Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

PW Stoelting LLC v. Levine

United States District Court, E.D. Wisconsin

October 11, 2016

PW STOELTING, LLC, Plaintiff,
v.
STEVEN J. LEVINE; ADVANCED FROZEN TREAT TECHNOLOGY, INC. dba SUPERIOR FREEZERS CALIFORNIA; and PRISM MARKETING CORPORATION dba SUPERIOR FREEZERS NORTHWEST, Defendants.

          DECISION AND ORDER

          William C. Griesbach, Chief Judge

         Plaintiff PW Stoelting LLC (Stoelting) filed a complaint against Defendants Steven Levine, Advanced Frozen Treat Technology (AFTT), and Prism Marketing Corporation (Prism). Plaintiff alleges infringement of a federally registered trademark in violation of 15 U.S.C. § 1114 against all Defendants; unfair competition and making of false and misleading designations and representations in violation of 15 U.S.C. § 1125(a) against all Defendants; and breach of contract against AFTT and Prism.

         Defendants have filed a motion to dismiss the claims brought by Stoelting. (ECF No. 12.) Defendants make two principal arguments. First, Defendants argue that the Court lacks personal jurisdiction over them. Second, Defendants assert that venue is improper in this Court. In the alternative, Defendants request that the action be transferred to the Central District of California for the convenience of the parties. Plaintiff requests limited jurisdictional discovery if questions remain concerning personal jurisdiction over Levine in his individual capacity. (ECF No. 37.) Finally, Defendants filed a motion for leave to file a sur-sur-reply and for limited jurisdictional discovery and oral argument to address issues raised in Plaintiff's sur-reply. (ECF No. 40.) For the reasons set forth below, Defendants' motion to dismiss for lack of personal jurisdiction will be denied. Defendants' motion to dismiss for improper venue and motion to transfer will also be denied. Additionally, Plaintiff's motion for limited jurisdictional discovery and Defendants' motion for leave to file a sur-sur-reply and for jurisdictional discovery and oral argument will also be denied.

         BACKGROUND

         Stoelting is a Limited Liability Company with its headquarters in Kiel, Wisconsin. (Compl., ECF No. 1, ¶ 6.) Stoelting utilizes the Stoelting® Mark in connection with Stoelting's manufacture, distribution, sales, marketing, advertising, and promotion of its frozen confection and distributing equipment. (Id. ¶¶ 11-12.) Stoelting owns the United States Trademark Registration No. 0823348, registered in 1967, for the Stoelting® Mark for “frozen confection and distributing equipment.” (Id. ¶ 11.) The Stoelting® Mark is widely recognized and respected in the foodservice industry as indicative of high-quality frozen confection equipment, such as soft serve, yogurt, shake, custard, and frozen beverage dispensers. (Id. ¶¶ 10, 17-20.)

         AFTT is a California corporation with its principal place of business in the state of California. (Id. ¶ 8.) Prism is a Nevada corporation with its principal place of business in the state of Washington. (Id. ¶ 9). Steven J. Levine is a natural born U.S. citizen domiciled in the state of Washington and is the President and Chief Executive Officer of both AFTT and Prism. (ECF No. 14 at 2.) In 2011, Stoelting entered into distribution agreements with AFTT and Prism to make them authorized distributors of Stoelting products. (Compl., ECF No. 1, ¶¶ 24-25.) AFTT's sales territory under the Stoelting Distribution Agreement included 13 counties in California and Prism's sales territory under the Stoelting Distribution Agreement included four counties in the state of Washington and 27 counties in Oregon. (Id. Ex. C, 8.; Ex. D, 8.)

         It is undisputed that during the course of the parties' nearly five year long contractual relationship, AFTT and Prism purchased large quantities of products from Stoelting in Wisconsin, Stoelting shipped those products from Wisconsin, and AFTT and Prism sent the payments to Stoelting in Wisconsin. (Koehl Decl., ECF No. 18 ¶ 13.) The majority of all Stoelting equipment was manufactured in Wisconsin. (Id. ¶ 15.) As part of the distribution agreements, Stoelting imposed certain standards and requirements on AFTT and Prism, such as “maintain warehouses stocked with at least the minimum amount of Stoelting inventory, maintain insurance policies with specified limits naming Stoelting as an additional insured . . . provide financial statements and reports to Stoelting upon request, and provide service on Stoelting equipment pursuant to Stoelting's warranty.” (Id. ¶ 9.) Levine, as president of AFTT and Prism, communicated with Stoelting via emails and phone calls. (Id. ¶¶ 12, 16, 24.) Levine also made a presentation at a Stoelting distributor meeting in Wisconsin in 2014. (Id. ¶¶ 27-28.) AFTT never made any sales in the state of Wisconsin and Prism made only one. (ECF No. 14 at 3-4.) AFTT, Prism, and Levine do not have bank accounts, properties, businesses, mailing addresses, or physical addresses within the state of Wisconsin. (Id. at 3.)

         Plaintiff alleges that it properly terminated the distribution agreements for both AFTT and Prism no later than January 31, 2016. (Compl., ECF No. 1, ¶ 23.) Plaintiff further alleges AFTT and Prism failed to return all marketing, promotional, and advertising materials after the termination and continued to present themselves to the public as authorized users of Stoelting products. (Id. ¶¶ 42-43.) Those materials include the Stoelting® Mark, which Plaintiff alleges Defendants continued to use on their websites. (Id. ¶¶ 43-44.) Plaintiff alleges Levine personally used the Stoelting® Mark in a way that infringes on Plaintiff's trademark. (Id. ¶¶ 61-67.) Plaintiff further alleges that AFTT and Prism breached the distribution agreement by failing to return Plaintiff's materials, making unauthorized extraterritorial sales, wrongfully taking payments, and failing to pay amounts owed to Plaintiff. (Id. ¶ 82.)

         ANALYSIS

         A. Personal Jurisdiction

         In a dispute over personal jurisdiction, the plaintiff has the burden of proving that jurisdiction exists. Advance Tactical Ordnance Systems, LLC v. Real Action Paintball, Inc., 751 F.3d 796, 799-800 (7th Cir. 2014). If the case involves both federal and state claims, but the federal statute does not have a special rule for personal jurisdiction, the court applies the law of the forum. See Id. at 800; Fed.R.Civ.P. 4(k). The federal claim in this case (the Lanham Act) does not have a special rule for personal jurisdiction, so this Court will use Wisconsin law.

         Under Wisconsin law, determining whether personal jurisdiction may be exercised requires a two-step inquiry. First, the court must determine whether defendants are subject to jurisdiction under Wisconsin's long-arm statute, Wis.Stat. § 801.05. Kopke v. A. Hartrodt, S.R.L., 2001 WI 99, ¶ 8, 245 Wis.2d 396, 629 N.W.2d 662. Second, if the statutory requirements are satisfied, the court must decide whether the exercise of jurisdiction comports with the requirements of due process. Id. Personal jurisdiction may be exercised only if both requirements are met: the statute must authorize the exercise of jurisdiction and the exercise of jurisdiction must not offend due process. To decide that issue, I turn first to Wisconsin's long-arm statute.

         1. Long-Arm Statute

         Plaintiff claims that AFTT, Prism, and Levine's trademark infringement actions and AFTT and Prism's breach of contract actions fall under the local services, goods, or contracts provision and the local property provision of ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.