Tool Shed Inc, The v. Mattoon Rural King Supply Inc
6:17-cv-01660
D.S.C.Sep 22, 2017Background
- Plaintiff The Tool Shed, Inc. owns registered service mark/trademark “THE TOOL SHED” and alleges longstanding use since 1979/1998.
- Defendant Mattoon Rural King Supply, Inc. (Rural King) operates ~100+ stores in multiple states but has no South Carolina stores; sells products via its website.
- Tool Shed alleges Rural King marketed and sold products infringing Tool Shed’s marks, including roughly $2,000 in online sales to South Carolina addresses and related telephone/email contacts about warranties/parts.
- Tool Shed filed an amended complaint in the District of South Carolina asserting trademark/service-mark infringement and related claims; Rural King moved to dismiss for lack of personal jurisdiction or, alternatively, to transfer venue to the Central District of Illinois.
- The court considered jurisdictional evidence (Rural King’s marketing declaration and Tool Shed’s allegations/evidence of online sales and contacts) and briefing on transfer under 28 U.S.C. § 1404(a).
- The court denied both the motion to dismiss for lack of personal jurisdiction and the alternative motion to transfer venue.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Personal jurisdiction (specific) | Rural King directed electronic activity into SC, made sales to SC addresses and created a cause of action there | Rural King has no stores, agents, employees, or targeted advertising in SC and is an Illinois corporation | Court: Specific jurisdiction exists based on website-directed sales into SC (≈$2,000) and related contacts; dismissal denied |
| Personal jurisdiction (general) | N/A — Plaintiff relied on specific-jurisdiction facts | Rural King lacks continuous and systematic contacts with SC (no stores there) | Court: No general jurisdiction; but specific jurisdiction sufficed |
| Transfer of venue under § 1404(a) | Plaintiff filed in its home forum; convenience and justice favor keeping case in SC | Key witnesses and many operations are in Central District of Illinois, so transfer is more convenient | Court: Denied transfer — plaintiff's venue choice carries substantial weight; defendant failed to show balance of convenience strongly favors Illinois; no evidence witnesses unwilling to testify or other transfer-supporting proof |
| Transfer under § 1406(a) | N/A | Venue allegedly wrong | Court: § 1406(a) inapplicable because venue proper in SC |
Key Cases Cited
- ESAB Group, Inc. v. Centricut, LLC, 34 F. Supp. 2d 323 (D.S.C. 1999) (plaintiff bears burden to establish jurisdiction; prima facie showing standard)
- Mylan Labs., Inc. v. Akzo, N.V., 2 F.3d 56 (4th Cir. 1993) (prima facie burden and inferences for jurisdictional facts)
- Magic Toyota, Inc. v. Se. Toyota Distribs., Inc., 784 F. Supp. 306 (D.S.C. 1992) (courts may consider affidavits/evidence outside pleadings on jurisdictional motions)
- Foster v. Arletty 3 Sarl, 278 F.3d 409 (4th Cir. 2002) (South Carolina long-arm statute reaches constitutional limits)
- Consulting Eng’rs Corp. v. Geometric Ltd., 561 F.3d 273 (4th Cir. 2009) (minimum contacts and specific vs. general jurisdiction framework)
- Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408 (U.S. 1984) (continuous and systematic contacts for general jurisdiction)
- ALS Scan, Inc. v. Digital Serv. Consultants, Inc., 293 F.3d 707 (4th Cir. 2002) (internet activity test for specific jurisdiction: direct electronic activity, manifested intent, and resulting cause of action)
- Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22 (U.S. 1988) (§ 1404(a) transfer requires individualized, case-by-case consideration of convenience and fairness)
- Trustees of the Plumbers and Pipefitters Nat. Pension Fund v. Plumbing Servs., Inc., 791 F.3d 436 (4th Cir. 2015) (factors considered in § 1404(a) transfer analysis)
- In re Ralston Purina Co., 726 F.2d 1002 (4th Cir. 1984) (transfer under § 1404(a) is within court’s discretion)
- In re Guthrie, 733 F.2d 634 (4th Cir. 1984) (non-party witnesses outside subpoena power can be deposed)
- Brock v. Entre Computer Ctrs., Inc., 933 F.2d 1253 (4th Cir. 1991) (both forums may impose travel burdens; transfer not appropriate merely to shift burden)
- Fairchild Semiconductor Corp. v. Nintendo Co., 810 F. Supp. 173 (D.S.C. 1992) (public-interest and practical considerations in transfer decisions)