Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Copperhead Agricultural Products, LLC v. KB AG Corporation, LLC

United States District Court, D. South Dakota, Southern Division

September 25, 2019

COPPERHEAD AGRICULTURAL PRODUCTS, LLC, a South Dakota Limited Liability Company, and COPPERHEAD ' CONCAVE LLC, a South Dakota Limited Liability Company, Plaintiffs,
v.
KB AG CORPORATION, LLC, KIMBER MITCHELL, and BRIAN ROBERTSON, Defendants.

          (REDACTED) MEMORANDUM OPINION AND ORDER DENYING DEFENDANTS' MOTION TO DISMISS FOR LACK OF PERSONAL JURISDICTION; DENYING PLAINTIFFS' MOTION FOR PRELIMINARY AND DECLARATORY RELIEF; DENYING DEFNDANTS' MOTION TO STAY

          Lawrence L. Piersol, United States District Judge.

         Copperhead Agricultural Products, LLC and Copperhead Concave LLC (collectively referred to as, "Copperhead") are the plaintiffs in this matter and KB Ag Corporation, LLC, Kimber Mitchell, and Brian Robertson are the defendants in this matter ("Defendants"). Pending before the Court are the following motions: (1) Defendants' Motion to Dismiss, Doc. 14; (2) Copperhead's motion to set hearing for preliminary injunctive relief, Doc. 23; (3) Copperhead's motion for preliminary and declaratory relief, Doc. 26; (4) Mitchell and Robertson's motion for joinder, Doc. 42; (5) Copperhead's motion to compel discovery, Doc. 43; and (6) Defendants' motion to stay, Doc. 66.

         For the forgoing reasons Defendants' motion to dismiss for lack of personal jurisdiction is denied; Copperhead's motion to set hearing for preliminary injunctive relief is denied; Copperhead's motion for preliminary and declaratory relief is denied; Mitchell and Robertson's motion for joinder is granted; and Defendants' motion to stay is denied. The Court will address the remaining claims in Defendants' motion to dismiss in a separate memorandum opinion and order. Copperhead's motion to compel discovery has been referred to Magistrate Judge Veronica Duffy.

         BACKGROUND

         I. Don Estes Joins CM Welding

         From March 1, 1960 until 2003, Don Estes owned a business named Estes Manufacturing in Flanagan, Illinois. Doc 21, ¶ 2.

         Don Estes is the patent holder of certain concave technologies that, it is alleged, are affiliated with his name in the agricultural machinery industry. Doc. 1, ¶ 10. The patents cover certain concave products that attach to farm machinery such as combines and are used to secure a more efficient harvesting process. Doc. 1, ¶ 10.

         The patents that are registered in Don Estes's name that are the subject of this action are the following: (1) U.S. 8, 454, 416 B1; (2) U.S. 8, 690, 652 B1; and (3) a reissue of patent U.S. 8, 690, 652 Bl as U.S. RE46, 401 E. Doc. 1, ¶ 14.

         Beginning in as early as February 7, 2011, Don Estes began working for CM Welding, Inc. ("CM Welding"), a company in Frankfurt, Indiana, owned by Carolyn Mitchell Estes. Doc. 63-5. A screenshot from CM Welding's website, dated February 7, 2011, states as follows:

         Home of the Disrupter.

Meet Don Estes, the inventor of "The Disrupter, " a tool designed to reduce rotor loss in corn and roping green stem soybeans on modern combines.
Don Estes owned & operated Estes Mfg. Co. in Flanagan, IL for 43 years. He retired in 2003 and has recently been involved in a new business located in Frankfurt In. as a consultant. C M Welding is now taking on all of Don's products and services. You may call Don any time for a free consultation about anything involving combines and thrashing. He has had a lot of experience in this field and would be happy to talk to you.

         Doc. 63-5. Although CM Welding indicated on its website that Don Estes was acting as a "consultant" for CM Welding, CM Welding argues that Don Estes was, in-fact, an employee of CM Welding. Doc. 67 at 2. CM Welding points to W-2 forms of Don Estes from CM Welding for the years 2012 to 2018 to support it contention that Don Estes was an employee. Doc. 63-1. Don Estes states that distributions from CM Welding went into a joint account owned by he and Carolyn Estes and that they both used the money from that account. Doc. 71, ¶5.

         A screenshot of the CM Welding website dated May 31, 2013, reiterated Don Estes's biography in full, that CM Welding was taking on Don's products and services, and that Don was available for a consultation about anything involving combines and thrashing. Doc. 63-6. This time, however, CM Welding was advertising a different product-the RPR Thrashing/Seperating (sic) Concave System Estes Disrupter Kit. Doc. 63-6. Specifically, the website stated, in part:

CM Welding Inc introduced "The Disrupter" ... in the summer of 2010 and the response was tremendous. . . . We have over 1700 sets in operation, but the rotor loss problem still exists with all STS & new S series machines when ground speed is increased. The rear concave in John Deere Rotor machines is not large enough nor open enough to get crop through without sacrificing a lot of ground speed. Corn, soybeans and wheat thrash completely over the first 1 & 1/2 round bar concaves, but very little separation will happen over the back half of the concave sections due to the small space (5/8") between the remaining round bars.
CM Welding Inc. has designed a 'concave/grate that has 1/2" sq bars with 11/4 opening between. The new concave/grate will replace the rear concave on all of the STS & S series machines. The Vi" Square bars plus the 11/4 space between the bars will increase material flow by 68%. The more crop volume you can get out of the concave section, the less has to be separated over the grate section. SO SLOW DOWN TO KEEP CROP IN OR ADD THE ESTES ROTOR LOSS KIT & GO!

Doc. 63-6.

         While at CM Welding, Don Estes communicated with customers and potential customers about CM Welding products and services and was interviewed by multiple media outlets to promote CM Welding products. Doc. 21, ¶¶ 7-8, Exs. A, B. Don Estes stated that he authorized CM Welding to use his name on its website and Facebook pages because he was married to the owner, Carolyn Estes. Doc. 21, ¶ 5. Don and Carolyn Estes are currently in divorce proceedings. Doc. 15, ¶6.

         (XXXXX).

         The "Estes RPR Concave Systems" appeared in advertising as of 2014. Doc. 52-7. In the 2015 fall/winter edition of Western Farm, Ranch & Dairy Magazine, CM Welding placed an add for "Estes RPR Concave Systems." Doc. 52-7. In the advertisement, there was no mention of Don Estes other than directing potential customers to call "Donnie" at CM Welding Inc. Doc. 52-7.

         People in the industry knew that certain products sold by CM Welding were designed by Don Estes. An online post from "The Combine Forum" on July 9, 2013, stated that a person in the industry "was thinking about trying the rpr concaves with disrupters from c&m welding. I talked with Donnie Estes and he gave me some customers's No. and they all liked them. Had anyone tried them in a system?" Doc. 63-11. On July 11, 2013, a poster stated that he had "not run the RPR concaves, but have run the 5/8" square bar concave (11/4" openings) and disrupter's from Donnie in 9870s and s680s" This looks like his 3rd concave in the RPR system, but the brochure talks about round bars; so I guess I'm not sure." Doc. 63-11. That same day, another poster stated that "[i]n soybeans, we ran a normal large wire in position one and two and Donnie's square bar in position three and [p]ulled the Disrupters square bar in position three. . . . If Donnie would build a front square bar, I'd run three squares in corn and never look back." Doc. 63-11.

         On July 28, 2016, Carolyn Estes registered the domain names: rprperformanceconcaves.com and estesperformanceconcaves.com. Doc. 63-7.

         Formation of KB Ag, Corp. and Actual Confusion and Likelihood of Confusion

         In mid-August 2017, just prior to KB Ag's formation, Mitchell and Robertson were marketing RPR Concaves on behalf of CM Welding at DakotaFest, held over two days in Mitchell, South Dakota, under the brand name "Estes Performance Concaves, " and encouraged attendees to "see us in the Ag Tent - Booth 3304." Doc. 20-12.

         On August 24, 2017, Mitchell filed an application with the U.S. Patent and Trademark Office, seeking to register the "RPR Concaves" trademark as the first to use in commerce. Doc. 1, ¶ 30. An assignment of the "RPR Concaves" trademark to CM Welding Inc. was recorded with the United States Patent and Trademark Office ("USPTO") on May 20, 2018. Doc. 58-1. On September 10, 2019, the USPTO registered the mark "RPR" in association with agricultural machinery, namely harvesters. Doc. 74. This is a registration on the Principal Register in favor of owner CM Welding. Docs. 74; 74-1.

         On September 5, 2017, KB Ag was organized and registered in Texas. Doc. 15, ¶ 8. KB Ag's principal place of business is in Frisco, Texas. Doc. 15, ¶ 3. Mitchell and Robertson are the owners and Carolyn Estes is the director of KB Ag. Doc. 15, ¶¶ 1, 10. (XXXXX).

         (XXXXX).

         In mid-September 2017, Don Estes appeared with Mitchell and Robertson on behalf of CM Welding in a publicity session with American Fanner to discuss "Estes Performance Concaves." Doc. 21-6.

         Whereas the agricultural products online forums in 2015 referred to RPR Concaves as "CM Welding RPR Concaves, " Doc. 63-11, in 2017, online forums began referring to them as Estes RPR Concaves. Doc. 21-3; 21-4; 21-5.

         In late October 2017, Don Estes left Indiana to spend time in Florida during the cold season and returned to Indiana in early 2018. Doc. 21, ¶ 12. In March 2018, a customer in Perryville, Missouri, Timothy Gremaud ("Gremaud"), who had purchased a RPR Concave in late 2017, decided to purchase another RPR Concave. Doc. 22 ¶¶ 3-4. Gremaud called Estes Performance Concaves utilizing the information packets that were sent with the first RPR Concave that he purchased believing that he was purchasing the same RPR Concave he already owned directly from Don Estes. Doc. 22, ¶ 5. Gremaud discovered that the concave product that he had been sold was not the same as the RPR Concave that he had purchased earlier. Doc. 22, ¶ 10. The company referenced on the invoice enclosed with the concave product he received was KB Ag. Doc. 22, ¶11.

         Gremaud called Don Estes's personal No. to explain the situation. Doc. 22, ¶ 15. He indicated that Don Estes was "dumbfounded" that Gremaud's efforts to purchase another RPR Concave through channels he had used previously resulted in the purchase of an entirely different concave product and Don Estes went to Missouri to assess the situation. Doc. 22, ¶¶ 16-17. Don Estes provided Gremaud with a new RPR Concave and indicated that he would return the other concave, which Gremaud later learned was an XPR Concave manufactured by KB Ag. Doc. 22, ¶18.

         Gremaud did not believe that at the time that KB Ag sent shipped its XPR concave to him that the product had been field-tested and believes the XPR concave to be an inferior product. Doc. 22, ¶¶ 20-21.

         On April 1, 2018, a screen capture of the estesperformanceconcaves.com website shows product testimonials about the RPR Concaves, with specific individuals identified by name and place. Doc. 20-16. A phone No. is listed at the bottom of the page and the following narrative appears under the heading "About Estes Concaves"

Don Estes, as an agricultural equipment welder by trade, invented and patented the Disrupter for Case IH and John Deer rotary combines in the 90s. Since, Estes has developed and patented the class-leading RPR Concave System that improves capacity, eliminates rotor loss and threshes all crops with one concave system.

Doc. 20-16.

         On May 29, 2018, the trademark "Estes Concaves" was registered in Robertson's name. Doc. 14, ¶ 10; Doc. 52-8. The trademark "Estes Performance Concaves" was filed in Robertson's name on March 13, 2018, but it is unclear from the record if it has been registered. Doc. 16-3.

         On July 26, 2018, the annual Ag PhD Field Day event was held in Baltic, South Dakota, and was attended by over 10, 000 people with ties to the agricultural community. Doc. 20-8. KB Ag, marketing itself as Estes Performance Concaves, was one of the approximately 28 listed sponsors of Ag PhD Field Day and "Estes Performance Concaves" was listed prominently as a sponsor on the marketing materials involving Ag PhD Field Day. Docs. 20-10; 20-11. It was there, that "Estes Performance Concaves" officially "unveiled" its "new XPR Concaves" and urged attendees to stop by its booth. Doc. 20-9.

         On August 8, 2018, a screen capture of the www.estesperformance.com website showed the same phone No. at the bottom of the page that had been listed on the website in April 2018, but the heading "About Estes Concaves, " on the site had been changed to read:

We have engineered and developed the most advance concave system that threshes all crops, eliminates rotor loss, improves grain quality, gives you a cleaner sample - all with one set of concaves.

         Doc. 20-17. Explicit references to the RPR system and to Don Estes had been removed, and in their place KB Ag had "testimonials" from unnamed clients and statements about unspecified products. Doc. 20-17.

         In August 21-23, 2018, Defendants attended the DakotaFest Farm Show in Mitchell, South Dakota, which featured agricultural events and activities. Doc. 1, ¶ 37. The year prior at DakotaFest, Defendants had been marketing RPR Concaves for CM Welding under the Estes Performance Concaves brand name.

         (XXXXX).

         Copperhead

         In May 2018, just prior to KB Ag's launch of the XPR Concaves into the wider marketplace, Don Estes contacted Mr. Jass of Copperhead Agricultural Products ("Copperhead Ag") to determine whether Copperhead Ag had any interest in purchasing CM Welding. Doc. 21, ¶ 23. Don Estes provided Copperhead Ag with information relating to CM Welding's financial position and other due diligence information and Don Estes states that this was done with Carolyn Estes's knowledge. Doc. 21, ¶ 25. Ultimately, Copperhead Ag did not make a formal offer to purchase CM Welding. Doc. 21, ¶¶ 25-26.

         At some point in the summer of 2018, Don Estes learned that Carolyn Estes held a position with KB Ag, but was not clear on her specific involvement. Doc. 21, ¶ 28.

         By mid-July 2018, CM Welding was in arrears with Durre Bros. Welding & Machine Shop, Inc. ("Durre Bros."), its exclusive manufacturer, for certain inventory it had ordered. Doc. 20-3; Doc. 21, ¶. 14. Rather than pay for the inventory, CM Welding proposed that Copperhead Ag satisfy its debt which, according to an invoice from CM Welding to Copperhead Ag, totaled $76, 648.67, and receive the inventory directly from Durre Bros. Docs. 21, ¶ 30; 20-3; 20-7. Marc Durre, President of Durre Bros., stated that it was his understanding that as part of this transaction, Copperhead would be able to sell the concave products to third party purchasers and CM Welding would no longer be in engaged in the business. Doc. 70, ¶ 3. Durre Bros, has not manufactured any concave products on behalf of CM Welding since July 2018, although CM Welding continues to market RPR Concaves. Doc. 70, ¶ 4; 63-10. Don Estes believes that Carolyn Estes understood that Copperhead Concave would sell the RPR Concaves under the Copperhead name and would market the product by referencing Don Estes's name and his patented technology. Doc. 21, ¶ 31.

         On July 20, 2018, KB Ag engaged an attorney in Texas to serve a letter to Don Estes and Copperhead Ag, stating that Don Estes, as a representative and agent for Copperhead Ag, "has an continues to 1) defame KB Ag []; 2) tortuously interfere with KB Ag'[s] customers and business relationships and 3) unlawfully appropriate the services and sponsorship of KB Ag [] products". Doc. 15, ¶ 11; 15-1. The letter states the failure to cease and desist such conduct may result in KB Ag filing a lawsuit seeking economic damages for defamation, libel per se, tortious interference with contractual relations, unjust enrichment and unlawful misappropriation. Doc. 15-1.

         On July 24, 2018, counsel for Copperhead Ag confirmed receipt of the July 20, 2018, cease and desist letter and stated that "there is no formal relationship between Mr. Estes and Copperhead Ag [] at this time, " and that "should there be in the future, neither Copperhead Ag [] nor its agents will "spend any time defaming your client." Doc. 15-2.

         On July 26, 2018, Don Estes executed an exclusive license agreement ("the License Agreement"), with another Copperhead company, Copperhead Concave Systems, LLC, ("Copperhead Concave") to license among other things, Don Estes's patents and related "technology, know-how, designs, development, prototypes, and information related to the threshing of crops, instrumentation, packaging, and literature." Doc. 20-4; 15-4. Pursuant to the License Agreement, Don Estes granted Copperhead Concave the exclusive right to "make, have made, use, sell, offer for sale, distribute, develop, and create derivative works, improvements, and derivations" from and to the technology any "licensed products". Doc. 20-4; 15-4. "Licensed product" is defined in the License Agreement as "any product covered by or produced using information, know how, or concepts contained within or based upon" the patents owned by Don Estes and includes "further development of the licensed product, any packaging, and any products previously sold by or on behalf of the Seller utilizing the information or concepts contained directly or indirectly within [Don Estes's patents]." Doc. 15-4; 20-4. Don Estes also granted Copperhead Concave the exclusive right and license to use the "licensed marks" in connection with "any making, use, sale, offer for sale, and distribution of any licensed products." Doc. 20-4. Licensed marks is defined as "any of the marks of [licensor, Don Estes] under which [Don Estes] offered or sold any [licensed product] prior to the [e]ffective [d]ate" of the License Agreement. Docs. 15-4; 20-4.

         Concurrent with the execution of the License Agreement, Don Estes entered into an exclusive distribution agreement ("the Distribution Agreement") with Copperhead Concave to distribute "any equipment or devices manufactured for sale using any [of Don Estes's patents, ]... packaging, and literature related thereto, and any modifications, improvements, and new generations thereof or thereto." Docs. 15-3; 20-5. Don Estes also granted Copperhead Concave the exclusive right and license to use product marks in connection with the distribution of subject products "including, without limitation, the marks 'RPR CONCLAVE (sic) PATENTS' including any marks previously used relative to the [subject products] except those [marks] over which [Don Estes" has no control." Docs. 15-3; 20-5.

         Copperhead Concave markets and sells Don Estes's patented technology pursuant to the Exclusive Licensing Agreement and Exclusive Distribution Agreement. Doc. 1, ¶ 17. Its product is marketed as the "Copperhead Concave System" and con-elates with Case International Holland combines and John Deere combines. Docs. 1, ¶ 17; 63-4. In the record are three different advertisements for Copperhead Concave System dated August 17, 2018; September 25, 2018; and October 15, 2018. Doc. 63-4. The September 25, 2018, advertisement states the "Copperhead Concave Systems is proud to manufacture the original RPR Combine System that was designed by Donnie Estes from Frankfurt Indiana. His original design includes a notched round bar, increased space between round bars and adjustable/removable cover plates." Doc. 63-4.

         South Dakota Contacts

         KB Ag has no employees, office, distributor, buildings, telephone number, or email address in South Dakota and is not licensed to registered to do business in South Dakota. Doc. 15, ¶ 3.

         In mid-August 2017, just prior to KB Ag's formation, Mitchell and Robertson were marketing RPR Concaves on behalf of CM Welding at DakotaFest, held over two days in Mitchell, South Dakota, under the brand name "Estes Performance Concaves, " and encouraged attendees to "see us in the Ag Tent - Booth 3304." Doc. 20-12.

         At the end of February 2018, KB Ag traveled to and incurred business expenses in South Dakota, although the record is devoid of details as to the purpose of this visit. Doc. 49-1.

         On July 23, 2018, KB Ag marketed its XPR Concaves as produced by Estes Performance Concaves in a publication called Dakota Farmer which targets consumers in North and South 49-2. (XXXXX).

         On July 26, 2018, the annual Ag PhD Field Day event was held in Baltic, South Dakota, and was attended by over 10, 000 people with ties to the agricultural community. Doc. 20-8. KB Ag, marketing itself as Estes Performance Concaves, was one of the approximately 28 listed sponsors of Ag PhD Field Day and "Estes Performance Concaves" was listed prominently as a sponsor on the marketing materials involving Ag PhD Field Day. Docs. 20-10; 20-11. It was there, that "Estes Performance Concaves" officially "unveiled" its "new XPR Concaves" and urged attendees to stop by its booth. Doc. 20-9.

         In August 21-23, 2018, Defendants attended the DakotaFest Farm Show in Mitchell, South Dakota, which featured agricultural events and activities. Doc. 1, ¶ 37. Although the farm show was in the latter part of August, Defendants incurred business expenses in South Dakota throughout the month of August and a single business expense in South Dakota on September 4, 2018. Doc. 49-1. During the DakotaFest Farm Show, Defendants approached the Copperhead booth and allegedly "began loudly making defamatory statements about Copperhead, its product line, and the ownership group's affiliations with Don Estes." Doc. 1, ¶ 38. Copperhead alleges that Mitchell was visibly upset and creating a scene and that Mitchell's statements could be heard and understood by individual attendees of DakotaFest in and around Copperhead's booth. Doc. 1, ¶¶ 39-40. Copperhead alleges that its personnel asked Mitchell to leave repeatedly and that as she left, she continued to make disparaging, defamatory statements about Copperhead's product that were false and disparaging. Doc. 1, ¶ 41.

         The XPR Concave is manufactured in Texas. Doc. 15, ¶3. KB Ag takes orders for its XPR Concave through the phone or internet and ships its product from Texas, directly to the customer. Doc. 15, ¶3.

         The expedited discovery production showed that Defendants have sold at least seven XPR Concaves to customers in South Dakota, grossing more than $48, 000 in revenue from these sales. Doc. 49-3. Although one of these sales closed on July 10, 2018, before the field day and farm shows in South Dakota, the other six sales of XPR Concaves to South Dakota customers closed between August 9, 2018, and December 4, 2018-after the field day and farm show events in South Dakota. Doc. 49-3. The record shows the names of the South Dakota customers who purchased the product as well as their phone numbers. Doc. 49-3. Plaintiffs state that "Defendants' document production does not include communications to and from the South Dakota residents that precipitated that sales" and that "[t]his matter is subject to Plaintiffs' Motion to Compel Production of Documents." Doc. 50. In her declaration, Mitchell states that the majority of KB Ag's sales are not in South Dakota and that the company's in-person marketing efforts are "predominantly" aimed at states with larger No. of combines, including Iowa and Illinois. Doc. 15, ¶ 4.

         Also in the record is a chart "identifying more than 100 individuals who provided e-mail addresses and telephone No. with South Dakota's '605' area code." Docs. 50 at 3; 49-4.

         Continued Marketing of Estes RPR Concave by CM Welding

         CM Welding still markets the RPR Concave. On July 2, 2019, Defendants' counsel included in an attachment to his affidavit a copy of what is described as "current" screenshots of CM Welding's website. Doc. 63, ¶ 11; 63-10. Therein, CM Welding is advertising for sale RPR Concaves. It states that "[s]ince 2010 CM Welding has been selling Disrupters and Rotor Bars for John Deere and Case IH combines, then in 2014 CM Welding introduced the RPR Concaves, which were entirely designed to prevent grain loss and keep what you harvest." Doc. 63-10. The "current" CM Welding website also advertises "Estes RPR Concave System for ALL CROPS!." Doc. 63-10. The website also references the "Patented Notch Round Bar" that CM Welding uses "in all our RPR Concave Systems." Doc. 63-10.

         Consent to Use "Estes" Name

         Don Estes states that he authorized CM Welding to use his name solely for purposes of selling RPR Concaves which incorporated his patented technology. Doc. 21, ¶ 21. Don Estes did not authorize Mitchell and Robertson to use the "Estes" name to help sell products sold by KB Ag or for any other purpose and Don Estes has not been offered compensation for the use of the "Estes" name to promote KB Ag's concave product. Doc. 21, ¶¶ 20-21. Don Estes has repeatedly communicated with Mitchell and Robertson that he objects to the use of the "Estes" name to market and sell KB Ag's concaves. Doc. 21, ¶ 22.

         It is alleged that Carolyn Estes, Mitchell's grandmother and guardian, owner of CM Welding, and director of KB Ag, consents to KB Ag's use of the "Estes" name to market its products. Doc. 15, ¶ 10.

         B. Procedural History

         On August 20, 2018, CM Welding instituted an action in Clinton Superior Court, Indiana. The Court does not have a copy of the initial complaint filed in Clinton Superior Court, but Copperhead stated in its brief that the original complaint accused Copperhead plaintiffs of obtaining "trade secrets" from CM Welding's employees and claimed that Copperhead owed additional money under the August transaction. Doc. 19 at 7.

         On September 27, 2018, Copperhead filed a complaint in the Southern Division of the District of South Dakota against KB Ag, Mitchell, and Robertson. Doc. 1. Therein, Copperhead alleges claims for defamation/trade libel; tortious interference; unfair competition; unjust enrichment; deceptive trade practices; unfair competition and false designation of origin under 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); and cyberpiracy in violation of 15 U.S.C. § 1125(d). Doc. 1. Plaintiffs also seek a declaratory judgment holding that Defendants "have no right, title or interest in the marks or trade names: 'Estes Concave' and 'Estes Performance Concave, ' and that any registered mark obtained by Defendants relating to 'RPR' or including the surname 'Estes' is invalid and unenforceable, and that Plaintiffs, pursuant to the Licensing and Distribution Agreement, are the sole beneficiaries of goodwill, value, and market share that derives from or is affiliated with the patented products and their inventor, [] Don Estes." Doc. 1. Plaintiffs also seek the entry of a preliminary and permanent injunction against Defendants enjoining them "from further infringement and misappropriation of the 'Estes Marks' and/or tradenames; further acts of unfair competition, misappropriation, and unjust infringement; further sales, advertising, or attempts to distribute or sell their products by use, invocation, mention to the 'Estes Marks' and/or tradenames." Doc. 1.

         On October 9, 2018, Copperhead filed an opposition to the registration of the "RPR Concaves" trademark by Robertson with the U.S. Patent and Trademark Office. Doc. 58-1. On October 23, 2018, Don Estes filed on opposition to CM Welding's registration of the "RPR" mark in association with agricultural machinery, namely harvesters. Doc. 74.

         On October 11, 2018, CM Welding filed an amended complaint against Don Estes, Copperhead Ag, and Copperhead Concave and others in Clinton County, Indiana. Doc. 16-1. In their amended complaint, CM Welding asserted new claims to the ownership of patent rights in the RPR Concave based on its alleged employment of Don Estes for invention of products, or the shop rights to sell the RPR Concave under common law. Doc. 16-1. CM Welding also claims that it owns the common law rights in the trademark "RPR Concaves." Doc. 16-1. CM Welding seeks to enjoin Copperhead from using the RPR Concaves Trademark. Doc. 16-1.

         On October 23, 2018, Copperhead moved for an order permitting substitute service of Defendants in this case. Doc. 5. In support of its motion, Copperhead filed affidavits stating that they attempted to serve, on several occasions, defendant Mitchell, individually and as registered agent for KB Ag, as well as Robertson, but were unsuccessful. Doc. 6. The registered address for KB Ag at the time was a Post Office box. Doc. 7. Attempts to serve Defendants at a Kentucky address listed on a trademark application for KB Ag and at a possible address of Mitchell in Frisco, Texas, were also unsuccessful. Docs. 6, 7. The Court denied Copperhead's motion for an order permitting substitute service on the basis that the substitute service requested by them was not reasonably calculated to give Defendants notice of this lawsuit. Doc. 9. On January 14, 2019, Copperhead filed with the Court a certificate of service issued by the Texas Secretary of State stating that KB Ag was served with a copy of the Complaint and summons in this lawsuit pursuant to Section 5.251 of the Texas Business Organization Code. Doc. 12.

         On November 2, 2018, the Clinton Superior Court in Indiana granted Copperhead's motion to stay all proceedings and discovery in that case until it resolved Copperhead's motion to dismiss for lack of personal jurisdiction, motion to dismiss CM Welding's request for declaratory judgment stating that CM Welding owns the common law rights to the RPR Concaves trademark and enjoining Copperhead and Don Estes from using the RPR Concaves trademark, and its motion for Protective Order. Doc. 63-2.

         On November 15, 2018, CM Welding filed a motion to dismiss Copperhead's opposition pending with the USPTO pursuant to Rules 12(b)(1), 12(b)(6), and 12(b)(7) of the Federal Rules of Civil Procedure and 37 C.F.R. § 2.117. As an exhibit to its motion, CM Welding included a copy of the complaint filed in the Clinton County Superior Court in Indiana. Doc. 58-1.

         Sometime in 2018, a lawsuit was filed in United States District Court for the Southern District of Texas by two companies against Don Estes, CSM Corp., Copperhead Concaves, and CM Welding seeking to declare the patents of Don Estes unenforceable and invalid. Doc. 63, ¶ 10; 63-9.

         On January 17, 2019, KB Ag moved to dismiss the complaint filed by Copperhead with this Court on the basis of improper venue, lack of personal jurisdiction, and failure to state a claim for relief under Federal Rules of Civil Procedure, 12(b)(3), 12(b)(2), and 12(b)(6), respectively. Docs. 14, 18. Alternative to dismissal, KB Ag moved for an order transferring the case to the Eastern District of Texas pursuant to 28 U.S.C. § 1406(a) and 28 U.S.C. § 1404(a). Docs. 14, 18.

         On February 8, 2019, Copperhead filed a motion for permission from the court to conduct expedited discovery for purposes of (1) responding to KB Ag's motion to dismiss for lack of personal jurisdiction and (2) supporting a motion for preliminary injunctive relief which Copperhead also planned to file. Doc. 23. Copperhead supplied the Court with a copy of the written discovery requests (interrogatories and requests for production of documents) it proposed serving on Defendants.

         In its brief in support of its motion to conduct discovery, Copperhead explained it wanted to develop information relating to the nature of Carolyn's Estes's relationship with Defendants and relating to whether Carolyn Estes or CM Welding authorized, assigned or otherwise purported to transfer intellectual property rights to defendants relating to RPR Concaves. Doc. 24 at 6-8. Copperhead did not inform the Court in its request for expedited discovery that the Indiana state court had stayed all proceedings and discovery in that action some four months earlier in November 2018.

         On February 8, 2019, Copperhead also filed a motion for preliminary injunctive relief and declaratory relief. Doc. 26. Therein, Copperhead requests that the Court enter an order granting the preliminary injunctive and declaratory relief that it seeks in its complaint, specifically: 1) a declaratory judgment that Defendants have no right, title, or interest in the mark "RPR, " that any registered mark obtained by Defendants relating to "RPR" or including the surname "Estes" is invalid and unenforceable; 2) entry of a preliminary injunction enjoining Defendants from a) further infringement and misappropriation of the Estes Marks and/or tradenames; b) further acts of unfair competition, misappropriation, and unjust ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.