finding that the defendant's submission of eighty orders by phone and mail to the plaintiff evidenced a "commercial relationship" but did not form the basis of plaintiff's trademark infringement claims and could not, therefore, support personal jurisdictionSummary of this case from Barton Southern Company v. Manhole Barrier Systems
Case No. 02-80454-CIV-MIDDLEBROOKS
January 29, 2003
ORDER DENYING DEFENDANT'S MOTION TO DISMISS AND DEFENDANT'S MOTION TO TRANSFER AND GRANTING PLAINTIFF'S MOTION FOR LEAVE TO FILE
THIS CAUSE comes before the Court upon Defendant David Thompson d/b/a Truckin' Little Company ("Thompson")'s Motion to Dismiss, or in the Alternative, Motion to Transfer (DE #7-1, 7-2), filed on July 10, 2002. The motion has been fully briefed and is ripe for resolution. After consideration of the record and the parties' submissions, it is the Court's determination that Defendant's motions should be denied.
In their response to the Defendant's Motion to Strike Portions to the Declarations of Phillip Shaffer, the Plaintiffs also moved for leave to file the affidavits of Pamela Newton and James Russell (DE #20). That Motion will also be granted by this Order.
BackgroundPlaintiff is a Florida corporation engaging in the business of manufacturing and selling 1:64 scale miniature die-cast tractor and trailer models. The Defendant individually is a resident of Wisconsin. In addition, the principal place of business of the Defendant's company is in Wisconsin. Plaintiff markets its products to other companies who then offer the products as promotional items.
According to the Plaintiff, between January 1997 and March 2002, the Defendant placed orders for Plaintiff's replicas by telephone and mailing purchase orders to the Plaintiff in Florida. Plaintiff states that in all, Defendant placed approximately 80 orders through the Plaintiff, amounting to approximately 6300 model trucks for a total of approximately $173,634.00. In addition, in September 1998, the Plaintiff purchased a single truck from the Defendant, which was shipped to the Plaintiff in Florida. The Defendant also sells trucks through an interactive website at http://www.truckinlittle.com.
Some time before the Defendant's Motion was filed, Plaintiff and Prime Inc. ("Prime"), a Missouri trucking company, entered into discussions for the sale of model trucks to Prime. Although the Plaintiff states that it had never previously sold any models to Prime, Prime had somehow obtained a model in the Plaintiffs packaging containing a combination of components from one of Plaintiff's models with those of one of the Plaintiff's competitors. In addition, the Plaintiff states that the model had been shoddily packaged. Prime notified the Plaintiff that the model had been shipped to Prime from Defendant. The Plaintiff then bought the model from Prime, and the entire package was then shipped, as received, to the Plaintiff. The Plaintiff now alleges that the Defendant combined the Plaintiff's model with another and then placed the hybrid model into the Plaintiff's "distinctive" packaging, thereby leading Prime to believe that the model was one of Plaintiff's products. Plaintiff's Complaint alleges misrepresentation of origin and federal unfair competition, federal dilution, state law injury to business representation and trademark dilution, common law trademark infringement, and common law unfair competition. Defendant then brought its Motion, arguing that Defendant's scant contacts with the State of Florida do not subject Defendant to personal jurisdiction in this forum.
Standard of Review
When considering whether a plaintiff has established a prima facie case of personal jurisdiction over a nonresident defendant, the court "must accept the facts alleged in the complaint as true, to the extent that they are uncontroverted by the defendant's affidavits. Where the parties' affidavit and deposition evidence conflict, the district court must construe all reasonable inference in favor of the plaintiff." Cable/Home Communication Corp. v. Network Productions, 902 F.2d 829, 855 (11th Cir, 1990). When a defendant files a motion to dismiss for lack of personal jurisdiction pursuant to FED. R. Civ. P. 12(b)(2), and supports that motion with affidavits, the plaintiff is required to controvert those affidavits with his own affidavits or other competent evidence in order to survive the motion. See e.g. Time Share Vacation Club v. Atlantic Resorts, Ltd., 735 F.2d 61, 63 (3d Cir. 1984).
Although the Plaintiffs assert violations of the Lanham Act, 15 U.S.C. § 1501 et seq., and diversity jurisdiction under 28 U.S.C. § 1332 as the bases for federal jurisdiction, this Court must still determine whether it has personal jurisdiction over the Defendant. If subject matter jurisdiction is based on a federal question and the federal statute at issue is silent regarding service of process, Rule 4(e) of the Federal Rules of Civil Procedure directs courts to look to the forum's long-arm statute to determine the existence of personal jurisdiction. See Sculptchair, Inc. v. Centuty Arts Ltd., 94 F.3d 626-27 (11th Cir. 1996). The Lanham Act does not authorize nationwide service of process. See, e.g. Wells Fargo Co. v. Wells Fargo Express Co., 556 F.2d 406. 418) (9th Cir. 1977). Accordingly, this Court must evaluate whether personal jurisdiction exists over the defendants.
Federal courts use a two part analysis to determine whether personal jurisdiction exists over a nonresident defendant. JB Oxford Holdings, Inc. v. Net Trade, Inc., 76 F. Supp.2d 1363, 1365 (S.D. Fla. 1999) (quoting Cable/Home Communication Corp. v. Network Prod., 902 F.2d 829, 855 (11th Cir. 1990)). First, there must be a jurisdictional basis under the state's long arm statute. Id. Second, the court must determine whether the defendant has sufficient "minimum contacts" with the forum state such that "maintenance of the suit does not offend traditional notions of fair play and substantial justice." Id. (quoting International Shoe Co. v. Washington, 326 U.S. 310, 316, 66 S.Ct. 154 (1945)).
1. Jurisdiction under Florida's long-arm statute
Florida law states:
(1) Any person, whether or not a citizen or resident of this state, who personally or through and agent does any of the acts enumerated in this subsection thereby submits himself or herself, and, if he or she is a natural person, his or her personal representative to the jurisdiction of the courts of this state for any cause of action from the doing of any of the following acts: . . .
(b) Committing a tortious act within this state.
FLA. STAT. ANN. § 48.193(1)(b). In accord with the doctrine established in Erie R.R. Co. v. Tompkins, 304 U.S. 64, 58 S.Ct. 817 (1938), federal courts must construe a state's long-arm statute as would the state's supreme court. See Lockard v. Equifax, Inc., 163 F.3d 1259, 1265 (11th Cir. 1998). Florida's lower courts are divided over the meaning of subsection (1)(b) of section 48.193, and the Florida Supreme Court has not yet resolved the conflict. See e.g. Wendt v. Horowitz, 822 So.2d 1252, 1253 n. 2 (Fla. 2002) (referring to, but not resolving, "confusion" among the State's district courts). in the absence of a clear state law standard on this issue, the normal course is for this Court to discern how the Florida Supreme Court would rule. See JB Oxford Holdings, 76 F. Supp.2d at 1366. The Eleventh Circuit, which is subject to the same Erie requirements as this Court, has interpreted the long-arm statute to mean that a defendant who commits a tort that causes injury in Florida is subject to personal jurisdiction under subsection (1)(b) no matter where the act that caused the injury was actually completed. Id.
Hartoy claims that Thompson committed both trademark and trade dress infringement. Injury from such acts will be deemed to have occurred in the state in which the trademark holder resides. See Panavision Int'l v. Toeppen, 141 F.3d 1316, 1322 n. 2 (9th Cir. 1998). Because Hartoy is a Florida corporation, with its principal place of business in Florida, any injury suffered by Hartoy will be suffered in Florida. Accordingly, subsection (1)(b) of Florida's long-arm statute is satisfied.
2. Minimum Contacts
Even though a nonresident defendant may be within the enumerated circumstances of Florida's long-arm statute, jurisdiction is not established automatically. See Venetian Salami Co. v. Parthenais, 554 So.2d 499, 502 (Fla. 1989). The defendant's contacts with the forum must then be analyzed to determine whether the exercise of jurisdiction would satisfy due process. See id. The Eleventh Circuit has established a three-part test to determine if the minimum contacts requirement is met:
First, the contacts must be related to the plaintiff's cause of action . . . Second, the contacts must involve some act by which the defendant purposefully avails itself of the privilege of conducting activities within the forum. Third, the defendant's contacts with the forum must be such that the defendant should reasonably anticipate being haled into court there.Posner v. Essex Ins. Co., Ltd., 178 F.3d 1209, 1214 n. 6 (11th Cir. 1999). In sum, the defendant must have "purposefully directed" its activities at residents of the forum state. See Burger King Corp. v. Rudzewicz, 471 U.S. 462, 473-74, 105 S.Ct. 2174 (1985).
Hartoy alleges that Thompson's contact with the State of Florida consist of the following:
1. Submitting as many as eighty orders by phone and by mail (totaling 6300 trucks) to Hartoy in Florida between January 1997 and March 2002, and using the goods bought for Thompson's pecuniary benefit;
2. Maintaining an interactive web site accessible to Florida residents; and
3. Defendant's continued advertising in "Toy Trucker and Contractor," a national trade magazine.
Though the relationship between the two parties in this matter was clearly "commercial," the mere sales to Thompson in Wisconsin are not sufficient to allow this Court jurisdiction over the matter. Purchases taken alone (even if they arise at regular intervals) are an insufficient basis for exercise of personal jurisdiction over a nonresident defendant where the cause of action does not arise out of those purchases. See Helicopteros Nacionales de Colombia, S.A., 466 U.S. 408, 418, 104 S.Ct. 1868 (1984); Structural Panels, Inc. v. Tex. Aluminum Indus., Inc., 814 F. Supp. 1058, 1067 (M.D. Fla. 1993). Thompson's alleged trademark and trade dress infringement are do not stem directly from the contractual relationship between the two parties. In addition, Hartoy does not suggest that Thompson possesses any licensure in Florida, any business offices in Florida. agents in Florida, sales efforts in Florida, or any other attempts to direct its business to the State of Florida. As such, the relationship between the two parties alone is not sufficient to establish this Court's jurisdiction.
In addition, the Plaintiff's suggestion that jurisdiction should be asserted based on the Defendant's advertising in a trade publication that reached a Florida readership also fails. Although, according to Hartoy, Thompson has regularly advertised in "Toy Trucker and Contractor" since 1996, Hartoy gives no indication that Thompson's advertising is specifically directed at Florida. In DeSantis, the court found the defendant's advertising on two or three occasions in a national publication insufficient for the exercise of jurisdiction. Although Thompson's advertising in "Toy Trucker and Contractor" may have been far more consistent over a longer period of time, jurisdiction in this matter is defeated based on the publication's national reach. The DeSantis court reasoned that a finding of jurisdiction based on advertising in a national magazine "would potentially subject [a defendant] to [the forum state's] jurisdiction whenever it advertises nationally." DeSantis, 949 F. Supp. at 426. The Court continued that
the placement of a national advertisement, even if repeated, does not constitute a `persistent course of conduct.' As construed, that requirement means `[a]t a minimum, . . . that defendant maintained some sort of ongoing interaction with the forum state.'Id. (quoting Willis v. Semmes, Bowen Semmes, 441 F. Supp. 1235, 1242 (E.D. Va. 1977). As such, the advertisements in the trade publication do not subject Thompson to jurisdiction in Florida.
However, the Plaintiff's argument that Thompson's Internet contacts are sufficient to establish the minimum contacts necessary to establish jurisdiction have merit. While the wide reach of Internet sites naturally complicates issues of personal jurisdiction, "`[c]yberspace' . . . is not some mystical incantation capable of warding off the jurisdiction of courts built from bricks and mortar." Gorman v. Ameritrade Holding Corp., 293 F.3d 506, 510 (D.C. Cir. 2002). In identifying a "sliding scale" for defining when electronic contacts with a state are sufficient to subject a nonresident defendant to a state's jurisdiction, the Western District of Pennsylvania stated that:
At one end of the spectrum are situations where a defendant clearly does business over the Internet. If the defendant enters into contracts with residents of a foreign jurisdiction that involve the knowing and repeated transmission of computer files over the internet, personal jurisdiction is proper. At the opposite end are situations where a defendant has simply posted information on an internet web site which is accessible to users in foreign jurisdictions. A passive web site that does little more than make information available to those who are interested in it is not grounds for the exercise of personal jurisdiction . . . [jurisdiction is established in the remaining situations] by examining the level of interactivity and commercial nature of the exchange of information that occurs on the Web site.Zippo Mfg. Co. v. Zippo Dot Com, Inc., 952 F. Supp. 1119, 1124 (W.D.Pa. 1997). A number of courts of appeals have either adopted or followed the standard established in Zippo Mfg. Co., focusing on the distinction between "passive" and "active" websites. See e.g. Gorman, 293 F.3d at 512 (finding that a website that allowed users to open brokerage accounts, transmit funds to the accounts, use accounts to buy and sell securities, to borrow on margin, and to pay brokerage commissions and interest was not "passive"); ALS Scan, Inc. v. Digital Service Consultants, Inc., 293 F.3d 707, 714 (4th Cir. 2002) (finding that "passive" activity does not generally include "directing electronic activity into the State with the manifested intent of engaging business or other interactions in the State thus creating in a person within the State a potential cause of action congnizable in courts located in the State"); Mink v. AAAA Development, LLC, 190 F.3d 333, 336-37 (5th Cir. 1999) (finding that a website that provided users with a printable mail-in order form, a toll-free telephone number, a mailing address and an email address but did not take any actual orders constituted no more than "passive advertisement"); Soma Medical Int'l v. Standard Chartered Bank, 196 F.3d 1292, 1297 (10th Cir. 1999) (finding a website that "offer[ed] information" about a company's services and "solicit[ed] business from `all over the planet'" was passive). See also Cybersell, Inc. v. Cybersell, Inc., 130 F.3d 414, 419 (9th Cir. 1997) (adopting Zippo's reasoning that the common thread in cases involving Internet jurisdiction is that "the likelihood that personal jurisdiction can be constitutionally exercised is directly proportionate to the nature and quality of commercial activity that an entity conducts over the internet").
The Defendant's own explanation of its Internet contacts conflicts somewhat. His affidavit states that "Truckin Little does not now, nor has it ever, conducted business, advertised, or shipped any of its products into the State of Florida." David Thompson Aff. ¶ 9. However, according to the Defendant's Answers to the Plaintiff's First Set of Interrogatories, there were five orders from the Defendant's website from Florida residents between February 12, 2001, and November 3, 2001, totaling $325. Any such dispute should be tilted in favor of the Plaintiff. While the parties have not submitted evidence as to the design or character of the Defendant's website, the fact that the website allowed the placement of orders means that the site could not have only presented passive advertisement. Such invitation to commercial transaction, combined with the fact that Florida residents actually availed themselves of the opportunity to purchase is sufficient to subject Thompson to jurisdiction in this forum.
B. Motion to Transfer
The Defendant has also moved to transfer this matter to the District of Wisconsin. Under the doctrine of forum non conveniens, a district court has inherent power to decline to exercise jurisdiction over a case when an adequate, alternative forum is available. See La Seguridad v. Transytur Line, 707 F.2d 1304, 1307 (11th Cir. 1983). After considering whether an alternative forum exists, the court must consider all relevant factors in favor of private interest, weighing in the balance a strong presumption against disturbing a plaintiff's initial forum choice. Then the court must determine whether factors of public interest tip in favor of a transfer. Finally, the court must ensure that the plaintiffs can reinstate the suit in an alternative forum without prejudice. See id. (citing Pain v. United Technologies Corp., 637 F.2d 775, 784-85 (D.C. Cir. 1980), cert denied 454 U.S. 1128, 102 S.Ct. 980 (1981)). Given the parties' contacts with Florida, and deferring to the Plaintiff's choice of forum, it is the Court's determination that a transfer of this matter would not be proper.
Accordingly, it is
ORDERED AND ADJUDGED that the Defendant's Motion to Dismiss (DE #7-1) is hereby DENIED. It is further
ORDERED AND ADJUDGED that the Defendant's Motion to Transfer (DE #7-2) is hereby DENIED. It is further
ORDERED AND ADJUDGED that the Plaintiff's Motion for Leave to File the Affidavits of Pamela Newton and James Russell (DE #20) is hereby GRANTED.
DONE AND ORDERED in Chambers in West Palm Beach, Florida.