Odyssey Medical, Inc. v. Augen Opticos, S.A. de C.V.

Filing 72

ORDER denying Motion to Dismiss, Signed by Judge Samuel H. Mays, Jr on 9/26/2011. 11

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TENNESSEE
WESTERN DIVISION

ODYSSEY MEDICAL, INC.,
Plaintiff,
v.
AUGEN OPTICOS, S.A. de C.V.,
d/b/a AUGEN OPTICS and BLUE
COVE CORP. d/b/a AUGEN OPTICS,
Defendants.

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No. 10-2797

ORDER ON DEFENDANT’S MOTION TO DISMISS

Plaintiff
action

Odyssey

against

Medical,

Defendants

Augen

Inc.

(“Odyssey”)

Opticos,

S.A.

brings

de

this

C.V.

d/b/a

Augen Optics (“Augen Opticos”) and Blue Cove Corp. d/b/a Augen
Optics

(“Blue

Cove”)

property rights.

for

violation

of

Odyssey‟s

intellectual

(See First Am. Compl. For Injunctive Relief

and Money Damages, ECF No. 13 (“Am. Compl.”)).

Odyssey filed

suit against Augen Opticos on November 6, 2010 (See Compl. for
Injunctive Relief and Money Damages, ECF No. 1.), and amended
its complaint to include Blue Cove on December 27, 2010. (See
Am. Compl.)
both

Augen

In its Amended Complaint, Odyssey contends that
Opticos

and

States as Augen Optics.
2011,

Augen

Opticos

Blue

Cove

do

business

(Am. Compl. ¶¶ 2-3.)

filed

a

Motion
1

to

in

the

United

On January 31,

Dismiss

pursuant

to

Federal Rules of Civil Procedure 12(b)(2) and (b)(5).
Mot.

to

Dismiss

Pursuant

to

Fed.

R.

Civ.

P.

(Def.‟s

12(b)(5)

for

Insufficient Service of Process and Pursuant to Fed. R. Civ. P.
12(b)(2) for Lack of Personal Jurisdiction, ECF No. 11 (“Augen‟s
Original Mot.”); Def.‟s Mem. in Supp. of Mot. to Dismiss Based
on

Insufficient

Jurisdiction,
Opticos

Service

ECF

argues

No.

that

of

12

Process

(“Augen‟s

there

has

been

and

Lack

Original

of

Personal

Mem.”).)

insufficient

Augen

service

process and that this Court lacks personal jurisdiction.

of

(Id.)

On March 9, 2011, Odyssey filed a motion for jurisdictional
discovery.
Opticos,

(Mot. for Jurisdictional Disc. Related to Def. Augen

Mem.

In

Consultation,

ECF

Supp.,
No.

and

Local
This

26.)

Rule

7.2

Court

Certificate

referred

of

Odyssey‟s

discovery motion to Magistrate Judge Tu M. Pham, who granted it
on

April

Granting

8,

2011.

Pl.‟s

Mot.

(Order
for

of

Reference,

Jurisdictional

ECF

Disc.,

No.
ECF

28;
No.

Order
39.)

Jurisdictional discovery is complete, and both Odyssey and Augen
Opticos have filed supplemental memoranda addressing the motion
to dismiss.

(Pl.‟s Supplemental Mem. In Opp‟n to Augen Opticos‟

Motion to Dismiss, ECF No. 70 (“Odyssey‟s Supp. Mem.”); Def.
Augen Opticos‟ Supplemental Reply to Pl.‟s Supplemental Mem. in
Opp‟n to Augen Opticos‟ Mot. to Dismiss, ECF No. 71 (“Augen
Opticos‟ Supp. Reply”).)
I.

Background
2

On

November

6,

2010,

Odyssey

filed

a

complaint

against

Augen Opticos in this Court. (Compl. for Injunctive Relief and
Money Damages, ECF No. 1 (“Odyssey‟s First Compl.”).)

Odyssey

is a corporation organized under the laws of Tennessee, with its
principal place of business at 2975 Brother Boulevard, Bartlett,
Tennessee. (Id. ¶ 1.) Odyssey manufactures and sells ophthalmic
products in interstate commerce, including its patented punctual
occluder, under the trademark PARASOL.

(See id. ¶ 7.)

Odyssey

owns the PARASOL mark and registered it on December 15, 1998.
(See

id.

¶

competitor,

10.)
has

According
used

to

Odyssey,

confusingly

Augen

similar

Opticos,

marks,

a

including

PARASOL and AUGEN PARASOL, on Augen Opticos‟ ophthalmic lenses,
confusing purchasers who incorrectly believe that Odyssey and
Augen

Opticos

are

affiliated

or

that

Odyssey

endorsed, or approved Augen Opticos‟ products.
13,

16.)

Odyssey‟s

initial

complaint

has

sponsored,

(See id. ¶¶ 12-

asserts

that

Augen

Opticos‟ use of confusingly similar marks makes it liable for:
1) infringement of federal and state trademark and trade name
rights and interests protected by 15 U.S.C. §§ 114, et seq. and
Tennessee

common

misrepresentation
1125(a);

3)

law;
in

unfair

2)

false

commerce

in

competition

designation
violation
with

of

origin

and

of

15

U.S.C.

§

Odyssey;

4)

Tennessee

Consumer Protection Act violations; and 5) dilution of Odyssey‟s
PARASOL mark in violation of 15 U.S.C. § 1125(c).
3

(Id. ¶ 3.)

On

December

declaratory

17,

judgment

2010,

Blue

against

Cove

Odyssey

filed
in

a

the

complaint
United

District Court for the Southern District of California.
For Declaratory J., ECF No. 24-2
Compl.”).)

for

States
(Compl.

(“Blue Cove Declaratory

J.

In that complaint, Blue Cove claims that it is the

exclusive licensee and distributor of Augen Opticos‟ products in
the United States and that Odyssey‟s first complaint against
Augen

Opticos

in

this

Court

has

created

a

reasonable

apprehension that Odyssey would sue Blue Cove for its continued
use

of

the

term

AUGEN

PARASOL

in

marketing

ophthalmic lenses Augen Opticos produces.
20.)

and

selling

the

(See id. ¶¶ 1, 19-

Blue Cove requests a declaration that its use of the term

AUGEN PARASOL is not likely to be confused with Odyssey‟s use of
the federally-registered trademark PARASOL and does not infringe
Odyssey‟s trademark.
that

Augen

Opticos

(See id. ¶¶ 2, 22.)
is

“a

separate

and

Blue Cove asserts
independent

Mexican

company doing business outside the territorial jurisdiction of
the United States,” but contends that Blue Cove has standing to
challenge Odyssey‟s right to prevent Blue Cove from using the
term AUGEN PARASOL “[b]y virtue of its affiliation with AUGEN
OPTICOS,”

“a

related

but

independent

company

associated

with

BLUE COVE,” and Blue Cove‟s use of the term “AUGEN PARASOL.”
(Id. ¶¶ 1, 13-14, 19-20.)

4

On December 27, 2010, Odyssey filed an amended complaint in
this Court, adding Blue Cove as a defendant and alleging that
Blue Cove does business in the United States as Augen Optics,
the business name used by Augen Opticos in the United States.
(Am. Compl. ¶¶ 2-3.)

Odyssey also alleges that the address of

Blue Cove‟s principal place of business is the same as Augen
Opticos‟ address.

(Id. ¶ 3.)

Odyssey seeks relief against

Augen Opticos and Blue Cove for: 1) infringement of federal and
state trademark and trade name rights and interests protected by
15 U.S.C. §§ 114, et seq. and Tennessee common law; 2) false
designation

of

origin

and

misrepresentation

in

commerce

in

violation of 15 U.S.C. § 1125(a); 3) unfair competition with
Odyssey; 4) Tennessee Consumer Protection Act violations; and 5)
dilution of Odyssey‟s PARASOL mark in violation of 15 U.S.C. §
1125(c). (See id. ¶ 4.)
II.

JURISDICTION

This Court has jurisdiction over this action pursuant to 28
U.S.C. § 1331, 28 U.S.C. § 1338(a) & (b), and 15 U.S.C. § 1121.
Odyssey‟s state law causes of action are substantially related
to

its

federal

claims

and

this

Court

has

supplemental

jurisdiction over the state law causes of action under 28 U.S.C.
§ 1367.
III. STANDARD OF REVIEW
A. Service of Process
5

When a defendant files a motion to dismiss for insufficient
service of process pursuant to Fed. R. Civ. P. 12(b)(5),

the

plaintiff “bears the burden of executing due diligence in
perfecting service of process and showing that service was
made.”

Mullins v. Kalns, No. 99-4031, 2000 U.S. App. LEXIS

28063, at *8-9 (6th Cir. Nov. 3, 2000); see also Portis v.
Caruso, No. 1:09-cv-846, 2010 U.S. Dist. LEXIS 94868, at *28
(S.D. Mich. July 28, 2010) (“The plaintiff bears the burden of
proving that proper service was effected.”); Grubb v. Collins,
No. 1:09-cv-263, 2010 U.S. Dist. LEXIS 90984, at *2 (S.D. Ohio
July 4, 2010) (noting that the plaintiff bears the burden of
showing that proper service has been made).
When “addressing a motion to dismiss based on ineffective
service of process, the [c]ourt necessarily must review matters
outside the pleadings.”

Pers. Brokerage Serv., LLC v. Lucius,

No. 05-1663, 2006 WL 2975308, at *1 (D. Minn. Oct. 16, 2006).
“The court may weigh and determine disputed issues of fact on a
Rule 12(b)(5) motion.”

Cranford v. United States, 359 F. Supp.

2d 981, 984 (E.D. Cal. 2005).

To assist the court in

determining factual issues, the “[p]arties may submit affidavits
and exhibits with a motion to dismiss under Rule 12(b)(5).”
Travelers Cas. & Sur. Co. v. Telstar Constr. Co., 252 F. Supp.
2d 917, 922 (D. Ariz. 2003).

“The court may receive affidavits

introduced by the parties when considering a Rule 12(b)(5)
6

motion,”

Vance Prods., Inc. v. Oasis Med., Inc., No. IP 01-

0585-C-B/S, 2002 U.S. Dist. LEXIS 4889, at *4 (S.D. Ind. March
20, 2002), and “may receive evidence introduced by the parties.”
Chatman v. Condell Med. Ctr., No. 99 C 5603, 2002 WL 737051, at
*2 (N.D. Ill. April 22, 2002); see also Hickory Travel Sys. V.
Tui Ag, 213 F.R.D. 547, 555 (N.D. Cal. 2005) (allowing
jurisdictional discovery if factfinding is needed to prove
“proper service,” but finding it unnecessary in the matter at
hand).

Both the plaintiff and defendant may produce

“affidavits, discovery materials, and other admissible
evidence.”

Mintel Learning Tech, Inc. v. Beijing Kaidi Educ.

Dev. Co., Ltd., No. C 06-7541 PJH, 2007 U.S. Dist. LEXIS 27213,
at *2 (N.D. Cal. March 28, 2007); see also Travelers Cas. & Sur.
Co., 252 F. Supp. 2d at 922-23 (cataloging cases where courts
considered affidavits and exhibits in response to motions to
dismiss under Rule 12(b)(5)).
The Sixth Circuit has not addressed how the plaintiff may
satisfy its burden of proof for purposes of a motion to dismiss,
but other Circuits have.

“[T]o make a prima facie showing [of

service], the movant must simply produce a return of service
identifying the recipient.”
668, 672 (7th Cir. 2010).

Relational, LLC v. Hodges, 627 F.3d
Such an affidavit “can be overcome

only by strong and convincing evidence.”

SEC v. Internet

Solutions for Bus., Inc., 509 F.3d 1161, 1166 (9th Cir. 2007)
7

(quoting O‟Brien v. R.J. O‟Brien & Assocs., Inc., 998 F.2d 1394,
1398 (7th Cir. 1993)).

Although a “process server‟s affidavit

of service establishes a prima facie case” of service, “[a]
defendant‟s sworn denial of receipt of service . . . rebuts the
presumption.”

Old Republic Ins. Co. v. Pac. Fin. Servs. Of Am.,

Inc. 301 F.3d 54, 57 (2d Cir. 2002); see also People‟s United
Equip. Fin. Corp. v. Hartmann, No. 10-20875, 2011 U.S. App.
LEXIS 16560, at *5, (5th Cir. Aug. 9, 2011) (requiring “strong
and convincing” evidence to overcome a plaintiff‟s prima facie
evidence).
The weight of authority is clear that “[a] process servers‟
affidavit of service . . . establishes a presumption of
service.”

McCombs v. Granville Exempted Vill. Sch. Dist.,No.

2:07-cv-00495, 2009 U.S. Dist. LEXIS 14044, at *12 (S.D. Ohio,
Feb. 24, 2009) (quoting State Farm Automobile Ins. Co. v. CPT
Medical Service, Inc., No. 04-CV-5045, 2005 U.S. Dist. LEXIS
44862 (E.D.N.Y. Oct. 6, 2005)).

The defendant has the burden of

rebutting the plaintiff‟s prima facie case.
B. Personal Jurisdiction
Motions to dismiss for lack of personal jurisdiction are
considered under a “procedural scheme” that is “well-settled.”
Theunissen v. Matthews, 935 F.2d 1454, 1458 (6th Cir. 1991).
When

a

defendant

jurisdiction

moves

grounds,

the

to

dismiss

plaintiff
8

a

case

on

“need

only

make

personal
a

prima

facie showing that personal jurisdiction exists.” Air Prods. &
Controls, Inc. v. Safetech Int‟l, Inc., 503 F.3d 544, 549 (6th
Cir. 2007) (quoting Theunissen, 935 F.2d at 1458).
“As there is no statutory direction for procedure upon an
issue of jurisdiction, the mode of its determination is left to
the trial court.”

Century Bus. Servs. v. Bryant, 69 F. App‟x

306, 314 (6th Cir. 2003) (quoting Welsh v. Gibbs, 631 F.2d 436,
438 (6th Cir. 1980)).
decide

a

discovery

12(b)(2)
in

aid

of

“[A] district court has discretion to

motion
a

on

affidavits

ruling,

or

to

alone,

conduct

hearing to resolve any factual questions.”

an

to

permit

evidentiary

Cleveland Browns

Football Co., LLC v. Hawaii-Pacific Apparel, 90 F. App‟x 868,
869 (6th Cir. 2004); see also Wright v. MGM Grand Casino, No.
09-14853, 2011 U.S. Dist. LEXIS 68498, at *3 (E.D. Mich. May 20,
2011) (quoting Theunissen, 935 F.2d at 1458) (holding that a
court “may permit discovery in aid of deciding the motion.”).
The

court

follow.”

“has

discretion

to

select

which

method

it

will

Theunissen, 935 F.2d at 1458; see also Intera Corp v.

Henderson, 428 F.3d 605, 614 n.7 (6th Cir. 2005) (stating that
“[i]f the district court rules on a [motion to dismiss] before
trial . . . it has discretion to . . . permit discovery, which
would

aid

in

resolution

of

the

motion.”);

Dean

v.

Motel

6

Operating L.P., 134 F.3d 1269, 1272 (6th Cir. 1998) (“[T]he
court may determine the motion on the basis of affidavits alone;
9

or it may permit discovery in aid of the motion; or it may
conduct an evidentiary hearing on the merits of the

motion.”).

The plaintiff‟s burden to defeat a motion to dismiss for
lack of personal jurisdiction is “relatively slight, and the
plaintiff must make only a prima facie showing that personal
jurisdiction exists in order to defeat dismissal.”

Estate of

Thomson v. Toyota Motor Corp., 545 F.3d 357, 360 (6th Cir. 2008)
(internal citations and quotations omitted).
not

consider

any

controverting

Intera Corp., 428 F.3d at 614.

assertions

The court should
of

the

defendant.

Absent an evidentiary hearing, a

court “will not consider facts proffered by the defendant that
conflict with those offered by the plaintiff.”

Neogen Corp v.

Neo Gen Screening, Inc., 282 F.3d 883, 887 (6th Cir. 2002); see
also Intera Corp, 428 F.3d at 613 (holding the court must review
the evidence “in the light most favorable to the Plaintiffs.”).
“Dismissal . . . is proper only if all the specific facts which
the plaintiff . . . alleges collectively fail to state a prima
facie case for jurisdiction.”

Bridgeport Music, Inc. v. Still N

the Water Publ‟g, 327 F.3d 472, 477 (6th Cir. 2003) (quoting
Kerry Steel, Inc. v. Paragon Indus., 106 F.3d 147, 149 (6th Cir.
1997)); see also Dean, 134 F.3d at 1273 (holding that, even if
there is discovery, a plaintiff need only make a prima facie
showing of jurisdiction).

The Court is not required “to ignore

undisputed factual representations of the defendant which are
10

consistent

with

the

representations

of

the

plaintiff.”

Bridgeport Music, Inc., 327 F.3d at 477.
To make its prima facie showing, the plaintiff need only
“establish[] with reasonable particularity sufficient contacts
between

[the

jurisdiction.”

defendant]

and

the

forum

state

to

support

Rice v. Karsch, 154 F. App‟x 454, 458 (6th Cir.

2005) (quoting Neogen Corp, 282 F.3d at 887).

“Dismissal under

Rule 12(b)(2) is proper only if the specific facts alleged by
Vanderbilt Mortgage, taken as a whole, fail to state a prima
facie case for personal jurisdiction.”

Vanderbilt Mrtg. & Fin.

v. First Franklin Fin. Corp., No. 3:10-CV-7, 2011 U.S. Dist.
LEXIS 40868, at *2-3 (E.D. Tenn. Apr. 14, 2011).
When a federal court‟s subject matter jurisdiction stems
from a federal question, personal jurisdiction exists if the
defendant is “amenable to service of process under the forum
state‟s

long-arm

jurisdiction

statute

would

not

and

if

deny

the

the

existence

defendant

of

due

personal
process.”

Bridgeport Music, Inc., 327 F.3d at 477 (internal quotations and
citations omitted).

Tennessee courts construe the state‟s long-

arm statute to be coextensive with the limits of due process.
Tenn. Code Ann. § 20-2-214(a); J.I. Case Corp. v. Williams, 832
S.W.2d 530, 532 (Tenn. 1992).

Thus, federal courts in Tennessee

“employ federal constitutional due process analysis to determine
whether there is personal jurisdiction.”
11

Smith v. Home Depot

USA, Inc., 294 F. App‟x 186, 189 (6th Cir. 2008); see also
Intera Corp, 428 F.3d at 616.
Jurisdiction may be general or specific.
289 F.3d 865, 873 (6th Cir. 2002).

Bird v. Parsons,

General jurisdiction is

appropriate only when “a defendant‟s contacts with the forum
state

are

of

such

a

continuous

and

systematic

nature”

that

personal jurisdiction would be proper “even if the action is
unrelated to the defendant‟s contacts with the state.”

Third

Nat‟l Bank v. WEDGE Group, Inc., 882 F.2d 1078, 1089 (6th Cir.
1989).

Specific jurisdiction is proper when: (1) the defendant

purposefully availed itself of the privilege of acting in the
forum state or causing a consequence in the forum state; (2) the
cause of action arose from the defendant‟s activities in the
forum state; and (3) the consequences caused by the defendant
had a substantial enough connection to make the exercise of
jurisdiction reasonable.

S. Mach. Co. v. Mohasco Indus., Inc.,

401 F.2d 374, 381 (6th Cir. 1968); see also Intera Corp, 428
F.3d at 614 (applying the Southern Machine test); Rice, 154 F.
App‟x at 459 (same).
Although the Court retains the power to order an
evidentiary hearing “if written submissions raise disputed
issues of fact or seem to require determinations of
credibility,” that is not necessary in this case.

Ford Motor

Co. v. Great Domains, Inc., 141 F. Supp. 2d 763, 771 (E.D. Mich.
12

2001) (quoting Serras v. First Tenn. Nat‟l. Assoc., 875 F.2d
1212, 1214 (6th Cir. 1989)).
IV.

Analysis

Odyssey contends that it served Augen Opticos with process
by hand-delivering notice of the suit to one of its officers.
Odyssey also contends that Augen Opticos‟ contacts with
Tennessee were sufficiently significant to give rise to specific
personal jurisdiction; and that, in the alternative, Augen
Opticos consented to suit in Tennessee through its alter ego,
Blue Cove.

Odyssey‟s first two contentions are well taken.

Odyssey served process on Augen Opticos, and Augen Opticos‟
contacts with Tennessee were significant enough to give rise to
specific personal jurisdiction.
A.

Service of Process

The Federal Rules of Civil Procedure provide for service on
a foreign corporation by “delivering a copy of the summons and
of the complaint to an officer, a managing or general agent, or
any other agent authorized by appointment or by law to receive
service of process.”

Fed. R. Civ. P. 4(h)(1)(B).

Augen Opticos argues that Odyssey did not comply with Rule
4(h)(1).

(Augen‟s Original Mem. 2.)

Augen Opticos contends

that Odyssey served papers on Patricia Machado (“Patricia
Machado”), Vice-President of Business Development for Blue Cove,
who has no relation to Augen Opticos.
13

(Augen Opticos‟ Supp.

Reply 3.)1

Because the papers were not served on Marco Machado-

Torres (“Marco Machado”), the President of Augen Opticos, Augen
Opticos argues that service was insufficient.

(Id. 2.)

Odyssey contends that it served process on Patricia Machado
at Augen Opticos‟ United States address, 6020 Progressive
Avenue, Suite 200, San Diego, California 92154.
Supp. Mem. 3.)

(Odyssey‟s

Odyssey also states that Patricia Machado was

the vice-president of Augen Opticos and so qualifies as an
officer for the purpose of Rule 4(h)(1).

(Id. 3.)

Odyssey

submits several pieces of evidence to support its position.
Odyssey has provided documents from the U.S. Patent and
Trademark Office‟s (“U.S.P.T.O.”) website filed by Augen
Opticos.
Decl.”).)

(Decl. of Russel H. Walker, ECF No. 26-1 (“Walker
These documents include several trademark

applications in which Patricia Machado lists herself as VicePresident of Business Development for Augen Opticos on forms she
filed on its behalf.

(See Walker Decl., Exs. 2, 4, 6, 8, 10,

12, 14, 16, 18, 20, 22, 24, 26,
Applications”).)

& 28, ECF-No. 26-1 (“Trademark

Odyssey has also provided a copy of a

transcript from a settlement conference before United States
District Judge Barbara L. Major in the Southern District of
California, where Patricia Machado states that she is the “Vice
1

Augen Opticos states that Patricia Machado is the daughter of Marco MachadoTorres, who owns Augen Opticos and Blue Cove.
(Augen Opticos‟ Supp. Reply
3.)

14

President of Business Development” for Augen Opticos.

(Walker

Decl., Ex. 30, Tr. of Settlement Conference at 3:16-18, Augen
Opticos, S.A. v. Opthonix, Inc., No. 10CV1512-IEG-BLM (S.D. Cal.
Sept. 7, 2010), ECF No. 26-1 (“Opthonix Settlement Tr.”).)
Odyssey has also provided a copy of the Settlement Agreement
between Opthonix, Inc. (“Opthonix”) and Augen Opticos, which
Patricia Machado signed as Augen Opticos‟ Vice-President.
(Settlement and Release Agreement 3, ECF No. 70-3.)
Odyssey has provided the affidavit of Gary Bishop
(“Bishop”), who states that he personally delivered service of
process to Patricia Machado at Augen Opticos‟ San Diego address.
(Aff. of Gary Bishop ¶ 1, ECF No. 26-2 (“Bishop Aff.”).)

That

affidavit “establishes a presumption of proper service.”

Kirk

v. Muskingum Cnty., No. 2:09-cv-00583, 2011 U.S. Dist. LEXIS
42276, at *12 (S.D. Ohio

April 19, 2011) (quoting McCombs, 2009

U.S. Dist. LEXIS 14044, at *3).

Bishop states that, after

serving process on Patricia Machado, he was attacked by a dog.
(Id. ¶ 5.)

Patricia Machado attempted to return the service

documents to Bishop, and, as he tried to leave the building
where Augen Opticos‟ offices are located, he was attacked by the
dog in the building‟s lobby.

(Id. ¶ 6.)

Bishop states that

Patricia Machado left the building to place the service
documents under the windshield wiper of Bishop‟s car and that,

15

when he tried to remove the documents, he was attacked by the
dog a third time.

(Id. ¶ 7.)

Odyssey has served process on Augen Opticos.

Augen Opticos

does not contest that Patricia Machado was served in Augen
Opticos‟ office; instead, it contends that she is not an officer
of Augen Opticos, relying on her affidavit.
Supp. Reply 3.)

(Augen Opticos‟

Patricia Machado‟s assertion that she is not an

officer is not supported by the evidence.

She has signed

documents submitted to the U.S.P.T.O. stating she is an officer
of Augen Opticos.

(See Trademark Applications.)

She has

declared to other corporations and to a United States District
Judge that she is an officer of Augen Opticos.

(Compare Supp.

Decl. of Patricia Machado ¶ 4, ECF No. 29-4 with Opthonix
Settlement Tr. 3:16-18.)

“[W]eigh[ing]” the “disputed issues of

fact,” Cranford, 359 F. Supp. 2d at 984, Machado‟s affidavit
does not rise to the level of “strong and convincing evidence”
that service was improper.

Relational, LLC, 627 F.3d at 672.

Augen Opticos was properly served.2

2

Under the Tennessee Rules of Civil Procedure, “service may be made upon a
representative so integrated with the organization that he will know what to
do with the papers. Generally, service is sufficient when made upon a person
who stands in such a position as to render it fair, reasonable, and just to
imply the authority on his part to receive service.” Murphy v. Studio 6, No.
09-2212-STA, 2010 WL 503126, at *3 (W.D. Tenn. Feb. 5, 2010) (citing Garland
v. Seaboard Coastline R. Co., 658 S.W.2d 528, 530-31 (Tenn. 1983). Even if
Augen Opticos were correct in claiming that Patricia Machado is not an
officer of Augen Opticos, it would not be unjust or unreasonable for Odyssey
to serve process on an individual “empowered with authority to act on behalf
of Augen . . . in settlement negotiations . . . and to sign a series of

16

B. Personal Jurisdiction
Odyssey

does

not

allege

that

jurisdiction over Augen Opticos.3

this

Court

has

general

The sole issue is whether

Augen Opticos‟ actions, or the actions of its purported alter
ego Blue Cove, support specific personal jurisdiction.
must

meet

the

three

prongs

of

the

Southern

Machine

Odyssey
test

by

showing that: 1) Augen Opticos purposefully availed itself of
the privilege of acting in Tennessee or causing a consequence in
Tennessee; 2) the cause of action arose from

Augen Opticos‟

activities in Tennessee; and 3) the acts of Augen Opticos or the
consequences it caused make exercise of jurisdiction reasonable.
Intera Corp., 428 F.3d at 615 (quoting S. Mach. Co., 401 F.2d at
381).
1.

Purposeful Availment

The requirement that a party purposefully avail itself of a
state‟s laws and benefits flows from constitutional notions of
due process, and is designed to “ensure[] that a defendant will
not be haled into a jurisdiction solely as a result of „random‟,
„fortuitous‟, or „attenuated‟ contacts.”
Rudzewicz,

471

U.S.

461,

475

(1985)

Burger King Corp. v.
(internal

citations

[forms] filed with the U.S. Patent and Trademark Office on behalf of Augen.”
(Augen Opticos‟ Supp. Reply 3.)
3
Although Odyssey initially stated that it was unsure whether “Augen
Opticos‟ contacts with Tennessee are continuous and systematic in nature so
as to confer general jurisdiction over Augen Opticos,” Odyssey‟s most recent
filing alleges only that jurisdictional discovery “supports the exercise of
specific personal jurisdiction.” (Pl.‟s Resp. to Augen Opticos‟ Mot. to
Dismiss 9, ECF No. 26; Odyssey‟s Supp. Reply 6) (capitalization removed).

17

omitted).

Purposeful availment can be found “[s]o long as a

commercial actor‟s efforts are „purposefully directed‟ toward
residents of another [s]tate.”

Id.

The Sixth Circuit has adopted Justice O‟Connor‟s approach
to specific jurisdiction in

Asahi Metal Indus. Co., Ltd.

v.

Superior Court. 480 U.S. 102, 112 (1987); see Bridgeport Music,
Inc., 327 F.3d at 479 (endorsing Justice O‟Connor‟s approach).
Under that approach, the so-called “stream of commerce plus”
approach,

“„the

commerce,

without

purposefully

placement
more,

directed

of

a

product

is

not

toward

the

an

into

act

forum

of

the

stream

the

state.‟”

of

defendant
Bridgeport

Music, Inc., 327 F.3d at 479 (quoting Asahi, 480 U.S. at 112).
Odyssey argues that that Augen Opticos purposefully availed
itself of the privilege of acting in Tennessee or causing a
consequence in Tennessee.

Odyssey argues that Augen Opticos:

(1) marketed its products to Tennessee, (2) sold products in
Tennessee, and (3) maintained an interactive website available
in Tennessee.
Odyssey

(Odyssey‟s Supp. Mem. 7, 14.)
alleges

that,

as

part

of

a

national

product

campaign, Augen Opticos used the infringing Augen PARASOL mark
in

“several

industry.”

national

magazines

directed

(Odyssey‟s Supp. Mem. 10.)

at

the

ophthalmic

Taken alone, this does

not rise to the level of purposeful availment.

See Bridgeport

Music, Inc., 327 F.3d at 481 n.10 (taking no position on whether
18

“nationwide

advertising

is

sufficient

for

a

finding

of

purposeful availment,” but noting that other circuits have found
it insufficient).
“targeted

Odyssey also alleges that Augen Opticos sent

emails

containing

infringing

Tennessee.”

(Am. Compl. ¶ 8.)

received

several

state

by

that

they

ophthalmologists

Tennessee

are
to

from

go

to

marks

to

residents

of

Odyssey has submitted emails
ophthalmologists.

“Augen

Optics”

augenparasol.com

The

and
to

emails

invite

“learn

the

more.”

(Decl. of Vickie Hickman (“Hickman Decl.”) Exs. A, B, & C, ECF
No. 26-3.)
Odyssey has not shown that these emails were part of a
direct marketing campaign targeted at Tennessee.

Augen Opticos

states, and Odyssey does not contest, that these emails were
sent

through

Jobson

Medical

Information,

national advertising campaign.
6.)

Odyssey

designing

the

argues

that

LLC

as

part

of

a

(Augen Opticos‟ Supp. Reply 4,

Augen

advertisements,

Opticos

but

Odyssey

played
has

a

role

in

provided

no

authority, and this Court has found none, to the effect that
emails

sent

as

part

of

a

national

advertising

campaign

are

sufficiently targeted to support specific personal jurisdiction.
(Odyssey‟s Supp. Mem. 7-9.)

Odyssey‟s claim that emails were

sent to ophthalmologists is insufficient to establish purposeful
availment without more evidence that Augen has “„create[d] a
substantial connection‟” to Tennessee.
19

Ford Motor Co., 141 F.

Supp. 2d at 772 (quoting Compuserve, Inc. v. Patterson, 89 F.3d
1257, 1263 (6th Cir. 1996)).
Odyssey argues that Augen Opticos‟ website also supports
specific jurisdiction.

“[M]aintenence of [a] website, in and of

itself, does not constitute . . . purposeful availment.”
Corp., 282 F.3d at 890.

Neogen

However, “[a] defendant purposefully

avails itself of the privilege of acting in a state through its
website if the website is interactive to a degree that reveals
specifically intended interactions with residents of the state.”
Id.; see also Morel Acoustic, Ltd. v. Morel Acoustics USA, Inc.,
No. 3-:04-CV-348, 2005 U.S. Dist. LEXIS 32864, at *19-20 (S.D.
Ohio

Sept.

7,

2005)

(concluding

that,

where

a

defendant‟s

website “provide[d] specifications and prices, invite[d] orders,
provide[d] order forms for downloading and provide[d] an e-mail
link for placing orders,” the defendant had purposefully availed
itself of the forum state‟s laws).
The Sixth Circuit has recognized that websites generally
have three levels of interactivity:
(1)
(2)
(3)

Passive sites that only offer information for the
user to access;
Active sites that clearly transact business
and/or form contracts;
Hybrid or interactive sites that allow users to
“exchange information with the host computer.”

See, Inc. v. Imago Eyewear Pty, Ltd., 167 F. App‟x 518, 522 (6th
Cir. 2006) (quoting Zippo Mfg. Co. v. Zippo Dot Com, Inc., 952

20

F. Supp. 1119, 1124 (W.D. Pa. 1997)).

An interactive website is

a site where “one can purchase products.”
Gourmet

Techs.,

Inc.,

300

F.

Supp.

2d

McGill Tech. Ltd. v.
501,

507

(E.D.

because

it

Mich.

2004).
Augen

Opticos‟

website

is

customers to submit orders.

interactive

allows

(Website for the Augen Opticos

Online Order System, ECF No. 26-7 (“Augen Opticos‟ Online Order
Form”).)

Augen Opticos argues that its site is not interactive

because only “existing customers” can order products, and that
to use the website, “a prospective customer must complete a
credit

application,”

which

is

available

(Supp. Decl. of Patricia Machado ¶ 5.)

on

the

same

page.

However, the website

permits Tennessee residents to purchase products and solicits
credit applications.

Augen Opticos‟ “alleged maintenance of a

highly interactive website that solicits Tennessee customers is
a

sufficient

basis

to

find

that

the

defendant

availed itself of acting in the forum state.”

purposefully

First Tenn. Nat‟l

Corp. v. Horizon Nat‟l Bank, 225 F. Supp. 2d 815, 821 (W.D.
Tenn. 2002).

Augen Opticos‟ website is no less interactive than

the website at issue in Morel Acoustic, Ltd., which the Southern
District of Ohio held provided a basis for jurisdiction.
U.S.

Dist.

LEXIS

32864,

at

*20.

The

website

supports

2005
the

conclusion that Augen Opticos has purposefully availed itself of
the privilege of doing business in Tennessee.
21

Augen Opticos relies on the fact that Odyssey has offered
only “one piece of evidence that Augen conducted any kind of
business in Tennessee”, a check for $64.38.
not well taken.

That reliance is

(Augen Opticos‟ Supp. Reply 7-8; Check from

Tri-state Muller Optical, Inc., ECF No. 70-3.)
for

personal

jurisdiction

is

not

based

on

“The proper test
a

„percentage

of

business‟,” but rather whether Augen Opticos had “something more
than

„random,

state.”

fortuitous,

or

attenuated

contacts‟

with

the

Neogen, 282 F.3d at 891-92 (quoting Burger King, 471

U.S. at 475).

Because “[t]he test has always focused on the

„nature and quality‟ of the contacts with the forum,” a website
can create specific jurisdiction based on “a single contact.”
Zippo Mfg. Co., 952 F. Supp. At 1127. See also SSM Indus. v.
Fairchild Apparel Group, Inc., No. 1:03-cv-223, 2004 U.S. Dist.
LEXIS 906, at *17 (E.D. Tenn. Jan. 16, 2004)(“Even a single act
by a defendant deliberately directed toward a Tennessee resident
that gives rise to [a] cause of action can support a finding of
purposeful availment and meet the due process requirement of
minimum contacts.”)

Augen Opticos‟ contacts were “deliberate

and repeated, even if they yielded little revenue from Tennessee
itself.”
A
between

Compuserve, 89 F.3d at 1265.

“defendant‟s interposition of an independent middleman
itself

and

the

forum

does

defendant outside the forum‟s reach.”
22

not

by

itself

place

the

Fortis Corporate Ins. v.

Viken Ship Mgmt., 450 F.3d 214, 220 (6th Cir. 2002).

In Tobin

v. Astra Pharm. Prods., Inc., the court found specific personal
jurisdiction because the defendant signed an exclusive licensing
agreement

with

an

intermediary

to

distribute

throughout the United States of America.
Cir. 1993).

its

product

993 F.2d 528, 543 (6th

The defendant made “a deliberate decision to market

[its product] in all fifty states” and “sought and obtained a
distributor to market its product in every state.”

Id. at 444;

see also

Bridgeport Music, Inc., 327 F.3d at 484 (upholding

specific

personal

jurisdiction

distribution agreement).
Cove

is

its

(Prelim.

and

of

a

nationwide

Augen Opticos has stated that Blue

exclusive

Statement

because

distributor
General

in

the

Objections

United

5,

ECF

States.

No.

70-6.)

Augen Opticos “did not simply place its product into the stream
of commerce; it purposefully sought out and created a United
States

distributor

to

exploit

the

United

States

market.”

Sunshine Distrib v. Sports Auth. Mich., Inc., 157 F. Supp. 2d
669, 789 (E.D. Mich. 2001).
Taken together, Augen Opticos‟ actions amount to “a
deliberate
privilege
advertised

undertaking”
of

doing

to

to

purposefully

business

Tennessee

in

avail

Tennessee.

residents;

it

itself

Augen
has

of

the

Opticos

has

caused

email

invitations to be sent to Tennessee residents; it has created a
website to process sales to Tennessee residents; and it has sold
23

its

products

to

a

distributor

who

markets

its

products

in

Tennessee. The purposeful availment requirement has been met.
2.
The

second

Arising From

requirement

is

that

the

plaintiff‟s

claims

“arise from” the defendant‟s contacts with the forum state.
Prods. & Controls, Inc., 503 F.3d at 553.
phrased

the

test

for

this

requirement

Air

The Sixth Circuit has
in

a

number

of

ways,

including “whether the causes of action were „made possible by‟
or „lie in the wake of‟ the defendant‟s contacts, . . . or
whether the causes of action are
with‟

the

(internal

defendant‟s
citations

contacts

with

omitted).

standard is a lenient one.

„related to‟ or „connected
the

forum

Regardless

of

state.”

Id.

phrasing,

the

Bird, 289 F.3d at 875.

A cause of

action need not formally arise from a defendant‟s contacts with
the forum.

Id.

Rather, the test requires only “that the cause

of action, of whatever type, have a substantial connection with
the defendant‟s in-state activities.”

Bird, 289 F.3d at 875

(quoting Third Nat‟l Bank, 882 F.2d at 1091) (internal quotation
marks omitted).
Odyssey meets this requirement.
for

trademark

violation

caused

a

Neogen found that a claim
variety

of

harms

in

the

plaintiff‟s home state, satisfying the arising from requirement.
Neogen, 282 F.3d at 892.
an

interactive

website

Bird found that a party‟s operation of
and

“copyright
24

and

trademark

law

violations” were “at least marginally related to the alleged
contacts” between the defendant and the forum state.
F.3d at 876.
“[the]

Tennessee residents have received messages that

[p]laintiff

trademark.”

Bird, 289

claims

dilute

and

infringe

Zippo Mfg. Co., 952 F. Supp. at 1127.

upon

its

See also

Compuserve, 89 F.3d at 1267 (finding that the claim arose in
Ohio because trademark violations “occurred, at least in part,
in Ohio.”).
Odyssey‟s claims arise out of Augen Opticos‟ contacts with
Tennessee.
3. Reasonableness
The third requirement for specific personal jurisdiction is
that “the acts of the defendant or consequences caused by the
defendant must have a substantial enough connection with the
forum

state

to

make

defendant reasonable.”

the

exercise

of

jurisdiction

over

the

Air Prods., 503 F.3d at 554 (quoting S.

Mach. Co., 401 F.2d at 381).

If the first two requirements for

specific personal jurisdiction are met, an inference arises that
the third requirement is also satisfied.

Bird, 289 F.3d at 875.

If “a defendant who purposefully has directed his activities at
forum residents seeks to defeat jurisdiction, he must present a
compelling case that the presence of some other considerations
would render jurisdiction unreasonable.”
at 554.

Air Prods., 289 F.3d

Odyssey has shown that jurisdiction would be reasonable
25

and would not conflict with “traditional notions of fair play
and substantial justice.”

Asahi Metal Indus., 480 U.S. at 113.

Augen Opticos argues that specific personal jurisdiction is
unreasonable because its connection to Tennessee is “negligible
at best.”

(Augen Opticos‟ Supp. Reply 9.)

In fact, however,

Augen Opticos has significant ties to Tennessee.
IV.b.1-2.

Supra Section

It established an interactive website that solicited

customers in Tennessee, engaged in commerce in Tennessee, and
advertised there.
“reasonably
World-Wide

Based on those actions, Augen Opticos could

anticipate
Volkswagen

being

haled

Corp.

v.

into

court”

in

444

U.S.

Woodson,

Tennessee.
286,

297

(1980).
Jurisdiction

is

also

reasonable

because

of

interest in protecting the rights of its citizens.

Tennessee‟s
See Youn v.

Track, Inc., 324 F.3d 409, 419-420 (6th Cir. 2002) (noting that
“the existence of federal avenues for relief” in a plaintiff‟s
home

state

serves

citizens‟ rights).

the

state‟s

interest

in

protecting

its

It may be burdensome for Augen Opticos to

defend itself in Tennessee, but “when minimum contacts have been
established, often the interests of the plaintiff and the forum
in the exercise of jurisdiction will justify even the serious
burdens placed on the alien defendant.”

Id. at 420 (quoting

Asahi, 480 U.S. at 114); see also Scott Co. v. Aventis, S.A.,
145 F.

App‟x 109, 115 (6th

Cir. 2005) (finding jurisdiction
26

reasonable because of the forum state‟s interest in resolving
suit “brought by one of its residents against [d]efendants that
purposefully

availed

themselves

of

acting

in

and

causing

consequences in [the forum state].”)
This Court has specific personal jurisdiction over Augen
Opticos. Because it has personal jurisdiction based on Augen
Opticos‟ contacts with Tennessee, the Court need not address
whether Blue Cove is Augen Opticos‟ alter ego.
V.

CONCLUSION

For the foregoing reasons, Augen Opticos‟ Motion to Dismiss
is DENIED.
So ordered this 26th day of September, 2011.

s/ Samuel H. Mays, Jr.
SAMUEL H. MAYS, JR.
UNITED STATES DISTRICT JUDGE

27