John Walker and Sons, Ltd. v. DeMert & Dougherty, Inc.

• Decision Date: 04 June 1987
• Docket Number: No. 86-1756,86-1756
• Citation: 3 USPQ.2d 1001,821 F.2d 399
• Parties: JOHN WALKER AND SONS, LTD., Plaintiff-Appellant, v. DeMERT & DOUGHERTY, INC., Collection 2000 International, Inc., Blasser Brothers, Inc., S.A., Joseph Blasser and Eduardo Blasser, Defendants-Appellees.
• Court: U.S. Court of Appeals — Seventh Circuit

Page 399

821 F.2d 399

3 U.S.P.Q.2d 1001

JOHN WALKER AND SONS, LTD., Plaintiff-Appellant, v. DeMERT & DOUGHERTY, INC., Collection 2000 International Inc., Blasser Brothers, Inc., S.A., Joseph Blasser and Eduardo Blasser, Defendants-Appellees.

No. 86-1756.

United States Court of Appeals, Seventh Circuit.

Argued Oct. 22, 1986.

Decided June 4, 1987.

David C. Hilliard, Pattishall, McAulliffe & Hofstetter, Chicago, Ill., for plaintiff-appellant.

Henry S. Kaplan, Dressler, Goldsmith, Shore, Sutker & Milnamow, Ltd., Chicago, Ill., for defendants-appellees.

Before COFFEY and RIPPLE, Circuit Judges, and ESCHBACH, Senior Circuit Judge.

COFFEY, Circuit Judge.

Plaintiff-appellant John Walker and Sons, Ltd. ("Walker") appeals the district court's grant of summary judgment in favor of defendant-appellee DeMert & Dougherty, Inc. ("DeMert") and also appeals the trial court's grant of a motion to dismiss in favor of Collection 2000 International, Inc., Blasser Brothers, Inc., S.A., Joseph Blasser, and Eduardo Blasser ("Florida defendants"). The trial court held that DeMert was not liable to Walker for trademark infringement under the Lanham Act, 15 U.S.C. Secs. 1051-1127, that Walker had failed to establish that an Illinois court could exert long-arm jurisdiction over the Florida defendants, and further that venue was not proper in the Northern District of Illinois as to Collection 2000 International, Inc., Blasser Brothers, Inc., S.A., Joseph Blasser, and Eduardo Blasser. We affirm in part, reverse and remand in part.

I

John Walker and Sons, Ltd. ("Walker") produces whiskey in Scotland and markets its product on a worldwide basis, selling it to consumers in various nations including the United States, Panama, and Columbia. Walker is incorporated under the laws of the United Kingdom and has its principal place of business in London, England. In its complaint, Walker alleges that it has consistently used distinctive "Black Label" and "Striding Figure" trademarks in conjunction with the advertising of its whiskey. Walker registered both the "Black Label" and "Striding Figure" trademarks with the United States Patent and Trademark Office. In its complaint Walker further alleges that "as a result of [its] extensive sales, advertising and promotion, [its] trademarks have acquired a secondary meaning, distinctiveness and commercial magnetism ... and enjoy a substantial prestige and saleability and are considered to be of high quality."

Defendant-appellee DeMert & Dougherty, Inc. ("DeMert"), is a filler of aerosol cans incorporated under the laws of Illinois with its principal place of business in Oakbrook, Illinois. As part of its services, DeMert acts as an intermediary for its customers in locating can manufacturers who agree to use its customers' artwork on their cans. Defendants-appellees Collection 2000, Blasser Brothers, Inc., S.A., Joseph Blasser, and Eduardo Blasser jointly market cosmetics and other personal care products. Collection 2000 International, Inc. (Collection 2000) is a Florida corporation with its principal place of business located in Opalocka, Florida, and Blasser Brothers, Inc., S.A. is a Panamanian corporation that maintains a mailing address in Opalocka, Florida. Defendant-appellee Joseph Blasser is a resident of Miami, Florida and an officer of Collection 2000. Eduardo Blasser is also a resident of Miami, Florida, and is the president of Blasser Brothers, Inc., S.A. (Blasser Brothers).

In November, 1982, Collection 2000 executed a contract with DeMert to produce approximately 50,000 spray deodorant cans featuring alleged simulations of Walker's "Black Label" and "Striding Figure" trademarks. Collection 2000 provided DeMert with the initial artwork for the cans, and DeMert filled the deodorant cans and shipped them to a warehouse in Miami, Florida. DeMert was paid approximately $23,900 for filling the cans and placing Collection 2000's artwork on them. The cans of deodorant were subsequently sold in Panama and Columbia through Transcontinental Overseas, Inc., not a party to the suit.

Walker filed suit in the United States District Court for the Northern District of Illinois alleging that the placement of artwork on the deodorant cans and their shipment and subsequent sale constituted a trademark infringement in violation of the Lanham Act, 15 U.S.C. Secs. 1051-1127. Walker named DeMert, Collection 2000, Blasser Brothers, and Joseph and Eduardo Blasser as defendants in the action. The trial court granted DeMert's motion for summary judgment on Walker's complaint that DeMert had violated the Lanham Act and also granted the remaining defendants' motion to dismiss without explaining the basis of its decision, holding that an Illinois court cannot exercise personal jurisdiction over Collection 2000, Joseph and Eduardo Blasser and Blasser Brothers. The court also without explanation held that venue was not proper in the Northern District of Illinois. Walker appeals.

II

Walker argues that the district court erred as a matter of law in granting Collection 2000's, Blasser Brothers', and Joseph and Eduardo Blasser's motion to dismiss, ruling that an Illinois court could not exercise personal jurisdiction over these defendants. "A federal district court in Illinois has personal jurisdiction over a party in a diversity case only if an Illinois court would have such jurisdiction." Jacobs/Kahan & Company v. Marsh, 740 F.2d 587 (7th Cir.1984). See Fed.R.Civ.P. 4(e). In Illinois, personal jurisdiction over a nonresident does not depend exclusively upon the physical presence of the defendant within the state. The Illinois long arm statute establishes the standard for the exercise of personal jurisdiction over non-resident defendants:

(a) Any person, whether or not a citizen or resident of this State, who in person or through an agent does any of the acts hereinafter enumerated, thereby submits such person, and, if an individual, his or her personal representative, to the jurisdiction of the courts of this State as to any cause of action arising from the doing of any of such acts:

(1) The transaction of any business within this State;

(2) The commission of a tortious act within this State; ...

Ill.Rev.Stat. ch. 110, para. 2-209 (1985).

In determining whether personal jurisdiction can be exercised in a particular case, "we must determine whether the long-arm statute should be construed in a way which embraces [the] plaintiff['s] claim against [the] defendant[s], and if so, whether the assertion of jurisdiction by our [Illinois] court over [the] defendant[s] is prohibited by due process safeguards." Veeninga v. Alt, 111 Ill.App.3d 775, 779, 780, 781, 67 Ill.Dec. 544, 444 N.E.2d 780 (1982). See also Vena v. Western General Agency, Inc., 543 F.Supp. 779, 784 (N.D.Ill.1982). Under the provisions of the Illinois long-arm statute, a nonresident submits to the jurisdiction of the Illinois courts if he engages in the "transaction of any business" within Illinois and if the cause of action arises out of this transaction. Ill.Rev.Stat. ch. 110, Sec. 2-209(a)(1) (1983). Prior to 1981, the Illinois courts interpreted the phrase "transaction of any business" in the long-arm statute as giving them the authority to exert personal jurisdiction over non-resident defendants to the extent permitted under the due process clause of the United States Constitution. Nelson v. Miller, 11 Ill.2d 378, 143 N.E.2d 673 (1957). See also McBreen v. Beech Aircraft Corporation, 543 F.2d 26, 28 (7th Cir.1976). In Green v. Advance Ross Electronics Corp., 86 Ill.2d 431, 56 Ill.Dec. 657, 427 N.E.2d 1203 (1981), the Illinois Supreme Court clarified the relationship between the Illinois long-arm statute and the due process clause, stating that the construction and application of the Illinois long-arm statute does not "depend entirely upon decisions determining in what circumstances due process requirements would permit long-arm jurisdiction" but depends also on the Illinois courts' interpretation of the statute as well. Id. at 436, 56 Ill.Dec. at 434, 427 N.E.2d at 1206. "A statute worded in the way [Illinois' statute] is should have a fixed meaning without regard to changing concepts of due process, except, of course, that an interpretation which renders the statute unconstitutional should be avoided, if possible." 56 Ill.Dec. at 434, 427 N.E.2d at 1206. In Cook v. Associates, Inc. v. Lexington United Corp., 87 Ill.2d 190, 57 Ill.Dec. 730, 429 N.E.2d 847 (1981), the Illinois Supreme Court stated that "the boundaries or limits under [the Illinois] statute are not to be equated with the 'minimum contacts' test under the due process clause." Id. at 197, 57 Ill.Dec. at 733, 429 N.E.2d at 850.

In Deluxe Ice Cream Company v. R.C.H. Tool Corp., 726 F.2d 1209 (7th Cir.1984), this court stated that "it is clear that the question of personal jurisdiction under the Illinois long-arm statute is separate from the question of whether holding a nonresident defendant amenable to suit would violate due process." Id. at 1214. In Jacobs/Kahan & Co. v. Marsh, 740 F.2d 587 (7th Cir.1984), we outlined the analysis a federal court should use in determining whether an Illinois court can properly exercise personal jurisdiction. We stated:

"[t]he requisite analysis consists of three questions: (1) whether the defendant engaged in one of the jurisdictional acts enumerated in the statute (in this case, "the transaction of any business"); (2) whether the cause of action is one "arising from" the jurisdictional act; and (3) whether the exercise of long-arm jurisdiction is consistent with due process as defined by prevailing constitutional standards."

Id. at 590.

Turning to the present case, we note that when reviewing the district court's dismissal of Joseph and Eduardo Blasser, Collection 2000 and Blasser Brothers "all conflicts in the affidavits and depositions submitted by the parties must be resolved in favor of the plaintiff." Deluxe Ice Cream Company v. R.C.H....