Republic Technologies (NA), LLC et al v. BBK Tobacco & Foods, LLP d/b/a HBI International
Filing
166
MEMORANDUM Opinion and Order Signed by the Honorable Elaine E. Bucklo on 8/7/2017. Mailed notice. (mgh, )
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
Republic Technologies (NA), LLC, and
Republic Tobacco, L.P.,
Plaintiffs,
v.
BBK Tobacco & Foods, LLP d/b/a HBI
International,
Defendant.
--------------------------BBK Tobacco & Foods, LLP d/b/a HBI
International,
Counter-Plaintiffs,
v.
Republic Technologies (NA), LLC,
Republic Tobacco, L.P., and Vanilla
LA Group, Inc.,
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No. 16-cv-3401
Counter-Defendants.
Memorandum Opinion and Order
Before
me
is
counter-defendant
Vanilla
LA
Group,
Inc.’s (“VLA”) motion to dismiss counter-plaintiff/defendant BBK
Tobacco
&
Foods,
counterclaims
for
Federal
of
Rule
LLP,
lack
Civil
d/b/a
of
personal
Procedure
reasons, I deny VLA’s motion.
HBI
International’s
jurisdiction
12(b)(2).
For
(“HBI”)
pursuant
the
to
following
I.
This case involves a trademark dispute between cigarette
rolling
paper
distributors.
At
bottom,
the
dispute
centers
around HBI’s claim that Republic Technologies (NA), LLC, and
Republic Tobacco, L.P. (collectively “Republic” or “plaintiffs”)
and VLA’s packaging and advertising for their “Organic Hemp” OCB
branded rolling papers mimic HBI’s trade dress for its RAW brand
of rolling papers.
The matter arrived in this court when Republic, an Illinois
corporation,
filed
a
complaint
against
HBI,
an
Arizona
corporation, seeking a declaratory judgment that Republic’s OCB
products
did
not
infringe
any
of
HBI’s
trademark
rights.
Republic later amended its complaint, adding claims for unfair
competition
and
trademark
cancellation
under
the
Lanham
Act,
deceptive trade practices under Illinois law, and common law
unfair
competition.
committed
copyright
HBI
countersued,
and
trademark
claiming
that
infringement,
Republic
engaged
in
deceptive trade practices and unfair competition, and falsely
advertised and designated the origin of its products.1
HBI
Republic
subsequently
customer
and
added
counterclaims
distributor
of
the
against
OCB
VLA,
rolling
a
paper
product line. According to HBI’s second amended counterclaims,
1
HBI later added a claim for trademark cancellation, which I
dismissed in an order dated July 26, 2017.
2
VLA is a California corporation with its principal place of
business in Los Angeles. 2d Am. Countercl. ¶ 6. HBI alleges
“[o]n information and belief” that VLA is “either the exclusive
or primary promoter and distributor of OCB brand rolling papers
in the United States.” Id. ¶ 76. In its pleadings, HBI claims
that
VLA
and
Republic
have
sold
and/or
currently
sell
OCB
organic hemp rolling papers in packaging that is confusingly
similar to HBI’s RAW trade dress. Id. ¶¶ 49-62. HBI also alleges
that
the
in-store
displays
that
Republic
and
VLA
use
to
advertise their products are confusingly similar to those used
by HBI. Id. ¶¶ 63-67. According to HBI, by marketing and selling
these OCB branded products to retailers throughout the country,
VLA has infringed on HBI’s trademarks and copyrights and engaged
in deceptive and unfair business practices under the Lanham Act
and Illinois law.
With respect to jurisdiction, HBI alleges that VLA “does
business
in
minimum,
its
[the
Northern
contractual
District
of
relationship
Illinois]
with
through,
Republic,
at
which
resides in [the] District, with respect to the distribution and
sale of OCB brand rolling papers” and through its “distribution
of rolling papers in [the] District.” Id. ¶ 10. HBI further
alleges
that
through
its
VLA
markets
website
OCB
products
(www.rollocb.com).
to
Id.
a
¶¶
national
77-79.
market
On
its
website, VLA lists stores selling OCB products throughout the
3
United States, including thirty-three stores in Illinois, and it
provides wholesale purchase information and contact information
to retailers and distributors. Colvard Decl. ¶¶ 11-21.
In deposition testimony given on June 9, 2017, Guy Matalon,
one of VLA’s two principals, admitted that VLA’s business is not
limited to a single geographic area. Matalon Dep. at 32. He
testified,
“Whoever
wants
to
buy,
I
sell
to.”
Id.
Matalon
explained that VLA connects with customers through store visits,
the VLA website, and trade shows. Id. at 38-39. He admitted that
VLA sells to at least one Illinois distributor an average of
three to four thousand dollars of merchandise annually. Id. at
40,
117.
invoices
At
for
the
deposition,
$5,056.50
in
Matalon
sales
also
made
produced
to
thirteen
fourteen
different
Illinois retailers between 2014 and 2016. HBI’s Opp., Exh. 4
[ECF
No.
shipping
136-3].
At
least
information,
and
nine
eleven
of
these
include
invoices
OCB
include
organic
hemp
products, point of sale items, or both. Id. In his testimony,
Matalon
confirmed
that
these
invoices
reflect
orders
from
Illinois retailers for which payment was received. Matalon Dep.
at
117-18,
relationship
121-23.
with
Matalon
Republic.
also
He
testified
discussed
a
2014
about
VLA’s
meeting
he
attended at Republic’s offices in Glenview, Illinois, Id. at 7172; VLA’s input on point of sale item designs, Id. at 41-42; and
4
VLA’s agreement with Republic regarding VLA’s use of the OCB
trademark. Id. at 129-30.
II.
It
is
the
plaintiff’s
(or,
in
this
case,
the
counter-
plaintiff’s) burden to establish that this court has personal
jurisdiction over the defendant, and “where, as here, the issue
is raised by a motion to dismiss and decided on the basis of
written
materials
rather
than
an
evidentiary
hearing,
the
plaintiff need only make a prima facie showing of jurisdictional
facts.” Tamburo v. Dworkin, 601 F.3d 693, 700 (7th Cir. 2010). I
therefore “take as true all well-pleaded facts alleged in the
[counterclaims]
and
affidavits
other
[or
resolve
any
evidence]
in
factual
favor
disputes
of
the
in
the
[counter-]
plaintiff.” Id.
A federal court may exercise personal jurisdiction over a
defendant in a federal question case “if either federal law or
the law of the state in which the court sits authorizes service
of process to that defendant.” Mobile Anesthesiologists Chicago,
LLC v. Anesthesia Assocs. of Houston Metroplex, P.A., 623 F.3d
440, 443 (7th Cir. 2010); see Fed. R. Civ. P. 4(k)(1). Because
the federal statutes that HBI brings suit under – the Copyright
Act, 17 U.S.C. § 101 et seq., and the Lanham Act, 15 U.S.C. §
1051 et seq. – do not authorize nationwide service of process, I
may only exercise jurisdiction over Vanilla LA “to the extent
5
that
a
court
of
general
jurisdiction
in
Illinois
could.” Illinois v. Hemi Grp. LLC, 622 F.3d 754, 756 (7th Cir.
2010); see also MG Design Assocs., Corp. v. Costar Realty Info.,
Inc., 224 F. Supp. 3d 621, 628 (N.D. Ill. 2016) (Copyright Act
does not authorize nationwide service); IPOX Schuster, LLC v.
Nikko Asset Mgmt. Co., 191 F. Supp. 3d 790, 798 (N.D. Ill. 2016)
(Lanham Act does not authorize nationwide service). To determine
whether an Illinois court could exercise jurisdiction, I look to
the
applicable
state
statute
and
the
federal
Constitution.
Tamburo, 601 F.3d at 700. The Illinois long-arm statute permits
the exercise of jurisdiction to the limits set by the Fourteenth
Amendment's
Due
Process
Clause,2 so
“the
state
statutory
and
federal constitutional inquiries merge.” Id. (citing 735 ILCS §
5/2-209(c)); see also Noboa v. Barceló Corporación Empresarial,
SA, 812 F.3d 571, 572 (7th Cir. 2016).
The Due Process Clause of the Fourteenth Amendment permits
the exercise of personal jurisdiction over a nonconsenting, outof-state
defendant
where
“the
defendant
2
has
certain
minimum
The Illinois jurisdictional statute reads: “A court may also
exercise jurisdiction on any other basis now or hereafter
permitted by the Illinois Constitution and the Constitution of
the United States.” 735 ILCS § 5/2-209(c). Although the statute
refers to both the Illinois and U.S. Constitutions, the Seventh
Circuit has repeatedly noted that there is “no operative
difference” between the state and federal constitutional limits
on personal jurisdiction. Mobile Anesthesiologists, 623 F.3d 440
at 443.
6
contacts with [the forum] such that the maintenance of the suit
does not offend traditional notions of fair play and substantial
justice.” Daimler AG v. Bauman, 571 U.S. ___, 134 S. Ct. 746,
754
have
(2014)
(internal
“purposely
quotations
established
omitted).
minimum
The
contacts
defendant
with
the
must
forum
state such that [it] should reasonably anticipate being haled
into court there.” Felland v. Clifton, 682 F.3d 665, 673 (7th
Cir. 2012) (internal quotations omitted).
“Personal
depending
on
jurisdiction
the
extent
Anesthesiologists,
623
of
F.3d
can
the
at
be
general
defendant's
444.
“General
or
specific,
contacts.” Mobile
jurisdiction
is
‘all-purpose’; it exists only ‘when the [party's] affiliations
with the State in which suit is brought are so constant and
pervasive
as
to
render
it
essentially
at
home
in
the
forum
State.’” Kipp v. Ski Enter. Corp. of Wisconsin, 783 F.3d 695,
697–98 (7th Cir. 2015) (quoting Daimler AG, 134 S. Ct. at 751).
Specific jurisdiction, on the other hand, “is case-specific; the
claim must be linked to the activities or contacts with the
forum.” Id. at 698.
Counter-plaintiff HBI asserts that this court may exercise
specific
jurisdiction
over
VLA
because
of
its
case-related
contacts with the state of Illinois. Because HBI does not argue
that general jurisdiction exists – and, indeed, it appears that
it likely does not – I only address specific jurisdiction.
7
For
a
court
to
exercise
specific
jurisdiction
over
a
defendant, there are “three essential requirements” that must be
met:
(1) the defendant must have purposefully availed
himself of the privilege of conducting business in the
forum state or purposefully directed his activities at
the state, (2) the alleged injury must have arisen
from the defendant's forum-related activities, and (3)
the exercise of jurisdiction must comport with
traditional notions of fair play and substantial
justice.
Felland,
682
F.3d
at
673
(internal
citations
omitted).
In
conducting this analysis, courts look to a defendant’s contacts
“that center on the relations among the defendant, the forum,
and
the
litigation.” Advanced
Tactical
Ordnance
Sys.,
LLC
v.
Real Action Paintball, Inc., 751 F.3d 796, 801 (7th Cir. 2014).
“[T]he relation between the defendant and the forum must arise
out
of
contacts
that
the
defendant himself creates
with
the
forum....” Id. (internal quotations omitted).
A. Purposeful Availment/Purposeful Direction
The purposeful availment/direction inquiry essentially asks
whether VLA “has purposely exploited the Illinois market.” be2
LLC v. Ivanov, 642 F.3d 555, 558 (7th Cir. 2011).3 VLA argues
3
Although HBI alleges intentional torts, it is unnecessary to
“delve into the intricacies of [the Supreme Court’s] ‘express
aiming’ test” where a defendant’s “actual (as opposed to
imputed) contacts with [the forum state] are sufficient to
support the exercise of specific personal jurisdiction.” Virgin
Enterprises Ltd. v. Jai Mundi, Inc., 2014 WL 3605541, at *5
(citing uBID, Inc. v. GoDaddy Grp., Inc., 623 F.3d 421, 427 n.1
8
that it has not. Offering supporting affidavits from its two
principals,
VLA
contends
that:
it
does
not
aim
commercial
activity toward or transact business in Illinois; it has no
employees or offices in the state; it is not licensed to do
business in Illinois; and it does not send sales staff to or
promote its products in Illinois. Zohar Decl. ¶ 3; Matalon Decl.
¶¶ 7-8. In response, HBI argues that VLA may be subjected to
this court’s jurisdiction because of its close relationship with
Republic, an Illinois-based corporation; its marketing and sale
of
the
allegedly
market,
including
merchandise
to
infringing
in
Illinois
materials
Illinois;
its
retailers;
throughout
direct
and
its
the
sale
promotion
of
of
U.S.
OCB
its
Illinois customers to the Illinois market through its website’s
store locator function.
I am not convinced that VLA’s relationship with Republic is
sufficient,
as
HBI
argues,
to
bring
VLA
under
this
court’s
jurisdiction. It is the plaintiff’s contacts with the forum –
not
a
third
party’s
contacts
–
that
establish
minimum
(7th Cir. 2010)); see also Mobile Anesthesiologists, 623 F.3d at
445 (“[The] express aiming [test is] merely one means of
satisfying the traditional due process standard set out in
International Shoe and its familiar progeny.”); Dental Arts
Lab., Inc. v. Studio 360 The Dental Lab, LLC, No. 10-CV-4535,
2010 WL 4877708, at *6 (N.D. Ill. Nov. 23, 2010) (concluding
that “express aiming test” did not apply because defendant held
“itself out as open for business to Illinois consumers and did
in fact affirmatively conduct business in Illinois”) (emphasis
in original).
9
contacts. Walden, 134 S. Ct. at 1122. HBI’s infringement, unfair
competition, and deceptive practices claims against VLA do not
arise from any contract existing between VLA and Republic. The
business
relationship
between
the
two
companies
is
certainly
related to the suit, but it is not central to the claims against
VLA. Thus, Matalon’s 2014 meeting, the 2011 agreement between
Republic and VLA, and other details relating to their business
relationship are not the sorts of contacts needed to show a
connection
between
“the
defendant,
the
forum,
and
the
litigation.” Advanced Tactical, 751 F.3d at 801.
VLA’s other contacts with Illinois, however, are sufficient
to
satisfy
the
purposeful
availment/direction
inquiry.
The
Seventh Circuit’s decision in Illinois v. Hemi Group, LLC, 622
F.3d 754 (7th Cir. 2010), is instructive here. In that case,
Hemi Group, a New Mexico corporation, was haled into an Illinois
court
on
claims
related
to
around
three
hundred
packs
of
cigarettes it sold to an Illinois Department of Revenue agent
through its online store, which advertised its products to every
U.S. state except New York. Id. at 755. Similar to VLA, Hemi
Group
argued
Illinois,
nor
that
did
it
it
was
not
have
registered
employees
to
or
do
business
offices
in
in
the
state. Id. at 756. Nevertheless, the Seventh Circuit affirmed
the district court’s exercise of specific jurisdiction because,
through its website, the defendant “held itself out as open to
10
do business with every state (including Illinois) except New
York” and, in fact, “shipped the cigarettes to their various
destinations,”
including
Illinois,
to
fulfill
customer
orders. Id. at 758. The Seventh Circuit rejected Hemi Group’s
argument that the cigarette purchases “were unilateral actions
by the customers,” and concluded that Hemi Group’s own actions
leading up to and following the sales demonstrated that it had
reached
out
to
the
residents
of
Illinois
enough
to
create
sufficient minimum contacts with the forum. Id. That Hemi Group
only delivered around three hundred packs of cigarettes into
Illinois was not dispositive.4
4
Following Hemi Group, courts in this district have similarly
held that a defendant’s sale of infringing products – even if a
small number – to Illinois residents can be enough to satisfy
the minimum contacts test. See Valtech, LLC v. 18th Ave. Toys
Ltd., No. 14 C 134, 2015 WL 603854, at *4 (N.D. Ill. Feb. 12,
2015) (“Although Defendants' sales in Illinois are very minimal
in comparison to overall sales, these sales to Illinois
residents
still
occurred,
each
resulting
in
an
alleged
intentional tort.”); Virgin Enterprises Ltd. v. Jai Mundi, Inc.,
No. 13 C 8339, 2014 WL 3605541, at *4 (N.D. Ill. July 18, 2014)
(“Hemi also shows that the precise dollar value of [the
defendant’s] sales to Illinois customers — either as an absolute
number or as a percentage of the company's total sales — is not
dispositive for purposes of determining whether specific
personal jurisdiction exists.”); Dental Arts Lab., Inc. v.
Studio 360 The Dental Lab, LLC, No. 10-CV-4535, 2010 WL 4877708,
at *7 (N.D. Ill. Nov. 23, 2010) (“Each time that Defendant used
its allegedly-confusing name in Illinois a tortious act
allegedly was committed. As long as one tortious act is
committed in Illinois, the courts of the state, and thus this
Court, may exercise personal jurisdiction over Defendant.”); see
also Monster Energy Co. v. Wensheng, 136 F. Supp. 3d 897, 906
(N.D. Ill. 2015) (concluding that offers to sell infringing
11
Similar to Hemi Group, VLA made actual sales and deliveries
of the allegedly infringing OCB branded products to Illinois
retailers.
Indeed,
deposition
demonstrate,
merchandise,
as
including
the
invoices
VLA
OCB
sold
organic
produced
at
at
least
hemp
Matalon’s
$5,056.50
rolling
papers,
of
to
thirteen Illinois retailers between 2014 and 2016. HBI’s Opp.,
Exh. 4 [ECF No. 136-3]. Some of these purchases, as VLA points
out, may have occurred at trade shows in other states. But VLA
admits that it fulfilled subsequent orders placed by Illinois
retailers. VLA’s Reply at 8. Furthermore, the invoices suggest
that VLA shipped OCB products to these retailers in Illinois.
HBI’s Opp., Exh. 4 [ECF No. 136-3]. In his deposition testimony,
Matalon also estimated that VLA averages about three to four
thousand
dollars
in
annual
sales
to
an
Illinois-based
distributor. Matalon Dep. at 117. Despite VLA’s denials of doing
business in Illinois, HBI’s supporting documents show that VLA
has
knowingly
sold
its
products
to
Illinois
residents
and,
consequently, has purposefully directed its activities toward
the Illinois market. See Hemi Group, 622 F.3d at 758; Dental
Arts Lab., Inc. v. Studio 360 The Dental Lab, LLC, No. 10-CV4535, 2010 WL 4877708, at *7 (N.D. Ill. Nov. 23, 2010).
products to Illinois
minimum contacts).
residents
12
were
sufficient
to
establish
VLA argues that its sales to the Illinois market are too
insignificant in comparison to its total sales to merit the
exercise
of
personal
jurisdiction.
But,
as
Hemi
Group
demonstrated, the actual or relative volume of sales to the
Illinois market is not dispositive, so long as those sales were
directed
at
conduct.
Illinois
Hemi
Grp.,
customers
622
F.3d
and
at
involve
755,
758;
the
see
challenged
also
Virgin
Enters. Ltd. v. Jai Mundi, Inc., No. 13 C 8339, 2014 WL 3605541,
at *4 (N.D. Ill. July 18, 2014); Dental Arts Lab., 2010 WL
4877708, at *7.
VLA, like Hemi Group, has also held itself out as selling
to the national market. On its website, VLA states that it is a
“distributor[]
of
OCB
products
in
the
American
market”
with
products available in “100s of stores throughout the U.S.A.”
Colvard
Decl.
¶¶
wholesale
catalog,
locator,
and
12-15.
add
contact
VLA
their
VLA
invites
stores
through
retailers
to
the
the
to
view
website’s
website
its
store
or
by
telephone.5 Id. ¶¶ 10-11, 16-21. VLA’s store locator identifies
thirty-three
stores
in
Illinois
selling
its
OCB
branded
products. Id. ¶ 19; see Virgin Enters., 2014 WL 3605541, at *4
(“The listing of five or six Illinois stores on [defendant’s]
website provides an even stronger basis for asserting specific
5
In his deposition testimony, Matalon confirmed that Illinois
retailers could place orders with VLA by calling or emailing the
company through the website. Matalon Dep. at 51, 117-18.
13
personal jurisdiction.”). In short, VLA’s website suggests that
it
is
open
to
selling
its
products
anywhere
in
the
United
States, including in Illinois. Matalon confirmed this in his
deposition when he stated, “I buy and I sell. Whoever wants to
buy, I sell to.” Matalon Dep. at 32. By holding itself out as
selling to the national market, VLA indicated that it is “ready
and willing to do business with Illinois residents.” Hemi Grp.,
622 F.3d at 758; Dental Arts Lab., 2010 WL 4877708, at *6.
VLA
specific
contends
that
jurisdiction
its
passive
website
because
it
not
is
cannot
used
for
support
actual
commerce. It is true that the website here does not involve an
online store like that in Hemi Group. But this fact does not
make VLA’s online presence irrelevant to the minimum contacts
analysis. While maintenance of a passive website alone is not
enough to establish jurisdiction, Jennings v. AC Hydraulic A/S,
383 F.3d 546, 549 (7th Cir. 2004), VLA’s online marketing to the
U.S. market, its online promotion of OCB brand retailers in
Illinois, and its invitation to retailers to contact VLA via its
website or telephone demonstrate that VLA held “itself out as
open to sell its wares to residents of any state in the nation.”
Dental Arts Lab., 2010 WL 4877708, at *6. That VLA was ready and
willing to do business in Illinois, and, in fact, did so through
its
sales
to
Illinois
retailers,
is
enough
to
satisfy
the
purposeful direction/availment inquiry. Hemi Grp., 622 F.3d at
14
757-58; Virgin Enters., 2014 WL 3605541, at *4-5; Dental Arts
Lab., 2010 WL 4877708, at *4-6.
B. Relatedness
“[S]pecific
contacts
with
jurisdiction
the
conduct.” Felland,
forum
682
requires
state
F.3d
at
that
relate
673.
the
to
In
defendant's
the
other
challenged
words,
the
plaintiff’s claims must “arise out of or be related to [the
defendant’s]
minimum
contacts
with
the
forum.” RAR,
Inc.
v.
Turner Diesel, Ltd., 107 F.3d 1272, 1277 (7th Cir. 1997).
According to VLA, HBI fails to allege that VLA had any
material involvement in the conduct giving rise to the suit or
that VLA engaged in any of the challenged conduct in Illinois.
VLA insists that its sales of “a few thousand dollars’ worth of
merchandise” to Illinois retailers have “little relevance” to
the claims that HBI has raised against it. VLA’s Reply at 9.
VLA ignores, however, that many of the sales it made to
Illinois retailers included the very OCB hemp rolling papers
that allegedly infringed HBI’s trademarks. The invoices produced
at Matalon’s deposition indicate that OCB organic hemp products
were purchased by and shipped to Illinois retailers on several
occasions. HBI’s Opp., Exh. 4 [ECF No. 136-3]. Because VLA’s
sales
to
the
Illinois
market
products,
its
“forum
contacts
activities
are
one
and
the
involved
and
its
the
organic
allegedly
same.” Virgin
15
OCB
hemp
infringing
Enters.,
2014
WL
3605541, at *5; Dental Arts Lab., 2010 WL 4877708, at *4 (“The
Court finds that it has specific jurisdiction over Defendant
because Defendant's admitted contacts with Illinois (selling of
its products to Illinois dentists under an allegedly-confusing
name)
are
the
very
tortious
acts
of
which
Plaintiff
complains.”). Like the claims in Hemi Group, HBI’s infringement
claims are therefore sufficiently related to VLA’s contacts with
Illinois.6
C. Fairness
Finally, the exercise of jurisdiction over VLA is only
proper if it “does not offend traditional notions of fair play
and substantial justice.” Hemi, 622 F.3d at 759. To satisfy this
inquiry, courts evaluate:
[T]he burden on the defendant, the forum State's
interest in adjudicating the dispute, the plaintiff's
interest in obtaining convenient and effective relief,
the interstate judicial system's interest in obtaining
the most efficient resolution of [the underlying
dispute], and the shared interest of the several
States in furthering fundamental substantive social
policies.
6
It should be noted that this case is different from Advanced
Tactical, 751 F.3d 796 (7th Cir. 2014), where the Seventh
Circuit held that personal jurisdiction did not exist over a
defendant even though it sent a few orders into the forum state
while an allegedly infringing message appeared on its website.
The court in Advanced Tactical concluded that the plaintiff had
not established a connection between the fulfilled orders and
the litigation. 751 F.3d at 801. Here, however, VLA’s own
invoices show that VLA sent the OCB products with which this
lawsuit is concerned to Illinois retailers.
16
Purdue Research Found. v. Sanofi-Synthelabo, S.A., 338 F.3d 773,
781
(7th
Cir.
2003).
“These
factors
rarely
will
justify
a
determination against personal jurisdiction.” Id. at 781 n.10.
Although VLA contends that this litigation is taxing on its
business, it has not identified any specific reasons – besides
the distance from California and its lack of offices in Illinois
– that defending the case in the Northern District of Illinois
is especially burdensome. Meanwhile, the efficiency gained by
litigating
these
matters
together
will
benefit
HBI
and
the
interstate justice system alike. It is also reasonable to assume
that
the
trademark
state
of
dispute
Illinois
involving
has
an
sales
interest
to
the
in
seeing
Illinois
this
market
adjudicated in Illinois. While VLA understandably would prefer
to litigate these matters in its home state, if at all, that
alone
is
not
enough
to
prevent
the
exercise
of
personal
jurisdiction, especially when the other fairness factors weigh
in favor of exercising personal jurisdiction, as they do here.
III.
For the foregoing reasons, counter-defendant Vanilla LA’s
motion to dismiss for lack of personal jurisdiction is denied.
ENTER ORDER:
Dated: August 7, 2017
Elaine E. Bucklo
U.S. District Judge
17
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