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Eco Pro Painting, LLC v. the Sherwin-Williams Co. and Swimc

August 10, 2011

ECO PRO PAINTING, LLC, PLAINTIFF,
v.
THE SHERWIN-WILLIAMS CO. AND SWIMC, INC., DEFENDANTS.



The opinion of the court was delivered by: Matthew F. Kennelly, District Judge:

MEMORANDUM OPINION AND ORDER

Eco Pro Painting has sued The Sherwin Williams Company (Sherwin-Williams) and its wholly-owned subsidiary, SWIMC, Inc., for trademark infringement. SWIMC has moved to dismiss for lack of personal jurisdiction. For the reasons stated below, the Court grants SWIMC's motion.

Facts

Eco Pro Painting is a painting service located in a Chicago suburb that markets itself as using environmentally-friendly paint products. Eco Pro Painting alleges that it has been using the name "Eco Pro" in its marketing materials since 2007.

In 2009, Sherwin-Williams, an Ohio corporation that sells paint and related products nationwide, applied for and received a federal trademark registration for the mark "Eco Pro" for paint applicators. Sherwin-Williams then assigned the rights to the trademark to SWIMC, a Delaware holding company with its principal place of business in Delaware. Pursuant to a license agreement, SWIMC licenses the trademark to Sherwin-Williams on a non-exclusive basis for use nationwide. Sherwin-Williams has used the "Eco Pro" trademark in Illinois in connection with certain painting-related products.

Under the license agreement, SWIMC must approve all products bearing the Eco Pro trademark before they are released into the marketplace. Additionally, SWIMC may approve national advertisements and implement a variety of quality control policies, including personnel training and the right to inspect equipment, materials, and production facilities. The license agreement does not, however, grant SWIMC the right to exercise any control over Sherwin-Williams' sales activities. SWIMC retains the option, but not the obligation, to litigate any infringement case involving the trademark.

All of SWIMC's operations, assets, and officers are located in Delaware. SWIMC does not maintain any employees, offices, agents, bank accounts, or phone listings in Illinois, nor is it licensed to do business in Illinois. None of SWIMC's employees travels to Illinois for business, nor does SWIMC recruit any employees in Illinois.

On January 18, 2011, Eco Pro Painting sued Sherwin-Williams and SWIMC under the Lanham Act, 15 U.S.C. § 1125(a), and state law for trademark infringement and unfair competition. Eco Pro Painting contends that it has spent considerable time and money promoting and advertising its Eco Pro name and mark in Illinois and that it is irreparably harmed by the defendants' use of the Eco Pro mark.

Discussion

A federal district court may exercise personal jurisdiction over a non-resident defendant to the extent permissible under the state law of the forum. Fed. R. Civ. P. 4(k)(1)(A). Illinois' long-arm statute permits the exercise of personal jurisdiction if it would be allowed under the Illinois and United States Constitutions. 735 ILCS 5/2-209(c); see Mobile Anesthesiologists Chi., LLC v. Anesthesia Assocs. of Houston Metroplex, P.A., 623 F.3d 440, 443 (7th Cir. 2010). The Seventh Circuit has held that there is no material difference between these two constitutional provisions, and thus the analysis of personal jurisdiction collapses into a single question, namely whether the exercise of jurisdiction comports with federal due process. Id.; see also Tamburo v. Dworkin, 601 F.3d 693, 700 (7th Cir. 2010).

Federal due process allows a state to assert personal jurisdiction over a non-resident defendant if the defendant has had "certain minimum contacts with [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. State of Washington, 326 U.S. 310, 316 (1945) (quoting Milliken v. Meyer, 311 U.S. 457, 463 (1940)). Only the defendant's own activity can make jurisdiction proper, "not the unilateral activity of the plaintiff or some other entity." Purdue Research Found. v. Sanofi-Synthelabo, S.A., 338 F.3d 773, 780 (7th Cir. 2003). See also Calder v. Jones, 465 U.S. 783, 790 (1984) ("Each defendant's contacts with the forum State must be assessed individually.").

In examining a defendant's contacts with the forum state, a court must determine whether the defendant "purposefully avail[ed] itself of the privilege of conducting activities within the forum State, thus invoking the benefits and protections if its laws." Hanson v. Denckla, 357 U.S. 235, 253 (1958). If a defendant has done so, then it should "reasonably anticipate being haled into court there." World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 297 (1980).

If the plaintiff satisfies its initial burden of showing that the defendant "purposefully established minimum contacts with the forum State," then the court must determine whether the exercise of personal jurisdiction would offend "traditional notions of 'fair play and substantial justice.'" Burger King Corp. v. Rudzewicz, 471 U.S. 462, 476 (1985) (quoting Int'l Shoe, 326 U.S. at 320).

There are two types of personal jurisdiction, general and specific. Eco Pro Painting does not contend that general personal jurisdiction exists in Illinois over SWIMC. Rather, it argues that this Court has specific jurisdiction over SWIMC. Specific jurisdiction exists when the cause of action "arise[s] out of or [is] related to the defendant's contacts with ...


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