The opinion of the court was delivered by: William A Lsup United States District Judge
ORDER DENYING MOTION TO DISMISS
In this action for trademark infringement and unfair competition, defendants move to dismiss on the ground that there is no subject-matter jurisdiction. Defendants contend that subject-matter jurisdiction does not exist because there is no basis to exercise extraterritorial jurisdiction under the Lanham Act. There is no basis, defendants contend, because the alleged infringing acts occurred in Pakistan by a Pakistani national and his organization with no adverse commercial effects on plaintiff. Because this order finds that sufficient infringing acts occurred in the United States to establish subject-matter jurisdiction and that it is not necessary to exercise extraterritorial jurisdiction, defendants' motion is DENIED.
Between January 11 and February 22, 2008, defendants released six polls regarding Pakistanipublic opinion of issues surrounding the Pakistani parliamentary elections and its president. Defendants made their polls available to the press and the public. They also published the polls on their web site, which is in English and accessible in the United States. The polls bore the mark "Gallup" (First Amd. Compl. ¶ 32). Defendants do business under the name Gallup Pakistan and operate as an opinion and socio-economic research organization, providing survey and opinion polls on political, social, and business topics (id. at ¶ 10). Defendants have provided public opinion studies to international agencies headquartered in the United States and to educational institutions, also in the country (id. at ¶ 12).
In addition, defendant Gilani, the chairman of Gallup Pakistan, appeared at a conference in Chicago in 2007 where he presented a paper that bore the Gallup mark (id. at ¶ 41). He also spoke on National Public Radio on February 12, 2008, where he discussed his organization's poll results. He was introduced as the head of "the Pakistani chapter of the Gallup polling organization" (id. at ¶ 38). On February 15, Gilani participated in an internet broadcast that originated from an organization based in the United States. He was introduced as the "chairman of Gallup Pakistan" (id. at ¶ 39). The complaint does not state where Gilani was when he was interviewed on NPR or when he participated in the internet broadcast. It appears, however, from the complaint that Gilani was not in the United States for either event. The complaint alleges that Gilani was in the United States from February 28 to March 3, 2007, for the Chicago conference. It also alleges that he was in the United States on March 27, 2008, for a conference in San Francisco (id. at ¶¶ 40--42). Neither time period coincides with his interview on NPR or his participation in the internet broadcast. Plaintiff owns numerous United States trademark registrations and applications incorporating the Gallup mark for use in connection with surveys, public opinion polls, business management consulting, as well as other goods and services. Plaintiff continues to use the Gallup mark in connection with its goods and services. Plaintiff has invested 28 substantial resources in promoting its goods and services in connection with the Gallup mark.
Plaintiff maintains that the Gallup mark has acquired a strong and favorable public recognition and distinctiveness identifying Gallup as the source of surveys, public opinion polling, and business management consulting services of the highest quality, credibility, and reliability (id. at ¶¶ 14--18). Plaintiff alleges violations of Sections 1114, 1125(a), and 1125(c) and seeks monetary and injunctive relief. Defendants move to dismiss on the ground that there is no subject-matter jurisdiction. Of note, defendants do not challenge the exercise of personal jurisdiction. They contend no subject-matter jurisdiction exists because there is no basis to exercise extraterritorial jurisdiction under the Lanham Act. Plaintiff counters that it is not necessary to exercise extraterritorial jurisdiction because defendants have committed infringing acts in the United States sufficient to establish subject-matter jurisdiction.
The party seeking to invoke the Court's jurisdiction bears the burden of establishing subject-matter jurisdiction. A jurisdictional challenge under Rule 12(b)(1) may be made either on the face of the pleadings or by presenting extrinsic evidence. Warren v. Fox Family Worldwide, Inc., 328 F.3d 1136, 1139 (9th Cir. 2003).*fn1 "In a facial attack, the challenger asserts that the allegations contained in a complaint are insufficient on their face to invoke federal jurisdiction. By contrast, in a factual attack, the challenger disputes the truth of the allegations that, by themselves, would otherwise invoke federal jurisdiction." If the Rule 12(b)(1) motion is a facial attack, a district court must accept all allegations in the complaint as true and draw all reasonable inferences in favor of the plaintiff. Wolfe v. Strankman, 392 F.3d 358, 362 (9th Cir. 2004). Here, defendants' Rule 12(b)(1) motion is a facial attack. Defendants stated in their motion that they seek to dismiss the action on the ground that "plaintiff's complaint concerns alleged acts which were mainly, and overwhelmingly, done in or orchestrated from, Pakistan - outside the territorial jurisdiction of the United States and its courts" (Br. 4) (emphasis added).
Defendants do not dispute facts alleged by plaintiff that would establish subject-matter jurisdiction.
1. SUBJECT-MATTER JURISDICTION UNDER THE LANHAM ACT.
District courts have original jurisdiction of all actions arising under the Lanham Act without regard to the amount in controversy or whether there is a diversity of citizenship of the parties. 15 U.S.C. 1121. The Lanham Act provides a broad jurisdictional grant to district courts that extends to all commerce which may lawfully be regulated by Congress. Steele v. Bulova Watch Co., 344 U.S. 280, 283--284 (1952). The jurisdictional test is whether defendants' alleged trademark infringement occurred "in commerce." "Commerce" is defined as "all commerce which may lawfully be regulated by Congress." 15 U.S.C. 1127. The phrase "in commerce" does not necessarily require that the infringing acts took place "'in commerce' which is subject to congressional regulation, but that the acts have an adverse effect on that commerce." Wells Fargo & Co. v. Wells Fargo Exp. Co., 556 F.2d 406, 427 (9th Cir. 1977). Plaintiff alleges that defendants' trademark infringement occurred "in commerce" in three ways: (1) defendants published poll results in the United States under the Gallup mark; (2) defendant Gilani appeared in the United States and promoted poll results under the Gallup mark; and, (3) defendants operate a website that prominently features the Gallup mark.
A. Defendants' Publication of Poll Results
In The United States Under the Gallup Mark. Defendants do business under the name Gallup Pakistan. Gallup Pakistan "operates as an opinion and socio-economic research organization, providing survey and opinion polls on political, social, and business topics." Defendants "provide or have provided public opinion studies to international agencies headquartered in the United States" (FAC ¶¶ 8--12). Defendants use the mark Gallup in their trade name and prominently display the mark on their publications (id. at ¶ 23 ). Plaintiff "owns numerous United States trademark registrations and applications incorporating the Gallup mark for use in connection with surveys, public opinion polls, business management consulting, as well as other goods and services" (id. at ¶ 14). Plaintiff alleges that defendants' use of the Gallup mark "has caused or is likely to cause confusion, to cause mistake, or to deceive customers of both Gallup and the defendants and to cause the dilution of the distinctive quality of the Gallup mark" (id. at ¶ 49). Plaintiff's complaint satisfies the jurisdictional "in commerce" requirement because it alleges that defendants' trademark infringement not only occurred "'in commerce' which is subject to Congressional regulation" but also has the potential to adversely affect that commerce. The alleged trademark infringement occurred "in commerce" because Congress regulates the use of trademarks on published ...