Goya Foods Inc. v. Oy
| Decision Date | 13 September 2013 |
| Docket Number | Civil No. 12–1859(GAG). |
| Parties | GOYA FOODS INC., et al, Plaintiffs, v. Golla OY, et al., Defendants. |
| Court | U.S. District Court — District of Puerto Rico |
OPINION TEXT STARTS HERE
Jorge L. Guerrero–Calderon, Cond Gallardo, San Juan, PR, for Plaintiffs.
Rossell Barrios–Amy, Mariana Negron–Vargas, Goldman Antonetti & Cordova, San Juan, PR, for Defendants.
ORDER ADOPTING REPORT AND RECOMMENDATION
On December 17, 2012 and April 17, 2013, Defendants filed two motions to dismiss for lack of personal jurisdiction and insufficient service of process or in the alternative, to transfer to the Northern District of Illinois. The court referred the motions to Magistrate Judge McGiverin for a report and recommendation. Judge McGiverin initially denied the motion to transfer (Docket No. 55), then ordered jurisdictional discovery regarding the issue of personal jurisdiction (Docket No. 56). After conducting discovery and full briefing by the parties, Judge McGiverin issued this Report and Recommendation. (Docket No. 91.) The parties were required to lodge any objections to this Report and Recommendation by September 9, 2013; however, no parties chose to do so.
After reviewing the Report and Recommendation and submissions of the parties, the court hereby ADOPTS the Report and Recommendation and DENIES Defendants' motions to dismiss at Docket Nos. 12 and 53.
SO ORDERED.
In an amended complaint, Goya Foods, Inc. (“GFI”) and Goya de Puerto Rico, Inc. (“GPR”) sued Golla Oy,1 Golla USA Inc. (“Golla USA”), Best Buy Stores Puerto Rico, LLC (“Best Buy PR”), and Best Buy Stores, L.P. (“Best Buy”), alleging trademark infringement and unfair competition under the Lanham Act and Puerto Rico law. Docket No. 35 (“Compl.”). Golla Oy and Golla USA moved to dismiss for lack of personal jurisdiction and improper venue, or in the alternative for transfer of venue. Docket Nos. 12 and 53. Golla Oy also moved to dismiss for improper service of process. Docket No. 12. This matter was referred for report and recommendation. Docket Nos. 13 and 54. Golla Oy's motion to transfer was denied. Docket No. 55. Subsequently, I authorized limited jurisdictional discovery, Docket No. 56, after which the parties submitted additional memoranda. Docket Nos. 78–80. For the reasons that follow, defendants' motions to dismiss should be DENIED. Furthermore, defendant Golla USA's motion to transfer is DENIED.
Golla Oy is a Finnish limited liability company that designs and sells carrying cases and similar accessories for portable electronics. Docket No. 12–2, ¶¶ 3–4. Its world headquarters is in Helsinki. Id., ¶ 2. Its founder, manager, and chief executive officer is Petri Kähkönen, who lives and works in the Espoo/Helsinki area. Id., ¶ 32. The summons and complaint were served on Arthur J. DeBaugh, Golla Oy's attorney and domestic representative in connection with its trademark application before the Patent and Trademark Office, in October 2012. Docket No. 12–1, ¶ 6. Golla Oy was also served with the summons and original complaint on January 31, 2013 by service on its agent in Chicago, Illinois. Docket No. 26.
Golla USA Inc. is a Delaware corporation based in Chicago, Illinois. Docket No. 12–2, ¶¶ 23–26. Its vice president, sales director, computer servers, files, and business records are there, and all Golla business in the Americas is managed from Chicago. Id., ¶¶ 25–31. Golla products enter the United States from China, and are mostly handled by a third party in Washington State. Some inventory is kept in Elgin, Illinois as well. Id., ¶ 27.
Golla Oy has shipped its products directly to vendors in Puerto Rico at least four times since 2005. Docket No. 80–2. As of 2008, Golla products were sold in T-mobile stores in Puerto Rico. Docket No. 80–3, at 8. Heli Siljamaki, then Golla Oy's Sales Director for North and Latin America, emailed a T-mobile Puerto Rico employee to understand how Golla products were selling in its stores. Id. at 6. In September 2009, Golla Oy filed three trademark applications with Puerto Rico's Department of State, but later withdrew the applications in October 2012. Docket Nos. 22–1 and 22–2. In August 2009, Siljamaki, who was now Sales Director for Golla USA, assisted Golla Oy with the trademark applications by contacting another T-mobile Manager to find out the number of T-mobile stores in Puerto Rico. Docket No. 80–3, at 2. Earlier in 2009, Golla USA designated Best Buy as an authorized dealer and granted Best Buy a license to use the Golla trademark for the promotion and sale of Golla products. Docket No. 80–5, at 1, 4. In March 2010, Siljamaki emailed another T-mobile employee, asking whether T-mobile Puerto Rico was interested in ordering some of Golla's new products. Docket No. 80–3, at 4.
As of January 28, 2013, Golla's website (www. golla. com) listed three retailers in Puerto Rico carrying Golla-branded products: “BestBuy,” “T–Mobile,” and “Sears.” Docket No. 19–1, at 5. The website is owned and maintained by Golla Oy. Docket No. 53–1, ¶ 18. Golla Oy designed its site as a way of attracting new distributors and retailers, rather than as a way for consumers to find Golla products. Docket No. 22–1, ¶¶ 7–8, 10. The site does not offer online sales. Id., ¶ 11. Plaintiffs' agent purchased Golla products at Best Buy, Kmart, and Sears stores in the San Juan metro area in April and December 2012. Docket No. 19–2.
GFI is a Delaware corporation with its headquarters in Secaucus, New Jersey. Compl., ¶ 1. GFI produces food and beverage products carrying the Goya brand. Id., ¶¶ 20–22. GPR is GFI's Puerto Rico affiliate located primarily in Bayamon, Puerto Rico. Id., ¶¶ 2–3.
Best Buy Stores Puerto Rico, LLC, is a limited liability company organized under Puerto Rico law. Compl., ¶ 8. Best Buy Stores, L.P. is a Virginia corporation with its principal place of business in Minnesota. Id., ¶ 9.
Plaintiffs' amended complaint asserts the following claims against all defendants: (1) trademark infringement under federal law; (2) trademark dilution under federal law; (3) false designation of origin under federal law; (4) trademark infringement under the laws of Puerto Rico; (5) unfair competition and dilution under the laws of Puerto Rico; (6) trade name infringement and unfair competition under the laws of Puerto Rico; (7) damage to goodwill and reputation under Puerto Rico law; and (8) violation of Puerto Rico intellectual and moral rights laws. Compl., ¶¶ 53–76.
Golla Oy and Golla USA separately moved to dismiss, or in the alternative, for transfer to the Northern District of Illinois.
In its motion to dismiss, Golla USA maintains it is a separate entity from Golla Oy and an independent basis for personal jurisdiction is required. Because conspiracy jurisdiction has not been clearly recognized in this circuit, Glaros v. Perse, 628 F.2d 679, 682 n. 4 (1st Cir.1980); In re New Motor Vehicles Canadian Exp. Antitrust Litig., 307 F.Supp.2d 145, 158 (D.Me.2004), and plaintiffs have failed to allege specific facts that would support a conspiracy theory of personal jurisdiction, In re Lupron Mktg. & Sales Practices Litig., 245 F.Supp.2d 280, 294 (D.Mass.2003) (), I decline to apply it here. Moreover, plaintiffs have not proffered direct evidence sufficient to overcome the strong presumption of corporate separateness. Escude Cruz v. Ortho Pharm. Corp., 619 F.2d 902, 905 (1st Cir.1980) (). Therefore, I will consider plaintiffs' arguments for personal jurisdiction over each defendant separately.
On a motion to dismiss for lack of personal jurisdiction, the plaintiff bears the burden of proving the court's jurisdiction over the defendant. See Negrón–Torres v. Verizon Commc'ns, Inc., 478 F.3d 19, 23 (1st Cir.2007). Most commonly, the plaintiff must make a prima facie showing, that is, proffer “evidence that, if credited, is enough to support findings of all facts essential to personal jurisdiction.” Daynard v. Ness, Motley, Loadholt, Richardson & Poole, P.A., 290 F.3d 42, 51 (1st Cir.2002). The defendant may put forward undisputed facts to rebut plaintiff's prima facie showing, but any factual disputes are construed in the plaintiff's favor when deciding the jurisdictional question. Id. The court, however, does not “credit conclusory allegations or draw farfetched inferences.” Ticketmaster–New York v. Alioto, 26 F.3d 201, 203 (1st Cir.1994).
Alternatively, the court may hold an evidentiary hearing and make findings of fact to “adjudicate the jurisdictional issue definitively before the case reaches trial.” Foster–Miller, Inc. v. Babcock & Wilcox Canada, 46 F.3d 138, 146 (1st Cir.1995). But such a hearing is only needed where a party so requests and where “issues of credibility are presented and must be resolved to determine an issue of fact material to the court's disposition.” Boit v. Gar–Tec Prods., Inc., 967 F.2d 671, 676 (1st Cir.1992).
Here, factual disputes and issues of credibility are not seriously implicated so as to require live testimony to make a determination. Therefore, I will apply the prima facie standard in evaluating whether plaintiffs have met their burden of establishing a basis for personal jurisdiction.
The court may exercise jurisdiction over a non-resident defendant through general or specific jurisdiction. United States v. Swiss Am. Bank, 274 F.3d 610, 618 (1st Cir.2001). “General jurisdiction exists when the litigation is not directly founded on the defendant's forum-based contacts, but the defendant has nevertheless engaged in continuous and systematic activity, unrelated to the suit, in the forum state.” United Elec., Radio & Mach. Workers of Am. v. 163 Pleasant St. Corp., 960 F.2d 1080, 1088 (1st Cir.1992). To...
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