PAUSCH LLC. v. TI-BA ENTERPRISES, INC.

Filing 10

MEMORANDUM and ORDER that Defendant, Ti-Ba Enterprises, Inc.'s Motion to dismiss the complaint be and is hereby GRANTED; that Plaintiff's complaint is dismissed in its entirety without prejudice; that Plaintiff may file an amended complaint within thirty (30) days of the date of this Memorandum and Order. Signed by Judge Peter G. Sheridan on 10/8/2014. (jjc)

NOT FOR PUBLICATION
UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW JERSEY

Civil Action No. 3:13-cv-6933 (PGS)(TJB)
PAUSCH LLC,
Plaintiff,

MEMORANDUM AND ORDER

v.
TI-BA ENTERPRISES, NC.,
Defendant.

SHERIDAN, U.S.D.J.

This matter comes before the court on defendant, Ti-Ba Enterprises, Inc.’s motion to
dismiss plaintiffs complaint pursuant to Fed. R. Civ. P. 12(b)(2), 12(b)(6), and 12(b)(7) [ECF
No. 4]. For the reasons that follow, defendant’s motion to dismiss is granted without prejudice,
and plaintiff is granted leave to file an amended complaint.
FACTUAL BACKGROUND
Plaintiff, Pausch LLC, is a Delaware limited liability company having a business address
of 808 Shrewsbury Avenue, Tinton Falls, New Jersey 07724. Compi. at ¶1. Defendant, Ti-Ba
Enterprises. Inc. Q’Ti-Ba”). is a New York corporation having a business address of 25 Hytec
Circle, Rochester, New York 14606. Id. at ¶2. Plaintiff alleges that it has continuously been
selling medical apparatus in the United States utilizing the trademark PAUSCFI since at least
1978. Id. at ¶5. On November 29, 2011, Plaintiff was issued U.S. Service Mark Registration
No. 4,062,335 for the mark PAUSCH. Id. at ¶7. Plaintiffs further allege that Defendant is

offering for sale in this country medical apparatus under the confusingly similar name PAUSCH
MEDICAL. Id. at 9. On November 15, 2013, Plaintiff filed a Complaint against Ti-Ba alleging
infringement of a federally registered trademark, federal unfair competition, state statutory
infringement and unfair competition and common law unfair competition. In lieu of an answer,
Ti-Ba filed this Motion to Dismiss the complaint for lack of personal jurisdiction over Ti-Ba
pursuant to Fed. R. Civ. P. 12(b)(2); for failure to join a necessary party, Pausch Medical UmbH
(for whom Ti-Ba has admittedly distributed medical apparatus bearing the stamp PAUSCH
MEDICAL), pursuant to Fed. R. Civ. P. l2(h)(7); and for failure to state a claim upon which
relief may be granted under Fed. R. Civ. P. 1 2(b)(6).
In opposition, plaintiff has supplied, by way of Declaration, information regarding the
personal jurisdictional issues with respect to both Ti-Ba and a company that has not yet been
named as a defendant, Pausch Medical GmbFI. The Declaration of Justin Tice states that Pausch
LLC placed orders from Pausch Medical GmhH in Germany, which were shipped to Pausch
LLC in New Jersey, for six months, from April 2013 through August 2013. Tice Dccl.. ¶ 8-10.

The Tice Declaration also states that, upon being informed in September 2013 that all of its
future orders were to be placed through Ti-Ba, Pausch LLC placed orders for equipment through
Ti-Ba in New York, which were then shipped by Pausch Medical GmbH to Pausch LLC in New
Jersey. Tice Dccl..

¶

11-13.

In response, Ti-Ba has submitted the Declaration of Bill Titus (‘Titus Reply Decl.”)
stating that Pausch Medical GmbH arranged to hold the items ordered through Ti-Ba for pick up

in Germany. Titus Reply Decl.,

J 5.

‘The declaration refers to the documents submitted with the

Tice Declaration as Exhibit 3. Titus Reply Dccl.,

¶ 6.

DISCUSSION
Defendant Ti-Ba has moved to dismiss the complaint for lack of personal jurisdiction
over Ti-Ba pursuant to Fed. R. Civ. P. 12(b)(2); for failure to join a necessary party, Pausch
Medical GmbH, pursuant to Fed. R. Civ. P. 12(b)(7); and for failure to state a claim upon which
relief may be granted under Fed. R. Civ. P. 12(b)(6).
I.

Personal Jurisdiction/Minimum Contacts
Pursuant to Fed. R. Civ. P. 12(b)(2), a complaint may be dismissed for lack of personal

jurisdiction. “If an issue is raised as to whether a court lacks personal jurisdiction over a
defendant, the plaintiff bears the burden of showing that personal jurisdiction exists.” A/far/en v.
Godwin. 499 F.3d 290, 295-96 (3d Cir. 2007). “To meet this burden, the plaintiff must establish
either that the particular cause of action sued upon arose from the defendant’s activities within

the forum state (‘specific jurisdiction’) or that the defendant has ‘continuous and systematic’
contacts with the forum state (‘general jurisdiction’).” Provident Na/’l Bank v. CA Fed. Say. &
Loan Assn., 819 F.2d 434, 437 (3d Cir. 1987) (citations omitted). Under Fed. R. Civ. P.4(k), “‘a
federal district court may assert personal jurisdiction over a nonresident of the state in which the
court sits to the extent authorized by the law of that state.” Id. at 296 (quoting Provideii/ Nat’!

Bank, 819 F.2d at 437; Fed. R. Civ. P. 4(k)(1)(A)). Pursuant to the New Jersey long-arm rule,
N.J. Court R. 4:4-4(c), personal jurisdiction in New Jersey “extends to the limits of the
Fourteenth Amendment Due Process protection.” Carteret Say. Bank, FA v. Shushan, 954 F,2d
141, 145 (3d Cir. 1992). Therefore, this Court is “constrained, under New Jersey’s long-arm
rule, only by the ‘traditional notions of fair play and substantial justice,’ inhering in the Due
Process Clause of the Constitution.” Id. (quoting Int’l Shoe Co. v. Washington, 326 U.S. 310, 316
(1945)). Those notions require that a defendant have certain minimum contacts with the forum

state based upon the defendants

own

purposeful availment “of the privilege of conducting

activities within the forum State, thus invoking the benefits and protections of its laws.” Burger
King Corp.

V.

Rudzewicz, 471 U.S. 462, 475 (1985). Unilateral activity on the part of the

plaintiff will not cause the defendant to be subject to personal jurisdiction in that forum. Id.
However, physical entry into the forum state is not necessary to maintain personal
jurisdiction over a defendant. Id. at 476. While a presence in the forum will only serve to
enhance a defendant’s affiliation therewith and serve to reinforce foreseeability of suit therein,
“it is an inescapable fact of modern commercial life that a substantial amount of business is
transacted solely by mail and wire communications across state lines, thus obviating the need for
physical presence within a State in which business is conducted.” Id. All that is necessary for
sufficient minimum contacts to be established in the forum state is for “a commercial actor’s
efforts [to bej ‘purposefully directed’ toward residents of another State.” Id.
Here, no argument has been made that Ti-Ba is subject to general personal jurisdiction
before this Court. 1—lowever, specific personal jurisdiction may still exist if “plaintiffs claim is
related to or arises out of the defendant’s contacts with the forum.” Pennzoil Prods. Co. v.
Colelli &Assocs., 149 F.3d 197, 201 (3d Cir. 1998) (internal quotation marks omitted).

Defendant argues that, because plaintiff has not specifically pleaded jurisdictional facts
alleging minimum contacts of Ti-Ba with New Jersey. However, this is not the standard. As the
Third Circuit stated in Patterson v. FBI, 893 F.2d 595. 603-604 (3d Cir. 1990),
A Rule I 2(b)(2) motion, such as the motion made by the defendants
here, is inherently a matter which requires resolution of factual
issues outside the pleadings, i.e. whether in personam jurisdiction
actually lies. Once the defense has been raised, then the plaintiff
must sustain its burden of proof in establishing jurisdictional facts
through sworn affidavits or other competent evidence. Contrary to
the dissent’s suggestion, therefore, at no point may a plaintiff rely on
the bare pleadings alone in order to withstand a defendant’s Rule

12(b)(2) motion to dismiss for lack of in personarn jurisdiction. See
International Ass’n of Machinists & Aerospace Workers v.
NorlhwestAirlines, 673 F.2d 700 (3d Cir. 1982). Once the motion
is made, plaintiff must respond with actual proofs, not mere
allegations.

Patterson, 893 F.2d at 603-604 (quoting Time Share Vacation Club v. Atlantic Resorts, Ltd., 735
F.2d 61. 67 n.9 (3d Cir. 1984)).
Here, the plaintiff did respond with a declaration and exhibits, asserting that Ti-Ba had
minimum contacts with New Jersey. 1-lowever, the assertions made in the declaration are

lacking. Ti-Ba took orders from plaintiff; it did not ship the items to plaintiff. The Tice
Declaration states that the items plaintiff received were shipped directly from Pausch Medical
GmbH in Gennany. Tice Dccl., ¶IJ 11-13. In response, Ti-Ba has stated, through the Reply
Declaration of Bill Titus, that the items ordered by the plaintiff through Ti-Ba were held in a
German port for pick-up by Pausch LLC. Titus Reply Dccl.,

¶f 4-5.

The Titus Reply

Declaration further states that the ‘Order Confirmations annexed to Plaintiffs Opposition Papers
•

.

between Ti-Ba and Pausch LLC noted that the products were to be shipped to ‘Paush [sic]

Medical GrnbH, Graf-Zeppelin-StraBe 1, Erlangen, Germany 91056’ or ‘PAUSCH Medical
Gmbl-i hold for pickup by LLC.” Titus Reply Decl.,

¶ 6.

Upon review of the documents

appended to the Tice Declaration as Exhibit 3, the Court has confirmed that at least some of the
documents indicate that the products were shipped to Pausch LLC in New Jersey, while others
(largely the forms used by Ti-Ba) indicate that the products were held for pick-up at Pausch
Medical in Germany.
Irrespective

of the actual circumstances surrounding the

confusing

documents submitted

by the plaintiff as to shipments made by Pausch Medical GmbH, it is unclear from the competing
declarations whether Ti-Ba itself reached out to New Jersey to conduct its business and would

thus have the sufficient minimum contacts necessary to establish specific personal jurisdiction.
This is particularly true because the act complained of by plaintiff is not the supplying of the
material bearing the Pausch mark by Ti-Ba to Pausch LT.C, but the alleged supplying of those
materials by Ti-Ba to others in the United States. Compi.

9; Tice Decl.,

“

11-15. Plaintiff has

submitted no evidence of Ti-Ba’s contacts with New Jersey. apart from its alleged middleman”
activities in placing orders for plaintiff with Pausch Medical GmbH. As a result, plaintiffs
complaint is dismissed without prejudice for lack of personal jurisdiction over the defendant, TiBa Enterprises. Inc. Plaintiff is granted leave to tile an amended complaint within thirty (30)
days. outlining the jurisdictional facts that would allow it to bring its claims against defendant
Ti-Ba Enterprises, Inc. before this court.
Because the Court has dismissed on jurisdictional grounds, it does not reach the
additional grounds for dismissal argued by defendant in the motion to dismiss. However, the
Court notes that, to the extent that Pausch Medical GmbH has rights which would he impacted
by this litigation, Pausch Medical would be considered a necessary party to the litigation.
CONCLUSION
Plaintiff Pausch LLC has brought a lawsuit for trademark infringement and New Jersey
state law causes of action against defendant Ti-Ba Enterprises, Inc. 1-lowever, it is unclear from
the papers submitted whether Ti-Ba Enterprises has sufficient minimum contacts to subject it to
specific personal jurisdiction before this court. Therefore, plaintiff’s complaint is dismissed
without prejudice, with leave to amend within thirty (30) days to assert the additional
jurisdictional facts.

______________________
_____________________

ORDER
It is, on this

cb

day of

,

2014,

ORDERED that Defendant, Ti-Ba Enterprises, Inc.’s motion to dismiss the complaint

pursuant to Fed. R. Civ. P. 12(b)(2) for lack of personal jurisdiction be and is hereby
GRANTED; and it is further
ORDERED that Plaintiffs complaint is dismissed in its entirety without prejudice; and it
is further
ORDERED that Plaintiff may file an amended complaint within thirty (30) days of the
date of this Memorandum and Order.

Dated: 1(( i

.2014
PETER G. SHERIDAN, U.S.D.J.