UNITED STATES DISTRICT COURT

DISTRICT OF NEW JERSEY

 

 :

PIANO WELLNESS, LLC, :

: Civ. A. No. 11-1601 (NLH)(AMD)

Plaintiff, :

:

v. :

: OPINION

CHARLOTTE K. WILLIAMS, a :

citizen of the State of :

Georgia, individually and :

trading as :

KeyboardWellness.com, :

and DOES I through X, : 

inclusive, :

:

Defendant. :

 

APPEARANCES:

Elliott J. Stein, Esq.

Stevens & Lee, P.C.

600 College Road East

Suite 4400

Princeton, NJ 08540

Attorneys for Plaintiff

Charlotte K. Williams

2550 Sandy Plains Road

Suite 225

Marietta, GA 30066

Defendant Pro Se

HILLMAN, District Judge:

This case concerns an alleged infringement of federally

registered and common law trademarks through an internet website. 

Presently before the Court is the motion of Defendant pro se,

Charlotte K. Williams, seeking dismissal of Plaintiff’s claims,

Case 1:11-cv-01601-NLH-AMD Document 17 Filed 12/21/11 Page 1 of 24 PageID: 137
with prejudice, for lack of personal jurisdiction pursuant to

FED. R. CIV. P. 12(b)(2). Plaintiff, Piano Wellness, LLC, has

filed a cross-motion seeking jurisdictional discovery or,

alternatively, transfer of the case to another federal district

court. For the reasons expressed below, Defendant’s motion to

dismiss is denied, and Plaintiff’s cross-motion for

jurisdictional discovery or transfer of the case is dismissed as

moot.

I. BACKGROUND

On March 22, 2011, Plaintiff, a limited liability company

with a principal place of business in New Jersey, filed a

complaint against Defendant, a citizen of the State of Georgia. 

Plaintiff alleges that Defendant has engaged in unfair

competition and has infringed on Plaintiff’s federally registered

trademarks, “PIANO WELLNESS SEMINAR” and “KEYBOARD WELLNESS

SEMINAR,” and Plaintiff’s common law trademarks, “PIANO WELLNESS”

and “KEYBOARDWELLNESS,” in violation of federal and New Jersey

law by adopting a trademark that is confusingly similar to

Plaintiff’s federally registered and common law trademarks. 

Plaintiff specifically contends in the complaint that on or

about December 30, 2005, Defendant adopted the trademark

“KEYBOARDWELLNESS.COM” knowing that Plaintiff had already adopted

and had been using its federally registered trademarks and common

law trademarks. (Compl. ¶¶ 21-22.) Defendant also allegedly

2

Case 1:11-cv-01601-NLH-AMD Document 17 Filed 12/21/11 Page 2 of 24 PageID: 138
filed, on March 31, 2009, an application with the United States

Patent and Trademark Office to register the trademark “KEYBOARD

WELLNESS.COM.” (Id. at ¶ 23.) 

Plaintiff asserts that Defendant’s adoption and use of the

trademark “KEYBOARD WELLNESS.COM” has caused confusion in the

marketplace as to the source and quality of the goods and

services marketed and sold by Plaintiff. (Id. at ¶ 25.) 

Further, Plaintiff alleges that Defendant has infringed its

federally registered trademarks by “the adoption, sale, offering

for sale, promotion and advertisement of goods and services

similar to those offered by [Plaintiff][.]” (Id. at ¶ 37.) 

Plaintiff asserts claims for infringement of federally registered

trademarks (Count One), infringement of common law rights in

trademarks and trade name (Count Two), infringement of federally

registered trademarks pursuant to 15 U.S.C. § 1114 (Count Three),

false designation of origin pursuant to 15 U.S.C. § 1125(A)

(Count Four), unfair competition (Count Five), and unfair trade

practices (Count Six).

In lieu of an answer, Defendant filed the motion to dismiss

presently before the Court. In the motion, Defendant asserts

that she lacks any contacts with New Jersey that would provide

the Court with personal jurisdiction over her. Defendant

represents that she is a citizen of the State of Georgia and is

the sole owner of the website KeyboardWellness.com. (Def.’s Mem.

3

Case 1:11-cv-01601-NLH-AMD Document 17 Filed 12/21/11 Page 3 of 24 PageID: 139
of Law in Supp. of Mot. to Dismiss for Lack of Jurisdiction

(hereinafter, “Def.’s Br.”) 2.) Defendant contends that she has

no offices or employees in the State of New Jersey, never

conducted business through the website in the State of New

Jersey, and has no plans to conduct business in the State of New

Jersey at any time in the future. (Id. at 2, 3.) Defendant

argues that her website is a “passive” website that “merely

provides contact and schedule information” and that the alleged

contact at issue in this case did not arise out of conduct in the

State of New Jersey. (Id. at 3.)1

Plaintiff contends that Defendant has the requisite contacts

with the State of New Jersey, including (1) Defendant’s formation

of a New Jersey corporation, Piano Wellness Enterprise

Corporation (hereinafter, “PWEC”), whose business is now

conducted by Plaintiff; (2) Defendant’s status as a shareholder

of PWEC at the time she claims to have adopted the trademark that

is the subject of this action; (3) Defendant’s communications

with PWEC in New Jersey over a three-year period; (4) Defendant’s

alleged “campaign to harass and interfere with” Plaintiff’s

business, including having had Plaintiff’s website removed from

the internet three separate times; and (5) Defendant’s alleged

1. Defendant also alleges that Plaintiff filed the present

action solely to obtain a suspension of the proceedings pending

before the Trademark Trial and Appeal Board in connection with

Defendant’s application for the mark “KeyboardWellness.com.” 

(Def.’s Br. 2-3.) 

4

Case 1:11-cv-01601-NLH-AMD Document 17 Filed 12/21/11 Page 4 of 24 PageID: 140
“pattern of threats targeting” Plaintiff in New Jersey. (Br. in

Opp. to Mot. to Dismiss and in Supp. of Cross-Mot., in the

Alternative, for Jurisdictional Discovery and Transfer

(hereinafter, “Pl.’s Opp. Br.”) 3.) Plaintiff requests

jurisdictional discovery to uncover whether Defendant has

additional contacts with New Jersey. (Id. at 3.) Plaintiff also

notes that if the Court determines there is not a sufficient

basis to exercise personal jurisdiction over Defendant, then the

case should be transferred rather than dismissed with prejudice. 

(Id.) 

II. JURISDICTION

The Court has subject matter jurisdiction over this

trademark infringement action pursuant to 28 U.S.C. § 1338(a). 

Although Defendant challenges this Court’s personal jurisdiction,

“it is well established that the trial court has inherent power

and jurisdiction to decide whether it has jurisdiction.” See In

re Automotive Refinishing Paint Antitrust Litig., 358 F.3d 288,

303 (3d Cir. 2004). 

III. DISCUSSION

A. Standard of Review

 Federal Rule of Civil Procedure 12(b)(2) provides for

dismissal of an action when the Court does not have personal

jurisdiction over a defendant. “Once challenged, the plaintiff

bears the burden of establishing personal jurisdiction.” 

5

Case 1:11-cv-01601-NLH-AMD Document 17 Filed 12/21/11 Page 5 of 24 PageID: 141
O’Connor v. Sandy Lane Hotel Co., Ltd., 496 F.3d 312, 316 (3d

Cir. 2007) (citing Gen. Elec. Co. v. Deutz AG, 270 F.3d 144, 150

(3d Cir. 2001)). In deciding a motion to dismiss for lack of

personal jurisdiction, the Court must “accept all of the

plaintiff’s allegations as true and construe disputed facts in

favor of the plaintiff.” Carteret Sav. Bank v. Shushan, 954 F.2d

141, 142 n.1 (3d Cir.), cert. denied, 506 U.S. 817 (1992)

(citations omitted).2

A defendant is subject to the jurisdiction of a United

States district court if the defendant “is subject to the

jurisdiction of a court of general jurisdiction in the state

where the district court is located[.]” FED. R. CIV. P.

4(k)(1)(A). “A federal court sitting in New Jersey has

jurisdiction over parties to the extent provided under New Jersey

state law.” Miller Yacht Sales, Inc. v. Smith, 384 F.3d 93, 96

(3d Cir. 2004)(citations omitted). The New Jersey long-arm

2. There is a “significant procedural distinction” between a

motion pursuant to Rule 12(b)(2) and a motion pursuant to Rule

12(b)(6). Time Share Vacation Club v. Atlantic Resorts, Ltd.,

735 F.2d 61, 66 n.9 (3d Cir. 1984). “A Rule 12(b)(2) motion,

such as the motion made by the defendants here, is inherently a

matter which requires resolution of factual issues outside the

pleadings, i.e. whether in personam jurisdiction actually lies. 

Once the defense has been raised, then the plaintiff must sustain

its burden of proof in establishing jurisdictional facts through

sworn affidavits or other competent evidence. . . . [A]t no

point may a plaintiff rely on the bare pleadings alone in order

to withstand a defendant's Rule 12(b)(2) motion to dismiss for

lack of in personam jurisdiction. Once the motion is made,

plaintiff must respond with actual proofs, not mere allegations.” 

Id. (citation omitted).

6

Case 1:11-cv-01601-NLH-AMD Document 17 Filed 12/21/11 Page 6 of 24 PageID: 142
statute “permits the exercise of personal jurisdiction to the

fullest limits of due process.” IMO Indus., Inc. v. Kiekert AG,

155 F.3d 254, 259 (3d Cir. 1998) (citing DeJames v. Magnificence

Carriers, Inc., 654 F.2d 280, 284 (3d Cir. 1981)). 

Under the Due Process clause, the exercise of personal

jurisdiction over a non-resident defendant is appropriate when

the defendant has “certain minimum contacts with [the forum

state] such that the maintenance of the suit does not offend

‘traditional notions of fair play and substantial justice.’” 

Int’l Shoe Co. v. Washington, 326 U.S. 310, 316 (1945) (quoting

Milliken v. Meyer, 311 U.S. 457, 463 (1940)). 

A defendant establishes minimum contacts by “‘purposefully

avail[ing] itself of the privilege of conducting activities

within the forum State,’” thereby invoking “‘the benefits and

protections of [the forum State’s] laws.’” Asahi Metal Indus.

Co., Ltd. v. Sup. Ct. of California, 480 U.S. 102, 109 (1987)

(quoting Burger King Corp. v. Rudzewicz, 471 U.S. 462, 475

(1985)). This “purposeful availment” requirement assures that

the defendant could reasonably anticipate being haled into court

in the forum and is not haled into a forum as a result of

“random,” “fortuitous” or “attenuated” contacts with the forum

state. See World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286,

297 (1980); see also Burger King Corp., 471 U.S. at 472, 475

(internal citations omitted).

7

Case 1:11-cv-01601-NLH-AMD Document 17 Filed 12/21/11 Page 7 of 24 PageID: 143
In deciding whether a defendant’s contacts with a forum are

sufficient to confer personal jurisdiction over that party, the

Court must consider whether such contacts are related to or arise

out of the cause of action at issue in the case. The Court may

exercise specific personal jurisdiction over a defendant where

the cause of action is related to or arises out of activities by

the defendant that took place within the forum state. 

Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408,

414 n.8 (1984). If the cause of action has no relationship to a

defendant’s contacts with a forum state, the Court may

nonetheless exercise general personal jurisdiction if the

defendant has conducted “continuous and systematic” business

activities in the forum state. Id. at 416. 

Once the Court determines that the defendant has minimum

contacts with the forum state, it must also consider whether the

assertion of personal jurisdiction over the defendant “comport[s]

with ‘fair play and substantial justice’” to satisfy the due

process test. Burger King Corp., 471 U.S. at 476 (quoting Int’l

Shoe, 326 U.S. at 320). In this regard, it must be reasonable to

require the defendant to litigate the suit in the forum state,

and a court may consider the following factors to determine

reasonableness: the burden on the defendant, the forum state’s

interest in adjudicating the dispute, the plaintiff’s interest in

obtaining convenient and effective relief, the interstate

8

Case 1:11-cv-01601-NLH-AMD Document 17 Filed 12/21/11 Page 8 of 24 PageID: 144
judicial system’s interest in obtaining an efficient resolution

of controversies, and the shared interest of the several States

in furthering fundamental substantive social policies. Id. at

477 (citing World Wide Volkswagen, 444 U.S. at 292). 

The traditional paradigm set forth above for analysis of

long-arm jurisdiction applies even though the present case arises

in the context of the internet. The New Jersey Supreme Court, in

Blakey v. Continental Airlines, 164 N.J. 38 (2000), declined to

adopt new principles to analyze long-arm jurisdiction in the

internet context. Blakey, 164 N.J. at 64 (“Rather than to

attempt to create a new order of jurisdictional analysis adapted

to the Internet, we prefer in this case to adhere to the

basics.”). The New Jersey Supreme Court noted that “[a]lthough

advances in electronic and Internet technology have created new

ways to communicate, the sources of personal jurisdiction remain

constant.” Id. at 46.

B. Analysis

1. General Jurisdiction

The Court, through general jurisdiction, may exercise

jurisdiction over non-resident defendants even when the cause of

action does not arise out of or relate to the non-resident

defendants’ activities in the forum state. A plaintiff “must

show significantly more than mere minimum contacts to establish

general jurisdiction.” Provident Nat'l Bank v. California Fed.

9

Case 1:11-cv-01601-NLH-AMD Document 17 Filed 12/21/11 Page 9 of 24 PageID: 145
Sav. & Loan Ass’n, 819 F.2d 434, 437 (3d Cir. 1987). The

defendant’s contacts with the forum state must be “continuous and

systematic.” Helicopteros, 466 U.S. at 415-16. “Obviously this

is a much higher threshold to meet for the facts required to

assert this ‘general’ jurisdiction must be ‘extensive and

persuasive.’” Reliance Steel Prods. Co. v. Watson, Ess, Marshall

& Enggas, 675 F.2d 587, 589 (3d Cir. 1982) (quoting Compagnie des

Bauxites de Guinea v. Ins. Co. of N. Am., 651 F.2d 877, 890 (3d

Cir. 1981)).

Plaintiff contends that the Court has general jurisdiction

over Defendant because Defendant formed a corporation, PWEC, in

New Jersey, thus availing herself of the privilege of conducting

business activities in this state, and then exercised her rights

in the small, closely-held corporation chartered in New Jersey

and communicated with its officers in New Jersey for three years. 

(Pl.’s Opp. Br. 8-9.) These contacts, Plaintiff asserts, were

“continuous and systematic” and are therefore sufficient to

confer general jurisdiction over Defendant. (Id. at 9.) 

Defendant disputes that she ever had an ownership interest in

PWEC. (In Resp. to Sheila Paige’s Sworn Decl. in Opp. to Mot. to

Dismiss Due to Lack of Jurisdiction (hereinafter, “Def.’s Decl.”)

¶ 4.)

Viewing the factual allegations most favorably to Plaintiff,

it appears that Defendant was in business with Sheila Paige, the

10

Case 1:11-cv-01601-NLH-AMD Document 17 Filed 12/21/11 Page 10 of 24 PageID: 146
managing member of Plaintiff, for several years, in connection

with PWEC. However, any general contacts Defendant may have had 3

with New Jersey appear to have terminated several years ago. In

2008, Defendant signed a settlement agreement in a separate

litigation in the Northern District of Georgia confirming that

she has no ownership interest in PWEC and releasing any claim she

may have to shares of PWEC. (Def.’s Decl., Ex. B ¶ 9.) 

Plaintiff does not allege that Defendant has had any contact with

New Jersey through PWEC or in connection with PWEC since 2008. 

(Id.) Nor does Plaintiff contend that Defendant otherwise has

had continuous and systematic contacts with New Jersey since

2008. 

Therefore, even assuming that Defendant was involved with a

New Jersey corporation more than two years prior to the filing of

the complaint in this case, there is no allegation that Defendant

has had general contacts with New Jersey in recent years. 

3. The Court notes, for example, an e-mail apparently from

Defendant –- the e-mail address on the e-mail is the same as the

e-mail address that Defendant has submitted to this Court –- in

which Defendant states that she is a shareholder in PWEC and has

"been spending all [her] spare time and then some working to

promote Piano Wellness and Sheila Paige," including purportedly

designing a logo for PWEC. (Supp. Decl. of Sheila Paige in Opp.

to Mot. and Supp. of Cross-Mot., Ex. 1.) Moreover, Ms. Paige

states in her Declaration that she met Defendant in 2003, that

they worked together until early 2006, that Defendant arranged

for the formation of PWEC in 2005, that Defendant worked for PWEC

until early 2006, and that Defendant was a shareholder in PWEC. 

(Decl. of Sheila Paige in Opp. to Mot. and Supp. of Cross-Mot. ¶¶

4-7.) 

11

Case 1:11-cv-01601-NLH-AMD Document 17 Filed 12/21/11 Page 11 of 24 PageID: 147
Defendant’s contacts through PWEC appear to have terminated when

Defendant entered into the aforementioned settlement agreement,

and Defendant’s involvement in a company several years prior to

the initiation of this lawsuit does not demonstrate that

Defendant had a “continuous” presence in New Jersey at the time

the complaint was filed. Cf. Educ. Testing Serv. v. Katzman, 631

F. Supp. 550, 553 n.9 (D.N.J. 1986)(although defendant had

attended college in New Jersey from 1977 to 1981, but had only

twelve contacts with New Jersey between graduation in 1981 and

initiation of lawsuit in 1985, court focused only on recent

contacts and not on contacts while defendant was in college in

deciding general jurisdiction issue). Accordingly, Plaintiff has

not met its burden at this time of demonstrating that the Court

may exercise general personal jurisdiction over Defendant. 

2. Specific Jurisdiction

The Court next addresses whether it may exercise specific

jurisdiction over Defendant by considering whether Defendant has

minimum contacts with New Jersey specifically related to or

arising out of the cause of action in this case. The Third

Circuit sets forth a three-part test for determining whether the

Court may exercise specific jurisdiction over a defendant. 

First, the defendant must have “‘purposefully directed [its]

activities’ at the forum.” O’Connor, 496 F.3d at 317 (quoting

Burger King, 471 U.S. at 472). Second, “the litigation must

12

Case 1:11-cv-01601-NLH-AMD Document 17 Filed 12/21/11 Page 12 of 24 PageID: 148
‘arise out of or relate to’ at least one of those activities.” 

Id. (quoting Helicopteros, 466 U.S. at 414; Grimes v. Vitalink

Commc’ns Corp., 17 F.3d 1553, 1559 (3d Cir. 1994)). Third, if

the first two prongs are met, then the Court “may consider

whether the exercise of jurisdiction otherwise ‘comport[s] with

‘fair play and substantial justice.’’” Id. (quoting Burger King,

471 U.S. at 476). 

To satisfy the “purposeful availment” prong of the specific

jurisdiction test, the defendant must have deliberately targeted

the forum state. O’Connor, 496 F.3d at 317. In this case,

Defendant operates a website at www.Keyboardwellness.com, which

she uses to provide contact and schedule information to customers

and which is apparently accessible through the internet to

individuals in New Jersey. (See Def.’s Br. 2, 3.) Defendant,

however, argues that she did not purposefully direct her

activities to New Jersey through the operation of the website

because the website is “passive.” Plaintiff responds that

Defendant’s operation of the website is not the sole basis for

Plaintiff’s assertion of jurisdiction (Pl.’s Opp. Br. 6-7),

although it is unclear whether the website is one basis for

Plaintiff’s claim that the Court has personal jurisdiction over

Defendant. The other contacts identified by Plaintiff include

Defendant’s involvement with PWEC, the “taking down” of

Plaintiff’s website three times, and other alleged threats and

13

Case 1:11-cv-01601-NLH-AMD Document 17 Filed 12/21/11 Page 13 of 24 PageID: 149
attempts to extract money from Plaintiff. (Id. at 9.)

To the extent Plaintiff bases jurisdiction on Defendant’s

operation of a website, the Court finds that such conduct does

not provide the Court with personal jurisdiction over Defendant. 

In reaching this decision, the Court considers the opinion in

Zippo Mfg. Co. v. Zippo Dot Com, Inc., 952 F. Supp. 1119 (W.D.

Pa. 1997), which the Third Circuit has regarded as the “seminal

authority regarding personal jurisdiction based upon the

operation of an Internet web site.” Toys “R” Us, Inc. v. Step

Two, S.A., 318 F.3d 446, 452 (3d Cir. 2003). 

In Zippo, the court noted that the “likelihood that personal

jurisdiction can be constitutionally exercised is directly

proportionate to the nature and quality of commercial activity

that an entity conducts over the Internet.” Zippo, 952 F. Supp.

at 1124. The court in Zippo identified a “sliding scale” of

commercial activity to examine personal jurisdiction, with

defendants who actively do business over the internet on one end

of the scale, defendants who merely make information available on

the internet on the other end of the scale, and falling in the

middle of the scale are defendants who operate interactive

websites where users can exchange information with a host

computer. Id. at 1124. The “mere operation” of a commercially

interactive website does not, in itself, subject a defendant to

jurisdiction across the globe. Toys “R” Us, 318 F.3d at 454. 

14

Case 1:11-cv-01601-NLH-AMD Document 17 Filed 12/21/11 Page 14 of 24 PageID: 150
Rather, to justify the exercise of specific jurisdiction, a

defendant must have “intentionally interact[ed] with the forum

state via the web site” to have purposefully availed himself of

the forum. Id. at 452. 

Here, Defendant’s website is presumably available

nationwide. Defendant alleges, and Plaintiff does not dispute,

that the website is not interactive. There is no evidence at

this time that Defendant did anything to encourage people in New

Jersey to access the website, or that any part of Defendant’s

business was sought or achieved in New Jersey. Nor is there any

evidence at this time that New Jersey individuals have visited

Defendant’s website. No party addresses whether the content on 4

the website is particularly relevant to New Jersey or is aimed at

New Jersey. Simply put, Defendant’s mere operation of a passive

website, which could be accessed worldwide, is not in itself

sufficient to demonstrate that Defendant purposefully directed an

act toward New Jersey.

Plaintiff argues that Defendant had other contacts which she

purposefully directed to New Jersey that are related to this

case. The Court may consider a defendant’s related activities,

4. Although Plaintiff has cross-moved for jurisdictional

discovery, through which Plaintiff could potentially uncover

evidence concerning Defendant’s contacts with New Jersey

individuals, such discovery is unnecessary because the Court

finds as set forth below that Defendant’s other contacts with New

Jersey are sufficient for the Court to exercise personal

jurisdiction over Defendant in this matter.

15

Case 1:11-cv-01601-NLH-AMD Document 17 Filed 12/21/11 Page 15 of 24 PageID: 151
including those that are non-Internet activities, in deciding the

“purposeful availment” prong of specific jurisdiction. See Toys

“R” Us, 318 F.3d at 453. Plaintiff notes in particular that

Defendant has “demand[ed] that [Plaintiff] reach yet another

settlement with her” and that “[w]hen no settlement was reached,

[Defendant] began sending threatening e-mails and ‘cease and

desist’ letters to [Plaintiff] and demanding immediate responses

and payments.” (Decl. of Sheila Paige in Opp. to Mot. and Supp.

of Cross-Mot. (hereinafter, “Paige Decl.”) ¶¶ 14, 15.) Plaintiff

also contends that Defendant acted on three occasions to have

Plaintiff’s website removed from the internet. (Id. at ¶ 15.) 

Defendant does not dispute Plaintiff’s contention that she

sent threatening messages and letters, and the Court accepts as

true for purposes of this motion Plaintiff’s allegation that

Defendant did send threatening messages and letters. Through

these acts, Defendant purportedly deliberately reached into New

Jersey to target one of its citizens. However, Plaintiff fails

to state with any specificity that such contacts specifically

arose from or related to the issues in this case. The Court

notes that the parties previously were engaged in litigation in

the Northern District of Georgia apparently concerning the mark

“Save the Pianist” and works pertaining to that mark. (Def.’s

Decl., Ex. B.) Clearly, then, there are trademarks not

implicated in the present case that are subject to dispute

16

Case 1:11-cv-01601-NLH-AMD Document 17 Filed 12/21/11 Page 16 of 24 PageID: 152
between the parties. Plaintiff cites no facts to establish that

the alleged threats referred to by Plaintiff concerned the

trademarks at issue in this case rather than other marks that are

in dispute between the parties. 

The only letter submitted by Plaintiff to demonstrate

Defendant’s alleged threatening conduct is a “cease and desist”

letter from Defendant to Plaintiff’s counsel dated March 27,

2011. (Paige Decl., Ex. B.) The sending of a “cease and desist”

letter does not establish the minimum contacts or purposeful

availment necessary for specific jurisdiction over a defendant. 

Database Am., Inc. v. Bellsouth Advertising & Pub. Corp., 825 F.

Supp. 1195, 1213 n.30 (D.N.J. 1993) (noting that if sending cease

and desist letters served as waiver of objection to in personam

jurisdiction, “‘the result would be a chilling effect on

assertion of legal rights by holders of copyrights, patents, and

trademarks.’”) (citation omitted). Without further information, 5

the Court is unable to conclude that it may exercise specific

jurisdiction on the basis of Defendant’s alleged threatening

letters and messages directed to Plaintiff in New Jersey.

5. The purpose of a “cease and desist” letter is to obtain an

out-of-court solution, and if sending such a letter was

sufficient to confer personal jurisdiction, parties would simply

file suit without warning and without attempting informal

resolution of the matter. Id. Thus, a rule that “cease and

desist” letters do not establish minimum contacts serves an

important interest in having disputes resolved without resort to

litigation. Id.

17

Case 1:11-cv-01601-NLH-AMD Document 17 Filed 12/21/11 Page 17 of 24 PageID: 153
Notwithstanding the above, the Court finds that there is

specific personal jurisdiction over Defendant based on her

involvement with PWEC. Although her relationship with PWEC is

insufficiently continuous or systematic for the exercise of

general jurisdiction, such relationship is sufficient for

purposes of specific jurisdiction. As previously noted,

Defendant disputes that she had any involvement with PWEC, but

Plaintiff alleges otherwise and has provided documents supporting

her allegation. In deciding the personal jurisdiction issue, 6

the Court must accept as true all of Plaintiff’s factual

allegations and all inferences derived therefrom. 

Plaintiff alleges in the complaint that “[a]t least as early

as 2000, Sheila Paige adopted the trademarks ‘PIANO WELLNESS’ and

‘PIANO WELLNESS SEMINAR’ to describe the services she was

offering” and, about the same time, also adopted the trademarks

“KEYBOARD WELLNESS” and “KEYBOARD WELLNESS SEMINAR.” (Compl. ¶¶

10, 11.) Ms. Paige represents that she met Defendant in 2003,

and that they worked together until 2006. (Paige Decl. ¶ 4.) In

2005, Defendant purportedly arranged for the formation of PWEC,

which had offices in Cherry Hill, New Jersey, was a shareholder

in PWEC until 2008, and worked for PWEC until early 2006. (Id.

6. In addition to Ms. Paige’s declaration, Plaintiff has also

submitted an e-mail from Defendant in which she refers to herself

as a shareholder of PWEC, and Defendant has submitted a

settlement agreement by which she released any claim she may have

had to shares of PWEC.

18

Case 1:11-cv-01601-NLH-AMD Document 17 Filed 12/21/11 Page 18 of 24 PageID: 154
at ¶¶ 5-7.) Defendant allegedly “regularly communicated” with

Ms. Paige in the New Jersey office. (Id. at ¶ 7.) Defendant’s

involvement in PWEC, a New Jersey company, as a shareholder and

employee is a direct contact with New Jersey for purposes of

specific jurisdiction. 

Having identified a purposeful contact with New Jersey, the

Court must also consider whether Plaintiff’s claim arises out of

or relates to such contact. The Third Circuit has not adopted a

definitive approach to the scope of the relatedness requirement. 

“[S]pecific jurisdiction requires a closer and more direct causal

connection than that provided by the but-for test,” but there is

“no ‘specific rule’ susceptible to mechanical application in

every case.” O’Connor, 496 F.3d at 323. The “analysis should

hew closely to the reciprocity principle upon which specific

jurisdiction rests.” Id. 

The Court finds that Defendant’s contact with New Jersey

through PWEC is related to the claims in this case. Despite her

involvement in PWEC until 2006, Defendant represents that in

December 2005 she adopted the trademark “Keyboard Wellness.com.” 

(See Def.’s Mot. 5.) Therefore, it appears that Defendant in

late 2005, while still a shareholder and employee of PWEC,

started “Keyboard Wellness.com” to conduct a business similar to

that conducted by PWEC. It further appears that at some point in

early 2006, Defendant and Ms. Paige decided to part ways. (See,

19

Case 1:11-cv-01601-NLH-AMD Document 17 Filed 12/21/11 Page 19 of 24 PageID: 155
e.g., Supp. Decl. of Sheila Paige in Opp. to Mot. and Supp. of

Cross-Mot., Ex. 1; Def.’s Decl., Ex. B.) Ms. Paige then formed

Plaintiff and continued the business of PWEC. (See Compl. ¶ 13.) 

Plaintiff has now filed this action for trademark infringement

and unfair competition based on Defendant’s operation of a

competing business. Given that Defendant was an employee and

shareholder of a New Jersey corporation, at the same time set up

a competing company, and the business that succeeded the New

Jersey company has now sued Defendant’s competing company for

unfair competition, there is clearly a relationship between

Defendant’s New Jersey contacts and the claims in this case for

personal jurisdiction purposes. Defendant is not being haled

into New Jersey as a result of random, fortuitous or attenuated

contacts with New Jersey and should have foreseen being subjected

to suit in New Jersey for setting up a company that competes with

a New Jersey entity.7

7. Plaintiff also argues that Defendant’s efforts to have

Plaintiff’s website removed on three prior occasions serves as a

sufficient contact for jurisdictional purposes. The sending of a

take down notice that caused harm in New Jersey might be

sufficient for the exercise personal jurisdiction under the

“effects test” of Calder v. Jones, 465 U.S. 783 (1984). Cf.

Dudnikov v. Chalk & Vermilion Fine Arts, Inc., 514 F.3d 1063

(10th Cir. 2008) (where defendant sent notice to eBay alleging

that fabric for sale in internet auction violated defendant’s

copyright, and eBay consequently removed auction from internet,

thereby causing harm to plaintiffs’ business, satisfied “effects

test” and subjected defendant to personal jurisdiction in

plaintiffs’ home state). However, in this case, the Court cannot

assume that Defendant’s actions in having Plaintiff’s website

removed – the last such attempt having occurred in 2009 – are

20

Case 1:11-cv-01601-NLH-AMD Document 17 Filed 12/21/11 Page 20 of 24 PageID: 156
Although Plaintiff met its burden at this stage of the

litigation of establishing “minimum contacts,” the Court must

still consider whether the exercise of personal jurisdiction

would “offend traditional notions of fair play and substantial

justice.” Int’l Shoe, 326 U.S. at 316. When a defendant has

minimum contacts with the forum state, jurisdiction is

“presumptively constitutional” and the defendant must present a

“‘compelling case that the presence of some other considerations

would render jurisdiction unreasonable.’” O’Connor, 496 F.3d at

324 (quoting Burger King Corp., 471 U.S. at 477). Only in the

“rare” and “compelling” case will jurisdiction be unreasonable

when the defendant has minimum contacts with the forum. Id. at

325. The defendant bears a heavy burden in demonstrating an

absence of fairness or lack of substantial justice. Grand Entm’t

Group, Ltd. v. Star Media Sales, Inc., 988 F.2d 476, 483 (3d Cir.

1993).

In conducting a fairness inquiry, the Court considers the

following factors: the burden on the defendant, the forum state’s

interest in adjudicating the dispute, the plaintiff's interest in

obtaining the most efficient resolution of controversies, the

related to the trademarks implicated in this suit. The Court

specifically notes that Defendant apparently made a copyright

claim to GoDaddy.com in the past concerning the title “Simple

Solutions to Common Problems.” (Def.’s Decl., Ex. B ¶ 7.) 

Accordingly, it is not clear to the Court at this time that

Defendant’s conduct is sufficiently related to this case to

warrant the exercise of personal jurisdiction.

21

Case 1:11-cv-01601-NLH-AMD Document 17 Filed 12/21/11 Page 21 of 24 PageID: 157
interstate judicial system’s interest in obtaining the most

efficient resolution of the controversy, and the shared interest

of the several States in “‘furthering fundamental substantive

social policies.’” Grand Entm't Group, 988 F.2d at 483 (quoting

Burger King Corp., 471 U.S. at 477). As the Third Circuit

recently reiterated, “if minimum contacts are present, then

jurisdiction will be unreasonable only in ‘rare cases.’” 

O'Connor, 496 F.3d at 324 (quoting Pennzoil Prods. Co. v. Colelli

& Assocs., Inc., 149 F.3d 197, 207 (3d Cir. 1998)).

Here, Defendant does not even argue that the assertion of

jurisdiction is unreasonable, let alone addressing the factors

set forth above. Necessarily, then, she has failed to carry her

burden of presenting a compelling case that this Court’s exercise

of personal jurisdiction over her would be unreasonable.

Moreover, setting aside such failure, the Court finds that

the exercise of jurisdiction over Defendant is reasonable. While

it may be burdensome for Defendant to litigate this dispute in

New Jersey rather than Georgia, she does not demonstrate that

litigating in New Jersey is so unduly burdensome as to render

jurisdiction here unreasonable. Defendant does not assert that

she will be unable to present in New Jersey evidence that would

be available in Georgia. Furthermore, even assuming there is a

burden on Defendant, Plaintiff would similarly be burdened by 

litigating in Georgia, and litigation in Georgia therefore would

22

Case 1:11-cv-01601-NLH-AMD Document 17 Filed 12/21/11 Page 22 of 24 PageID: 158
simply shift the burden to Plaintiff. In addition, Plaintiff has

an interest in obtaining relief in a convenient forum of its

choice. New Jersey has an interest in providing a forum for the

resolution of disputes in which the rights of a New Jersey entity

have been violated, as is alleged in this case. The interstate

judicial system's interest in obtaining the most efficient

resolution of the controversy supports the assertion of

jurisdiction here, as there is no basis for the Court to conclude

that litigation of this dispute in New Jersey will be less

efficient than having the matter litigated elsewhere. Moreover,

the Court would be applying federal and New Jersey law in

deciding this matter, and not the law of another state, and it

does not appear that any fundamental social policies of another

state will be implicated. 

In sum, this case does not present one of the rare and

compelling instances where the exercise of personal jurisdiction

over Defendant would be unreasonable when there are minimum

contacts with the forum. Accordingly, the Court concludes that

jurisdiction in the District of New Jersey “comports with fair

play and substantial justice.” Burger King Corp., 471 U.S. at

476. 

3. Plaintiff’s Cross-Motion for Jurisdictional

Discovery or Transfer

Having found that Plaintiff has sufficiently demonstrated

that the Court has personal jurisdiction over Defendant,

23

Case 1:11-cv-01601-NLH-AMD Document 17 Filed 12/21/11 Page 23 of 24 PageID: 159
Plaintiff’s cross-motion for jurisdictional discovery or transfer

of the case is moot. Accordingly, such motion will be dismissed.

IV. CONCLUSION

The Court finds that Plaintiff has met its burden of

demonstrating that Defendant had sufficient contacts with New

Jersey to warrant the exercise of personal jurisdiction over

Defendant. Defendant’s Motion to Dismiss for lack of personal

jurisdiction will therefore be denied. Plaintiff’s cross-motion

for jurisdictional discovery or transfer of the case will be

dismissed as moot. An Order consistent with this Opinion will be

entered.

Date: December 21, 2011 s/ Noel L. Hillman 

NOEL L. HILLMAN, U.S.D.J.

At Camden, New Jersey

24

Case 1:11-cv-01601-NLH-AMD Document 17 Filed 12/21/11 Page 24 of 24 PageID: 160