Mountain Marketing Group, LLC v. Heimerl & Lammers, LLC

9 F. Supp. 3d 895, 2014 U.S. Dist. LEXIS 40797, 2014 WL 1276468
CourtDistrict Court, W.D. Wisconsin
DecidedMarch 27, 2014
DocketNo. 14-cv-33-bbc
StatusPublished

This text of 9 F. Supp. 3d 895 (Mountain Marketing Group, LLC v. Heimerl & Lammers, LLC) is published on Counsel Stack Legal Research, covering District Court, W.D. Wisconsin primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Mountain Marketing Group, LLC v. Heimerl & Lammers, LLC, 9 F. Supp. 3d 895, 2014 U.S. Dist. LEXIS 40797, 2014 WL 1276468 (W.D. Wis. 2014).

Opinion

OPINION AND ORDER

BARBARA B. CRABB, District Judge.

Plaintiff Mountain Marketing Group, LLC is suing defendant Heimerl & Lam-mers, LLC for using the telephone number “612-INJURED” and the domain name “612INJURED.com.” Plaintiff says that defendant’s telephone number and domain name violate various federal and state intellectual property laws because they are too similar to plaintiffs marks for “1-800-INJURED” and “1-888-IN-JURED.”

Defendant has filed a motion to dismiss for lack of personal jurisdiction and improper venue. In the alternative, defendant asks the court to transfer the case to Minnesota, where its office and employees are located. Dkt. # 10. Defendant has a strong argument that an exercise of personal jurisdiction would not be appropriate in Wisconsin in the context of this case, but even if I assume that jurisdiction is present, I agree with defendant that the case should be transferred to Minnesota because that district is clearly more convenient.

OPINION

In its motion, defendant says that it is a five-lawyer firm located in Minneapolis, Minnesota. It has no offices in Wisconsin and does not take cases in Wisconsin courts. None of its lawyers are admitted to practice law in Wisconsin in state or federal court.

In support of an exercise of personal jurisdiction, plaintiff relies on the following evidence:

(1) one of defendant’s websites, www. tom-law.com, includes the statement, “We represent car accident victims throughout the Twin Cities and in western Wisconsin”;
(2) defendant admits that it has represented Wisconsin residents who have been involved in car accidents in Minnesota;
[897]*897(3) defendant’s website www.612injured. com may be accessed in Wisconsin;
(4) defendant includes the website www. 612injured.com on billboards in Minnesota;
(5) in a declaration, Charles Barkin, who identifies himself as plaintiffs “founder,” avers that one of plaintiffs licensees, Krueger Law Firm, is injured when defendant uses plaintiffs mark because Krueger “uses the licensed 1-800-INJURED trademark to advertise its legal services in Wisconsin via internet and television,” dkt. # 16.

It is questionable whether any of this evidence is sufficient to make out a prima facie showing that an exercise of jurisdiction over defendant is appropriate in Wisconsin in the context of this case. Purdue Research Foundation v. Sanofi-Synthelabo, S.A., 338 F.3d 773, 782 (7th Cir.2003) (“[W]hen the district court rules on a defendant’s motion to dismiss based on the submission of written materials, without the benefit of an evidentiary hearing, ... the plaintiff need only make out a prima facie case of personal jurisdiction.”) (internal quotations omitted). Under the due process clause, two requirements of personal jurisdiction are that “(1) the defendant must have purposefully availed himself of the privilege of conducting business in the forum state or' purposefully directed his activities at the state” and “(2) the alleged injury must have arisen from the defendant’s forum-related activities.” Felland v. Clifton, 682 F.3d 665, 673 (7th Cir.2012) (internal quotations and citations omitted). (Alternatively, the plaintiff could show that defendant has “continuous and systematic general business contacts,” Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 416, 104 S.Ct. 1868, 80 L.Ed.2d 404 (1984), but plaintiff does not argue that it can make that showing, so I do not consider that issue.)

Plaintiffs first two pieces of evidence (the statement from www.tom-law.com and defendant’s admission that it has represented Wisconsin residents) might satisfy the first requirement of purposeful availment because they could be viewed as solicitation of business from Wisconsin. Logan Products., Inc. v. Optibase, Inc., 103 F.3d 49, 52-53 (7th Cir.1996). However, plaintiff has not established a connection between those contacts and its alleged injury, which is the second requirement. Plaintiff alleges that the statement about representing clients from Wisconsin appears on the website www.tom-law.com, not the allegedly infringing website www. 612INJURED.com. Further, plaintiff does not cite any evidence to support a view that any of the Wisconsin clients contacted defendant through www.612INJURED. com or 612-INJURED.

The third and fourth pieces of evidence (the billboard and the website www.612 INJÚRED.com) seem to have the opposite problem: they are related to plaintiffs alleged injury but they do not involve conduct by defendant that is aimed at Wisconsin. It is undisputed that defendant’s billboard with “612-INJURED” on it is in Minnesota, not Wisconsin. Although it is possible that Wisconsin residents could have seen the billboard if they visited Minneapolis, defendant has no control over who decides to visit and it is well established that unilateral conduct by a third party is not enough to confer personal jurisdiction. Burger King Corp. v. Rudzewicz, 471 U.S. 462, 475, 105 S.Ct. 2174, 85 L.Ed.2d 528 (1985) (“This purposeful availment requirement ensures that a defendant will not be haled into a jurisdiction solely as a result of random, fortuitous, or attenuated contacts or of the unilateral activity of another party or a third person.”) (citations omitted).

[898]*898With respect to the www.612INJURED. com website, both this court and the Court of Appeals for the Seventh Circuit have held that a party may not be sued in a state simply because it has a website that may be accessed in the state. be2 LLC v. Ivanov, 642 F.3d 555, 558-59 (7th Cir.2011); Mobile Anesthesiologists Chicago, LLC v. Anesthesia Associates of Houston Metroplex, P.A., 623 F.3d 440, 444-46 (7th Cir.2010); Hy Cite Corp. v. Badbusiness-bureau.com, L.L.C., 297 F.Supp.2d 1154, 1159 (W.D.Wis.2004). If that were the rule, it would subject anyone with a public website to lawsuits virtually anywhere in the world. Instead, the plaintiff must show that the defendant “deliberately targeted or exploited” the relevant state’s market. be2 LLC, 642 F.3d at 559. Because plaintiff does not point to any evidence that defendant used 612IN-JURED.com to target Wisconsin business, the website cannot serve as the basis for suing defendant in Wisconsin.

Finally, Barkin alleges in an affidavit that one of plaintiffs licensees uses the “1-800-INJURED” mark in Wisconsin, but that adds nothing. To begin with, Barkin provides no foundation for his statement that its licensee uses the mark in Wisconsin. Particularly because the licensee’s website identifies the licensee as a Minnesota business, http://kruegerlawfirm.com/, plaintiff needed to be more specific.

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Related

Helicopteros Nacionales De Colombia, S. A. v. Hall
466 U.S. 408 (Supreme Court, 1984)
Burger King Corp. v. Rudzewicz
471 U.S. 462 (Supreme Court, 1985)
Be2 LLC v. Ivanov
642 F.3d 555 (Seventh Circuit, 2011)
Logan Productions, Inc. v. Optibase, Inc.
103 F.3d 49 (Seventh Circuit, 1996)
Robert Felland v. Patrick Clifton
682 F.3d 665 (Seventh Circuit, 2012)
HY Cite Corp. v. Badbusinessbureau.com, L.L.C.
297 F. Supp. 2d 1154 (W.D. Wisconsin, 2004)
Walden v. Fiore
134 S. Ct. 1115 (Supreme Court, 2014)

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Bluebook (online)
9 F. Supp. 3d 895, 2014 U.S. Dist. LEXIS 40797, 2014 WL 1276468, Counsel Stack Legal Research, https://law.counselstack.com/opinion/mountain-marketing-group-llc-v-heimerl-lammers-llc-wiwd-2014.