Omega RV, LLC v. The RV Factory, LLC
1:16-cv-00204
D. IdahoMay 10, 2017Background
- Omega RV (Idaho) and The RV Factory, LLC (Indiana) dispute ownership and use of the "Weekend Warrior" trademark; Omega alleges it acquired priority rights from long-time user Mark Warmoth.
- Donati (Indiana) filed a federal trademark application for "Weekend Warrior" in 2013 and The RV Factory began using the mark thereafter.
- The RV Factory sent a cease-and-desist letter to Omega in Idaho in May 2016; Omega sued for declaratory judgment, trademark invalidity, trademark infringement, unfair competition, and tortious interference.
- Defendants moved to dismiss under Fed. R. Civ. P. 12(b)(2) (lack of personal jurisdiction) and 12(b)(3) (improper venue), and alternatively sought transfer to the Northern District of Indiana under 28 U.S.C. § 1631.
- The court evaluated specific jurisdiction under the Calder "effects" test (intentional act; expressly aimed at forum; foreseeable harm in forum) and examined Internet contacts and the cease-and-desist letter.
- Court concluded Idaho lacked personal jurisdiction over The RV Factory and Donati but, in the interest of justice, granted transfer to the Northern District of Indiana rather than dismissing.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Idaho has specific personal jurisdiction over Defendants (purposeful direction) | Defendants purposefully directed harm to Idaho via an interactive website, listing an Idaho service center, contacting dealers, and sending a cease-and-desist to Omega in Idaho | Website is not targeted/commercial toward Idaho, service-center listing is one of many, dealer contact not shown to be in Idaho, and a cease-and-desist letter alone is insufficient | No specific jurisdiction: plaintiff failed Calder test; website and service listing not "express aiming," dealer contact unproven, and letter was a "normal" C&D insufficient alone |
| Whether Omega's claims "arise out of" Defendants' forum-related acts (second Calder/causation prong) | C&D letter and online conduct produced the harm and prompted suit | The substantive dispute concerns trademark rights predating the letter; the letter merely prompted litigation and is not the but-for cause | Claims do not arise out of the C&D or other Idaho-directed acts; the letter is not the but-for cause |
| Whether exercising jurisdiction would be reasonable (fair play and substantial justice) | Omega needs Idaho forum for relief and local interest | Defendants have no Idaho contacts; trial in Indiana is more appropriate | Exercise of jurisdiction would be unreasonable; alternative forum exists (N.D. Ind.) |
| Proper remedy: dismissal for improper venue or transfer | Omega opposes dismissal; seeks adjudication in Idaho | Defendants request dismissal or transfer to N.D. Ind.; move to transfer under § 1631 if jurisdiction lacking | Court denied dismissal on merits of motion but granted transfer to Northern District of Indiana under § 1631 (in interest of justice) |
Key Cases Cited
- International Shoe Co. v. Washington, 326 U.S. 310 (established the "minimum contacts" due process standard)
- Calder v. Jones, 465 U.S. 783 (adopted the "effects" test for purposeful direction)
- Goodyear Dunlop Tires Operations, S.A. v. Brown, 564 U.S. 915 (limits for general jurisdiction; "at home" standard)
- Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797 (forum contacts and prima facie showing on 12(b)(2))
- Dole Food Co. v. Watts, 303 F.3d 1104 (application of Calder test in Ninth Circuit)
- Brayton Purcell LLP v. Recordon & Recordon, 606 F.3d 1124 (website activity and express aiming requirement)
- Yahoo! Inc. v. La Ligue Contre Le Racisme Et L'Antisemitisme, 433 F.3d 1199 (cease-and-desist letters generally insufficient for jurisdiction)