World Chess Museum, Inc. v. World Chess Federation, Inc. et al

Filing 49

MEMORANDUM AND ORDER - IT IS HEREBY ORDERED that defendants motion to dismiss for lack of jurisdiction and to set aside default [Doc. # 46 ] is granted. IT IS FURTHER ORDERED that the July 17, 2012 entry of default by the Clerk of Court [Doc. # 44 ] is vacated. IT IS FURTHER ORDERED that plaintiffs motion for default judgment [Doc. # 45 ] is moot. Signed by District Judge Carol E. Jackson on 1/14/13. (KJS)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MISSOURI
EASTERN DIVISION
WORLD CHESS MUSEUM, INC.,
Plaintiff,
vs.
WORLD CHESS FEDERATION, INC.,
et al.,
Defendants.

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No. 4:12-CV-89 (CEJ)

MEMORANDUM AND ORDER
This matter is before the Court on the defendants’ motion to dismiss for lack of
jurisdiction and to set aside the clerk’s entry of default. Plaintiff opposes the motion,
and the issues have been fully briefed. Also before the Court is the plaintiff’s motion
for default judgment.
I.

Background

Plaintiff brings this action asserting claims of trademark infringement, unfair
competition, and false designation of origin arising under the Trademark Act of 1946,
15 U.S.C. § 1051, et. seq. Plaintiff also asserts claims of statutory and common law
trademark infringement, unfair competition, and trademark dilution under Missouri law.
The dispute concerns the defendants’ use of the WORLD CHESS HALL OF FAME® mark
of which plaintiff claims exclusive ownership.
Defendant World Chess Federation (WCF) is a non-profit corporation organized
under the laws of Nevada and having a principal place of business in Nevada.
Defendant Stan Vaughan is WCF’s registered agent and is a resident of Nevada. The

defendants move to dismiss this action for lack of personal jurisdiction and for
improper venue. See Fed. R. Civ. P. 12(b)(2) and 12(b)(3). Defendants further move
to set aside the clerk’s default entered on July 17, 2012, asserting lack of personal
jurisdiction.
II.

Discussion

A plaintiff has the burden of establishing that personal jurisdiction exists over
a non-resident defendant. Burlington Indus., Inc. v. Maples Indus., Inc., 97 F.3d
1100, 1102 (8th Cir. 1996). In opposing the motion to dismiss, a plaintiff need only
make a prima facie showing of jurisdiction. Wessels, Arnold & Henderson v. National
Med. Waste, Inc., 65 F.3d 1427, 1431 (8th Cir. 1995); Dakota Indus., Inc. v. Dakota
Sportswear, Inc., 946 F.2d 1384, 1387 (8th Cir. 1991). “In considering a motion under
Rule 12(b)(2), the Court views the facts in a light most favorable to plaintiff, the party
opposing the motion.” Maritz, Inc. v. Cybergold, Inc., 947 F. Supp. 1328, 1329 (E.D.
Mo. 1996) (citing Aarib Ferer & Sons Co. v. Diversified Metals Corp., 564 F.2d 1211,
1215 (8th Cir. 1977).
A two-part inquiry is required in order for a Missouri court to determine whether
it has personal jurisdiction over a non-resident defendant. Uncle Sam’s Safari
Outfitters, Inc. v. Uncle Sam’s Army Navy Outfitters-Manhattan, Inc., 96 F. Supp. 2d
919, 920 (E.D. Mo. 2000) (citing CPC-Rexcell, Inc. v. La Corona Foods, Inc., 912 F.2d
241, 243 (8th Cir. 1990)). “The court must first examine whether personal jurisdiction
exists under Missouri’s long-arm statute. If so, the court must determine whether the
exercise of personal jurisdiction is consistent with the Due Process Clause.” Id.
The Missouri long-arm statute, Mo. Rev. Stat. § 506.500, provides, in relevant
part:

Any person or firm, whether or not a citizen or resident of this state, or
any corporation, who in person or through an agent does any of the acts
enumerated in this section, thereby submits . . . to the jurisdiction of the
courts of this state as to any cause of action arising from the doing of
such acts . . .
Among the acts enumerated is the commission of a tort within the state. Mo. Rev. Stat.
§ 506.500.1(3).

It is on this basis that plaintiffs assert that personal jurisdiction

exists.
“Infringing upon a trademark, as a tort, may be grounds for personal jurisdiction
under Missouri’s long-arm statute.” Johnson v. Arden, 614 F.3d 785, 797 (8th Cir.
2010); Dakota Industries, Inc. v. Dakota Sportswear, Inc., 946 F.2d 1384, 1388 (8th
Cir. 1991) (“Infringement of a trademark is a tort” and the economic effects of
infringement are felt where the trademark owner has its principal place of business).
In the complaint, plaintiff alleges infringing acts by the defendants which, if true, could
constitute tortious conduct in Missouri. Construing the allegations in a light most
favorable to plaintiff, the Court concludes that defendants’ alleged acts fall within the
conduct specified in Missouri’s long-arm statute. See Furminator, Inc. v. Wahba, 2011
WL 3847390, at *2 (E.D. Mo. 2011) (“The individual categories [in the Missouri longarm statute] are construed broadly, such that if a defendant commits one of the acts
specified in the long-arm statute, the statute will be interpreted ‘to provide for
jurisdiction . . . to the full extent permitted by the Due Process Clause.’”).
In order to satisfy the due process prong of the personal jurisdiction analysis,
the plaintiff must show “minimum contacts” between defendants and the forum state.
International Shoe Co. v. Washington, 326 U.S. 310, 316 (1945). “The Eighth Circuit
has set forth a five factor test for determining whether there are sufficient minimum
contacts: (1) the nature and quality of the contacts with the forum state; (2) the

quantity of those contacts; (3) the relation of the cause of action to the contacts; (4)
the interest of the forum state in providing a forum for its residents; and (5) the
convenience of the parties. The first three factors are of primary importance.” Uncle
Sam’s Safari Outfitters, Inc., 96 F. Supp. 2d at 921. “The defendant’s ‘contacts’ with
the forum state generally must not arise due to mere fortuity, but must arise because
the defendant has ‘purposefully availed’ itself of the privilege of conducting activities
in the state.” Pangea, Inc. v. Flying Burrito LCC, 647 F.3d 741, 745 (8th Cir. 2011)
(citing Hanson v. Denckla, 357 U.S. 235, 253 (1958).
There are two types of personal jurisdiction: specific jurisdiction and general
jurisdiction. Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 414-16
(1984). Specific jurisdiction refers to jurisdiction over causes of action arising from or
related to a defendant’s actions within the forum state.

Id. at 414.

“[S]pecific

jurisdiction is warranted when defendant purposely directs its activities at the forum
state and the litigation results from injuries . . . relating to the defendant’s activities
in the forum state.” Myers v. Casino Queen, 2012 U.S. App. LEXIS 17543, *16 (8th Cir.
2012) (citing Steinbuch v. Cutler, 518 F.3d 580, 586 (8th Cir. 2008)). In contrast,
general jurisdiction refers to the power of a state to adjudicate any cause of action
involving a particular defendant, regardless of where the cause of action arose.
Helicopteros, 466 U.S. at 414. “A court may assert general jurisdiction over foreign
(sister-state or foreign country) corporations to hear any and all claims against them
when their affiliations with the State are so ‘continuous and systematic’ as to render
them essentially at home in the forum State.” Goodyear Dunlop Tires Operations, S.A.
v. Brown, 131 S. Ct. 2851 (2011). There is no contention by plaintiff that defendants

engaged in “continuous and systematic contacts” with Missouri for general jurisdiction
to exist. Accordingly, plaintiff must establish specific jurisdiction.
The record shows that defendants’ contacts with Missouri are quite minimal.
Defendant Vaughan is a citizen of Nevada, has never traveled through an airport
located in Missouri, has no business ties with Missouri, and has not solicited business
in Missouri. Defendant WCF is a Nevada corporation with its principal place of business
in Nevada. It has no mailing or office locations outside of Nevada and does not engage
in any business in or solicit business from Missouri.

Defendant WCF maintains a

passive website that does not solicit business, does not contain any interactive
features, and provides nothing but information relating to the organization and its
members.
In its memorandum, plaintiff refers to threats made by defendants “directed at
plaintiff in Missouri” as support for the existence of personal jurisdiction. Plaintiff does
not describe the alleged threats in its memorandum, but cites to paragraphs 20-33 of
the complaint, in which it is alleged that plaintiff contacted defendant in 2011 to
“resolve the likelihood of confusion created by defendants’ conduct” and that
defendants responded with an assertion that they had used the mark since 1992,
demanded that plaintiff cease its use of the mark, and that defendants had filed an
action in the U.S. Patent and Trademark Office to cancel plaintiff’s registration of the
mark. Plaintiff states that it was unable to locate any evidence of defendants’ use of
the mark prior to July 2011 and that defendants could not produce sufficient evidence
of such use. Plaintiff also claims that the defendants’ website indicated that defendant
WCF “had filed a criminal complaint against the U.S. Chess trust, plaintiff’s predecessor
in interest, in connection with plaintiff’s use” of the mark[,]” which plaintiff asserts

never occurred. Plaintiff further alleges that defendants sent plaintiff’s counsel a letter
demanding that plaintiff cease its use of the mark “or face consequences.”
“[C]ease-and-desist letters . . . standing on their own will not suffice to confer
this Court with personal jurisdiction” over defendants. BIB Mfg. Co. v. Dover Mfg. Co.,
804 F. Supp. 1129, 1133 (E.D. Mo. 1992); Genetic Implant Sys. v. Core-Vent Corp.,
123 F.3d 1455 (Fed. Cir. 1997) (“sending infringement letters, without more activity
in a forum state, is not sufficient to satisfy the requirements of due process.”).
Although the inclusion of a statement such as “stop or ‘face the consequences’” can
certainly be considered inappropriate or unprofessional, such language would not add
support to the finding of sufficient contacts with the forum state.
The operation of the website is also not of the nature or quality that would
demonstrate an intent by defendants to purposefully target Missouri. See Uncle Sam’s
Safari Outfitters, Inc., 96 F. Supp. 2d at 923 (“Although defendants’ web site is
available to anyone with Internet access, the mere operation of a web site, without
‘something more,’ is clearly insufficient as a basis for exercising personal jurisdiction.”).
There is no evidence or information showing that defendants’ website advertises,
solicits, or engages in any business transactions with Missouri residents.

See

Enterprise Rent-A-Car Co. v. Stowell, 137 F. Supp. 2d 1151, 1157 (E.D. Mo. 2001) (“If
the website is passive, personal jurisdiction is lacking.”).
The notation on defendants’ website in 2011 pertaining to an alleged criminal
complaint against plaintiff also does not support the exercise of personal jurisdiction
over defendants. The nature and quality of such a contact with Missouri is simply not
sufficient to subject the non-resident defendants to a Missouri court. In order to
subject themselves to the jurisdiction of the forum state, the defendants would have

to do something more than merely place information on the Internet. See Pangea, Inc.
v. Flying Burrito LCC, 647 F.3d at 745; Carefirst of Maryland, Inc. v. Carefirst
Pregnancy Centers, Inc., 334 F.3d 390, 400 (4th Cir. 2003).
Any interest Missouri may have in providing a forum for plaintiff is outweighed
by the insufficient nature, quality, and quantity of the defendants’ contacts to justify
the exercise of jurisdiction. See Uncle Sam’s Safari Outfitters, Inc., 96 F. Supp. 2d at
924 (“Missouri has an interest in resolving the case because a Missouri corporation’s
trademark is allegedly being infringed. The plaintiff also has an interest in adjudicating
the action in Missouri because it is a Missouri corporation. However, these factors of
the test are considered less important by the Eighth Circuit.”).

For the reasons

discussed above, the Court concludes that plaintiff has not made a prima facie showing
that jurisdiction over defendants is proper.
Accordingly,
IT IS HEREBY ORDERED that defendants’ motion to dismiss for lack of
jurisdiction and to set aside default [Doc. #46] is granted.
IT IS FURTHER ORDERED that the July 17, 2012 entry of default by the Clerk
of Court [Doc. # 44] is vacated.
IT IS FURTHER ORDERED that plaintiff’s motion for default judgment [Doc.
#45] is moot.

____________________________
CAROL E. JACKSON
UNITED STATES DISTRICT JUDGE
Dated this 14th day of January, 2013.