PROMINENT GMBH et al v. PROMINENT SYSTEMS, INC. et al

Filing 33

MEMORANDUM OPINION on the 21 MOTION to Dismiss for Lack of Jurisdiction and the 23 MOTION to Transfer Case . Signed by Magistrate Judge Lisa Pupo Lenihan on 04/10/2017. (jmb)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF PENNSYLVANIA
PROMINENT GmbH, PROMINENT
SYSTEMS, spol. s r.o., and PROMINENT
FLUID CONTROLS, INC.,
Plaintiffs,
v.
PROMINENT SYSTEMS, INC.,
PROMINENT SUPPLIES, INC., and
KY TRAN,
Defendants.

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Civil Action No. 2:16-cv-01609
Magistrate Judge Lisa Pupo Lenihan

ECF Nos. 21 & 23

OPINION
LENIHAN, M.J.
Currently before the Court for disposition are the Motion to Dismiss Pursuant to
Federal Rules of Civil Procedure 12(b)(2) and 12(b)(3) (ECF No. 21), and the Motion to
Transfer Pursuant to 28 U.S.C. §§ 1404, 1406, and 1631 (ECF No. 23), filed by Defendants
Prominent Systems, Inc., Prominent Supplies, Inc., and Ky Tran (collectively
“Defendants”).

Plaintiffs, Prominent GmbH, Prominent Systems, spol. s r.o., and

Prominent Fluid Controls (collectively “Prominent” or “Plaintiffs”), assert claims for the
alleged willful and blatant infringement of their famous federally registered
PROMINENT trademarks, and for trademark dilution and false designation of origin
and unfair competition, under federal and state law, against Defendants.

For the

reasons set forth below, the Court will grant in part and deny in part Defendants’
motion to dismiss for lack of personal jurisdiction. Defendants’ motion to dismiss

under Rule 12(b)2) will be granted as to Defendants Prominent Supplies, Inc. and Ky
Tran, and will be denied as to Defendant Prominent Systems, Inc. The claims against
Defendants Prominent Supplies and Ky Tran will be dismissed without prejudice. In
addition, the Court will deny Defendants’ motion to dismiss under Rule 12(b)(3) for
improper venue as to Defendant Prominent Systems, and will deny said motion as
moot with regard to Defendants Prominent Supplies and Ky Tran. Finally, the Court
will deny Defendants’ motion to transfer.
I.

FACTUAL BACKGROUND1 & PROCEDURAL HISTORY
According to the Complaint, Prominent is a global leader in all aspects of water

treatment solutions, and has used its PROMINENT marks for over 50 years to brand its
acclaimed and market leading products. (Compl., ¶2, ECF No. 1.) A family owned and
operated company with 56 global subsidiaries, Prominent employs over 2,100 persons
worldwide, 150 of which are located in Pittsburgh, Pennsylvania, which is the location
of its headquarters and principal place of business in the United States. (Id. at ¶¶ 3, 7,
13.)
Plaintiff Prominent GmbH is a limited liability company organized and existing
under the laws of the Federal Republic of Germany, with an office and principal place
of business in Heidelberg, Germany.

(Id. at ¶14.)

At all material times, Prominent

GmbH is and was engaged in the business of developing, manufacturing, distributing,
marketing, maintaining, and providing high quality water treatment and water

1

Only those facts relevant to the pending motions are set forth in this Opinion.
2

disinfection solutions, as well as dosage pumps, metering pumps and related
technology including, but not limited to, dry feeders. (Id.)
Plaintiff Prominent Systems spol. s r. o. is a limited liability company organized
and existing under the laws of the Czech Republic, with an office and principal place of
business in Blovice, Czech Republic. (Id. at ¶ 15.) Prominent Systems spol. s r. o. is a
wholly owned subsidiary of Prominent GmbH and is engaged in the business of
producing water treatment systems and components thereof. (Id.)
Plaintiff Prominent Fluid Controls, Inc., is a Pennsylvania corporation with its
headquarters in Pittsburgh, Pennsylvania. (Id. at ¶ 16.) At all material times, Prominent
Fluid Controls is and was a wholly owned subsidiary of Prominent GmbH and is
Prominent’s exclusive distributor in the United States. (Id.) Prominent Fluid Controls is
engaged in the same business activities as those stated for Prominent GmbH, and
operates under the name Prominent, which is protected by federal and state trademark
registrations. (Id.)
Defendant Prominent Systems, Inc. is a California corporation with a principal
place of business located in the City of Industry, California. (Id. at ¶ 17; Decl. of Ky
Tran (“Tran Decl.”) at ¶2, ECF No. 21-1.) Prominent Systems manufactures Granular
Activated Carbon for use in its filter media products, which it markets for water
treatment and environmental purification, and offers a wide range of services and
applications involving its Carbon product. (Compl., ¶ 17 & Ex. 7 thereto, ECF No. 1-1 at
63-79.)

3

Plaintiffs allege that Prominent Systems targets a variety of industries including
companies in the food and beverage, pharmaceutical, and public sectors. (Compl., ¶ 17
& Ex. 7 thereto, ECF No. 1-1 at 79.)

Plaintiffs further allege that the activities of

Prominent Systems target Pennsylvania primarily in two ways—Prominent Systems:
(1) avails itself of Pennsylvania’s PennBid System, where private companies can bid on
public sector solicitations from more than 450 Pennsylvania government agencies and
municipalities; and (2) has and does conduct business throughout the United States via
various websites, including but not limited to, www.prominentinc.com and
www.prominentsupplies.com.

(Compl., ¶ 17.)2

Defendant Tran concedes that

Prominent Systems uses Pennsylvania’s PennBid bidding system, and that it has
shipped goods to Pennsylvania. (Supp. Decl. of Ky Tran (“Supp. Tran Decl.”) at ¶¶ 1415, ECF No. 30-1 at 3.) However, according to Defendant Tran, there is no way to place
an order directly from the Prominent Systems website. (Id. at ¶ 18.)
Defendant Prominent Supplies, Inc. is a California corporation with its principal
place of business located in San Gabriel, California,3 and is primarily engaged in project

Plaintiffs also proffer Prominent Systems’s anticipated participation as an Exhibitor in
the 2017 Annual Conference of the American Water Works Association from June 11-14,
2017 in Philadelphia, Pennsylvania, to support their position that Defendants targeted
Pennsylvania. (Compl., ¶ 17.) However, in their Reply Brief, Defendants stipulate and
agree to not attend that conference in any capacity, and attach the Supplemental
Declaration of Ky Tran in support. See Defs.’ Reply Br. at 1-2 (ECF No. 30); Supp. Decl.
of Ky Tran at ¶ 2 (ECF No. 30-1).
2

Plaintiffs allege that they believe that Prominent Supplies also has a principal place of
business at the same location in the City of Industry, California, as Prominent Systems.
(Compl., ¶ 18.) The president of Prominent Supplies, I. Nyoman Scorpio, also states
that the principal place of business of Prominent Supplies is located in the City of
3

4

management services. (Compl., ¶ 18 & Ex. 10 attached thereto, ECF No. 1-1 at 89; Supp.
Tran Decl. at ¶ 7; Decl. of I. Nyoman Scorpio (“Scorpio Decl.”) at ¶ 3, ECF No. 23-1.) I.
Nyoman Scorpio is the president and sole shareholder of Prominent Supplies. (Supp.
Tran Decl. at ¶ 6; Scorpio Decl. at ¶1.) Prominent Supplies also owns and operates the
website available at www.prominentsupplies.com.4 (Compl., ¶ 18.) Unlike Prominent
Systems, Prominent Supplies does not use Pennsylvania’s PennBid bidding system nor
has it engaged in any bidding activity in Pennsylvania. (Supp. Tran Decl. at ¶¶ 14, 16.)
Defendant Ky Tran resides in the State of California and serves as the President
of Prominent Systems. (Compl. at ¶ 19.) In such capacity, Defendant Tran directs some,
but not all, of the business and commercial activities of Defendant Prominent Systems,
as he is not the sole officer of the corporation. (Id.; Supp. Tran Decl. at ¶ 12.)

It

appears, however, that he does not direct any of the business and commercial activities
of Prominent Supplies as that business is the exclusive concern of the president and sole
shareholder of Prominent Supplies, I. Nyoman Scorpio. (Supp. Tran Decl. at ¶¶ 2 & 6;
Scorpio Decl. at ¶1.)

Industry, California. (Scorpio Decl. at ¶ 3.) However, in his supplemental declaration,
Ky Tran states that the only principal place of business for Prominent Supplies is the
East Greenwood Avenue address in San Gabriel, California, which is the personal
residence of the president of Prominent Supplies, Mr. Scorpio. (Supp. Tran Decl. at ¶
7.) Mr. Tran further states that Prominent Supplies is allowed to use the address of
Prominent Systems to protect the privacy of Mr. Scorpio by not making his home
address public. (Id.)
4 When visited on 2/23/17, the home page indicates that the website is “under
construction.”
5

According to Defendant Tran, Prominent Systems and Prominent Supplies do
not share common officers or directors, do not own each other’s stock, do not
consolidate tax returns or financial records, and do not exercise any control over each
other, but are independent, separately existing entities with divergent business
purposes. (Supp. Tran Decl. at ¶¶ 3-5, 9-10.) Prominent Supplies does not utilize any
employee of Prominent Systems; Mr. Scorpio, as a non-officer employee of Prominent
Systems, provides general marketing of goods and services for Prominent Systems,
largely in the Southern California area. (Supp. Tran Decl. at ¶ 3; Scorpio Decl. at ¶1.)
Prominent Supplies does not display any signage at the City of Industry, California
headquarters of Prominent Systems. (Supp. Tran Decl. at ¶11.)
Defendant Tran declares that neither he nor Prominent Systems has ever: (1)
attended any trade show in Pennsylvania (Supp. Tran Decl. at ¶ 19); (2)

Defendant

Tran further declares that (1) the heavy machinery owned and/or operated by
Prominent Systems, which is the subject of this lawsuit, is primarily located in
California, Washington, and Texas, and none is located in Pennsylvania (id. at ¶¶ 2122); (2) neither he, in his individual capacity, nor Prominent Supplies has ever
advertised in Water Quality Products magazine, but Prominent Systems does advertise
in that publication (id. at ¶ 26); (3) he personally has no business relationships,
operations, or endeavors in Pennsylvania and has not ever been within the borders of
Pennsylvania (Tran. Decl. at ¶¶ 3-4); (4) he has no employees residing or domiciled in
Pennsylvania, and no offices or comparable facilities, telephone listings, or mailing
address in Pennsylvania (id. at ¶ 9); (5) he has no bank accounts or other tangible
6

personal or real property in Pennsylvania (id. at ¶11); and (6) he has never transacted
business in, or set foot within the borders of, Pennsylvania (id. at ¶14).
With regard to Prominent Systems, Defendant Tran states that: (1) it is not
incorporated in Pennsylvania (id. at ¶6); (2) none of its employees, officers or directors
reside or are domiciled in Pennsylvania (id. at ¶¶ 7-8); (3) it has no branch office or
comparable facilities, telephone listings, or mailing address in Pennsylvania (id. at ¶8);
(4) it has no bank accounts or other tangible personal or real property in Pennsylvania
(5) none of its employees work in Pennsylvania (id. at ¶13); and (6) none of its board of
directors or shareholders meetings have been held in Pennsylvania, and none of its
officers or directors has attended business conferences or similar functions within
Pennsylvania (Id. at ¶ 12).
As to Defendant Prominent Supplies, Mr. Scorpio declares that : (1) it is not
incorporated or qualified to do business in Pennsylvania, and has no subsidiaries
incorporated or qualified to do business in Pennsylvania (Scorpio Decl. at ¶4); (2) none
of its employees, officers or directors reside or are domiciled in Pennsylvania (id. at ¶¶
5-6); (3) it has not contracted with persons residing in Pennsylvania to act on its behalf
with respect to marketing, distributing or servicing any of its goods or products (id. at ¶
6); (4) it has no branch office or comparable facilities, telephone listings, or mailing
address in Pennsylvania (id. at ¶ 7); (5) it has never transacted business in Pennsylvania
(id. at ¶ 14); (6) it has no bank accounts or other tangible personal or real property in
Pennsylvania (id. at ¶ 8); (7) it does not direct any of its advertising specifically towards
Pennsylvania residents, nor does it advertise in any publications that are directed
7

primarily towards Pennsylvania residents (id. at ¶ 9); (8) none of its board of directors
or shareholders meetings have been held in Pennsylvania, and none of its officers or
directors has attended business conferences or similar functions within Pennsylvania
(id. at ¶ 10); (9) its acts or omissions for which Plaintiffs seek to hold it liable in this
action all occurred outside Pennsylvania (id. at ¶11).

Mr. Scorpio, who serves as

president of Prominent Supplies, declares that he personally has no business
relationships, operations, or endeavors in Pennsylvania and has never stepped foot in
Pennsylvania. (Scorpio Decl. at ¶¶ 12-13.)
Defendants’ California business operations, officers, counsel, witnesses, and
evidence (heavy equipment) are all located within 100 miles of the Central District of
California. (Tran Decl. at ¶¶ 23, 27-30, 32-33; Supp. Tran Decl. at ¶¶ 24-25; Scorpio
Decl. at ¶¶ 21, 23, 27-30, 32-33.)
After failed attempts to resolve the trademark dispute with Defendants out of
court, Plaintiffs instituted this action on October 21, 2016. In response, Defendants filed
a motion to dismiss pursuant to Rules 12(b)(2) and (b)(3) (ECF No. 21), as well as a
motion to transfer the case to the Central District of California (ECF No. 23), and
supporting briefs (ECF Nos. 22 & 24). Plaintiffs filed a timely brief in opposition to the
motions (ECF No. 29), to which Defendants filed a reply brief (ECF No. 30). As the
motions to dismiss and/or transfer have been fully briefed, they are now ripe for
disposition.

8

II.

STANDARD OF REVIEW
A.

Motion to Dismiss
1.

FED. R.CIV. P. 12(b)(2)

In responding to a motion to dismiss under Federal Rule of Civil Procedure
12(b)(2) for lack of personal jurisdiction, the plaintiff bears the burden of proving, by a
preponderance of the evidence, facts sufficient to establish personal jurisdiction over the
defendants, by producing affidavits or other competent evidence.

Metcalfe v.

Renaissance Marine, Inc., 566 F.3d 324, 330 (3d Cir. 2009) (citing Pinker v. Roche Holdings
Ltd., 292 F.3d 361, 368 (3d Cir. 2002); Dayhoff Inc. v. H.J. Heinz Co., 86 F.3d 1287, 1302 (3d
Cir. 1996)); see also Time Share Vacation Club v. Atlantic Resorts, Ltd., 735 F.2d 61, 66 n.9
(3d Cir. 1984). Where, as here, an evidentiary hearing is not held on the 12(b)(2) motion,
the plaintiff need only demonstrate a prima facie case of personal jurisdiction. Metcalfe,
566 F.3d at 330 (citing O’Connor v. Sandy Lane Hotel Co., 496 F.3d 312, 316 (3d Cir. 2007));
D’Jamoos v. Pilatus Aircraft Ltd., 566 F.3d 94, 102 (3d Cir. 2009) (citing Miller Yacht Sales,
Inc. v. Smith, 384 F.3d 93, 97 (3d Cir. 2004)). A plaintiff “presents a prima facie case for
the exercise of personal jurisdiction by ‘establishing with reasonable particularity
sufficient contacts between the defendant and the forum state.’”

Mellon Bank (East)

PSFS, Nat’l Ass’n v. Farino, 960 F.2d 1217, 1221 (3d Cir. 1992) (quoting Provident Nat’l
Bank v. Cal. Fed. Sav. & Loan Ass’n, 819 F.2d 434, 437 (3d Cir. 1987)) (other citation
omitted).
In deciding a Rule 12(b)(2) motion, although the court must accept the plaintiff's
allegations as true and resolves all doubts in its favor, D’Jamoos, 566 F.3d at 102 (citing
9

Miller Yacht Sales, supra), plaintiff may not rest solely on the pleadings to satisfy its
burden of proof, see Pinker, 292 F.3d at 368; Carteret Sav. Bank, 954 F.2d at 146. Rather,
the plaintiff must present evidence that demonstrates a prima facie case for the exercise
of personal jurisdiction. See Mellon Bank (East) PSFS, Nat. Ass'n v. Farino, 960 F.2d 1217,
1223 (3d Cir. 1992). If the plaintiff succeeds, the burden then shifts to the defendant to
demonstrate that an exercise of personal jurisdiction by the forum state would violate
due process, i.e., the exercise of personal jurisdiction over defendant would offend
traditional notions of fair play and substantial justice. Miller Yacht Sales, 384 F.3d at 97
(citing Burger King, 471 U.S. at 476).
2.

Fed. R. Civ. P. 12(b)(3)

In this circuit, the party challenging venue has the burden of proving that venue
in the selected judicial district is improper. Myers v. Am. Dental Ass’n, 695 F.2d 716, 724
(3d Cir. 1982) (citation & footnote omitted); see also Manning v. Flannery, Civ. A. No. 093190, 2010 WL 55295, at *4 & n. 4 (E.D.Pa. Jan. 6, 2010) (citing Myers, supra) (other
citations & footnote omitted). In deciding a motion to dismiss and/or transfer for
improper venue under Rule 12(b)(3), the Court must generally accept as true the
allegations in the pleadings. Heft v. AAI Corp., 355 F.Supp. 2d 757, 762 (M.D.Pa. 2005)
(citing Pinker v. Roche Holdings Ltd., 292 F.3d 361, 368 (3d Cir. 2002); Myers, 695 F.2d at
724) (footnote omitted). In addition, “[t]he parties may submit affidavits in support of
their positions, and may stipulate as to certain facts, but the plaintiff is entitled to rely
on the allegations of the complaint absent evidentiary challenge.” Heft, 355 F.Supp. 2d
at 762 (citing Carteret Sav. Bank, F.A. v. Shushan, 954 F.2d 141, 142 & n. 1 (3d Cir.1992);
10

Myers, 695 F.2d at 724). In either event, the Court is required to view the facts in the
light most favorable to the Plaintiff. Id. (citing Carteret and Myers, supra).
B.

Motion to Transfer

The district court is vested with broad discretion in determining whether transfer
of venue is appropriate. Plum Tree, Inc. v. Stockment, 488 F.2d 754, 756 (3d Cir. 1973)
(citations omitted); Jumara v. State Farm Ins. Co., 55 F.3d 873, 883 (3d Cir. 1995).
III.

DISCUSSION
A.

Personal Jurisdiction

In their reply brief, Defendants concede that this Court likely possesses specific
personal jurisdiction over Prominent Systems.5 Defs.’ Reply Br. at 8 (ECF No. 30). In
light of this concession, the Court need only determine whether personal jurisdiction
exists over the remaining defendants—Prominent Supplies and Ky Tran.
At the outset, the Court notes that Plaintiffs have not delineated the contacts of
Prominent Supplies and Ky Tran that were purposefully directed to the forum, but
rather, rely on the alleged contacts of Prominent Systems or the Defendants collectively,
which they claim show purposeful availment. This infirmity is fatal to establishing the
Court’s specific personal jurisdiction over Prominent Supplies and Ky Tran.
In order for personal jurisdiction to exist over Defendants in the Western District
of Pennsylvania, each Defendant must have certain “minimum contacts” with the
Defendants’ concession is supported by Prominent Systems’ admitted use of the
PennBid system to solicit customers in Pennsylvania and shipment of goods to
Pennsylvania. Supp. Tran Decl. ¶¶ 14-15. Moreover, Defendants’ reply brief focuses on
Plaintiffs’ failure to show sufficient minimum contacts with Pennsylvania only with
regard to Prominent Supplies and Ky Tran.
5

11

forum state “such that the maintenance of the suit does not offend ‘traditional notions
of fair play and substantial justice.’”6 Int’l Shoe Co. v. Washington, 326 U.S. 310, 316
(1945) (quoting Milliken v. Meyer, 311 U.S. 457, 463 (1940)) (other citations omitted). The
minimum contacts requirement serves the purpose of “protect[ing] the defendant
against the burdens of litigating in a distant and inconvenient forum” by requiring that
the “defendant's conduct and connection with the forum State [be] such that [a
defendant] should reasonably anticipate being haled into court there.”

World-Wide

Volkswagen Corp. v. Woodson, 444 U.S. 286, 291-92, 297 (1980) (citations omitted). This
framework enables “potential defendants to structure their primary conduct with some
minimum assurance as to where that conduct will and will not render them liable to
suit.” Id. at 297. Thus, a plaintiff cannot unilaterally create the necessary contacts
between the defendant and the forum; rather, “minimum contacts” can arise only by
“‘some act by which the defendant purposely avails itself 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) (quoting Hanson v. Denckla, 357
U.S. 235, 253 (1958)).
Personal jurisdiction can exist in one of two forms: specific jurisdiction or general
jurisdiction. Specific jurisdiction applies where the cause of action is related to or arises
from the defendant’s contacts with the forum, Toys “R” Us, Inc. v. Step Two, S.A., 318
F.3d 446, 451 (3d Cir. 2003) (quoting Pinker, 292 F.3d at 368), while general jurisdiction
The Due Process standard must be applied to each defendant. Carteret Sav. Bank, FA
v. Shushan, 954 F.2d 141, 145 n.6 (3d Cir. 1992) (citing Calder v. Jones, 465 U.S. 783, 790
(1984)).
6

12

applies where the defendant’s contacts with the forum are “continuous and systematic”
but are not related to the plaintiff’s cause of action, Pennzoil Prods. v. Colelli & Assocs.,
Inc., 149 F.3d 197, 200 (3d Cir. 1998) (citation omitted). In the instant matter, Plaintiffs
submit that personal jurisdiction exists over Defendants based solely upon specific
jurisdiction.
Specific personal jurisdiction requires the Court to conduct a three-part test.
D’Jamoos v. Pilatus Aircraft Ltd., 566 F.3d 94, 102 (3d Cir. 2009). Initially, the court must
determine whether the defendant has “‘purposefully directed’” its activities toward the
forum state. Id. (quoting Burger King Corp., 471 U.S. 462 (quoting Keeton v. Hustler
Magazine, Inc., 465 U.S. 770, 775 (1984) (whether “minimum contacts” exist requires the
court to examine “the relationship among the defendant, the forum, and the
litigation.”))). “Second, the litigation must ‘arise out of or relate to’ at least one of those
activities.” Id. (quoting Helicopteros Nacionales de Columbia, S.A., 466 U.S. 408, 414 (1984);
O’Connor v. Sandy Lane Hotel Co., Ltd., 496 F.3d 312, 317 (3d Cir. 2007)). Finally, if the
plaintiff has established the first two elements, only then does the court proceed to the
third part of the inquiry–whether the defendant’s contacts with the forum state are such
that maintenance of the action “‘does not offend traditional notions of fair play and
substantial justice.’”7 World-Wide Volkswagon, 444 U.S. at 292 (citing Int’l Shoe, 326 U.S. at

With regard to the third prong of the specific jurisdiction analysis, the court should
consider the following factors: “‘the burden on the defendant, the forum State’s interest
in adjudicating the dispute, the plaintiff’s interest in obtaining convenient and effective
relief, the interstate judicial system’s interest in obtaining the most efficient resolution of
controversies,’ and the ‘shared interest of the several States in furthering fundamental
substantive social policies.’” Burger King, 471 U.S. at 477 (quoting World-Wide
7

13

316); D’Jamoos, 566 F.3d at 102. In this regard, the court of appeals observed:
The first two parts of the test determine whether a defendant
has the requisite minimum contacts with the forum. The
threshold requirement is that the defendant must have
“purposefully avail[ed] itself of the privilege of conducting
activities within the forum State.” Hanson v. Denckla, 357 U.S.
[at 253]. To meet this requirement, the defendant's physical
entrance into the forum is not necessary. See Burger King, 471
U.S. at 476, 105 S.Ct. at 2184; Grand Entm't Group, Ltd. v. Star
Media Sales, Inc., 988 F.2d 476, 482 (3d Cir.1993). A
defendant's contacts, however, must amount to “a deliberate
targeting of the forum.” O'Connor, 496 F.3d at 317. The
“unilateral activity of those who claim some relationship
with a nonresident defendant” is insufficient. Hanson, 357
U.S. at 253.
D’Jamoos, 566 F.3d at 102-03. The inquiry under D’Jamoos must be applied to each claim
and to each defendant independently. Marten v. Godwin, 499 F.3d 290, 296 (3d Cir. 2007)
(citing Remick v. Manfredy, 238 F.3d 248, 255-56 (3d Cir. 2001)). Plaintiffs bear the
burden of proof on the first two elements, and only if Plaintiffs meet this burden does
the burden shift to Defendants to prove the third element. Burger King, 471 U.S. at 47678.
The court of appeals has applied the D’Jamoos test to defendants who are not
being sued for intentional torts. See O’Connor, 496 F.3d at 317 & n. 2.

Where the

plaintiff has brought suit against a defendant based on an intentional tort, the court of
appeals has applied the Calder effects test. Id. at 317 n. 2. Here, Plaintiffs argue that
specific jurisdiction exists against Prominent Supplies and Ky Tran under both tests. 8

Volkswagen, 444 U.S. at 292).
8
Although the specific jurisdiction inquiry must be applied to each claim separately,
Plaintiffs’ analysis does not appear to differentiate between the intentional torts and
14

As explained below, Plaintiffs have failed to establish that personal jurisdiction exists
over Prominent Supplies and Ky Tran in this District under any applicable standard.
1.

D’Jamoos Test

Under the first prong of the D’Jamoos test, Plaintiffs must show that Prominent
Supplies and Ky Tran purposefully directed their activities at the forum.

Thus,

the

Court will examine the alleged contacts of each Defendant as supported by Plaintiffs’
and Defendants’ affidavits and exhibits.
(a)

Prominent Supplies

The contacts of Prominent Supplies identified by Plaintiffs, which are alleged to
be purposefully directed to Pennsylvania, consist merely of (1) Prominent Supplies’
allegedly interactive website, www.prominentsupplies.inc., (2) the alleged use of the
PROMINENT trademark on Prominent Supplies’ website, and (3) the use of a metatag
for the word “Prominent”. However, none of the exhibits provided by the parties
shows that any of these “contacts” is purposefully directed towards Pennsylvania.
Plaintiffs submit that Prominent Supplies’ website, while not interactive, is
sufficiently commercial to show contacts with Pennsylvania, such that it falls in the
middle of the sliding scale set forth in Zippo Mfg. Co. v. Zippo Dot Com, Inc., 952 F.Supp.
1119 (W.D.Pa.1997).9

Plaintiffs’ argument falls short of the mark.

non-intentional tort claims, other than to summarily argue (in the alternative) that
specific jurisdiction also exists over Defendants under the Calder effects test. (Pls.’ Br. at
27.)
9 The Zippo court explained the sliding scale as follows:
Nevertheless, our review of the available cases and materials
15

In Metcalfe v. Renaissance Marine, Inc., the court of appeals relied on its holding in
Toys “R” Us, Inc. v. Step Two, S.A., 318 F.3d 446, 454 (3d Cir. 2003), in which it had
articulated the controlling principle in determining whether websites are sufficiently
interactive/commercial to show contacts directed to the forum:
As Zippo [Mfg. Co. v. Zippo Dot Com, Inc., 952 F.Supp. 1119
(W.D.Pa.1997)] and the Courts of Appeals decisions indicate,
the mere operation of a commercially interactive web site
should not subject the operator to jurisdiction anywhere in
the world. Rather, there must be evidence that the defendant
“purposefully availed” itself of conducting activity in the
forum state, by directly targeting its web site to the state,

reveals 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. This sliding scale is consistent
with well developed personal jurisdiction principles. At 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 involve
the knowing and repeated transmission of computer files
over the Internet, personal jurisdiction is proper. E.g.
CompuServe, Inc. v. Patterson, 89 F.3d 1257 (6th Cir.1996). 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
personal jurisdiction. E.g. Bensusan Restaurant Corp., v. King,
937 F.Supp. 295 (S.D.N.Y.1996). 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. E.g. Maritz, Inc. v.
Cybergold, Inc., 947 F.Supp. 1328 (E.D.Mo.1996).
952 F. Supp. at 1124 (footnote omitted).
16

knowingly interacting with residents of the forum state via
its web site, or through sufficient other related contacts.
566 F.3d 324, 340 (3d Cir. 2009). When the Court examines Prominent Supplies’ website
and the exhibits depicting the website, it is clear that it lacks the necessary level of
interactivity and commercial activity to establish sufficient minimum contacts for
personal jurisdiction purposes.
In the Court’s view, Prominent Supplies’ website is passive rather than
interactive, as it does little more than make contact information available to those who
are interested in purchasing or finding out more about its cleaning products. The onepage website states that its cleaning products are available for public purchase either at
its store in California, or by calling a telephone number in California. (Pls.’ Ex. 10 to
Compl., ECF No. 1-1 at 90.)10 The website also provides the following email address:
[e-mail].

No other information is provided on Prominent

Supplies’ website, not even a description of the cleaning products available for
purchase.

Thus, it is clear that visitors to the website cannot place orders over the

internet, but instead, must visit or call the store in California.

Since the website is

passive, Plaintiffs have not shown nor can they show that the website generated any
sales or shipments of Prominent Supplies’ cleaning products, let alone sales or
shipments to customers in Pennsylvania.

The Court has relied on the webpage provided by Plaintiffs in Exhibit 10 to their
Complaint, because when the Court recently visited Prominent Supplies’ website, it was
“under contruction.”
10

17

Plaintiffs attempt to get around this infirmity by arguing that Defendants employ
metatags and search engine optimization techniques to specifically target Pennsylvania
consumers searching for PROMINENT on Google or other search engines to lure them
to Defendants’ websites (citing Liedtke Decl., ¶¶ 20-26, Ex. B to Pls.’ Br. in Opp’n (citing
Ex. B-3 attached thereto)).

However, Liedtke’s declaration and supporting

documentation do not show that the use of metatags and search engine optimization
techniques specifically targeted Pennsylvania consumers. Rather, Liedtke states that
metatags are designed to induce internet search engines to display a website more
prominently than others.

This statement only supports the conclusion that any

consumers (nationally or globally) who enter a search inquiry containing the word
“PROMINENT” will likely see Defendants’ websites listed more prominently in their
search results. Exhibit 3 to Liedtke’s declaration does not support the conclusion that
the use of metatags targets consumers in Pennsylvania.
Plaintiffs also advance the argument that Defendants’ use of their PROMINENT
trademark on Defendants’ websites targeted Pennsylvania consumers. Plaintiffs fail to
provide any explanation as to how this establishes that Prominent Supplies was
targeting Pennsylvania consumers, and the Court fails to see how merely displaying
Plaintiffs’ trademark on Defendants’ websites would purposefully target consumers in
Pennsylvania. Such a relationship is tenuous at best; due process requires more.
In addition, the president of Prominent Supplies, I. Nyoman Scorpio, stated in
his declaration that Prominent Supplies has never transacted business in Pennsylvania,

18

nor has it ever contracted with persons residing in Pennsylvania to transact business on
its behalf. Scorpio Decl. ¶¶ 6, 14.
Thus, Plaintiffs have failed to produce any evidence that Prominent Supplies’
website targets Pennsylvania customers.

If Prominent Supplies’ website can be

regarded as targeted at all, it is targeted at anyone anywhere in the world who is
interested in purchasing its cleaning products. If that targeting is sufficient, Prominent
Supplies’ website has subjected it to personal jurisdiction anywhere in the world that a
potential customer resides, a result that is inconsistent with the court of appeals’
holding in Toys “R” Us.
To the extent that Plaintiffs attempt to rely on Defendants’ participation in the
2016 Annual Conference & Exhibition of the American Water Works Association, based
on the attendee list showing that more than 300 of the attendees were from
Pennsylvania (Ex. B-5 attached to Liedkte Decl., ECF No. 29-2 at 139-144), their reliance
is misplaced. First of all, Plaintiffs fail to provide any proof that representatives from
Prominent Supplies or Ky Tran attended that conference, and Mr. Tran states that he
never attended any trade shows in Pennsylvania (Supp. Tran Decl. ¶19).

Rather,

Plaintiffs offer the declaration of Michael Weber, the general manager of Prominent
Fluid Controls. Mr. Weber states that he visited Defendants’ exhibitor booth at the 2016
conference and talked with unidentified “employees” of Defendants, and that his
customers had mistakenly visited “Prominent Systems’ tradeshow booth when they
were looking for Prominent’s booth.” (Weber Decl. ¶¶ 16-17, Ex. A to Pls.’ Br. in Opp’n
(ECF No. 29-1 at 1-4).) Weber’s statements do not show that representatives from
19

Prominent Supplies or Ky Tran attended that conference. Nonetheless, even if all of the
Defendants had attended the 2016 conference with attendees from Pennsylvania, that
alone does not constitute purposeful contacts with Pennsylvania, as the 2016 conference
took place in Chicago, Illinois.11 O’Connor, 496 F.3d at 317 (citing Gehling v. St. George’s
Sch. of Med., Ltd., 773 F.2d 539, 542-43 (3d Cir. 1985)) (“contacts with a state’s citizens
that take place outside the state are not purposeful contacts with the state itself.”).12
Perhaps realizing the insufficiency of these contacts, Plaintiffs attempt to
circumvent the minimum contacts requirement by arguing that Prominent Supplies is
the alter ego of Prominent Systems.

As such, Plaintiffs contend that the acts of

Prominent Systems are also attributable to Prominent Supplies for purposes of
establishing the latter’s personal jurisdiction.

This argument also fails, as the

undisputed evidence here does not support a finding that Prominent Supplies is the
alter ego of Prominent Systems.
A plaintiff may rely upon an alter ego theory to prove personal jurisdiction over
one corporation, based its relationship with another, related entity—typically a parent
company and its subsidiary—that is subject to personal jurisdiction in the particular
forum. In re Chocolate Confectionary Antitrust Litig., 674 F. Supp. 2d 580, 598-99 (W.D.Pa.
See https://www.awwa.org/store/productdetail_event.aspx?productid=52745450,
last visited on March 22, 2017.
12
Similarly, Plaintiffs’ argument that “Defendants have advertised in Water Quality
Products Magazine does not prove that Prominent Supplies targeted customers in
Pennsylvania. (Liedtke Decl. ¶¶ 32-35.) The advertisement contained in Exhibit B-7 is
for Prominent Systems and does not mention Prominent Supplies anywhere in the the
ad. (Ex. B-7, ECF No. 29-2 at 239.) Nor does the Water Quality Products Magazine
Media Kit provide any evidence of whether any of its 25,000 subscribers are
Pennsylvania residents. (Ex. B-8, ECF No. 29-2 at 241-48.)
11

20

2009)(citing Simeone ex rel. Estate of Albert Francis Simeone, Jr. v. Bombardier-Rotax GmbH,
360 F. Supp. 2d 665, 675 (E.D.Pa. 2005)) (footnote omitted). In determining whether
personal jurisdiction may be constitutionally exercised under this theory, the courts
have noted that “[t]he degree of control exercised by the parent [is] greater than
normally associated with common ownership and directorship.” In re Enter. Rent-A-Car
Wage & Hour Employment Practices Litig. v. Enter. Rent-A-Car Co., 735 F. Supp. 2d 277, 318
(W.D. Pa. 2010) (citation & internal quotation marks omitted); Chocolate Confectionary,
674 F. Supp. 2d at 598 (citations omitted). In particular, the courts have considered the
following ten factors in determining whether more intrusive control is present:
(1) the parent owns all or a significant majority of the
subsidiary's stock,
(2) commonality of officers or directors exists between the
two corporations,
(3) the group possesses a unified marketing image, including
common branding of products,
(4) corporate insignias, trademarks, and logos are uniform
across corporate boundaries,
(5) group members share employees,
(6) the parent has integrated its sales and distribution
systems with those of its subsidiaries,
(7) the corporations exchange or share managerial or
supervisory personnel,
(8) the subsidiary performs business functions that would
ordinarily be handled by a parent corporation,
(9) the parent uses the subsidiary as a marketing division or
as an exclusive distributor, and
21

(10) the parent exercises control or provides instruction to
the subsidiary's officers and directors.
Chocolate Confectionary, 674 F. Supp. 2d at 598 (quoting In re Chocolate Confectionary
Antitrust Litig., 602 F. Supp. 2d 538,, 569-70) (M.D.Pa. 2009)) (other citations omitted).
The court further opined that “[n]o one aspect of the relationship between two
corporations unilaterally disposes of the analysis, and . . . any evidence bearing on the
corporations’ functional interrelationship” may be considered. Id. However, the sine
qua non of an alter ego relationship is daily, operational control. Id. at 600 (citing Poe v.
Babcock Int’l plc, 662 F. Supp. 4, 6 (M.D.Pa. 1985)).
Plaintiffs predicate their alter ego argument upon five factors.13 First, Plaintiffs
submit that Prominent Systems and Prominent Supplies share common officers and
directors, based on Mr. Scorpio’s statement that he is the President of Prominent
Supplies and the marketing director of Prominent Systems (Scorpio Decl., ¶ 1), and
because his declaration is made concerning both Prominent Supplies and Prominent
Systems. This is a misrepresentation of Defendants’ evidence. Mr. Scorpio serves as the
marketing director of Prominent Systems, not on its board of directors; he is responsible
for general marketing of goods and services of Prominent Systems mainly in the
southern California area.

(Id.; Supp. Tran Decl. ¶ 3.)

Moreover, Defendants’

declarations indicate that the two companies do not share officers and directors. (Supp.

It should be noted that in attempting to establish that Prominent Supplies is the alter
ego of Prominent Systems, Plaintiffs rely primarily on the declarations of Ky Tran and
Mr. Scorpio.
13

22

Tran Decl. ¶ 3.) Moreover, it is not reasonable to infer that Prominent Systems exercises
control of the daily business operations of Prominent Supplies merely because Mr.
Scorpio’s declaration includes information regarding both companies.

Mr. Scorpio

possesses personal knowledge of Prominent Systems based on his position there as
marketing director. Plaintiffs do not explain how this shows the requisite control for
establishing alter ego.
Second, Plaintiffs submit that the two companies share common employees,
based on (1) the declaration of Mr. Scorpio (¶28) and Mr. Tran (¶¶ 13, 28), in which they
state, respectively, that Prominent Supplies and Prominent Systems are “a small
company with only 22 employees, 18 of whom are located in the Central District of
California[;]” and (2) acceptance of service of process by the same “employee” on behalf
of both companies. While Plaintiffs accurately convey the statements of Messrs. Tran
and Scorpio, subsequently, Defendants submitted a supplemental declaration of Ky
Tran (ECF No. 30-1 at 2-5) in support of their reply brief, which further elucidates on
the “shared employees” allegation. Mr. Tran clarifies that Prominent Supplies does not
utilize any employee of Prominent Systems, and that Mr. Scorpio is the sole shareholder
of Prominent Supplies and serves as an officer of that corporation, not as an employee.
(Supp. Tran Decl. ¶ 6.)

Even if the Court construes these statements in favor of

Plaintiffs and finds that the two companies shared employees, this factor alone does not
establish that Prominent Supplies is the alter ego of Prominent Systems.
Next, Plaintiffs contend that the two companies share a common business
purpose because the project management services mentioned in Mr. Scorpio’s
23

declaration compliment the activities of Prominent Systems. This appears to be pure
speculation on Plaintiffs’ part, as they have not pointed to any basis in the record to
support this conclusion. Rather, Prominent Supplies’ website indicates that its business
involves the sale of cleaning supplies and janitorial products (ECF No. 30-1 at 59), and
its Statement of Information provided to the California Secretary of State, as recently as
6/13/16, indicates that the business of Prominent Supplies is wholesale and retail
medical supplies and disposable items (ECF No. 30-1 at 55-56). On the other hand,
Prominent Systems is primarily engaged in the business of bulk sales of carbon
filtration media to corporate buyers. (Tran Decl. ¶ 2.) The Court cannot not reasonably
infer from these documents that the two companies share a common business purpose.
Fourth, Plaintiffs submit that Defendants make common use of business
equipment and office supplies, because they utilize the same telephone number and
same principal place of business. Again, Plaintiffs are asking the Court to make an
inference here that is not reasonable based on the evidence produced by Defendants.
The California Secretary of State records show different business addresses for
Prominent Systems and Prominent Supplies. See Exs. 5 & 10 attached to Compl.; Ex. 11
attached to Defs.’ Reply Br. (ECF No. 30-1 at 55-56). A review of the evidence reveals
that Prominent Supplies’ use of Prominent System’s telephone number and address is
limited to inquiries from Prominent Supplies’ website. As Mr. Tran explained in his
supplemental declaration, the principal place of business listed for Prominent Supplies
with the California Secretary of State is Mr. Scorpio’s personal residence; as such, for
privacy reasons, Prominent Systems allows Prominent Supplies to use the former’s
24

address. (Supp. Tran Decl. ¶6.) Such limited use of Prominent Systems’ address and
telephone number alone does not raise a reasonable inference that the two companies
shared business equipment and office supplies, especially considering that the
companies appear to be engaged in unrelated businesses.
Finally, Plaintiffs submit that Defendants use the same branding/logo, because
the only visible logo/advertising on Defendants’ building is the Prominent Systems’
logo (Compl., ¶ 40), and the logos of the two companies are one in the same upon visual
comparison. This argument is predicated partially on the assumption that the two
companies share Prominent Systems’ principal place of business, located at 13095 E.
Temple Avenue, City of Industry, California. But other than showing that Prominent
Supplies lists that address (for privacy purposes) on their website for obtaining more
information about purchasing its products, the record does not contain any evidence
that Prominent Systems is controlling the daily business operations of Prominent
Supplies from the 13095 E. Temple Avenue address.

Moreover, Mr. Tran states that

Prominent Supplies does not display any signage at Prominent Systems’ principal place
of business. (Supp. Tran Decl. ¶ 11.) As to the branding/logo, a visual inspection of the
logos reveals that the same figurative element appears in both, but the names appearing
with the figurative element are different (PROMINENT Systems, Inc. v. PROMINENT
Supplies, Inc.), and they are not displayed in the same location in reference to the
figurative element—PROMINENT Systems, Inc. appears to the right of the figurative
element, while PROMINENT Supplies, Inc. appears underneath the figurative element.

25

Compare Compl. ¶ 40 with Ex. 10 to Compl. At best, the branding/logos show that the
two companies are related, but not that they are one in the same.14
The Court observes that Defendants’ declarations further show that (1) the two
companies do not own each other’s shares of stock (Supp. Tran Decl. ¶ 4) or consolidate
tax returns or financial records (id. at ¶ 5); and (2) Mr. Tran has never directed the
business or commercial activities of Prominent Supplies (id. at ¶ 13).
Considering the totality of the evidence, the few commonalities noted above do
not yield the degree of daily, operational control necessary, above and beyond that
normally associated with common ownership and directorship, to allow this Court to
conclude that Prominent Supplies is the alter ego of Prominent Systems. Accordingly,
Plaintiffs may not attribute Prominent Systems’ contacts with Pennsylvania to
Prominent Supplies, for purposes of establishing this Court’s personal jurisdiction over
Prominent Supplies.
(b)

Ky Tran

In response to Defendants’ passing remark in their opening brief—that Ky Tran
was “ostensibly protected by the corporate privilege”—Plaintiffs argue that under
Third Circuit precedent, Tran would not be protected by the corporate shield doctrine.
According to Plaintiffs, under the law of this Circuit, a “corporate officer who actually
and substantially participates in the corporation’s act of trademark infringement is
14

Plaintiffs contend that just as defendants in In Re Chocolate Confectionary Antitrust
Litigation, 674 F Supp. 2d 580 (M.D.Pa. 2009), Defendants here used the same branding.
However, Plaintiffs’ reliance on Chocolate Confectionary is misplaced. While the district court
in that case listed common branding/uniform logos as one indicia of alter ego status, it did not
find that common branding established alter ego jurisdiction. 674 F. Supp. 2d at 599-602.
26

personally liable under section 43(a), even though he acted as an agent of the
corporation rather than on his own behalf.” Elec. Lab. Supply Co. v. Cullen, 977 F.2d 798,
807 (3d Cir. 1992)(citing Donsco, Inc. v. Casper Corp., 587 F.2d 602, 606 (3d Cir. 1978)).
However, Plaintiffs’ reliance on this jurisprudence is misplaced, as the corporate shield
doctrine speaks to the individual liability of a corporate officer, not personal
jurisdiction.
Rather, this Court has previously set forth the guiding jurisprudence regarding
whether personal jurisdiction can be exercised over a corporate officer for acts
performed in such capacity in Farkas v. Rich Coast Corp., No. 2:13-cv-926, 2014 WL
550594, at *18 (W.D.Pa. Feb. 11, 2014), as follows:
Initially, the district court in Donner [v. Tams-Witmark Music
Library, Inc., 480 F. Supp. 1229 (E.D.Pa. 1979] acknowledged
the general rule that “the courts have declined to exercise
personal jurisdiction over individuals for their acts done in a
corporate capacity.” Id. at 1233 (citations omitted). In
Donner, the plaintiff brought a claim for copyright
infringement and alleged that the president of the corporate
defendant had personally committed tortious acts
constituting the alleged infringement. Because the copyright
infringement claims were predominantly tortious in nature,
the Donner court applied the Third Circuit rule of joint
tortfeasor liability of corporate officers,15 and concluded that
because the “allegedly tortious acts and omissions of the
corporate [defendant] are alleged to have been committed
personally by [the corporate officer], acting in his corporate
capacity”, . . . if [the corporate defendant] is ultimately
found liable for copyright infringement, . . . [the corporate
“The Third Circuit has held that corporate officers are personally liable for alleged
tortious conduct of the corporation if they personally took part in the commission of the
tort, or if they specifically directed other officers, agents or employees of the corporation
to commit the act.” Donner, 480 F.Supp. at 1233 (citing Donsco, Inc. v. Casper Corp., 587
F.2d 602, 606 (3d Cir. 1978); Zubik v. Zubik, 384 F.2d 267, 275 (3d Cir. 1967)).
15

27

officer] will . . . be subject to personal liability as a joint
torfeasor.” Id. at 1233-34. The district court then concluded
that the [corporate officer’s] allegedly tortious conduct in his
capacity as president of [the corporate defendant] may be
considered to determine whether the court has jurisdiction
over him as an individual defendant. Id. at 1234.
Donner has been rejected by a number of other district courts
in this Circuit, questioning whether that approach
withstands constitutional muster on the premise that it may
be “fundamentally unfair to force corporate officers to
defend suits in their individual capacity based on their
participation in corporate activities in a forum.” See, e.g.,
Rittenhouse & Lee v. Dollars & Sense, Inc., No. 83-5996, 1987
WL 9665, *4 (E.D.Pa. Apr. 15, 1987) (citing Simpkins Corp. v.
Gourmet Res. Int’l, 601 F.Supp. 1336, 1343-45 (E.D.Pa. 1985);
PSC Prof’l Serv. Group., Inc. v. Am. Digital Sys., 555 F.Supp.
788, 792-94 (E.D.Pa. 1983)). See also United States v. Geri-Care,
Inc., Civ. A. No. 89-5720, 1990 WL 39301, *3 (E.D.Pa. Mar. 30,
1990) (discussing approaches by various district courts postDonner and rejecting Donner in favor of approach adopted by
district court in Rittenhouse & Lee); Neyer, Tiseo & Hindo, Ltd.
v. Russell, Civ. A. No. 92-2983, 1993 WL 52552, *4-*5 (E.D.Pa.
Feb. 25, 1993) (also rejecting Donner approach and applying
approach delineated in Rittenhouse & Lee).
In Rittenhouse & Lee, the court followed the approach taken
by Judge VanArtsdalen in Moran v. Metro. Dist. council of
Phila. & Vicinity, 640 F.Supp. 430 (E.D.Pa. 1986), who, after
reviewing the conflicting approaches, declined to apply a
hard and fast rule and concluded that “consideration of an
individual’s corporate contacts for jurisdictional purposes
may be appropriate under certain circumstances.”
Rittenhouse & Lee, 1987 WL 9665 at *4 (footnote omitted).
Although Judge VanArtsdalen in Moran did not list any
specific circumstances that should be considered, the district
court in Rittenhouse & Lee identified three circumstances that
it found to be relevant in determining whether personal
jurisdiction can be exercised over a corporate officer for acts
performed in such capacity: (1) “the extent and nature of a
corporate officer's personal participation in the tortious
conduct;” (2) “the nature and quality of the officer's forum
contacts; and” (3) “the officer's role in the corporate
28

structure.” 1987 WL 9665, at *4 n. 6. This flexible due
process inquiry, the Rittenhouse & Lee court noted, comports
with the Supreme Court’s decision in Keeton, where the
Court held that jurisdiction over an employee does not
automatically follow merely from the fact that personal
jurisdiction exists over the corporation, but rather, “[e]ach
defendant’s contacts with the forum . . . must be assessed
individually.” 465 U.S. at 781 n. 13 (citations omitted).
Nonetheless, the Supreme Court “reject[ed] the suggestion
that employees who act in their official capacity are
somehow shielded from suit in their individual capacity.”
Id.
When the three factors identified in Rittenhouse & Lee are applied here, the Court
concludes that Ky Tran’s position as the president of Prominent Systems does not
provide a basis for exercising personal jurisdiction over him.
Plaintiffs rely on “information and belief” and conjecture to argue that Mr. Tran
directs all business and commercial activities of Prominent Systems and Prominent
Supplies. For example, Plaintiffs contend that “[o]n information and belief, Mr. Tran
has authorized, directed, helped orchestrate, or participated in the infringement of [its]
PROMINENT marks, knowing that the infringement would cause harm on their true
owner, Prominent, which he knew and knows is located in Pennsylvania.” (Pls.’ Br. in
Opp’n at 8 (citing Compl., ¶ 19.) Plaintiffs cannot rely on allegations in their Complaint
to defeat a motion to dismiss for lack of personal jurisdiction, where Defendants have
submitted declarations and other evidence in support of their motion. Metcalfe, 566 F.3d
at 330. Moreover, in his declaration, Mr. Tran states that (1) prior to this lawsuit, he had
no knowledge that one or more of the Plaintiffs had its national headquarters in
Pennsylvania (Supp. Tran Decl. ¶ 28); (2) he has never directed the business and

29

commercial activities of Prominent Supplies (id. at ¶ 13); (3) he directs some but not all
of the business and commercial activities of Prominent Systems, as he is not the sole
officer of that corporation (id. at ¶ 12); (4) he has never engaged in any bidding activity
in Pennsylvania in his personal capacity (id. at ¶ 16); (5) he has never attended a trade
show in Pennsylvania (id. at ¶ 19); and (6) he has absolutely no knowledge that any
consumer in Pennsylvania has ever made a purchase from Prominent Systems in error,
believing that such a purchase was being made from Plaintiffs (id. at ¶23).
Plaintiffs also rely on Mr. Tran’s statement that Prominent Systems employs
only 22 people to conjecture that “[i]t is inconceivable that Mr. Tran as the president of
an organization of this size would not have actually and substantially participate[d] in
all of the corporation’s acts, including the willful and deliberate infringement of [its]
valuable PROMINENT marks. At the very least the president of such an organization
would have directed and authorized the trademark infringing activities.” Pls.’ Br. in
Opp’n at 8. Plaintiffs’ suppositions, which are not supported by any evidence, fall short
of their prima facie burden in opposing dismissal for lack of personal jurisdiction.
Finally, Plaintiffs contend that Mr. Tran is the “string puller behind all four
regional Prominent Systems entities including Prominent Systems’ ‘Central and Eastern
Division’[.]” Id. at 8-9 (citing Liedtke Decl. ¶¶ 3-4). However, Mr. Liedtke’s declaration
actually states that Defendants operate through a “Western Division,” a “Central and
Eastern Division” as well as their headquarters, as confirmed by documentation from
the various states where the divisions are located (see Exs. 5 & 6 attached to Complaint),
Moreover, Mr. Liedtke’s statement that Ky Tran is the “key individual behind all of
30

these entities and holds the key officer and director positions for all of these entities”
(Liedtke Decl. ¶ 6), is much ado about nothing.

These divisions are not separate

companies, but divisions of the same company—Prominent Systems.

Indeed, the

corporate name on the registrations is Prominent Systems, Inc. The evidence of record
belies the over importance Plaintiffs seek to attach to the individual state registrations
listing Mr. Tran as the agent/officer of Prominent Systems.
Clearly, Plaintiffs have failed to provide any evidence of the nature and extent
of Mr. Tran’s personal participation in the alleged tortious conduct, or of the nature and
quality of his forum contacts (and Mr. Tran’s declarations belie any such contact). As to
Mr. Tran’s role in the corporate structure, there is evidence that he directs some of
Prominent Systems’ business and commercial operations, but this evidence falls short of
the mark in establishing that he personally participated in the alleged tortious activity.
As such, the Court concludes that when it considers Mr. Tran’s corporate contacts, they
are insufficient to constitutionally exercise personal jurisdiction over him for acts
performed in such capacity.
Moreover, given the lack of evidence to show any contacts with Pennsylvania
by Mr. Tran in an individual capacity, Plaintiffs have failed to show sufficient minimum
contacts with Pennsylvania to establish personal jurisdiction over him in this District.
(c)

Second & Third Prongs of D’Jamoos

Turning to the second prong of D’Jamoos, the Court concludes that because the
activities identified by Plaintiffs do not constitute purposefully directed contacts with
Pennsylvania, it is of no moment then whether the litigation arose out of or relates to
31

one of the activities relied on by Plaintiffs to establish specific personal jurisdiction.
Likewise, having failed to establish the first prong of the D’Jamoos test, Plaintiffs
have not caused the burden to shift to Defendants to prove the third prong of
D’Jamoos—that their contacts with Pennsylvania are such that maintenance of the action
“offend[s] traditional notions of fair play and substantial justice.”
2.

The Calder Effects Test

Alternatively, Plaintiffs argue that specific personal jurisdiction exists over
Defendants under the Calder effects test,16 but fail to delineate the elements of that test
or provide any analysis of the application of those elements to the alleged contacts here.
The U.S. Court of Appeals for the Third Circuit has determined that a plaintiff
may establish personal jurisdiction under Calder if he or she demonstrates:
(1) The defendant committed an intentional tort;
(2) The plaintiff felt the brunt of the harm in the forum such
that the forum can be said to be the focal point of the harm
suffered by the plaintiff as a result of that tort;

In Calder v. Jones, 465 U.S. 83 (1984), the Supreme Court was asked to decide whether
a California district court had specific jurisdiction over defendants, who were Florida
residents, over a claim brought by an entertainer, who was a California resident,
because of an article published by the National Inquirer, based on the effects of their
Florida actions felt by the plaintiff in California. The Court found that the Florida
defendants expressly aimed their intentional, tortious activity at California because
“they knew [the article] would have a potentially devastating impact upon [the
California plaintiff]. And they knew that the brunt of that injury would be felt by [the
California plaintiff] in the State in which she lives and works and in which the National
Inquirer has its largest circulation.” Id. at 789-90. As such, the Supreme Court
concluded that the Florida defendants could “reasonably anticipate being haled into
court” in California. Id. at 790 (citing World-Wide Volkswagen, 444 U.S. at 297) (other
citations omitted).
16

32

(3) The defendant expressly aimed his tortious conduct at
the forum such that the forum can be said to be the focal
point of the tortious activity.
Marten, 499 F.3d at 297 (quoting IMO Indus., 155 F.3d at 265–66) (internal quotation
marks omitted). The Marten court further explained:
[T]he effects test prevents a defendant from being haled into
a jurisdiction solely because the defendant intentionally
caused harm that was felt in the forum state if the defendant
did not expressly aim his conduct at that state. See, e.g., Toys
“R” Us, Inc. v. Step Two, S.A., 318 F.3d 446, 455 n. 6 (3d
Cir.2003) (indicating the effects test is an alternative to
“minimum contacts” analysis but declaring they both
require a similar type of “intentionality” on the part of the
defendant). Even if a defendant's conduct could cause
foreseeable harm in a given state, such conduct does not
necessarily give rise to personal jurisdiction in that state.
“[T]he foreseeability that is critical to due process analysis is
... that the defendant's conduct and connection with the
forum State are such that he should reasonably anticipate
being haled into court there.” World–Wide Volkswagen, 444
U.S. at 297, 100 S.Ct. 559.
Id. In applying the Calder effects test, the court of appeals has instructed that a district
need not consider the first two elements unless the “expressly aimed” element is first
met.

Id. (citing IMO Indus., 155 F.3d at 266).

To demonstrate that the defendant

“expressly aimed” his or her tortious conduct at the forum, the plaintiff must show that
“the defendant knew that the plaintiff would suffer the
brunt of the harm caused by the tortious conduct in the
forum, and point to specific activity indicating that the
defendant expressly aimed its tortious conduct at the
forum.” [IMO Indus., 155 F.3d] at 266. If a plaintiff fails to
show that the defendant “’manifest[ed] behavior
intentionally targeted at and focused on’ the forum,” IMO
Indus., 155 F.3d at 265 (quoting ESAB Group Inc. v. Centricut,
Inc., 126 F.3d 617, 625 (4th Cir.1997)), the plaintiff fails to
establish jurisdiction under the effects test.
33

Marten, 499 F.3d at 298. Finally, the Marten court observed that under Calder, “the state
of a plaintiff’s residence does not on its own create jurisdiction over nonresident
defendants. Jurisdiction is proper when the state of a plaintiff’s residence is ‘the focus
of the activities of the defendant out of which the suit arises.” Id. (quoting Keeton, 465
U.S. at 780).
As explained above in applying the D’Jamoos test, Plaintiffs have failed to
establish with reasonable particularity sufficient contacts between Prominent Supplies
and Pennsylvania, as well as between Ky Tran and Pennsylvania. Nor have Plaintiffs
pointed to any evidence in the record which shows that Prominent Supplies or Ky Tran
expressly aimed their allegedly tortious conduct at Pennsylvania. Plaintiffs have not
identified any Pennsylvania customers who bought Defendants’ products thinking that
they were buying Plaintiffs’ products.

The fact that Plaintiffs’ United States

headquarters is located in this District is insufficient by itself to meet the “expressly
aimed” criteria of Calder. Marten, 499 F.3d at 298. Therefore, Plaintiffs have failed to
meet their burden of establishing sufficient minimum contacts under the Calder effects
test.
(c)

Tort Out/Harm In Test Under 42 PA. CONS. STAT. §5322

Plaintiffs further argue that this Court should exercise personal jurisdiction over
Prominent Supplies and Ky Tran based on the tort out/harm in test under Pennsylvania
law. The Pennsylvania long-arm statute extends jurisdiction to any person who “causes
harm or tortious injury in the Commonwealth by an act or omission outside the

34

Commonwealth.” 42 PA. CONS. STAT. ANN. §5322(a)(4). This provision is commonly
referred to as the “tort out/harm in” provision.17
In this case, Plaintiffs contend that they suffered injury in Pennsylvania, although
Defendants’ alleged tortious conduct occurred outside of Pennsylvania. The record does
not appear to support Plaintiffs’ contention as to Prominent Supplies and Ky Tran, as it
is devoid of any evidence showing that Plaintiffs suffered any harm as a result of the
actions of Prominent Supplies or Ky Tran. Moreover, this Court found above that the
actions of Prominent Systems could not be attributed to either of these Defendants in
order to establish personal jurisdiction.
Nonetheless, even assuming that personal jurisdiction could somehow be
maintained over Prominent Supplies and Ky Tran under Pennsylvania’s long-arm
statute, that does not end the inquiry because the court “cannot presume that
jurisdiction is proper simply because the requirements of a long—arm statute have been
met. . . . [The court] must still determine whether the strictures of constitutional due
process (i.e., minimum contacts and notions of ‘fair play and substantial justice’) would
be observed by asserting jurisdiction.” Pennzoil Prods. Co. v. Colelli & Assocs., Inc., 149
F.3d 197, 202 (3d Cir. 1996) (footnote omitted). Therefore, Plaintiffs must also show that

Although the Court has subject matter jurisdiction over this case pursuant to 28
U.S.C. §1331, as it involves federal claims under the Lanham Act for trademark
infringement and dilution of trademarks, it appears that the courts still turn to the
forum state’s long-arm statute in determining whether personal jurisdiction exists over
a non-resident defendant. See, e.g., Endless Pools, Inc. v. Wave Tec Pools, Inc., 362 F. Supp.
2d 578 (E.D.Pa. 2005) (trademark infringement, false designation of origin under
Lanham Act).
17

35

Defendants have sufficient minimum contacts with Pennsylvania, and if they meet this
burden, then Defendants must show that the exercise of such personal jurisdiction
would offend the notions of fair play and substantial justice.
As discussed above, Plaintiffs have not shown that any alleged tortious acts by
Prominent Supplies or Ky Tran in California were deliberately directed towards
Pennsylvania and Prominent Fluid Controls, a Pennsylvania corporation. Nor have
Plaintiffs identified one Pennsylvania customer that was confused by Prominent
Supplies’ alleged use of Plaintiffs’ trademark. “Where a forum seeks to assert specific
jurisdiction over an out-of-state defendant who has not consented to suit there, this ‘fair
warning’ 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[.]”

Burger King, 471 U.S. at 472 (internal

citations omitted). As Plaintiffs have failed to establish that Prominent Supplies and Ky
Tran had sufficient minimum contacts with Pennsylvania, personal jurisdiction does
not exist over these Defendants under the tort out/harm in provision.

In summary, Plaintiffs have failed to show, under any theory, that Prominent
Supplies and Ky Tran purposefully directed their activities toward Pennsylvania.
Accordingly, the Court finds that it lacks personal jurisdiction over Prominent Supplies
and Ky Tran. Therefore, the Court will grant Defendants’ motion to dismiss under Rule
12(b)(2) as to Defendants Prominent Supplies and Ky Tran and dismiss the claims
against them without prejudice.
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C.

MOTION TO DISMISS FOR IMPROPER VENUE

Defendants have also moved to dismiss this action on the basis that venue in the
Western District of Pennsylvania is improper under the general venue statute, 28 U.S.C.
§1391(b). Defendants’ motion to dismiss for improper venue appears to be based on the
residence of “all defendants,” i.e., either parts (1) or (3) of §1391(b), as Defendants
submit that “Plaintiffs cannot rely on the residence of one defendant to bring suit
against multiple defendants in this district, where one but not all of them reside.” Defs.’
Br. at 14. 18 As such, Defendants contend that “a [Rule] 12(b)(3) motion to dismiss by
less than all defendants cannot be granted.” Id. at 13. As such, Defendants submit that
the court has the power to transfer the case under 28 U.S.C. §1406(a), provided the
action is otherwise transferable. Id.
The remainder of Defendants’ argument centers on identifying a proper venue
for this action. Defendants submit venue is proper in the Central District of California
under all three categories of Section 1391(b), and inform the Court that Prominent
Supplies and Ky Tran wish to avail themselves of their personal venue rights in seeking
to have this action transferred to the Central District of California.
In response, Plaintiffs argue that other than stating the requirements for venue
under Section 1391, Defendants’ brief “is utterly devoid of any analysis or application of
the controlling statute whatsoever as applied to Plaintiffs’ choice of venue.” Pls.’ Br. in
18

Defendants do not elaborate as to their basis for determining which Defendants are residents
for venue purposes. Based on §1391(c) and the supporting documents attached to the parties
briefs, in particular, Defendants’ concession that Prominent Systems “is likely subject to
specific personal jurisdiction in this forum under the applicable Third Circuit standards” (Defs.’
Reply Br. at 8), it appears that only Prominent Systems would be deemed a resident of the forum.
37

Opp’n at 27.

Plaintiffs maintain that venue is proper in this District as to all

Defendants based on § 1391(b)(2)—as a substantial part of the events or omissions
giving rise to their federal and state trademark infringement claims occurred in the
Western District of Pennsylvania.

Defendants have not addressed this argument in

their reply brief. Thus, Plaintiffs contend that Defendants have failed to meet their
burden of proving improper venue.
The Court agrees that venue is proper in this District as to the remaining
Defendant, Prominent Systems. However, as this Court lacks personal jurisdiction over
Defendants Prominent Supplies and Ky Tran, Defendants’ motion to dismiss under
Rule 12(b)(3) will be denied as moot as to these Defendants.19
Under the general venue statute, venue will lie over a civil action where one of
the following circumstances is shown to exist:
A civil action wherein jurisdiction is not founded solely
on diversity of citizenship may, except as otherwise
provided by law, be brought only in (1) a judicial district
where any defendant resides, if all defendants reside in
the same State, (2) a judicial district in which a substantial
part of the events or omissions giving rise to the claim
occurred, or a substantial part of property that is the
subject of the action is situated, or (3) a judicial district in
which any defendant may be found, if there is no district
in which the action may otherwise be brought.

19

However, it appears, based on the record before the Court, that venue is improper as to
Prominent Supplies and Ky Tran in this District. Defendants argue, and the Court has found,
that Plaintiffs have failed to separately allege facts in their Complaint or produce any documents
showing the particular acts or conduct of Prominent Supplies and Ky Tran directed to
Pennsylvania which give rise to the alleged trademark infringement and state law claims. Thus,
the record fails to show that any part of the actions of Prominent Supplies and Ky Tran, allegedly
giving rise to trademark infringement, occurred in this District, let alone a substantial part. As
such, venue is improper as to Prominent Supplies and Ky Tran under S1391(b)(2).
38

28 U.S.C. § 1391(b). In making a determination as to whether venue is proper under
§1391(b)(2), “[t]he test . . . is not the defendant’s ‘contacts’ with a particular district, but
rather the location of those ‘events or omissions giving rise to the claim’[.]” Cottman
Transm’n Sys., Inc. v. Martino, 36 F.3d 291, 294 (3d Cir. 1994); Bockman v. First Am.
Marketing Corp., 459 F. App’x 157, 161 (3d Cir. 2012) (quoting Cottman, id.).

“The

requirement of ‘[s]ubstantiality is intended to preserve the element of fairness so that a
defendant is not haled into a remote district having no real relationship to the dispute.’”
Bockman, 459 F. App’x at 161 (quoting Cottman, 36 F.3d at 294). “Events or omissions
that might only have some tangential connection with the dispute in litigation are not
enough.” Cottman, 36 F.3d at 294. The court of appeals in Cottman further explained
that “[i]n assessing whether events or omissions giving rise to the claims are substantial,
it is necessary to look at the nature of the dispute.” 36 F.3d at 295.
Like the instant matter, Cottman involved claims of trademark infringement. The
court of appeals held that the “focus of [its] venue inquiry in a Lanham Act trademark
infringement case is the location where the unauthorized passing off takes place—
whether that occurs solely within one district or many. “

Id. (citing Tefal, S.A. v.

Products Int'l Co., 529 F.2d 495, 49697 (3d Cir.1976)) (other citation omitted). Thus, the
Court will briefly examine whether the events or omissions allegedly giving rise to
Prominent Systems’ alleged unauthorized trademark infringement/passing off in
Pennsylvania are likely substantial.
To this end, Plaintiffs submit that they have alleged a likelihood of confusion,
including initial interest confusion, and that Prominent Systems uses the PennBid
39

System to procure contracts with government agencies as well as private organizations
in Pennsylvania (Compl., ¶¶ 11, 17); and that Prominent Systems’ interactive website
reaches this District, as does their targeted advertising through Water Quality Products
magazine.

Pls.’ Br. in Opp’n at 28.

Plaintiffs also contend that the harm from

Prominent Systems’ alleged tortious conduct was felt here based on the fact that their
U.S. operation is headquartered in the Western District of Pennsylvania.

Giving

Plaintiffs the benefit of all favorable inferences, as it must, the Court finds that the
Complaint and other documents allege sufficient facts from which it can reasonably be
inferred that Plaintiffs may be able to show after discovery that a substantial part of the
events or actions giving rise to their trademark infringement claims occurred in this
District.
In any event, Defendants do not appear to be contesting that venue is proper in
this District vis a vis Prominent Systems, but rather, are arguing that the case be
transferred in its entirety to the Central District of California—a more convenient
forum. Therefore, the Court finds that venue is proper in this District as to Prominent
Systems.
For the reasons set forth above, the Court will deny Defendants’ motion to
dismiss for improper venue under Rule 12(b)(3) as to Defendant Prominent Systems,
and will deny that motion as moot as Defendants Prominent Supplies and Ky Tran.
D.

MOTION TO TRANSFER

Defendants have also filed a motion to transfer this case to the Central District of
California pursuant to 28 U.S.C. § 1404 for forum non conveniens and/or 28 U.S.C. §
40

1406(a) for lack of personal jurisdiction, and/or 28 U.S.C. § 1631 in the interests of
justice, which Plaintiffs have opposed. While venue is proper in this District with
regard to the claims against Prominent Systems, because personal jurisdiction is lacking
and venue is improper as to Prominent Supplies or Ky Tran, Plaintiffs can only proceed
against all three Defendants if this case is transferred to the Central District of
California. Accordingly, the Court will evaluate Defendants’ motion to transfer under
28 U.S.C. § 1406(a).20
Section 1406(a) provides that "[t]he district court of a district in which is filed a
case laying venue in the wrong division or district shall dismiss, or if it be in the interest
of justice, transfer such case to any district or division in which it could have been
brought."

Courts have allowed a transfer under Section 1406(a), in the interest of

justice, when suit is filed in a district in which venue is improper or personal
jurisdiction is lacking, or both. Manley v. Engram, 755 F.2d 1463, 1467 (11th Cir. 1985);
Porter v. Groat, 840 F.2d 255, 257-58 (4th Cir. 1988) See also Goldlawr, Inc. v. Heiman, 369

A transfer under 28 U.S.C. § 1404(a) governs cases in which the forum court has proper
venue—it provides simply that “for the convenience of parties and witnesses, in the
interest of justice, a district court may transfer any civil action to any other district or
division where it might have been brought.” In considering a motion to transfer venue
under §1404(a), the court applies a two-part inquiry. Mitel Networks Corp. v. Facebook,
Inc., 943 F.Supp. 2d 463, 467 (D.Del. 2013). First, the court must determine whether the
action could have been brought originally in the transferee forum, that is, whether
venue in the transferee district is proper. Id.; Stillwagon, 2013 WL 1180312, at *24
(citations omitted). Second, the court must apply the balancing test set forth in Jumara,
55 F.3d at 879-80, which requires the weighing of a number of public and private
interests to determine whether the transferee forum “would best serve the convenience
of the parties and witnesses as well as the interests of justice.” Mitel Networks, 943
F.Supp. 2d at 467 (citing Smart Audio Techs., LLC v. Apple, Inc., 910 F.Supp. 2d 718, 723-24
(D.Del. 2012)).
20

41

U.S. 463, 466 (1962) (finding §1406(a) permits a district court to transfer as case in which
it lacked personal jurisdiction over two of the defendants and venue was improper, to a
forum where venue was proper and personal jurisdiction could be obtained over
defendants). As noted by the district court in LoPiccolo v. American University: “The
decision whether to transfer under § 1406(a) is in the sound discretion of the district
court, Lafferty v. Gito St. Riel, 495 F.3d 72, 75 n. 3 (3d Cir.2007), and does not require the
same consideration of factors as transfer under § 1404(a) for forum non conveniens. See
Rojas [v. Trans States Airlines, Inc.,] 204 F.R.D. [265,] 269 [(D.N.J. 2001)]. The transferring
court in a § 1406(a) analysis ‘must simply determine a venue in which the action
originally could have been brought that serves the interest of justice.’ Id.” LoPiccolo v.
Am. Univ., Civ. A. No. 10-cv-3131, 2011 WL 1196900, at *3 (E.D.Pa. Mar. 31, 2011).
Similarly, 28 U.S.C. §1631, which was enacted as part of the Federal Courts
Improvement Act of 1982, provides that whenever a “court finds that there is want of
jurisdiction, the court shall, if it is in the interest of justice, transfer such action . . . to any
other such court in which the action could have been brought at the time it was filed.”
The Third Circuit has indicated that this statute, too, may be an appropriate authority
for transfer where the Court lacks personal jurisdiction.

See generally Chicosky v.

Presbyterian Med. Ctr., 979 F.Supp. 316, 320 n. 3 (D.N.J. 1997) (discussing, at length,
Third Circuit and other case authority for transfer absent personal jurisdiction under §§
1404, 1406 or 1631); id. at 322, n. 5 (observing that "the weight of authority among courts
in this circuit is that section 1631 does allow transfers where personal jurisdiction is
lacking").
42

Where, as in the present case, venue is proper for some defendants but improper
for others, the district court is vested with wide discretion in ruling on a motion to
transfer under §1406(a). See Charles Alan Wright and Arthur Miller, et al., 14D FED.
PRAC. & PROC. JURIS. §3827, at 559-60 (4th ed. 2013) (“Wright & Miller”). The court may
(1) “transfer the entire case to another forum that would be proper for all defendants[;]”
(2) “retain the case as to those defendants who have been properly sued there and sever
and transfer the portion of the case for those defendants for whom venue is
improper[;]” (3) “or dismiss the action as to those defendants.” Id. (footnotes omitted).
See also Cottman Transm’n Sys., Inc. v. Martino, 36 F.3d 291, 296 (3d Cir. 1994) (citing
Wright & Miller § 3827 (3d ed.), supra) (other citation omitted). In considering whether
the interests of justice require transfer rather than dismissal, the courts have considered
several factors, such as whether: (1) dismissal would result in a procedural bar to filing
a new law suit (i.e., statute of limitations issue); (2) transfer would be more economical
or efficient; (3) the parties were represented by experienced litigators; and (4) the
defendant has mislead plaintiff on the facts relevant to venue. See, e.g., TJF Assocs., LLC
v. Kenneth J. Rotman & Allianex, LLC, No. Civ. A. 05-705, 2005 WL 1458753, at *8 (E.D.Pa.
June 17, 2005) (“transfer in lieu of dismissal is appropriate when dismissal will penalize
the plaintiff by subjecting it to ‘justice-defeating technicalities,’ such as the impending
expiry of a statues of limitations.”) (citing Goldlawr, 369 U.S. at 467) (other citation
omitted); Athletes Foot of Del., Inc. v. Ralph Libonati Co., Inc., 445 F. Supp. 35, 49 (D.Del.
1977) (transfer appropriate where defendants deliberately misled plaintiffs about venue,
or where “plaintiffs in good faith or through excusable neglect, inadvertence, or mistake
43

were led to believe that venue was proper in this district[.]”) (citations omitted).
“Dismissal is appropriate . . . when there is no threat of a procedural bar to plaintiff's
cause of action, when the parties are commercially sophisticated and familiar with the
forms of litigation, and when there was nothing obscure about the location of the
proper forum for the case.” TJF Assocs., LLC, 2005 WL 1458753, at *8 (citing Cont'l Ins.
Co. v. M/V Orsula, 354 F.3d 603, 608 (7th Cir.2003)).
On March 27, 2017, the Court held a telephone conference with the parties to
discuss the Court’s options with regard to Defendants’ motion to transfer, in light of its
conclusion that personal jurisdiction does not exist over Prominent Supplies and Ky
Tran based on the record before it. Counsel for Plaintiffs, Christian Liedtke, informed
the Court that while it believed that personal jurisdiction existed over all three
Defendants, if the Court was inclined to find jurisdiction lacking as to Prominent
Supplies and Ky Tran, Plaintiffs preferred to proceed with their case against Prominent
Systems in this District and that the case against Prominent Supplies and Ky Tran be
dismissed without prejudice, rather than severed and transferred to California. Mr.
Liedtke further represented that given the Court’s intended ruling, it was likely that his
client would not file a lawsuit in California against the dismissed Defendants at this
time, but would wait until this case was concluded to make that decision. Mr. Liedtke
further indicated that he did not wish to pursue jurisdictional discovery at this point.
He also mentioned that he has over 20 years of experience in litigating trademark
infringement cases.
At that same conference, counsel for Defendants, Alan Romero, indicated that his
44

preference was that the entire case be transferred to the Central District of California.
He believes that the claims should be tried together in one court because it was
Defendants’ position that there is one trademark, and a question of fact exists as to
whether the term Prominent is generic or not.
After considering the parties arguments in their briefs and at the conference, the
Court finds that the interests of justice do not mandate that the claims against
Prominent Supplies and Ky Tran be severed and transferred, or that the entire case be
transferred, to the Central District of California. Rather, the Court will dismiss the
claims against Prominent Supplies and Ky Tran without prejudice, and retain the claims
against Prominent Systems. It does not appear that either Plaintiffs or Defendants will
be prejudiced by this ruling. Plaintiffs chose this District as their forum; Defendant
Prominent Systems has conceded that personal jurisdiction exists over it in this District,
and by doing so, purposefully availed itself of the privileges of conducting business in
this District.21 Thus, Prominent Systems cannot feign prejudice or surprise at having to
defend itself here. Because of the ongoing nature of the alleged trademark violations,
the statute of limitations will not be impacted if Plaintiffs choose to pursue their claims
against the dismissed defendants at a later date. In addition, because there will not be
concurrent litigation in two districts, the probability of dual or inconsistent judgments is
unlikely. Indeed, there may not be a need for additional litigation in California once
this case has been resolved. Moreover, Plaintiffs prefer to forego any jurisdictional
21

There is nothing unfair in requiring a defendant corporation who came to Pennsylvania and
conducted business to stand suit in Pennsylvania. Lighting Sys., Inc. v. Int’l Merchandising
Assocs., Inc., 464 F. Supp. 601, 604 (W.D.Pa. 1979).
45

discovery in order to expedite resolution of their claims against Prominent Systems in
this District. Therefore, the Court does not find that severance and transfer or transfer
of the entire case would be a more efficient or economical resolution.
For these reasons, the Court finds that the interests of justice do not mandate
severance and transfer of the claims against Prominent Supplies and Ky Tran, or
transfer of the entire case. Accordingly, the Court will deny Defendants’ motion to
transfer.

III.

CONCLUSION
For the reasons set forth above, the Court will grant in part and deny in part

Defendants’ motion to dismiss for lack of personal jurisdiction. Defendants’ motion to
dismiss under Rule 12(b)2) will be granted as to Defendants Prominent Supplies, Inc.
and Ky Tran, and will be denied as to Defendant Prominent Systems, Inc. The claims
against Defendants Prominent Supplies and Ky Tran will be dismissed without
prejudice. In addition, the Court will deny Defendants’ motion to dismiss under Rule
12(b)(3) for improper venue as to Defendant Prominent Systems, and will deny said
motion as moot with regard to Defendants Prominent Supplies and Ky Tran. Finally,
the Court will deny Defendants’ motion to transfer.
An appropriate order will follow.
Dated: April 10, 2017

BY THE COURT:

______________________
46

LISA PUPO LENIHAN
United States Magistrate Judge
cc:

All Counsel of Record
Via Electronic Mail

47