Crazy Debbies Fireworks LLC v. Dynomite Fireworks, LLC et al

Filing 13

MEMORANDUM AND ORDER granting in part and denying in part 8 Motion to Dismiss or, in the alternative, to transfer venue. This case is transferred to the United States District Court for the Western District of Missouri pursuant to 28 U.S.C. § 1631. Signed by District Judge Holly L. Teeter on 12/13/2018. (mls)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF KANSAS
CRAZY DEBBIE’S FIREWORKS LLC
d/b/a RED RHINO FIREWORKS,
Plaintiff,
Case No. 2:18-cv-02323-HLT-KGS
v.
DYNOMITE FIREWORKS, LLC, et al.,
Defendants.

MEMORANDUM AND ORDER
Plaintiff Crazy Debbie’s Fireworks LLC d/b/a Red Rhino Fireworks asserts claims against
Defendants Dynomite Fireworks, LLC and Dynomite Wholesale, LLC for unfair competition and
false designation of origin under federal law and for state-law trademark infringement and unfair
competition based on Defendants’ alleged appropriation of Plaintiff’s mark in promoting and
selling their product. Doc. 1. Defendants move to dismiss pursuant to Federal Rule of Civil
Procedure 12(b)(2) for lack of personal jurisdiction or, in the alternative, to transfer venue. Doc. 8.
The Court concludes that it lacks personal jurisdiction over Defendant Dynomite Fireworks, LLC,1
but, rather than dismissing this action, the Court transfers the case to the United States District
Court for the Western District of Missouri pursuant to 28 U.S.C. § 1631.
I.

BACKGROUND
Consistent with the standard for Rule 12(b)(2) motions, the following background accepts

as true Plaintiff’s well-pleaded factual allegations (unless controverted by affidavit) and resolves
all factual disputes in the affidavits in Plaintiff’s favor.

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The Court makes no finding as to personal jurisdiction over Defendant Dynomite Wholesale, LLC. See infra note 6.

A. The Parties
Plaintiff is a wholesale fireworks distributor with its principal place of business in
Joplin, Missouri. Doc. 1 ¶¶ 2, 9. Among its products, Plaintiff markets and sells fireworks bearing
a mark entitled “ASSASSIN.” Id. at ¶ 10. Plaintiff uses this mark on its website and in its catalogs
to advertise and promote its ASSASSIN-branded fireworks. Id. at ¶¶ 10-12.
Defendant Dynomite Fireworks, LLC (“Dynomite Retail”)—a retail-seller of fireworks—
is a Missouri limited liability company whose sole member resides in Missouri.2 Doc. 8-2 ¶¶ 2-4.
Dynomite Retail also sells fireworks with a mark entitled “ASSASSIN.” Doc. 1 ¶ 14. Dynomite
Retail operates a storefront location in Seymour, Missouri, along with seasonal fireworks stands
in Missouri and Arkansas. Doc. 8-2 ¶ 4. All of Dynomite Retail’s third-party vendors are located
in Missouri. Id. at ¶ 18. Dynomite Retail does not have any offices or physical locations in Kansas,
it does not have any employees or sales representatives in Kansas, and its employees do not travel
to Kansas to solicit business. Id. at ¶¶ 6-7, 14. Dynomite Retail does not direct its advertising to
residents of, or businesses in, Kansas and has never sold any fireworks in Kansas. Id. at ¶¶ 12, 16.
Defendant Dynomite Wholesale, LLC (“Dynomite Wholesale”) is a wholesale-seller of
fireworks, which, like Dynomite Retail, is a Missouri limited liability company with a Missouri
resident as its sole member. Id. at ¶¶ 2, 20-21. Dynomite Wholesale is the owner of USPTO
Registration No. 4936828 for the trademark “ASSASSIN” for fireworks, and, like Dynomite
Retail, markets and sells ASSASSIN-branded fireworks. Id. at ¶ 23; Doc. 1 ¶ 14. Dynomite
Wholesale’s only physical location is in Seymour, Missouri. Doc. 8-2 ¶ 22. All of Dynomite
Wholesale’s third-party vendors are located in Missouri. Id. at ¶ 41. Dynomite Wholesale does not

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Dynomite Retail’s sole member is Anthony Kelly, who has submitted an affidavit in support of Defendants’ motion
to dismiss or, in the alternative, to transfer. Doc. 8-2 ¶ 2. Kelly is also the sole member of Dynomite Wholesale. Id.

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have any offices or physical locations in Kansas, it does not have any employees or sales
representatives in Kansas, and its employees do not travel to Kansas to solicit business. Id. at ¶¶
25-26, 31. Dynomite Wholesale advertises its products nationwide and offers a print catalog that
can be requested by customers or prospective customers. Id. at ¶¶ 33-34. Dynomite Wholesale’s
catalog has been requested by and mailed to eight customers with a Kansas address. Id. at ¶ 36.
Since 2012, Dynomite Wholesale has received a total of $4,565.00 for the sale of ASSASSINbranded fireworks to customers with a Kansas address. Id. at ¶ 39. Kansas customers have
accounted for less than one percent of Dynomite Wholesale’s sales of its fireworks (regardless of
branding) since 2012. Id. at ¶ 40.
Dynomite Retail and Dynomite Wholesale also jointly operate a website where customers
can purchase their products—including ASSASSIN-branded fireworks—at retail or wholesale.
Doc. 11 at 2; Doc. 11-1 ¶ 3; Doc. 11-2.
B. The Dispute
Plaintiff filed this action on June 15, 2018, asserting claims against Defendants for unfair
competition and false designation of origin under the Lanham Act, 15 U.S.C. §§ 1051, et seq., and
claims for trademark infringement and unfair competition in violation of Kansas law. Doc. 1.
Plaintiff alleges Defendants infringed upon its rights by using the ASSASSIN mark to promote
and sell their fireworks. Id. at ¶ 14. Plaintiff claims Defendants’ adoption of the mark to offer and
sell ASSASSIN-branded fireworks is likely to cause confusion, mistake, or deception regarding
the origin, sponsorship, or approval of Defendants’ fireworks, causing consumers to incorrectly
assume that Plaintiff is affiliated with Defendants. Id. at ¶¶ 29, 37.

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II.

ANALYSIS
Defendants move to dismiss this action pursuant to Rule 12(b)(2), arguing that the Court

lacks personal jurisdiction. Doc. 9 at 6-17. In the alternative, Defendants request that the Court
transfer venue to the United States District Court for the Western District of Missouri pursuant to
28 U.S.C. § 1404(a). Id. at 18-21. In its response, Plaintiff relies heavily on Defendants’ website
and Dynomite Wholesale’s Kansas sales in arguing against dismissal. Doc. 11 at 8-12. Plaintiff
does not, however, oppose transfer of venue. Id. at 12.
A. Personal Jurisdiction
A plaintiff bears the burden of establishing personal jurisdiction. OMI Holdings, Inc. v.
Royal Ins. Co. of Can., 149 F.3d 1086, 1091 (10th Cir. 1998). However, in the preliminary stages
of litigation this burden is “light” and where, as here, “there has been no evidentiary hearing, and
the motion to dismiss for lack of jurisdiction is decided on the basis of affidavits and other written
material, the plaintiff need only make a prima facie showing that jurisdiction exists.” Intercon, Inc.
v. Bell Atl. Internet Sols., Inc., 205 F.3d 1244, 1247 (10th Cir. 2000) (quoting Wenz v. Memery
Crystal, 55 F.3d 1503, 1505 (10th Cir. 1995)). Courts accept as true all well-pleaded, nonconclusory facts alleged by the plaintiff, unless those facts are controverted by affidavit. Id. All
factual disputes in the parties’ affidavits are to be resolved in the plaintiff’s favor. Id.
Because the Lanham Act does not provide for nationwide service of process, the Court
applies the law of the forum state. Capitol Fed. Sav. Bank v. E. Bank Corp., 493 F. Supp. 2d 1150,
1158 (D. Kan. 2007). The Kansas long-arm statute is construed to allow jurisdiction to the full
extent permitted by due process. Federated Rural Elec. Ins. Corp. v. Kootenai Elec. Coop., 17
F.3d 1302, 1305 (10th Cir. 1994) (citing Volt Delta Res., Inc. v. Devine, 740 P.2d 1089, 1092 (Kan.
1987)). To satisfy due process, the nonresident defendant must have certain minimum contacts

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with the forum such that the imposition of jurisdiction would not “offend traditional notions of fair
play and substantial justice.” Int’l Shoe Co. v. State of Wash., Office of Unemployment Comp. &
Placement, 326 U.S. 310, 316 (1945) (internal quotations omitted).
The “minimum contacts” standard may be met in one of two ways. First, a defendant who
has “continuous and systematic” contacts with the forum state brings itself within the general
jurisdiction of that state. OMI Holdings, 149 F.3d at 1091. Second, where the activities of a
defendant in a forum state are isolated or do not otherwise rise to the level necessary for an exercise
of general jurisdiction, a court may exercise specific jurisdiction over the defendant if the
defendant has “purposefully directed” its acts at residents of the forum and the claims at issue
“arise out of or relate to” those activities. Id. at 1090-91. In its response to Defendants’ motion,
Plaintiff concedes that the Court lacks general jurisdiction over Defendants.3 Therefore, the Court
confines its analysis to specific jurisdiction.
The specific jurisdiction analysis is two-fold. Id. at 1091. First, the court must determine
whether the nonresident defendant “has such minimum contacts with the forum state ‘that he
should reasonably anticipate being haled into court there.’” Id. (quoting World-Wide Volkswagen
Corp. v. Woodson, 444 U.S. 286, 297 (1980)). Within this inquiry, the court must evaluate whether
the defendant purposefully directed its activities at the forum state and whether the plaintiff’s
claims arise out of actions by the defendant that create a substantial connection with the forum. Id.
Second, if the court finds that the defendant has the sufficient minimum contacts, the court must
consider whether an exercise of jurisdiction over the defendant is reasonable—i.e., whether it
“offends traditional notions of fair play and substantial justice.” Id. (internal quotations omitted).

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Although Defendants devote a substantial portion of their briefing to the argument that the Court lacks general
personal jurisdiction over Defendants (Doc. 9 at 7-10), Plaintiff does not respond to this argument or otherwise
assert that the Court has general jurisdiction. Plaintiff instead limits its argument entirely to the issue of specific
jurisdiction. Doc. 11 at 8-12.

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The Court finds that Dynomite Retail lacks the minimum contacts necessary to support the
exercise of personal jurisdiction by the Court. There is no evidence that Dynomite Retail has
purposely directed its advertising and sales of ASSASSIN-branded fireworks at Kansas residents.
Dynomite Retail has no employees or physical locations in Kansas, and its employees do not travel
to Kansas to solicit business. Doc. 8-2 ¶¶ 6-7, 14. Dynomite Retail operates only a storefront
location in Seymour, Missouri, along with seasonal fireworks stands in Missouri and Arkansas—
in other words, its physical presence is entirely confined to Missouri and Arkansas. Id. at ¶ 4.
Dynomite Retail does not direct advertising to residents of, or businesses in, Kansas and, indeed,
has never sold any fireworks in Kansas. Id. at ¶¶ 12, 16. All sales of ASSASSIN-branded fireworks
to Kansas customers were made by Dynomite Wholesale, rather than Dynomite Retail. Id. at ¶¶
16, 39. And, to the extent Dynomite Retail has infringed upon Plaintiff’s alleged trademark through
its use and sale of its ASSASSIN-branded fireworks, the purported infringement did not occur in
Kansas. See Blue Water Int’l, Inc. v. Hattrick’s Irish Sports Pub, LLC, 2017 WL 4182405, at *5
(M.D. Fla. 2017) (“[T]he considered weight of authority holds that trademark infringement and
unfair competition occur where the alleged infringer sells a product.”).
In its opposition, Plaintiff relies heavily on Dynomite Retail’s website to establish
jurisdiction. However, Plaintiff concedes that there must be something more than the mere fact of
the website in order for the Court to exercise personal jurisdiction. Doc. 11 at 8-9; see also Shrader
v. Biddinger, 633 F.3d 1235, 1241 (10th Cir. 2011) (“The maintenance of a web site does not in
and of itself subject the owner or operator to personal jurisdiction, even for actions relating to the
site, simply because it can be accessed by residents of the forum state.”); Inspired by Design, LLC
v. Sammy’s Sew Shop, LLC, 200 F. Supp. 3d 1194, 1205 (D. Kan. 2016) (noting the Tenth Circuit’s
stance that the mere “maintenance” of a website does not subject a defendant to personal

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jurisdiction). Here, there is no evidence that Dynomite Retail “expressly aimed” its conduct at
Kansas via its website. Indeed, there is no evidence that Dynomite Retail has made any sales to
Kansas customers via the website (as set forth above, there is no evidence that Dynomite Retail
has made any sales to Kansas customers through any medium). Dynomite Retail merely maintains
a website that is accessible in Kansas. This is not enough to subject Dynomite Retail to personal
jurisdiction in this forum. In the absence of the requisite minimum contacts with the state of
Kansas, the Court concludes that it lacks personal jurisdiction over Dynomite Retail.4
B. Dismissal or Transfer
Although the Court finds that it lacks personal jurisdiction over Dynomite Retail, the Court
is not bound to dismiss this action. Rather, the Court has the power to transfer this case to the
United States District Court for the Western District of Missouri pursuant to 28 U.S.C. § 1631,
which provides in pertinent part:
Whenever a civil action is filed in a court . . . and that court finds
that there is a want of jurisdiction, the court shall, if it is in the
interest of justice, transfer such action . . . to any other such court in
which the action . . . could have been brought at the time it was filed.
28 U.S.C. § 1631; see also Trujillo v. Williams, 465 F.3d 1210, 1222-23 (10th Cir. 2006). Where
a court determines it lacks jurisdiction and the interests of justice require transfer rather than
dismissal, the correct approach is to transfer pursuant to § 1631. Trujillo, 465 F.3d at 1223.5
Here, this action could have been brought in the United States District Court for the
Western District of Missouri at the time it was filed—a fact neither party contests. Doc. 9 at 18-

4

Because the Court finds that Dynomite Retail lacks the requisite minimum contacts with Kansas so as to be subject
to personal jurisdiction here, the Court need not proceed to the “reasonableness” inquiry.

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Section 1631 applies in cases where either subject matter or personal jurisdiction is lacking. Trujillo, 465 F.3d at
1222 n.15. Although neither party raises § 1631 in their briefing, the Court may nonetheless transfer the action
under § 1631 sua sponte. Id. at 1222.

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21; Doc. 11 at 12. The Court further finds that it is in the interest of justice to transfer rather than
dismiss this case. The parties’ primary places of business are in Missouri. Doc. 1 ¶¶ 2-4. And, as
Defendants argue in their motion, key witnesses and evidence are located in Missouri. Doc. 9 at
20. Moreover, both parties indicate they believe transfer would be appropriate under these
circumstances. Id. at 18-21; Doc. 11 at 12. Accordingly, the Court transfers this case to the United
States District Court for the Western District of Missouri pursuant to 28 U.S.C. § 1631.6
III.

CONCLUSION
THE COURT THEREFORE ORDERS that Defendants’ motion to dismiss or, in the

alternative, to transfer venue (Doc. 8) is GRANTED IN PART and DENIED IN PART. The Court
lacks personal jurisdiction over Defendant Dynomite Fireworks, LLC. The Court makes no finding
as to Defendant Dynomite Wholesale, LLC.
THE COURT FURTHER ORDERS that this case is transferred to the United States
District Court for the Western District of Missouri pursuant to 28 U.S.C. § 1631. The Clerk of this
Court is directed to send a copy of this order to the Clerk of the Court for the Western District of
Missouri.
IT IS SO ORDERED.
Dated: December 13, 2018

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/s/ Holly L. Teeter
HOLLY L. TEETER
UNITED STATES DISTRICT JUDGE

Because the Court is transferring this action pursuant to § 1631, it makes no finding as to personal jurisdiction over
Dynomite Wholesale. However, even if the Court were to consider the issue and conclude that it has jurisdiction
over Dynomite Wholesale, the Court would transfer this action under 28 U.S.C. § 1404(a). Contrary to Plaintiff’s
assertions (Doc. 11 at 11), because Plaintiff is not a resident of this district, Plaintiff’s choice of forum is given
less deference. See Emp’rs Mut. Cas. Co. v. Bartile Roofs, Inc., 618 F.3d 1153, 1168 (10th Cir. 2010). Moreover,
as set forth in Part II.B, the interests of justice—and the convenience of the parties and witnesses—weigh in favor
of transfer. The parties are in Missouri, the witnesses are in Missouri, and the documents and other evidence are
in Missouri. Doc. 9 at 20. The factors considered by courts in evaluating change of venue pursuant to § 1404(a)
thus warrant transfer. See Emp’rs Mut., 618 F.3d at 1167 (listing factors).

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