IP Law Daily, TRADEMARK—N.D. Ill.: Trademark registration and complaints filed with Amazon provide sufficient contacts for court to exercise jurisdiction over Australian defendant under Rule 4(k)(2), (Jan 30, 2024)

By Robert Margolis, J.D.

Court denies Australian company’s motion to dismiss for lack of personal jurisdiction.

While Australian company Orbital Structures Pty Ltd. lacks sufficient contacts with the State of Illinois to be subject to personal jurisdiction under the Illinois long-arm statute, its contacts with the United States as a whole sufficed for federal long-arm jurisdiction under Federal Rule of Civil Procedure 4(k)(2), the federal district court in Chicago has held. Citing Orbital’s registration of a federal trademark with the United States Patent and Trademark Office (“USPTO”) and repeated requests that Amazon remove listings for a toy manufactured by Wanfan Technology Co., Ltd., the court denied Orbital’s motion to dismiss Wanfan’s Lanham Act and other claims (Shenzhen Wanfan Technology Co. Ltd. v. Orbital Structures Pty. Ltd. , January 29, 2024, Wood, A.).

Removals from Amazon. Wanfan, a Chinese limited liability company, operates several e-commerce stores using the Amazon marketplace platform, selling items to United States consumers, including a multi-colored cube toy under the trademark “iKeelo.” Wanfan alleges that beginning around 2022, Orbital repeatedly registered complaints with Amazon claiming the iKeelo toy infringes Orbital’s trademarks and copyrights. These complaints led Amazon to remove iKeelo listings on several occasions. Orbital based its removal requests to Amazon on the assertion that the iKeelo toy infringes its “CMY Cubes” trademark that it also registered with the USPTO, as well as related copyrights.

Wanfan sued Orbital in the Northern District of Illinois, claiming that Orbital’s complaints to Amazon are frivolous, and caused damage to its business. Wanfan brought claims (1) under the federal Declaratory Judgment Act, seeking a declaration that the iKeelo toy does not infringe Orbital’s trademarks or copyrights, and that the CMY trademark is invalid; (2) under the Lanham Act, 15 U.S.C. § 1120, for false or fraudulent trademark registration; and (3) state law tortious interference. Orbital, with a principal place of business is Australia and no physical presence outside of that country, moved to dismiss. It argued it was not correctly served process, lack of personal jurisdiction, and improper venue. The court denied the motion in its entirety.

Personal jurisdiction. The court first determined that it could not subject Orbital to personal jurisdiction based on the Illinois long-arm statute because Orbital lacked sufficient contacts with the state of Illinois. Wanfan asserted only specific personal jurisdiction over Orbital, based on Orbital’s conduct specific to Wanfan’s claims. Wanfan contended the Illinois statute confers jurisdiction based on Orbital’s interference with Wanfan’s Illinois customers. But as the court pointed out, Orbital cannot be haled into an Illinois court just because Wanfan cultivated customers in Illinois. Orbital’s contacts must be based on Orbital’s conduct, not Wanfan’s. Further, Wanfan did not claim that Orbital interfered with Illinois customers any more than it interfered with Wanfan’s customers in other states; its alleged interference was not specifically directed at Illinois. Finally, the fact that Orbital used an Illinois attorney to file a trademark application with the USPTO was merely a fortuitous contact with Illinois that does not establish a relationship between Illinois and the claims of trademark infringement, the court held.

While the Illinois long-arm statute was not the answer for Wanfan, Rule 4(k)(2) of the Federal Rules of Civil Procedure provided a basis for the court to exercise personal jurisdiction, the court held. That Rule, sometimes referred to as a federal long-arm statute, provides for personal jurisdiction over certain persons who do not reside in the United States, but who have ample contacts with the country as a whole, which contacts are too scattered among states such that no state would itself have jurisdiction. The court held that Wanfan pleaded all of the requisites to exercise personal jurisdiction over Orbital under Rule 4(k)(2).

First, Wanfan asserted federal claims against Orbital. Second, Orbital did not have sufficient contacts with any individual state for that state to exercise personal jurisdiction. A defendant who wants to preclude use of Rule 4(k)(2) must identify a state in which a suit could proceed, and Orbital identified no such state. Third, the exercise of jurisdiction is not inconsistent with any federal law that Orbital could identify. Finally, Orbital did have sufficient contacts with the United States as a whole, through its registration of a federal trademark with the USPTO, as well as its complaints filed with the United States company Amazon. While the court noted some disagreement among federal courts as to whether the mere registration of a trademark with the USPTO, by itself, suffices to establish adequate contact with the United States as a whole, the court did not need to address the question because Orbital did not argue it. It is certainly a relevant contact in this case, and that coupled with Orbitals complaints with Amazon resulting in the takedown of Wanfan’s listings was enough. Registering its trademark in the United States and then taking action to enforce it in this country in a manner that interferes with Wanfan’s U.S. sales met the standard for subjecting Orbital to litigation in a United States district court.

Hague service. Orbital had also argued that service of process was improper, as it was served via personal service in Australia at the address listed as its registered address and principal place of business. Under Federal Rule of Civil Procedure 4(f)(1), a foreign corporation may be served under methods authorized by the Hague Convention on Service Abroad of Judicial and Extrajudicial Documents (“Hague Convention”). Australia is a signatory of the Hague Convention, and has not objected to personal service as a means of serving corporations, so service by that means sufficed, the court held.

Venue. The court dispatched Orbital’s venue argument in one sentence, noting that under 28 U.S.C. § 1391(C)(3), a defendant that is not a United States resident may be sued in any judicial district.

The Case is No. 1:23-cv-02330.

Attorneys: Timothy Tiewei Wang (Ni, Wang & Massand, PLLC) for Shenzhen Wanfan Technology Co Ltd. Kevin John Keener (Keener and Associates, PC) for Orbital Structures Pty. Ltd.

Companies: Shenzhen Wanfan Technology Co Ltd.; Orbital Structures Pty. Ltd.

Cases: Trademark IllinoisNews