The opinion of the court was delivered by: Thomas W. Phillips United States District Judge
This trademark infringement case is before the court on the defendant's motion to dismiss for lack of personal jurisdiction and improper venue. Defendant Louis Scorpiniti asserts that this matter should be dismissed pursuant to Fed.R.Civ.P. 12(b)(2) due to lack of personal jurisdiction, and Fed.R.Civ.P. 12(b)(3) due to improper venue. Alternatively, Scorpiniti contends the matter should be transferred to the United States District Court for the Southern District of Iowa, Central Division, pursuant to 28 U.S.C. § 1404. Plaintiff America's Collectibles Network, Inc. has responded in opposition that personal jurisdiction and venue are proper and that this matter should not be dismissed or transferred. The court has carefully considered the pending motion and related pleadings in light of the entire record and controlling law. For the reasons which follow, Scorpiniti's motion to dismiss will be granted.
This is an action for declaratory judgment concerning the rights of defendant to the registered trademark "JTV." Plaintiff America's Collectibles Network (ACN) sells fine jewelry and gemstones through its Jewelry Television Network and over the internet. Its internet sales use the domain name www.jtv.com, among others. Defendant Scorpiniti has registered JTV as a trademark for television broadcasting with the U.S. Patent and Trademark Office. Scorpiniti uses JTV in connection with a television network called "Jesus TV."
On or about June 12, 2006, Scorpiniti called ACN and spoke with corporate counsel, Catherine Colocotronis, at ACN's headquarters in Knoxville, Tennessee. He advised that he had registered the trademark JTV for television broadcasting. Although Scorpiniti indicated that he would be willing to sell or license JTV to ACN, the parties were not able to reach an agreement on terms. ACN then initiated this action to obtain a judicial interpretation of the parties' rights.
Scorpiniti seeks to dismiss this action pursuant to Fed.R.Civ.P. 12(b)(2) for lack of personal jurisdiction, and Fed.R.Civ.P. 12(b)(3) for improper venue. In the alternative, Scorpiniti seeks to transfer the action pursuant to 28 U.S.C. § 1404 to the United States District Court for the Southern District of Iowa, Central Division.
Pursuant to Fed.R.Civ.P. 12(b)(2), which provides that a defense of lack of personal jurisdiction may be raised by motion, Scorpiniti asserts that this matter should be dismissed. Scorpiniti argues that he does not have sufficient minimum contacts with the forum state of Tennessee for the court under constitutional due process to have jurisdiction over his person. Scorpiniti does not reside in Tennessee. He has not conducted business here, either in general or as it specifically relates to the use of his registered trademark. Scorpiniti's only connection with the forum state was making a telephone call on June 12, 2006 to ACN's in-house corporate counsel in order to notify that company of his federally registered rights to the exclusive use of the mark and to instruct it to cease and desist its infringing use absent his express permission that it could use the mark. In response to that call and a follow-up call Scorpiniti made on June 13, 2006, ACN's in-house counsel on June 13, 2006 transmitted to Scorpiniti an e-mail that contained her version of the parties' telephone discussions and expressed ACN's interest to purchase Scorpiniti's rights to the mark JTV. After in-house counsel later telephoned Scorpiniti with ACN's offer to purchase his rights to the mark, Scorpiniti responded with a one-page letter dated June 26, 2006. Scorpiniti further states that he has had no other contacts with the forum state that involve his registered mark and ACN's infringing use. He has never personally appeared in the forum during any of these limited events. His only contacts with the forum state are the referenced two phone calls and one letter, all transmitted within a two-week period.
A motion to dismiss pursuant to Fed.R.Civ.P. 12(b)(2) requires the court to determine whether the plaintiff has alleged sufficient facts to support the exercise of personal jurisdiction over the defendant. In ruling upon a Rule 12(b)(2) motion, the court has three procedural alternatives: (1) the court may determine the motion on the basis of written submissions and affidavits alone; (2) it may permit discovery in aid of the motion; or (3) it may conduct an evidentiary hearing on the merits of the motion. See Serras v. First Tenn. Bank Nat'l Ass'n, 875 F.2d 1212, 1214 (6th Cir. 1989). In this case, the court will decide the matter based upon the briefs, affidavits, and other evidence submitted by the parties.
The plaintiff always bears the burden of establishing personal jurisdiction, but the weight of that burden depends upon the manner in which the court elects to proceed. Id. Where, as here, the court elects to rule without an evidentiary hearing, the plaintiff's burden is lightened considerably. In such a case, the plaintiff need only present a prima facie case for jurisdiction. Bridgeport Music, Inc. v. Still N The Water Pub.., 327 F.3d 472, 478 (6th Cir. 2003); Kerry Steel v. Paragon Indus., Inc., 106 F.3d 147, 149 (6th Cir. 1997); Nationwide Mut. Ins. Co. v. Tryg Int'l Ins. Co., Ltd., 91 F.3d 790, 792 (6th Cir. 1996). As with a Rule 12(b)(6) motion, the court should consider the pleadings and affidavits in the light most favorable to the plaintiff, however,"the plaintiff may not rest on his pleadings to answer the movant's affidavits, but must set forth, 'by affidavit or otherwise, ... specific facts showing that the court has jurisdiction.'" Serras, 875 F.2d at 1214 (quoting Weller v. Cromwell Oil Co., 504 F.2d 927, 930 (6th Cir. 1974)); see also Nationwide, 91 F.3d at 792.
Thus, as long as the plaintiff is able to "demonstrate facts which support a finding of jurisdiction," the motion to dismiss should be denied, even in the face of controverting evidence presented by the moving party. Serras, 875 F.2d at 1214; Am. Greetings Corp. v. Cohn, 839 F.2d 1164, 1169 (6th Cir. 1988).
When determining whether there is personal jurisdiction over a defendant, a federal court must apply the law of the state in which it sits, subject to constitutional limitations. Reynolds v. Int'l Amateur Athletic Fed'n, 23 F.3d 110, 1115 (6th Cir. 1994). Tennessee law provides as follows:
Persons who are nonresidents of Tennessee ... are subject to the jurisdiction of the courts of this state as to any action or claim for relief arising from ... (6) any basis not inconsistent with the ...