United States District Court, W.D. Pennsylvania
ANTHONY L MARFIONE AND MICROTECH KNIVES, INC. Plaintiffs,
KAI U.S.A., LTD. AND KALE BEYER, Defendants.
ORDER GRANTING DEFENDANT BEYER'S MOTION TO
DISMISS AND DEFENDANT KAI'S MOTION TO DISMISS
BARBARA J. ROTHSTEIN UNITED STATES DISTRICT JUDGE
Anthony L. Marfione and Microtech Knives, Inc.
(“Microtech”) bring the present action against a
Microtech competitor, Defendant KAI U.S.A. Ltd.
(“Kai”), and Defendant Kale Beyer, a Kai
employee, alleging violations of the Lanham Act, 15 U.S.C.
§ 1125(a)(1)(B), as well as defamation and commercial
disparagement. Each Defendant has moved to dismiss
Plaintiffs' claims. Specifically, Defendant Kai maintains
that it was not the “publisher” of the
third-party statements at issue, and, therefore, that it
cannot be subject to liability under the Lanham Act as a
matter of law; and, for the same reason, that it is immune
from Plaintiffs' state law claims pursuant to the
Communications Decency Act, 47 U.S.C. § 230. Doc.
Defendant Beyer argues that the Court lacks personal
jurisdiction over him. Doc. 29. Plaintiffs oppose both motions.
Pls.' Opp'n to Kai Mot., Doc. 32; Pls.' Opp'n
to Beyer Mot., Doc. 31. Having reviewed the parties'
briefs together with all relevant materials, the Court finds
that it lacks personal jurisdiction over Defendant Beyer, and
that Defendant Kai did not “publish” the
statements at issue for the purposes of Plaintiffs'
claims. Accordingly, the Court grants each Defendant's
motion to dismiss. The Court's reasoning follows:
FACTUAL AND PROCEDURAL BACKGROUND
Anthony L. Marfione, a resident of North Carolina, is the
President of Plaintiff Microtech, a corporation organized and
existing under the laws of Pennsylvania. (Am. Compl., Doc. 26
¶ ¶ 1, 3.) Microtech designs, manufactures,
assembles, and sells knives. (Id. ¶ 2).
Defendant Kai is a corporation that also designs,
manufactures, assembles, and sells knives. (Id.
¶ ¶ 10-11). Kai is organized and exists under the
laws of Oregon, and ships its “Kershaw” and
“Zero Tolerance” (“ZT”) brand knives
into Pennsylvania. (Id. ¶ ¶ 4, 12).
Defendant Beyer is employed as Kai's social medial
specialist. (Id. ¶ 59; Doc. 26-6). Beyer
resides and has “a regular place of business” in
Oregon. (Id. ¶ ¶ 6-7).
parties agree on many of the facts germane to the present
motions. (See Kai Mot., Doc. 28 at 3-5; Beyer Mot.,
Doc. 29 at 3-5; Pls.' Opp'ns, Doc. 32 at 2-3, 5-7,
Doc. 31 at 2-3, 6-8). In 2011, Plaintiff Microtech began
selling a knife that it named the “Matrix.”
(Compl., Doc. 26 ¶ 20). In 2016, Kai issued Microtech a
cease and desist letter, claiming that the Matrix infringed a
utility patent that Kai had obtained in 2015. (Id.
¶ 22). In response, Microtech “immediately
discontinued” selling that version of the Matrix and
other knives that it believed utilized Kai's patent.
(Id. ¶ 24). By redesigning the Matrix and
discontinuing the sale of certain other products, Microtech
“resolved” the patent infringement claim, and no
patent infringement or other related lawsuit was ever filed
against Microtech. (Id. ¶ ¶ 27, 30).
January 3, 2017, a knife enthusiast and blogger, Anthony
Sculimbrene,  emailed Kai's Director of Sales and
Marketing, Thomas Welk. (Doc. 26 ¶ 34 (citing 1/3/17
Sculimbrene to Welk Email, Doc. 26-1)). In his email,
Sculimbrene stated that he was “working on a series of
articles for [another website dedicated to hunting, fishing,
and camping gear, regarding] new releases for 2017, ”
and asked Welk for information about Kai's new Kershaw
and ZT brand knives. (Doc. 26-1 at 2; see Doc. 26-3
at 1). Sculimbrene additionally provided a link to one of his
blog posts in which he had written that Kai was 2016's
“Company of the Year.” (Doc. 26-1 at 2).
responded two days later with the specifications for the
requested products, which, according to the linked files,
included a new Kai knife named the “Natrix.”
(Doc. 26 ¶ 25 (citing 1/5/17 Welk to Sculimbrene Email,
Doc. 26-2 at 1-2)). Two hours later, Sculimbrene replied:
“[T]he in-joke-the Natrix-is my favorite product Kai
has released ever. Oh god that is funny.” (Doc. 26
¶ 38 (quoting 1/5/17 Sculimbrene to Welk Email, Doc.
26-1 at 1)). Welk replied: “Not sure what you
mean…joke? Natrix is a genus of colubrid snakes. Four
species are in the genus. They are collectively called grass
snakes and water snakes. Am I missing something?” (Doc.
26 ¶ 39 (quoting 1/5/17 Welk to Sculimbrene Email, Doc.
26-1 at 1)).
two weeks later, on January 20, 2017, Sculimbrene posted to
his website an article titled “The Story Behind the
Greatest Knife of All Time” (the “Sculimbrene
Article”). (Doc. 26 ¶ 45 (citing Sculimbrene
Article, Doc. 26-4 at 1-2)). In his Article, Sculimbrene
writes that he considers Kai's Natrix knife the
“greatest” knife of all time because it has a
“dash of storytelling” to it. (Doc. 26-4 at 1).
According to the Sculimbrene Article, this
“story” includes, for example, Plaintiffs having
“blatantly cop[ied]” and “ripped 
off” Kai's knives when Microtech released various
versions of their Matrix knives. (Id. at 1). The
Sculimbrene Article further claims that Kai's Natrix
knife is “aimed at [Plaintiff] Marfione, and it is
named after a snake in the grass.” (Id. at 2).
afternoon, a link to the Sculimbrene Article was posted on
each of Kai's ZT knives' and Kershaw knives'
Instagram accounts with the following respective messages:
“This is definitely worth a read-this is the story
behind the #zt0777 [a ZT knife] & the new @kershawknives
#7007 Natrix[;]” and “Wonder what the backstory
to the new #7007 Natrix is? See why [Sculimbrene] calls it
‘the greatest knife of all time!'” (Doc. 26
¶ 60 (citing ZT knives' & Kershaw knives'
Instagram Posts, Doc. 26-7)). Also that afternoon, Defendant
Beyer posted on his Instagram account a link to the
Sculimbrene Article with the following message: “This
is the whole backstory behind [one of Kai's knives] and
the knockoff, ‘the Matrix' by @microtechknives and
how the new @kershawknives struck a chord with its latest
model, the #7007Natrix-read it at [Sculimbrene's
website.]” (Doc. 26 ¶ 59 (citing Beyer Instagram
Post, Doc. 26-6)). Beyer directed his post to Plaintiffs'
Instagram accounts and continued: “I invite any sort of
response[.] It will, as always, be unedited. Say what you
want in response and I will publish it.” (Doc. 26-6).
next day, Welk emailed Sculimbrene. (Doc. 26 ¶ 54
(citing 1/21/17 Welk to Sculimbrene Email, Doc. 26-5)). The
email's subject line reads: “Your article…[,
]” and the body of Welk's email reads: “Just
read it with a big smile on my face…Cheers.”
February 2017, Marfione filed before this Court a lawsuit
against Sculimbrene alleging that the Sculimbrene Article
contained defamatory statements. (Docket No. 1:17-cv-46 (W.D.
Pa., filed Feb. 17, 2017)).
action, Plaintiffs contend that “Kai and/or  Welk was
the creator and/or developer” of the Sculimbrene
Article; that “the Article was originally published by
Sculimbrene at the direction of Kai and/or  Welk;”
and that Kai and Beyer each “republished” the
Sculimbrene Article when they posted a link to it on their
respective Instagram accounts. (Am. Compl., Doc. 26 ¶
¶ 55-56, 57-72). The Sculimbrene Article, Plaintiffs
continue to assert, contains false, misleading, and
defamatory statements; and, as a result, Plaintiffs have
suffered-and will continue to suffer-“monetary and
reputational injury.” (Id. ¶ 80). Through
Defendant Beyer's “republication” of the
Sculimbrene Article, Plaintiffs contend, Beyer defamed
Marfione (Count 2) and commercially disparaged Microtech
(Count 4). Through Defendant Kai's “joint
development and subsequent republication” of the
Sculimbrene Article, Plaintiffs claim that Kai violated the
Lanham Act, 15 U.S.C. § 112(a)(1)(B) (Count 1), defamed
Marfione (Counts 3, 5, 6, 7),  and commercially disparaged
Microtech (Count 7).
now move to dismiss. Defendant Beyer argues that the Court
lacks personal jurisdiction over him because he is a resident
of Oregon and has no contacts with Pennsylvania. Doc. 29.
Defendant Kai maintains that it was not the original
publisher of Sculimbrene's Article, nor did it republish
the Article, and, therefore, that Kai cannot be subject to
liability under the Lanham Act as a matter of law; and, for
the same reasons, that it is immune from Plaintiffs'
state law claims pursuant to the Communications Decency Act,
47 U.S.C. § 230. Doc. 28. The Court addresses each
Defendant's motion in turn.
THE COURT LACKS PERSONAL JURISDICTION OVER DEFENDANT
district courts sitting in Pennsylvania have personal
jurisdiction over non-resident defendants to the extent
permissible under Pennsylvania law. Mellon Bank (E.)
PSFS, Nat. Ass'n v. Farino, 960 F.2d 1217, 1221 (3d
Cir. 1992); Fed.R.Civ.P. 4(e). Pennsylvania's long-arm
statute extends jurisdiction to the limit of federal due
process. Mellon Bank, 960 F.2d at 1221 (citing Pa.
Con. Stat. Ann. §5332(b)). Thus, the Court need
determine only whether the exercise of personal jurisdiction
over Defendant Beyer comports with due process. Id.;
Miller Yacht Sales, Inc. v. Smith, 384 F.3d 93, 96
(3d Cir. 2004).
process requires that the defendant has 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, 326 U.S. 310, 316 (1945);
Carteret Sav. Bank, FA v. Shushan, 954 F.2d 141, 145
(3d Cir. 1992). A defendant's contacts with the forum
state may support either general or specific jurisdiction.
General jurisdiction is not at issue in this
case.Specific jurisdiction “is invoked
when the claim is related to or arises out of the
defendant's contacts with the forum[; thus, ] the focus
must be on minimum contacts.” Carteret Sav.
Bank, 954 F.2d at 149 (internal quotations omitted).
defendant raises a jurisdictional defense under Federal Rule
of Civil Procedure 12(b)(2), the plaintiff bears the burden
of demonstrating that jurisdiction is proper. BP Chems.
Ltd. v. Formosa Chem. & Fibre Corp., 229 F.3d 254
259 (3d Cir. 2000). “The plaintiff meets this burden
and presents a prima facie case for the exercise of personal
jurisdiction by establishing with reasonable particularity
sufficient contacts between the defendant and the forum
state.” Mellon Bank, 960 F.2d at 1223
(internal quotation omitted). The plaintiff may not rely on
“mere allegations” or “the bare pleadings
alone[; instead the] plaintiff must respond with actual
proofs, ” such as “sworn affidavits or other
competent evidence[.]” Time Share Vacation Club v.
Atl. Resorts, Ltd. 735 F.2d 61, 66 n.9 (3d Cir. 1984).
Plaintiffs Have Not Demonstrated That Beyer Has