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Inventors Row Inc. v. Blankenship

United States District Court, E.D. California

May 2, 2018

PAULA BLANKENSHIP dba NODPOD; and DOES 1-5, Defendant.



         Plaintiff 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.)

         I. Factual and Procedural Background

         Plaintiff 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.)

         Beginning 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. ¶ 13.)

         Beginning 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.)

         As a 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. (Id.)

         III. Discussion

         A. Rule 12(b)(2) Motion

         A 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 800.

         If 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)).

         The 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 California.

         Specific 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 jurisdiction exists:

(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, 374 F.3d at 802 (quoting Lake v. Lake, 817 F.2d 1416, 1421 (9th Cir. 1987)) (internal quotation marks omitted).

         “The 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)).

         1. Purposeful Availment or Direction

         Under 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.

         “Purposeful 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 citations omitted).

         “For 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 ...

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