Goya Foods Inc. et al v. Golla Oy et al

Filing 56

MEMORANDUM AND ORDER re discovery for 12 MOTION to dismiss as to Golla Oy and 53 MOTION to dismiss as to Golla USA Inc. See order for deadlines and restrictions. Signed by US Magistrate Judge Bruce J. McGiverin on 04/22/2013. (jm)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF PUERTO RICO
GOYA FOODS, INC., et al.,
Plaintiffs,
v.

Civil No. 12-1859 (GAG/BJM)

GOLLA OY, et al.,
Defendants.

MEMORANDUM AND ORDER
In an amended complaint, Goya Foods, Inc. (“Goya”) and Goya de Puerto
Rico, Inc. (“Goya PR”) sued Golla Oy, Golla USA Inc. (“Golla USA”), Best Buy
Stores Puerto Rico, LLC (“Best Buy PR”), and Best Buy Stores, L.P. (“Best Buy”),
alleging trademark infringement and unfair competition under the Lanham Act
and Puerto Rico law. Docket No. 35 (“Compl.”). Golla Oy moved to dismiss or
transfer for lack of personal jurisdiction, improper service of process, and
improper venue. Docket No. 12. Plaintiffs opposed (Docket No. 19), Golla Oy
replied (Docket No. 22), and plaintiffs sur-replied (Docket No. 32). Golla USA
recently moved to dismiss or transfer for lack of personal jurisdiction and
improper venue. Docket No. 53. The motions were referred for a report and
recommendation. Docket Nos. 14, 54.
Plaintiffs requested discovery to develop the evidentiary basis for their
allegations of personal jurisdiction over Golla Oy. Docket No. 19 at 29. Where
there are colorable grounds for personal jurisdiction, a plaintiff may be allowed
limited discovery to secure evidence refuting a defendant’s jurisdictional
objection. See United States v. Swiss Am. Bank, Ltd., 274 F.3d 610, 625-26 (1st Cir.
2001). But the court may greatly restrict the range of available methods at this

Goya Foods, Inc. v. Golla Oy, Civil No. 12-1859 (GAG/BJM)

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stage. See Sunview Condo. Assoc. v. Flexel Int’l, Ltd., 116 F.3d 962, 964 n.3 (1st Cir.
1997). What’s more, suits involving foreign parties require courts to exercise
“special vigilance” and “the most careful consideration” to prevent discovery
abuses and give due weight to concerns of international comity.

See Societe

Nationale Industrielle Aerospatiale v. U.S. Dist. Ct. for S.D. Iowa, 482 U.S. 522, 546
(1987).
Here, plaintiffs invoke the doctrine of specific personal jurisdiction, which
requires proof that (1) the plaintiff’s claims relate to the defendant’s contacts with
the forum, (2) those contacts reflect “purposeful availment” of benefits provided
by the forum’s law; and (3) jurisdiction is reasonable in light of certain other
factors. See United Elec., Radio & Mach. Workers v. 163 Pleasant St. Corp., 960 F.2d
1080, 1089 (1st Cir. 1992). The complaint alleges Golla Oy applied for Puerto
Rico trademarks on GOLLA, advertised the names of Puerto Rico retailers selling
GOLLA goods, and made GOLLA products available for sale in Puerto Rico.
Docket No. 35, ¶¶ 34-52. Golla Oy argues these contacts are too attenuated to
support jurisdiction because it does not control the path by which products end
up in Puerto Rico, and because it does not intend to advertise to consumers. See
Docket No. 12 at 8-13 and Docket No. 22 at 5–7. Plaintiffs counter, inter alia, that
Golla Oy cannot hide behind a distribution chain to avoid a finding that it has
targeted Puerto Rico for its goods. See Docket No. 19 at 11-15.
On balance, I find that plaintiffs’ contentions are colorable enough to
justify the burden of limited discovery. The objecting defendants are in the best
position to provide information about the nature and intent of any contacts with
Puerto Rico, and the statements of Golla Oy’s officers are too open-ended to
foreclose further inquiry. While Golla USA’s motion has not yet been opposed
and plaintiffs have not expressly sought jurisdictional discovery from it, the case
can be streamlined by permitting limited discovery from Golla USA as well.

Goya Foods, Inc. v. Golla Oy, Civil No. 12-1859 (GAG/BJM)

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Based on its status as a party, its assertion of a jurisdictional challenge, and the
likelihood that determining the Golla defendants’ personal jurisdiction will
require facts to be considered in common, it would not be unfair to permit
discovery against it on the same terms.
To help determine whether this court has personal jurisdiction over Golla
Oy and Golla USA Inc., the parties are ORDERED as follows.
Plaintiffs may serve written discovery—written interrogatories under Rule
33, requests for production under Rule 34, or requests for admission under Rule
36—on Golla Oy and Golla USA Inc. The scope of this discovery is strictly
limited to a minimum contacts analysis of (1) the www.golla.com web site, (2)
the channels through which Golla-branded products are sold to Puerto Rico
consumers, and (3) the Golla trademark applications with the Puerto Rico
Secretary of State.1 Plaintiffs may choose to pursue one, two, or all three of these
topics, but they are limited to ten items of discovery per discovery device, per
defendant, counting subparts as distinct items.

To expedite the court’s

determination and spare the defendants unnecessary delay, plaintiffs must serve
any requests before 5:00 p.m. AST on Monday, May 6, 2013. The time for
responses is reduced from thirty days to twenty-one days after service of the
request. See Fed. R. Civ. P. 33(b)(2) and R. 36(a)(3). Personal jurisdiction may be
deemed admitted as a sanction for delay. Ins. Corp. of Ireland, Ltd. v. Compagnie
des Bauxites de Guinee, 456 U.S. 694 (1982); R. 37(b)(2)(A).
Golla USA’s motion to dismiss has not yet been opposed, and the court
would be better served if any opposition incorporates this discovery.
Accordingly, the time for plaintiffs to oppose Golla USA’s motion will be
extended to 5:00 p.m. on Monday, June 3, 2013.
Given the commercially sensitive nature of the information at issue, the court strongly suggests
that the parties agree on a simple protective order regarding this limited discovery.
1

Goya Foods, Inc. v. Golla Oy, Civil No. 12-1859 (GAG/BJM)

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Since Golla Oy’s motion has been fully briefed, the court need only
consider simultaneous briefs arguing the application of any newly-discovered
facts to those grounds. Simultaneous briefs regarding Golla Oy are due by
5:00 p.m. on Monday, June 3, 2013.
IT IS SO ORDERED.
In San Juan, Puerto Rico, this 22nd day of April, 2013.
S/Bruce J. McGiverin
BRUCE J. MCGIVERIN
United States Magistrate Judge