United States District Court, N.D. Illinois
MEMORANDUM AND ORDER
JOHNSON COLEMAN United States District Court Judge
First Classics, Inc, (“First Classics”) brought
this action against Defendants, Jack Lake Productions, Inc.
(“JLP”) and Jaak Jarve (“Jarve”) for
trademark infringement, trademark dilution, a preliminary
injunction under federal law, and breach of contract under
Illinois law. Defendants moved to dismiss Plaintiff's
Complaint for failure to comply with the Illinois Business
Corporation Act, and pursuant to Federal Rules of Civil
Procedure 12(b)(2) and 12(b)(6). For the following reasons,
Defendants' Motion to Dismiss is granted, in part, and
denied, in part.
Classics is a Delaware corporation that produces, prints,
distributes, and sells comic books and graphic novels out of
Chicago, Illinois. First Classics owns the trademark for
“Classics Illustrated” and “Classics
Illustrated Junior” (collectively,
“Trademarks”), which includes the design and
style of the words, letters, and numbers associated with the
names. Although Plaintiff's right to transact business in
Illinois lapsed in 1992, First Classics filed an application
to reinstate its authorization on August 22, 2017.
a Canadian corporation operating in Toronto, Canada. Jarve,
President of JLP, is a Canadian Citizen. Plaintiff contends
that this Court has personal jurisdiction over Defendant
Jarve because he conducted extensive communications,
negotiated, and transacted business in Illinois that resulted
in the execution of the Limited License Agreement (the
“License Agreement”) as well as other contracts
between the Parties. They also allege that there is
jurisdiction because Defendants actively marketed and sold
the infringing products to Illinois residents and the entire
United States via its interactive website.
November 25, 2002, the Parties entered into the Licensing
Agreement, where Defendants paid Plaintiffs in order to
reprint, distribute, and sell certain comic books and graphic
novel titles containing the Trademarks for a ten year period.
The Licensing Agreement contained a forum selection clause
that restricted venue for any litigation “touching upon
the subject matter of this agreement” to any court in
Chicago, Illinois. Jarve signed the Licensing Agreement on
behalf of JLP, notating his role as President beneath his
signature. After the licensing period expired in September of
2013, Defendants continued to reproduce, market, and sell
comic books and graphic novels with marks similar or
identical to Plaintiff's Trademarks without First
Classic's authorization through the point that Plaintiffs
filed suit against Defendants on March 16, 2017.
move to dismiss Plaintiff's four Count Complaint alleging
various trademark violations pursuant to 805 ILCS 5/13.70(a),
as well as Federal Rules of Civil Procedure 12(b)(2) and
12(b)(6). For the following reasons, Defendants' Motion
is granted, in part, and denied, in part.
threshold issue, Defendants move to dismiss First
Classics' Complaint because they allege that
Plaintiff's lack the capacity to sue in an Illinois court
since they were not in compliance with the Illinois Business
Corporation Act (“IBCA”) at the time of filing.
See 805 ILCS 5/13.70(a).
IBCA restricts a foreign corporation that does business in
Illinois without authorization from being able to maintain
civil actions in the State's courts. 805 ILCS 5/13/70(a).
Upon filling an application to reinstate authorization,
however, “the corporate existence for all purposes
shall be deemed to have continued without interruption from
the date of the issuance of the certificate of dissolution,
and the corporation shall stand revived with such powers,
duties and obligations as if it had not been
dissolved.” 805 ILCS 5/12.45. Further, “all acts
and proceedings of its shareholders, directors, officers,
employees, and agents, acting or purporting to act in that
capacity, and which would have been legal and valid but for
such dissolution, shall stand ratified and confirmed.”
it is true that when Plaintiff filed its Complaint it was not
authorized to transact business in Illinois, a fact which
could have prohibited this suit, Plaintiff's subsequent
application for authorization in August of 2017 cured any
impediment to bring suit under IBCA. Accordingly, the Court
rejects this basis for dismissal.
Jurisdiction against Jarve
moves to dismiss all claims against him individually based on
a lack of personal jurisdiction. Once a defendant moves to
dismiss a complaint under Federal Rule of Civil Procedure
12(b)(2), the plaintiff must set forth a prima facie case of
personal jurisdiction. Purdue Research Found. v.
Sanofi-Synthelabo, S.A., 338 F.3d 773, 782 (7th Cir.
2003). In determining whether Plaintiff has ...