, pending case in the Northern District made the Northern District the correct court to hear the case, even though the Court had severed the related case from this one.

* For discussion of the Court’s previous personal jurisdiction decision in this case, click here.

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Gencor Pacific, Inc. v. Nature's Thyme, LLC, No. 07 C 167, 2007 WL 1225362 (N.D. Ill. Apr. 24, 2007) (Kocoras, J.).

Judge Kocoras granted defendants' Fed. R. Civ. P. 12(b)(2)&(3) motion to dismiss for lack of personal jurisdiction and venue and dismissed the case.  Plaintiff brought this Lanham Act false advertising and copyright infringement case alleging that defendants used portions of plaintiff's copyrighted studies regarding the efficacy of a weight-loss and appetite suppressant containing Caralluma Fimbriata extract.  Defendants, a business and two individuals employed by the business, were residents of New Jersey and had a single sale to an Illinois customer, valued at $300.  Defendants only other contacts with Illinois were an interactive website accessible in Illinois and the fact that one or two of defendants' general solicitations may have been sent to Illinois.  Defendants did not own property in Illinois and there was no proof that any defendants sent any of the allegedly infringing information to Illinois.  The Court held these contacts were not sufficient to create either general or specific jurisdiction.  The Court also held that venue was not proper in the Northern District of Illinois because defendants were not residents of Illinois and the acts at issue in the suit did not occur in the Northern District.

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