PROMINENT GMBH v. PROMINENT SYSTEMS, INC.
2:16-cv-01609
W.D. Pa.Apr 10, 2017Background
- Plaintiffs (Prominent GmbH and U.S. subsidiary Prominent Fluid Controls, Inc.) assert federal and state trademark claims against Prominent Systems, Inc., Prominent Supplies, Inc., and Ky Tran for alleged willful use of PROMINENT marks. Plaintiffs' U.S. headquarters is in Pittsburgh, PA.
- Prominent Systems, Inc. (California) manufactures carbon filter media, uses Pennsylvania’s PennBid system, and has shipped goods to Pennsylvania; it concedes it is likely subject to specific jurisdiction in Pennsylvania.
- Prominent Supplies, Inc. (California) operates a largely passive website for cleaning/janitorial products; its president is I. Nyoman Scorpio and it has limited or no business contacts with Pennsylvania.
- Ky Tran (California) is president of Prominent Systems and declares limited personal contacts with Pennsylvania and no personal business presence there.
- Parties filed cross-motions: Defendants moved to dismiss for lack of personal jurisdiction and improper venue and alternatively to transfer to the Central District of California; plaintiffs opposed.
- Court held (1) personal jurisdiction exists over Prominent Systems but not over Prominent Supplies or Tran; (2) venue is proper in this District as to Prominent Systems; (3) claims against Prominent Supplies and Tran dismissed without prejudice; (4) motion to transfer denied.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Personal jurisdiction over Prominent Systems | Prominent Systems targeted PA via PennBid, website, advertising | Prominent Systems largely CA-based; limited contacts | Prominent Systems conceded likely subject to specific jurisdiction; court denied dismissal as to it |
| Personal jurisdiction over Prominent Supplies | Website, metatags, use of PROMINENT mark, trade-show contacts and alter-ego theory tie it to PA | Prominent Supplies has passive site, no PA transactions, distinct corporate existence | Dismissed for lack of personal jurisdiction; plaintiffs failed to make prima facie showing; alter-ego not proven |
| Personal jurisdiction over Ky Tran (individual) | Tran substantially participated in corporate acts and should be haled in PA | Tran lacks individual contacts with PA; acted in corporate capacity only | Dismissed for lack of personal jurisdiction; plaintiffs produced no evidence of Tran’s individual contacts or tortious participation |
| Transfer to Central District of California (§1406/§1631) | Plaintiffs preferred to keep PA action; alternatively argued transfer unnecessary | Defendants sought transfer of entire case for convenience and to litigate all claims together | Transfer denied; court dismissed Supplies and Tran without prejudice and retained claims vs. Prominent Systems in PA as interests of justice favored retention |
Key Cases Cited
- Int'l Shoe Co. v. Washington, 326 U.S. 310 (established minimum contacts/due process standard for personal jurisdiction)
- World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286 (foreseeability and fair warning in jurisdiction analysis)
- Burger King Corp. v. Rudzewicz, 471 U.S. 462 (purposeful availment and due process balancing factors)
- Calder v. Jones, 465 U.S. 783 (effects test for jurisdiction over intentional torts)
- D'Jamoos v. Pilatus Aircraft Ltd., 566 F.3d 94 (Third Circuit three-part specific-jurisdiction test)
- Metcalfe v. Renaissance Marine, Inc., 566 F.3d 324 (prima facie burden and web-based contact analysis)
- Toys "R" Us, Inc. v. Step Two, S.A., 318 F.3d 446 (limits on jurisdiction from passive/interactive websites)
- Zippo Mfg. Co. v. Zippo Dot Com, Inc., 952 F. Supp. 1119 (sliding-scale test for websites and jurisdiction)
- Marten v. Godwin, 499 F.3d 290 (Calder application and ‘‘expressly aimed’’ requirement)