United States District Court, E.D. California
MEMORANDUM AND ORDER RE: MOTION TO DISMISS, OR, IN
THE ALTERNATIVE, TO TRANSFER VENUE
WILLIAM B SHUBB, UNITED STATES DISTRICT JUDGE
Inventors Row Inc., brought this action against defendants
Paula Blankenship doing business as Nodpod
(“defendant” or “Blankenship”) and
Does 1-5 arising out of defendant's alleged trademark
infringement. The matter is now before the court on defendant
Blankenship's Motion to Dismiss the Complaint or, in the
Alternative, to Transfer Venue. (Docket No. 8.)
Factual and Procedural Background
is the owner of a California corporation with its principal
place of business in Rocklin, California that develops,
markets, distributes, and sells pillows, including travel
pillow attachments. (Compl. ¶ 2 (Docket No. 1).)
Defendant is the owner of a privately-owned business with its
principal place of business in Shepherdsville, Kentucky that
also develops, markets, distributes, and sells travel
pillows. (Id. ¶ 1.) Plaintiff alleges that
defendant transacts substantial business nationwide via
internet sales. (Id. ¶ 3.)
in October of 2014, plaintiff began advertising, marketing,
and distributing the NODPOD pillow. (Id. ¶ 9.)
On March 12, 2015, plaintiff submitted an application for a
design mark in the United States Patent and Trademark Office
(“USPTO”) on the Principal Register, registration
number 5173967, containing the words “NODPOD EYE
PILLOW.” (Id. ¶¶ 12, 13.) On January
17, 2016, the design mark was published. (Id. ¶
in 2016, defendant began advertising, marketing, and
distributing a NODPOD pillow. (Id. ¶ 10.) On
March 18, 2016, defendant filed a trademark application for
“NODPOD.” (Id. ¶ 14.) On June 29,
2016, defendant received a suspension notice from the USPTO
informing them of the conflict with plaintiff's
application. (Id.) On July 26, 2016, defendant
launched a Kickstarter Campaign for the NODPOD travel pillow
and by September of 2016 defendant raised $307, 274 from 7,
280 backers through Kickstarter, and $328, 081 through an
Indiegogo campaign. (Id. ¶¶ 15, 16.)
Defendant's version of the NODPOD pillow was published or
featured in at least 30 media sources including, among
others, Cosmopolitan, Elle, The Telegraph, The Huffington
Post, and the Today Show. (Id. ¶ 18.) On April
4, 2017, a registration certificate was issued to plaintiff
by the USPTO. (Id. ¶ 13.)
result of defendant's media campaign, plaintiff alleges
that it has been harmed because consumers and marketers
confuse defendant's product and brand with
plaintiff's product and brand. (See Id. ¶
20.) In addition, plaintiff alleges that defendant has
committed and continues to commit acts of trademark
infringement against plaintiff. (Id. ¶ 21.) On
November 13, 2017, plaintiff filed a Complaint against
defendant for: (1) trademark infringement under section 32(1)
of the Lanham Act; (2) false representations in commerce and
false designation of origin under section 43(a) of the Lanham
Act; (3) federal unfair competition under section 43(a) of
the Lanham Act; and (4) trademark infringement under
California common law. (Compl.) Plaintiff seeks damages, an
accounting, the imposition of a constructive trust upon
defendant's illegal profits, and injunctive relief.
plaintiff has the burden of establishing that the court has
personal jurisdiction over a defendant. Doe v. Unocal
Corp., 248 F.3d 915, 922 (9th Cir. 2001). Where the
court does not hold an evidentiary hearing and the motion is
based on written materials, the plaintiff need only establish
a prima facie showing of personal jurisdiction.
Schwarzenegger v. Fred Martin Motor Co., 374 F.3d
797, 800 (9th Cir. 2004); see also Data Disc, Inc. v.
Sys. Tech. Assocs., Inc., 557 F.2d 1280, 1285 (9th Cir.
1977) (“[I]f a plaintiff's proof is limited to
written materials, it is necessary only for these materials
to demonstrate facts [that] support a finding of jurisdiction
in order to avoid a motion to dismiss.”). “A
‘prima facie' showing means that the plaintiff need
only demonstrate facts that, if true, would support
jurisdiction over the defendant.” Am. Orthodontics
Corp. v. MidAtl. Orthodontics, Inc., Civ. No. 3:17-1129
BEN AGS, 2017 WL 4151241, at *2 (S.D. Cal. Sept. 18, 2017).
To meet its burden, “the plaintiff cannot simply rest
on the bare allegations of its complaint, . . .
uncontroverted allegations in the complaint must be taken as
true, ” and “[c]onflicts between parties over
statements contained in affidavits must be resolved in the
plaintiff's favor.” Schwarzenegger, 374 F.3d at
there is no applicable federal statute governing personal
jurisdiction, the court applies the law of the state in which
it sits. Love v. Associated Newspapers, Ltd., 611
F.3d 601, 608-09 (9th Cir. 2010). “California's
long-arm jurisdiction statute is coextensive with federal due
process requirements.” Id.; see also Cal. Code
Civ. Proc. § 410.10. Due process requires that for a
nonresident defendant to be subject to the court's
jurisdiction, the defendant must “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) (citation omitted).
The strength of contacts required depends on which of the two
categories of personal jurisdiction a litigant invokes:
specific jurisdiction or general jurisdiction. Ranza v.
Nike, Inc., 793 F.3d 1059, 1068 (9th Cir. 2015) (citing
Daimler AG v. Bauman, 134 S.Ct. 746, 754 (2014)).
parties do not dispute that defendant is not subject to
general jurisdiction in California. The sole dispute is
whether defendant is subject to specific jurisdiction in
jurisdiction exists when a case “aris[es] out of or
relate[s] to the defendant's contacts with the
forum.” Helicopteros Nacionales de Colombia, S.A.
v. Hall, 466 U.S. 408, 414 n.8 (1984). The Ninth Circuit
uses a three-prong test to determine whether specific
(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.
374 F.3d at 802 (quoting Lake v. Lake, 817 F.2d
1416, 1421 (9th Cir. 1987)) (internal quotation marks
plaintiff bears the burden of satisfying the first two prongs
of the test. If the plaintiff fails to satisfy either of
these prongs, personal jurisdiction is not established in the
forum state.” Id. Once the plaintiff satisfies
the first two prongs, “the burden then shifts to the
defendant to ‘present a compelling case' that the
exercise of jurisdiction would not be reasonable.”
Id. (quoting Burger King Corp. v.
Rudzewicz, 471 U.S. 462, 476-78 (1985)).
Purposeful Availment or Direction
the first prong, plaintiff must establish that defendant
“either purposefully availed itself of the privilege of
conducting activities in California, or purposefully directed
its activities toward California.” Schwarzenegger, 374
F.3d at 802. While courts use the term “purposeful
availment, ” to include both purposeful availment and
purposeful direction, availment and direction are, in fact,
two distinct concepts. Id.
availment typically consists of action taking place in the
forum that invokes the benefits and protections of the laws
of the forum.” Advice Co. v. Novak, Civ. No.
08-1951 JCS, 2009 WL 210503, at *9 (N.D. Cal. Jan. 23, 2009)
(citing Schwarzenegger, 374 F.3d at 802). “Purposeful
direction usually consists of actions outside the forum state
that are directed at the forum.” Id. “A
purposeful availment analysis is most often used in suits
sounding in contract . . . [while] [a] purposeful direction
analysis . . . is most often used in suits sounding in
tort.” Schwarzenegger, 374 F.3d at 802 (internal
trademark infringement actions, the Ninth Circuit requires a
showing of purposeful direction.” AirWair Int'l
Ltd. v. Schultz,73 F.Supp.3d 1225, 1232-33 (N.D. Cal.
2014) (citing Nissan Motor Co. v. Nissan Comput.
Corp.,246 F.3d 675 (9th Cir. 2000)). Purposeful
direction is evaluated under the “effects test”
derived from Calder v. Jones,465 U.S. 783 (1984).
Under the “effects test” the defendant must have:
“(1) committed an intentional act, (2) expressly aimed
at the forum state, (3) causing harm that the ...