PFIP, LLC v. Planet Fitness Enter.

2004 DNH 159
CourtDistrict Court, D. New Hampshire
DecidedNovember 10, 2004
DocketCV-04-250-JD
StatusPublished
Cited by3 cases

This text of 2004 DNH 159 (PFIP, LLC v. Planet Fitness Enter.) is published on Counsel Stack Legal Research, covering District Court, D. New Hampshire primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
PFIP, LLC v. Planet Fitness Enter., 2004 DNH 159 (D.N.H. 2004).

Opinion

PFIP, LLC v. Planet Fitness Enter. CV-04-250-JD 11/10/04 UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW HAMPSHIRE

PFIP, LLC

v. Civil No. 04-250-JD Opinion No. 2004 DNH 159 Planet Fitness Enterprises, Inc., et al.

O R D E R

The plaintiff, PFIP, LLC, brings suit against Planet Fitness

Enterprises, Inc., its related corporations, and its president,

Rick Berks, alleging trademark infringement and unfair practices

under the Lanham Act, copyright infringement in violation of the

Copyright Act, common law trademark infringement, breach of

contract, unjust enrichment, and violation of New Hampshire's

Consumer Protection Act. The defendants move to dismiss the

claims for lack of personal jurisdiction and, alternatively, ask

that the case be transferred to the Southern District of Florida.

PFIP opposes the motion to dismiss.

Background

PFIP is a New Hampshire corporation that owns certain

"Planet Fitness" trademarks and copyrights. PFIP is affiliated

with Pla-Fit Franchise, LLC, that markets franchises for "PLANET

FITNESS" exercise centers, including centers in New Hampshire, Maine, and Florida. Planet Fitness Enterprises, Inc., ("PFE")

operates three fitness centers under the name "Planet Fitness,"

in southern Florida. Rick Berks is its president. PFE began

using the name "Planet Fitness" in 1993 under a registered

trademark, and PFIP began using the same name several years

later.

PFIP brought a cancellation proceeding against PFE to stop

its use of the name "Planet Fitness" but dropped the proceeding

when it learned of PFE's prior use of the name. PFIP then began

negotiations with Berks to resolve use of the name. Berks and

Michael Grondahl, the director of PFIP, discussed the matter by

telephone between New Hampshire and Florida. Berks's Florida

attorney reviewed the documents. Their negotiations led to an

agreement that was signed in April of 2002. Under the agreement,

PFIP purchased PFE's registered trademark for "Planet Fitness"

for $75,000 and granted PFE a license to use the trademark within

a specified area of southern Florida.

In May of 2002, Berks and Grondahl met in Florida to discuss

the possibility of PFIP purchasing PFE. Other officers of PFIP

met with Berks in Florida during August of 2002. Further

negotiations took place between PFIP and PFE and through their

respective counsel. The parties never reached a final agreement

on the sale of PFE to PFIP.

2 In early 2004, PFIP sent franchise information to Berks in

Florida, hoping to interest him in becoming a PFIP franchisee.

In response, Berks contacted Grondahl for more information.

Berks also talked with Grondahl about a possible joint purchase

of a health club in Pompano Beach, Florida. PFIP sent Berks more

information and samples of PFIP marketing materials.

In February or March of 2004, Berks called Grondahl to ask

about beginning a marketing program for FPE in Florida. Grondahl

agreed to help Berks set up a corporate membership drive and gave

him contact information for the software vendor in Connecticut

that PFIP used. Grondahl also gave Berks other marketing

information and advice. Berks contends that Grondahl told him

that it did not matter if he used the PFIP logo and material in

the PFE marketing materials. Berks asked to have his clubs

identified on the PFIP web site and then told the web master that

Grondahl had agreed to add the PFE clubs to the PFIP web site.

In April of 2004, Berks contacted Spectrum Monthly &

Printing, Inc., in Manchester, New Hampshire, to inguire about

printing 90,000 pieces for direct mail advertising. Spectrum had

done printing for PFIP for several years, and the co-president of

Spectrum, Richard Pease, recognized the content and layout of

Berks's pieces as being the same as those used by PFIP. Pease

believed that Berks was authorized by PFIP to use that content

3 and layout. Berks sent the advertising materials to

approximately 90,000 addresses in southern Florida. PFIP alleges

that the defendants infringed its copyrights and trademarks by

using PFIP logos and trademarks in the advertising materials.

Berks states in his affidavit that he has never been to New

Hampshire. The defendants represent, through Berks's affidavit,

that all of their records and witnesses are in southern Florida.

PFIP, through Grondahl's affidavit, states that all of its

records and its witnesses are located in New Hampshire.

Standard of Review

The plaintiff bears the burden of establishing personal

jurisdiction. Jet Wine & Spirits v. Bacardi & Co., 298 F.3d 1, 7

(1st Cir. 2003). When jurisdictional issues are raised in a

motion to dismiss pursuant to Federal Rule of Civil Procedure

12(b)(2), without a hearing, the plaintiff may establish personal

jurisdiction by making a prima facie showing of jurisdiction over

the defendants.1 Daynard v. Ness, Motley, Loadholt, Richardson &

Poole, P .A . , 290 F.3d 42, 51 (1st Cir. 2002) . The court

" 'accept[s] the plaintiff's (properly documented) evidentiary

1Neither PFIP nor the defendants reguested a hearing, and both have proceeded under the prima facie standard, augmenting their filings with affidavits and other evidence.

4 proffers as true for the purpose of determining the adequacy of

the prima facie jurisdictional showing.'" Id. (quoting Foster-

Miller v. Babcock & Wilcox Canada, 46 F.3d 138, 145 (1st Cir.

1995)). Those facts are taken as true and in the light most

favorable to jurisdiction, whether or not they are disputed by

the defendants. Id. The facts proffered by the defendants are

also considered, but only to the extent they are not disputed by

the plaintiff's properly documented facts.2 Id.

Discussion

PFIP alleges both federal and state claims and asserts that

subject matter jurisdiction exists pursuant to 15 U.S.C. § 1121

and 28 U.S.C. § 1338, along with supplemental jurisdiction

pursuant to 28 U.S.C. § 1367.3 The personal jurisdiction

analysis in federal question cases differs from the analysis in

diversity cases, at least initially, because the constitutional

limits are provided by the Fifth, rather than the Fourteenth,

Amendment. See United States v. Swiss Am. Bank, Ltd., 274 F.3d

610, 618 (1st Cir. 2001). The Fifth Amendment requires only that

2The court considers the defendants' initial motion and its subsequent motion filed in response to PFIP's amended complaint, and PFIP's objections to both motions.

3PFIP alleges "pendant jurisdiction" which has been replaced by supplemental jurisdiction under § 1367.

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