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TOPPS CO. v. GERRIT J. VERBURG CO.

April 28, 1997

THE TOPPS COMPANY, INC., Plaintiff, against GERRIT J. VERBURG CO. and B.I.P. HOLLAND B.V., Defendants.


The opinion of the court was delivered by: SWEET

 Sweet, D.J.

 In this case alleging trademark design and trade dress infringement and related state causes of action, defendant B.I.P. Holland B.V. ("B.I.P.") has made a special appearance seeking dismissal of the action against it pursuant to Federal Rule of Civil Procedure 12(b)(2) for lack of personal jurisdiction. Upon the findings and conclusions set forth below, the motion is granted.

 Prior Proceedings

 This action was commenced by The Topps Company, Inc. ("Topps") on September 25, 1996. The complaint alleges violations of §§ 32 and 43(a) of the Trademark Act of 1946, as amended, 15 U.S.C. §§ 1114, 1125(a), common law unfair competition, and violations of the General Business Law of New York. Topps' motion for a preliminary injunction barring defendants Gerrit J. Verburg Co. ("Verburg") and B.I.P. from infringement of Topps trademark design and trade dress was granted by this Court on December 12, 1996. The Topps Co. v. Gerrit J. Verburg Co., No. 96 Civ. 7302, 1996 U.S. Dist. LEXIS 18556, 41 U.S.P.Q.2D (BNA) 1412, 1996 WL 719381 (S.D.N.Y. 1996). B.I.P. filed the present motion to dismiss on January 3, 1997. Oral argument was heard on January 29, 1997, at which time the motion was deemed submitted.

 Facts

 The facts pertaining to the development and marketing of the competing products in this case (Topps' "Ring Pop" and Verburg's "Diamond Lollipop") were set out in this Court's opinion granting a preliminary injunction and will not be repeated here. See The Topps Co., supra. Additional facts relevant to this motion are set forth below.

 Topps is a corporation organized under the laws of Delaware, with its principal place of business in New York, New York.

 B.I.P. is a corporation organized under the laws of Holland. It manufactures candy in Malaysia for sale to independent distributors throughout the world. B.I.P. does not own or control any company in the United States. It has no offices, mailing addresses, telephone listings, bank accounts or property of any kind in the United States. It has no employees, personnel, contractual agents, or representatives in the United States. B.I.P. maintains that it has never sold, shipped, or contracted to sell or ship any of its products to the United States or the State or City of New York. It further maintains that it has never presented its products at any trade show or display in the United States or New York. Finally, B.I.P. maintains that it has never advertised, promoted, marketed, or solicited any business in the United States or New York. None of these factual averments are contested by Topps.

 B.I.P. sold its Diamond Lollipop product, which is the subject of this litigation, to defendant Verburg outside the United States. The only evidence adduced from the pleadings and affidavits that B.I.P. ever anticipated any sales in the United States by its customers is that the label on the Diamond Lollipop, produced in Malaysia, contains the words "colors for U.S.A." on it.

 Verburg is a corporation organized under the laws of Michigan, where it has its principal place of business. Verburg is not presently contesting jurisdiction. Verburg maintains relationships with candy brokers in New York where it has displayed the Diamond Lollipop at trade shows. Verburg bought the Diamond Lollipop units F.O.B. in Malaysia from B.I.P.

 Although it is likely that B.I.P. knew it was selling to an American distributor, there is no evidence of any oral or written distribution agreement between B.I.P. and Verburg, nor is there any evidence that B.I.P. and Verburg are in any way affiliated companies. B.I.P. maintains that it exercised no control over the product it sold to Verburg after it was to delivered to Verburg in Malaysia.

 Discussion

 On a 12(b)(2) motion in a case arising under federal law, where the statute "does not provide for service of process on a party outside the state, the issue of personal jurisdiction must be determined according to the law of the forum state." Aerogroup International, Inc. v. Marlboro Footworks, Inc., 956 F. Supp. 427, 1996 U.S. Dist. LEXIS 19051, *13, 1996 WL 735585, *4 (S.D.N.Y. 1996), citing Omni Capital Int'l v. Rudolf Wolff & Co., 484 U.S. 97, 105-110, 98 L. Ed. 2d 415, 108 S. Ct. 404 ...


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