The opinion of the court was delivered by: BARRY
This matter comes before the court on the motion of defendants Maslym Holding Company ("Maslym") and Heinemann Electric (Europe) S.A. ("Heinemann Europe") for dismissal of the complaint for lack of in personam jurisdiction or, in the alternative, on the basis of forum non conveniens. The court has reviewed the submissions of the parties without oral argument pursuant to Fed. R. Civ. P. 78.
Plaintiff Eaton Corporation seeks a declaratory judgment regarding the parties' rights under a Trademark License Agreement ("Trademark Agreement") and a Patent and Know-How Agreement ("Patent Agreement") (collectively, the "Agreements") entered into in December, 1989.
Plaintiff is an Ohio corporation with its principal place of business in Cleveland, Ohio. Complaint, P 1. On July 31, 1992, plaintiff purchased the assets of Heinemann Electric Company ("Heinemann Electric"), which was a party to the Patent Agreement. Id. at P 43; Aff. of Olivier Bourgeois ("Bourgeois Aff."), P 8. At the time the Agreements were executed, Heinemann Electric had a wholly-owned subsidiary, Heinemann, Inc., which was a party to the Trademark Agreement.
Aff. of James E. Shugars ("Shugars Aff."), P 2; Bourgeois Aff., P 8.
In 1989, Heinemann Electric was a New Jersey corporation with its principal place of business in Lawrenceville, New Jersey, and Heinemann, Inc. was a Delaware corporation. Bourgeois Aff., PP 4, 8. By mid-1993, approximately one year after Heinemann Electric was purchased by plaintiff, Heinemann Electric's operations were moved from New Jersey to Salsbury, Maryland. Id. at P 17; Aff. of Amanda F. Shechter, P 2, 6.
Defendant Heinemann Europe is a corporation established under the laws of Switzerland with its principal place of business in Le Lieu, Switzerland. Id. at P 2. It contracted with Heinemann Electric and Heinemann, Inc. under the Agreements. Aff. of Michael J.E. Frye ("Frye Aff."), PP 2-3. In 1989, defendant Maslym purchased all of the shares of defendant Heinemann Europe. Id. at P 3. Defendant Maslym is also a Swiss corporation whose principal place of business is in Zug, Switzerland. Id.
B. Defendants' Contacts With New Jersey
Both plaintiff and defendant Heinemann Europe manufacture and sell hydraulic magnetic circuit breakers.
Defendant Heinemann Europe manufactures, assembles and distributes the circuit breakers in Europe and Morocco; none of its products is manufactured, sold, or distributed in the United States. Bourgeois Aff., P 3.
Neither defendant Heinemann Europe nor defendant Maslym has an office, bank account, telephone, or telephone listing in New Jersey or anywhere else in the United States. Frye Aff., P 5. Neither owns any real property or has any employees, representatives or agents in New Jersey or anywhere in the United States, nor do they advertise or pay taxes in this country. Id. In addition, neither defendant has an agent for service of process in New Jersey.
Id. at P 12.
The Agreements which are the subject of this action were executed on December 3, 1987 in Lausanne, Switzerland, and what little negotiation there was did not take place in New Jersey. Bourgeois Aff., PP 8, 13. The Agreements do not contain choice of forum clauses, but the Patent Agreement designates that it shall be construed in accordance with the laws of the State of Delaware.
Complaint, Ex. B. at P 15.
The Agreements created long-term commitments between defendant Heinemann Europe, Heinemann Electric, and Heinemann, Inc; they were effective for ten years beginning on January 1, 1988 unless terminated sooner. Complaint, Ex. A, P 7; Ex. B, PP 1, 12. Thus, from 1988 to mid-1993 -- when Heinemann Electric moved to Maryland -- the Agreements were performed by Heinemann Electric and Heinemann, Inc. in New Jersey. This performance included developing technology and sharing it -- at defendant Heinemann Europe's request -- with defendant Heinemann Europe.
Because the Agreements outlined the terms whereby Heinemann Electric and Heinemann, Inc. shared its trademarks, patents, and know-how with defendant Heinemann Europe, there was considerable written communication generated by all parties to the Agreements. See Aff. of Steven Burack ("Burack Aff."), Ex. B; Aff. of Edward Delaney ("Delaney Aff."), Ex. B; Aff. of Ewhen Duma ("Duma Aff."); Aff. of James Urie ("Urie Aff.").
Defendants communicated with Heinemann Electric in New Jersey on at least a weekly basis for over three years. See Burack Aff., Ex. B; Delaney Aff., Ex. B; Duma Aff.; Urie Aff. Among these communications were requests for know-how and assistance in obtaining UL approvals from Heinemann Electric. See Urie Aff., Exs. C, E, G; Duma Aff., Exs. A, C. One piece of correspondence, a May 15, 1992 letter to Heinemann Electric, asserted that defendant Heinemann Europe had the "exclusive right to sell, manufacture and distribute all products bearing the Heinemann name throughout the continent of Europe." Complaint, P 40.
Several representatives of defendant Heinemann Europe travelled to New Jersey on six occasions between January 1990 and April 1992 to discuss matters related to the Agreements. See Burack Aff., Ex. A; Delaney Aff., Ex. A. The subjects discussed included product development and improvement, licensing requests, marketing issues, product costs, and the relationship between defendant ...