Gentex Corp. v. Ronald Abbott, Helicopterhelmet.Com, Helicopter Helmets, LLC

• Decision Date: 10 October 2013
• Docket Number: Civil Action No. 3:12–CV–02549.
• Citation: 978 F.Supp.2d 391
• Parties: GENTEX CORPORATION, Plaintiff, v. Ronald ABBOTT, Helicopterhelmet.Com, Helicopter Helmets, LLC, Defendants.
• Court: U.S. District Court — Middle District of Pennsylvania

978 F.Supp.2d 391

GENTEX CORPORATION, Plaintiff,

v.Ronald ABBOTT, Helicopterhelmet.Com, Helicopter Helmets, LLC, Defendants.

Civil Action No. 3:12–CV–02549.

United States District Court, M.D. Pennsylvania.

Oct. 10, 2013.

Daniel T. Brier, Donna A. Walsh, Michael J. Asbell, Myers Brier & Kelly, LLP, Scranton, PA, for Plaintiff.

Christina B. Humphries, Edward T. Fenno, Fenno Law Firm LLC, Charleston, SC, Eric N. Mahler, Kelly M. Ciravolo, Mahler, Lohin & Associates, LLC, Kingston, PA, for Defendants.

MEMORANDUM

MATTHEW W. BRANN, District Judge.

This civil action for trademark infringement, unfair competition and unjust enrichment, arising under 15 U.S.C. §§ 1114(1); 1125(a), was commenced on December 19, 2012, proceeds on the Amended Complaint, and offers for the Court's consideration and review a textbook discussion of in personam jurisdiction. Pl.'s Am. Compl. Jan. 22, 2013, ECF No. 8 [hereinafter Pl.'s Am. Compl.]. Before the Court is Defendant Ronald Abbott's (“Abbott”) Motion to Dismiss. Def.'s Mot. Dismiss, Mar. 29, 2013, ECF No. 18 [hereinafter Mot. Dismiss]. For the reasons discussed below, the Motion to Dismiss is denied.

I. BACKGROUND

Gentex Corporation (“Gentex”), Plaintiff, asserts causes of action for trademark infringement under 15 U.S.C. §§ 1114(1); 1125(a), unfair competition, and state law claims of unfair competition and unjust enrichment. Pl.'s Am. Compl. ¶¶ 19–34. Gentex is a leading manufacturer of flight helmets that owns and continues to use the registered trademark “Gentex.” Id. ¶¶ 8–10. Gentex's principal place of business is in Simpson, Pennsylvania. Ts. Evidentiary Hr'g 72, Oct. 1, 2013, ECF No. 45 [hereinafter Evidentiary Hr'g].

Defendant Ronald Abbott is the principal of Defendants Helicopter Helmet, LLC and Helicopterhelmet.com, businesses that are engaged in the manufacture and sale of helicopter helmets and other equipment via the internet and traditional channels of commerce. Pl.'s Am. Compl. ¶¶ 2–4. Helicopterhelmet.com's principal place of business is in South Carolina, while Helicopter Helmet, LLC is a Delaware corporation with its principal place of business also in South Carolina. Id. ¶¶ 2–4.

Plaintiff alleges that the Defendants are knowingly and willfully infringing on the “Gentex” marks by using them to promote and sell their competing products. Id. ¶¶ 12–15, 19–34. Defendant advertises that he builds “Gentex helmets” with “Genuine Gentex Parts,” which the Plaintiff claims is a misrepresentation. Id. ¶ 15. Plaintiff argues the Defendants actually use only a small number of Gentex parts, that the vast majority of their helmets are made without Gentex parts, or are made with outdated Gentex parts of inferior technology to the current models. Pl.'s Answer Mot. Dismiss ¶ 12, Mar. 29, 2013, ECF No. 20 [hereinafter Pl.'s Answer].

In the course of developing his business, Defendant Abbott established a number of contacts with Pennsylvania. The Defendants made at least seventeen (17) sales to Pennsylvania over the past three years. Evidentiary Hr'g, at 19. Defendant Abbott alluded to more sales prior to that time, but did not produce records beyond this scope. See id. Defendant Abbott also engaged in a number of telephone conversations with individuals he knew to be in Pennsylvania when conducting Defendants' business. Id. at 36–38; 82; 85–87. Additionally, Defendant Abbott shipped at least one package bearing his name, “Ron Abbott,” to an address in Pennsylvania. Id. at 41–47. Moreover, although the domain name helecopterhelmet.com was originally hosted in Florida, this company subsequently moved to Pennsylvania where it is currently hosted. Id. at 107–11.

In response to Plaintiff's complaint, on March 29, 2013, Defendant Abbott filed a Motion to Dismiss for Lack of Personal Jurisdiction or, in the alternative, for Failure to State a Claim. Mot. Dismiss, at 1–2. The Court first addresses the issue of whether it can exercise personal jurisdiction over the Defendant.

II. DISCUSSIONA. PERSONAL JURISDICTION OVER ABBOTT

1. Legal Standards

a. Specific Personal Jurisdiction

Rule 4(e) of the Federal Rules of Civil Procedure permits a district court to assert personal jurisdiction over nonresidents to the extent allowed under the law of the state where the court sits. Fed. R. Civ. Pro. 4(e); Time Share Vacation Club v. Atl. Resorts, Ltd., 735 F.2d 61, 63 (3d Cir.1984). Pennsylvania's long-arm statute authorizes this Court to entertain jurisdiction over non-resident defendants, acting directly or by an agent, upon “[c]ontracting to supply services or things in this Commonwealth.” 42 Pa.C.S.A. § 5322(a)(2). Jurisdiction over such a person may be exercised “to the fullest extent allowed under the Constitution of the United States and may be based on the most minimum contact with this Commonwealth allowed under the Constitution of the United States.” 42 Pa.C.S.A. § 5322(b). Consequently, the reach of this Court's personal jurisdiction under the Pennsylvania statute is coextensive with the due process clause of the Fifth Amendment to the United States Constitution. See Time Share VacationClub, 735 F.2d at 63.

As general personal jurisdiction confers the broadest scope, the first step in the inquiry is to determine whether a defendant's contacts with the forum state are sufficient to support that jurisdiction. Mellon Bank (East) PSFS, Nat'l Assoc. v. Farino, 960 F.2d 1217, 1221 (3d Cir.1992). A party subject to the general jurisdiction of a state can be called to answer any claim against him in that forum, regardless of whether the cause of action has any connection to the state. Id. In the present case, however, the parties agree and the facts indicate that Defendant Abbott does not maintain sufficient contacts with Pennsylvania to be subject to the general jurisdiction of the courts of the Commonwealth. See Pl's. Br. Opp'n Mot. Dismiss 8–10, Apr. 22, 2013, ECF No. 27 [hereinafter Opp'n Mot. Dismiss].

Absent this general authority, a court may exercise jurisdiction only if specific personal jurisdiction exists. Mellon Bank, 960 F.2d at 1221. This inquiry focuses on the relationship among the' defendant, the forum, and the present litigation. Pinker v. Roche Holdings, Ltd., 292 F.3d 361, 368 (3d Cir.2002). The plaintiff's claim(s) must relate to or arise out of the defendant's contacts with the forum. Mellon Bank, 960 F.2d at 1221. Such contacts must be constitutionally sufficient so as to comport with the due process clause of the Fifth Amendment and with “traditional notions of fair play and substantial justice.” Int'l Shoe Co. v. 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)); see also Burger King Corp. v. Rudzewicz, 471 U.S. 462, 474–76, 105 S.Ct. 2174, 85 L.Ed.2d 528 (1985); Pinker, 292 F.3d at 368–69. Contacts that are merely “random, isolated or fortuitous” are not sufficient to confer jurisdiction. Keeton v. Hustler Magazine, Inc., 465 U.S. 770, 774, 104 S.Ct. 1473, 79 L.Ed.2d 790 (1984); World–Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 297, 100 S.Ct. 559, 62 L.Ed.2d 490 (1980). “Jurisdiction is proper, however, where contacts proximately result from actions by the defendant himself that create a ‘substantial connection’ with the forum State.” Burger King, 471 U.S. at 475, 105 S.Ct. 2174 (citing McGee v. Int'l Life Ins. Co., 355 U.S. 220, 223, 78 S.Ct. 199, 2 L.Ed.2d 223 (1957)). Further, “a corporate officer's contacts in his corporate capacity may be factored into the personal jurisdiction analysis when the officer is sued in his individual capacity.” Beistle Co. v. Party U.S.A., Inc., 914 F.Supp. 92, 95 (M.D.Pa.1996) (Caldwell, J.) (citing Donner v. Tams–Witmark Music Library, Inc., 480 F.Supp. 1229 (E.D.Pa.1979)).

The Third Circuit applies a three-part test to determine whether specific personal jurisdiction exists. O'Connor v. Sandy Lane Hotel Co., Ltd., 496 F.3d 312, 317 (3d Cir.2007). First, the defendant must have “purposefully directed its activities” at the forum state. Id. (quoting Burger King, 471 U.S. at 472, 105 S.Ct. 2174). Second, the litigation must “arise out of or relate to” at least one of those activities. Id. (quoting Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 414–15 n. 9, 104 S.Ct. 1868, 80 L.Ed.2d 404 (1984) (internal quotations omitted)). Third, if the first two requirements are met, a court may consider whether the exercise of jurisdiction otherwise “comports with ‘fair play and substantial justice.’ ” Id. (quoting Burger King, 471 U.S. at 476, 105 S.Ct. 2174).

b. Plaintiff Bears the Burden of Demonstrating Facts Sufficient to Establish Personal Jurisdiction

The plaintiff bears the burden to prove, by a preponderance of the evidence, facts that indicate minimum contacts sufficient to exercise specific personal jurisdiction. See Atiyeh v. Hadeed, CIV.A.04–2621, 2007 WL 853816, at *4 (E.D.Pa. Mar. 19, 2007) (“[I]f the Court conducts an evidentiary hearing, the plaintiff has the more substantial burden of proving that personal jurisdiction is proper by a preponderance of the evidence.”); see also Mellon Bank, 960 F.2d at 1223;Carteret Sav. Bank, FA v. Shushan, 954 F.2d 141, 146 (3d Cir.1992). “A Rule 12(b)(2) motion ... is inherently a matter that requires resolution of factual issues outside the pleadings, i.e. where in personam jurisdiction actually lies.” Time Share Vacation Club, 735 F.2d at 67 n. 9. Thus, once that defense is raised, the plaintiff must sustain its burden by establishing jurisdictional facts through sworn affidavits, testimony or other qualified evidence. See Patterson by Patterson v. F.B.I., 893 F.2d 595, 603–04 (3d Cir.1990); Time Share Vacation Club, 735 F.2d at 67 n. 9.

2. Analysis

A. Defendant Purposefully Availed Himself of the Privileges and Benefits of Pennsylvania

First, the defendant must have “purposefully availed itself of the privilege of conducting activities within the forum.” Sandy Lane...