United States District Court, D. Utah
MEMORANDUM DECISION AND ORDER ORDER DENYING
DEFENDANTS' MOTIONS TO DISMISS
N. Parrish United States District Court Judge
the court are motions to dismiss filed by Defendant Hashtag
Fulfillment (ECF No. 29) and by Defendant Private Label Sk.In
(ECF No. 30). The motions are substantially similar, and both
argue that this court does not have personal jurisdiction
over them in this action. For the reasons below, those
motions are denied.
Nutramax Laboratories, Inc. (“Nutramax”) is a
South Carolina corporation headquartered in Lancaster, South
Carolina. For decades, it has sold nutritional supplements in
the United States and abroad under the trademarked name
NUTRAMAX LABORATORIES. Defendant Hashtag Fulfillment, LLC
(“Hashtag”) is or was (there is some debate) a
Florida LLC with a principal place of business in St.
Petersburg, Florida. Defendant Private Label Sk.In NA, LLC
(“Private Label”) is a Delaware LLC with a
principal place of business also in St. Petersburg, Florida.
Defendant Spinzar Fulfillment Corporation
(“Spinzar”) is a Utah corporation with a
principal place of business in Bluffdale, Utah.
verified complaint alleges that Hashtag, Private Label, and
Spinzar all “manufacture, package, distribute,
advertise, market, offer to sell, and sell
‘natural' supplements” that include
“Steelcut Testosterone” and “Muscle Boost
XT.” ECF No. 2 at ¶ 28. Those products, and the
defendants' websites advertising them, allegedly employ
counterfeit iterations of Nutramax's name and trademark.
Id. at ¶ 29.
action, Nutramax brings claims for trademark infringement,
false designation of origin, violations of the Utah Unfair
Competition Act, and a request for preliminary and permanent
and Private Label move to dismiss Nutramax's verified
complaint for lack of personal jurisdiction pursuant to Rule
12(b)(2) of the Federal Rules of Civil
Procedure. As the plaintiff, Nutramax bears the
burden of establishing personal jurisdiction. Shrader v.
Biddinger, 633 F.3d 1235, 1239 (10th Cir. 2011).
“[B]ut where, as here, the issue is raised early on in
litigation, based on pleadings (with attachments) and
affidavits, that burden can be met by a prima facie
showing.” Id. In determining whether Nutramax
has made its prima facie showing of jurisdiction,
the court must “resolve any factual disputes in the
plaintiff's favor.” Id.
claims federal jurisdiction under the Lanham Act's
trademark law, 15 U.S.C. § 1121. But the Lanham Act does
not provide for nationwide service of process. See
Blueberry Hill LLC v. Shalom Int'l Corp., No.
2:17-cv-00385-DS, 2017 WL 5508347, at *2 (D. Utah Nov. 15,
2017). Consequently, the court looks to Utah law for the
limits of its jurisdiction over out-of-state defendants.
See Fed. R. Civ. P. 4(k)(1)(A).
long-arm statute “should be applied so as to assert
jurisdiction over nonresident defendants to the fullest
extent permitted by the due process clause of the Fourteenth
Amendment to the United States Constitution.” Utah Code
Ann. § 78B-3-201(3); accord SII MegaDiamond, Inc. v.
Am. Superabrasives Corp., 969 P.2d 430, 433 (Utah 1998).
Therefore, the court need only address whether the exercise
of personal jurisdiction over the defendants comports with
due process demands.
Supreme Court has held that, to exercise jurisdiction in
harmony with due process, defendants must have ‘minimum
contacts' with the forum state, such that having to
defend a lawsuit there would not ‘offend traditional
notions of fair play and substantial justice.'”
Dudnikov v. Chalk & Vermillion Fine Arts, Inc.,
514 F.3d 1063, 1070 (10th Cir. 2008) (quoting Int'l
Shoe Co. v. Washington, 326 U.S. 310, 316 (1945)). A
defendant's contacts with the forum state may give rise
to either general or specific personal jurisdiction. But
Nutramax concedes that Hashtag and Private Label are not
subject to general personal jurisdiction in Utah. Therefore,
the question is whether those defendants are subject to
specific jurisdiction in Utah.
jurisdiction is a two-step inquiry. The court must consider
“(a) whether the plaintiff has shown that the defendant
has minimum contacts with the forum state; and, if so, (b)
whether the defendant has presented a ‘compelling case
that the presence of some other considerations would render
jurisdiction unreasonable.'” Old Republic Ins.
Co. v. Continental Motors, Inc., 877 F.3d 895, 904 (10th
Cir. 2017) (quoting Burger King Corp. v. Rudzewicz,
471 U.S. 462, 476-77 (1985)).
the court must consider whether a defendant has sufficient
contacts with the forum state. A defendant's contacts
with the forum state are sufficient when two requirements are
met: (1) “the defendant purposefully directed its
activities at residents of the forum, ” and (2)
“the plaintiff's claim arises out of or results
from the actions by the defendant himself that create a
substantial connection with the forum state.” Pro
Axess, Inc. v. Orlux Distribution, Inc., 428 F.3d 1270,
1277 (10th Cir. 2005) (citation omitted). Here, both
requirements are satisfied.
first consideration in the minimum contacts analysis is
whether the defendants purposefully directed activities at
residents of the forum. “In the tort context, we often
ask whether the nonresident defendant ‘purposefully
directed' its activities at the forum state; in contract
cases, meanwhile, we sometimes ask whether the defendant
‘purposefully availed' itself of the privilege of
conducting activities or consummating a transaction in the
forum state.” Dudnikov, 514 F.3d at 1071.
Regardless of the particular word choice, this
“requirement ensures that a defendant will not be haled
into a jurisdiction solely as a result of random, fortuitous,
or attenuated contacts, or of the unilateral activity of
another party or third person.” Burger King,
471 U.S. at 475 (citations omitted). Instead, jurisdiction is
proper “where the contacts proximately result from
actions by the defendant himself that create a
substantial connection with the forum State.”
Id. (citation omitted). Consequently,
where the defendant deliberately has engaged in significant
activities within a State, or has created continuing
obligations between himself and residents of the forum, he
manifestly has availed himself of the privilege of conducting
business there, and because his activities are shielded by
the benefits and protections of the forum's laws it is