United States District Court, N.D. Iowa, Cedar Rapids Division
MEMORANDUM OPINION AND ORDER
LEONARD T. STRAND, CHIEF JUDGE
matter is before me on the following motions: (1) a motion
(Doc. No. 271) to dismiss for lack of personal jurisdiction
by defendant TruNorth Global Corp. (TN Global); (2) an appeal
(Doc. No. 274) by defendant TruNorth Warranty Plans of North
America, LLC (TN Warranty) of an order (Doc. No. 250) by
Chief United States Magistrate Judge Kelly K.E. Mahoney
granting in part plaintiffs' motion to make an untimely
jury demand on Count VI and (3) a motion (Doc. No. 295) for
reconsideration/clarification of my order (Doc. No. 266)
granting in part and denying in part TN Warranty's motion
for summary judgment. TN Global has filed a brief (Doc. No.
272) in support of its motion to dismiss for lack of personal
jurisdiction, plaintiffs TrueNorth Companies, L.C. and
TrueNorth Principals, L.C. (together, TrueNorth) have filed a
resistance (Doc. No. 281) and TN Global has filed a reply
(Doc. No. 308). With regard to TN Warranty's appeal (Doc.
No. 274) on Judge Mahoney's order, TrueNorth has filed a
resistance (Doc. No. 277), TN Warranty has filed a reply
(Doc. No. 298) and TrueNorth has filed a sur-reply (Doc. No.
301). Finally, with regard to the motion (Doc. No. 295) for
reconsideration/clarification of my summary judgment order,
TrueNorth has filed a resistance (Doc. No. 296) and TN
Warranty has filed a reply (Doc. No. 300).
pending is a motion (Doc. No. 255) in limine by TrueNorth,
motion (Doc. No. 263) in limine by TN Warranty, and a motion
(Doc. No. 309) to exclude testimony at trial or alternatively
compel a deposition, both of which will be addressed by
background of this case has been summarized in numerous
orders that I find unnecessary to repeat here. See
Doc. Nos. 40, 135, 250, 266.
3, 2019, Chief United States Magistrate Judge Kelly K.E.
Mahoney allowed TrueNorth to file a third amended complaint
adding TN Global Corp. as a party defendant. See Doc.
10, 2019, I entered an order on TN Warranty's motion for
summary judgment, finding the following claims should go to
• Count I - Trademark Infringement under 15 U.S.C.
• Count II - Trademark Infringement under 15 U.S.C.
• Count III - False Designation of Origin under 15
U.S.C. § 1125
• Count VI - Unfair Competition under 15 U.S.C. §
1125 and common law
Doc. No. 266. Trial is scheduled for January 13,
2020. See Doc. No. 299.
Motion to Dismiss for Lack of Personal
Global moves to dismiss the claims against it pursuant to
Federal Rule of Civil Procedure 12(b)(2) for lack of personal
jurisdiction. TN Global notes that it was formed on September
26, 2018,  and was not in existence during much of
the relevant time period. Its only officer is Kirk Eskridge.
It contends it does not have any presence in Iowa and does
not do business with any used commercial truck retailers or
any other business in Iowa. See Doc. No. 272 at 2.
It states it does not have any employees, has never had any
in-person contacts with anyone in Iowa and is a wholly
separate entity from TN Warranty. Id. It also
represents it does not have any ownership in TN
alleges that TN Global sent “an email blast . . . on
February 19, 2019 to individuals and entities in Iowa,
including to Joe Hoovestol of Lone Mountain Trucking, in
Carter Lake, Iowa.” See Doc. No. 132-1 at
¶ 6. The email received by Hoovestol states:
Hi, just a reminder you're receiving this email because
you have expressed an interest in TruNorth. Don't forget
to add TruNorth@TruNorthWarranty.com to your address book so
we'll be sure to land in your inbox!
See Doc. No. 190-1 at 1. Based on this language,
TrueNorth contends the email was likely sent to TN
Warranty's other contacts in Iowa, including its admitted
45 “authorized dealers” in Iowa. Doc. No. 281 at
3 (citing Doc. No. 207 at 135-36). It notes that the email
included TN Global's logo, advertised that TN Global
provides “capital, ” “acquisitions”
and “risk management” services and also included
TN Warranty's logo, identifying it as the “leader
in asset coverage.” Doc. No. 281 at 3 (citing Doc. No.
190-1 at 3).
contends Eskridge's representation that TN Global is a
“wholly separate company” from TN Warranty is not
credible. It notes that TN Global's website highlights TN
Warranty as one of “Our Services.” Id.
(citing Doc. No. 190-1 at 7). It also notes that the only
contact information on TN Global's website is TN
Warranty's address, as well as the same phone number,
direct phone number and fax number displayed on TN
Warranty's website. Id. (citing Doc. No. 190-1
at 8). It states that on TN Warranty's website
(trunorthwarranty.com), a March 28, 2019, news release states
“TruNorth Global™” is “the leader in
medium and heavy-duty truck protection.” See
Doc. No. 281-2 at 1. TrueNorth points out TN Warranty made
this same claim, as to itself, in a news release dated
February 20, 2019. See Doc. No. 281-3 at 1.
TrueNorth alleges that this evidence is contrary to
Eskridge's implication that TN Global has done little, if
any, domestic business and was formed only to
“eventually hold foreign intellectual property
rights.” Doc. No. 281 at 4 (citing Doc. No. 272-1 at
also cites a June 5, 2019, news release stating
“MyTruckWarranty.com, powered by TrüNorth™,
is the latest addition to the TrüNorth Global™
family of products and services.” Id. (citing
Doc. No. 281-4). TrueNorth argues this news release indicates
that TN Warranty and TN Global consider themselves
interchangeable and that TN Global is a continuation of TN
Warranty. Id. (citing Doc. No. 281-4 at 4 (“At
TrüNorth Global™, our commitment to our dealer
partners and warranty customers has always driven everything
we do from industry-leading product and service innovations
to first-in-marketing technology solutions, including the
industry's only mobile app for iOS and Android
Devices.”)). TrueNorth argues the statements in the
news release refute Eskridge's claim that TN Global does
not do business with any used commercial truck retailers or
any other business in Iowa and does not have any retailers in
Iowa. Id. It contends TN Global's “dealer
partners” is referring to TN Warranty's authorized
retailers, including the 45 retailers in Iowa.
order to properly allege personal jurisdiction, “a
plaintiff ‘must state sufficient facts in the complaint
to support a reasonable inference that the defendant[ ] can
be subjected to jurisdiction within the state.'”
Dever v. Hentzen Coatings, Inc., 380 F.3d 1070, 1072
(8th Cir. 2004)), cert. denied, 543 U.S. 1147 (2005)
(quoting Block Indus. v. DHJ Indus., Inc., 495 F.2d
256, 259 (8th Cir. 1974)). In resisting a Rule 12(b)(2)
motion, the plaintiff has the burden of proving facts
supporting such jurisdiction. Wells Dairy, Inc. v. Food
Movers Int'l, Inc., 607 F.3d 515, 518 (8th Cir.),
cert. denied, 562 U.S. 962 (2010). The court may
consider the allegations of the complaint along with any
affidavits and exhibits submitted by the parties.
Id. The plaintiff's burden, in the absence of an
evidentiary hearing, is to make a “minimal” prima
facie showing of personal jurisdiction. K-V Pharm. Co. v.
Uriach & CIA, S.A., 648 F.3d 588, 592 (8th Cir.
2011). The court “must view the evidence in the light
most favorable to the plaintiff and resolve all factual
conflicts in its favor in deciding whether the plaintiff has
made the requisite showing.” Id.
a federal court's subject matter jurisdiction over a case
arises from the existence of a federal question, the court
may exercise personal jurisdiction over a defendant if the
plaintiff has properly served the defendant with process
under the forum state's long-arm statute and if the
defendant has sufficient contacts with the forum state to
satisfy procedural due process.” Enter. Rent-A-Car
Co. v. U-Haul Int'l, Inc., 327 F.Supp.2d 1032, 1036
(E.D. Mo. 2004) (citing Omni Capital Int'l, Ltd. v.
Rudolf Wolff & Co., Ltd., 484 U.S. 97, 104-05
(1987)); see also Dakota Indus., Inc. v. Dakota
Sportswear, Inc., 946 F.2d 1384, 1389 n.2 (8th Cir.
1991). Here, Iowa's long-arm statute provides that if a
foreign entity or a nonresident person commits a tort, in
whole or in part, against an Iowa resident, then “such
acts shall be deemed to be doing business in Iowa” and
service of process is authorized on that entity or person.
Iowa Code § 617.3.
general, due process requires that a nonresident defendant
have at least “certain minimum contacts” with the
forum state to support the exercise of personal jurisdiction.
Int'l Shoe Co. v. Washington, 326 U.S. 310, 316
(1945). Those contacts must be sufficient that requiring the
defendant to litigate in the forum state would not
“offend traditional notions of fair play and
substantial justice.” Id. at 316 (internal
quotation marks and citation omitted). They “must come
about by an action of the defendant purposefully directed
toward the forum State.” Asahi Metal Indus. Co. v.
Super. Ct. of Cal., 480 U.S. 102, 112 (1987) (internal
“‘purposeful availment' requirement ensures
that a defendant will not be haled into a jurisdiction solely
as a result of ‘random,' ‘fortuitous,' or
‘attenuated' contacts, ” or due to “the
‘unilateral activity of another party or a third
person.'” Burger King Corp. v.
Rudzewicz, 471 U.S. 462, 475 (1985) (citations omitted).
If the defendant made the deliberate choice to
“engage in significant activities within a State,
” or to create “‘continuing
obligations' between himself and residents of the forum,
” then “it is presumptively not unreasonable to
require him to submit to the burdens of litigation in that
forum as well.” Id. at 475-76 (citations
By requiring that individuals have “fair warning that a
particular activity may subject [them] to the jurisdiction of
a foreign sovereign, ” the Due Process Clause
“gives a degree of predictability to the legal system
that allows potential defendants to structure their primary
conduct with some minimum assurance as to where that conduct
will and will not render them liable to suit[.]”
Id. at 472-73 (citations omitted).
Eighth Circuit Court of Appeals applies a five-factor test to
determine whether a defendant's contacts with the forum
state are sufficient to establish personal jurisdiction.
Myers v. Casino Queen, Inc., 689 F.3d 904, 911 (8th
Cir. 2012). Those factors are: (1) the nature and quality of
the contacts with the forum state; (2) the quantity of those
contacts; (3) the relationship of those contacts with the
cause of action; (4) the forum state's interest in
providing a forum for its residents; and (5) the convenience
or inconvenience to the parties. Id. (citing
Precision Const. Co. v. J.A. Slattery Co., Inc., 765
F.2d 114, 118 (8th Cir. 1985)). The first three factors are
considered to be of primary importance. Precision
Const.Co., 765 F.2d at 118.
jurisdiction can be either general or specific. General
jurisdiction arises when a nonresident maintains
“continuous and systematic” contacts with the
forum state. Helicopteros Nacionales de Colombia, S.A. v.
Hall, 466 U.S. 408, 415-16 (1984). Under those
circumstances, jurisdiction over the nonresident is
appropriate even when the claims at issue do not arise out of
or relate to its activities in the forum state. Id.
at 414-15. Specific jurisdiction arises “when the
defendant purposely directs its activities at the forum state
and the litigation ‘result[s] from injuries ...
relating to [the defendant's] activities [in the forum
state.]'” Myers, 689 F.3d at 912-13
(quoting Steinbuch v. Cutler, 518 F.3d 580, 586 (8th
Cir. 2008)). Specific jurisdiction “requires a
relationship between the forum, the cause of action, and the
defendant. Id. at 912 (citing Helicopteros
Nacionales de Colombia, 466 U.S. at 414). The third
factor of the five-factor test “distinguishes between
specific and general jurisdiction.” Id. at 911
(citing Johnson v. Arden, 614 F.3d 785, 794 (8th
Eighth Circuit has rejected the so-called “proximate
cause” test for specific jurisdiction, under which the
exercise of jurisdiction is appropriate only if the
defendant's contacts with the forum was the legal cause
of the plaintiff's injuries. Id. at 912-13.
Instead, the third factor is satisfied so long as (a) the
defendant purposely directed its activities at the forum
state and (b) the litigation results from injuries relating
to the defendant's activities in the forum state.
Id. (citation and quotation omitted).
argues there is specific personal jurisdiction over TN Global
because it markets specifically into Iowa and claims a
“dealer partnership” with 45 Iowa entities (by
claiming TN Warranty's dealer partners as its own). Doc.
No. 281 at 5. TrueNorth notes that three retailers and 13
locations in Iowa was enough to confer personal jurisdiction
over TN Warranty. See Doc. No. 40 at 16. It argues
that sending marketing materials using the allegedly
infringing mark and specifically advertising “risk
management” services to 45 Iowa “dealer
partners” should be enough to satisfy personal
jurisdiction over TN Global. Id. at 6. TrueNorth
also relies on TN Global's press release referencing its
“dealer partners” in support of this argument.
addition, TrueNorth invokes the alter ego or single
enterprise doctrine to argue that TN Warranty's contacts
with Iowa should be imputed to TN Global. Id. at 7.
It notes they are both controlled and owned by Eskridge,
promote the same services, claim to have the same dealer
partners and appear to be interchangeable as they hold
themselves out to the public. Id. at 10. It also
notes that Judge Mahoney allowed TrueNorth to add TN Global
as a defendant in a Third Amended Complaint stating:
“Eskridge may have had a good reason for creating TN
Global, but given the temporal proximity (two days) between
TrueNorth's motion for a preliminary injunction and
Eskridge creating TN Global, TrueNorth understandably wants
to ensure that Eskridge cannot avoid the effects of any
injunctive relief simply by acting through TN Global instead
of TN Warranty.” See Doc. No. 240 at 9-10.
TrueNorth also argues that TN Global's lack of adequate
capitalization allows me to consider it the alter ego of TN
Warranty. Finally, TrueNorth argues it is entitled to
jurisdictional discovery, including whether the same February
2019 email was sent to other Iowa entities, the identity of
the individuals who developed TN Global's website, sent
its email blasts and wrote its news releases and the
identification of TN Global's “dealer
partners” referenced in its press release. Id.
Global argues that aside from a single email, TrueNorth has
offered only speculation and conjecture in support of
personal jurisdiction. Doc. No. 308 at 2. It contends this is
insufficient to rebut Eskridge's sworn declaration
stating that TN Global is related to TN Warranty only as a
holding company for foreign intellectual property rights and
that the two are separate entities for purposes of personal
jurisdiction. Id. TN Global adds that the fact that
Eskridge is a common owner is not enough to support
application of the alter ego doctrine. TN Global argues that
even if it sent an email to 45 Iowa residents, those emails
are insufficient to establish personal jurisdiction absent
any other contacts. Id. at 4. Finally, TN Global
argues that jurisdictional discovery is unwarranted because
TrueNorth has not submitted an affidavit describing what
facts are sought and how they are to be obtained, how the
facts are reasonably expected to raise a genuine issue of
material fact and what efforts TrueNorth has made to obtain
them. Id. at 6. It contends that one email (or even
45 emails) is insufficient to establish personal
jurisdiction, which is the only evidence TrueNorth has
offered without resorting to speculation.
with TN Global that TrueNorth's evidence concerning TN
Global's contacts with Iowa is weak. TN Global does not,
on its own, have sufficient minimum contacts with Iowa, such
that exercising personal jurisdiction over it would comport
with due process. With regard to the first two factors -
nature and quality of the contacts and quantity of the
contacts - TrueNorth has established that Eskridge recently
formed another “TruNorth” company and that that
company has sent an email to at least one TN Warranty
customer, and potentially 45 Iowa dealers. While that contact
is related to this cause of action, that factor, on its own,
is insufficient to establish personal jurisdiction. Unlike TN
Warranty, there is no evidence that TN Global has actually
done any business in Iowa, including any business with TN
Warranty's Iowa dealers. For instance, there is no
evidence that TN Warranty's dealers are selling anything
other than warranties that could be attributed to TN Global.
At most, TrueNorth has shown that TN Global sent an email to
TN Warranty's Iowa dealers. This is insufficient to
establish personal jurisdiction.
better argument is that personal jurisdiction over TN Global
is appropriate because it and TN Warranty are one and the
same. However, this argument also falls short of establishing
personal jurisdiction. “Personal jurisdiction can be
properly asserted over a corporation if another is acting as
its alter ego, even if that alter ego is another
corporation.” Epps v. Stewart Information Servs.
Corp., 327 F.3d 642, 649 (8th Cir. 2003). An entity is
the alter ego of another if (1) the other entity influences
and governs the subject entity; (2) a unity of interest and
ownership exists such that the two entities cannot be
separated and (3) giving effect to the fictional separation
between the two entities would sanction a fraud or promote
injustice. See HOK Sport, Inc. v. FC Des Moines,
L.C., 495 F.3d 927, 935 (8th Cir. 2007) (applying Iowa
law). Determining whether a wholly owned
subsidiary is the alter ego of a parent corporation “is
contingent on the ability of the plaintiffs to pierce the
corporate veil.” Epps, 327 F.3d at 649. Under
Iowa law, “[a] court may disregard a corporate
structure by piercing the corporate veil only under
circumstances ‘where the corporation is a mere shell,
serving no legitimate business purpose, and used primarily as
an intermediary to perpetuate fraud or promote
injustice.'” In re Marriage of Ballstaedt,
606 N.W.2d 345, 349 (Iowa 2000) (quoting C. Mac Chambers
Co. v. Iowa Tae Kwon Do Acad., Inc., 412 N.W.2d 593,
597-98 (Iowa 1987)). In determining whether the corporate
veil should be pierced, the court should consider whether:
“(1) the corporation is undercapitalized, (2) without
separate books, (3) its finances are not kept separate from
individual finances, individual obligations are paid by the
corporation, (4) the corporation is used to promote fraud or
illegality, (5) corporate formalities are not followed or (6)
the corporation is merely a sham.” Lakota Girl
Scout Council, Inc. v. Havey Fund-Raising Mgmt., Inc.,
519 F.2d 634, 638 (8th Cir. 1975).
those factors, TrueNorth alleges that TN Global is
undercapitalized, but has provided no proof and mistakenly
puts the burden on TN Global. Id. at 13
(“Eskridge's Declaration provides no evidence that
TN Global was adequately capitalized when it was formed, or
soon thereafter.”). See Epps, 327 F.3d at 647
(“The party seeking to establish the court's in
personam jurisdiction carries the burden of proof, and the
burden does not shift to the party challenging
jurisdiction.”). Eskridge states: “As TN Global
was only recently formed, TN Global continues to be
capitalized and will eventually hold ...