United States District Court, N.D. Ohio, Eastern Division
OPINION AND ORDER
Aaron Polster United States District Judge
the Court are two motions: Defendant Markwest's Motion to
Dismiss, Doc #: 28, and Defendant's
Terry Moore & Associates, Inc., Shannon Consultants,
Inc., NEST, Inc., Cathy & Co., Cheryl Lynn Associates,
LLC, and Peggy Lichty & Associates, Inc.'s Motion to
Dismiss, Doc #: 33. For the reasons that
follow, Defendants' Motions to Dismiss are
GRANTED. Moreover, the Court sua
sponte dismisses without prejudice the claims against
Defendants The Rep Connection and Penny Harrison & Co.,
Inc. for reasons set forth infra, at 18-19.
IHF Ltd. (“IHF”) and MONA B, LLC (“Mona
B”) are incorporated and headquartered in Ohio. IHF is
a handbag company that owns the Mona B trademark and designs
and produces goods under the Mona B name. Defendants
Khemchand Handicrafts (“KH”) and Myra Bag are
incorporated and headquartered in India. IHF alleges it met
with the owner of KH, Defendant Khemchand Katri
(“Katri”), at a trade fair in India and engaged
with KH to mass produce and supply Mona B handbags from April
2013 to July 2016. This relationship involved the exchange of
IHF's proprietary information, such as product design
files, marketing materials, and other confidential
information. IHF alleges that in 2016 the supplier
relationship with KH ended and shortly after, in April 2017,
Plaintiffs noticed a rebrand of KH under Myra Bag.
Specifically, Mona B alleges that KH and Katri copied
its' designs to produce substantially similar bags.
on these allegations, Plaintiffs filed a Complaint against
Myra Bag, KH and Katri (together, the “Indian
Defendants”) on May 2, 2018, alleging claims for
Copyright Infringement, 17 U.S.C. §§101, 106 and
501 et seq., Trademark and/or Trade Dress Infringement, 15
U.S.C. §1114 and the Lanham Act §43(a), False
Designation of Origin/ Unfair Competition or Misleading
Advertising, 15 U.S.C. §1125(a), Unfair and Deceptive
Acts or Practices, O.R.C. §§1345.02 and 4165.02,
and Tortious Interference with Business Expectancy. On July
6, 2018, Plaintiffs filed a First Amended Complaint, adding a
claim for Conspiracy to Sell, O.R.C. §§2923.01 and
2913.01, and adding the following nine defendants: Terry
Moore and Associates Inc. (“Terry Moore”), with
principal place of business in Colorado; Shannon Consultants
Inc. (“Shannon Consultants”), with principal
place of business in New York; Penny Harrison & Company
Inc. (“Penny Harrison”), with principal place of
business in Washington; NEST, Inc. (“NEST”), with
principal place of business in Colorado; Cathy & Co.
(“Cathy”), with principal place of business in
Missouri; Markwest Inc. (“Markwest”), with
principal place of business in Minnesota; The Rep Connection,
with principal place of business in Georgia; Cheryl Lynn
Associates, LLC (“CLA”), with principal place of
business in Michigan; and Peggy Lichty & Associates Inc.
(“Peggy Lichty”), with principal place of
business in Pennsylvania. Plaintiffs allege that these
Defendants assisted KH and Katri by distributing infringing
Myra Bag products or by selling infringing and non-infringing
Myra Bag products in Ohio.
August 2, 2018, the Court granted Plaintiffs' motion for
extension of time to August I, 2019 to serve the Indian
Defendants due to the difficulty and time constraints of
serving overseas defendants. Doc ##: 11, 12.
September 10, 2018, Defendant Markwest filed a Motion to
Dismiss for lack of personal jurisdiction. Doc #: 28. On
September 15, 2018, Defendants Terry Moore, Shannon
Consultants, NEST, Cathy, CLA, and Peggy Lichty filed a
Motion to Dismiss for lack of personal jurisdiction. Doc #:
33. On October 23, 2018, the Court granted Plaintiffs'
request to conduct three months of discovery limited to the
question of personal jurisdiction, Doc #: 31 and Minutes of
October 23, 2018, later extended at the parties' joint
request to March 23, 2019, Doc #: 38 and Marginal Order of
December 11, 2018.
Court has reviewed the Motions, the response briefs, Doc ##:
30, 49, 50, the reply briefs, Doc ##: 52, 53, and the
evidence and is prepared to issue a ruling.
STANDARD OF REVIEW
motion to dismiss for lack of personal jurisdiction, a
plaintiff bears the burden of establishing jurisdiction.
Theunissen v. Matthews, 935 F.2d 1454, 1458 (6th
Cir. 1991). The plaintiff must “set forth specific
facts showing that the court has jurisdiction.”
Id. When the court is resolving the motion on the
written submissions alone, “plaintiff must make only a
prima facie showing that personal jurisdiction exists.”
Air Prod. & Controls, Inc. v. Safetech Int'l,
Inc., 503 F.3d 544 (6th Cir. 2007). In reviewing the
motion, the court views the pleadings “in a light most
favorable to the plaintiff” and does not weigh
“the controverting assertions of the party seeking
dismissal.” Theunissen, 935 F.2d at 1459.
courts first apply the law of the forum state when
determining whether personal jurisdiction exists.
Mid-West Materials, Inc. v. Tougher Indus., Inc.,
484 F.Supp.2d 726, 729 (N.D. Ohio 2007) (citing Youn v.
Track, Inc., 324 F.3d 409, 417 (6th Cir. 2003), in turn
citing Neogen Corp. v. Neo Gen Screening, Inc., 282
F.3d 883, 887-88 (6th Cir. 2002)). If personal jurisdiction
exists under the forum state's long-arm statute, the
Court must then determine whether personal jurisdiction
comports with the Due Process Clause of the United States
Constitution. Id. at 730; Conn v. Zakharov,
667 F.3d 705, 712 (6th Cir. 2012) (holding that Ohio's
Long-Arm statute is not coterminous with the Due Process
Clause). The parties dispute whether personal jurisdiction
exists pursuant to both Ohio's Long-Arm statute and Due
The Ohio Long-Arm Statute, O.R.C. § 2307.382
Ohio Supreme Court has held that Ohio's Long-Arm statute
does not reach the limits of Due Process; therefore, the
court must analyze “whether personal jurisdiction is
proper under Ohio's Long-Arm stature prior to considering
whether personal jurisdiction may be exercised consistent
with constitutional due process.” McMunigal v.
Bloch, No. 09 CV 01674, 2010 WL 2106186, at *3 (N.D.
Ohio May 25, 2010). For a court to have jurisdiction over a
non-resident defendant, the defendant must meet at least one
of the criteria provided in the Ohio Long-Arm statute.
Kroger Co. v. Malease Foods Corp., 437 F.3d 506, 510
(6th Cir. 2006). Plaintiffs allege that jurisdiction is
proper under Ohio's Long-Arm Statute, which provides in
(A) A court may exercise personal jurisdiction over a person
who acts directly or by an agent, as to a cause of action
arising from the person's:
(1) Transacting any business in this state;
(2) Contracting to supply services or goods in this state;
(3) Causing tortious injury by an act or omission in this
(4) Causing tortious injury in this state by an act or
omission outside this state if he regularly does or solicits
business, or engages in any other persistent course of
conduct, or derives substantial revenue from goods ...