UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW HAMPSHIRE

Ticked Off, Inc.

v. Case No. 19-cv-627-AJ Opinion No.

TickCheck, LLC, et al.

MEMORANDUM ORDER

The 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 without prejudice.

Standard of Review

The 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.,

(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.”

. The party seeking

discovery should also detail “additional pertinent avenues of

inquiry” that it will pursue.

(citation omitted). Even

after the diligence and colorable case requirements have been

met, the court has “broad discretion to decide whether discovery

is required.”

(citation omitted).

Relevant Background

TOI 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

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

TOI’s first theory of personal jurisdiction turns on the

in-state effect of TickCheck’s alleged out-of-state

2 infringement. TOI is a New Hampshire corporation, which

maintains its corporate offices at 99 Spruce Lane in Dover, New

Hampshire. See

TickCheck is a Pennsylvania LLC with its

principal place of business at 562 Independence Road in East

Stroudsburg, Pennsylvania. See

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

The Device’s packaging identifies its producer as “Ticked Off

Inc., 99 Spruce Lane, Dover, NH 03280.” See

TOI’s website

identifies New Hampshire as the source of the Device. See

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

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

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

TOI’s second ground for personal jurisdiction relies on

evidence that at least one of TickCheck’s devices has reached

New Hampshire. See

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

3 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.

Based on these two arguments, TOI asserts that it has

satisfied the criteria for jurisdictional discovery. See

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

TOI requests

interrogatories, document requests, and two depositions. See

Discussion

The plaintiff bears the burden of demonstrating that

personal jurisdiction exists. See A Corp v. All Am. Plumbing,

Inc.,

(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.,

(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

4 Phillips Fund,

(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,

(1945) (internal quotation marks and citation omitted).

Though 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,

(1st Cir. 2018) (citation

omitted).

I. Diligence

Here, TOI has been diligent in its pursuit of

jurisdictional discovery. The court may find a party’s motion

5 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,

, 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,

(D.N.H.

2007) (holding that a request for jurisdictional discovery

raised in objection was timely). Here, TOI filed its motion the

same day that it filed its objection to TickCheck’s motion to

dismiss. Therefore, it acted diligently.

II. Colorable Case for Jurisdiction

While the court does not make a finding on personal

jurisdiction at this stage of the proceedings, TOI has set out a

colorable case. If proven, TOI’s allegation of reverse

engineering could support a finding of specific jurisdiction

over TickCheck. For purposes of the relatedness prong, this

claim appears to rely on the “effects” theory of personal

jurisdiction. See New England Coll. v. Drew Univ., No. 08-CV-

424-JL,

, at *2 (D.N.H. Feb. 17, 2009) (“Under

that theory, a court may properly assert jurisdiction where a

defendant has committed an act outside of the forum state that

6 was intended to and does in fact cause injury within the

forum.”); Calder v. Jones,

(1984). TOI relies

on Astro-Med, Inc. v. Nihon Kohden Am., Inc.,

(1st

Cir. 2009) to support its claim that relatedness can be found

where an intentional business tort perpetrated outside of the

forum state leads to an in-state injury. See doc. no. 38.

TickCheck contends that Astro-Med’s holding is limited to claims

of tortious interference with contractual relations and does not

apply in the trademark infringement context. See doc. no. 45.

The court need not resolve the issue at this stage, as it would

be premature to rule without allowing TOI an opportunity to

further develop the record on its reverse engineering theory.

Likewise, the purposeful availment and reasonableness prongs

will depend on whether TOI can substantiate its allegation that

TickCheck purchased the Device and intentionally copied it.

TOI also posits that jurisdictional discovery will allow it

to gather evidence of TickCheck’s sales in New Hampshire beyond

the single alleged Amazon transaction. While “the act of

passively placing an item in the stream of commerce with the

expectation it will reach a particular state” does not subject

“a defendant to that state’s jurisdiction,” TOI has demonstrated

at least a “colorable” claim that TickCheck targeted New

Hampshire and subjected itself to personal jurisdiction in this

court. Hannah Int'l Foods, Inc. v. House of Thaller, Inc., No.

7 18-CV-52-AJ,

, at *5 (D.N.H. Aug. 10, 2018).

III. Form of Discovery

While TOI has succeeded in sketching “additional pertinent

avenues of inquiry,” it has failed to explain why depositions

are necessary. Therefore, the request for depositions is denied

without prejudice to seeking depositions if merited by

TickCheck’s responses to written discovery requests.

Conclusion

While TOI’s claims may ultimately fail if it cannot gather

further evidence of personal jurisdiction, it has shown that it

diligently asserted its rights and outlined a colorable case for

jurisdiction. The court hereby grants TOI’s motion as to

interrogatories and requests for production of documents, and

denies the motion as to depositions. TOI is limited to ten (10)

interrogatories. TOI must propound its discovery requests by

October 23, 2019. If this period of jurisdictional discovery

impacts other case deadlines, the parties may file an

appropriate motion to extend with the court. TickCheck’s motion

to dismiss (doc. no. 25) is denied without prejudice to refiling

within 30 days after the close of jurisdictional discovery.

8 SO ORDERED.

__________________________ Andrea K. Johnstone United States Magistrate Judge

October 17, 2019

cc: James F. Laboe, Esq. Jeffrey C. Spear, Esq. Alexander J. Marek, Esq. Nicholas F. Casolaro, Esq.

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