Harley-Davidson Motor Co. v. Strada

78 F.R.D. 521, 207 U.S.P.Q. (BNA) 937, 1978 U.S. Dist. LEXIS 18173
CourtDistrict Court, E.D. Wisconsin
DecidedApril 25, 1978
DocketNo. 77-C-135
StatusPublished
Cited by7 cases

This text of 78 F.R.D. 521 (Harley-Davidson Motor Co. v. Strada) is published on Counsel Stack Legal Research, covering District Court, E.D. Wisconsin primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Harley-Davidson Motor Co. v. Strada, 78 F.R.D. 521, 207 U.S.P.Q. (BNA) 937, 1978 U.S. Dist. LEXIS 18173 (E.D. Wis. 1978).

Opinion

MEMORANDUM AND ORDER

WARREN, District Judge.

On March 4, 1977, the plaintiff commenced this civil action to have the defendants design patent declared invalid. On October 4, 1977, an amended complaint was filed naming R & M Engineering as an additional party defendant.

Prior to the commencement of this action, on September 15, 1976, the defendant Charles Strada had notified the plaintiff by letter that he would bring an action for patent infringement against the plaintiff if it did not discontinue the manufacture and sale of motorcycle exhaust pipes. On February 25, 1977, defendant Strada commenced an action for patent infringement and unfair competition in the United States District Court for the Northern District of Illinois against AMF, Inc., plaintiff’s parent corporation. The complaint in the Illinois action was amended on April 4, 1977 to include Harley-Davidson Motor Co. as a co-defendant.

The defendants have moved that service be quashed and that the action be dismissed for improper service, lack of personal jurisdiction and improper venue or, in the alternative, that this action be stayed pending the determination of the Illinois action or transferred and consolidated with the pending case, in the Northern District of Illinois.

PERSONAL JURISDICTION

Rules 4(d)(7) and 4(e) of the Federal Rules of Civil Procedure provide that state law determines questions of personal jurisdiction. The relevant Wisconsin Statute, Wis.Stat. § 801.05, provides in part:

801.05 Personal Jurisdiction, ground for generally
A court of this state having jurisdiction of the subject matter has jurisdiction over a person served in an action pursuant to s. 801.11 under any of the following circumstances:
(1) Local presence of status. In any action whether arising within or without this state, against a defendant who when the action is commenced:
* M * * * *
[523]*523(d) Is engaged in substantial and not isolated activities within this state, whether such activities are wholly interstate, intrastate, or otherwise.

The Court’s initial task is to determine whether or not the defendants had substantial and not isolated contacts with the state of Wisconsin. If the long-arm statute, Wis. Stats. § 801.05(l)(d) is found to consequently reach these defendants, the Court must additionally determine whether the exercise of jurisdiction in this case is consistent with or barred by due process considerations.

The burden is on plaintiff to show that the defendant had the requisite contacts with the state. It is error to place on defendants the burden of showing the non-applicability of the long-arm statute. Afram v. Balfour Machine, Inc., 63 Wis.2d 702, 218 N.W.2d 288 (1974).

The Wisconsin Supreme Court has identified five factors which must be considered in deciding whether contacts are substantial and not isolated such that grounds for personal jurisdiction exist under the general provisions of § 801.05(l)(d): (1) the quantity of the contacts, (2) the nature and quality of the contacts, (3) the source and connection of the cause of action with the contacts, (4) the interests of the State of Wisconsin, and (5) the convenience of the parties. Nagel v. Crain Cutter Co., 50 Wis.2d 638, 648, 184 N.W.2d 876 (1970). See, also, Modern Cycle Sales, Inc. v. Burkhardt-Larsen Co., 395 F.Supp. 587 (E.D.Wis. 1975).

Plaintiff argues that defendants have sufficient contacts with Wisconsin to permit this Court to exercise personal jurisdiction over the defendants. These alleged contacts include local sales of products designed or distributed by defendants along with the letter of defendant’s counsel to plaintiff threatening the institution of a patent infringement action. The Court will examine this issue separately with respect to each defendant.

In response to plaintiff’s interrogatory number 8, defendants state that defendant R & M Engineering has sold and delivered products to eight retailers in Wisconsin. Defendant R & M Engineering has been involved in some forty-nine sales transactions in Wisconsin from 1974 through 1977 (Defendants’ supplemental answer to interrogatory number 13). R & M Engineering’s sales within this state have totaled over $1,100 in each of those four years. (Defendants’ supplemental answer to interrogatory number 26). Furthermore, defendant R & M Engineering has delivered catalogues of its products to some Wisconsin retailers. (Defendants’ answers to interrogatory numbers 9, 49).

With respect to the quantity of the contacts, even a single contact is sufficient to sustain jurisdiction where that contact is a contract to be performed by a foreign corporation in Wisconsin and where the cause of action arose out of that contract. Flambeau v. Plastics Corp. v. King Bee Mfg. Co., 24 Wis.2d 459, 129 N.W.2d 237 (1964).

In this case, defendant R & M Engineering’s contacts with Wisconsin involve numerous sales transactions. This Court finds that the quality and quantity of thesé contacts are significant and not isolated.

With respect to the third requirement, it is not clear whether or not the cause of action arose out of defendant’s contacts with Wisconsin.

The fourth factor to be considered is the interest of the State of Wisconsin. Wisconsin, like all states, has an interest in providing a forum for its residents. It is not necessary that the state have any special interest in this action; it is sufficient that the defendant has engaged in a course of conduct with the Wisconsin plaintiff. Modern Cycle Sales, Inc. v. Burkhardt-Larsen Co., supra.

The fifth factor concerns the convenience of the parties. These last two factors essentially relate to considerations of reasonableness and fairness. In light of the defendant’s contacts with Wisconsin, it is fair to require the defendant to defend this action in Wisconsin.

[524]*524Thus, applying the Nagel analysis to the circumstances of this case, the Court finds that defendant R & M Engineering’s contacts with the State of Wisconsin are substantial and not isolated, and are therefore sufficient to bring the defendant within the scope of Wis.Stat. § 801.05(l)(d).

Defendant Strada alleges the Court lacks personal jurisdiction over him. Defendant Strada is the inventor and owner of the patent in issue.

In his answers to plaintiff’s interrogatories, defendant Strada 'states that he personally does not manufacture, sell or market products and has no contacts with the State of Wisconsin. (Defendants’ answers to interrogatories nos. 4-9). There is no indication of any alleged control of R & M Engineering by defendant Strada.

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Cite This Page — Counsel Stack

Bluebook (online)
78 F.R.D. 521, 207 U.S.P.Q. (BNA) 937, 1978 U.S. Dist. LEXIS 18173, Counsel Stack Legal Research, https://law.counselstack.com/opinion/harley-davidson-motor-co-v-strada-wied-1978.