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Weber-Stephen Products LLC v. Char-Broil LLC

United States District Court, N.D. Illinois, Eastern Division

October 5, 2016

WEBER-STEPHEN PRODUCTS, LLC, Plaintiff,
v.
CHAR-BROIL, LLC, and W.C. BRADLEY CO., Defendants.

          MEMORANDUM OPINION AND

          Robert W. Gettleman United States District Judge.

         Plaintiff Weber-Stephen Products LLC, (“Weber”) has brought a three count complaint against Char-Broil, LLC, (“Char-Broil”) and its parent, W.C. Bradley Co. (“Bradley”), alleging one count of federal trademark infringement pursuant to 15 U.S.C. §1114, one count of federal trade dress infringement, unfair competition and false designation of origin pursuant to 15 U.S.C. §1125(a), and one count of federal trademark dilution pursuant to 15 U.S.C. §1125(c). Both defendants have moved to dismiss for lack of personal jurisdiction and venue or, in the alternative, to transfer the action to the Middle District of Georgia, for consolidation with an action in which Bradley has sued Weber for breach of contract and federal antitrust violations. For the reasons set forth below, the court orders that this case be transferred to the Middle District of Georgia.

         FACTS

         Weber is a Delaware limited liability company with its principal place of business in Palatine, Illinois. It is a leading worldwide designer, developer, and manufacturer of outdoor grills and accessories. It has been selling its iconic three-legged grill since the mid 1950's and owns several patents and trademarks covering its kettle grill.

         Bradley is a Georgia corporation with its principal place of business in Columbus, Georgia. Char-Broil is a wholly owned subsidiary of Bradley, and a Georgia limited liability company with its principal place of business in Columbus, Georgia. It is a privately held manufacturer of charcoal, gas and electric outdoor grills, smokers and related accessories.

         In the early 1970s, after the successful launch of Weber's three-legged iconic kettle grill, Bradley's predecessors began marketing the WILLIAM WEBSTER grill. In 1973, Weber's predecessor filed suit against Bradley in the Northern District of Illinois, alleging that Bradley's brand WEBSTER grill infringed Weber's: (1) utility patent in the tripod leg attachment system; (2) trademark; and (3) trade dress rights in the overall configuration of a three-legged kettle grill. Bradley filed a motion to dismiss for lack of personal jurisdiction, and the case was transferred to the Middle District of Georgia.

         The parties reached a settlement agreement (“the 1974 Agreement”) under which Weber paid Bradley money, waived any claim to damages, allowed Bradley to use Weber's patent under a covenant not to sue, allowed Bradley to sell off its remaining inventory of WILLIAM WEBSTER-branded kettle grills, and agreed that Bradley “shall have the right to continue to market the kettle grill, without restriction as to its configuration provided that it didn't use the WILLIAM WEBSTER name.” Bradley continued to market the accused kettle grill for a phase-out period, then completely ceased selling the three-legged kettle grills until the September 2014 introduction of the allegedly infringing Char-Broil Kettleman grill.

         Weber sued Bradley and Char-Broil on March 17, 2016 (the “March action”), in this district, alleging infringement and dilution of Weber's three-legged kettle grill design. After Bradley and Char-Broil raised the 1974 Agreement in discussions with Weber, on April 20, 2016, Weber sent an e-mail to Bradley, purporting to terminate the 1974 Agreement, dismissed the March action, and filed the instance case. The only difference between the March 17, 2016, complaint and the instant complaint is the allegation that Weber “formally and lawfully terminated any and all license rights prior to filing this Complaint.”

         On June 14, 2016, Bradley and Char-Broil filed an action in the Middle District of Georgia, alleging breach of contract and antitrust violations stemming from Weber's misuse of trademark law.

         DISCUSSION

         1. Personal Jurisdiction Over Char-Broil

         Determining whether jurisdiction exists over an out-of-state defendant involves two inquiries: whether a forum state's long-arm statute permits service of process; and whether assertion of personal jurisdiction violates due process. Burger King Corp. v. Rudzewicz, 471 U.S. 462, 471-76 (1985). Because the Lanham Act does not authorize nationwide service of process, the court must determine whether Char-Broil is subject to personal jurisdiction under the Illinois long arm statute. Valtech, LLC v. 18th Avenue Toys Ltd., 14 C 134, 2015 WL 603854, at *2 (N.D. Ill. Feb. 12, 2015). The Illinois long arm statute is coextensive with the limits of due process, collapsing the two inquiries into a single inquiry. Intercon Solutions, Inc. v. Basel Action Network, 969 F.Supp.2d 1026, 1060 (N.D. Ill. 2013).

         Weber argues that the court has personal jurisdiction over Char-Broil on the basis of specific jurisdiction. The court has specific jurisdiction over a non-resident defendant if: (1) the defendant has “purposefully directed [its] activities” at the forum state or purposefully availed itself of the privilege of conducting business in that state; (2) the alleged injury arises out of the defendant's activities in the forum; and (3) the exercise of jurisdiction comports with traditional notions of fair play and substantial justice. Autogenomics, Inc. v. Oxford Gene Tech. Ltd., 566 F.3d 1012, 1014 (Fed. Cir. 2009).

         Weber argues that Char-Broil has purposefully availed itself to the privilege of conducting business in Illinois by actively marketing and selling the accused infringing grill to Illinois consumers through its active website and through big-box retailers located in Illinois, such as Ace Hardware. Illinois customers may also purchase the infringing grill on several online retail websites, including Target, Walmart, Menards, and ...


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