Anheuser-Busch, Inc. v. All Sports Arena Amusement

• Decision Date: 25 October 2002
• Docket Number: No. 4:02CV949 FRB.,4:02CV949 FRB.
• Citation: 244 F.Supp.2d 1015
• Parties: ANHEUSER-BUSCH, INC., Plaintiff, v. ALL SPORTS ARENA AMUSEMENT, INC., Defendant.
• Court: U.S. District Court — Eastern District of Missouri

Page 1015

244 F.Supp.2d 1015

ANHEUSER-BUSCH, INC., Plaintiff, v. ALL SPORTS ARENA AMUSEMENT, INC., Defendant.

No. 4:02CV949 FRB.

United States District Court, E.D. Missouri, Eastern Division.

October 25, 2002.

Edward G. Wierzbicki, Douglas N. Masters, Mary E. Innis, Nerissa Coyle McGinn, Thad Chaloemtiarana, Pattischall and McAuliffe, Chicago, IL, Steven P. Sanders, Sr., Lisa A. Larkin, Williams and Venker, St. Louis, MO, for plaintiff.

Gavin P. Lentz, Bochetto and Lentz, Philadelphia, PA, Thomas E. Kopil, Timby and Haft, Newtown, PA, for defendant.

MEMORANDUM AND ORDER

BUCKLES, United States Magistrate Judge.

Presently pending before the Court is defendant, All Sports Arena Amusement, Inc.'s Motion to Dismiss this action or in the alternative to Transfer the action (filed July 30, 2002/Docket No. 25). All matters are pending before the undersigned United States Magistrate Judge, with consent of the parties, pursuant to 28 U.S.C. § 636(c).

Plaintiff Anheuser-Busch brings this action seeking damages for breach of contract and breach of the implied warranty of merchantability by the defendant. Anheuser-Busch further seeks declaratory judgment, pursuant to 28 U.S.C. § 2201, for non-infringement of copyright, non-infringement of trade dress, a declaration of no tortious interference with contract, a declaration of non-misappropriation of trade secrets or ideas, a declaration of fraud by the defendant on the United States Patent and Trademark Office, a declaration of genericness, a declaration of non-infringement of trademark, and for a declaration as to the amount owed plaintiff for repairs. Anheuser-Busch contends that this Court may properly exercise jurisdiction over the matter, pursuant to 28 U.S.C. § 1338, because it arises under the copyright and trademark laws of the United States and pursuant to 28 U.S.C. § 1332 because the parties are diverse and the amount in controversy exceeds the $75,000 statutory minimum.

STATEMENT OF THE CASE

This litigation arises out of a business relationship between plaintiff, Anheuser-Busch,¹ and defendant, All Sports Arena Amusement, Inc. ("All Sports").² In 1998, Anheuser-Busch entered into an agreement with Innovative Concepts and Entertainment, Inc. ("ICE") to use its bubble hockey games in television commercials for plaintiffs Bud Light beer. (Compl.¶¶6-9) In conjunction with the "Bubble Boys" commercials, Anheuser-Busch began developing a plan to sponsor bubble hockey game tournaments during the 1998-1999 National Hockey League season. (Compl.¶10) In December 1998, Anheuser-Busch purchased bubble hockey games manufactured by ICE from All Sports, with the understanding that ICE manufactured the games. (Compl.¶ 12) In February 1999, Anheuser-Busch sent All Sports a license agreement to document the relationship between the parties thus far and to address the use of Anheuser-Busch trade names and logos in All Sports' games. (Compl.Ex. A) In May 2000, Anheuser-Busch and All Sports entered into the licensing agreement which governed All Sports' use of Anheuser-Busch trademarks and copyrights in bubble hockey games that All Sports had provided and would provide to Anheuser-Busch, its wholesalers, and retailers. (Compl.¶ 14, Compl.Ex. A) The licensing agreement contained a Quality and Approval section which required approval of pre-production samples to ensure the quality of the items bearing an Anheuser-Busch logo. The agreement required All Sports to maintain the same high quality of the pre-production samples in the items they sold. The agreement also required that Anheuser-Busch approve any changes to the games. (Compl.Ex. A) The licensing agreement also contained the following forum selection clause:

This agreement will be deemed to have been executed in the State of Missouri U.S. and will be construed and interpreted according to the laws of that State without regard to its conflict of law principles or rules. Licensee agrees that it shall bring any legal action or proceeding with respect to this Agreement in the United States District Court for the Eastern District of Missouri or, if such court does not have jurisdiction, in any court of general jurisdiction in the City or County of St. Louis, Missouri, U.S. If Licensor brings a legal action or proceeding with respect to this Agreement in such courts, Licensee consents to the personal jurisdiction of such courts, agrees to accept service of process by mail and hereby waives any jurisdictional or venue defenses otherwise available to it.

(Compl.Ex. A) During the course of their relationship, the parties communicated regularly via mail, telephone, e-mail and facsimile. (Plaintiffs Response "PI. Resp." 7) All Sports shipped at least fortynine (49) bubble hockey and bubble soccer games into Missouri. (Pl.Resp.7) In addition, representatives and employees of All Sports made four trips to Anheuser-Busch headquarters in St. Louis to discuss the development of a business relationship involving bubble hockey and bubble soccer games. (Pl.Resp.7) In 2001, Anheuser-Busch and All Sports agreed that All Sports would repair and refurbish games already owned by Anheuser-Busch, its wholesalers and retailers. (Compl. ¶ 18) Anheuser-Busch alleges that in December 2001, All Sports began shipping "materially changed" games without Anheuser-Busch's prior approval, in violation of the licensing agreement between the parties. (Compl.1119) After learning of a breakdown in the relationship between ICE and All Sports' it became evident to Anheuser-Busch that All Sports could no longer supply the high quality ICE games contemplated under the licensing agreement. (Compl. ¶ 20) As a result, Anheuser-Busch purchased games for its upcoming 2002 tournament directly from ICE. (Compl.¶21) On May 16, 2002, All Sports, through an attorney, sent a letter accusing Anheuser-Busch of copyright, trademark, and trade dress infringement, tortious interference, trade secret misappropriation and fraudulent misrepresentation. The letter asked Anheuser-Busch to begin negotiations with All Sports to settle the dispute or legal action would be taken. (Compl. Ex C) After negotiations between the parties failed, Anheuser-Busch filed this action on June 24, 2002.

The declaratory judgments sought by the plaintiff as to non-infringement of copyrights, trademarks, and trade dress, declarations of no tortious interference with contract, and non-misappropriation of trade secrets all arise out of the business relationship between the parties. Anheuser-Busch is the owner of the mark "Bubble Boys," which is registered with the United States Patent and Trademark Office. (Compl.H 69) All Sports has attempted to register the marks "Bubble Hockey" and "Bubble Soccer" with the United States Patent and Trademark Office. Registration of these marks has thus far been denied.

Defendant, All Sports, now moves to Dismiss plaintiffs complaint pursuant to Fed.R.Civ.P. 12(b)(2) for lack of jurisdiction over the person and pursuant to Fed. R.Civ.P. 12(b)(3) for improper venue or in the alternative to transfer the action pursuant to 28 U.S.C. § 1404(a) for the convenience of the parties and witnesses. Defendant argues that this Court lacks personal jurisdiction over the defendant under the "minimum contacts" analysis required by constitutional due process. The defendant further argues that the case should be dismissed or transferred because venue is improper under 28 U.S.C. § 1391 or inconvenient pursuant to 28 U.S.C. § 1404(a). Finally, Defendant argues that this Court should decline to hear this declaratory judgment action because it was brought by the plaintiff in an improper effort to choose a forum.

Plaintiff responds that because of a forum selection clause in the licensing agreement between the parties, and pursuant to the Missouri long-arm statute and the dictates of constitutional due process this court may assert personal jurisdiction over the defendant. The plaintiff further asserts that venue is proper in Missouri pursuant to 28 U.S.C. § 1391(c) and convenient to the parties and witnesses pursuant to 28 U.S.C. § 1404(a). The plaintiff further argues that declaratory judgment relief is proper under the Declaratory Judgment Act (28 U.S.C. § 2201) and under Eighth Circuit precedent.

Defendant argues in reply that the licensing agreement between the parties, which contains a forum selection clause, does not govern the complaints upon which this litigation is based and is therefore not a proper basis upon which to find jurisdiction. Defendant further argues that its other contacts with the plaintiff are not sufficient to establish jurisdiction. Defendant also contends that Pennsylvania is a more convenient forum for the parties and witnesses than Missouri.

DISCUSSION

I. Personal Jurisdiction

Plaintiff and defendant contest whether this Court may properly exercise personal jurisdiction over the defendant. The Court employs a two-part test in determining whether it may assert jurisdiction over a non-resident. First, the Court will determine whether the defendant's conduct falls under one of the categories of the state long arm statute. Second, the Court must determine whether the defendant has established "minimum contacts" with the forum state so that the Court's exercise of jurisdiction comports with the dictates of constitutional due process. Soo Line R.R. Co. v. Hawker Siddeley Canada, Inc., 950 F.2d 526, 528 (8th Cir.1991).

The Missouri long arm statute, Mo.Rev. Stat. § 506.500, confers jurisdiction upon any person, firm or corporation "as to any cause of action arising from the doing of any such acts: 1) the transaction of any business within this state; 2) the making of any contract within this state [or] 3) the commission of a tortious act within this state . . . ." The burden is on the plaintiff to make a prima facie showing that personal jurisdiction exists to survive a motion to dismiss. Stevens v. Redwing, 146 F.3d 538, 543 (8th Cir.1998).

Anheuser-Busch...