Hertz System, Inc. v. Hervis Corp.

• Decision Date: 21 October 1982
• Docket Number: No. 81 Civ. 6780 (JES).,81 Civ. 6780 (JES).
• Citation: 549 F. Supp. 796
• Parties: HERTZ SYSTEM, INC., Plaintiff, v. HERVIS CORP. and Arthur Stroffolino, Jr., Defendants.
• Court: U.S. District Court — Southern District of New York

549 F. Supp. 796

HERTZ SYSTEM, INC., Plaintiff, v. HERVIS CORP. and Arthur Stroffolino, Jr., Defendants.

No. 81 Civ. 6780 (JES).

United States District Court, S.D. New York.

October 21, 1982.

Blum, Kaplan, Friedman, Silberman & Beran, New York City, for plaintiff; Martin J. Beran, Michael I. Wolfson, New York City, of counsel.

Kenyon & Kenyon, New York City, for defendants; William J. Speranz, New York City, Thaddius J. Carvis, Stamford, Conn., of counsel.

SPRIZZO, District Judge:

Plaintiff, Hertz System, Inc., a Delaware corporation doing business in New York, commenced this action against defendants, Hervis Corp., a Connecticut corporation, and Arthur Stroffolino, Jr., its president, alleging that defendants infringed its service mark within and without the state of New York in violation of 15 U.S.C. § 1114. Both parties engage in the automobile rental business.

Defendants move to dismiss for lack of in personam jurisdiction and improper venue pursuant to Fed.R.Civ.P. 12(b)(2) and (3) or, in the alternative, for a change of venue to the District of Connecticut.

Plaintiff maintains that the Court has in personam jurisdiction over defendants pursuant to CPLR 302(a)(2) since defendants committed tortious acts in New York by placing advertisements containing the infringing mark in two local Connecticut newspapers¹ which are regularly available here.² Defendants contend that, since all their business activities are conducted in Connecticut, and since the appearance of the allegedly infringing mark in New York was purely fortuitous and not a result of any conduct by defendants, the Court lacks in personam jurisdiction.

In a trademark infringement case the commission of a tortious act takes place wherever the "passing off occurs." Vanity Fair Mills v. Eaton Co., 234 F.2d 633 (2d Cir.), cert. denied, 352 U.S. 871, 77 S.Ct. 96, 1 L.Ed.2d 76 (1956). Since defendants' allegedly infringing mark appeared in New York, a tortious act may well have been committed in this forum. However, to sustain jurisdiction under CPLR § 302(a)(2) it is necessary not only that a tortious act be committed within the forum, but also that the alleged tortious act be committed by the defendant. In this case, the conduct of the defendants consisted of placing an advertisement in a local newspaper in Connecticut.

While defendants may well have foreseen that the local newspaper would be transported into the State of New York such transportation was not the result of any act by the defendants or of any person acting under their control. It follows that the defendants have committed no tortious act within the State of New York which could properly form a basis for the exercise of personal...