United States District Court, E.D. Missouri, Eastern Division
CLOCKWORK IP, LLC, AIRTIME, LLC, and AQUILA INVESTMENT GROUP, LLC, Plaintiffs,
CLEARVIEW PLUMBING & HEATING LTD. and GIRAFFE CORPORATION, Defendants
[Copyrighted Material Omitted]
Clockwork IP, LLC, Airtime, LLC, Aquila Investment Group,
LLC, Plaintiffs: George R. Spatz, LEAD ATTORNEY, PRO HAC
VICE, MCGUIRE WOODS, LLP, Chicago, IL; Michael A. Clithero,
LEAD ATTORNEY, LATHROP AND GAGE, LLP, Clayton, MO; William N.
Federspiel, LEAD ATTORNEY, MCGUIRE WOODS LLP, Richmond, VA.
Clearview Plumbing & Heating, Ltd., Giraffe Corporation,
Defendants: Adam D. Hirtz, LEAD ATTORNEY, LOWENBAUM
PARTNERSHIP, L.L.C., St. Louis, MO; Jamie Nicole Mahler, THE
LOWENBAUM PARTNERSHIP, St. Louis, MO.
ROSS, UNITED STATES DISTRICT JUDGE.
matter is before the Court on Defendants' Motion to
Dismiss for Lack of
Personal Jurisdiction. (Doc. No. 21) The motion is fully
briefed and ready for disposition.
action arises out of an intellectual property dispute.
Plaintiffs Clockwork IP, LLC (" Clockwork" ),
AirTime, LLC (" AirTime" ), and Aquila Investment
Group, LLC (" Aquila" ) (collectively "
Plaintiffs" ) bring this action against two Canadian
companies, Defendants Clearview Plumbing & Heating LTD
(" Clearview" ) and Giraffe Corporation ("
Giraffe" ), for trademark infringement under 15 U.S.C.
§ 1114 (Count I), unfair competition under 15 U.S.C.
§ 1125(a) (Count II), conversion (Count III), fraudulent
inducement (Count IV), and tortious interference with a
business expectancy (Count V).
is a Delaware limited liability company with its principal
place of business in Sarasota, Florida. (Complaint ("
Compl." ), Doc. No. 1 at ¶ 3) Clockwork is the
intellectual property holding subsidiary of Clockwork, Inc.,
d/b/a Clockwork Home Services, under three principle brand
names: Benjamin Franklin the Punctual Plumber® , One Hour
Heating & Air Conditioning® and Mr. Sparky® .
(Id. at ¶ ¶ 1, 19) Clockwork Home provides
plumbing, heating and air conditioning, and electrical
services in North America. (Id. at ¶ 1) Aquila
is an Illinois limited liability company d/b/a Success Group
International (" SGI" ), with its principal place
of business in Sarasota, Florida. (Id. at ¶ 5)
SGI offers business services to contractors who do not want
to become franchisees. Instead, these contractors become SGI
Affinity Group members and receive the same business process
tools and technical training as franchisees without
relinquishing their name and brand identity. (Doc. No. 22 at
¶ 6) AirTime is a Missouri limited liability company
with its principal place of business in Sarasota, Florida. At
all relevant times, AirTime operated the SGI Affinity
Group. (Id. at ¶ ¶ 4, 6)
Clearview is primarily engaged in the business of plumbing,
air conditioning and heating services in Canada.
(Id. at ¶ 7); Giraffe is an intellectual
property holding company owned and controlled by Clearview.
(Id. at ¶ 8) Both Clearview and Giraffe are
organized and existing under the laws of Canada.
(Id. at ¶ ¶ 7, 8)
to Plaintiffs, this dispute arises from Defendants'
activities with SGI. (Doc. No. 26 at 2) Plaintiffs allege
that Defendants' first identified interaction with
AirTime and SGI occurred around 2000 when Clearview's
principal, Kyle Lumsden, attended an event hosted by SGI in
New Jersey where Clockwork Home announced its franchise
branding for THE PUNCTUAL PLUMBER. (Compl. at ¶ ¶
11, 33) Sometime thereafter, Clearview misappropriated and
adopted THE PUNCTUAL PLUMBER marks for itself. (Id.
at ¶ 34) Plaintiffs further allege that sometime in
2008, Clearview targeted their Tech Seal Program and
misappropriated their TECH SEAL mark. (Id. at ¶
March 2011 until May 2013, Clearview was a member of
SGI's licensed Canadian affiliate, SGI Canada. As a
member of SGI Canada, Clearview had the opportunity to
license Clockwork trademarks for use in its business.
(Id. at ¶ ¶ 12, 30)
October 2011, Clearview was offered three licensing
agreements for AirTime marks; the marks offered were WE FIX
IT OR IT'S FREE; GREEN SCREENED; and the TECH SEAL mark.
(Id. at ¶ 41) Clearview executed license
agreements for the marks WE FIX IT OR IT'S FREE and GREEN
SCREENED. Because Clearview was already using a "
colorable imitation" of the TECH SEAL mark, it did not
execute the agreement for the TECH SEAL mark. (Id.
at ¶ 42) All actions arising out of or relating to these
licensing agreements were required to be brought in either
the Twenty-First Judicial Circuit Court of the State of
Missouri or the United States District Court for the Eastern
District of Missouri, Eastern Division. (Id. at
¶ 12) Plaintiffs contend that Clearview's repeated
misappropriation of Clockwork's intellectual property has
hindered it from marketing and growing its Benjamin Franklin
Plumbing business and diminished the value of its marks.
move to dismiss the complaint for lack of personal
jurisdiction pursuant to Fed.R.Civ.P. 12(b)(2). Defendants
argue they have not transacted business in Missouri, made any
contracts in Missouri, or committed any tortious acts in
Missouri. Even if they had engaged in such activities,
Defendants argue they lack sufficient minimum contacts with
Missouri to satisfy due process. (Doc. No. 22 at 2) The
principal of Clearview, Kyle Lumsden, and the principal of
Giraffe, Melanie Lumsden, have filed declarations in support
of these arguments. (Doc. Nos. 22-1, 21-2) In response,
Plaintiffs argue that because Defendants directed their
tortious conduct, in part, at a Missouri company, and
otherwise have the requisite minimum contacts to support
jurisdiction in Missouri and the United States, their motion
should be denied. (Doc. No. 26 at 6-7)