United States District Court, D. New Hampshire
Ticked Off, Inc.
TickCheck, LLC, et al.
K. JOHNSTONE UNITED STATES MAGISTRATE JUDGE
plaintiff, Ticked Off, Inc. (“TOI”), alleges that
TickCheck, LLC (“TickCheck”) and other defendants
committed acts of trade dress infringement, copyright
infringement, unfair competition, and deceptive trade
practices in violation of federal and state law by
manufacturing tick removal devices that were identical to its
own product. TickCheck moved to dismiss this action under
Fed.R.Civ.P. 12(b)(2) for lack of personal jurisdiction and
12(b)(6) for failure to state a claim. Doc. no. 25. TOI
objected. Doc. no. 39. TOI also moved for jurisdictional
discovery. Doc. no. 38. For the reasons that follow, the
motion for jurisdictional discovery is granted in part and
denied in part. TickCheck's motion to dismiss is denied
First Circuit has “long held that a diligent plaintiff
who sues an out-of-state corporation and who makes out a
colorable case for the existence of in personam
jurisdiction may well be entitled to a modicum of
jurisdictional discovery if the corporation interposes a
jurisdictional defense.” United States v. Swiss Am.
Bank, Ltd., 274 F.3d 610, 625 (1st Cir. 2001) (emphasis
in original) (internal quotation marks and citation omitted).
Diligence “includes the obligation to present facts to
the court which show why jurisdiction would be found if
discovery were permitted.” Id. at 626. The
party seeking discovery should also detail “additional
pertinent avenues of inquiry” that it will pursue.
Id. (citation omitted). Even after the diligence and
colorable case requirements have been met, the court has
“broad discretion to decide whether discovery is
required.” Id. at 625-26 (citation omitted).
manufactures and sells a tick removal device known as the
“Ticked Off” (the “Device”).
See doc. no. 1. TOI alleges that TickCheck sells a
product that “replicates and copies” the Device
“exactly and in all respects.” See id.
TOI has not granted TickCheck any right to manufacture or
sell a tick remover that copies or uses the trade dress of
the Device. See id.
first theory of personal jurisdiction turns on the in-state
effect of TickCheck's alleged out-of-state infringement.
TOI is a New Hampshire corporation, which maintains its
corporate offices at 99 Spruce Lane in Dover, New Hampshire.
See id. TickCheck is a Pennsylvania LLC with its
principal place of business at 562 Independence Road in East
Stroudsburg, Pennsylvania. See id. Since 1994, TOI
has designed, manufactured, and marketed the Device
exclusively from its business location in New Hampshire.
See doc. no. 38. The packaging of the Device reads
“Made in New Hampshire.” See Id. The
Device's packaging identifies its producer as
“Ticked Off Inc., 99 Spruce Lane, Dover, NH
03280.” See id. TOI's website identifies
New Hampshire as the source of the Device. See Id.
The Device was subject to a utility patent (5, 595, 569),
which stated that the owner of the patent was from Dover, New
Hampshire. See id. TOI asserts that because
TickCheck's product is an exact copy of the Device, it
must have purchased the Device and reverse engineered it.
See id. Therefore, TOI contends, TickCheck had
actual or constructive knowledge that the Device was
manufactured in New Hampshire and that the effect of its
actions would be felt by TOI in New Hampshire. See
second ground for personal jurisdiction relies on evidence
that at least one of TickCheck's devices has reached New
Hampshire. See id. TOI argues that an Amazon review
by a user whose profile lists her location as
“Danville, NH” demonstrates that it was purchased
by a customer in New Hampshire. See doc. nos. 38
& 38-5. From this fact, TOI concludes that TickCheck
markets its device nationally through Amazon, including to
New Hampshire. See doc. no. 38.
on these two arguments, TOI asserts that it has satisfied the
criteria for jurisdictional discovery. See Id.
Substantively, TOI seeks information regarding
TickCheck's internal discussions leading to its alleged
manufacturing of the copycat device, TickCheck's actual
sales in New Hampshire, and TickCheck's relationship with
Amazon. See id. TOI requests interrogatories,
document requests, and two depositions. See id.
plaintiff bears the burden of demonstrating that personal
jurisdiction exists. See A Corp v. All Am. Plumbing,
Inc., 812 F.3d 54, 58 (1st Cir. 2016). “To
establish personal jurisdiction in a diversity case, a
plaintiff must satisfy both the forum state's long-arm
statute and the Due Process Clause of the Fourteenth
Amendment.” C.W. Downer & Co. v. Bioriginal
Food & Sci. Corp., 771 F.3d 59, 65 (1st Cir. 2014)
(citation omitted). As New Hampshire's long-arm statute
“reaches to the full extent that the Constitution
allows, ” the court's sole inquiry is whether
exercising personal jurisdiction would comport with due
process. Phillips Exeter Acad. v. Howard
Phillips Fund, 196 F.3d 284, 287 (1st Cir. 1999).
Due process requires that a defendant have sufficient
“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. Washington,
326 U.S. 310, 316 (1945) (internal quotation marks and
a federal court may exercise general or specific personal
jurisdiction over a defendant, in this case only specific
jurisdiction is at issue. To establish specific personal
jurisdiction, a plaintiff must demonstrate that (1) its claim
“directly arises out of or relates to the
defendant's forum-state activities”; (2) “the
defendant's contacts with the forum state represent a
purposeful availment of the privilege of conducting
activities in that state, thus invoking the benefits and
protections of that state's laws and rendering the
defendant's involuntary presence in that state's
courts foreseeable”; and (3) “the exercise of
jurisdiction is ultimately reasonable.” Scottsdale
Capital Advisors Corp. v. The Deal, LLC, 887 F.3d 17, 20
(1st Cir. 2018) (citation omitted).
TOI has been diligent in its pursuit of jurisdictional
discovery. The court may find a party's motion for
jurisdictional discovery diligent where the motion is filed
simultaneously with its objection to a motion to dismiss or
as part of the objection. See Grand Encampment of Knights
Templar of U.S. v. Conference of Grand Masters of Masons in
N. Am., Inc., No. 11-CV-463-JD, 2012 WL 33017, at *1
(D.N.H. Jan. 5, 2012) (finding that jurisdictional discovery
motion filed at the same time as objection to motion to
dismiss was timely); Nordica USA Corp. v. Ole
Sorensen, 475 F.Supp.2d 128, 134-35 (D.N.H. 2007)
(holding that a request for jurisdictional ...