*2 GIBSON, Before BRIGHT and JOHN R. United States Patent and Trademark Office HANSON,* (PTO) issued to a Judges, registration Land-O-Nod and Senior Dis for “Chiropractic” the trademark which it Judge. trict uses to describe certain of its mattresses HANSON, Judge. District Senior springs. and box right Land-O-Nod’s to use “Chiropractic”, the word trademark (Bas- Bassett Furniture Inc. became incontestable October 1975 after sett) (Mal- Corporation Malone E.B. it filed an Affidavit of Continuous Use with one) appeal from an order of the district 1065(3). PTO to 15 U.S.C. § granting Company court1 the Land-O-Nod portion Land-O-Nod derives a substantial (Land-O-Nod) injunction. a preliminary through grant- its income fees from licenses injunction prohibits Bassett and Mal- ed to smaller throughout manufacturers using registered one from giving right country them to use the “Chiropractic” trademark “Chiropractic” trademark. their mattresses springs. and box We hold alleges Land-O-Nod on about No- that it not proper for the district court began vember Bassett and Malone grant injunction the preliminary because on Land-O-Nod’s trademark by personal jurisdiction the court had no over using “Chiropractic” the word to describe a the defendants. particular line of mattresses and box springs which were manufactured Mal- I. one and sold under the Bassett name. Bas- Virginia corporation Bassett is a engaged sett distributes its line “Chiropractic” manufacturing in the business of and sell- Although states other than Minnesota. furniture, ing including mattresses and box finding district court made no as to where springs. Malone, a Florida corporation, is a the allegedly infringing mattresses were wholly-owned of Bassett subsidiary Minnesota, sold outside of there is evidence manufacturer of mattresses and box that being the mattresses are distributed in springs which are sold Mal- both under the states, thirteen some of include Ala- one name and under name. Florida, bama, Georgia, and Tennessee. Neither Bassett nor licensed do Designated (D.R.) Record at 38. Minnesota, business in neither maintains against Land-O-Nod this action place of any Minnesota, business in neither Bassett and Malone in the United States any has employees headquartered in Minne- Minnesota, District Court for the District sota, and neither has any bank accounts in alleging infringement trademark under fed- products Minnesota. Malone’s un- are sold eral competition law and unfair both der the Bassett name Levitz Furni- state and law. federal Service of stores, ture two of which in Minnesota. on pursu- Bassett and Malone was effected Such have been sold in Minnesota ant to the Minnesota “long-arm” statutes. since at least 1972. represent- Malone sales 1(3) 543.19, Minn.Stat. subd. §§ atives on regarding call Minnesota retailers Bassett, way answer, subd. 1. of its sales mattresses and bedding prod- other Malone, dismiss, by way aof motion to $151,871.00 reported ucts. Malone in annu- per- contended that district court lacked $42,- al sales in Minnesota for 1981 and they over them because 637.00 in sales first six months of foreign corporations, they were were not 1982. Minnesota, transacting they business in Land-O-Nod is a corporation any had neither committed tort in Minneso- manufactures, sells, ta, and distributes any nor injury caused in the state. D.R. springs. and box 92. * Hanson, Lord, Judge, The Honorable William Dis- C. Senior W. Honorable Miles Chief Judge trict for the Northern and Southern Dis- United States District Court for the District of Iowa, sitting by designation. tricts of Minnesota. dismiss, authorize the assertion ruling Malone’s motion to on corporations to the fullest foreign that exercise
the district court concluded prop- Malone was constitutional due allowed er Minneso- because Malone’s Co. Ballas the limits of *3 satisfy (8th Cir.1978). ta sufficient to constitutional We test were 1269 v. due Co. familiar mini- process by applying concerns. Land-O-Nod the al., standard; Inc., et de- Bassett Furniture nonresident mum contacts (D.Minn.1982). 63, 551 73 F.Supp. Subse- must have certain minimum fendants en- the mainte- quently preliminarily the district court the such that tacts with forum joined using both Bassett Malone from not offend “tradition- nance of the suit does “Chiropractic” jus- trademark. play of fair and substantial al notions appeal This followed in which v. interlocutory Co. Wash- tice.” International Shoe 316, 310, court allege defendants the district 66 ington, 326 U.S. S.Ct. granting circuit, prelim- (1945). abused its discretion the the 90 95 this L.Ed. inary concluding injunction and erred a consideration has devolved into standard of the assertion of five factors: comports with due defendants (1) quality the nature and contacts state; (2) quantity with the forum
II.
state; (3) the
with the forum
of the cause of action to
relation
A.
contacts;
(4)
of the forum
the interest
jurisdictional
ap
basis for this
resi-
providing
state in
a forum
peal
1292(a)(1)
appeal
is 28
as the
U.S.C. §
dents;
the convenience of
interlocutory
granting
is
an
an
order
parties.
injunction. Accordingly
con
Land-O-Nod
v.
Met
Aaron
& Sons Co. Diversified
Ferer
only
before
tends that
issue
1211, 1215
Cir.1977);
(8th
als
564 F.2d
Corp.
this
whether
the district
Co.,
Economy
343
see
v.
Baler
Aftanese
granting
prelim
abused its discretion
187,
Cir.1965).
fac-
(8th
F.2d
195-97
These
inary injunction and that the lower court’s
tors, however,
“a
rule
provide
do not
slide
lack
denying
order
the motion to dismiss for
fairness can be as-
by which fundamental
at
is not reviewable
precision.”
certained with mathematical
jurisdic
question
time. “[B]ut
instance,
Toro,
B. wholly-owned wholesale corporation, and its brought in Minnesota arm an action long It is clear that Minnesota’s distributor statutes, Marketing Associates against International 303.13 and §§ Minn.Stat. (IMA), corporation. a Texas IMA was the such as of litigation. the risk International Shoe, agent at prod- supra, exclusive sales for Weed Eater 326 U.S. hand, 159-60. the other On Toro states an
ucts and had chosen to distribute those
important
corollary
principle:
to this
in various areas of
country
upon
claim sued
is unrelated to
“[W]hen
through local sales
of Toro.
divisions
activities,
forum
defendant’s
he
against
an antitrust action
IMA
have
expect
‘no reason to
to be haled before
and various
in response
other defendants
forum
Shaffer He
[the
state’s] court[s].’
IMA’s termination of
York
Toro’s New
dis-
itner,
186, 216
supra,
[97
tributorship.
support
Evidence in
per-
Id.,
53 L.Ed.2d
The district
presented by the
problem
have been motivated
to the
poseful
apposite
conduct
avoid
and Malone to
by Bassett
J was
by a desire
in B &
The court
instant
case.
indi-
in Minnesota and
long-arm
the Minnesota
addressing whether
this result
not “allow
cated that
it could
to effect service
was
used
statute
actual
because
merely
be achieved
foreign cor-
upon the defendant
process
been
not
infringing product
yet
has
claimed
a wholly
This is
supra.
poration. See
sold in this state.” Land-O-
advertised or
assuming
separate question
whether —
Nod,
F.Supp. at 73. The
supra, 551
state
proper
was
service
Manufacturing Co. v. Solar
on B J
relied
&
statute —the exercise
long-arm
Cir.), cert.
483 F.2d
process.3
with due
jurisdiction comports
J
in B &
To
the court
support
its conclusion
(1973), to
L.Ed.2d 473
process,
it con-
the issue of due
addressed
sold, di-
to have
that “defendant’s
failure
na-
quantity, quality and
cluded that “the
indirectly,
product
rectly
with the
ture of the defendant’s
litigation in
forum
subject
substantial,”
and therefore
plaintiff
it
not wish the
state because
did
J,
not
jurisdiction would
supra,
be able to obtain
was satisfied.
jurisdiction.”
enable defendant
to defeat
specifi-
at
The court did
598.
Land-O-Nod,
supra,
F.Supp.
process analysis the
cally
in its due
discuss
of action to the
relationship of the cause
*5
law
To the extent
that such a
of
principle
v.
and other Su-
forum.
Heitner
Shaffer
case,
J
we
have
in the B &
been stated
B
J
after
&
preme Court cases decided
agree
the
with
district court
that
it was
Furthermore,
nexus between the
make clear that some
“enunciated in dicta.”2
Id.
jurisdiction
only
by
question
B
the
was obtained
the
in
over
defendant
addressed
defendant, by
1(b).
pursuant
J was
the Illinois
to M.S.A. 543.19 subd.
whether
§
sending
charging
plain-
to
letters Minnesota
the
Id.
demanding
infringement
patent
tiff with
Railway
manufacturing
product,
Utili-
had
Co. v. National
it
3. Cf. Sculiin Steel
cease
309,
(8th Cir.1982)
Corp.,
in
within the
F.2d
312
transacted business Minnesota
676
zation
543.19,
1(b).
meaning
(where
inquiry
subd.
§
of Minn.Stat.
into
the court indicated
the
Manufacturing
v.
two-part:
& J
Co. Solar
personal jurisdiction
whether the
is
594,
Cir.),
(8th
415
F.2d
598
cert.
statutory
483
satisfy
require-
presented
the
facts
918,
1417,
39
statute;
U.S.
L.Ed.2d 473
long-arm
of the state
ments
(“[W]e
plaintiff’s
of
are convinced the
cause
jurisdiction
is
the
of
whether
exercise
action arose from the defendant’s transaction
process). The court must
consistent with due
and, therefore, per-
in Minnesota
of business
analyzing
a different source of law
look to
jurisdiction
properly
in ac-
was
obtained
inquiries.
each of these two
543.19,
1(b).
cordance with M.S.A.
subd.
§
Although
long-arm
the state
the reach of
limited,
accordingly
ex-
review is
and we
Our
question
state law and
statute is a
of
federal
validity
press
grounds
opinion
the
of
other
as to
the
accept
required
interpreta-
to
the
courts
by
plaintiff.”)
the
asserted
supreme
given
statute
the state
tion
the
Having
sending
these
that “the
of
concluded
court, the
to which the reach of the
did,
sense,
very
letters
in a
real
constitute a
process
long-arm
is
due
is
statute
limited
id.,
Minnesota,”
the
transaction of business
question
federal law.
following
J
the
B & court then made
observa-
Feeds,
S.A.,
Agro Impex,
Inc.
677
Mountaire
tions,
upon
the dis-
which are the dicta
651,
(8th
Compare B & J
653
the
trict court in
instant case relied:
(where
Manufacturing, supra,
the court
has, itself,
not
fact
the defendant
Supreme
to decisions
the Minnesota
looked
directly
indirectly
[allegedly in-
or
the
the defendant was
Court to determine whether
fringing product]
it did
in the state because
transacting
in the forum state within
business
plaintiff
not
to be able
obtain
wish the
to
statute)
meaning
long-arm
of the Minnesota
jurisdiction
hardly de-
over it in
action
this
with Toro Co. v. Ballas
jurisdiction
Rather,
feats
here.
the extensive
1978) (where the court
F.2d 1267
Cir.
contacts,
together
taken
admonition
Su
of the United States
looked to decisions
preme
court in Hunt
Nevada
[v.
determine whether exercise
Court to
Bank,
State
285 Minn.
N.W.2d
personal jurisdiction by
state
the forum
com
(Minn.1969)], compel
the conclusion that
process).
ported with due
process
service of
was
made and
Minnesota,
subject
litiga-
forum and the
matter of the
business contacts with
including
$107,739.97.
required
satisfy
process.
totalling
tion
to
We
is
See
held
Savchuk,
Rush v.
has, itself,
fact that the defendant
[t]he
62 L.Ed.2d
World-Wide
directly
indirectly
not
sold the “tire
Woodson,
Volkswagen Corp. v.
bead seater”
the state because it did
III. 77], (Minn.1969) compel N.W.2d ] the conclusion that service of sum, requisite relationship among properly made and over the defendants, forum, the litiga- defendant was obtained case; tion lacking is it would be 1(b). M.S.A. subd. § permit unfair fundamentally prose- We are also satisfied that the District cution this lawsuit in Minnesota. As we assumption jursdie- Court’s observed, have there are at least differ- tion defendant did not vio- ent states in which [sic] Bassett and Malone are right late defendant’s to due mattresses; selling (footnote omitted).] F.2d at 598 thus [483 there exist numerous alternative fo- rums in might action be main- us, alleged- In the case before none tained. ly infringing “chiropractic” mattresses have However, been sold in Minnesota.
The order
district court is vacated
and Malone’s other contacts are substantial.
the matter
remanded with instruc-
example,
reported $151,871
For
tions
the district court
to dismiss the
$42,-
annual sales in Minnesota for 1981 and
action
lack of
*6
637 in sales
the first six
months of 1982.
the defendants.
addition,
(1)
the district court found that
BRIGHT,
Judge,
dissenting.
selling bedding
Malone
products
has been
Minnesota since at least 1972 and Malone
I dissent. Malone and Bassett have cer-
representatives
call
on retailers
tain minimum contacts with Minnesota such
Minnesota regarding the sales of mattresses
maintenance
this suit does not of-
“
bedding
(2)
and other
ad-
products, Malone
fend
‘traditional
play
notions of fair
”
vertised the
mattresses
justice.’
substantial
International Shoe
in a
magazine
national
trade
circulated in
310, 316,
Co. v. Washington, 326 U.S.
Minnesota, (3) a
representative
Bassett
154, 158,
(1945),
S.Ct.
quoting
L.Ed.
tracted,
Dallas,
show,
at a
Texas trade
Meyer,
457, 463,
Milliken v.
311 U.S.
Windom, Minnesota,
a
sup-
dealer from
Industries the lawsuit. important F.2d 1267 in two First, Toro, defendant, Manufacturing & J had other In- respects. substantial Associates, with their Marketing “chiropractic” in connection ternational terminat- word except promotion products ed its of Weedeater mattresses outside those states eight part months before initiat- is used where that word case, Malone contin- ed the lawsuit. In our chiropractors’ name of association formal a sell retailers in ued to its the mattresses. Fur- which has endorsed of the law- Minnesota after initiation ther, I would district instruct Second, us, the in the before suit. case enjoin increasing Malone and Bassett from existed, court held that district selling “chiropractic” number dealers while in court found it district states where those lacking. already marketing are the al- legedly infringing mattresses. I conclude that ex therefore case, isted in and would affirm the generally
district court on that issue. See Moore, Wicker, Taggart
J. Moore’s W. J. (2d 1982).
Federal ed. Practice ¶ 4.25[5]
I would further hold its in grant-
court did abuse discretion preliminary
ing Land-O-Nod’s motion for President, EDWARDS, However, Ralph National injunction. the terms of that in- Employees Local Federation of Federal junction overly-broad. are Nagel, Appel- of Carl on behalf injunction purpose preliminary of a lants, preserve quo is “to the status until Dataphase Sys merits determined.” tems, Systems, Inc. v. L C THE ARMY and DEPARTMENT OF 109, 113 prelimi- & 5 Logistics Management Automated injunction, nary as entered the district Activity, Appellees. Systems court, prohibits Malone and Bassett from No. 82-1982. employing “chiropractic” the word in con- nection outside with their mattresses Flori- of Appeals, States Court United except part da where that is used as word Circuit. Eighth of the formal name of an association of 3, 1983. June Submitted chiropractors ap- who have endorsed or proved alleges, the mattresses. Malone Decided June however, at the filed time Land-O-Nod action, complaint in this Malone was *7 “chiropractic” seventy-five approximately dealers
twelve If states outside Florida. correct, pre-
tention is court’s district as
liminary injunction, currently constitut-
ed, preserves alters than the status rather
quo beginning as it existed
case.
Accordingly, I would remand to the dis-
trict to determine
dealers and in which states Malone and “chiropractic”
Bassett marketed their mat-
tresses of the date Land-O-Nod filed its
complaint case. in this I would instruct prohibiting to enter an order employing