The American Association for Justice (“AAJ”), formerly known as the Association of Trial Lawyers of America, won a first round battle in its trademark infringement lawsuit against The American Trial Lawyers Association, Inc. a/k/a THE ATLA (the “Association”), and J. Keith Givens (“Givens,” and together with the Association, the “Defendants”). [Click here for previous blog entry on the filing of the lawsuit.]
On July 1, 2008, the Minnesota District Court denied the Defendants’ motion to dismiss the case for lack of personal jurisdiction, or in the alternative for a change in venue to Alabama. See American Association for Justice v. American Trial Lawyers Association et al, Case No. 07-cv-04626, 2008 U.S. Dist. LEXIS 50897 (D. Minn. July 1, 2008).
In December 2006, the Association of Trial Lawyers of America, an association of trial attorneys with over 56,000 members (with more than 500 in the State of Minnesota), changed its name to the American Association for Justice. AAJ still holds two registered trademarks for the mark ATLA, both of which issued in 1976: 1) a service mark directed to providing seminars and meetings for attorneys and 2) a collective membership mark indicating membership in the organization. AAJ also continues to use the domain name http://www.atla.org/ although it now forwards to http://www.justice.org/.
Sometime in late December, Givens, an Alabama attorney, along with his two sons, came up with the idea to create what they describe as an organization that would provide selected trial attorneys across the country with practical recognition and networking and educational opportunities. The Association was incorporated in Alabama in 2007 and began using the mark “THE ATLA” to promote its organization. Givens’ sons are the only directors of the Association; Givens serves as a member of the Associations’ Executive Committee, handles some of the Association’s legal matters, and serves as the Association’s resident agent.
In November 2007, the Association mailed up to 100 membership solicitation letters to selected attorneys in Minnesota identifying its organization as “The ATLA” and promoting the Association as an “elite organization” that sought to “offer practical recognition, networking and educational opportunities, educational programs, and legal publications” to trial attorneys. Eight Minnesota residents responded to the Association’s solicitation letter by becoming members of the organization.
Defendants sought to dismiss AAJ’s complaint by arguing that its contacts with Minnesota did not constitute sufficient minimum contacts with Minnesota to establish personal jurisdiction in Minnesota.
With respect to the Association’s contacts, the court found that the Association’s 100 membership solicitation letters and follow-up with the eight Minnesota residents who responded to the letters constituted sufficient minimum contacts in Minnesota to justify the exercise of personal jurisdiction where the letters themselves are what give rise to the causes of action at issue. AAJ’s causes of action for trademark infringement and unfair competition are that the Association’s use of the name THE ATLA on its letters is likely to cause consumer confusion with AAJ and its registered ATLA mark. The court added that such letters by the Association to individual residents of Minnesota represent “purposeful availment” on the part of the Association to generate membership, and as such, the Association should reasonably have anticipated being haled into a Minnesota court to answer for such conduct.
As for Givens, he argued that he was not a shareholder or officer of the Association, only served as resident agent for the Association, was not a “driving participant” in the Association’s activities, and only had a general involvement in the Association. However, the evidence showed that Givens was personally involved in the Association's decisions regarding the membership solicitations, including the solicitations directed to Minnesota residents, and actually signed some of these membership solicitation letters, including letters that were sent directly to Minnesota. Givens also testified that he was active in the planning and decision-making process that led to the mailing of the solicitation letters to Minnesota residents.
Based on the above, the court found Givens to be a “primary participant” in the alleged wrongdoing that was directed at Minnesota residents, and since these specific contacts directly relate to AAJ’s causes of action, they are sufficient enough to establish personal jurisdiction. In addition, by personally directing the allegedly infringing solicitation letters towards Minnesota residents, Givens should reasonably have anticipated being haled into a Minnesota court to answer for such conduct.
Finally, the court agreed with AAJ’s argument that venue was proper in Minnesota because a substantial part of the events giving rise to AAJ’s claims occurred in Minnesota (namely, the 100 membership solicitation letters infringing AAJ’s trademark) (see 28 U.S.C. 1406(a)).
The court determined that the Defendants had not made a strong enough showing to support a transfer of venue based on convenience of the parties and witnesses and in the interest of justice (see 28 U.S.C. § 1404(a). First, both parties will endure some level of inconvenience (with AAJ’s primary business headquarters in the District of Columbia) regardless of what forum is selected and the Defendants have not show how a transfer would result in anything more than a shift of the inconvenience from Defendants to AAJ. Second, as for the interest of justice, Defendants argued that a transfer to Alabama would allow the case to be joined with the existing trademark declaratory judgment action between AAJ and the American College of Trial Lawyers involving the mark “AMERICAN COLLEGE OF TRIAL LAWYERS” and AAJ’s use of the name “The American Trial Lawyers Association.” The court rejected this argument based on the fact that the infringing marks are different in the instant case and because Defendants did not sufficiently substantiate the claim that the cases are parallel or that there is substantial overlap between the two cases.