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PUBLICATIONS INTL., LTD. v. SIMON & SCHUSTER

March 20, 1991

PUBLICATIONS INTERNATIONAL, LTD., an Illinois corporation, Plaintiff,
v.
SIMON & SCHUSTER, INC., a New York corporation, and TWIN PEAKS PRODUCTIONS, INC., a California corporation, Defendants


Marvin E. Aspen, United States District Judge.


The opinion of the court was delivered by: ASPEN

MARVIN E. ASPEN, UNITED STATES DISTRICT JUDGE

 Publications International, Ltd. ("PIL") filed this action seeking a declaratory judgment that its admittedly unlicensed book, "Welcome to Twin Peaks -- A Complete Guide to Who's Who & What's What," does not infringe any trademark or copyright registered or owned by Twin Peaks Productions, Inc. ("TP Productions"). *fn1" 28 U.S.C. ยงยง 1332, 1338, 2201, 2202 (1988). TP Productions has moved to dismiss the complaint under Federal Rule of Civil Procedure 12(b)(2) ("lack of jurisdiction over the person") and 12(b)(3) ("improper venue"). For the reasons set forth herein, we grant the motion and dismiss the complaint.

 I.

 PIL is a company which publishes a variety of consumer resource books and periodicals (including "Consumer Guide"). PIL claims that its publications "evaluate, critique and comment upon products and current events which impact the purchasing public." Complaint at 2. PIL is an Illinois corporation with its principal place of business in Lincolnwood, a Chicago suburb. It also maintains a small office in New York City. "Welcome to Twin Peaks" contains 128 pages of episodic plot summary, character description, and illustrative photographs. Its cover price is $ 3.95.

 TP Productions produced the much-ballyhooed (but now apparently cancelled) network television series "Twin Peaks," the (as PIL's book aptly puts it) "loopy, brooding, and surrealistic" prime-time soap opera that generated critical acclaim (fourteen Emmy nominations in 1990) and, at least initially, a large and rabid viewing audience. The production company is incorporated in California, and has its principal place of business in that state as well. It holds copyrights in all of the Twin Peaks programs thus far aired, and also owns various Twin Peaks trademarks.

 On October 5, 1990, TP Productions' New York counsel sent a letter to PIL's New York office demanding that PIL discontinue publication of "Welcome to Twin Peaks." PIL promptly filed an amendment to its original action adding TP Productions as a defendant.

 II.

 The party asserting the existence of jurisdiction bears the burden of proof. O'Hare Int'l Bank v. Hampton, 437 F.2d 1173, 1176 (7th Cir. 1971); see also Saylor v. Dyniewski, 836 F.2d 341, 342 (7th Cir. 1988). A federal district court in Illinois has personal jurisdiction over a non-resident party "only if an Illinois state court could have such jurisdiction." E.J. McGowan & Assoc., Inc. v. Biotechnologies, Inc., 736 F. Supp. 808, 809, 15 U.S.P.Q.2D (BNA) 1145 (N.D. III. 1990) (citations omitted). An Illinois state court might obtain jurisdiction over a non-resident party by demonstrating either that the defendant is "doing business" within the state, or that it is "subject to jurisdiction under the state's long arm statute." Id. (citing, inter alia, Asset Allocation & Management Co. v. Western Employers Ins. Co., 892 F.2d 566, 570 (7th Cir. 1989)). TP Productions is clearly not "doing business" in Illinois, as that phrase is used in the common law context. It does not maintain an office, mailing address, or telephone number in Illinois. It does not have any agents, employees, or real property in Illinois. See E.J. McGowan, 736 F. Supp. at 809-10. Therefore, we will focus on the reach of the state's long-arm statute.

 PIL contends that Illinois' long-arm statute, Ill. Ann. Stat. ch. 110, para. 2-209 (Smith-Hurd 1990 Supp.), *fn2" would plainly confer jurisdiction over TP Productions to a state court, and hence a federal court. It argues that:

 
there is no question that [TP Productions] has produced a television program which has been shown within the State of Illinois weekly for several months. The sole purpose of producing this, or any other commercial television program is to convince the public to watch it. Television programs continue to be made and shown by commercial television stations only if they have sufficient ratings to justify their continued exhibition. If insufficient numbers of viewers "tune in," the program is canceled, and it disappears from the air waves. Thus, the entire effort of [TP Productions] in producing its television show is to devise a show or series of shows which will catch the public's fancy. [TP Productions] has been successful in this attempt. It was this success which led to the preparation and publications of PIL's book, the purpose of which was to analyze the popularity of Twin Peaks and to provide the public with further information about that television series.

 PIL's Memorandum at 6.

 The Illinois long-arm statute is measured by federal constitutional standards. Morgan v. GTECH Corp., No. 90 C 238, slip. op. at 10 (N.D. Ill. Dec. 18, 1990) (1990 U.S. Dist. LEXIS 17252). *fn3" More specifically, the statute's parameters are contiguous to the due process "minimum contacts" standard. FMC Corp. v. Varonos, 892 F.2d 1308, 1310 n. 5 (7th Cir. 1990). Thus, the person over whom personal jurisdiction is sought -- TP Productions -- must "have certain minimum contacts" with Illinois "such that the maintenance of the suit does not offend 'traditional notions of fair play and substantial justice.'" International Shoe Co. v. Washington, 326 U.S. 310, 316, 66 S. Ct. 154, 158, 90 L. Ed. 95 (1945) (quoting Milliken v. Meyer, 311 U.S. 457, 463, 61 S. Ct. 339, 343, 85 L. Ed. 278 (1940)); see also World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 292, 100 S. Ct. 559, 564, 62 L. Ed. 2d 490 (1980).

 The due process analysis entails a determination of whether "the defendant's conduct and connection with the forum State are such that he should reasonably anticipate being haled into court there." World-Wide Volkswagen, 444 U.S. at 297, 100 S. Ct. at 567. The "constitutional touchstone" is "whether the defendant purposefully established 'minimum contacts' in the forum State." Burger King Corp. v. Rudzewicz, 471 U.S. 462, 474, 105 S. Ct. 2174, 2183, 85 L. Ed. 2d 528 (1985). The minimum contacts requirement is satisfied if there is "'some act by which the defendant purposefully avails himself of the privilege of ...


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