Samson Cordage Works v. Wellington Puritan Mills, Inc.

• Decision Date: 25 April 1969
• Docket Number: Civ. A. No. 4095.
• Citation: 303 F. Supp. 155
• Parties: SAMSON CORDAGE WORKS v. WELLINGTON PURITAN MILLS, INC.
• Court: U.S. District Court — District of Rhode Island

303 F. Supp. 155

SAMSON CORDAGE WORKS v. WELLINGTON PURITAN MILLS, INC.

Civ. A. No. 4095.

United States District Court D. Rhode Island.

April 25, 1969.

George M. Vetter, Jr., Matthew W. Goring, Providence, R. I., for plaintiff.

Herbert B. Barlow, Jr., Providence, R. I., for defendant.

OPINION

PETTINE, District Judge.

This is an action for declaratory relief pursuant to 28 U.S.C. §§ 2201-2202, in which the plaintiff, a Massachusetts corporation with its principal place of business in Boston, Massachusetts, is suing the defendant, a Delaware corporation with its principal place of business in Louisville, Kentucky. At issue in this litigation is a trademark which the defendant has claimed is being infringed by the plaintiff. The plaintiff attacks that claim and seeks a declaration to the contrary. There is no dispute over the subject matter jurisdiction of the court, which is predicated upon 28 U.S.C. § 1332 (a) (1), the diversity jurisdiction, and upon 28 U.S.C. § 1338, the federal trademark jurisdiction.

This is defendant's motion to dismiss the complaint, or in the alternative to transfer this action to the Western District of Kentucky on the grounds that there is no in personam jurisdiction in this court; that service of process has not properly been performed; that venue is improper, as a matter of law; that venue is inconvenient, as a matter of discretion.¹

The pertinent facts for purposes of this motion are as follows. Defendant manufactures rope, twine and other products and distributes those products on a nationwide basis not through salesmen or district sales offices but rather through manufacturer's representatives who purchase the goods from defendant and resell them in given territories. In the New England area, defendant's manufacturer's representative, it is conceded by both parties, is T. W. Evans Cordage Co., a Johnston, Rhode Island corporation. Evans is paid on a commission basis for sales of defendant's products and performs many functions for defendant in Rhode Island and New England. Specifically, Evans (1) calls on jobbers, distributors and retailers handling defendant's products to solicit and write orders for defendant's products, recommends which of defendant's products each should carry and in what amount, furnishes and sets up advertising displays promoting defendant's products and furnishes other promotional and sales materials, and, as an expert with respect to defendant's products, recommends which product is best for particular applications; (2) forwards orders obtained from jobbers, distributors and retailers to defendant's main office for acceptance; (3) receives from defendant a commission on all sales of defendant's marine products within the area whether or not such sales are made on orders obtained by or processed through the representative; (4) assists purchasers of defendant's products by following up on delayed orders, calling defendant's attention to needed adjustments to or replacements of defective products of defendant; (5) sends its own and related personnel to defendant's main offices in Louisville to attend sales and other meetings; and, (6) continuously and systematically corresponds through the mails, by telephone and otherwise with personnel in defendant's main offices in Louisville on business relating to the sale and promotion of defendant's products; (7) exclusively represents defendant as its exclusive manufacturer's representative for the states of Rhode Island, Connecticut, Massachusetts, Maine, New Hampshire, and Vermont for all defendant's marine products; (8) employs others to, among other things, obtain orders for defendant's products; (9) participates in trade shows within and without the New England area by working in display booths bearing defendant's name; and (10) is otherwise responsible for soliciting, servicing, and conducting on behalf of defendant, sales, accounts and other business of substantial worth in excess of $50,000 annually.

By letter dated March 6, 1969 defendant charged that plaintiff was infringing defendant's allegedly registered trademark GOLD BRAID for certain braided marine rope and that the use, by plaintiff, of the term GOLD-N-BRAID for rope would inevitably cause confusion in competitive markets. One such market is Rhode Island in which both defendant's and plaintiff's products, including the allegedly similar ropes, are sold. Plaintiff subsequently commenced suit. The complaint and summons in this suit were served on Evans and on United States Corporation of Delaware, defendant's designated agent in defendant's state of incorporation.

At the outset clarity will be served by indicating the specific questions before this court. There is, first, the question of whether this court has in personam jurisdiction because defendant, through its representative Evans, either "does business" for jurisdictional purposes in Rhode Island or has "minimum contacts" for jurisdictional purposes in Rhode Island. Both of those questions are resoluble by reference, respectively, to Rhode Island common or statutory law. There is, second, the question whether a holding in defendant's favor on either of those questions is offensive to the Fifth Amendment to the Constitution. There is, third, the question whether process has properly been served under Rule 4 of the Federal Rules of Civil Procedure by the service on either Evans or United States Corporation of Delaware. There is, fourth, the question of whether venue is legally correct under 28 U.S.C. § 1391 (c) and, if incorrect, whether dismissal or transfer is the appropriate order under 28 U.S.C. § 1406(a). There is, fifth and finally, the question whether venue is convenient under 28 U.S.C. § 1404 (a).²

In Personam Jurisdiction

Doing Business

As seen, defendant has made a Rhode Island entity, Evans, its manufacturer's representative for the entire New England area for certain of its products, has had Evans obtain on its behalf orders throughout New England, and has paid Evans on a commission basis for all of its products sold anywhere in New England. Through and in concert with Evans it has in Rhode Island performed numerous other acts and tasks that go far beyond simple solicitation of orders.

That activities such as those of the defendant constitute "doing business" for jurisdictional purposes was clearly recognized by Judge Aldrich, now Chief Judge of the Court of Appeals for this Circuit, in Denis v. Perfect Parts, Inc., 142 F.Supp. 259, 260-261 (D.Mass.1956). There, a New York corporation had only a "sales representative" in Massachusetts and moved to quash service on the ground of lack of personal jurisdiction. The court denied the motion, stating:

"Defendant is a New York corporation dealing in auto parts and accessories. It has no employees, in the ordinary sense, in Massachusetts. It has a `sales representative' living in Greater Boston, hereinafter called salesman. Salesman solicits orders, on commission only. All orders are subject to acceptance in New York, and are filled from there. Salesman represents other companies in addition to defendant, and represents defendant in several other states, but his Massachusetts activities for defendant are regular and substantial. In addition to soliciting orders, he receives complaints, and renders some assistance in adjusting them. On occasion he carries samples of small parts and demonstrates them in connection with soliciting orders. He leaves catalogues and promotional material. From new customers he obtains credit information and forwards it to the defendant. Each month defendant furnishes salesman with a list of his customers who are delinquent. He makes some effort to collect these accounts, and not, infrequently receives checks, which he forwards to New York. The fact that he is not obliged to do this, and does it only because all orders are subject to New York approval and further orders will not be accepted from persons on the delinquent list until past due acounts have been paid, does not alter the fact that he is, in part, engaged in collections for defendant's benefit.

"Even if mere solicitation of business is not enough (but cf. Lone Star Package Car Co. v. Baltimore & O. R. Co., 5 Cir., 212 F.2d 147), and `something more' is required, I find and rule that such existed, and that defendant at the time of service was doing business in Massachusetts and subject to process. International Harvester Co. v. Com. of Kentucky, 234 U.S. 579, 34 S.Ct. 944, 58 L.Ed. 1479; Nichols v. Cowles Magazines, Inc., D.C.D.Mass., 103 F.Supp. 864; Id., D.C., 108 F. Supp. 883; Formmaster Corp. v. G. H. Bishop Co., D.C.S.D.N.Y., 138 F.Supp. 115; Wyshak v. Anaconda Copper Mining Co., 328 Mass. 219, 103 N.E. 2d 230; Jet Manufacturing Co. v. Sanford Ink Co., 330 Mass. 173, 112 N.E.2d 252."

Accordingly, I find no less so, that defendant at the time of service was doing business in Rhode Island and subject to process.

Minimum Contacts

The Rhode Island Long Arm Statute, Section 9-5-33 of the General Laws of Rhode Island, provides, in relevant part:

"Every foreign corporation * * * that shall have the necessary minimum contacts with the state of Rhode Island, shall be subject to the jurisdiction of the state of Rhode Island, and the courts of this state shall hold such foreign corporations * * * amenable to suit in Rhode Island in every case not contrary to the provisions of the constitution or laws of the United States."

Here, it cannot be doubted that defendant, through its very large sales in Rhode Island and through its agent and its extensive dealings with its Rhode Island representative, has substantial contacts with the forum state. It has voluntarily availed itself of the privilege of conducting activities within Rhode Island and its actions have had effect here.

Defendant's assertion that the instant litigation "bears no relation whatsoever to Rhode Island property, interest or law" will not stand scrutiny. The genesis of this...