United States District Court, D. Delaware
JOSEPH G. MCDONOUGH, Plaintiff,
DEBORAH A. GORMAN, BE POSITIVE WORKS, LLC, and B FOUNDATION, INC., Defendants.
HONORABLE LEONARD P. STARK UNITED STATES DISTRICT JUDGE.
Joseph G. McDonough ("Plaintiff or
"McDonough") brought this action against Deborah A.
Gorman ("Gorman"), Be Positive Works, LLC
("LLC"), and B Foundation, Inc. ("Inc."
and, collectively with Gorman and LLC,
"Defendants"). Plaintiff alleges trademark
infringement and unfair competition under the Lanham Act and
Delaware statutory and common law.
before the Court is Defendants' motion to dismiss for
lack of personal jurisdiction pursuant to Federal Rule of
Civil Procedure 12(b)(2) or, in the alternative, to transfer
the case to the Southern District of New York pursuant to 28
U.S.C. § 1404(a). (D.I. 10) For the reasons stated
below, the Court will GRANT Defendants'
Motion to Dismiss for Lack of Personal Jurisdiction
Rule of Civil Procedure 12(b)(2) directs the Court to dismiss
a case when it lacks personal jurisdiction over the
defendant. Determining the existence of personal jurisdiction
involves a two-part analysis. First, the Court analyzes the
long-arm statute of the state in which the Court is located.
See IMO Indus., Inc. v. Kiekert AG, 155 F.3d 254,
259 (3d Cir. 1998). Next, the Court determines whether
exercising jurisdiction over the defendant in the state
comports with the Due Process Clause of the Constitution.
See Id. Due process is satisfied if the Court finds
the existence of "minimum contacts" between the
non-resident defendant and the forum state, "such that
the maintenance of the suit does not offend traditional
notions of fair play and substantial justice."
Int'l Shoe Co. v. Washington, 326 U.S. 310, 316
(1945) (internal quotations omitted).
jurisdictional defense has been raised, the plaintiff bears
the burden of establishing, by a preponderance of the
evidence and with reasonable particularity, the existence of
sufficient minimum contacts between the defendant and the
forum to support jurisdiction. See Provident Nat'l
Bank v. Cal. Fed. Sav. & Loan Ass'n, 819
F.2d434, 437 (3d Cir. 1987); Time Share Vacation Club v.
Atl. Resorts, Ltd., 735 F.2d 61, 66 (3d Cir.
1984). To meet this burden, the plaintiff must produce
"sworn affidavits or other competent evidence, "
since a Rule 12(b)(2) motion "requires resolution of
factual issues outside the pleadings." Time
Share, 735 F.2d at 67 n.9.
Supreme Court has held that "where issues arise as to
jurisdiction or venue, discovery is available to ascertain
the facts bearing on such issues." Oppenheimer Fund,
Inc. v. Sanders, 437 U.S. 340, 351 n.13 (1978). The
Third Circuit instructs that if "the plaintiffs claim is
not clearly frivolous, the district court should ordinarily
allow discovery on jurisdiction in order to aid the plaintiff
in discharging . . . [its] burden." Metcalfe v.
Renaissance Marine, Inc., 566 F.3d 324, 336 (3d Cir.
2009). Jurisdictional discovery may be denied "where the
party that bears the burden of establishing jurisdiction
fails to establish a threshold prima facie showing of
personal jurisdiction." S. Seafood Co. v. Holt Cargo
Sys., Inc., 1997 WL 539763, at *8 (E.D. Pa. Aug. 11,
1997) (internal quotation marks omitted).
contends that the Court can exercise jurisdiction over
Defendants under subsections (c)(1) or (c)(3) of
Delaware's long-arm statute, which provide the Court with
personal jurisdiction over any nonresident who (among other
things) "[t]ransacts any business or performs any
character of work or service in the State, " or
"[c]auses tortious injury in the State by an act or
omission in this State, " respectively. 10 Del. C.
§ 3104(c)(1), (3). McDonough alleges that subsections
(c)(1) and (c)(3) are applicable because Defendants sell and
deliver products to Delaware consumers through their website.
(D.I. 12 at 7) According to McDonough, "Delaware courts
have held that a single direct sale of an infringing product
to a Delaware customer satisfies subsection (c)(1) of the
Delaware long-arm statute." (Id.) (citing
Godo Kaisha IP Bridge I v. TCL Commc'n Tech. Holdings
Ltd., 2016 WL 4413140, at *5 (D. Del. Aug. 17, 2016)) In
his view, it follows that Defendants' two
"intentional" shipments to Delaware customers
satisfy the Delaware long-arm statute.
alternative theory, McDonough asserts that the Court has
jurisdiction under Delaware's long-arm statute through a
theory of "dual jurisdiction." (Id. at 8)
Dual jurisdiction may apply where Defendants have: "(1)
an intent to serve the Delaware market;... (2)... this intent
results in the introduction of the product into the market[;]
and [(3)... the] plaintiffs cause of action arises from
injuries caused by that product." Robert Bosch LLC
v. Alberee Products, Inc., 70 F.Supp.3d 665, 675 (D.
Del. 2014) (internal citations and quotation marks omitted).
McDondugh argues that these requirements are satisfied
because Defendants operate a website accessible in Delaware,
received orders and payments from customers in Delaware, and
shipped their products into Delaware; also, his causes of
action arise from injuries caused by Defendants'
products' introduction into Delaware. (D.I. 12 at 8)
has failed to show that this Court may exercise personal
jurisdiction over Defendants.
Plaintiff s theories for finding jurisdiction rest on just
two sales: (1) a 2013 order placed with Defendant
Gorman's prior company; and (2) a 2016 order by Plaintiff
s attorneys, placed two months before the filing of
McDonough's complaint. (D.I. 14 at 1-2) ...