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EZScreenPrint LLC v. SmallDog Prints LLC

United States District Court, D. Arizona

August 6, 2018

EZScreenPrint LLC, Plaintiff,
SmallDog Prints LLC, et al., Defendants.


          Honorable G. Murray Snow United States District Judge.

         Pending before the Court is the Motion to Dismiss of Defendant SmallDog Prints LLC (Doc. 18) and the Motion to Amend of Plaintiff EZScreenPrint LLC (Doc. 20). For the following reasons, the Court grants the Motion to Dismiss and denies the Motion to Amend.


         Plaintiff EZScreenPrint is an Arizona limited liability company which sells supplies for screen printing on shirts and other materials. (Doc. 1, ¶ 2). Plaintiff operates a website, Id. Plaintiff has trademarked the names “ezscreen” and “ezscreenprint”. Id. at ¶ 10. Defendant SmallDog Prints also sells screen printing supplies, and is a Missouri limited liability company. Id. at ¶ 3. Defendant Trish Bordeaux is the owner of SmallDog Prints and resides in Missouri. Id. at ¶ 4. Defendants primarily conduct their business through a website, Id. Plaintiff alleges that Defendants have used the phrase “EZ Screen Printing” in multiple areas of their webpage and advertising. Id. at ¶¶ 14-20. Plaintiff asserts that this is a violation of its trademarks. Defendants have moved to dismiss for lack of personal jurisdiction.


         I. Legal Standard

         The party “seeking to invoke the court's jurisdiction bears the burden of establishing that jurisdiction exists.” Scott v. Breeland, 792 F.2d 925, 927 (9th Cir. 1986). Once a defendant moves to dismiss for lack of personal jurisdiction, the plaintiff is “obligated to come forward with facts, by affidavit or otherwise, supporting personal jurisdiction.” Amba Mktg. Sys., Inc. v. Jobar Int'l, Inc., 551 F.2d 784, 787 (9th Cir. 1977). The plaintiff must show that the exercise of jurisdiction comports with the state long-arm statute and the principles of due process. Omeluk v. Langsten Slip & Batbyggeri A/S, 52 F.3d 267, 269 (9th Cir. 1995). Arizona's long-arm statute confers jurisdiction to the maximum extent allowed by the Due Process Clause of the United States Constitution. Ariz. R. Civ. P. 4.2(a); Doe v. American Nat'l Red Cross, 112 F.3d 1048, 1050 (9th Cir. 1997). Due process requires a nonresident defendant to have “certain 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) (internal citation omitted). There are two types of personal jurisdiction: general and specific. A court may assert general personal jurisdiction over a defendant when the defendant's “affiliations with the State in which suit is brought are so constant and pervasive ‘as to render [it] essentially at home in the forum State.'” Daimler AG v. Bauman, 571 U.S. 117, 122 (2014) (quoting Goodyear Dunlop Tires Operations, S.A. v. Brown, 564 U.S. 915, 919 (2011)). By contrast, specific personal jurisdiction exists where “the defendant has ‘purposefully directed' his activities at residents of the forum . . . and the litigation results from alleged injuries that ‘arise out of or relate to' those activities. Burger King Corp. v. Rudzewicz, 471 U.S. 462, 473 (1985) (internal citations omitted).

         II. Analysis

         A. Original Complaint

         Plaintiff's original complaint relies on specific jurisdiction. Specific jurisdiction is analyzed under a three-pronged test: “(1) [t]he non-resident defendant must purposefully direct his activities or consummate some transaction with the forum or resident thereof; or perform some act by which he purposefully avails himself of the privilege of conducting activities in the forum, thereby invoking the benefits and protections of its laws; (2) the claim must be one which arises out of or relates to the defendant's forum-related activities; and (3) the exercise of jurisdiction must comport with fair play and substantial justice, i.e. it must be reasonable.” Mavrix Photo, Inc. v. Brand Tech, Inc., 647 F.3d 1218, 1227-28 (9th Cir. 2011) (emphasis in original). The concept of “purposeful direction” is applied in non-contract suits, which is the case with this trademark infringement claim. Id. at 1228. The Ninth Circuit uses a three-element test to consider purposeful direction and this “effects” test. The defendant must have “(1) committed an intentional act, (2) expressly aimed at the forum state, (3) causing harm that the defendant knows is likely to be suffered in the forum state.” Dole Foods Co. v. Watts, 303 F.3d 1104, 1111 (9th Cir. 2002). An act is “expressly aimed” at the forum state “when the defendant is alleged to have engaged in wrongful conduct targeted at a plaintiff whom the defendant knows to be a resident of the forum state.” Pebble Beach Co. v. Caddy, 453 F.3d 1151, 1156 (9th Cir. 2006). Plaintiff bears the burden of satisfying the first two prongs, and if Plaintiff does so, Defendants must “set forth a ‘compelling case' that the exercise of jurisdiction would not be reasonable.” Mavrix, 647 F.3d at 1228 (quoting Burger King, 471 U.S. at 476-78).

         Although Plaintiff sufficiently alleges that Defendants committed an intentional act, by allegedly intentionally infringing on Plaintiff's trademarks, Plaintiff has not sufficiently demonstrated that Defendants expressly aimed these actions at Arizona or that Defendants knew this harm was likely to be suffered in Arizona. When a defendant operates an “essentially passive website” and has “done nothing to encourage residents of the forum state to access its site, ” those acts are insufficient to confer jurisdiction over an out-of-state defendant. Rio Properties, Inc. v. Rio Intern. Interlink, 284 F.3d 1007, 1020 (9th Cir. 2002) (citing Cybersell, Inc. v. Cybersell, Inc., 130 F.3d 414, 418-20 (9th Cir. 1997). Rather, “‘something more' [is] required to indicate that the defendant purposefully directed its activity in a substantial way to the forum state.” Rio Properties, 284 F.3d at 1020 (citing Cybersell, 130 F.3d at 418). The Ninth Circuit has found that “something more” existed where a defendant sent a letter demanding money in exchange for return of a hacked domain name, evincing knowledge of the plaintiff's place of business and targeting the forum. Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316, 1319-20 (9th Cir. 1998). Similarly, “something more” existed when a defendant was alleged to have run radio and print advertisements for its website in the forum state, again evincing knowledge of the plaintiff's place of business and targeting the forum state. Rio Properties, 284 F.3d at 1020-21.

         Even where, as here, Defendants are alleged to operate an interactive website, Plaintiff must still establish that Defendants took actions “expressly aimed” at Arizona. When a website is interactive, courts “have looked to the ‘level of interactivity and commercial nature of the exchange of information that occurs on the Web site' to determine if sufficient contacts exist to warrant the exercise of jurisdiction.” Cybersell, 130 F.3d at 418 (quoting Zippo Mfg. Co. v. Zippo Dot Com, Inc., 952 F.Supp. 1119, 1124 (W.D. Pa. 1997). But, Plaintiff has provided no specific allegations about the interactivity of Defendants' website with residents of the state of Arizona. Plaintiff has no made no allegations that that Defendants do business with Arizona residents, other than to say that Defendants are “doing business in the State of Arizona . . . conducted by means of a website.” (Doc. 1, ¶ 2). This general allegation, without any specific evidence that Defendants have done business with Arizona residents, is insufficient. Plaintiff has also not alleged that Defendants targeted customers in Arizona by buying advertisements in Arizona or contacting potential customers in Arizona. See Adidas America, Inc. v. Cougar Sport, Inc., 169 F.Supp.3d 1079, 1089 (D. Or. 2016) (finding that the defendant's interactive website, “by itself, is insufficient to satisfy the express aiming requirement of the effects test” where plaintiff had not presented any evidence that defendant had contact with forum state residents through its website). Moreover, Plaintiff has not alleged that Defendants knew Plaintiff was a resident of Arizona. Defendants could not know that the harm they allegedly caused was likely to be suffered in Arizona if they did not know Plaintiff was a resident of Arizona. Because the Court finds that Plaintiff has not shown that Defendants' expressly aimed conduct at the state of Arizona, the Court need not address the remaining factors. Plaintiff's Complaint, as originally written, does not establish personal jurisdiction over the Defendants.

         B. Proposed Amended Complaint

         1. ...

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