United States District Court, D. Arizona
AMENDED ORDER 
HONORABLE STEVEN P. LOGAN, UNITED STATES DISTRICT JUDGE.
Merola Sales Company, Inc. (“Merola”) filed suit
against Tabarka Studio, Inc. (“Tabarka”) seeking
a declaratory judgment against any copyright infringement
claims, and other relief. (Doc. 1) Tabarka filed
counterclaims against Home Depot U.S.A. Incorporated
(“HD Stores”) and Home Depot Product Authority
LLC (“HD Web”, and together with HD Stores, the
“Home Depot Defendants”) for copyright infringement
and injunctive relief. (Doc. 29) Before the Court is the Home
Depot Defendants' motion to dismiss (the
“Motion”) seeking dismissal of Tabarka's
infringement counterclaims against them. (Doc. 41) The
Court's ruling is as follows.
Zenati (“Zenati”) is a designer that creates
hand-painted tiles, pottery, furniture, and other housewares.
(Doc. 29 at 14) Zenati has created many collections of
hand-painted tiles, which he manufactures and sells to
several of the largest tile distributors throughout the
United States. (Doc. 29 at 15) At issue in this case are four
of Zenati's designs, Paris Metro 1 (“PM 1”)
created in 2008, Casablanca 2 (“C2”) created in
2007, Paris Metro 11 (“PM 11”) created in 2008,
and Touareg 6 created in 2011. In 2017, Tabarka began the
process of obtaining registered copyrights for PM 1, PM 11,
C2, and Touareg 6 with the U.S. Copyright Office. (Doc. 29 at
16) On August 15, 2017, PM 1, PM 11 and Touareg 6 were issued
copyright registrations for the artwork on the tiles. (Doc.
29 at 16) However, the registration application for C2 was
denied on March 22, 2018. (Doc. 29 at 17)
2015, prior to the filing of the copyright registration
applications, Tabarka became aware that several of its
designs, including PM 1, PM 11, and C2, were being copied and
sold in nearly-identical tiles throughout the United Kingdom.
(Doc. 29 at 17) In 2017, Tabarka became aware that Merola,
along with the Home Depot Defendants, was selling unlicensed
tiles that were identical copies of Tabarka's tiles.
(Doc. 29 at 22, 25) Tabarka sent a letter to the Home Depot
Defendants on May 1, 2017, stating that the Home Depot
Defendants were violating Tabarka's copyright interests
through sale of the tiles. (Doc. 41 at 2) Merola, the
supplier of the tiles to the Home Depot Defendants, responded
to the first letter seeking proof of ownership of valid
copyrights. (Doc. 41 at 2-3) On August 23, 2017, Tabarka sent
a second letter to the Home Depot Defendants alleging
copyright infringement. (Doc. 41 at 3)
January 23, 2018, Merola initiated this lawsuit seeking a
declaratory judgment that it did not infringe on
Tabarka's copyright interests. (Doc. 1 at 12-13) On May
1, 2018, Tabarka filed its answer and asserted counterclaims
against Merola and the Home Depot Defendants for copyright
infringement and injunctive relief. (Doc. 29 at 12-34) The
Home Depot Defendants filed the Motion on June 7, 2018,
seeking dismissal of Tabarka's counterclaims for lack of
personal jurisdiction and improper venue, among other
reasons. (Doc. 41)
Dismissal for Lack of Personal Jurisdiction Pursuant to Rule
Legal Standard for General Jurisdiction
well settled that only a limited set of affiliations with a
forum will render a defendant amenable to general
jurisdiction there, and the paradigm forum for the exercise
of general jurisdiction over a corporation is one in which
the corporation is fairly regarded as at home, such as the
place of incorporation and principal place of business.
Best Odds Corp. v. iBus Media Ltd., 655 Fed.Appx.
582-83 (9th Cir. 2016). Only in an exceptional case will
general jurisdiction be available anywhere else. Id.
It is undisputed that HD Stores is a Delaware corporation
with its principal place of business in Georgia, and HD Web
is a limited liability company organized under the laws of
Georgia with its principal place of business in Georgia.
(Doc. 41 at 5; Doc. 29 at 13) Accordingly, the Court finds
that the Home Depot Defendants are not subject to the general
jurisdiction of the Court.
Legal Standard for Specific Jurisdiction
Rule 4.2(a) of the Arizona Rules of Civil Procedure, an
Arizona court may exercise personal jurisdiction over
parties, whether found within or outside the state, to the
maximum extent permitted by the Arizona Constitution and the
Constitution of the United States. Cybersell, Inc. v.
Cybersell, Inc., 130 F.3d 414, 416 (9th Cir. 1997)
(stating that under Rule 4.2(a), Arizona will exert personal
jurisdiction over a nonresident litigant to the maximum
extent allowed by the federal constitution). Due process
requires that to exercise jurisdiction over a non-resident
defendant, the defendant have certain minimum contacts with a
forum 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). Courts employ a three-part test to determine if a
defendant has sufficient minimum contacts to be subject to
specific personal jurisdiction: (1) the 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. Schwarzenegger v. Fred Martin Motor
Co., 374 F.3d 797, 802 (9th Cir. 2004).
plaintiff bears the burden of satisfying the first two prongs
of the test.” Schwarzenegger, 374 F.3d at 802.
If the plaintiff meets that burden, “the burden then
shifts to the defendant to ‘present a compelling
case' that the exercise of jurisdiction would not be
reasonable.” Axiom Foods, Inc. v. Acerchem
Int'l, Inc., 874 F.3d 1064, 1068-69 (9th Cir. 2017).
Although the burden is on a plaintiff to show that a court
has jurisdiction over a defendant, in the absence of an
evidentiary hearing, a plaintiff need only make a
“prima facie showing of jurisdictional facts to
withstand the motion to dismiss.” Pebble Beach Co.
v. Caddy, 453 F.3d 1151, 1154 (9th Cir. 2006).