Woodke v. Dahm
| Decision Date | 17 January 1995 |
| Docket Number | No. C 94-4050.,C 94-4050. |
| Citation | 873 F. Supp. 179 |
| Parties | Jerry A. WOODKE, Plaintiff, v. Patrick DAHM, Individually, Douglas Blass, Individually, and both d/b/a Cornbelt Manufacturing, Inc., Michael Depew, Individually, and d/b/a Clark Trailer Sales, Inc., Defendants. |
| Court | U.S. District Court — Northern District of West Virginia |
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Robert Kohorst, of the Kohorst Law Firm, Harlan, IA, for plaintiff.
Maurice B. Nieland of Rawlings, Nieland, Probasco, Killinger, Ellwanger, Jacobs & Mohrhauser, Sioux City, IA, appeared, for Iowa defendants.
Paul Yaneff of Sioux City, IA, for Fla. defendant DePew.
Jeffrey A. Sar of Baron, Sar, Goodwin, Gill, Lohr & Horak, Sioux City, IA, for Fla. defendant Clark.
ORDER GRANTING DEFENDANTS' MOTIONS TO DISMISS FOR IMPROPER VENUE
I. PROCEDURAL AND FACTUAL BACKGROUND ........................................ 182
A. Procedural Background .................................................... 182
B. Factual Background ....................................................... 184
II. LEGAL ANALYSIS ........................................................... 185
A. Subject Matter Jurisdiction And Failure To State A Claim .................. 185
1. Facial Or Factual Challenge Pursuant To Rule 12(b)(1) .................. 186
2. A Cognizable Federal Claim ............................................. 188
3. Rule 12(b)(6) Challenge For Failure To State A Claim ................... 192
B. Personal Jurisdiction ..................................................... 192
1. Minimum Contacts ....................................................... 192
2. The "Effects Test" For Personal Jurisdiction ........................... 195
C. Venue ..................................................................... 196
1. Venue In Lanham Act Cases .............................................. 197
2. Venue In This Case ..................................................... 199
III. CONCLUSION ............................................................... 200
Plaintiff, the owner of the trademark for Hawkeye Eagle brand semi-trailers, brought this action alleging unfair competition under the Lanham Act and requesting an injunction. Plaintiff further alleges state-law claims of breach of contract, with a demand for an accounting, and conspiracy to interfere with business relations. Some of the defendants, manufacturers of semi-trailers, are individuals and a corporation doing business in Iowa. The remaining defendants, dealers in semi-trailers, are an individual and a corporation doing business in Florida and other southern states. The Florida defendants have separately moved to dismiss the complaint as to them. The corporate Florida defendant has moved to dismiss for lack of personal jurisdiction and improper venue, while the individual Florida defendant has moved to dismiss on those grounds and on the additional grounds of lack of subject matter jurisdiction and failure to state a claim upon which relief can be granted. Although the court concludes that plaintiff has made a prima facie showing of personal jurisdiction over the Florida defendants, Iowa is not the proper venue for this action, and this case must therefore be dismissed.
Plaintiff Jerry Woodke, a handler and seller of semi-trailers, extras, and repair parts under the trademark "Hawkeye Eagle," filed his complaint in this matter on June 22, 1994. Defendants include Patrick Dahm and Douglas Blass individually, both residents of Early, Iowa, and their business, Cornbelt Manufacturing, Inc., an Iowa corporation with its principal place of business in Early, Iowa. Cornbelt is a manufacturer of semi-trailers. The remaining defendants are a Florida corporation and an individual residing in Florida. The Florida corporate defendant, Clark Trailer Sales, Inc., is a dealership for semi-trailers, with its principal place of business in Jacksonville, Florida. The individual Florida defendant is Michael DePew (a/k/a Chauncey Michael DePew, III), a resident of Jacksonville, Florida, and an employee and sometime officer of Clark.
Woodke's complaint is in seven counts. Count I alleges unfair competition in violation of the Lanham Trademark Act, 15 U.S.C. § 1125, by defendants, acting individually or in concert. Defendants are alleged to have published in the "Southeastern Truck Paper" an advertisement including a photograph of a Hawkeye Eagle brand hopper bottom trailer with Woodke's registered trademarks obscured, identifying the trailer instead as a "43' Cornbelt Peanut Hopper." Count II seeks a permanent injunction to protect Woodke's reputation and the reputation of Hawkeye Eagle brand trailers from irreparable harm. Count III alleges breach of an oral joint venture agreement by the Iowa defendants. Count IV seeks an accounting from the Iowa defendants of all monies received by those defendants that relate to the joint venture. Count V alleges that all defendants conspired together to destroy Woodke's business and to interfere with his business relations. Count VI alleges the willful failure by the Iowa defendants to perform warranty repairs as required by the joint venture agreement. Count VII alleges that the individual Iowa defendants and the Florida defendants caused the corporate Iowa defendants to breach its joint venture agreement with Woodke.
The Iowa defendants answered the complaint on September 2, 1994. The Florida defendants, however, separately moved to dismiss the complaint as to them.1 DePew moved to dismiss on October 18, 1994, pursuant to Fed.R.Civ.P. 12(b)(1), (2), (3), and (6), asserting lack of subject matter jurisdiction, lack of personal jurisdiction, improper venue, and failure to state a claim on which relief can be granted. Clark moved to dismiss the complaint on October 25, 1994, but only on the grounds of lack of personal jurisdiction and improper venue, pursuant to Fed. R.Civ.P. 12(b)(2) and (3). The Florida defendants have submitted briefs and affidavits in support of their motions to dismiss, as has Woodke in resistance. Clark requested oral argument on its motion, and the court held oral arguments on December 13, 1994. At the hearing, counsel Robert Kohorst, of the Kohorst Law Firm in Harlan, Iowa, appeared for the plaintiff. Counsel Maurice B. Nieland of Rawlings, Nieland, Probasco, and Killinger in Sioux City, Iowa, appeared for the Iowa defendants. Defendant DePew was represented by counsel Paul Yaneff of Sioux City, Iowa, and defendant Clark was represented by counsel Jeffrey A. Sar of Baron, Sar, Goodwin, Gill, Lohr & Horak, also in Sioux City, Iowa.
At the conclusion of the hearing, the court requested further briefing of the question of the proper venue for the Lanham Act claim. Plaintiff filed such a brief on December 27, 1994, and defendants DePew and Clark filed a joint reply on January 11, 1995. This matter is now fully submitted.
The Florida defendants assert that they do not have sufficient minimum contacts with the state of Iowa for this court to assert personal jurisdiction over them. They argue that Iowa is not the only district in which the lawsuit could have been brought, and that Woodke could have obtained personal jurisdiction over the Florida defendants in Florida. Initially, they also asserted that any wrongful acts occurred outside of the state of Iowa, presumably arguing that venue in this district is therefore improper.2 In their supplemental reply brief, the Florida defendants argue that courts have consistently held that venue in a Lanham Act case lies where the "passing off" occurred, and that any alleged "passing off" in this case occurred outside of Iowa.
Woodke asserts that both Florida defendants have sufficient contacts with this forum for this court to assert personal jurisdiction over them. Furthermore, he argues that a substantial part of the events giving rise to this lawsuit occurred in this district, making this district a proper venue, even if it is not the only proper venue.3 In his supplemental brief on venue, Woodke argues that under either a rule that venue lies where the "passing off" occurred or a rule that looks instead at where the injury is felt, venue is proper in Iowa. Woodke argues that the "roots" of any scheme to "pass off" his trailers as defendants' were in Iowa, because that is where any plan to do so was hatched and where the goods were prepared. Furthermore, he asserts that he will sustain injury from the "passing off" in Iowa.
The Florida defendants and Woodke have all supplied affidavits in support of their positions with regard to the motions to dismiss from which, in addition to the complaint and the answer of the Iowa defendants, the court has extracted the following facts. Woodke asserts that he has for many years conducted business in the design and selling of semi-trailers out of Schaller, Iowa. Woodke states that he obtained federal registration of his trademark for "Hawkeye Eagle" brand semi-trailers under the Lanham Act on May 31, 1981, with a first use in commerce on October 1, 1977. Woodke further asserts that he entered into a joint venture with the individual Iowa defendants, and subsequently with the corporation they formed, Cornbelt, all of Early, Iowa, for the purpose of manufacturing semi-trailers under the Hawkeye Eagle trademark. Woodke states that in late 1980 he obtained a federal identification number to enable Cornbelt to manufacture and sell Hawkeye Eagle semi-trailers. Prior to 1980, Woodke states that the Iowa defendants sold the trailers they manufactured through a now defunct company. Woodke asserts that he has not received his full share of the profits from his joint venture with the Iowa defendants.
Woodke also states that he established a distribution network for his trailers...
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