Indiana doesn’t have jurisdiction in IP suit, rules 7th Circuit

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The 7th Circuit Court of Appeals ordered a District judge to dismiss a case filed by a company with California ties against another California company alleging various IP violations. The judges found Indiana does not have personal jurisdiction over the matter based on emails the allegedly offending company sent.

Advanced Tactical, which manufactures and sells PepperBall branded items, filed its lawsuit against Real Action Paintball Inc. in the Northern District of Indiana, alleging violations of the Lanham Act, common law trademark infringement and unfair competition, trade dress infringement and misappropriation of trade secrets. The lawsuit stems from an email Real Action sent out in 2012 and a message on its website that announced it had acquired the machinery, recipes and materials once used by PepperBall Technologies Inc. But Advanced Tactical had acquired PepperBall Technologies after the business went into foreclosure.

Advanced Tactical claims to have a headquarters in Indiana, but that is unclear, according to the court record. After holding an evidentiary hearing, the District judge concluded the court had personal jurisdiction and that Advanced Tactical was entitled to a preliminary injunction.

The District Court found the necessary minimum contacts based on the following: Real Action fulfilled several orders of the allegedly infringing projectiles for purchasers in Indiana; it knew Advanced Tactical was an Indiana company and could foresee that the misleading emails and sales would harm Advanced Tactical in Indiana; it sent at least two misleading email blasts to a list that included Indiana residents; it had an interactive website available to residents of Indiana; and it put customers on their email list when they made a purchase, thereby giving the company some economic advantage.

But in Advanced Tactical Ordinance Systems Inc. v. Real Action Paintball Inc. and K.T. Tran, 13-3005,  the 7th Circuit found none of these meets the standards the Supreme Court of the United States has set governing specific jurisdiction.

“Specific jurisdiction must rest on the litigation-specific conduct of the defendant in the proposed forum state. The only sales that would be relevant are those that were related to Real Action’s allegedly unlawful activity. Advanced Technical – which has the burden of proof here – has not provided evidence of such sales,” Chief Judge Diane Wood wrote.

“To hold otherwise would mean that a plaintiff could bring suit in literally any state where the defendant shipped at least one item,” she continued.

The act that Real Action maintains an email list to allow it to shower past customers and subscribers with company-related emails doesn’t show a relation between the company and Indiana, the 7th Circuit ruled. “The connection between the place where an email is opened and a lawsuit is entirely fortuitous.”

The judges also found the interactivity of a website is a poor proxy for adequate in-state contacts. The case is remanded with instructions to vacate the judgment and dismiss the case for lack of personal jurisdiction.


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  1. If a class action suit or other manner of retribution is possible, count me in. I have email and voicemail from the man. He colluded with opposing counsel, I am certain. My case was damaged so severely it nearly lost me everything and I am still paying dearly.

  2. There's probably a lot of blame that can be cast around for Indiana Tech's abysmal bar passage rate this last February. The folks who decided that Indiana, a state with roughly 16,000 to 18,000 attorneys, needs a fifth law school need to question the motives that drove their support of this project. Others, who have been "strong supporters" of the law school, should likewise ask themselves why they believe this institution should be supported. Is it because it fills some real need in the state? Or is it, instead, nothing more than a resume builder for those who teach there part-time? And others who make excuses for the students' poor performance, especially those who offer nothing more than conspiracy theories to back up their claims--who are they helping? What evidence do they have to support their posturing? Ultimately, though, like most everything in life, whether one succeeds or fails is entirely within one's own hands. At least one student from Indiana Tech proved this when he/she took and passed the February bar. A second Indiana Tech student proved this when they took the bar in another state and passed. As for the remaining 9 who took the bar and didn't pass (apparently, one of the students successfully appealed his/her original score), it's now up to them (and nobody else) to ensure that they pass on their second attempt. These folks should feel no shame; many currently successful practicing attorneys failed the bar exam on their first try. These same attorneys picked themselves up, dusted themselves off, and got back to the rigorous study needed to ensure they would pass on their second go 'round. This is what the Indiana Tech students who didn't pass the first time need to do. Of course, none of this answers such questions as whether Indiana Tech should be accredited by the ABA, whether the school should keep its doors open, or, most importantly, whether it should have even opened its doors in the first place. Those who promoted the idea of a fifth law school in Indiana need to do a lot of soul-searching regarding their decisions. These same people should never be allowed, again, to have a say about the future of legal education in this state or anywhere else. Indiana already has four law schools. That's probably one more than it really needs. But it's more than enough.

  3. This man Steve Hubbard goes on any online post or forum he can find and tries to push his company. He said court reporters would be obsolete a few years ago, yet here we are. How does he have time to search out every single post about court reporters and even spy in private court reporting forums if his company is so successful???? Dude, get a life. And back to what this post was about, I agree that some national firms cause a huge problem.

  4. rensselaer imdiana is doing same thing to children from the judge to attorney and dfs staff they need to be investigated as well

  5. Sex offenders are victims twice, once when they are molested as kids, and again when they repeat the behavior, you never see money spent on helping them do you. That's why this circle continues