Truenorth Cos., L.C. v. Trunorth Warranty Plans of N. Am., LLC

• Decision Date: 05 November 2019
• Docket Number: No. C17-31-LTS,C17-31-LTS
• Citation: 423 F.Supp.3d 604
• Parties: TRUENORTH COMPANIES, L.C., et al., Plaintiffs, v. TRUNORTH WARRANTY PLANS OF NORTH AMERICA, LLC, et al., Defendants.
• Court: U.S. District Court — Northern District of Iowa

423 F.Supp.3d 604

TRUENORTH COMPANIES, L.C., et al., Plaintiffs,

v.TRUNORTH WARRANTY PLANS OF NORTH AMERICA, LLC, et al., Defendants.

No. C17-31-LTS

United States District Court, N.D. Iowa, Cedar Rapids Division.

Signed November 5, 2019

Brett David Papendick, Dana L. Oxley, Jennifer Rinden, Mark L. Zaiger, Vincent Steven Geis, Shuttleworth & Ingersoll PLC, Cedar Rapids, IA, for Plaintiffs.

Michele L. Brott, Sarah Kathleen Franklin, Sharon K. Malheiro, Davis Brown Koehn Shors & Roberts, PC, Des Moines, IA, Jacob Steven Wharton, Womble Bond Dickinson (US) LLP, Winstron-Salem, NC, Jessica Mari Mendez, John Edgar Petite, Greensfelder, Hemker & Gale, PC, St. Louis, MO, for Defendants.

MEMORANDUM OPINION AND ORDER

Leonard T. Strand, Chief Judge

I. INTRODUCTION

This matter is before me on the following motions: (1) a motion (Doc. No. 271) to dismiss for lack of personal jurisdiction by defendant TruNorth Global Corp. (TN Global); (2) an appeal (Doc. No. 274) by defendant TruNorth Warranty Plans of North America, LLC (TN Warranty) of an order (Doc. No. 250) by Chief United States Magistrate Judge Kelly K.E. Mahoney granting in part plaintiffs' motion to make an untimely jury demand on Count VI and (3) a motion (Doc. No. 295) for reconsideration/clarification of my order (Doc. No. 266) granting in part and denying in part TN Warranty's motion for summary judgment. TN Global has filed a brief (Doc. No. 272) in support of its motion to dismiss for lack of personal jurisdiction, plaintiffs TrueNorth Companies, L.C. and TrueNorth Principals, L.C. (together, TrueNorth) have filed a resistance (Doc. No. 281) and TN Global has filed a reply (Doc. No. 308). With regard to TN Warranty's appeal (Doc. No. 274) on Judge Mahoney's order, TrueNorth has filed a resistance (Doc. No. 277), TN Warranty has filed a reply (Doc. No. 298) and TrueNorth has filed a sur-reply (Doc. No. 301). Finally, with regard to the motion (Doc. No. 295) for reconsideration/clarification of my summary judgment order, TrueNorth has filed a resistance (Doc. No. 296) and TN Warranty has filed a reply (Doc. No. 300).

Also pending is a motion (Doc. No. 255) in limine by TrueNorth, motion (Doc. No. 263) in limine by TN Warranty, and a motion (Doc. No. 309) to exclude testimony at trial or alternatively compel a deposition, both of which will be addressed by separate order.

II. PROCEDURAL BACKGROUND

The background of this case has been summarized in numerous orders that I find unnecessary to repeat here. See Doc. Nos. 40, 135, 250, 266.

On May 3, 2019, Chief United States Magistrate Judge Kelly K.E. Mahoney allowed TrueNorth to file a third amended complaint adding TN Global Corp. as a party defendant.¹ See Doc. No. 240.

On June 10, 2019, I entered an order on TN Warranty's motion for summary judgment, finding the following claims should go to trial:

• Count I – Trademark Infringement under 15 U.S.C. § 1114

• Count II – Trademark Infringement under 15 U.S.C. § 1125

• Count III – False Designation of Origin under 15 U.S.C. § 1125

• Count VI – Unfair Competition under 15 U.S.C. § 1125 and common law²

Doc. No. 266. Trial is scheduled for January 13, 2020.³ See Doc. No. 299.

III. DISCUSSION

A. Motion to Dismiss for Lack of Personal Jurisdiction

TN Global moves to dismiss the claims against it pursuant to Federal Rule of Civil Procedure 12(b)(2) for lack of personal jurisdiction. TN Global notes that it was formed on September 26, 2018,⁴ and was not in existence during much of the relevant time period. Its only officer is Kirk Eskridge. It contends it does not have any presence in Iowa and does not do business with any used commercial truck retailers or any other business in Iowa. See Doc. No. 272 at 2. It states it does not have any employees, has never had any in-person contacts with anyone in Iowa and is a wholly separate entity from TN Warranty. Id. It also represents it does not have any ownership in TN Warranty.⁵ Id.

TrueNorth alleges that TN Global sent "an email blast ... on February 19, 2019 to individuals and entities in Iowa, including to Joe Hoovestol of Lone Mountain Trucking, in Carter Lake, Iowa." See Doc. No. 132-1 at ¶ 6. The email received by Hoovestol states:

Hi, just a reminder you're receiving this email because you have expressed an interest in TruNorth. Don't forget to add TruNorth@TruNorthWarranty.com to your address book so we'll be sure to land in your inbox!

See Doc. No. 190-1 at 1. Based on this language, TrueNorth contends the email was likely sent to TN Warranty's other contacts in Iowa, including its admitted 45 "authorized dealers" in Iowa. Doc. No. 281 at 3 (citing Doc. No. 207 at 135-36). It notes that the email included TN Global's logo, advertised that TN Global provides "capital," "acquisitions" and "risk management" services and also included TN Warranty's logo, identifying it as the "leader in asset coverage." Doc. No. 281 at 3 (citing Doc. No. 190-1 at 3).

TrueNorth contends Eskridge's representation that TN Global is a "wholly separate company" from TN Warranty is not credible. It notes that TN Global's website highlights TN Warranty as one of "Our Services." Id. (citing Doc. No. 190-1 at 7). It also notes that the only contact information on TN Global's website is TN Warranty's address, as well as the same phone number, direct phone number and fax number displayed on TN Warranty's website. Id. (citing Doc. No. 190-1 at 8). It states that on TN Warranty's website (trunorthwarranty.com), a March 28, 2019, news release states "TruNorth Global™" is "the leader in medium and heavy-duty truck protection." See Doc. No. 281-2 at 1. TrueNorth points out TN Warranty made this same claim, as to itself, in a news release dated February 20, 2019. See Doc. No. 281-3 at 1. TrueNorth alleges that this evidence is contrary to Eskridge's implication that TN Global has done little, if any, domestic business and was formed only to "eventually hold foreign intellectual property rights." Doc. No. 281 at 4 (citing Doc. No. 272-1 at ¶ 5-6).

TrueNorth also cites a June 5, 2019, news release stating "MyTruckWarranty.com, powered by TrüNorth™, is the latest addition to the TrüNorth Global™ family of products and services." Id. (citing Doc. No. 281-4). TrueNorth argues this news release indicates that TN Warranty and TN Global consider themselves interchangeable and that TN Global is a continuation of TN Warranty. Id. (citing Doc. No. 281-4 at 4 ("At TrüNorth Global™, our commitment to our dealer partners and warranty customers has always driven everything we do from industry-leading product and service innovations to first-in-marketing technology solutions, including the industry's only mobile app for iOS and Android Devices.")). TrueNorth argues the statements in the news release refute Eskridge's claim that TN Global does not do business with any used commercial truck retailers or any other business in Iowa and does not have any retailers in Iowa. Id. It contends TN Global's "dealer partners" is referring to TN Warranty's authorized retailers, including the 45 retailers in Iowa.

In order to properly allege personal jurisdiction, "a plaintiff ‘must state sufficient facts in the complaint to support a reasonable inference that the defendant[ ] can be subjected to jurisdiction within the state.’ " Dever v. Hentzen Coatings, Inc. , 380 F.3d 1070, 1072 (8th Cir. 2004), cert. denied , 543 U.S. 1147, 125 S.Ct. 1304, 161 L.Ed.2d 108 (2005) (quoting Block Indus. v. DHJ Indus., Inc. , 495 F.2d 256, 259 (8th Cir. 1974) ). In resisting a Rule 12(b)(2) motion, the plaintiff has the burden of proving facts supporting such jurisdiction.

Wells Dairy, Inc. v. Food Movers Int'l, Inc. , 607 F.3d 515, 518 (8th Cir.), cert. denied , 562 U.S. 962, 131 S.Ct. 472, 178 L.Ed.2d 289 (2010). The court may consider the allegations of the complaint along with any affidavits and exhibits submitted by the parties. Id. The plaintiff's burden, in the absence of an evidentiary hearing, is to make a "minimal" prima facie showing of personal jurisdiction. K–V Pharm. Co. v. Uriach & CIA, S.A. , 648 F.3d 588, 592 (8th Cir. 2011). The court "must view the evidence in the light most favorable to the plaintiff and resolve all factual conflicts in its favor in deciding whether the plaintiff has made the requisite showing." Id.

"Where a federal court's subject matter jurisdiction over a case arises from the existence of a federal question, the court may exercise personal jurisdiction over a defendant if the plaintiff has properly served the defendant with process under the forum state's long-arm statute and if the defendant has sufficient contacts with the forum state to satisfy procedural due process." Enter. Rent-A-Car Co. v. U-Haul Int'l, Inc. , 327 F. Supp. 2d 1032, 1036 (E.D. Mo. 2004) (citing Omni Capital Int'l, Ltd. v. Rudolf Wolff & Co., Ltd. , 484 U.S. 97, 104-05, 108 S.Ct. 404, 98 L.Ed.2d 415 (1987) ); see also Dakota Indus., Inc. v. Dakota Sportswear, Inc. , 946 F.2d 1384, 1389 n.2 (8th Cir. 1991). Here, Iowa's long-arm statute provides that if a foreign entity or a nonresident person commits a tort, in whole or in part, against an Iowa resident, then "such acts shall be deemed to be doing business in Iowa" and service of process is authorized on that entity or person. Iowa Code § 617.3.

In general, due process requires that a nonresident defendant have at least "certain minimum contacts" with the forum state to support the exercise of personal jurisdiction. Int'l Shoe Co. v. Washington , 326 U.S. 310, 316, 66 S.Ct. 154, 90 L.Ed. 95 (1945). Those contacts must be sufficient that requiring the defendant to litigate in the forum state would not "offend traditional notions of fair play and substantial justice." Id. at 316, 66 S.Ct. 154 (internal quotation marks and citation omitted). They "must come about by an action of the defendant purposefully directed toward the forum State." Asahi Metal Indus. Co. v. Super. Ct. of Cal. , 480 U.S. 102, 112, 107 S.Ct. 1026, 94 L.Ed.2d 92 (1987) (internal citations...