Leg

under federal due process, ' “the three inquiries . . . collapse into two constitutional inquiries — one
state and one federal.” /d. But because the Seventh Circuit has found that “there is no operative
difference between the limits imposed by the Illinois Constitution and the federal limitations on
personal jurisdiction,” one due process inquiry suffices. Hyatt Int'l Corp. v. Coco, 302 F.3d 707, 715
(7" Cir. 2002) (citing RAR, Inc., 107 F.3d at 1276; Klump, 71 F.3d at 1371 n. 4). See also Janmark,
Inc, v. Reidy, 132 F.3d 1200, 1202 (7" Cir. 1997).
Il. Personal Jurisdiction Under Federal Constitutional Law

Personal jurisdiction pursuant to the Due Process Clause of the Fourteenth Amendment
requires that a defendant have “minimum contacts” with the forum state such that the exercise of
personal jurisdiction over the defendant does not offend “traditional notions of fair play and
substantial justice.” Int'l Shoe Co. v. Washington, 326 U.S. 310 (1945); RAR, Inc., 107 F.3d at 1277;
Allman, 2003 WL 1811531 at *3. The minimum contacts analysis varies depending on whether the
case involves specific or general jurisdiction. Because this case involves specific jurisdiction, the
Court will address that standard.”

Specific jurisdiction arises when the underlying suit relates to the defendant’s contacts with

the forum state. RAR, Jnc., 107 F.3d at 1277. In determining whether specific jurisdiction exists,

‘The Illinois long-arm statute provides in relevant part: “A court may also exercise
jurisdiction on any other basis now or hereafter permitted by the Illinois Constitution and the
Constitution of the United States.” 735 ILCS 5/2-209(c).

2 defendant is subject to general jurisdiction in Iinois only when it is either domiciled
in Illinois, see Euromarket Designs, Inc. v. Crate & Barrel Ltd., 96 F.Supp.2d 824, 833 (N.D. Ill.
2000), or “where the defendant has ‘continuous and systematic general business contacts with the
forum.”” RAR, Inc., 107 F.3d at 1277 (quoting Helicopteros Nacionales de Colombia, S.A. v.
Hall, 466 U.S. 408, 414 n. 8 (1984)) (internal quotations omitted). Plaintiff does not present an
argument supporting general jurisdiction nor do the facts of this case suggest that general
jurisdiction over Defendants is available.



transacts business in foreign jurisdictions over the Internet; (2) those in which a defendant has posted
information on the Internet, but has no further communication with potential customers via the
Internet; and (3) those in which the defendant operates an interactive web site that allows defendant
and potential customers in foreign jurisdictions to communicate regarding defendant’s goods or
services.” Berthold, 102 F. Supp. 2d at 932 (citations omitted). The first two categories represent
opposite ends of the jurisdictional spectrum. Courts may exercise personal jurisdiction over website
operators in the first category, but not in the second. Jd. at 932-33. The third category represents
the middle ground (and should perhaps be reordered as the second category if the “sliding scale”
terminology is to survive). Given some level of interaction on a website, a court may exercise
personal jurisdiction by considering “the level of interactivity and the commercial nature of the
exchange of information.” Jd.

In this case, although Plaintiff's complaint asserts that Defendants’ website allowed for
“interactive participation with visitors,” Plaintiffmakes no allegations about the level of interactivity
or the commercial nature of the interaction. Merely offering an email contact link is not sufficient
to confer personal jurisdiction on the basis of a website. See Trost v. Bauer, No. 01 C 2038, 2001
WL 845477, at *11 (NLD. Ill. July 24, 2001). Defendants’ use of the rangeking.com website,
regardless of the appearance of the SOFTEE mark, does not provide personal jurisdiction in this
forum.

Ill. Defendants’ Cease and Desist Letter

Plaintiff also argues that Defendants availed themselves of Illinois law when they sent a cease

and desist letter into Illinois. The Court disagrees. Merely sending an infringement letter into a state

does not confer personal jurisdiction over the sender by the courts of that state, See Jd. Thus,


California.” Calder, 465 U.S. at 791. The Seventh Circuit subsequently noted that “[t]here can be
no serious doubt after Calder v. Jones that the state in which the victim of a tort suffers the injury
may entertain a suit against the accused tortfeasor.” Janmark, 132 F.3d at 1202. Applying this
rationale, the Seventh Circuit in Janmark held that because the tort (interference with prospective
economic advantage) was not complete until the plaintiffs customer cancelled the order in question,
the injury and the tort therefore occurred in Illinois, where Plaintiff did business. Jd. Under the
Calder test, then, the state where the tort injury occurs may exercise jurisdiction over the out-of-state
defendant. This holding is significant because it would allow jurisdiction over a defendant who
caused injury in Illinois without any other contacts with the state.

Notably, the Seventh Circuit had addressed the issue of the Calder “effects test” in a
trademark infringement case three years before its holding in Janmark. Indianapolis Colts, Inc. v.
Metro, Baltimore Football Club Ltd. P’ship, 34 F.3d 410 (7" Cir. 1994). In that case, the court
declined to rely on the “austere” basis for personal jurisdiction presented by Calder. Jd. at 412.
Rather, the Seventh Circuit noted that “[iJn Calder as in all the other cases that have come to our
attention in which jurisdiction over a suit involving intellectual property (when broadly defined to
include reputation, so that it includes Calder itself) was upheld, the defendant had done more than
brought about an injury to an interest located in a particular state.” Jd. In Indianapolis Colts,
therefore, the Seventh Circuit explicitly refrained from holding that injury to intellectual property
in Indiana was enough — in itself — to confer jurisdiction over an out-of-state defendant. Instead,
the court pointed to the defendant’s additional contacts with Indiana in finding jurisdiction.

Plaintiff points out that several courts have applied the effects test after the Seventh Circuit

decided Janmark. See Bunn-O-Matic Corp. v. Bunn Coffee Serv., Inc., 88 F. Supp. 24 914, 920


‘
courts must decide whether a defendant has “purposefully established minimum contacts within the
forum State,” Burger King Corp. v. Rudzewicz, 471 U.S. 462, 475 (1985), and “consider whether,
by traditional standards, those contacts make personal jurisdiction reasonable and fair under the
circumstances.” RAR, Inc., 107 F.3d at 1277. That the defendant has “purposefully avail[ed] itself
of the privilege of conducting activities within the forum State, thus invoking the benefits and
protections of its laws,” Burger King Corp., 471 U.S. at 475 (quotations omitted), such that the
defendant should “reasonably anticipate being haled into court there” is crucial to this determination.
World-Wide Volkswagen Corp. v. Woodsen, 444 U.S. 286, 297 (1980).
ANALYSIS

Defendants argue that the Court does not have personal jurisdiction over them because they
have not conducted sufficient activities within the state such that they should anticipate being haled
into court in Illinois. In response, Plaintiff argues that the location of its injury confers jurisdiction,
and further points to several of Defendants’ activities in an attempt to establish the minimum
contacts required for personal jurisdiction. As discussed below, the Court finds these activities
insufficient to confer such jurisdiction.
I. Effects Test

Plaintiff argues that the Calder v. Jones “effects test,” as interpreted by the Seventh Circuit,
confers personal jurisdiction over Defendant in this case. Janmark, 132 F.3d at 1202 (citing Calder
v, Jones, 465 U.S. 783, 104 S. Ct. 1482, 79 L. Ed. 2d 804 (1984)). In Calder, a writer and editor in
Florida made allegedly defamatory statements about the plaintiff, a California resident. The
Supreme Court held that California courts had jurisdiction over the defamation suit because the

defendants’ “intentional conduct in Florida [was] calculated to cause injury to respondent in



owner of trademarked fonts, sued several foreign defendants. Finding that the defendants’ alleged
infringement was insufficient to support the exercise of personal jurisdiction in Illinois, the court
addressed the Janmark ruling in the trademark context. /d. Distinguishing the Janmark case as a
different type of tort, the court noted that

intellectual property infringement takes place in the state of the

infringing sales, rather than the state of the trademark owner’s

domicile for the purposes of tort provisions of the Illinois long-arm

statute. Thus, Illinois does not acquire jurisdiction merely by the fact

that plaintiff felt harm here. In order to establish jurisdiction over

defendants, plaintiff must show more.
Id. At 932.

This Court agrees that the Janmark ruling does not confer personal jurisdiction over alleged
trademark infringers simply by virtue of the trademark owner’s residence. This Court also agrees
that Plaintiff must show additional contacts with the forum state to support assertion of personal
jurisdiction over Defendants.

Il. Defendants’ Website Activities at www.rangeking.com

Plaintiff next argues that Defendant has engaged in additional contacts with the forum state
that confer jurisdiction on the Court. Plaintiff asserts that Defendants have availed themselves of
Illinois law by engaging in various activities in and affecting the state of Illinois. Carney and Virtex,
for example, have caused the SOFTEE mark to appear on the website located at
www.rangeking.com.

While the Seventh Circuit has not addressed the question of what Internet activity is

sufficient to trigger personal jurisdiction, courts in the this Circuit have adopted a “sliding scale”

approach that places Internet activity into three categories: “(1) those in which the defendant clearly



‘Minute Order Form (06/97)

United States District Court, Northern District of Illinois

If anor Magitrate Judge Amy J. St. Eve “thaw Assigned Judge
CASE NUMBER 03 C 3367 DATE 12/17/2003

CASE Softee vs. Mazner
TITLE
[In the following box (a) indicate the party filing the motion, e.g., plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature
MOTION: of the motion being presented.]
DOCKET ENTRY:
(1) Qo Filed motion of [ use listing in “Motion” box above.]
(2) oO Brief in support of motion due
(3) oO Answer brief to motion due . Reply to answer brief due.
4 oO Ruling/Hearing on set for at
(5) oO Status hearing[held/continued to] [set for/re-set for] on set for at
(6) Oo Pretrial conference[held/continued to] [set for/re-set for] on set for at
(7?) oO Trial{set for/re-set for] on at
(8) oO (Bench/Jury trial] [Hearing] held/continued to at
(9) Oo This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to}
OOFRCP4(m) OLocal Rule 41.1 CIFRCP41(a)(1) O FRCP41(a)(2).
ao) [Other docket entry] | Enter Memorandum Opinion and Order. Defendants’ motion to dismiss is
granted. Status hearing set for 12/22/03 is stricken. Any other pending dates are stricken. Any other
pending motions are denied as moot.
\ ‘
(11) @ {For further detail see order attached to the original minute order.]
No notices required, advised in open court.
No notices required. number of notices
Notices mailed by judge’s staff. DEG 18 2003
Notified counsel by telephone. docketed
wv | Docketing to mail notices.
¥_| Mail AO 450 form. dofeting dfputy inal
Copy to judge/magistrate judge.
courtroom 1: py ccney dase muilkd notice
THY deputy's “© Elonge
initials Date
arghimne fece)v
cont Rieke Of malng deputy nas



with Illinois even though the defendant distributed flyers and postcards and sold more than $25,000
in merchandise in Illinois). This Court does not consider the Golf Range Times publication to be
activity on the part of Defendants that contributes toward minimum contacts with Illinois.
V. Cybersquatting

Plaintiff points to McMaster-Carr Supply Co. v. Supply Depot, Inc., for the proposition that
this court has personal jurisdiction over Carney by virtue of his registration of the three SOFTEE-
related domain names. No. 98 C 1903, 1999 WL 417352 (N.D. Ill. June 16, 1999). That case is a
simple cybersquatting case, and is therefore distinguishable. The defendant in McMaster does not
claim to have any valid right to the underlying trademark rights, but registered the domain name in
order to harm the Plaintiff trademark owner. Jd. at *5 n.4 (“{nJotably, Defendant has acknowledged
that its purpose in registering the domain name is essentially to siphon off potential customers . . .
.”), The court based its ruling on the defendant’s intentions. Jd. at *4-5. Even viewed in the light
most favorable to the Plaintiff, Defendants have a greater claim to the underlying trademark than the
defendant in the McMaster case, Carney’s registration of domain names does not confer jurisdiction

on the Court.

11


Defendants’ letter to Plaintiff demanding that Plaintiff stop using the SOFTEE mark does not confer
personal jurisdiction over Defendants in this forum. Similarly, Defendant’s contact with Plaintiff
in ordering two golf practice mats is deficient as well. Plaintiff contends that this contact was part
ofDefendants’ scheme to infringe Plaintiff's trademark rights. Even if viewed merely as preparation
to send a cease and desist letter, Defendants’ ordering Plaintiff's product cannot support a finding
of personal jurisdiction in this case. If sending such a letter does not confer jurisdiction, then neither
does preparing to send such a letter by simply obtaining two of Plaintiff's products.
IV. Advertising in Illinois

Although Plaintiffs contend that Defendants “advertise” their golf mats with the SOFTEE
name in Illinois through the Golf Range Times, the combined effect of James Turner’s two affidavits
leads this Court to reject Plaintiff's assertion. As part of its response to Defendants’ motion to
dismiss, Plaintiff offered a very selective affidavit from Mr. Turner, the President of Forecast Golf
Group, Inc. Turner’s company publishes the Golf Range Times six times a year to nationwide
distribution. Turner’s first affidavit contains no mention of Defendants or their products. In his
second affidavit, submitted by Defendants in their reply, Tuner describes the “equipment review”
section of his company’s publication. Defendants’ golf mats have appeared in Turner’s publication
not as a paid advertisement, but as an unsolicited product review — along with Plaintiff's product.
Defendants did not solicit the mention of their golf mat in the Golf Range Times.

Plaintiffs argument that Defendants’ advertisement for their website, www.rangeking.com,
in the Golf Range Times constitutes sufficient minimum contacts with Illinois fails because
Defendants’ advertisement is not related to the accused infringement and contains nothing that is

specifically directed toward Illinois. See Trost, 2001 WL 845477, at *9 (finding insufficient contacts

10



(C.D. Ill. 2000) (agreeing with previous uncited ruling on “effects test” with no real discussion of
application of Janmark); U.S. Tsubaki, Inc. v. Indus. Research Team, No 00 C 4447, 2001 WL
99696, at *1-2 (N.D. Ill. Feb. 1, 2001) (finding personal jurisdiction over defendant based on the
distribution of an allegedly misleading report within Illinois); Ridell, Inc. v. Monica, No, 03 C 3309,
2003 WL 21799935 at *3 (N.D. Ill. July 25, 2003) (holding in trade secret case that Janmark allows
jurisdiction over tortfeasors who cause injury in Illinois, but noting that this particular defendant also
directed activities into the forum state by mailing an advertisement to the Chicago Bears); Clearclad
Coatings, Inc. v. Xontal Ltd., No. 98 C 7199, 1999 WL 652030, at *7 (N.D. Ill. Aug. 20, 1999)
(explicitly stating in non-trademark context that additional contacts with the forum state are not
necessary when a plaintiff is injured by a business tort in Illinois, but also pointing out that the
defendant’s business trips were likely to “meet the low threshold for showing of entry into the forum
state”).

Of the cases cited by Plaintiff in favor of applying Janmark’s ruling to this case, only Bunn-
O-Matic involves trademark infringement. Bunn-O-Matic, 88 F. Supp. 2d at 920. In that case,
however, the court addressed the renewal of a prior motion to dismiss heard before a different judge.
Id. at 919. Accordingly, the court indicated that it would follow the previous opinion — not cited
by Plaintiffs here — “unless new information convinces the Court that an error has occurred, other
than the application of the law to the facts.” Jd. at 920. Because of this procedural posture, this
Court does not find the Bunn-O-Matic opinion to be persuasive on the issue of applying the Janmark
case to the realm of trademark law. Bunn-O-Matic further has no precedential effect in this Court.

Defendants, on the other hand, cite Judge Holderman’s opinion in Berthold Types Ltd. v. Eur.

Mikrograf Corp., 102 F. Supp. 2d 928, 931-32 (N.D. ll. 2000). In that case, the plaintiff, an Illinois


extent that users may send e-mail to the operators of the website.
LEGAL STANDARDS

I, 12(b)(2) Standards

A Rule 12(b)(2) motion to dismiss for lack of personal jurisdiction tests whether a federal
court has personal jurisdiction over a defendant. See Fed.R.Civ.P. 12(b)(2). A plaintiff bears the
burden of demonstrating the existence of personal jurisdiction over a defendant. RAR, Inc. v. Turner
Diesel, Ltd., 107 F.3d 1272, 1276 (7" Cir. 1997). A plaintiff need only make a prima facie showing
that jurisdiction over a defendant is proper. Michael J. Neuman & Assoc., Ltd. v. Florabelle
Flowers, Inc., 15 F.3d 721, 724-25 (7" Cir. 1994). In determining whether a plaintiff has met this
burden, a court may consider affidavits from both parties. Turnock v. Cope, 816 F.2d 332, 333 (7"
Cir. 1987). A court must also resolve all factual disputes in the plaintiff's favor and accept as true
all uncontroverted allegations made by both plaintiffs and defendants, Saylor v. Dyniewski, 836 F.2d
341, 342 (7" Cir. 1988); Turnock, 816 F.2d at 333; Allman v. McGann, No. 02 C 7442, 2003 WL
1811531 at * 2 (N.D. Il. Apr. 4, 2003).

A federal court’s exercise of personal jurisdiction over a non-resident defendant is proper
“only if a court of the state in which it sits would have such jurisdiction.” Klump v. Duffus, 71 F.3d
1368, 1371 (7" Cir. 1995) (quoting Wilson v. Humphreys (Cayman) Ltd., 916 F.2d 1239, 1243 (7"
Cir. 1990)). Thus, this Court has jurisdiction “only if a{n Illinois State Court] would have such
jurisdiction.” Jd, Any exercise of jurisdiction over a defendant must comport with state statutory
law, state constitutional law, and federal constitutional law. RAR, Inc., 107 F.3d at 1276. Because

the Illinois long-arm statute authorizes the exercise of personal jurisdiction to the extent allowed



company, in October 2001. Capital T had been making and selling golf mats with the SOFTEE
name since 1998. Prior to 2000, Defendant Mazner worked for Capital T’s distributor in the United
States. In 2000, Mazner began operating an Indiana corporation, Softee, Inc. (“SI”), on behalf of
Capital T. Through SI, Mazner handled distribution of Capital T’s products. After buying Capital
T’s assets, SM hired Mazner to distribute mats in the United States in connection with the name
SOFTEE. Mazner worked as SM’s president of North American Sales until October 31, 2002.
Defendants sell golf practice mats in connection with the SOFTEE name, and dispute
Plaintiff's right to the name. Defendant Carney and his wife serve as the directors of Defendant
Virtex, which had been a distributor of Plaintiff's golf mats. On November 22, 2002, Carney

99 46,

registered the domain names “softeemats.com,” “softeegolf.com,” and “softeegolfmat.com.” On
approximately December 13, 2002, Mazner and Carney filed an application to register SOFTEE for
use with golf practice mats. In January 2003, Carney contacted SM and requested two mats
purportedly for use at the Professional Golf Association 2003 merchandise show to be held in
Florida in late January. Days after SM shipped the requested mats, Defendants sent SM a letter
asserting rights to the SOFTEE trademark and demanding that SM stop using the mark. This suit
followed.

At the merchandise show mentioned above, Mazner and Carney informed distributors of
SM’s mats that SM has no right to use the SOFTEE name. Additionally, an industry publication,
Golf Range Times, featured Defendants’ products — including the SOFTEE mark — in the spring
of 2003. The Golf Range Times is distributed throughout the country, including the State of Illinois.

Virtex operates a website located at www.rangeking.com. At some time after Mazner was

terminated by SM, this website displayed the SOFTEE name. This website is interactive to the



IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION
SOFTEE MANUFACTURING, LLC, )
)
Plaintiff, )
)
v. ) No. 03 C 3367
)
STEVEN MAZNER and, )
WILLIAM H. CARNEY, individually; and ) Opa om
THE VIRTEX GROUP, INC., a Texas ) aes Te
corporation, ) lL ? . wi)
} 2003

Defendants.

MEMORANDUM OPINION AND ORDER

AMY J. ST. EVE, District Judge:

Plaintiff Softee Manufacturing, LLC, (“SM”) sued Defendants Steven Mazner, William
Camey, and The Virtex Group, Inc. (“Virtex”), alleging trademark infringement and several related
claims in connection with use of the trademark SOFTEE. Defendants now move for dismissal for
lack of personal jurisdiction and improper venue. For the reasons discussed below, Defendants’
motion is granted.

BACKGROUND

SM is a limited liability company located in Illinois. SM has two members, Tom and Larry
Moore. Defendant Mazner resides in Florida; Camey resides in Texas; and Virtex is incorporated
in Texas with its headquarters located in Corpus Christi, Texas. SM and its subsidiary, Softee
Manufacturing Ltd., make and sell golf mats typically purchased by the operators of golf practice
ranges. Such mats are generally comprised of an artificial hitting surface anda flexible tee. SM sells
its mats under the SOFTEE name.

SM entered the golf mat business after purchasing the assets of Capital T, a United Kingdom

ne,



CONCLUSION
The Defendants actions, taken individually or collectively, do not create the minimum
contacts necessary for the Court to assert personal jurisdiction over them. It is unnecessary to

address Defendants’ objections to venue. Defendants’ motion to dismiss is granted.

Dated: December 17, 2003 Entered:

Amy J. St. Eva\)
United States District Judge

12