Mor-Dall Enterprises, Inc. v. Dark Horse Distillery, LLC
16 F. Supp. 3d 874
W.D. Mich.2014Background
- Plaintiff Dark Horse Brewing Co. is a Michigan brewer; Defendant Dark Horse Distillery is in Kansas and sells spirits.
- Plaintiff has used DARK HORSE and DARK HORSE BREWING COMPANY marks in interstate beer commerce since around 1997.
- Defendant adopted DARK HORSE and DARK HORSE DISTILLERY in 2010 and sought USPTO registrations; Plaintiff opposed in 2013.
- Plaintiff alleges Defendant’s infringement continued after opposition; Plaintiff filed suit in August 2013.
- Plaintiff contends Defendant’s website is interactive and target-directed toward Michigan; Defendant contends the site is passive.
- Court addresses whether personal jurisdiction exists under the Zippo standard and the Colder effects test, and under Michigan’s long-arm statute.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Defendant’s website creates sufficient contact under Zippo | Dark Horse argues site is interactive and directed at Michigan residents. | Dark Horse contends site is passive with only links to third-party distributors. | Yes; court finds interactive site at extreme Zippo end, satisfying purposeful availment. |
| Whether Colder effects test supports jurisdiction | Dark Horse argues infringement injuries are felt in Michigan; conduct directed at Michigan. | Dark Horse argues no expressly aimed conduct at Michigan and injuries elsewhere. | Yes; plaintiff satisfies all three prongs, supporting purposeful availment under Colder. |
| Whether exercise of jurisdiction is reasonable under Southern Machine | Contacts are substantial and Michigan-based injury makes jurisdiction reasonable. | Defendant is a small family business; defense would be burdensome. | Yes; presumption of reasonableness stands and jurisdiction is reasonable. |
| Whether Michigan’s long-arm statute authorizes jurisdiction | Sufficient Michigan-directed website activity and tort-like injury within Michigan. | Argues minimal Michigan activity and torts occurred elsewhere. | Yes; § 600.715(1)-(2) authorize jurisdiction given slightest business act and tortious effect in Michigan. |
Key Cases Cited
- Zippo Mfg. Co. v. Zippo Dot Com., Inc., 952 F. Supp. 1119 (W.D. Pa. 1997) (interactive websites evaluated by degree of interactivity)
- Neogen Corp. v. Neo Gen Screening, Inc., 282 F.3d 883 (6th Cir. 2002) (sliding-scale approach to website contacts with forum residents)
- Southern Mach. Co. v. Mohasco Indus., Inc., 401 F.2d 374 (6th Cir. 1968) (three-prong test for specific jurisdiction)
- World-Wide Volkswagen v. Woodson, 444 U.S. 286 (1980) (purposeful availment and foreseeability in jurisdiction)
- Asahi Metal Indus. Co., Ltd. v. Superior Ct. of Cal., Solano Cnty., 480 U.S. 102 (1987) (stream of commerce plus, need for additional act directed to forum)
- Bridgeport Music, Inc. v. Still N The Water Pub., 327 F.3d 472 (6th Cir. 2003) (copyright context but discusses purposeful availment and website links)
- Beverly Hills Fan Co. v. Royal Sovereign Corp., 21 F.3d 1558 (Fed. Cir. 1994) (injury context in jurisdictional analysis)
- Green v. Wilson, 565 N.W.2d 813 (Mich. 1997) (Michigan long-arm scope and occurrence of torts)