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Attending a meeting to discuss the use of a trademark isn’t enough presence in a federal district to confer personal jurisdiction over the defendants in a trademark infringement case, the U.S. Court of Appeals for the 8th Circuit has ruled. In a unanimous ruling on Aug. 1 in Pangaea Inc. v. The Flying Burrito LLC, the court upheld a November 2009 dismissal of the case by Judge Jimm Larry Hendren of the Western District of Arkansas. Hendren ruled that the court lacked jurisdiction over Iowa defendants whose sole contact with Arkansas was a 2004 meeting with the plaintiff to discuss using Pangaea’s trademark. Judge Susan Richard Nelson of the District of Minnesota, who sat on the panel by designation, authored the published opinion, joined by 8th Circuit judges Steven Colloton and James Loken. Pangaea Inc., which owns the “The Flying Burrito Co.” trademark and runs five Arkansas and one Oklahoma restaurant under that name, filed the case in November 2008. Pangaea sued the Flying Burrito LLC, which operates an Ames, Iowa, restaurant formerly called The Flying Burrito, and the restaurant’s former manager Robert Moore, for trademark infringement. In 2004, Moore and Matthew Goodman, who owns the Iowa restaurant now named “The Fighting Burrito,” met with Pangaea’s owners in Arkansas to seek permission for use of the trademark. The parties did not reach an agreement, according to the 8th Circuit ruling. The case involves a question only of specific jurisdiction, not general jurisdiction, because Pangaea concedes that the defendants’ contact with the Arkansas forum was “neither continuous nor systematic,” Nelson wrote. Nelson defined specific jurisdiction as applying to a claim that “arises out of” or “relates to” a defendant’s contacts with the forum. Nelson agreed with Hendren’s conclusion that the alleged trademark infringement began before the Arkansas meeting, when the defendants established the Iowa restaurant and continued after it. Nelson also agreed that the alleged infringement was localized because the Iowa restaurant’s business area did not overlap with Pangaea’s Arkansas customer base. “Thus the district court was correct in concluding that the alleged infringement did not “arise out of” Defendants’ trip to Arkansas,” Nelson wrote. “The Defendants’ trip to Arkansas — and their failure to obtain permission to use the mark — did not cause or otherwise precipitate the alleged infringement. In fact, Defendants’ sole contact with Arkansas apparently was in an attempt to avoid any trademark infringement.” Although he believes the Arkansas meeting to negotiate a trademark license was a close enough reason to bring the case to that district’s court, Pangaea’s lawyer, Mark Murphey Henry of the Henry Law Firm in Fayetteville, Ark., said he accepts the 8th Circuit’s mandate. “I tried to make the point in oral argument that were they to have signed a licensing agreement, no one would dispute that there was jurisdiction,” Henry said. “Their ‘no’ meant there was no jurisdiction. That’s odd to me.” The defendants are happy with the decision, Goodman said. “It’s nice that that the three-year process is over, because we changed our name as soon as we received our first [cease and desist] letter,” Goodman said. The defendants’ lawyer, Glenn Johnson, a Cedar Rapids, Iowa, attorney at Nyemaster, Goode, West, Hansell & O’Brien, did not return a call for comment. The ruling seems to be in line with other cases “which have similarly declined to extend long-arm jurisdiction based on a single contact with the forum that did not give rise to the claim,” said Andrew Berger, an intellectual property counsel to New York-based Tannenbaum Helpern Syracuse & Hirschtritt, who isn’t involved in the case. “Had the defendant’s Web site aimed it’s alleging infringing conduct toward Arkansas residents, that might have changed the result, but the 8th Circuit’s affirmance is no surprise, given the facts presented,” Berger said. Sheri Qualters can be contacted at [email protected].

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