Mor-Dall Enterprises, Inc. v. Dark Horse Distillery, LLC

16 F. Supp. 3d 874, 2014 WL 1463906, 2014 U.S. Dist. LEXIS 51721
CourtDistrict Court, W.D. Michigan
DecidedApril 15, 2014
DocketNo. 1:13-cv-915
StatusPublished
Cited by10 cases

This text of 16 F. Supp. 3d 874 (Mor-Dall Enterprises, Inc. v. Dark Horse Distillery, LLC) is published on Counsel Stack Legal Research, covering District Court, W.D. Michigan primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Mor-Dall Enterprises, Inc. v. Dark Horse Distillery, LLC, 16 F. Supp. 3d 874, 2014 WL 1463906, 2014 U.S. Dist. LEXIS 51721 (W.D. Mich. 2014).

Opinion

OPINION

ROBERT HOLMES BELL, District Judge.

This is an action for trademark infringement and unfair competition brought under the Lanham Act, 15 U.S.C. § 1051 et seq., the Michigan Consumer Protection Act, Mich. Comp. Laws § 445.903, and Michigan common law. Defendant has filed a motion to dismiss, (Dkt. No. 9), under Fed.R.Civ.P. 12(b)(2) for lack of personal jurisdiction. Plaintiff has filed a response (Dkt. No. 13) to which Defendant has filed a reply (Dkt. No. 14). Given the completeness of the record and arguments presented, the Court holds oral argument is unnecessary for the disposition of the [876]*876motion. See W.D. Mich. LCivR 7.2(d); see also Himes v. United States, 645 F.3d 771, 784 (6th Cir.2011).

Two questions are before the Court. First, whether Defendant has a sufficiently interactive website such that exercise of personal jurisdiction comports with Due Process under the Zippo sliding-scale. Second, whether the effects of Defendant’s allegedly tortious conduct were directed toward and felt in Michigan. Because the Court answers these questions in the affirmative, Defendant’s motion will be denied.

I.

Plaintiff is a brewer of craft beers headquartered in Marshall, Michigan. (Compl., Dkt. No. 1 ¶ 1.) Defendant produces “hand-crafted, small-batch spirits” and is located in Kansas. (Def.’s Br., Dkt. No. 10 at 5.) Plaintiff does business as “Dark Horse Brewing Co.” (Compl., Dkt. No. 1 at 1.) Plaintiff began using the marks DARK HORSE and DARK HORSE BREWING COMPANY in interstate commerce in connection with its beer in or about 1997. (Pl.’s Resp., Dkt. No. 13 at 7.)

Defendant chose the names DARK HORSE and DARK HORSE DISTILLERY in 2010. (Def.’s Br., Dkt. No. 10 at 6.) Defendant filed “Intent to Use” applications with the United States Patent and Trademark Office (USPTO) for the marks DARK HORSE and DARK HORSE DISTILLERY in 2010. (Compl., Dkt. No. 1 ¶ 13.) Around this same time, Defendant learned of Plaintiffs brewery and name through an Internet search conducted by its counsel. (Pl.’s Resp., Dkt. No. 13 at 9.) Plaintiff became aware of Defendant’s allegedly infringing marks in 2011 when it filed its own applications with the USPTO. (Id.) Plaintiff filed a Notice of Opposition in May 2013, which it is presently prosecuting (Id.)

According to Plaintiff, after the Opposition Proceeding, “Defendant did not curb its infringing activities.” (Id. at 9.) Plaintiff initiated the present suit in August 2013. (Id.) “[T]he limitations of the [Trademark Office’s] jurisdiction” left Plaintiff with no choice but to litigate “when confronted with the reality of Defendant’s continuing and expanding infringement.”

II.

When sitting in federal question jurisdiction, a court may exercise personal jurisdiction over a defendant “ ‘if the defendant is amenable to service of process under the [forum] state’s long-arm statute and if the exercise of personal jurisdiction would not deny the defendant ] due process.’ ” Bird v. Parsons, 289 F.3d 865, 871 (6th Cir.2002) (quoting Mich. Coalition of Radioactive Material Users, Inc. v. Griepentrog, 954 F.2d 1174, 1176 (6th Cir.1992)). Although Michigan’s long-arm statute is “coextensive” with due process, the jurisdictional analysis requires inquiry into both factors because the statute “enumerates specific instances where jurisdiction may be exercised.” Miller v. AXA Winterthur Ins. Co., 694 F.3d 675, 679 n. 1 (6th Cir.2012) (citing Green v. Wilson, 455 Mich. 342, 565 N.W.2d 813, 816 (1997)).

In the context of a Rule 12(b)(2) motion, the plaintiff bears the burden of establishing the existence of personal jurisdiction. Air Prods. & Controls, Inc. v. Safetech Intern., Inc., 503 F.3d 544, 549 (6th Cir.2007). When such a motion is decided without an evidentiary hearing, the plaintiff “need only make a prima facie showing of jurisdiction.” Neogen Corp. v. Neo Gen Screening, Inc., 282 F.3d 883, 887 (6th Cir.2002) (internal citation omitted). The evidence before the court must be viewed “in a light most favorable to the nonmoving party.” Id.

[877]*877Plaintiff argues that personal jurisdiction is proper because “Defendant operates an interactive website that solicits Michigan residents to order and purchase goods and services.” (PL’s Resp., Dkt. No. 13 at 13.) Plaintiff also argues that “Defendant has purposefully directed an injury toward Michigan by infringing [Plaintiffs] trademarks with knowledge that [Plaintiff] resides in [Michigan].” (Id.) Defendant argues that its website is passive (Def.’s Br., Dkt. No. 10 at 13), and that any tortious conduct it committed was not deliberate and not aimed at Michigan. (Id. at 17-18.)

A. Due Process

Due process concerns are governed by the standard articulated in International Shoe and expounded by its progeny: ensuring a defendant has “certain minimum contacts with [the forum state] such that maintenance of the suit does not offend ‘traditional notions of fair play and substantial justice.’ ” Int’l Shoe Co. v. Wash., 326 U.S. 310, 316, 66 S.Ct. 154, 90 L.Ed. 95 (1945) (quoting Milliken v. Meyer, 311 U.S. 457, 463, 61 S.Ct. 339, 85 L.Ed. 278 (1940)).

In addition to the “minimum contacts” analysis required by International Shoe, the question of due process in the context of establishing specific personal jurisdiction turns on whether “the defendant’s conduct and connection with the forum State are such that [the defendant] should reasonably anticipate being haled into court there.” World-Wide Volkswagen v. Woodson, 444 U.S. 286, 297, 100 S.Ct. 559, 62 L.Ed.2d 490 (1980). The Sixth Circuit has formulated a three-prong test to evaluate whether exercising specific personal jurisdiction satisfies due process:

First, the defendant must purposefully avail himself of the privilege of acting in the forum state or causing a consequence in the forum state. Second, the cause of action must arise from the defendant’s activities there. Finally, the acts of the defendant or consequences caused by the defendant must have a substantial enough connection with the forum state to make the exercise of jurisdiction over the defendant reasonable.

Southern Mach. Co. v. Mohasco Indus., Inc., 401 F.2d 374, 381 (6th Cir.1968).

1. Purposeful availment

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16 F. Supp. 3d 874, 2014 WL 1463906, 2014 U.S. Dist. LEXIS 51721, Counsel Stack Legal Research, https://law.counselstack.com/opinion/mor-dall-enterprises-inc-v-dark-horse-distillery-llc-miwd-2014.