## Facts

- John Walker & Sons, Ltd., a Scotch whisky producer, owned registered “Black Label” and “Striding Figure” trademarks used in marketing and sales.
- Cosmetics marketers (the “Florida defendants”) provided artwork for deodorant cans that allegedly simulated Walker’s marks.
- The Florida defendants contracted with DeMert & Dougherty, Inc., an Illinois company, to produce about 50,000 aerosol deodorant cans using that artwork.
- DeMert arranged for the cans, applied the artwork, filled the cans at its Illinois facility, and shipped the finished cans from Illinois to a warehouse in Miami, Florida, for about $23,900.
- The deodorant was later sold in Panama and Colombia by a nonparty.
- Walker sued in the Northern District of Illinois under the Lanham Act for trademark infringement against DeMert and the Florida defendants.

## Issues

1. Whether DeMert’s labeling, filling, and shipment of the deodorant cans from Illinois constituted a Lanham Act “use in commerce” sufficient to support infringement liability.
2. Whether Illinois courts could exercise personal jurisdiction over the Florida defendants under the Illinois long-arm statute and due process.
3. Whether venue in the Northern District of Illinois was proper as to the Florida defendants.

## Decision

- Reversed the summary judgment for DeMert and remanded for further proceedings.
- Held that DeMert’s conduct could constitute “use in commerce,” creating a triable issue on Lanham Act liability.
- Affirmed dismissal of the Florida defendants for lack of personal jurisdiction and improper venue.

## Legal Principles

- “Use in commerce” under the Lanham Act can include a party’s affixing or applying allegedly infringing markings to goods and placing those goods into the distribution chain, even if that party does not sell to consumers.
- Summary judgment is improper where evidence permits a reasonable finding that a defendant’s acts materially contributed to the allegedly infringing goods entering commerce.
- Personal jurisdiction requires satisfaction of the forum’s long-arm statute and federal due process; contracting with an in-forum manufacturer for a single job, without additional forum-directed conduct, may be insufficient.
- Personal jurisdiction and venue must be established separately for each defendant; a forum connection created by one defendant’s in-state conduct does not automatically support jurisdiction or venue over others.

## Conclusion

The court allowed the Lanham Act claim against the Illinois contract filler to proceed because labeling, filling, and shipping the allegedly infringing goods could qualify as “use in commerce,” but it upheld dismissal of the out-of-state marketers because their limited connection to Illinois—hiring an Illinois contractor—did not support Illinois jurisdiction or venue.


John Walker & Sons, Ltd. v. DeMert & Dougherty, Inc., 821 F.2d 399 (7th Cir. 1987)