Broadcast Marketing v. Prosource Sales & Marketing
| Decision Date | 22 November 2004 |
| Docket Number | No. CIV.A. 3:04-cv-00517(JCH).,CIV.A. 3:04-cv-00517(JCH). |
| Citation | 345 F.Supp.2d 1053 |
| Court | U.S. District Court — District of Connecticut |
| Parties | BROADCAST MARKETING INTERNATIONAL, LTD. Plaintiff v. PROSOURCE SALES & MARKETING, INC. Defendant. |
Stephen P. McNamara, St. Onge, Steward, Johnston & Reens, LLC, Stamford, CT, for Plaintiff.
Joseph G. Fortner, Jr., Patrick M. Birney, Halloran & Sage, LLP, Hartford, CT, for Defendant.
RULING RE: DEFENDANT'S MOTION TO DISMISS COMPLAINT OR IN THE ALTERNATIVE TO CHANGE VENUE [DKT. NO. 14]
Plaintiff, Broadcast Marketing International, Ltd. ("Broadcast"), brings this civil action against Prosource Sales & Marketing, Inc. ("PSMI"), pursuant to the Lanham Act, 15 U.S.C. § 1114 et seq., and the Connecticut Unfair Trade Practices Act ("CUTPA"), Conn. Gen.Stat. § 42-110a, et seq. See Pl's Compl. [Dkt. No. 1]. Broadcast, the owner of the trademark "Prosource," for the distribution of film and video production equipment and related accessories, alleges that PSMI is using the marks "Prosource" and "Prosource Sales and Marketing" in connection with its distribution of digital media, in violation of Broadcast's trademark rights.1 See Id.
PSMI has moved to dismiss the Complaint pursuant to Rule 12(b)(2) of the Federal Rules of Civil Procedure, for lack of personal jurisdiction, and for improper venue pursuant to Rule 12(b)(3). In the alternative, PSMI has moved to change venue under 28 U.S.C. § 1404(a). See Def.'s Mem. Supp. Mot. to Dismiss Compl. [Dkt. No. 15]. For the reasons stated below, the Defendant's Motion to Dismiss the Complaint and its Motion to Change Venue are both DENIED.
Broadcast is a Connecticut corporation located in Fairfield, Connecticut, which operates a nationwide business under the name "Prosource." On June 3, 1997, Broadcast officially registered its trademark "Prosource" with the United States Patent and Trademark Office, obtaining Reg. No. 2,066,206. Provided Broadcast continues to comply with the provisions of Section 8 of the Trademark Act of 1946, as amended, Broadcast's registered trademark will remain valid until 2007.
Under the mark "Prosource," Broadcast distributes and sells film and video production equipment, including digital cameras and digital video recording equipment. Broadcast's production equipment is used by film and video production companies, television stations, news crews, studios, and other users of broadcast, corporate, industrial, and professional quality video.
PSMI is a Nevada corporation located in Sparks, Nevada, which operates under the name Prosource Sales & Marketing. PSMI is in the business of manufacturing and distributing digital media products, such as DVDs, CD-Rs, magnetic disks, and digital audio tapes. PSMI does not have any offices, agents, or property in the state of Connecticut. Furthermore, PSMI has never sent sales persons into the state of Connecticut to solicit business. PSMI's business is conducted primarily through outbound calls from employees to potential customers throughout the country. A substantially smaller amount of PSMI's sales are furnished by customers who call PSMI's 1-800 number directly. Since 1995, PSMI has also maintained a website at http://www.prosourcesales.com, which allows customers to purchase products directly through the Internet.
From January 1995 until June 6, 2004, PSMI's sales to Connecticut customers totaled $314,029. Over that same period, PSMI's website, prosourcesales.com, generated seven sales from Connecticut businesses and individuals, totaling $518.27.
On March 29, 2004, Broadcast filed a complaint against PSMI alleging trademark infringement and unfair competition under federal and state law. See Pl's Compl. [Dkt. No. 1]. Broadcast seeks injunctive relief as well as monetary damages and attorney's fees and costs.
"On a motion to dismiss for lack of personal jurisdiction, the plaintiff bears the burden of showing that the court has jurisdiction over the defendant." In re Magnetic Audiotape Antitrust Litigation, 334 F.3d 204, 206 (2d Cir.2003) (citing Metro. Life Ins. Co. v. Robertson-Ceco Corp., 84 F.3d 560, 566 (2d Cir.1996)). The nature of that burden, however, depends upon the procedural posture of the case. Ball v. Metallurgie Hoboken-Overpelt, S.A., 902 F.2d 194, 196-97 (2d Cir.1990); see also American Wholesalers Underwriting, Ltd. v. American Wholesale Insurance Group, Inc., 312 F.Supp.2d 247, 251 (D.Conn.2004). Where, as in the instant case, an extensive amount of discovery has been conducted regarding the defendant's contacts with the forum, but no hearing held, the plaintiff must make a prima facie showing, including an averment of facts, that if presented to the trier of fact would suffice to establish that personal jurisdiction is appropriate over the defendant. Ball, 902 F.2d at 197; American Wholesalers Underwriting, Ltd., 312 F.Supp.2d at 251. In addition, because there has been no evidentiary hearing on the jurisdictional allegations, or a trial on the merits, "all pleadings and affidavits are construed in the light most favorable to [the] plaintiff, and where doubts exist, they are resolved in the plaintiff's favor." Hoffritz for Cutlery, Inc. v. Amajac, Ltd., 763 F.2d 55, 57 (2d Cir.1985); Whitaker v. American Telecasting, Inc., 261 F.3d 196, 208 (2d Cir.2001).
"In a federal question case where a defendant resides outside the forum state, a federal court applies the forum state's personal jurisdiction rules `if the federal statute does not specifically provide for national service of process.'" PDK Labs, Inc. v. Friedlander, 103 F.3d 1105, 1108 (2d Cir.1997) (quoting Mareno v. Rowe, 910 F.2d 1043, 1046 (2d Cir.1990)). Because the Lanham Act does not provide for nationwide service of process,3 the court must rely on the law of the forum state to determine whether the defendant is subject to personal jurisdiction in that state. American Wholesalers, 312 F.Supp.2d at 251; see also Tomra of North America, Inc. v. Environmental Products Corp., 4 F.Supp.2d 90, 92 (D.Conn.1998). This is a two-fold analysis. First, the plaintiff must prove that the applicable state's long-arm statute reaches the defendant. Second, if the plaintiff satisfies this initial burden, the court must then determine whether in personam jurisdiction comports with the requirements of the Due Process Clause of the Fifth Amendment. See American Wholesalers, 312 F.Supp.2d at 251; Ensign-Bickford Company v. ICI Explosives U.S.A. Inc., 817 F.Supp. 1018, 1026 (D.Conn.1993) (Cabranes, J.). The defendant's action must establish "certain minimum contacts ... [so] that the maintenance of the suit does not offend `traditional notions of fair play and substantial justice.'" Int'l Shoe Co. v. State of Washington, 326 U.S. 310, 316, 66 S.Ct. 154, 90 L.Ed. 95 (1945) (citing Milliken v. Meyer, 311 U.S. 457, 463, 61 S.Ct. 339, 85 L.Ed. 278 (1941)).
Thus, the first issue is whether Connecticut's long-arm statute reaches the defendant. A foreign corporation is subject to in personam jurisdiction in Connecticut pursuant to Conn. Gen.Stat. § 33-929(f), which provides in pertinent part:
Every foreign corporation shall be subject to suit in this state, by a resident of this state or by a person having a usual place of business in this state, whether or not such foreign corporation is transacting or has transacted business in this state and whether or not it is engaged exclusively in interstate or foreign commerce on any cause of action arising as follows: (1) Out of any contract made in this state or to be performed in this state; (2) out of any business solicited in this state by mail or otherwise if the corporation has repeatedly so solicited business, whether the orders or offers relating thereto were accepted within or without the state; (3) out of the production, manufacture or distribution of goods by such corporation with the reasonable expectation that such goods are to be used or consumed in this state and are so used or consumed, regardless of how or where the goods were produced, manufactured, marketed or sold or whether or not through the medium of independent contractors or dealers; or (4) out of tortious conduct in this state, whether arising out of repeated activity or single acts, and whether arising out of misfeasance or nonfeasance.
Conn. Gen.Stat. § 33-929(f) (1998). The court concludes that the defendant's conduct is sufficient to satisfy the requirements of the Connecticut long-arm statute on at least two grounds.4
First, section 33-929(f)(4) of the Connecticut General statute reaches PSMI because the cause of action arises "out of tortious conduct in [Connecticut] ... arising out of repeated activity or single acts...." Id. at (f)(4). Under Connecticut law, trademark infringement is considered a "tort" for the purposes of determining personal jurisdiction pursuant to the state long-arm statute. American Wholesalers, 312 F.Supp.2d at 253, citing On-Line Technologies v. Perkin Elmer Corp., 141 F.Supp.2d 246, 264 (D.Conn.2001). In this context, "the infringement must be the act of selling products that infringe upon the plaintiff's trademark, and the infringement must take place in the forum state." Id. A cause of action for trademark infringement arises "`where the passing off occurs, i.e., where the deceived customer buys the defendant's product in the belief that he is buying the plaintiff's.'" American Wholesalers, 312 F.Supp.2d at 253, quoting Vanity Fair Mills, Inc. v. T. Eaton Co., 234 F.2d 633, 639 (2d Cir.1956); Whelen Engineering Co. v. Tomar Electronics, Inc., 672 F.Supp. 659, 662 (D.Conn.1987). A showing of only one infringing sale is enough to establish long-arm jurisdiction over the infringing party. American Wholesalers, 312 F.Supp.2d at 253, citing Bensusan Restaurant Corporation v. King, 937 F.Supp. 295, 299 (S.D.N.Y.1996); see Editorial Musical Latino Americana, S.A. v. Mar Int'l...
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