Milwaukee Concrete Studios v. Fjeld Mfg. Co., 91-C-880.

• Decision Date: 20 December 1991
• Docket Number: No. 91-C-880.,91-C-880.
• Court: U.S. District Court — Eastern District of Wisconsin
• Parties: MILWAUKEE CONCRETE STUDIOS, LTD., Plaintiff, v. FJELD MANUFACTURING CO., INC. and Janice Krueger, Defendants.

782 F. Supp. 1314

MILWAUKEE CONCRETE STUDIOS, LTD., Plaintiff, v. FJELD MANUFACTURING CO., INC. and Janice Krueger, Defendants.

No. 91-C-880.

United States District Court, E.D. Wisconsin.

December 20, 1991.

Pattishall, McAuliffe, Newbury, Hilliard & Geraldson by Craig S. Fochler, Chicago, Ill., Robert D. Silver, Park Ridge, Ill., Paul R. Puerner, Milwaukee, Wis., for plaintiff.

Robins, Kaplan, Miller & Ciresi by Alan M. Anderson, Minneapolis, Minn., for defendants.

DECISION AND ORDER

MYRON L. GORDON, Senior District Judge.

On August 14, 1991, Milwaukee Concrete Studios, Ltd., instituted the above-captioned action alleging copyright infringement under the Copyright Act of 1976, 17 U.S.C. § 101 et seq. The defendants, Fjeld Manufacturing Co. and Janice Krueger, have filed a motion to dismiss the action for improper venue, pursuant to Rule 12(b)(3), Federal Rules of Civil Procedure. The motion will be granted.

I.

Milwaukee Concrete Studios, of Oak Creek, Wisconsin, is engaged in the business of creating, manufacturing, and selling concrete statuary for architectural landscaping use. Its products are distributed throughout the country by garden centers, retail outlets, and its own factory outlet. Fjeld Manufacturing, a small business consisting of six employees, is located in Minot, North Dakota. It is incorporated in the state of North Dakota and is engaged in the business of, among other things, selling ornamental concrete products at the wholesale and retail level. It operates under the direction of Ms. Krueger, a citizen of North Dakota.

In its "verified" complaint, Milwaukee Concrete Studios alleges that its product line "features a large number of original products" and that it owns more than 150 copyright registrations for its designs. Included in the product line is a set of eight designs comprising, among other things, birdbaths, fountains, and planters; collectively, Milwaukee Concrete Studios calls these designs the "Oakwood Family Series."

The complaint alleges that Ms. Krueger, on behalf of Fjeld Manufacturing, attended a trade show in Chicago during the winter of 1987-88 at which time she visited an exhibit booth operated by Milwaukee Concrete Studios and its president, James Malkowski. According to the complaint, Ms. Krueger showed particular interest in the "Oakwood Squirrel Birdbath" and discussed the commercial success of that item with Mr. Malkowski. An exhibit to the complaint discloses that on January 3, 1986, Milwaukee Concrete Studios acquired a certificate of copyright registration (No. VA 211 215) for that birdbath, as a "sculpture."

The complaint alleges that in 1990 Ms. Krueger travelled to Winnipeg, Canada, where she purchased (for Fjeld Manufacturing) a birdbath that "simulates the original design of" the "Oakwood Squirrel Birdbath" sold by Milwaukee Concrete Studios. It also alleges that Ms. Krueger was aware that the birdbath purchased in Canada was an unauthorized copy and that her importation of the item (on behalf of Fjeld Manufacturing) constitutes willful copyright infringement.

In addition, the complaint charges that Ms. Krueger contacted Steve Hrkal of Greeley Ornamental Concrete Products, the second largest manufacturer of concrete statuary in Wisconsin, to determine whether it would be interested in making a mold of her birdbath. It is alleged that Ms. Krueger (on behalf of Fjeld Manufacturing) subsequently delivered her birdbath to Greeley Ornamental Concrete Products, who created a mold from which it manufactured over 500 infringing birdbaths. The plaintiff claims that these birdbaths were sold and delivered throughout Wisconsin.

Milwaukee Concrete Studios, who has filed a separate action against Greeley Ornamental Concrete Products (Case No. 91-C-351 (E.D.Wis. complaint filed April 10, 1991)), charges that Ms. Krueger and Fjeld Manufacturing have committed contributory copyright infringement.

II.

In its complaint, Milwaukee Concrete Studios states that "venue is proper based upon 28 U.S.C. § 1400(a) expressly relating to the copyright law of the United States." Complaint at 2, ¶ 6. The effect of the defendants' motion to dismiss is to call upon Milwaukee Concrete Studios to support its assertion that venue is proper. In this respect, Milwaukee Concrete Studios makes much of the fact that it has filed a "verified" complaint — one executed on behalf of Milwaukee Concrete Studios by its president, James Malkowski, under penalty of perjury, see 28 U.S.C. § 1746.

Insofar as it contends that 28 U.S.C. § 1400(a) is the governing venue statute, Milwaukee Concrete Studios is entirely correct. That section provides as follows:

Civil actions, suits, or proceedings arising under any Act of Congress relating to copyrights ... may be instituted in the district in which the defendant or his agent resides or may be found.

28 U.S.C. § 1400(a) (emphasis added). As all claims in this action arise under the Copyright Act of 1976, there is no question that the propriety of Milwaukee Concrete Studios' choice of venue must be determined under 28 U.S.C. § 1400(a).

However, examining the record in light of the requirements of 28 U.S.C. § 1400(a), the court without difficulty finds that neither Ms. Krueger or Fjeld Manufacturing, her small business of six employees, "reside" in the Eastern District of Wisconsin, which comprises some 28 counties in roughly the eastern one-third of the state. It is undisputed that both defendants "reside" in Minot, North Dakota. Fjeld Manufacturing's state of incorporation is North Dakota, and its principal place of business is Minot, North Dakota. Furthermore, Milwaukee Concrete Studios has not identified any agents of either defendant (although it might be said that one defendant — Ms. Krueger — is an agent of the other — Fjeld Manufacturing). Therefore, venue is proper only if it can be shown that either Fjeld Manufacturing or Ms. Krueger "may be found" in the district.

In support of its allegation of venue, Milwaukee Concrete Studios suggests that under 28 U.S.C. § 1400(a) a party "may be found" wherever it is "amenable to personal jurisdiction," citing AED Research & Services Corp. v. International Equipment Exchange Ltd., 223 U.S.P.Q. 457 (N.D.Ill.1983). It then asserts that the defendants are "amenable to personal jurisdiction" in this forum under the Wisconsin "long-arm" statute, Wis.Stat. § 801.05(3) (1990), by virtue of their contacts with Greeley Ornamental Concrete Products, a concern located in Ellsworth, Wisconsin. Under such an interpretation, venue is proper under 28 U.S.C. § 1400(a) because the defendants are amenable to personal jurisdiction in Wisconsin.

However, I disagree with Milwaukee Concrete Studios' interpretation of 28 U.S.C. § 1400(a) because it confounds the distinction between the words "district" and "state." It is true that the phrase "may be found" has been construed to mean "amenable to personal jurisdiction" under the applicable section of the state long-arm statute. See Kogan v. Longstreet, 374 F.Supp. 47, 50 (N.D.Ill.1974) (Bauer, J.). However, the "amenability to personal jurisdiction" must relate to the district in which the action has been commenced. See 28 U.S.C. § 1400(a) (identifying the relevant forum as "the district" and not "the state"); see also Kogan, 374 F.Supp. at 50-52 (examining the defendants' contacts with the district). Thus, in this action, to the extent that the Wisconsin long-arm statute applies, the word "state" as it there appears must be substituted with the word "district" in order to preserve the plain meaning of 28 U.S.C. § 1400(a).

For purposes of identifying the applicable provision of the Wisconsin long-arm statute, the court has viewed copyright infringement as a tort — a tortious interference with a property right, see Stone Decor Division of JAS International, Inc. v. Stylex Worldwide Industries, Ltd., 767 F.Supp. 181, 183 (N.D.Ill.1991). See also Video Views, Inc. v. Studio 21 Ltd., 925 F.2d 1010, 1013 (7th Cir.) (Gordon, J.), cert. denied, ___ U.S. ___, 112 S.Ct. 181, 116 L.Ed.2d 143 (1991); Leo Feist, Inc. v. Young, 138 F.2d 972, 975 (7th Cir.1943). When the tortious act of copyright infringement is alleged, one of two sections of the Wisconsin long-arm statute may apply, depending upon the whether the alleged act of infringement occurred within or without the proposed forum. See Wis. Stat. § 801.05(3) (identifying a "local act" as a basis for personal jurisdiction); Wis. Stat. § 801.05(4) (identifying the circumstances under which a "foreign act" would provide the basis for personal jurisdiction).

Under Wis.Stat. § 801.05(3), the section cited by Milwaukee Concrete Studios, a defendant would be subject to personal jurisdiction under the following circumstances:

Local act or omission. In any action claiming injury to person or property within or without this state arising out of an act or omission within this state by the defendant.

To demonstrate that the defendants are amenable to personal jurisdiction in this district under Wis.Stat. § 801.05(3) and thus "may be found" here for purposes of 28 U.S.C. § 1400(a), Milwaukee Concrete Studios must establish that the defendants committed a "local act or omission" — one within the Eastern District of Wisconsin.

The alleged tortious "act" complained of by Milwaukee Concrete Studios is Ms. Krueger's delivery (on behalf of Fjeld Manufacturing) of the allegedly infringing birdbath to Greeley Ornamental Concrete Products. In its responsive memorandum, Milwaukee Concrete Studios flatly states that Greeley Ornamental Concrete Products is "located in this District." Memorandum in Response to Motion to Dismiss at 3. In fact, throughout its responsive memorandum, Milwaukee Concrete Studios labors under a misapprehension that Greeley Ornamental Concrete Products is located in Milwaukee. See, e.g., Memorandum in Response to Motion to Dismiss at 10. An examination of a Wisconsin map discloses that Milwaukee Concrete Studios is...