Hetronic International Inc v. Hetronic Germany GMBH et al
Filing
124
MEMORANDUM OPINION AND ORDER denying 71 Partial Motion to Dismiss Defendants Hetronic Germany and Hydronic-Steuersysteme. Signed by Honorable Robin J. Cauthron on 11/6/15. (lg)
IN THE UNITED STATES DISTRICT COURT FOR THE
WESTERN DISTRICT OF OKLAHOMA
HETRONIC INTERNATIONAL, INC.,
)
)
Plaintiff,
)
)
vs.
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HETRONIC GERMANY GMBH;
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HYDRONIC-STEUERSYSTEME-GmbH; )
ABI HOLDING GMBH;
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ABITRON GERMANY GmbH;
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ABITRON AUSTRIA GmbH; and
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ALBERT FUCHS,
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)
Defendants.
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Case No. CIV-14-650-C
MEMORANDUM OPINION AND ORDER
Before the Court is the Partial Motion to Dismiss Defendants Hetronic Germany and
Hydronic-Steuersysteme (Dkt. No. 71). The Motion has been fully briefed and is at issue.
I. BACKGROUND
Hetronic International, Inc. (“Hetronic”) designs and manufactures radio remote
controls for use in heavy industrial equipment. Hetronic Germany GmbH (“H-Germany”)
and Hydronic-Steuersysteme-GmbH (“Hydronic”), both Defendants in this case, served as
Hetronic’s distributer and assembler for Germany and a number of central eastern European
countries, respectively. The right for both H-Germany and Hydronic to assemble and
distribute Hetronic’s radio remote controls was governed by a Distribution Agreement.
Plaintiff alleges that H-Germany and Hydronic materially breached the Distribution
Agreement causing Plaintiff to subsequently terminate the agreement. After the termination
of the Distribution Agreement, Fuchs (former CEO of Hydronic) incorporated ABI–sole
shareholder of Abitron–and also incorporated the Abitron entities and/or renamed the
existing entities with the Abitron name. Plaintiff asserts contract and tort claims, including
Lanham Act claims, against Defendants.
Defendants seek dismissal of Plaintiff’s Federal Trademark/Lanham Act claim.
Additionally, Defendants contend Plaintiff’s eighth cause of action–conversion–is subject
to dismissal because intangible property may not be the basis for a conversion claim under
Oklahoma law.1 Defendants also move to dismiss Counts 3-6 under Fed. R. Civ. P. 12(b)(6).
Lastly, Defendants argue that Plaintiff’s contributory trademark infringement claim fails as
a matter of law.2
II. ANALYSIS
Defendants asserts that Plaintiff has failed to state a claim on Counts 3-6. The standard
for consideration of motions to dismiss brought pursuant to Fed. R. Civ. P. 12(b)(6) is set
forth in the Supreme Court’s decision in Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007),
and the subsequent decision in Ashcroft v. Iqbal, 556 U.S. 662 (2009). In those cases, the
Supreme Court made clear that to survive a motion to dismiss, a complaint must contain
enough allegations of fact which, taken as true, “state a claim to relief that is plausible on its
face.” Twombly, 550 U.S. at 570. Plaintiffs must “nudge[] their claims across the line from
conceivable to plausible” to survive a motion to dismiss. Id. Thus, the starting point in
1
This Court has already ruled on the conversion claim (Dkt. No. 102) and there is no
need to address it again.
2
This Court has already ruled on the contributory trademark infringement claim (Dkt.
No. 123) and there is no need to address it again.
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resolving Defendants’ Motion is to examine the factual allegations supporting each claim that
Defendants wish the Court to dismiss. Plaintiff provides enough factual allegations to nudge
the claims across the line from conceivable to plausible. Plaintiff has successfully stated a
claim on all Counts.
Defendants argue that because H-Germany’s and Hydronic’s actions did not occur in
the United States, Plaintiff’s Lanham Act claim (Count 3) must fail. Plaintiff correctly notes
that the United States Supreme Court has held that the Lanham Act sometimes reaches
extraterritorial conduct. Steele v. Bulova Watch Co., Inc., 344 U.S. 280, 286 (1952). The
Defendants later concur with Plaintiff, on page 1 of Defendants’ Reply, that Plaintiff’s “legal
proposition is correct,” but that Plaintiff has not pleaded facts supporting a finding of impact
from H-Germany’s and Hydronic’s actions in the United States. Defendants are challenging
Plaintiff’s ability to prove their claim rather than whether Plaintiff has enough facts sufficient
to state a claim. This is not the function of a motion to dismiss.
Accordingly, the Partial Motion to Dismiss Defendants Hetronic Germany and
Hydronic-Steuersysteme (Dkt. No. 71) is DENIED.
IT IS SO ORDERED this 6th day of November, 2015.
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