P S Products Inc et al v. Maxsell Corporation et al
MEMORANDUM OPINION AND ORDER denying defts' 12 motion to dismiss; pltfs' 14 motion to strike is denied; pltfs' 16 second motion for default judgment is granted; the Court will schedule a hearing on the amount of pltfs' damages by separate order. Signed by Judge Susan Webber Wright on 9/5/12. (vjt)
IN THE UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF ARKANSAS
P. S. PRODUCTS, INC., and
BILLY PENNINGTON, Individually,
MAXSELL CORPORATION and
VITO CONFINO, Individually,
No. 4:12CV00214 SWW
Memorandum Opinion and Order
Before the Court is a motion to dismiss to which plaintiffs responded in opposition.
Plaintiffs also moved to strike the motion. Also pending before the Court is plaintiffs’ second
motion for default judgment against separate defendant Maxsell Corporation (“Maxsell”) to
which Maxsell failed to timely respond. For the reasons stated below, the Court denies the
motion to dismiss and grants the motion for default judgment.
This is a patent infringement case brought by P. S. Products, Inc., and its president, Billy
Pennington, against Maxsell and its president, Vico Confino. Plaintiffs allege they own the
patent for a stun gun which they manufacture and distribute throughout the United States. The
Blast Knuckle Stun Gun is plaintiffs’ most sought after and sold product. Plaintiffs claim
defendants own and operate three websites on which they sell an illegal copy of plaintiffs’ stun
gun. Plaintiffs also allege defendants sell the illegal product through a catalog, Combat
Handguns, which is distributed throughout the United States. Plaintiffs allege that on February
17, 2012, defendants filled an order and shipped one of the illegal products to an individual in
Arkansas. Plaintiffs state they have complied with the statutory requirements of placing notice
and mailing notice of the Letter of Patent on the stun guns they manufacture and sell, and have
given defendants written notice of the infringement.
On June 22, 2012, the Court denied plaintiffs’ motion for a default judgment after
Confino filed a response on behalf of himself and Maxsell. The Court informed defendants that
a corporation may not proceed pro se and directed defendants to answer the complaint within
twenty-one days. On July 5, 2012, Confino filed a pleading which he described as a response to
the Court’s June 22 Order. Mr. Confino said his insurance company refused to defend him and
set forth his attempts to settle the matter. He signed his name to the pleading, as President,
On July 11, 2012, “defendant Vico Confino Maxsell Corporation,” filed a motion to
dismiss on the basis of lack of personal jurisdiction and failure to state a claim.2 Plaintiffs filed a
motion to strike the response Confino filed on July 5, 2012, as well as his motion to dismiss.
Plaintiffs argue it appears Confino filed the pleadings in his capacity as president of Maxsell and
not individually. As the Court explained in the June 22 Order, Maxsell must be represented by
licensed counsel; Confino cannot represent the corporation. Because Maxsell failed to follow
the Court’s Order, failed to obtain licensed counsel, and failed to file an answer, plaintiffs move
to strike the response filed on July 5 and the motion to dismiss filed on July 11. In the
alternative, plaintiffs argue that if the Court treats the motion to dismiss as having been filed by
Docket entry 11.
Docket entry 12.
Confino in his individual capacity, the motion should be denied.
Mr. Confino argues plaintiffs’ complaint should be dismissed for lack of personal
jurisdiction because he made only two sales in Arkansas. In the alternative, he asks the Court to
transfer the case to Florida where he resides. Mr. Confino also moves the Court to dismiss
plaintiffs’ complaint for failure to state a claim.
1. Personal Jurisdiction
In order to defeat a motion to dismiss for lack of personal jurisdiction pursuant to Rule
12(b)(2) of the Federal Rules of Civil Procedure, a plaintiff need only make a prima facie
showing of jurisdiction. Dakota Indus., Inc. v. Dakota Sportswear, Inc. , 946 F.2d 1384, 1387
(8th Cir. 1991). A complaint should not be dismissed for lack of personal jurisdiction before trial
where there exists a genuine issue of material fact as to jurisdiction. Radaszewski v. Telecom
Corp., 981 F.2d 305, 310 (8th Cir. 1992). Jurisdiction need not be proved by a preponderance of
the evidence until trial. Dakota, 946 F.2d at 1387. In determining whether personal jurisdiction
exists, a court first examines whether the exercise of jurisdiction is proper under the forum
state’s long arm statute. Id. If proper under the long arm statute, the court then examines
whether the exercise of personal jurisdiction comports with due process. Id.
Arkansas’ long arm statute provides: “The courts of this state shall have personal
jurisdiction of all persons, and all causes of action or claims of relief, to the maximum extent
permitted by the due process of law clause of the Fourteenth Amendment of the United States
Constitution.” Ark. Code Ann. § 16-4-101(B). Therefore, this Court must examine whether the
exercise of personal jurisdiction over a defendant comports with due process. In the Eighth
Circuit, this involves consideration of five factors: “(1) the nature and quality of the contacts
with the forum state; (2) the quantity of the contacts with the forum state; (3) the relation of the
cause of action to the contacts; (4) the interest of the forum state in providing a forum for its
residents; and (5) the convenience of the parties.” Dakota, 946 F.2d at 1390. “Of these factors,
the first three are the most important.” Id. Due process requires a defendant to have such
minimum contacts with the forum state that the maintenance of a suit does not offend traditional
notions of fair play and substantial justice. International Shoe Co. v. Washington, 326 U.S. 310,
For purposes of specific jurisdiction, the Court must consider whether Confino had
sufficient minimum contacts with Arkansas to subject himself to jurisdiction. The Court must
examine the facts in the light most favorable to plaintiffs, the non-moving parties, and resolve
factual disputes in favor of plaintiffs. Plaintiffs assert Confino owns and controls three websites
that advertise and sell an illegal copy of their stun gun.
In Lakin v. Prudential Securities, Inc., 348 F.3d 704, 711 (8th Cir. 2003), the Eighth
Circuit agreed that the analytical model set out in Zippo Mfg. Co. v. Zippo Dot Com, Inc., 952
F.Supp. 1119 (W.D.Pa. 1997), is appropriate in considering whether a website could provide
sufficient contacts for specific personal jurisdiction.
[T]he [Zippo] court created a ‘sliding scale’ to measure the likelihood of personal
jurisdiction. It noted:
At one end of the spectrum are situations where a defendant clearly does business
over the Internet. If the defendant enters into contracts with residents of a foreign
jurisdiction that involve the knowing and repeated transmission of computer files
over the Internet, personal jurisdiction is proper. At the opposite end are
situations where a defendant has simply posted information on an Internet Web
site which is accessible to users in foreign jurisdictions. A passive Web site that
does little more than make information available to those who are interested in it
is not grounds for the exercise [of] personal jurisdiction. The middle ground is
occupied by interactive Web sites where a user can exchange information with the
host computer. In these cases, the exercise of jurisdiction is determined by
examining the level of interactivity and commercial nature of the exchange of
information that occurs on the Web site.
Lakin, 348 F.3d at 710-11, quoting Zippo, 952 F.Supp. at 1124.
It is not in dispute that Confino’s company’s websites are accessible to residents of
Arkansas via the Internet. Plaintiffs attached copies of the Web site www.maxsell.com which
show the allegedly illegal copy of plaintiffs’ product for sale and they cite one occasion where
defendants sent an illegal product to Arkansas. Mr. Confino admits two sales to Arkansas.
The Court finds that under the Zippo test, the nature and quality of contacts with Arkansas weigh
in favor of exercising personal jurisdiction. Mr. Confino has purposefully availed himself of the
privilege of conducting business in the State of Arkansas by setting up a website by which
residents of Arkansas can and allegedly did purchase alleged copies of products patented by
plaintiffs. The Court further finds that the websites offer continuous contacts with Arkansas and
those contacts are closely related to the subject matter of this action. Arkansas has an interest in
providing a forum to citizens whose patents have been infringed, and it is convenient for
plaintiffs, who were organized and have their principal headquarters in the State of Arkansas, to
litigate this action in Arkansas.
In the alternative, Confino moves to transfer venue of this action to Florida because that
is where he lives and only two sales were made in Arkansas. Plaintiffs oppose such transfer. “In
general, federal courts give considerable deference to a plaintiff’s choice of forum and thus the
party seeking a transfer under section 1404(a) typically bears the burden of proving that a
transfer is warranted.” Terra Int’l, Inc. v. Mississippi Chem. Corp., 119 F.3d 688, 695 (8th Cir.
1997). Considering the convenience of parties, the convenience of the witnesses, and the interest
of justice, the Court finds Confino fails to establish that transfer is warranted.
2. Failure to State a Claim
Mr. Confino moves the Court to dismiss plaintiffs’ claim under Rule 12(b)(6), failure to
state a claim. He contends plaintiffs do not own a valid patent and submits exhibits which he
argues shows a Chinese patent application for a stun gun similar to plaintiffs’ U.S. patented
product. In response, plaintiffs attach copies of their patent and assert that they instructed their
Chinese manufacturer to obtain Chinese patents.3
When matters outside the pleadings are presented to and not excluded by the court, then a
motion to dismiss must be treated as a motion for summary judgment. Fed.R.Civ.P. 12(d).
However, when the court “does not rely upon an affidavit in dismissing a claim or when the
district court makes clear that it ruled only on the motion to dismiss,” Casazza v. Kiser, 313 F.3d
414, 418 (8th Cir. 2002), the motion to dismiss need not be converted into a motion for summary
judgment. See also Porous Media Corp. v. Pall Corp., 186 F.3d 1077, 1079 (8th Cir, 1999)(court
may consider materials that are necessarily embraced by the pleadings in ruling on a motion to
dismiss for failure to state a claim). The Court finds plaintiffs allege enough facts to state claim
for relief that is plausible on its face. Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007).
3. Motion for Default Judgment Against Maxsell
Rule 55 of the Federal Rules of Civil Procedure contemplates a two-step process for the
entry of default judgments. First, the party seeking a default judgment must have the Clerk enter
Docket entry 18 at 2.
the default by submitting the required proof that the opposing party has failed to plead or
otherwise defend. Fed.R.Civ.P. 55(a). Second, pursuant to Rule 55(b), the moving party may
seek entry of judgment on the default under either subdivision (b)(1) or (b)(2) of the rule. Entry
of default under Rule 55(a) must precede grant of a default judgment under Rule 55(b).
The Clerk entered a default against Maxsell on May 30, 2012. On June 22, 2012, the
Court notified the corporation that it must be represented by licensed counsel or it would be in
default. No counsel has entered an appearance for Maxsell. There has been no response to
plaintiffs’ second motion for default judgment against Maxsell.
The Court finds plaintiffs’ motion for default judgment against Maxsell should be
granted. Prior to entering judgment, the Court must have a hearing on the amount of plaintiffs’
damages. The Court will schedule that hearing by separate order.
IT IS THEREFORE ORDERED that defendants’ motion to dismiss [doc. 12] is denied.;
plaintiffs’ motion to strike [doc. 14] is denied; and plaintiffs’ second motion for default judgment
[doc. 16] is granted..
DATED this 5th day of September, 2012.
/s/Susan Webber Wright
UNITED STATES DISTRICT JUDGE
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?