Dover IP, LLC et al v. Dover Development Corporation

Filing 20

MEMORANDUM AND ORDER. (See Full Order.) It is clear that the cited activities are not sufficient to surmount the due process threshold. Under the facts alleged here, defendant does not have sufficient contacts with Missouri to justify suit to proce ed against it, so I will grant defendant's motion to dismiss for lack of personal jurisdiction. Accordingly, IT IS HEREBY ORDERED that defendants motion to dismiss 17 is granted and this case is dismissed without prejudice. Signed by District Judge Catherine D. Perry on 9/22/2017. (CBL)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MISSOURI
EASTERN DIVISION
DOVER IP, LLC and DOVER
Development, LLC,
Plaintiffs,
vs.
DOVER DEVELOPMENT
CORPORATION, f/k/a FAMILY
PRIDE CORPORATION,
Defendant.

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Case No. 4:17 CV 226 CDP

MEMORANDUM AND ORDER
Plaintiff Dover Development, LLC, is a Missouri-headquartered company
which develops and constructs senior living communities. In 2013, Dover
Development registered the trademark, “Dover Development,” which it assigned to
plaintiff Dover IP, LLC. Plaintiffs allege defendant Dover Development
Corporation, f/k/a Family Pride Corporation, has infringed upon plaintiffs’
Trademark and caused confusion in Missouri’s senior housing marketplace.
Plaintiffs bring claims of trademark infringement and unfair competition against
defendant. Defendant moves to dismiss plaintiffs’ claims for lack of personal
jurisdiction. Because defendant lacks sufficient minimal contacts with Missouri to
satisfy due process, I will dismiss this case without prejudice.

Legal Standards
The party invoking jurisdiction of a federal court bears the burden to show
that jurisdiction exists. May Dept. Stores Co. v. Wilansky, 900 F.Supp. 1154, 1159
(E.D. Mo. 1995) (citing Mountaire Feeds, Inc. v. Agro Impex, S.A., 677 F.2d 651,
653 (8th Cir. 1982)). To survive a motion to dismiss for lack of personal
jurisdiction, a plaintiff is only required to make a prima facie showing of personal
jurisdiction over the defendant. Digi-tel Holdings, Inc. v. Proteq
Telecommunications (PTE), Ltd., 89 F.3d 519, 522 (8th Cir. 1996). If the district
court relies on pleadings and affidavits, the court must look at the facts in the light
most favorable to the party invoking personal jurisdiction, and resolve all factual
conflicts in favor of that party. Dakota Industries, Inc. v. Dakota Sportswear, Inc.,
946 F.2d 1384, 1387 (8th Cir. 1991) (citing Watlow Electric Mfg. Co. v. Patch
Rubber Co., 838 F.2d 999, 1000 (8th Cir. 1988). With these standards in mind, I
review the facts in this case.
Factual Background
Plaintiff Dover Development, LLC, an Illinois limited liability company, is a
multi-state development company specializing in developing and constructing
senior living communities. Plaintiff Dover IP, LLC is a Missouri limited liability
company. Defendant Dover Development, f/k/a Family Pride Corporation, is a
Tennessee corporation with its principal place of business in Knoxville, Tennessee.
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Defendant is a real estate development company that renovates properties and
converts them into senior housing.
In 2012, Dover Development started developing senior living communities
under the trade name “Dover Development.” In 2013, Dover Development
registered the “Dover Development” trademark with the United States Patent and
Trademark Office (USPTO). In 2016, Dover Development assigned the
Trademark to Dover IP. Dover IP then licensed the use of the Trademark to Dover
Development.
Defendant operated under the Family Pride Corporation trade name in
Tennessee for over twenty years. In 2014, defendant changed its name to Dover
Development Corporation by a filing with the Tennessee Secretary of State.
Defendant is managed by Richard Dover and develops senior housing exclusively
in Tennessee.
Plaintiff Dover IP learned of defendant’s use of the “Dover Development”
name when it tried to register its trade name for a web platform. Plaintiffs sent
defendant a letter demanding defendant cease and desist operating under the
Trademark. After receiving this letter, defendant’s lawyers made a phone call to
Missouri and sent an email received by plaintiffs in Missouri. Defendant
continued to use the Dover Development name.
In their complaint, plaintiffs allege defendant’s infringement of their
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Trademark and trade name created confusion in the marketplace. Plaintiffs
contend this confusion was caused by defendant’s operation of its website,
www.doverdevelopment.net. In support of their contention, plaintiffs allege a
local Illinois news website, Patch.com, erroneously reported that plaintiffs
renovate neglected properties. Plaintiffs assert that because they only develop new
facilities, Patch.com must have made this error by consulting defendant’s website.
The website also states that defendant restores and renovates neglected properties.
Plaintiffs assert five counts alleging trademark infringement and unfair
competition against defendant. The complaint states this Court has personal
jurisdiction over defendant because defendant knowingly directed its tortious
conduct to Missouri with the intent to infringe on plaintiffs’ intellectual property
and cause harm in Missouri. Defendant moves to dismiss this action upon the
grounds that the Court lacks personal jurisdiction over defendant.
Discussion
In order to subject a defendant to a court’s personal jurisdiction, due process
requires that the defendant have certain minimum contacts with the state, such that
the maintenance of the suit does not offend “traditional notions of fair play and
substantial justice.” Int’l Shoe Co. v. Wash., 326 U.S. 310, 316 (1945). There are
two types of personal jurisdiction: general and specific. Daimler AG v. Bauman,

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134 S.Ct. 746, 754 (2014). Here, plaintiffs assert they sued defendant in Missouri
based upon a specific jurisdiction theory.1
Specific, or “conduct-linked,” jurisdiction involves suits “arising out of or
related to the defendant’s contacts with the forum.” Daimler, 134 S.Ct. at 751;
Helicopteros Nacionales de Columbia, S.A. v. Hall, 466 U.S. 408, 414 n.8 (1984).
In Bristol-Myers Squibb Co. v. Superior Court of California, San Francisco Cty.,
the Supreme Court stated that in order for a court to exercise specific jurisdiction,
“the suit must aris[e] out of or relat[e] to the defendant’s contacts with the forum.”
137 S. Ct. 1773, 1780 (2017) (quoting Daimler, 134 S. Ct. at 754 (internal
quotation marks omitted)). In other words, there must be “an affiliation between
the forum and the underlying controversy, principally, [an] activity or an
occurrence that takes place in the forum State and is therefore subject to the State’s
regulation.” Id. (quoting Goodyear Dunlop Tires Operations, S.A. v. Brown, 564
U.S. 915, 924 (2011) (alterations in original)). Thus, “specific jurisdiction is

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Plaintiffs do not claim this Court has general jurisdiction over defendant. General
jurisdiction is applicable where the plaintiff’s cause of action does not arise out of
and is not related to the defendant’s contacts with the forum. Helicopteros
Nacionales de Columbia, S.A. v. Hall, 466 U.S. 408, 414 n. 9 (1984). A court may
exercise general jurisdiction only where the nonresident defendant’s contacts with
the forum state are “continuous and systematic.” Id. This standard requires the
plaintiff to show more than the minimum contacts required by due process to assert
specific jurisdiction. Bell v. Imperial Palace Hotel/Casino, Inc., 200 F. Supp. 2d
1082, 1090 (E.D. Mo. 2001). Here, it is evident defendant’s lack of contacts with
Missouri falls short of establishing general jurisdiction.
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confined to adjudication of issues deriving from, or connected with, the very
controversy that establishes jurisdiction.” Id.
Nonresidents are subject to personal jurisdiction to the extent that state law
allows.” Dominium Austin Partners, L.L.C. v. Emerson, 248 F.3d 720, 726 (8th
Cir. 2001) (citing Fed. R. Civ. P. 4(e)). Missouri liberally construes the provisions
of its long-arm statute2 “to extend the jurisdiction of the courts of [Missouri] over
nonresident defendants to that extent permissible under the Due Process Clause of
the Fourteenth Amendment of the Constitution of the United States.” Clune v.
Alimak AB, 233 F.3d 538, 541 (8th Cir. 2000) (internal quotation marks omitted).
Thus, this Court’s inquiry into whether the assertion of personal jurisdiction over

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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 such person, firm, or corporation, and, if an
individual, his personal representative, to the jurisdiction of the courts in this state
as to any cause of action arising from the doing of any of such acts:
(1) The transaction of any business within this state;
(2) The making of any contract within this state;
(3) The commission of a tortious act within this state;
(4) The ownership, use, or possession of any real estate situated in this
state;
(5) The contracting to insure any person, property or risk located within
this state at the time of contracting;
(6) Engaging in an act of sexual intercourse within this state with the
mother of a child on or near the probable period of conception of that
child.”
Mo. Rev. Stat. § 506.500.1

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defendant satisfies Missouri’s long-arm statute is coextensive with its inquiry into
whether the assertion satisfies due process. See Wessels, Arnold & Henderson v.
National Medical Waste, Inc., 65 F.3d 1427, 1431 (8th Cir. 1995).
A nonresident must meet the “minimum contacts” standard before being
subjected to a state’s jurisdiction. Dakota Industries, 946 F.2d at 1389. “This
requirement is satisfied if the defendant has purposefully directed his activities at
residents of the forum . . . and the litigation results from alleged injuries that arise
out of or relate to those activities.” Id. (quoting Burger King Corp. v. Rudzewicz,
471 U.S. 462, 472 (1985) (internal quotations omitted)). The suit “must arise out
of contacts that the ‘defendant himself’ creates with the forum State.” Walden v.
Fiore, 134 S.Ct. 1115, 1122 (2014) (quoting Burger King, 471 U.S. at 475). Once
minimum contacts have been established, the court must determine whether
conferring jurisdiction is in accordance with “fair play and substantial justice.”
Dakota Industries, 946 F.2d at 1389 (citing Burger King, 471 U.S. at 476).
Here, the exercise of specific jurisdiction does not comport with due process
as defendant lacks sufficient minimum contacts with Missouri. Defendant is a
Tennessee corporation with its principal place of business and registered agent in
Knoxville, Tennessee. All of defendant’s projects have taken place in Tennessee.
Defendant has never registered to do business in Missouri. Defendant has not
provided services or sold products in Missouri. Defendant has not solicited
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business from Missouri or targeted Missouri with any advertising.
Plaintiffs argue that defendant’s maintenance of their website with the
anticipation it will be accessed by users nationwide is a contact with Missouri.
However, a passive website that merely makes information available is not
grounds for the exercise of specific personal jurisdiction. Lakin v. Prudential Sec.,
Inc., 348 F.3d 704, 710 (8th Cir. 2003). Plaintiffs also contend that defendant’s
phone call and email responding to plaintiffs’ cease-and-desist letter are relevant to
my minimum contacts analysis. But, in the absence of any other contacts with
Missouri, defendant’s responsive legal communications do not suffice to confer
this Court with personal jurisdiction. See BIB Mfg. Co. v. Dover Mfg. Co., 804 F.
Supp. 1129, 1133 (E.D. Mo. 1992) (concluding that cease-and-desist letters as well
as settlement efforts standing on their own were insufficient to confer personal
jurisdiction over the defendant). Plaintiffs fail to establish the suit arises out or
relates to defendant’s contacts with the forum.
Despite defendant’s lack of contacts with Missouri, plaintiffs assert Missouri
has jurisdiction over defendant consistent with due process pursuant to the “effects
test” of Calder v. Jones, 465 U.S. 783, 789-90 (1984). Under the Calder effects
test,
a defendant’s tortious acts can serve as a source of personal
jurisdiction only where the plaintiff makes a prima facie showing that
the defendant’s acts (1) were intentional, (2) were uniquely or
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expressly aimed at the forum state, and (3) caused harm, the brunt of
which was suffered—and which the defendant knew was likely to be
suffered—[in the forum state].
Johnson v. Arden, 614 F.3d 785, 796 (8th Cir. 2010).
Plaintiffs claim the first two elements are satisfied as defendant intentionally
adopted plaintiffs’ trade name to usurp plaintiffs’ nationwide reputation. In
support of this assertion, plaintiffs suggest defendant could have discovered the
existence of the Trademark by searching the USPTO’s database prior to changing
its name to Dover Development. However, this speculative statement is
insufficient to establish that defendant intentionally targeted Missouri. Moreover,
defendant reasonably maintains its name change was prompted by the name of its
manager ‒ Richard Dover.
In addition, while plaintiffs contend an “effect” of defendant’s alleged
infringement was “actual confusion within the senior living real estate
development community in Missouri,” the only instance of confusion noted by
plaintiffs was linked to a website in Illinois. (ECF No. 1 at ¶ 5). Plaintiffs’
connection to Missouri cannot provide the only link between the forum and the
defendant’s alleged tortious conduct. See Fastpath, Inc. v. Arbela Techs. Corp.,
760 F.3d 816, 823 (8th Cir. 2014) (citing Walden, 134 S.Ct. at 1125). Because
plaintiffs have failed to assert facts showing any conduct by defendant expressly

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aimed at Missouri, I find plaintiffs have failed to make a prima facie of personal
jurisdiction under the Calder effects test.
It is clear that the cited activities are not sufficient to surmount the dueprocess threshold. Under the facts alleged here, defendant does not have sufficient
contacts with Missouri to justify suit to proceed against it, so I will grant
defendant’s motion to dismiss for lack of personal jurisdiction.
Accordingly,
IT IS HEREBY ORDERED that defendant’s motion to dismiss [17] is
granted and this case is dismissed without prejudice.

CATHERINE D. PERRY
UNITED STATES DISTRICT JUDGE
Dated this 22nd day of September, 2017.

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