Annie Oakley Enter.S Inc v. Sunset Tan Corp.Orate & Consulting LLC

• Decision Date: 25 March 2010
• Docket Number: Civil Action No. 1:09-CV-72 JVB.
• Citation: 703 F.Supp.2d 881
• Court: U.S. District Court — Northern District of Indiana
• Parties: ANNIE OAKLEY ENTERPRISES, INC., and Renee Gabet, Plaintiffs,v.SUNSET TAN CORPORATE & CONSULTING, LLC, Devin Haman, and Jeff “Bozz” Bozigian, Defendants.

703 F.Supp.2d 881

ANNIE OAKLEY ENTERPRISES, INC., and Renee Gabet, Plaintiffs,v.SUNSET TAN CORPORATE & CONSULTING, LLC, Devin Haman, and Jeff “Bozz” Bozigian, Defendants.

Civil Action No. 1:09-CV-72 JVB.

United States District Court,

N.D. Indiana.

March 25, 2010.

COPYRIGHT MATERIAL OMITTED

Constance R. Lindman, Paul B. Overhauser, Overhauser & Lindman LLC, Greenfield, IN, George Pappas, George Pappas PC, Fort Wayne, IN, for Plaintiffs.

Lane J. Fisher PHV, Fisher Zucker LLC, Philadelphia, PA, M. Scott Hall, Tiffany L. Gooden, Hall & Gooden LLP, Fort Wayne, IN, for Defendants.

OPINION AND ORDER

JOSEPH VAN BOKKELEN, District Judge.

This matter is before the Court on an amended motion to dismiss filed by Defendants, Sunset Tan Corporate & Consulting, LLC; Devin Haman; and Jeff Bozigian on August 7, 2009.¹ Plaintiffs, Annie Oakley Enterprises, Inc. and Renee Gabet, responded to the motion on August 24 2009, to which Defendants replied on September 8, 2009.

For the following reasons, the motion is granted.

Discussion

Defendants contend the Court lacks personal jurisdiction over them and that Plaintiffs' complaint should be dismissed pursuant to Federal Rule of Civil Procedure 12(b)(2). Defendants further contend that the complaint should be dismissed pursuant to Federal Rule of Civil Procedure 12(b)(3), alleging that a substantial part of the events giving rise to Plaintiffs' alleged causes of action for trademark infringement and related claims did not occur in the state of Indiana as required under 28 U.S.C. § 1391(b).

Defendants assert the following facts: Defendant Sunset Tan was organized in the state of California in December 2007. Defendant Sunset Tan does not conduct business in Indiana, is not registered to do business in the state, has no offices or employees in Indiana, does not own any real property in Indiana, and does not own any bank accounts or governmental licenses in Indiana. Defendant Sunset Tan states that, contrary to the allegations contained in the complaint, it is not licensed to offer franchises in the state of Indiana (or any other state).

Defendants state that Defendant Sunset Tan is the owner of the mark LA SUNSET TAN A HAMAN & BOZZ PRODUCTION, which is registered on the principal register of the United States Patent & Trademark Office (USPTO) at Registration No. 3593880 for “tanning salon services” (Registered Mark). In addition to using, and licensing others to use, the Registered Mark in connection with these tanning salon services, Defendant Sunset Tan also uses and displays the Registered Mark in marketing some of its high-end indoor tanning lotions.

Plaintiff Gabet owns a federal trademark registration for the mark SUNSET in connection with skin care lotions, and Plaintiff Annie Oakley is the exclusive licensee of this registration.

Defendants' tanning lotions display the marks “ST SUNSET TAN” and “ST LA SUNSET TAN” and are sold and made available for sale exclusively in tanning salons that are owned and operated by either: (1) Defendant Sunset Tan's affiliates; or (2) independent third-parties that have entered into an agreement with Defendant Sunset Tan's affiliate, Sunset Tan Franchising, L.P. (“STF”). Defendants state that there are currently seven independent third parties in California, and one each in New Jersey, Texas, and Nevada. Defendants point out that there has never been a salon located in Indiana or anywhere in the Midwest. Defendants state that none of the lotions sold or offered by Defendant Sunset Tan bearing the allegedly infringing marks “Sunset Tan” or “LA Sunset Tan” were manufactured or distributed in the state of Indiana by Sunset Tan or any of its affiliate companies.

In June 2007 Sunset Tan entered into an agreement with Cal Tan, LLC to manufacture and distribute tanning lotions. Cal Tan is an Indiana limited liability company, but Defendant Sunset Tan states that it did not commence its relationship with Cal Tan in Indiana. Rather, Defendant Sunset Tan negotiated the terms of the Agreement with Cal Tan's office in California and all of the contract negotiations took place in California or Pennsylvania, where Defendant Sunset Tan's counsel is located. Defendant Sunset Tan states that the parties executed the Agreement in California, and under Cal Tan's signature line in the Agreement, it lists a Los Angeles, California address. The choice of law and venue provisions of the Agreement provide that California law will control and that any action or proceeding related to the Agreement shall be brought only in a court in the county of Los Angeles, state of California.

It was Defendants' belief, based on information received from Cal Tan, that Cal Tan manufactures and labels the lotions in New Jersey. After reviewing documents produced by Cal Tan in response to this litigation, Defendants have learned that two of the allegedly infringing lotions are warehoused in, and shipped from, Indiana.

Cal Tan's invoices state that payments be made to an Indianapolis address. Defendant Sunset Tan states that these invoices are paid either by its affiliate, DLJ Marketing, LLC, a Nevada limited liability company, or by affiliate-owned companies.

Defendant Haman states that he is a resident of California and does not own any bank accounts, personal property, or other assets in the state of Indiana. Haman, who was born in Indiana, further states that his only contacts with Indiana since 1985 have been personal visits every two or three years, with the last visit occurring in June 2004.

Defendant Bozigian states that he is a resident of California and does not own any bank accounts, personal property, or other assets in Indiana.² Bozigian further states that he visited Indiana for the first and only time several years ago to attend a matter unrelated to the tanning lotions at issue. Bozigian states that he does not have any governmental licenses to do business in Indiana.

Defendant Sunset Tan is the registrant of, and displays content at, the website known as sunsettan.com. On July 28, 2008, this website began selling clothing items through an online store. Defendants state that if a consumer makes a purchase from the online store, that customer enters into a contract with a third party, rather than with Defendant Sunset Tan. Since the online store became operational, only three sales to residents of Indiana have been made, totaling approximately $209.00. Defendants state that as the online store only sells apparel items, none of the sales were related to the tanning lotions at issue. Additionally, all the lotions on display on the website display the Registered Mark LA SUNSET TAN A HAMAN & BOZZ PRODUCTION rather than the allegedly infringing marks LA SUNSET TAN or SUNSET TAN.

In 2007 the E! television network began broadcasting a reality television series based primarily on the day-to-day operations of certain corporate-owned salons in California entitled “Sunset Tan.” This show aired for two seasons, but has since been cancelled. Both Bozigian and Haman were featured on this television show, but no part of the series was filmed in Indiana. Additionally, no tanning lotions were offered for sale during the show's televised broadcasts and no advertisements or other promotional materials were purchased or run with respect to any of Defendant Sunset Tan's tanning lotions during the time slot that “Sunset Tan” was broadcast, or during any other time slot. Defendants assert that the broadcast was done by the network and that Defendants did nothing to specifically target Indiana residents.

Plaintiffs filed this action on March 20, 2009, alleging federal trademark infringement under 15 U.S.C. § 1114, and related claims for trademark dilution and false designation of origin under 15 U.S.C. § 1125 (Lanham Act), as well as claims for declaratory judgment, unfair competition interference with prospective economic advantage and unjust enrichment. In the present amended motion to dismiss, Defendants argue that the complaint should be dismissed for lack of personal jurisdiction.

Due process mandates the dismissal of a case when personal jurisdiction is properly challenged and found to be lacking. See Int'l Shoe Co. v. Washington, 326 U.S. 310, 315, 66 S.Ct. 154, 90 L.Ed. 95 (1945). “[O]nce a defendant moves to dismiss the complaint under Federal Rule of Civil Procedure 12(b)(2) for lack of personal jurisdiction, the plaintiff bears the burden of demonstrating the existence of jurisdiction.” Purdue Research Found. v. Sanofi-Synthelabo, S.A., 338 F.3d 773, 782 (7th Cir.2003); see also Jennings v. AC Hydraulic A/S, 383 F.3d 546, 548 (7th Cir.2004). When a court's decision is based on written submissions beyond the pleadings without the benefit of a hearing, the plaintiff is only required to “make out a prima facie case of personal jurisdiction.” Purdue Research Found., 338 F.3d at 782 (quoting Hyatt Int'l Corp. v. Coco, 302 F.3d 707, 713 (7th Cir.2002)). In determining whether the prima facie standard has been met, a court resolves all disputes concerning relevant facts presented in the record in favor of the plaintiff. Id. (quoting Nelson v. Park Indus., Inc., 717 F.2d 1120, 1123 (7th Cir.1983)).

If jurisdiction is exercised on the basis of a federal statute that does not authorize nationwide service of process, the law requires a federal district court to determine if a court of the state in which it sits would have personal jurisdiction. United States v. Martinez De Ortiz, 910 F.2d 376, 381 (7th Cir.1990). The Lanham Act does not authorize nationwide service of process; therefore, the standards for personal jurisdiction are those of the forum state. 15 U.S.C. § 1121(a). Indiana's long-arm statute, set forth in Indiana Trial Rule 4.4(A), governs personal jurisdiction in Indiana. Although Rule 4.4(A) enumerates eight bases for the assertion of jurisdiction on the basis of a defendant's actions, the rule also includes a provision that “a court of this state may exercise jurisdiction...