CHICAGO — A federal judge has tossed a lawsuit brought by zoo, theme park and museum souvenir staple Mold-a-Rama over a trademark dispute with a competitor, who was accused of wrongly selling Mold-a-Rama machines without vintage Mold-a-Rama parts.
The judge said the case doesn't belong in an Illinois court.
In an opinion filed March 31, U.S. District Judge Andrea Wood said Mold-A-Rama’s suit against Collector-Concierge-International under the federal Lanham Act was based on allegations that CCI sells Mold-A-Rama vending machines “that have been materially altered by replacing their original components with modern, non-Mold-A-Rama parts.”
Brookfield-based Mold-A-Rama uses mid-20th century technology in about 60 machines selling plastic souvenir figurines throughout the Midwest. Rick Sky, a Canadian, runs CCI, which markets memorabilia to private collectors, but also sells Mold-A-Rama machines on behalf of Bruce Weiner, who already had been dismissed from the complaint as a defendant.
Though the root issue is whether CCI can sell a machine branded as a Mold-A-Rama if it doesn’t contain vintage parts, Mold-A-Rama also opposed CCI’s motion to dismiss the complaint as untimely, because it was filed after the company challenged the jurisdiction. It also said CCI conceded the federal court had jurisdiction by participating in the initial discovery phase of settlement discussions.
“CCI’s mandatory initial discovery disclosures gave Mold-A-Rama no reasonable expectation that CCI was submitting to this Court’s jurisdiction,” Wood wrote. “Quite the opposite, as CCI’s disclosures again reiterated that it planned to contest the personal-jurisdiction issue.”
Wood said the record showed “CCI was actively trying to settle the case and avoid litigation” and gave no indication it would try the case on the merits. Neither did it waste court resources, as Wood noted she’d “made no substantive rulings prior to this one.”
With the jurisdictional defense still in play, Wood said Mold-A-Rama’s complaint noted CCI had a presence selling the machines in question at the November 2018 Chicagoland Coin Op show in Grayslake. The judge also pointed to its conduct promoting the show, including a video titled “The Story of the Mold A Rama Machine — Special Chicagoland Edition,” which includes Sky, Weiner and MIke Hasanov, an Illinoisan who owns Vintage Coin-Op Restorations.
Although the show was in Lake County, Wood noted, “Mold-A-Rama makes no allegations and presents no evidence suggesting” it specifically targeted Illinoisans. Even Mold-A-Rama’s own evidence aligns with CCI’s position that the event “is an international trade show.” CCI said it was trying to sell the machines to clients “in Europe, the United Arab Emirates, Canada and Asia.”
There is no evidence CCI sold any machines in Grayslake, nor that it sold one to an Illinois resident at any point. Wood said the promotional video doesn’t suggest any targeting of potential customers in Illinois, but focuses on the history and technology of the machines.
“The only substantive discussion of Chicago in the video occurs when Hasanov recalls his childhood memories of using the Mold-A-Rama vending machines at Chicago’s Lincoln Park Zoo and how that nostalgia got him involved in marketing Mold-A-Rama vending machines,” Wood wrote. “That brief reference to Chicago hardly establishes the video’s intent to target Illinois residents. … The video spends just as much time discussing Mold-A-Rama machines located in New York, Detroit, and Montreal; Chicago gets no special attention.”
Wood further established that Hasanov was, at most, “an independent sales agent” for CCI, and although he is based in Illinois that doesn’t establish jurisdiction for CCI in the state. She said Mold-A-Rama failed to show Hasanov was used to target Illinoisans or that he made any sales. The entire record shows Weiner sold two machines to Americans.
With no substantial business conduct in Illinois established, Wood granted CCI’s motion to dismiss for lack of personal jurisdiction.
Mold-a-Rama was represented by attorney Nicole M. Murray and others with the firm of Quarles & Brady LLP, of Chicago.
CCI was represented by attorney Dennis F. Esford, of the Windy City Trial Group, of Chicago.