The Hilsinger Company v. FBW Investments, LLC

Filing 55

Judge F. Dennis Saylor, IV: ORDER entered. MEMORANDUM AND ORDER ON MOTIONS TO DISMISS. (Pezzarossi, Lisa)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
_______________________________________
)
THE HILSINGER COMPANY,
)
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Plaintiff,
)
)
v.
)
)
FBW INVESTMENTS, LLC, and
)
KLEEN CONCEPTS, LLC,
)
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Defendants.
)
)
_______________________________________)

Civil No.
14-14714-FDS

MEMORANDUM AND ORDER ON
DEFENDANTS’ MOTIONS TO DISMISS
SAYLOR, J.
This is an action for trademark infringement. Plaintiff Hilsinger Company has brought
suit against defendants FBW Investments, LLC and Kleen Concepts, LLC. The complaint
alleges that defendants’ use of the mark “SHIELDME,” in connection with cleaning products has
infringed Hilsinger’s “SHIELD” brand by creating a likelihood of confusion as to whether
“SHIELDME” products “originate with, or are sponsored, affiliated, or approved by, Hilsinger.”
The complaint asserts claims under the Lanham Act, 15 U.S.C. §§ 1114 and 1125, and for
violation of common-law trademark rights.
On February 6, 2015, FBW filed a motion to dismiss the complaint for lack of personal
jurisdiction under Fed. R. Civ. P. 12(b)(2) and improper venue under Fed. R. Civ. P. 12(b)(3), or,
in the alternative, to transfer the case to the Southern District of Texas under 28 U.S.C. §
1404(a). On April 14, 2015, Kleen Concepts filed a motion to dismiss for lack of personal

jurisdiction under Fed. R. Civ. P. 12(b)(2).
For the following reasons, FBW’s motion to dismiss will be granted and Kleen’s motion
to dismiss will be denied.
I.

Background
A.

Factual Background

The Hilsinger Company is a Delaware corporation with a principal place of business in
Plainville, Massachusetts. (Second Am. Compl. ¶ 1). It designs and sells eye-care, eyewear, and
lens-care products. (Id. ¶ 7). In July 1985, Shield Lenscare Products, Inc. (“SLP”) began
marketing and selling optical lens cleaning products bearing the word mark, SHIELD. (Id. ¶ 11).
On April 25, 1989, SLP obtained a federal trademark registration for SHIELD in connection
with “Optical lens cleaning preparation products.” (Reg. No. 1,536,028, Second Am. Compl.
Ex. A). On June 23, 1999, SLP assigned its interest in the SHIELD Brand to The Hilsinger
Company L.P., which subsequently merged with Hilsinger. (Second Am. Compl. ¶ 13). The
brand has been used in commerce continuously since approximately July 1985. (Id. ¶ 14).
FBW Investments, LLC is a limited liability company based in Houston, Texas. (Second
Am. Compl. ¶ 2). Kleen Concepts, LLC is a limited liability company based in Scottsdale,
Arizona. (Id. ¶ 3).
In January 2010, Kleen Concepts began producing and selling products under the
SHIELDME mark. (Russell Decl. ¶ 5, Docket No. 46). In July 2010, it applied for trademark
registration with the USPTO for the SHIELDME mark for a “Kit containing spray to eliminate
bacteria and germs on surfaces, spray to provide antimicrobial protection on surfaces, and
antimicrobial c[l]oth.” (Second Am. Compl. ¶ 18). On September 20, 2011, Kleen Concepts

2

obtained federal trademark registration 4,027,820 for the first SHIELDME mark. (Id. ¶ 19;
Second Am. Compl. Ex. B). On January 21, 2013, Kleen assigned its interest in the ‘820
trademark to FBW. (Second Am. Compl. ¶ 20). On January 22, 2013, FBW applied for
trademark registration with the USPTO for the mark SHIELDME for “Canned pressurized air for
dusting and cleaning purposes; Cleaning agents and preparations; Cleaning agents for cleaning
surfaces; Cleaning preparations for electronic devices and screens; Hand cleaning preparations.”
(Id. ¶ 21). On March 18, 2014, FBW obtained federal trademark registration 4,497,007 for the
second SHIELDME mark. (Id. ¶ 24; Second Am. Compl. Ex. C).
The complaint alleges that in late 2013 or early 2014, products bearing the SHIELDME
marks began appearing in Walmart stores. (Second Am. Compl. ¶ 27). Those products allegedly
appeared in close proximity to SHIELD Brand products that Hilsinger had been selling to
Walmart for years. (Id.). Products bearing the SHIELDME marks are also available for
purchase online, including at Amazon.com. (Scott Decl. Ex. 4, Docket No. 12-1). The website
http://www.shieldmeproducts.com contains information about SHIELDME products, although it
is not possible to buy products directly on the site. (Scott Decl. Ex. 5, Docket No. 12-1). The
website allows users to tweet product information, “like” products on Facebook, e-mail product
information to friends, comment directly on the website, and post comments about the product
on the product Facebook page. (Scott Decl. ¶ 2, Ex. 1, Docket No. 26-1). In addition, a
“contact” page provides website visitors with contact information for “ShieldMe Products” and
allows visitors to send a message. (Scott Decl. Ex. 1, Docket No. 26-1). SHIELDME products
are available for purchase (and in-store pick-up after on-line purchase) at Walmart, Sears, and
Kmart stores throughout Massachusetts. (Scott Decl. ¶ 12, Ex. 7, Docket No. 12-1; see also Suh

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Decl., Docket No. 33-2). These products are also available for purchase at a Micro Center
Computer and Electronics store in Cambridge, Massachusetts. (Stack Decl. ¶¶ 2-4, Exs. 1-2,
Docket No. 47).
On July 30, 2014, Hilsinger sent FBW a cease-and-desist letter demanding that it stop
using the SHIELDME marks. (Scott Decl. Ex. 2). On August 14, 2014, attorney Maria Speth
responded to the cease-and-desist letter. (Scott Decl. Ex. 3). In her response, she stated the
following:
Our firm represents FBW Investments, LLC, the owner of the federally registered
trademark SHIELDME in connection with “kits containing sanitizing spray to
eliminate the growth of bacteria and germs on surfaces, disinfecting spray to provide
antimicrobial protection on surfaces, and cloth wipes impregnated with all purpose
disinfecting preparations, all used for bacteria and germ prevention” and in
connection with “canned pressurized air for dusting and cleaning purposes; cleaning
agents and preparations; cleaning agents for cleaning surfaces; cleaning preparations
for electronic devices and screens; hand cleaning preparations.” (Registration
numbers 4027820 and 4497007). Our client has used the SHIELDME trademark in
connection with the products described above for over four years.
(Id.).
In this proceeding, Speth filed an affidavit in which she stated that in responding to the
cease and desist letter, she was acting “on behalf of and at the direction of Kleen Concepts.”
(Speth Decl. ¶ 7). She stated that “[i]n hindsight, I should have clarified in my August 14, 2014
letter that although FBW was the registrant, Kleen Concepts was the entity that manufactured
and sold the SHIELDME product.” (Id. ¶ 8).
Ronnie Weinstein, a managing member of FBW, also submitted an affidavit, in which he
stated that “FBW has no business operation of any kind. It does not manufacture or sell any
product, and it does not provide any service. It only holds real estate assets located in Texas.”
(Weinstein Decl. ¶ 2, Docket No. 9-1). He further stated that “FBW does not use the
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SHIELDME trademark or make, sell or distribute any product identified by the mark
SHIELDME. To FBW’s knowledge, Kleen Concepts is the only entity that has used the
SHIELDME mark and sold products under that name.” (Id. ¶ 7).
Grant Russell, the manager of Kleen Concepts, submitted an affidavit stating that “FBW
does not use the SHIELDME trademark or make, sell or distribute any product identified by the
mark SHIELDME.” (Russell Decl. ¶ 11, Docket No. 9-2). He further stated that “FBW is not
involved in Kleen Concepts’ operations. FBW has no control over the sale of any SHIELDME
products, including the states in which Kleen Concepts markets, distributes, or sells products.
FBW does not receive any form of compensation arising from Kleen Concept’s [sic] use of the
SHIELDME trademark.” (Id. ¶ 12).
At the time that Hilsinger filed this action against FBW, FBW was the record owner of
the two SHIELDME mark trademark registrations. (See Weinstein Decl. ¶ 5, Docket No. 9-1).
Although the marks were assigned to FBW, the assignment was done “with the understanding
that Kleen Concepts would continue to use the trademark.” (Id.). On February 12, 2015, after
this action had commenced, FBW assigned both SHIELDME trademarks to Kleen Concepts.
(Speth Decl. ¶ 9).
According to Russell, Kleen Concepts “is based entirely in Arizona and has no
operations, offices, assets, or employees in Massachusetts.” (Russell Decl. ¶ 4, Docket No. 46).
It “has not shipped the SHIELDME products into Massachusetts and does not ship [them] into
Massachusetts.” (Id. ¶ 6). Although Kleen Concepts sells to Walmart, Walmart “picks up
SHIELDME products from Kleen Concepts’ facility in Scottsdale, Arizona. From Scottsdale,
Walmart trucks the products to its distribution centers, none of which are in Massachusetts.” (Id.

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¶ 7). Kleen Concepts admits that Walmart “ships a small fraction of the SHIELDME products
from its distribution center to its retail stores in Massachusetts.” (Id. ¶ 8). Kleen Concepts also
sells to Sears Roebuck & Co., and ships SHIELDME products to Sears at distribution centers in
Pennsylvania, Illinois, Texas, and California. (Id. ¶¶ 9, 10). It does not ship those products
directly to Sears or Kmart stores in Massachusetts. (Id. ¶ 11). Likewise, Kleen Concepts admits
that it sells its products on Amazon. (Id. ¶ 12). It does not ship directly to customers who buy
on Amazon. (Id. ¶ 14). Rather, it ships SHIELDME products to Amazon’s distribution centers
in Kentucky, Pennsylvania, Arizona, and Indiana. (Id. ¶ 13). In 2014, “Kleen Concepts sold a
total of $11,090 worth of SHIELDME lens cleaning products to third-party retailers who brought
the products into Massachusetts.” (Id. ¶ 18). It sold a total of “$14,900 in all SHIELDME
products . . . to third-party retailers who brought the products into Massachusetts.” (Id. ¶ 19).
According to Russell, “Kleen Concepts does not spend and has never spent any money on
marketing targeted at Massachusetts residents.” (Id. ¶ 20).
B.

Procedural Background

On December 23, 2014, Hilsinger filed the complaint in this case against FBW.
Hilsinger filed an amended complaint on January 23, 2015. On February 6, 2015, FBW filed a
motion to dismiss for lack of personal jurisdiction under Fed. R. Civ. P. 12(b)(2) and improper
venue under Fed. R. Civ. P. 12(b)(3), or, in the alternative, to transfer the case to the Southern
District of Texas under 28 U.S.C. § 1404(a). In its motion to dismiss, FBW contends that it has
never made or sold any product that uses the SHIELDME mark.
On March 6, 2015, Hilsinger filed a motion to amend the complaint to “add additional
grounds to cancel [FBW’s] federal trademark registrations, to add a count for declaratory

6

judgment as to forfeiture of trademark rights, and to add Kleen Concepts . . . as a party
defendant.” On April 2, 2015, the Court granted the motion to amend. The second amended
complaint alleges (1) federal trademark infringement in violation of the Lanham Act, 15 U.S.C.
§ 1114; (2) federal unfair competition and false designation of origin in violation of the Lanham
Act, 15 U.S.C. § 1125(a); and (3) unfair competition in violation of common-law trademark
rights. Hilsinger seeks (1) cancellation of the two SHIELDME trademark registrations (Reg. No.
4,027,820 and Reg. No. 4,497,007); (2) a declaratory judgment that FBW has failed to control
Kleen Concepts’ use of the accused mark and has thus lost any rights it may have had in them
and that Kleen Concepts has no rights in the accused marks; (3) damages; (4) injunctive relief;
and (5) attorneys’ fees and costs.
On April 14, 2015, Kleen Concepts filed a motion to dismiss for lack of personal
jurisdiction. On May 12, 2015, the Court held an evidentiary hearing on the two motions to
dismiss.
II.

Burden of Proof
The plaintiff bears the burden of showing that the court has personal jurisdiction over the

defendant. Daynard v. Ness, Motley, Loadholt, Richardson & Poole, P.A., 290 F.3d 42, 50 (1st
Cir. 2002). A district court faced with a motion to dismiss under Rule 12(b)(2) may choose
among several methods for determining whether the plaintiff has met its burden: the “prima
facie” standard, the “preponderance-of-the-evidence” standard, or the “likelihood” standard.
Daynard, 290 F.3d at 50-51, 51 n.5; Foster-Miller, Inc. v. Babcock & Wilcox Can., 46 F.3d 138,
145-47 (1st Cir. 1995); Boit v. Gar-Tec Prods., Inc., 967 F.2d 671, 675-78 (1st Cir. 1992).
When a district court considers a motion to dismiss for lack of personal jurisdiction

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without first holding an evidentiary hearing, the prima facie standard governs its determination.
United States v. Swiss Am. Bank, 274 F.3d 610, 618 (1st Cir. 2001). In conducting a prima facie
analysis, the court is required to take specific facts affirmatively alleged by the plaintiff as true
(whether or not disputed), construing them in the light most favorable to the plaintiff; the court,
however, should not credit “conclusory allegations or draw farfetched inferences.”
Ticketmaster-New York, Inc. v. Alioto, 26 F.3d 201, 203 (1st Cir. 1994). The court can “add to
the mix facts put forward by the defendants, to the extent that they are uncontradicted.”
Daynard, 290 F.3d at 51. Although the court will construe the facts in the light most favorable
to the plaintiff in a motion to dismiss, the plaintiff still has the burden of demonstrating each
jurisdictional requirement. See Swiss American, 274 F.3d at 618. Pursuant to Fed. R. Civ. P. 12,
a defense of lack of jurisdiction “whether made in a pleading or by motion, . . . must be heard
and decided before trial unless the court orders deferral until trial.” Fed. R. Civ. P. 12(i). “If a
district court applies the prima facie standard and allows a motion to dismiss, it complies with
the directive that the motion ‘shall be heard and determined before trial. . . . .’” Boit, 967 F.2d at
676. However, if it “applies the prima facie standard and denies the motion to dismiss, it is
implicitly, if not explicitly, ordering ‘that hearing and determination [of the motion to dismiss]
be deferred until the trial.’” Id. (alterations in original). Although the prima facie standard is a
“useful means of screening out cases in which personal jurisdiction is obviously lacking, and
those in which the jurisdictional challenge is patently bogus[,] . . . the approach offers little
assistance in closer, harder-to-call cases, particularly those that feature conflicting versions of
the facts.” Foster-Miller, 46 F.3d at 145.
In cases that feature conflicting versions of the facts, courts may therefore choose to

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employ the “preponderance-of-the-evidence” standard or the “likelihood” standard to consider
the question of personal jurisdiction. This is especially true when a court determines that “in the
circumstances of a particular case it is unfair to force an out-of-state defendant to incur the
expense and burden of a trial on the merits in the local forum without first requiring more of the
plaintiff than a prima facie showing of facts essential to in personam jurisdiction.” Boit, 967
F.2d at 676. When applying the “preponderance-of-the-evidence” standard, courts may hear and
determine the motion to dismiss before trial. Id. The “preponderance-of-the-evidence” standard
“necessitates a full-blown evidentiary hearing at which the court will adjudicate the
jurisdictional issue definitively before the case reaches trial.” Foster-Miller, 46 F.3d at 146.
The court may consider “all relevant evidence proffered by the parties and mak[e] all factual
findings essential to disposition of the motion.” Boit, 967 F.2d at 676. “After the parties have
proffered their evidence, the court may weigh evidence and make findings about whether
plaintiff has made a showing as to each jurisdictional fact. In doing so, it may apply a
preponderance-of-the-evidence standard.” Id. Although the preponderance of the evidence
standard allows the court to resolve the issue of personal jurisdiction definitively, “troubling
issues may later be presented, in the same or another forum, as to whether doctrines of either
‘issue preclusion’ or ‘law of the case’ preclude a party from asserting at trial . . . contentions of
fact contrary to what the district court found at the pretrial hearing.” Id. at 677. Such issues may
be especially concerning “when factual issues are common to both the jurisdictional question
and the claim on the merits.” Id.
Therefore, if the court determines that (1) resolving a motion “on the prima facie
standard (thereby deferring the final jurisdictional determination until trial) imposes on a

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defendant a significant expense and burden of trial on the merits in the foreign forum that is
unfair in the circumstances,” and (2) resolving a motion on the “preponderance-of-the-evidence”
standard presents potential issues regarding issue preclusion and law of the case, it may employ a
third option: the intermediary “likelihood” standard. Id. Under that standard, “even though
allowing an evidentiary hearing and weighing evidence to make findings, the court may merely
find whether the plaintiff has shown a likelihood of the existence of each fact necessary to
support personal jurisdiction.” Id. The “likelihood” standard “constitutes an assurance that the
circumstances justify imposing on a foreign defendant the burdens of trial in a strange forum, but
leaves to the time of trial a binding resolution of the factual disputes common to both the
jurisdictional issue and the merits of the claim.” Foster-Miller, 46 F.3d at 146. In evaluating a
motion to dismiss on a “likelihood” standard, the court may “place reasonable constraints on the
scope and length of the evidentiary hearing.” Boit, 967 F.2d at 678. Although the court may
“tak[e] into account evidence offered by the defendant[s] as well as that offered by the
plaintiff[], and consider[] the scope of the opportunity of each party to proffer evidence,” it “may
dismiss after proceeding only far enough to find that plaintiffs have not shown a likelihood of the
existence of each fact essential to jurisdiction.” Id. Judges employing the “likelihood” standard
“should proceed with great care.” Foster-Miller, 46 F.3d at 148. Prior to using the “likelihood”
standard, it is important “to ensure that parties are given satisfactory notice, reasonable access to
discovery, and a meaningful opportunity to present evidence.” Id. at 148-49.
Here, there is an apparent factual dispute as to whether FBW actually manufactures or
sells products with the SHIELDME mark. Hilsinger has submitted a letter from attorney Maria
Speth in which she purports to represent FBW. In that letter, she stated that her “client has used

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the SHIELDME trademark in connection with the products described above for over four years.”
(Scott Decl. Ex. 3, Docket No. 12-1). In response, FBW has submitted affidavits from
Weinstein, Russell, and Speth in which they stated that Speth in fact represented Kleen
Concepts, that FBW has never used the SHIELDME trademark, Kleen Concepts is the only
entity that has used the SHIELDME mark, and that FBW has no control over Kleen Concepts.
(Speth Decl; Weinstein Decl, Docket No. 9-1; Russell Decl., Docket No. 9-2). In light of that
apparent dispute, the Court set the matter for an evidentiary hearing. Any factual issues as to
whether FBW manufactures or sells products with the SHIELDME mark that may require
resolution to determine the jurisdictional question may also overlap with the merits of this case.
Accordingly, the Court will apply the “likelihood” standard to resolve defendants’ motions to
dismiss for lack of personal jurisdiction.1
III.

Findings of Fact
The Court finds that there is a likelihood that the following jurisdictional facts exist.2

1.

FBW has never manufactured, sold, distributed, or marketed any products identified by
the SHIELDME mark.

1

Based on the First Circuit’s instruction in Foster-Miller, 46 F.3d at 148, the Court held a conference on
June 2, 2015, during which it advised the parties that it would apply the likelihood standard. The Court asked the
parties whether further discovery would be helpful or whether the evidentiary hearing needed to be reopened prior to
the Court making its ruling. On June 4, 2015, Hilsinger notified the Court that it “neither requires jurisdictional
discovery nor requests that the evidentiary hearing be reopened.” (Hilsinger’s Notice Regarding Jurisdictional
Discovery & Evidentiary Hearing, Docket No. 53). On June 5, 2015, Kleen Concepts notified the Court that “it does
not request that the hearing be reopened and does not believe that additional jurisdictional discovery is required.”
(Kleen Concepts’ Notice, Docket No. 54).
2

The facts are derived from the following materials: (1) Second Am. Compl., Docket No. 27; (2)
Weinstein Decl., Docket No. 9-1; (3) Russell Decl., Docket No. 9-2; (4) Scott Decl., Docket No. 12-1; (5) Speth
Decl., Docket No. 17-2; (6) Russell Decl., Docket No. 21-1; (7) Scott Decl., Docket No. 26-1; (8) Nahmias Decl.,
Docket No. 33-1; (9) Suh Decl., Docket No. 33-2; (10) Russell Decl., Docket No. 46; (11) Stack Decl., Docket No.
47; (12) Pl.’s Exs. 1-19 for May 12, 2015 Hr’g; (13) Russell Test. at May 12, 2015 Hr’g; (14) Weinstein Test. at
May 12, 2015 Hr’g; (15) Nahmias Test. at May 12, 2015 Hr’g.

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2.

Kleen Concepts is the only entity that has used the SHIELDME mark and sold products
under that name.

3.

FBW has no control over Kleen Concepts’ operations. Specifically, FBW has no control
over the manufacturing, sale, or distribution of any SHIELDME products.

4.

Although FBW was the registered owner of two SHIELDME trademarks (one through
assignment and one by original application to the USPTO) at the time this litigation
began, FBW had (apparently informally) licensed the use of these trademarks to Kleen
Concepts. At the time this litigation commenced, Kleen Concepts had an exclusive
license to use the SHIELDME marks.

5.

Kleen Concepts is based in Arizona and has no operations, offices, assets, or employees
in Massachusetts. It does not ship products directly into Massachusetts.

6.

Kleen Concepts sells SHIELDME products to Walmart. These products appear in the
Walmart vision department of three Walmart brick-and-mortar stores in Massachusetts.
Walmart collects these products from Kleen Concepts in Arizona, ships them to
distribution centers, and sends them to retail locations.

7.

Kleen Concepts sells SHIELDME products to Sears. These products appear in a total of
three Sears and Kmart stores in Massachusetts. Kleen Concepts ships these products to
Sears distribution centers in Pennsylvania, Illinois, Texas, and California, and Sears
distributes them to retail locations from there.

8.

SHIELDME products are also available at a Micro Center store in Cambridge,
Massachusetts. Micro Center has only one location in Massachusetts. Kleen Concepts
sends its products to Micro Center in Ohio, and Micro Center distributes them to retail

12

locations from there. Kleen Concepts has sold approximately $3,000 worth of
SHIELDME products through Microcenter in Massachusetts every year since 2010,
when Micro Center opened its store in Cambridge.
9.

SHIELDME products are available online on Amazon marketplace. Kleen Concepts
does not ship directly to customers who buy on Amazon. It ships SHIELDME products
to Amazon’s distribution centers in Kentucky, Pennsylvania, Arizona, and Indiana.

10.

Kleen Concepts sells its products to approximately three or four third-party distributors.
Among the distributors is Petra Industries Wholesale Distributor. Kleen Concepts sends
SHIELDME products to the third-party distributors, who then populate online retailers
with these products. Best Buy and Staples are two of the online retailers who sell these
products online.

11.

In 2014, Kleen Concepts had total Massachusetts sales of SHIELDME lens-cleaning
products of $11,090 and $14,900 for all SHIELDME products. Those sales represent the
totals sold through retailers with brick-and-mortar stores in Massachusetts. They do not
include sales into Massachusetts through online marketplaces. Those products ranged in
price from $0.99 to $19.99. In 2014, the total revenue of all sales from SHIELDME
products was approximately $3 million.

12.

Kleen Concepts has never advised any of the retailers or distributors that sell its products
to not sell or distribute them in Massachusetts.

13.

Kleen Concepts desires a nationwide presence, and it does not want to carve out an
important market such as Massachusetts.

14.

Kleen Concepts runs two websites: www.shieldmeproducts.com and
www.kleenconcepts.com. These websites are available to people in Massachusetts.
13

15.

The website www.shieldmeproducts.com contains information about SHIELDME
products. It allows users to tweet product information, “like” products on Facebook, email product information to friends, comment directly on the website, and post comments
about the product on the product Facebook page. In addition, a “contact” page provides
website visitors with contact information for “ShieldMe Products” and allows visitors to
send a message to Kleen Concepts. Although consumers cannot buy products directly on
the website, they could contact Kleen Concepts to determine where they can buy
SHIELDME products.

16.

Kleen Concepts became aware of the allegation that SHIELDME products were
infringing Hilsinger’s SHIELD trademark in July 2014, when it received a cease-anddesist letter from Hilsinger.

17.

On February 12, 2015, after the litigation against FBW had commenced, FBW assigned
both SHIELDME trademark registrations to Kleen Concepts.

IV.

Standard of Review
The exercise of personal jurisdiction over a defendant must be authorized by statute and

consistent with the due process requirements of the United States Constitution. Nowak v. Tak
How Invs., Ltd., 94 F.3d 708, 712 (1st Cir. 1996); Intech, Inc. v. Triple “C” Marine Salvage,
Inc., 444 Mass. 122, 125 (2005); Good Hope Indus., Inc. v. Ryder Scott, Co., 378 Mass. 1, 5-6
(1979). Furthermore,
[a] district court may exercise authority over a defendant by virtue of either general
or specific jurisdiction. Specific jurisdiction exists when there is a demonstrable
nexus between a plaintiff’s claims and a defendant’s forum-based activities. General
jurisdiction exists when the litigation is not directly founded on the defendant’s
forum-based contacts, but the defendant has nevertheless engaged in continuous and
systematic activity, unrelated to the suit, in the forum state.

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Swiss Am. Bank, 274 F.3d at 618 (citations omitted) (internal quotation marks omitted).
To establish personal jurisdiction, plaintiff must show that the requirements of the
Massachusetts long-arm statute, Mass. Gen. Laws ch. 223A, § 3, are satisfied, and that the
exercise of jurisdiction is consistent with constitutional due process. Daynard, 290 F.3d at 52;
Boit, 967 F.2d at 675; Intech, Inc. v. Triple “C” Marine Salvage, Inc., 444 Mass. 122, 125
(2005). The Supreme Judicial Court has interpreted the long-arm statute as extending as broadly
as to the limits of constitutional due process. Daynard, 290 F.3d at 52; “Automatic” Sprinkler
Corp. of America v. Seneca Foods Corp., 361 Mass. 441, 443 (1972). Therefore, the relevant
inquiry is the constitutional one.
Due process requires that a defendant over whom a Massachusetts court will exercise
jurisdiction has maintained “minimum contacts” with the state “such that maintenance of the suit
does not offend traditional notions of fair play and substantial justice.” International Shoe Co. v.
Washington, 326 U.S. 310, 316 (1945). It is well-established that the Due Process Clause
imposes three requirements on the exercise of jurisdiction over out-of-state defendants. Harlow
v. Children's Hosp., 432 F.3d 50, 57 (1st Cir. 2005).
First, the defendant must have sufficient ‘minimum contacts’ with the
[Commonwealth]. For specific jurisdiction, the plaintiff's claim must be related to
the defendant's contacts. For general jurisdiction, in which the cause of action may
be unrelated to the defendant's contacts, the defendant must have continuous and
systematic contacts with the state. Second, for either type of jurisdiction, the
defendant’s contacts with the state must be purposeful. And third, the exercise of
jurisdiction must be reasonable under the circumstances.
Id. at 57.
V.

Analysis
Defendants contend that this case should be dismissed for lack of personal jurisdiction.

As to FBW, plaintiff contends that the Court has specific jurisdiction because (1) it was the
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registered owner of the SHIELDME trademarks, (2) it used the SHIELDME marks, and (3)
SHIELDME products were sold at brick-and-mortar stores in Massachusetts. As to Kleen
Concepts, plaintiff contends that the Court has both general jurisdiction and specific personal
jurisdiction. It contends that the Court has general jurisdiction because Kleen’s contacts with
Massachusetts are continuous and systematic based on the sale of its products in brick-andmortar retail stores in Massachusetts. It contends that the Court has specific jurisdiction over
Kleen Concepts because (1) Kleen Concepts maintains an interactive website, accessible in
Massachusetts, (2) its products are available for purchase in brick-and-mortar and online retail
stores in Massachusetts, and (3) Hilsinger has suffered financial harm in Massachusetts.
A.

Kleen Concepts Specific Jurisdiction
1.

Relatedness

To satisfy the relatedness requirement, “the claim underlying the litigation must directly
arise out of, or relate to, the defendant’s forum-state activities.” Daynard, 290 F.3d at 60
(quoting Foster-Miller, 46 F.3d at 144). Hilsinger has affirmatively alleged that defendant
infringed on its trademark by selling its products in Massachusetts and by operating an infringing
website, causing it harm in Massachusetts. Therefore, the first jurisdictional prong is met as to
Kleen Concepts.
2.

Purposeful Availment

A defendant’s in-state contacts “must represent a purposeful availment of the privilege of
conducting activities in the forum state, thereby invoking the benefits and protections of that
state’s laws and making the defendant’s involuntary presence before the state’s courts
foreseeable.” Daynard, 290 F.3d at 61 (quoting Foster-Miller, 46 F.3d at 144). “The
cornerstones upon which the concept of purposeful availment rest[s] are voluntariness and
16

foreseeability.” Id. (quoting Sawtelle v. Farrell, 70 F.3d 1381, 1391 (1st Cir. 1995)).
“Voluntariness requires that the defendant’s contacts with the forum state ‘proximately result
from actions of the defendant himself.’” Adams v. Adams, 601 F.3d 1, 6 (1st Cir. 2010) (quoting
Phillips v. Prairie Eye Ctr, 530 F.3d 22, 28 (1st Cir. 2008)) (emphasis in original). “The
contacts must be deliberate, and ‘not based on the unilateral actions of another party.’” Id.
(quoting Phillips, 530 F.3d at 28).
There does not appear to be any dispute that SHIELDME products are sold in
Massachusetts through both brick-and-mortar stores and online retailers. However, there do not
appear to be any facts that support a finding that Kleen Concepts sells directly to Massachusetts
consumers or ships directly to Massachusetts locations. Instead, Hilsinger’s jurisdictional theory
relies in part on the stream-of-commerce theory.
a.

The Stream-of-Commerce Theory

The starting point for analysis of the stream-of-commerce theory is the Supreme Court’s
decision in World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286 (1980). In World-Wide
Volkswagen, a husband and wife brought a products-liability action in Oklahoma after they
sustained injuries in an accident in Oklahoma involving an automobile that they purchased in
New York. Id. at 288. The defendants were the automobile’s manufacturer, its importer, its
regional distributor, and its retail dealer. Id. The retailer and regional distributor moved to
dismiss for lack of personal jurisdiction. Id. at 288-89. The Court found that where the retailer
and regional distributor limited their sales to the New York area and conducted no activity
whatsoever in Oklahoma, “the mere ‘unilateral activity of those who claim some relationship
with a nonresident defendant cannot satisfy the requirement of contact with the forum State.’”
Id. at 298 (quoting Hanson v. Denckla, 357 U.S. 235, 253 (1958)). Therefore, the mere fact that
17

the automobile sold in New York was driven by the plaintiffs to Oklahoma did not support a
finding of minimum contacts to support personal jurisdiction. Id. at 298-99.
The First Circuit first examined a stream-of-commerce fact pattern in Dalmau Rodriguez
v. Hughes Aircraft Company, 781 F.2d 9 (1st Cir. 1986). In Dalmau Rodriguez, a tort action was
brought against a helicopter manufacturer after the helicopter crashed, leaving two of its
occupants seriously injured. Id. at 10. The First Circuit rejected the “stream-of-commerce”
theory for purposeful availment. Id. at 15. The court found that the manufacturer’s only
contacts “were the submission of [a] bid, a trip by a[n] . . . employee for technical help and
advice, and a visit by a . . . sales representative to Puerto Rico in 1977 or 1978.” Id. at 14-15.
Under those circumstances, the court held that “[a]ssuming that [the manufacturer] knew that the
destination of the helicopters was Puerto Rico, [the court did] not think that the sale of two
helicopters to a police department can be the source of a stream of commerce.” Id. at 15.
The Supreme Court next ruled on the stream-of-commerce theory in Asahi Metal Indus.
Co. v. Superior Ct. of Calif., Solano Cnty., 480 U.S. 102 (1987). In Asahi, a plaintiff brought a
product liability action in California after a motorcycle accident. Id. at 106. One of the
defendants was Cheng Shin, the manufacturer of the motorcycle tire tube. Id. Cheng Shin filed
cross complaints seeking indemnification from its codefendants and Asahi, the Japanese
manufacturer of the tube’s valve assembly. Id. Asahi manufactured its tire valve assemblies in
Japan, sold them and shipped them to Cheng Shin in Taiwan, and Cheng Shin incorporated them
into its tire tubes, some of which ended up in California. Id. Although the entire court
determined that the facts of the case did not support the exercise of personal jurisdiction, there
was no majority decision. The plurality decision of four justices by Justice O’Connor held that
the
18

“substantial connection,” between the defendant and the forum State necessary for
a finding of minimum contacts must come about by an action of the defendant
purposefully directed toward the forum State. The placement of a product into the
stream of commerce, without more, is not an act of the defendant directed toward the
forum State. Additional conduct of the defendant may indicate an intent or purpose
to serve the market in the forum State, for example, designing the product for the
market in the forum State, advertising in the forum State, establishing channels for
providing regular advice to customers in the forum State, or marketing the product
through a distributor who has agreed to serve as the sales agent in the forum State.
But a defendant’s awareness that the stream of commerce may or will sweep the
product into the forum State does not convert the mere act of placing the product into
the stream into an act purposefully directed toward the forum State.
Assuming, arguendo, that respondents have established Asahi’s awareness that some
of the valves sold to Cheng Shin would be incorporated into tire tubes sold in
California, respondents have not demonstrated any action by Asahi to purposefully
avail itself of the California market. Asahi does not do business in California. It has
no office, agents, employees, or property in California. It does not advertise or
otherwise solicit business in California. It did not create, control, or employ the
distribution system that brought its valves to California. There is no evidence that
Asahi designed its product in anticipation of sales in California. On the basis of
these facts, the exertion of personal jurisdiction over Asahi by the Superior Court of
California exceeds the limits of due process.
Id. at 112-13 (citations omitted) (emphasis in original).
In Boit v. Gar-Tech Products, Inc., 967 F.2d 671 (1st Cir. 1992), the First Circuit adopted
Justice O’Connor’s Asahi plurality opinion as consistent with its “stream of commerce”
jurisprudence. Id. at 682-83. In Boit, the Boit family sued Gar-Tech, a manufacturer, after a
contractor used an electric hot-air gun allegedly manufactured by Gar-Tech to strip paint from
the family’s house in Maine. Id. at 673. The plaintiffs alleged that the contractor had ordered
the gun through a Brookstone catalog he received at his home in Maine. Id. at 674. They
alleged that Gar-Tech had sold the gun to Brookstone, a retailer, who then shipped the gun to the
contractor in Maine. Id. The First Circuit determined “Gar-Tech had never conducted or
transacted any business in Maine, had never owned or operated any wholesale or retail sales
outlets in Maine, had never advertised in Maine, had never employed any persons in Maine, and
19

had never owned any real estate or other property in Maine.” Id. at 673-74. The court further
determined that the “record [did] not support the Boits’ allegation that Gar-Tec sold the hot air
gun to Brookstone.” Id. at 681. Therefore, the court found that the plaintiffs had not made a
prima facie showing of personal jurisdiction. Id. However, the First Circuit concluded that
“[e]ven if the Boits had proffered evidence that . . . would support findings that Gar-Tec sold the
hot air gun to Brookstone and that Gar-Tec knew or should have known that the hot air gun
could be sold by Brookstone to a customer in Maine, . . . the record would have remained
insufficient to satisfy the requirement of a prima facie showing of personal jurisdiction over GarTec.” Id. at 681. As a result, “because ‘mere awareness’ that a product may end up in the forum
state does not constitute ‘purposeful availment,’” the First Circuit held that “the district court
could not have constitutionally exercised personal jurisdiction over Gar-Tec.” Id. at 683.
In Rodriguez v. Fullerton Tires Corp., 115 F.3d 81 (1st Cir. 1997), the First Circuit
examined a similar issue. In Rodriguez, a Puerto Rican resident brought a products liability
action against Fullerton, a California tire manufacturer and dealer. Id. 82-85. Fullerton then
sued CMSC, the tire rim manufacturer who sold Fullerton tire rims “knowing that Fullerton
would incorporate them into tires and offer them for sale in distant markets.” Id. at 84. The First
Circuit ruled that “[e]ven assuming that CMSC had specific knowledge that the stream of
commerce would move its tire rims into Puerto Rico . . . this awareness alone would not be
enough to constitute the purposeful availment which is necessary for a showing of minimum
contacts.” Id. at 85.
In 2011, the Supreme Court again ruled on a stream-of-commerce case in J. McIntyre
Machinery, LTD v. Nicastro, 131 S. Ct. 2780 (2011). In J. McInytyre, a worker who seriously
injured his hand while using a metal-shearing machine brought a products-liability action in New
20

Jersey against the manufacturer of the machine. Id. at 2786. Although the Court held that the
exercise of personal jurisdiction was unconstitutional, it again did not form a majority opinion.
The plurality opinion by Justice Kennedy determined that the plaintiff’s claim of jurisdiction
centered “on three facts: The distributor agreed to sell J. McIntyre’s machines in the United
States; J. McIntyre officials attended trade shows in several States but not in New Jersey; and up
to four machines ended up in New Jersey.” Id. at 2790. The plurality explained that the general
rule is that “the exercise of judicial power is not lawful unless the defendant ‘purposefully avails
itself of the privilege of conducting activities within the forum State, thus invoking the benefits
and protections of its laws.’” Id. at 2785. The plurality noted that there “may be exceptions, say,
for instance, in cases involving an intentional tort. But the general rule is applicable in this
products-liability case, and the so-called ‘stream-of-commerce’ doctrine cannot displace it.” Id.
The plurality explained that a “defendant’s transmission of goods permits the exercise of
jurisdiction only where the defendant can be said to have targeted the forum; as a general rule, it
is not enough that the defendant might have predicted that its goods will reach the forum State.”
Id. at 2788. The plurality held that although the “facts may reveal an intent to serve the U.S.
market,” New Jersey was without jurisdiction because the defendant did not engage in any
activities in New Jersey that revealed an intent to benefit from the protections of its laws. Id. at
2790-91.
Justice Breyer wrote a concurring opinion in J. McIntyre in which he expressed concern
about what he characterized as “the plurality’s seemingly strict no-jurisdiction rule.” Id. at 2793.
Specifically, he wrote that the
plurality seems to state strict rules that limit jurisdiction where a defendant does not
“inten[d] to submit to the power of a sovereign” and cannot “be said to have targeted
the forum.” But what do those standards mean when a company targets the world
21

by selling products from its Web site? And does it matter if, instead of shipping the
products directly, a company consigns the products through an intermediary (say,
Amazon.com) who then receives and fulfills the orders? And what if the company
markets its products through popup advertisements that it knows will be viewed in
a forum? Those issues have serious commercial consequences but are totally absent
in this case.
Id. (citations omitted). He stated that he would “not work such a change to the law in the way
either the plurality or the New Jersey Supreme Court suggests without a better understanding of
the relevant contemporary commercial circumstances.” Id. at 2794. Therefore, because
“resolving th[e] case require[d] no more than adhering to [the Court’s] precedents,” he concurred
with the plurality “only in the judgment of [the] opinion and not its reasoning.” Id. at 2792-94.
b.

Application of Case Law

It is clear from the foregoing line of cases that the fact that a defendant places its product
into the stream of interstate commerce, knowing that it may end up in Massachusetts, is not
enough to establish “purposeful availment”; there must be something more. In this case, there
are at least three additional factors that favor the exercise of personal jurisdiction over Kleen
Concepts: (1) this action is for trademark infringement; (2) Kleen Concepts is a manufacturer
that sells finished products to national retailers such as Walmart and Amazon.com with at least
hundreds of those products being sold to consumers in Massachusetts in 2014 alone; and (3)
Kleen Concepts operates a website that may be viewed anywhere in the United States and
contains at least some interactive features.
First, this action is for trademark infringement. The Supreme Court and First Circuit
stream-of-commerce cases discussed above all appear to involve products liability claims. In J.
McIntyre, the plurality indicated that there may be exceptions to the rules of purposeful
availment, “for instance, in cases involving an intentional tort.” 131 S. Ct. at 2785. In Calder v.

22

Jones, 465 U.S. 783 (1984), a professional entertainer filed a suit for libel in California against
the author of an article and the editor. Id. at 784. Although the article was written and edited in
Florida, the Supreme Court determined that “California [was] the focal point both of the story
and of the harm suffered.” Id. at 789. As a result, the Court found that because the “intentional,
and allegedly tortious, actions were expressly aimed at California,” jurisdiction was “proper in
California based on the ‘effects’ of [the] Florida conduct in California.” Id. Other courts in this
jurisdiction have found that trademark infringement is akin to an intentional tort.3 See Edvisors
Network, Inc. v. Educational Advisors, Inc., 755 F. Supp. 2d 272, 284 (D. Mass. 2010) (“Courts
in this jurisdiction have determined that trademark infringement, like libel, involves conduct that
is purposefully directed at the state in which the trademark owner is located.” (citing Venture
Tape Corp. v. McGills Glass Warehouse, 292 F. Supp. 2d 230, 233 (D. Mass. 2003); Digital
Equip Corp. v. AltaVista Tech., Inc., 960 F. Supp. 456, 470 (D. Mass. 1997)); Bose Corp. v.
Neher, 2010 WL 3814886 (D. Mass. July 30, 2010) (finding that because “trademark
infringement injury occurs in the state where the trademark owner resides,” purposeful availment
prong is met when plaintiff alleges defendant committed trademark infringement against a
Massachusetts company); see also Bird v. Parsons, 289 F.3d 865, 876 (6th Cir. 2002) (finding
that Ohio long-arm statute authorizes personal jurisdiction over defendants where “defendants’
acts . . . allegedly ‘caused tortious injury in Ohio,’ because violations of federal trademark law
3
In Sun Life Assur. Co. of Canada v. Sun Bancorp, Inc., 946 F. Supp. 2d 182 (D. Mass. 2012), this Court
found that the analogy between trademark infringement cases and other intentional tort cases was misguided. This
Court’s decision in Sun Life is readily distinguishable. In Sun Life, the Court held that jurisdiction could not be
asserted under the Massachusetts long-arm statute. Id. at 189-90. In dicta, the Court found that where the sole
contact at issue was that of a website and there were no alleged sales or other infringing contacts in the trademark
holder’s home state, the due process requirements for personal jurisdiction were not met. Id. at 191. This Court’s
reasoning depended in large part on the fact that the sole trademark infringement in the forum state was through a
passive website. Id. Also, the Court found it relevant that the plaintiff had not alleged intentional trademark
infringement. Id. Here, the relevant trademark infringement involves sales in plaintiff’s home state. As a result, this
case is much more akin to the Calder case.

23

are analogous to tort cases”); Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316, 1321 (9th Cir.
1998) (applying Calder effects test to trademark infringement action because “the present case is
akin to a tort case”); Dakota Industries, Inc. v. Dakota Sportswear, Inc., 946 F.2d 1384, 1389-91
(8th Cir. 1991) (“Like Calder, this case involves intentional tortious wrongdoing—namely, the
use of the trademark with knowledge of the infringement.”). These courts have explained that
where “a case involves an intentional tort such as trademark infringement, ‘the defendant’s
purpose may be said to be targeting of the forum state and its residents.’” Edvisors Network, 755
F. Supp. 2d at 283 (quoting Venture Tape, 292 F. Supp. 2d at 233 (quoting Digital Equip, 960 F.
Supp. at 469)).
Here, Hilsinger is a Massachusetts company. Its trademark registration of the SHIELD
mark provided Kleen Concepts with constructive notice of its home state. Also, Hilsinger sent
Kleen Concepts a cease-and-desist letter to which counsel for Kleen Concepts responded. After
the suit was filed, Kleen Concepts accepted assignment of the trademark registrations for the
accused SHIELDME marks. Under these circumstances, Kleen Concepts could “anticipate
being haled into court in Massachusetts [because] . . . the target of the alleged trademark
infringement [is] a Massachusetts company.” Edvisors Network, 755 F. Supp. 2d at 283.
Second, Kleen Concepts is a manufacturer that sells finished products to national retailers
such as Walmart, Sears, and Amazon.com. An unknown number—likely thousands—of
products were sold by those retailers to consumers in Massachusetts in 2014 alone. The
Supreme Court and First Circuit stream-of-commerce cases have involved either a manufacturer
selling parts that are incorporated by another manufacturer before eventually being sold in the
forum state, see Asahi Metal Indus., 480 U.S. 102; Rodriguez, 115 F.3d 81, or have involved
isolated sales to the forum state, see J. McIntyre, 131 S. Ct. 2780; Boit, 967 F.2d 671; Dalmau
24

Rodriguez, 781 F.2d 9. In Justice Breyer’s concurrence in J. McIntyre, he expressed concern
with joining the plurality opinion “without a better understanding of the relevant contemporary
commercial services.” 131 S. Ct. at 2794. Breyer specifically pondered how a stream-ofcommerce theory would be affected “if, instead of shipping [its] products directly, a company
consigns the products through an intermediary (say, Amazon.com) who then receives and fulfills
the orders?”
Here, Kleen Concepts has acknowledged an intent to develop a national market for its
SHIELDME brand. It has sold to national retailers. Other courts have found that sales to
national retailers reveal a specific intent to target those states in which the national retailers do
business. See, e.g., Frito-Lay North America, Inc. v. Medallion Foods, Inc., 867 F. Supp. 2d 859
(E.D. Tex. 2012) (finding that personal jurisdiction is proper in patent infringement action where
manufacturer fulfils purchase orders for Walmart); Furminator, Inc. v. Wahba, 2011 WL
3847390 (E.D. Mo. Aug. 29, 2011) (finding personal jurisdiction over defendant in Eastern
District of Missouri because plaintiff made prima facie showing that defendants “knew that the
products in question that they sold on eBay.com or Amazon.com were available to Missouri
residents, were in fact sold to at least one Missouri resident (Plaintiff), and more importantly
were counterfeit, infringing on a Missouri company’s trademark”); Icon Health & Fitness, Inc. v.
Horizon Fitness, Inc., 2009 WL 1025467 (E.D. Tex. Apr. 16, 2009) (finding that Eastern District
of Texas has jurisdiction over defendant manufacturer in patent infringement case because as “a
result of contracting to manufacture products for sale in Sears and other national retail stores,
[manufacturer] could have expected that it could be brought into court in the states where Sears
and other stores are located”); JKA, Inc. v. Anisa International, Inc., 2008 WL 4949126 (D.R.I.
Nov. 13, 2008) (finding that Rhode Island district court could exercise personal jurisdiction over
25

defendant because it “placed its product into an established distribution channel by selling to
Kmart, and it knew at the time of the sale of the product to Kmart that Rhode Island would be a
terminal point for the distribution of the product”); Kernius v. International Electronics, 433 F.
Supp. 2d 621 (D. Md. 2006) (finding personal jurisdiction over defendant proper where
defendant sells devices “in thousands of quality and trusted stores and catalogs across the USA
and other countries, including: RadioShack, Best Buy, Target, [and] Wal-Mart”); Fallon
Luminous Prods. Corp. v. Multi Media Elecs., Inc., 343 F. Supp. 2d 502, 507 (D.S.C. 2004)
(“[Manufacturer] has purposefully directed its activities at South Carolina because it sold the
allegedly infringing neon signs to Wal-Mart, which distributes products through an established
nationwide distribution channel.”); Estes v. Midwest Products, Inc., 24 F. Supp. 2d 621 (S.D. W.
Va. 1998) (holding that manufacturer was subject to personal jurisdiction in Southern District of
West Virginia in products liability action because it “manufactures finished products which it
directs to the ‘national market’ directly through its sales to national retailers Kmart, Wal-Mart,
and others”).4

4

Many of these cases are patent infringement actions. See Frito-Lays, 867 F. Supp. 2d 859; Icon Health &
Fitness, 2009 WL 1025467; JKA, 2008 WL 4949126; Kernius, 433 F. Supp. 2d 621; Fallon Luminous Prods., 343 F.
Supp. 2d 502. District courts apply Federal Circuit personal jurisdiction law to patent infringement actions. See
Beverly Hills Fan Co. v. Royal Sovereign Corp., 21 F.3d 1558, 1564-65 (Fed. Cir. 1994). In stream-of-commerce
cases, the Federal Circuit has declined to decide whether it follows Justice O’Connor’s plurality in Asahi or Justice
Brennan’s opinion, because it has “yet to be presented with facts that do not meet the more rigorous standard
adopted by Justice O’Connor.” Commissariat A L’Energie Atomique v. Chi Mei Optoelectronics Corp., 395 F.3d
1315, 1322 n.7 (Fed. Cir. 2005) (citing Beverly Hills Fan, 21 F.3d at 1566; Viam Corp. v. Iowa Export-Import
Trading Co., 84 F.3d 424, 428 (Fed. Cir. 1996)). As a result, the patent infringement cases that have applied Federal
Circuit law to find personal jurisdiction is proper presumably have determined that the relevant contacts meet “the
more rigorous standard adopted by Justice O’Connor.”
In Estes, 24 F. Supp. 2d 621, the Southern District of West Virginia applied Fourth Circuit law. Id. at 62930. The “Fourth Circuit has adopted a standard that is aligned with Justice O’Connor’s more stringent approach to
the stream of commerce.” Kernius, 433 F. Supp. 2d at 625 n.2 (citing Lesnick v. Hollingsworth & Vose Co., 35 F.3d
939, 945 (4th Cir. 1994) (“To permit a state to assert jurisdiction over any person in the country whose product is
sold in the state simply because a person must expect that to happen destroys the notion of individual sovereignties
inherent in our system of federalism.”)).

26

Likewise, the “intent and purpose” of Kleen Concepts are “completely revealed in its
decision to sell through national retail chains.” See Estes, 24 F. Supp. 2d at 630; see also
Kernius, 433 F. Supp. 2d at 627 (“A corporation cannot sell its products to national retailers such
as RadioShack, Best Buy, Target, and Wal-Mart and then claim that it is surprised to be haled
into court in a particular State because, to the best of the corporation’s knowledge, it was not
specifically aware that its products were actually sold or used in that State.”). For example,
Kleen Concepts “intentionally sells the allegedly infringing [products] to Wal-Mart knowing that
it has stores throughout the nation.” Fallon Luminous Prods., 343 F. Supp. 2d at 507 (“By
selling the neon signs to Wal-Mart, a likely destination of the neon signs is one of the eighteen
Wal-Mart discount stores or forty-two Wal-Mart supercenters in South Carolina.”). It has not
instructed Walmart or any other national retailer not to sell in Massachusetts, and it
acknowledges that it wants a nationwide presence. Therefore, Kleen Concepts intends for its
product to be sold wherever Walmart and Sears have stores and wherever Amazon.com sells to
consumers—including Massachusetts.
Third, Kleen Concepts operates the SHIELDME website. As Kleen Concepts contends,
“‘the mere existence of a website that is visible in a forum and that gives information about a
company and its products is not enough, by itself, to subject a defendant to personal jurisdiction
in that forum.’” Cossaboon v. Maine Medical Center, 600 F.3d 25, 35 (1st Cir. 2010) (quoting
McBee v. Delica Co., 417 F.3d 107, 124 (1st Cir. 2005)). “[F]or website activity to support the
exercise of personal jurisdiction, ‘[s]omething more is necessary, such as interactive features
which allow the successful online ordering of the defendant’s products.’” Id. (quoting McBee,
417 F.3d at 124). Other courts in this district have looked to Zippo Mfg. Co. v. Zippo Dot Com,
Inc., 952 F. Supp. 1119 (W.D. Pa. 1997), to determine whether a website can give rise to specific
27

jurisdiction. See, e.g., Edvisors Network, 755 F. Supp. 2d at 282; Sportschannel New England
Ltd. Partnership v. Fancaster, Inc., 2010 WL 3895177, *5 (D. Mass. Oct. 1, 2010).5 In Zippo,
“the court determined, after reviewing the available case law and other materials that ‘the
likelihood that personal jurisdiction can be constitutionally exercised is directly proportionate to
the nature and quality of commercial activity that an entity conducts over the Internet.’” Edvisors
Network, 755 F. Supp. 2d at 282 (quoting Zippo Manuf. Co., 952 F. Supp. at 1124). The court in
Zippo described a sliding scale where
[a]t 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 involves 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.
Zippo Manuf. Co., 952 F. Supp. at 1124 (citations omitted). Although Kleen Concepts does not
sell products on the SHIELDME website and does not appear to specifically target
Massachusetts residents in general, the website is not entirely passive. The website contains
information about SHIELDME products. It allows users to tweet product information, “like”
products on Facebook, e-mail product information to friends, comment directly on the website,
and post comments about the product on the product Facebook page. In addition, a “contact”
page provides website visitors with contact information for “ShieldMe Products” and allows

5

To determine whether website activity supports the exercise of general jurisdiction, the First Circuit
focuses “on the extent to which the defendant has actually and purposefully conducted commercial or other
transactions with forum state residents through its website.” Cossaboon, 600 F.3d at 35.

28

visitors to send a message. Visitors to the website can contact Kleen Concepts to determine
where they can buy SHIELDME products. Were the jurisdictional claims based entirely on the
website, it seems unlikely that this Court could exercise personal jurisdiction over Kleen
Concepts. However, in light of the sales into Massachusetts through national retailers, the
subject matter of this litigation, and the website activity, the “purposeful availment” prong for
personal jurisdiction is met.
3.

Reasonableness

Even if the requisite contacts exist, the court’s exercise of jurisdiction must “comport[]
with traditional notions of ‘fair play and substantial justice.’” Nowak, 94 F.3d at 717 (citing
International Shoe, 326 U.S. at 320). The Supreme Court has identified five “gestalt factors”
which bear upon the fairness of subjecting nonresidents to this Court’s jurisdiction. Id. These
factors are: “(1) the defendant’s burden of appearing; (2) the forum state’s interest in
adjudicating the dispute; (3) the plaintiff’s interest in obtaining convenient and effective relief;
(4) the judicial system’s interest in obtaining the most effective resolution of the controversy;
and (5) the common interests of all sovereigns in promoting substantive social policies. Id.
(citing Burger King v. Rudzewicz, 471 U.S. 462, 477 (1985)).
First, Kleen Concepts contends that it would be burdensome for it to defend itself in
Massachusetts, as it has no operations outside of Arizona. However, it is “almost always
inconvenient and costly for a party to litigate in a foreign jurisdiction.” Id. at 718. For this
particular factor to have any significance, “the defendant must demonstrate that ‘exercise of
jurisdiction in the present circumstance is onerous in a special, unusual, or other constitutionally
significant way.’” Id. (quoting Pritzker v. Yari, 42 F.3d 53, 64 (1st Cir. 1994)). Kleen Concepts
has not made that demonstration here.
29

Second, a “state generally has a ‘manifest interest’ in providing its residents with a
convenient forum for redressing injuries inflicted by out-of-state actors.” Burger King Corp.,
471 U.S. at 473. Massachusetts has an interest in adjudicating a trademark violation involving a
Massachusetts business because “the alleged infringement is likely to have its most significant
effects here.” Edvisors Network, 755 F. Supp. 2d at 285 (quoting Northern Light Tech., Inc. v.
Northern Lights Club, 97 F. Supp. 2d 96, 107 (D. Mass. 2000)). Specifically, “Massachusetts
has an interest in preventing trademark infringement against those subject to the protections and
requirements of its laws.” Id. Therefore, this factor weighs in plaintiff’s favor.
Third, plaintiff’s choice of forum must be accorded a degree of deference. Nowak, 94
F.3d at 718. This is obviously the most convenient forum for plaintiff, as it is Hilsinger’s
principal place of business.
Fourth, Kleen Concepts contends that the interest of the judicial system in obtaining the
most effective resolution of the controversy favors Kleen Concepts. It contends that “with such
a small amount of its product brought into Massachusetts by third parties, monitoring any
violation and enforcing any judgment against [it] would be best accomplished in Arizona.”
(Kleen Concepts Mot. Dismiss 16). However, the harm to Hilsinger is in Massachusetts, where
it has its principal place of business. “The most efficient path for the judicial system . . . is to
move forward with the lawsuit in the present forum.” Edvisors, 755 F. Supp. 2d at 285 (quoting
Hasbro, Inc. v. Clue Computing, Inc., 994 F. Supp. 34, 45 (D. Mass. 1997)).
Fifth, both parties agree that the common interests of all sovereigns in promoting
substantive social policies are not affected.
Therefore, on balance, the “gestalt” factors are either neutral or favor the plaintiff.
Accordingly, the exercise of jurisdiction in Massachusetts will not offend traditional notions of
30

fair play and substantial justice.
In summary, the Court finds that the constitutional requirements for personal jurisdiction
over Kleen Concepts have been satisfied. Accordingly, Kleen Concepts’ motion to dismiss will
be denied.6
B.

FBW Specific Jurisdiction

The issue of personal jurisdiction over FBW is relatively straightforward. FBW has
never manufactured, sold, distributed, or marketed any products identified by the SHIELDME
mark. Its only relationship with the SHIELDME brand is that it was at one time the registered
owner of the two SHIELDME marks. However, Kleen Concepts is the only entity that has used
the SHIELDME mark and sold products under that name. FBW has no control over the
operations of Kleen Concepts. It therefore has no control over the manufacturing, sale, or
distribution of any SHIELDME products.
“The mere existence of a licensor-licensee relationship, without more, is ‘insufficient to
impute the contacts of a licensee on the licensor for the purpose of establishing personal
jurisdiction.’” Eco Pro Painting, LLC v. Sherwin-Williams Co., 807 F. Supp. 2d 732, 736-37
(N.D. Ill. 2011) (quoting Sinclair v. StudioCanal, S.A., 709 F. Supp. 2d 496, 510 n.8 (E.D. La.
2010). “As a general rule, personal jurisdiction does not exist over a licensor by virtue of its
status if it does not exercise control over the licensee’s sales activities and has no dealings with
the licensee ‘beyond the receipt of royalty income.’” Id. at 737 (quoting Eragen Biosciences, Inc.
v. Nucleic Acids Licensing, LLC, 447 F. Supp. 2d 930, 938 (W.D. Wisc. 2006). Here, FBW did
not even receive royalty income based on the licensing of the SHIELDME mark. FBW had no

6

Because the Court finds that personal jurisdiction is appropriate based on specific jurisdiction, the Court
need not evaluate plaintiff’s general jurisdiction arguments.

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control over the use of the marks by Kleen Concepts. It appears that FBW was merely used as a
holding company of sorts. There appears to be no other relationship between the parties.
Under the circumstances, the relationship between FBW and Kleen Concepts is not
enough to establish personal jurisdiction over FBW. Accordingly, FBW’s motion to dismiss will
be granted.
VI.

Conclusion
For the foregoing reasons,
1.

The motion to dismiss by Kleen Concepts, LLC for lack of personal jurisdiction is
DENIED, and

2.

The motion to dismiss by FBW Investments, LLC for lack of personal jurisdiction
is GRANTED.

So Ordered.

/s/ F. Dennis Saylor
F. Dennis Saylor IV
United States District Judge

Dated: June 17, 2015

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