Luverne Truck Equip., Inc. v. Worldwide Equip., Inc.
| Decision Date | 24 March 2016 |
| Docket Number | 4:15-CV-04115-KES |
| Parties | Luverne Truck Equipment, Inc., a Minnesota Corporation, Plaintiff, v. Worldwide Equipment, Inc., a Kentucky Corporation, Defendant. |
| Court | U.S. District Court — District of South Dakota |
Sander J. Morehead, Timothy R. Shattuck, James A. Power, Woods, Fuller, Shultz & Smith, PC, Sioux Falls, SD, for Plaintiff.
Eric J. Steinhoff, Lind, Jensen, Sullivan & Peterson, P.A., Minneapolis, MN, for Defendant.
Plaintiff, Luverne Truck Equipment, Inc., filed suit against defendant, Worldwide Equipment, Inc., asserting claims for trade dress infringement under 15 U.S.C. § 1125(a)
, trade dress dilution under 15 U.S.C. § 1125(c), false designation of origin under 15 U.S.C. § 1125(a), and unfair competition. Docket 1. Worldwide moves to dismiss the complaint for lack of personal jurisdiction and improper venue and, alternatively, moves to transfer venue to the Eastern District of Kentucky. Docket 7. Luverne opposes the motions. For the following reasons, Worldwide's motions are denied.
Construing the facts in a light most favorable to the non-moving party, Luverne, the facts are as follows:
Luverne is a corporation organized under the laws of Minnesota, and its principal place of business is Brandon, South Dakota. Docket 1 at 1. Luverne conducts business under the trade names of “Luverne Truck” and “Retrac.” It manufactures and sells automobile and truck accessories. Id.
Worldwide is a corporation organized under the laws of Kentucky, and its principle place of business is Prestonsburg, Kentucky. Id. Worldwide leases, sells, and services medium and heavy-duty trucks and truck accessories. Docket 8 at 2. Worldwide has purchased products from Luverne since 2010. Docket 12 at 3.
This dispute revolves around a product called the TUFF GUARD. The TUFF GUARD is a grille guard for mid-sized trucks and semi tractors. Id. at 2. According to Luverne, Worldwide issued purchase orders for this product and its accessories on 73 different occasions from March 2012 until July 2015.1 Id. at 4. The purchases were made on credit after Worldwide completed Luverne's credit application. Id. at 3.
In July 2015, Worldwide began ordering mounting brackets for the TUFF GUARD without ordering the guard itself. Id. at 5. Luverne alleges that Worldwide began manufacturing and selling a “copycat” grille guard that is indistinguishable from the TUFF GUARD. Worldwide allegedly mounted the copycat grille guard to trucks using TUFF GUARD mounting brackets. This alleged manufacturing and sales scheme is the foundation of Luverne's complaint against Worldwide.
When reviewing a motion under Rule 12(b)(2), the court must view the facts in a light most favorable to the party opposing the motion. Aaron Ferer & Sons Co. v. Diversified Metals Corp. , 564 F.2d 1211, 1215 (8th Cir.1977)
(citing Block Indus. v. DHJ Indus. Inc. , 495 F.2d 256, 259 (8th Cir.1974) ). The party asserting jurisdiction must make a prima facie showing that personal jurisdiction exists and that the opposing party can be subjected to jurisdiction within the forum state. K–V Pharm. Co. v. J. Uriach & CIA, S.A. , 648 F.3d 588, 591–92 (8th Cir.2011)
. The court can consider the pleadings, affidavits, exhibits, or other evidence when deciding whether a prima facie showing has been made. Dever v. Hentzen Coatings, Inc. , 380 F.3d 1070, 1072 (8th Cir.2004). “While the plaintiff[ ] bear[s] the ultimate burden of proof, jurisdiction need not be proved by a preponderance of the evidence[.]” Epps v. Stewart Info. Servs. Corp., 327 F.3d 642, 647 (8th Cir.2003) (citing Dakota Indus., Inc. v. Dakota Sportswear, Inc., 946 F.2d 1384, 1387 (8th Cir.1991) ).
In a diversity action, the court “ ‘may assume jurisdiction over nonresident defendants only to the extent permitted by the long-arm statute of the forum state and by the Due Process Clause.’ ” Romak USA, Inc. v. Rich , 384 F.3d 979, 987 (8th Cir.2004)
(quoting Dever , 380 F.3d at 1073 ). South Dakota's long arm statute asserts jurisdiction to the full reach of the due process clause. See SDCL 15-7-2(14) ; see also
Austad Co. v. Pennie & Edmonds , 823 F.2d 223, 225 (8th Cir.1987). Thus, for the court to assert jurisdiction over Worldwide, it must determine whether the exercise of jurisdiction comports with the mandates of the due process clause. See
Larson Mfg. Co. of South Dakota v. Connecticut Greenstar, Inc. , 929 F.Supp.2d 924, 926 (D.S.D.2013) (citing Dakota Indus., Inc. v. Ever Best Ltd. , 28 F.3d 910, 915 (8th Cir.1994) ).
“Due process mandates that jurisdiction be exercised only if [the] defendant has sufficient ‘minimum contacts' with the forum state, such that summoning the defendant to the forum state would not offend ‘traditional notions of fair play and substantial justice.’ ” Digi–Tel Holdings, Inc. v. Proteq Telecomms., Ltd., 89 F.3d 519, 522 (8th Cir.1996)
(quoting Int'l Shoe Co. v. Washington, 326 U.S. 310, 316, 66 S.Ct. 154, 90 L.Ed. 95 (1945) ). Analyzing the “minimum contacts” requirement depends on whether the court's jurisdiction over a party is said to be specific or general. See
Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 414–15, 104 S.Ct. 1868, 80 L.Ed.2d 404 (1984). A forum may exercise specific jurisdiction when the cause of action is “arising out of or related to the defendant's contacts with the forum[.]” Id. at 414, 104 S.Ct. 1868. By contrast, general jurisdiction may be asserted when a defendant's contacts with the forum are said to be sufficiently “ ‘continuous and systematic’ as to render [the defendant] at home in the forum State.” Goodyear Dunlop Tires Operations, S.A. v. Brown , 564 U.S. 915, 131 S.Ct. 2846, 2851, 180 L.Ed.2d 796 (2011). “Both theories of personal jurisdiction require ‘some act by which the defendant purposely avails itself of the privilege of conducting activities within the forum State, thus invoking the benefits and protections of its laws.’ ” Dever, 380 F.3d at 1073 (quoting Hanson v. Denckla, 357 U.S. 235, 253, 78 S.Ct. 1228, 2 L.Ed.2d 1283 (1958) ).
The Eighth Circuit Court of Appeals has established a five factor test for evaluating whether a defendant has minimum contacts with the forum state:
(1) the nature and quality of the contacts with the forum state; (2) the quantity of those contacts; (3) the relation of the cause of action to the contacts; (4) the interest of the forum state in providing a forum for its residents; and (5) the convenience of the parties.
Wells Dairy, Inc. v. Food Movers Int'l, Inc. , 607 F.3d 515, 518 (8th Cir.2010)
(citing Bell Paper Box, Inc. v. U.S. Kids, Inc. , 22 F.3d 816, 819 (8th Cir.1994) ). Because the first three factors are interrelated, the court can consider them together. Northrup King Co. v. Compania Productora Semillas Algodoneras Selectas, S.A. , 51 F.3d 1383, 1388 (8th Cir.1995)
. The fourth and fifth factors are less important in the analysis. Dever , 380 F.3d at 1074. The court finds that Worldwide does not have contacts with South Dakota to the extent necessary to assert general jurisdiction over it. Thus, the issue is whether Worldwide has sufficient contacts with South Dakota that enables the court to exercise specific jurisdiction over Worldwide.
Worldwide argues that its contacts with South Dakota are well below the level necessary for the court to exercise specific jurisdiction over it. Because its contacts are limited to purchasing products from a business located in South Dakota, Worldwide believes that these commercial transactions are insufficient grounds upon which a court can exercise specific jurisdiction. Worldwide urges the court to hold that the assertion of specific jurisdiction requires further intentional conduct of the defendant like the defendant's physical presence in the forum or the defendant sending materials into the forum to aid the manufacturing process. Docket 8 at 8-9.
As support for its position, Worldwide cites Bell Paper Box, Inc. v. Trans Western Polymers, Inc. , 53 F.3d 920, 921–22 (8th Cir.1995)
. In Bell, the court found that insufficient contacts to establish jurisdiction existed when an out-of-state buyer merely purchased a product and never entered the forum state. Bell , 53 F.3d at 921. The buyer had entered into a purchase agreement with a manufacturer and sent films to the manufacturer's forum state to ensure the final product was the appropriate color scheme. Id . Despite the fact that the defendant sent material to the forum state, the Eighth Circuit held that there were insufficient contacts for specific jurisdiction. Id. at 922. Worldwide argues that the same rationale applies here because it only purchased products from a business in South Dakota, and it did so without sending any material to assist with production.
Worldwide also cites Watlow Electric Manufacturing, Co. v. Patch Rubber Co. , 838 F.2d 999 (8th Cir.1988)
, as an example of the level of contacts necessary for a finding of specific jurisdiction. Docket 8 at 8. The buyer in Watlow requested a catalogue from the seller, sent raw materials to the forum state for the manufacturing process, and had a representative of the corporation attend a meeting and tour the production facility in the forum state. Id. (citing Watlow , 838 F.2d at 1000 ). According to Worldwide, the combination of contacts exemplified in Watlow is far beyond the contacts that Worldwide exhibits with South Dakota.
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