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Richmond v. National Institute of Certified Estate Planners

August 15, 2006

MICHAEL RICHMOND, AS TRUSTEE OF THE LIBERTY INSTITUTE TRUST, PLAINTIFF,
v.
NATIONAL INSTITUTE OF CERTIFIED ESTATE PLANNERS, ET AL., DEFENDANTS.



The opinion of the court was delivered by: Blanche M. Manning United States District Judge

MEMORANDUM AND ORDER

According to the complaint filed in this trademark action, Michael Richmond and Rex Black, the co-trustees of the Liberty Institute Trust, coined the term "certified estate planner" ("CEP") for use as a trademark in connection with the provision of educational services for estate planners. The trustees entered into negotiations to license the use of the CEP mark and eventually, this suit against defendants The National Institute of Certified Estate Planners ("NICEP") and NICEP's Directors followed.

NICEP presently seeks to dismiss Richmond's claims against it based on civil conspiracy (Count V), conversion (Count VI), and trespass to chattel (Count VII). In turn, NICEP's Directors, who have been sued in their individual capacities, seek to dismiss the claims against them, contending that this court cannot exercise personal jurisdiction over them. For the reasons set forth below: (1) the Directors' motion to dismiss for lack of personal jurisdiction is granted so all the counts directed at them are dismissed without prejudice; (2) NICEP's motion to dismiss the civil conspiracy claims against the Directors is stricken as moot since the court has already dismissed this count based on lack of personal jurisdiction; and (3) NICEP's motion to dismiss Richmond's conversion and trespass to chattel claims is granted.

I. Background

The court's task in providing a summary of the relevant facts is hampered by the fact that the parties did not highlight the relevant facts in their memoranda. Indeed, they did not include any summary of the facts whatsoever. With this in mind, the court will attempt to summarize the allegations in Richmond's 104-paragraph complaint, and will accept the allegations therein as true for the purpose of resolving the defendants' motions to dismiss.

Basically, Richmond alleges that he owns the CEP mark. This mark is associated with estate planning education and signifies that the person styling him or herself as a CEP has completed a ten-module unit of study in the area of estate planning, passed two examinations, and maintained a continuing education relationship with the program.

Beginning in late 2001, Richmond began to explore options to license the CEP mark. Eventually, Richmond and defendants Timothy Taylor, Dean Beckner, and David Clancy entered into an agreement allowing NICEP to use the CEP mark for three years for a total cost of $216,000. Shortly afterwards, Becker filed articles of incorporation in Indiana to incorporate NICEP.

In the meantime, Rex Black (the other trustee of the Liberty Institute Trust who, along with Richmond, came up with the CEP concept) also entered into an assignment which transferred the rights to use the certifications "CEP" and "Master CEP" to unspecified persons. Black later executed another assignment which transferred all rights to the CEP mark to NICEP. The second assignment thus purported to give NICEP the right to use the CEP mark. NICEP's lawyer recorded the second assignment with the United States Patent and Trademark Office ("USPTO").

Richmond claims that both of the assignments are invalid and that NICEP and its Directors knew this when NICEP recorded the second assignment with the USPTO. In his seven-count complaint, he alleges that NICEP and its Directors misappropriated the CEP mark in violation of 15 U.S.C. § 1120 (Count I), breached their contractual obligation to pay him for the use of the CEP mark (Count III), were unjustly enriched by their use of the CEP mark (Count IV), are liable for conversion (Count VI), and are liable for trespass to chattel (Count VII). With respect to NICEP individually, Richmond alleges that it engaged in trademark infringement in violation of 15 U.S.C. § 1114(1) (Count II). With respect to the Directors individually, Richmond alleges that they engaged in a civil conspiracy (Count V). The Directors contend that this court cannot exercise personal jurisdiction over them, while NICEP seeks to dismiss Counts V (civil conspiracy), VI (conversion), and VII (trespass to chattel) pursuant to Rule 12(b)(6).

II. Discussion

A. The Director's Motion to Dismiss for Lack of Personal Jurisdiction

1. Standard for a Motion to Dismiss for Lack of Personal Jurisdiction

In ruling on a motion to dismiss pursuant to Fed. R. Civ. P. 12(b)(2) based on lack of personal jurisdiction, the court may consider matters outside the pleadings, such as affidavits and other materials submitted by the parties. See Fed. R. Civ. P. 12(b). The plaintiff bears the burden of establishing personal jurisdiction by a preponderance of the evidence. Turnock v. Cope, 816 F.2d 332, 333 (7th Cir. 1987). In making its determination regarding personal jurisdiction, the court must resolve any factual disputes in the plaintiff's favor, but must accept the allegations in the complaint as true only to the extent that they are not controverted by other evidence in the record. Id. The court must also accept uncontested jurisdictional facts presented by the defendants as true. Connolly v. Samuelson, 613 F. Supp. 109, 111 (N.D. Ill. 1985).

Where the court's subject matter jurisdiction stems from diversity of citizenship, as in this case, the court may assert personal jurisdiction over a defendant only if personal jurisdiction would be proper in an Illinois court. Michael J. Neuman & Assoc., Ltd. v. Florabelle Flowers, Inc., 15 F.3d 721, 724 (7th Cir. 1994). Under the Illinois long-arm statute, Illinois state courts have general jurisdiction over nonresident defendants "doing business" in Illinois and specific jurisdiction ...


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