Republic Technologies (NA), LLC v. BBK Tobacco & Foods, LLP
1:16-cv-03401
N.D. Ill.Aug 7, 2017Background
- HBI (Arizona) sued VLA (California distributor) as a counter-defendant in a trademark/copyright dispute over RAW vs. OCB rolling-paper trade dress and packaging; Republic (Illinois) is the plaintiff-counterdefendant.
- HBI alleges VLA distributed and promoted OCB organic hemp rolling papers in packaging and in-store displays confusingly similar to HBI’s RAW trade dress, and marketed to Illinois retailers and consumers.
- VLA operates a national-facing website (rollocb.com) with a store-locator listing 33 Illinois stores and invites retailers to contact it for wholesale orders.
- Deposition evidence: VLA principal admitted “Whoever wants to buy, I sell to,” produced 14 invoices totaling $5,056.50 for sales to 13 Illinois retailers (2014–2016), and acknowledged shipments and some Illinois-based orders.
- VLA moved to dismiss HBI’s counterclaims for lack of personal jurisdiction; the court evaluated specific personal jurisdiction under Illinois law as coextensive with federal due process standards.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the court has specific personal jurisdiction over VLA | VLA purposefully directed activities at Illinois via national website, store-locator, and sales/shipments to Illinois retailers; relationship with Illinois-based Republic supports jurisdiction | VLA does not transact business in Illinois: no office, employees, licensing, or targeted promotion; sales to Illinois are minimal and incidental | Court: Specific jurisdiction exists — VLA purposefully directed activities to Illinois (website + invoices + shipments) and made sales of the allegedly infringing products to Illinois retailers |
| Whether VLA’s relationship with Republic alone establishes minimum contacts | HBI: close contractual relationship with Republic (Illinois) ties VLA to the forum | VLA: third-party contacts (Republic) cannot be imputed to VLA; relationship insufficient | Court: Relationship with Republic by itself is insufficient; plaintiff’s own contacts with Illinois are required and considered separately |
| Whether the forum-related contacts are sufficiently related to HBI’s claims (relatedness) | HBI: sales/shipments to Illinois included OCB hemp products that allegedly infringe, so the tort arises from those contacts | VLA: the small-number sales have little relevance to the alleged nationwide infringement | Court: Relatedness satisfied — the allegedly infringing products shipped to Illinois are the same conduct giving rise to the suit |
| Whether exercising jurisdiction is fair and reasonable (traditional notions of fair play and substantial justice) | HBI: Illinois has interest; consolidation promotes efficiency; plaintiff’s relief is convenient in Illinois | VLA: litigation in Illinois is burdensome; VLA is a California company without Illinois presence | Court: Fairness factors do not preclude jurisdiction; burden is not shown to be unreasonable and public/state interests support litigation in Illinois |
Key Cases Cited
- Tamburo v. Dworkin, 601 F.3d 693 (7th Cir.) (prima facie burden on plaintiff to show jurisdiction on written record)
- Mobile Anesthesiologists Chicago, LLC v. Anesthesia Assocs. of Houston Metroplex, P.A., 623 F.3d 440 (7th Cir.) (federal court may exercise jurisdiction to extent state law permits)
- Daimler AG v. Bauman, 134 S. Ct. 746 (2014) (general jurisdiction requires defendant to be essentially at home in forum)
- Illinois v. Hemi Grp., LLC, 622 F.3d 754 (7th Cir.) (specific jurisdiction where defendant’s website and shipments demonstrated purposeful direction to forum despite limited sales)
- Felland v. Clifton, 682 F.3d 665 (7th Cir.) (three-part test for specific personal jurisdiction)