Boyd Tech, Inc. v. Boyd Tech, Inc. (Florida) et al, No. 4:2018cv00972 - Document 13 (S.D. Tex. 2018)

Court Description: MEMORANDUM OPINION AND ORDER granting 5 MOTION to Dismiss 1 Complaint, for Lack of Personal Jurisdiction. (Signed by Judge Sim Lake) Parties notified.(gclair, 4)

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Boyd Tech, Inc. v. Boyd Tech, Inc. (Florida) et al Doc. 13 United States District Court Southern District of Texas ENTERED IN THE UNITED STATES DISTRICT COURT FO R TH E SOU THERN D IST R ICT O F TEXA S HOU STON D IV IS ION July 25, 2018 David J. Bradley, Clerk BOYD T ECH , IN C . Plaintiff, CIVIL ACTION NO . H -18-0972 BOYD TECH, INC. ( FLORIDA) and EDWA RD A LA N AM BL ER , Defendants. M EM ON AH DUM OP IN ION AN D O RDER Plaintiff, Boyd Tech, Inc. ('Boyd Tech Texasz' uBTl-Texas,' or ' ' ' nplaintiff' /), filed this action on March 2018, against defendants Boyd Tech, Inc. ( Florida) ( uBoyd Tech Florida' or 'BTI' ' Florida' ') and Edward Alan Ambler l' ' Ambler'l ' ( collectively, u Defendants/), asserting claims for trademark infringement, unfair ' competition , and cyberpiracy under the Lanham U .S .C . 55 1114 ( 1), 1l25( a), 1125( d), and common law trademark infringement and unfair competition x Pending before the court is Defendants' Motion to Dismiss for Lack of Personal Jurisdiction (u Defendants' Motion to Dismiss' ( ') Docket Entry a response ( Docket Entry No . 5), to which Plaintiff filed For the reasons stated below, the court concludes that Defendants' Motion to Dism iss should be granted . l original Complaint, Docket Entry No . 99 . Dockets.Justia.com 1. Factual and Procedural Backqroundz Plaintiff a Texas corporation that provides various construction consulting and advisory services. Sam Boyd (uBoyd' ') owner of Plaintiff. Harvey Svetlik l'svetlik' ' 'l approached Plaintiff about developing a fluid used to encapsulate pipelines . Plaintiff and a Wyoming corporation produced a fluid blend that would reduce asbestos-containing dust during pip - bursting excavations and pipeline rehabilitation projects. Plaintiff marketed the fluid blend as EncapsulAc ( the ' ' Markr o Plaintiff has used and promoted the EncapsulAc Mark on its website, encapsulac .com , at trade shows, and at meetings with contractors . field test EncapsulAc . May During the test Boyd met with Andrew Mayer, an owner and operator of a pipeline rehabilitation company , and with Ambler , who was also involved in the project. On May 2016, Ambler filed a patent application for a process related to p ipe bursting , in which Amb ler identified EncapsulAc as a dry powder formulation manufactured by Plaintiff.3 September of 2016 Boyd , Ambler, Mayer, and Svetlik discussed creating a new entity for work on pipeline projects. In November of 2016 Boyd , Amb ler , Mayer , and Svetlik executed a z see id. at $$ 15-40. B united States Patent 9,890,893 ( nAmbler's Patent' , Exhibit B o to Original Complaint, Docket Entry 1-2, p . 9. shareholders ' agreement to govern the affairs of the new entity , Boyd Tech Florida , and incorporated the company in Florida . The shareholders ' agreement required Boyd and Svetlik to work in Texas. Boyd was the president of Boyd Tech Florida until March On June 2017 , Plaintiff filed for a federal trademark registration for EncapsulAc with the United States Patent and Trademark Office IUUSPTO/ 4 On July 'I. 2017, Boyd Tech Florida sent a cease -and-desist letter demanding that Plaintiff and Boyd terminate applications with the USPTO related the Mark x on November Boyd Tech Florida filed for a federal trademark registration EncapsulA c x registered Plaintiff's Mark x January 2018, the USPTO Plaintiff alleges that Ambler and Boyd Tech Florida have created website, encapsulac .org , that markets the same services as Plaintiff 's website , and that Ambler and Boyd 4 united Tech States Florida Patent redirected and Plaintiff's Trademark Office website, EncapsulAc (uplaintiff's Trademark Registrationv), Exhibit A to Original Complaint, Docket Entry No . 1-1, 1. ssee Demand to Cease and Desist , Exhibit B Motion to Dismiss, Docket Entry No . 5-4 . E Trademark/service Mark Application, Defendants' Principal Register (u Defendants' Trademark Registration' , Exhibit C to Original o Complaint, Docket Entry No . 1-3 , p . 1 . Rplaintiff 's Trademark Registration , Exhib it A to Original Complaint, Docket Entry No . 1-1, p . 1 . encapsulac .com , their website , encapsulac .org, without Plaintiff's permission . II . Motion to Dismiss for Lack of Personal Jurisdiction A. Standard of Review Dismissal lack pers onal j urisdiction is governed by Federal Rule of Civil Procedure l2 ( b) moves dismiss for lack When a foreign defendant personal jurisdiction under Rule 12( ( b) 2), 'the plaintiff ' ' bears the burden of establishing the district court's jurisdiction over the defendant.'' ' Quick Technoloqies, Inc. v . Sage Grour PLC, 313 F.3d 338, 343 ( 5th Cir. 2002), cert. denied, ( 2003) ( quoting Mink v. AkkA Development LLC, 19O F. 3d 333, 335 ( 5th Cir. 1999)). district court rules on a motion u When the dismiss for lack of personal jurisdiction ' without an evidentiary hearing, the plaintiff may bear his burden by presenting a p rima facie case that personal jurisdiction is proper.'' Id. at 343-344 ( ' quoting Wilson v. Belin, ( 5th Cir .), cert. denied, ( 1994)). nIn making its determination , the district court may consider the contents of the record before the court at the time of the motion , including 'affidavits , testimony , or discovery .'' ' any interrogatories , comb ination the depositions, recognized oral methods Id. at 344 ( quoting Thompson v. Chrvsler Motors Corpw 755 F.2d 1162, 1165 ( 5th Cir . 1985)). The court must accept as true the uncontroverted allegations in the plaintiff's complaint and must resolve in favor of the plaintiff any factual conflicts . Guidrv v . United States Tobacco Co ., Incw 1999) F. 619, 625 ( 3d 5th However, the court is not obligated conclusory allegations , even uncontroverted . Corp. v. Potomac Electric Power Co., credit Panda Brandvwine F.3d 865, ( 5th 2001). u Absent any dispute as to the relevant facts, the issue of whether personal jurisdiction may be exercised over a nonresident defendant is a question law be determined by th E eq Court .' Ruston Gas Turb ines , Inc . v . Donaldson Co ., Inc w ' F .3d 415, 418 ( 5th Cir . 1993). B. Applicab le Law A federal district court may exercise personal jurisdiction over a nonresident defendant the forum state's long -arm statute confers personal jurisdiction over that defendant; and the exercise of personal jurisdiction comports with the Due Process Clause of the Fourteenth Amendment .' ' F.3d ( 2010). ( 5th McFadin v . Gerber, 2009), cert. denied, Since the Texas long-arm S. 68 statute extends as far as constitutional due process allows, the court considers only the second step the inquiry . Id . Exercise of personal jurisdiction over a nonresident defendant comports with federal due process guarantees when the nonresident defendant has established minimum contacts with the forum state, and the exercise jurisdiction udoes not offend ' traditional notions of fair play and substantial justice.'' Internat4onal Shoe ' Co . v . State of Washington , Office of Unemployment Compensation and Placement, 66 S. 154, 158 ( 1945) ( quoting Milliken v . Mever, 61 Ct. 339, 343 ( 1940)). Once a plaintiff satisfies these two requirements, a presumption arises that jurisdiction is reasonable, and the burden of proof and persuasion shifts to the defendant to present na compelling case that the presence of some other considerations would render jurisdiction unreasonable.' ' King Corp . v . Rudzewicz, 105 Burger 2174, 2185 ( 1985). nThe ' minimum contacts' inquiry is fact intensive and no one element is decisive; rather the touchstone is whether the defendant 's conduct shows that 'reasonably anticipates being haled into court .'' ' McFadin , 587 F .3d at uThere are two types of ' minimum contacts': those that give rise to specific personal jurisdiction and those that give rise to general personal jurisdiction.' Lewis ' v . Fresne, 252 F.3d 352, 358 ( 5th Cir. 2001) General Jurisdiction court may exercise general jurisdiction over non-resident defendants uwhen their affiliations with the State are so Acontinuous and systematic ' as to render them essentially at home forum State .' ' Brown, 131 S. jurisdiction Goodvear Dunlop Tires Operations , S .A . v . 2846, 2851 ( 2011). nEstablishing general ' difficult' and requires ' extensive contacts between a defendant and a forum .'' Sanqha v . Naviq8 ShirManaqement ' Private Limited, 882 F. 3d 96, 101-02 ( 5th Cir . 2018) ( quoting Johnston v . Multidata Systems International Corp w 609 ( 5th Cir. 2008)) the exercise domicile l.l' ' uFor an individual, the paradigm forum for general a jurisdiction is Daimler AG v . Bauman, 134 ( quoting Goodvear, 13l S . which corporate the individual's Ct. 746, 76O ( 2014) at 2853). uThe ' paradigm' forums in defendant is 'at home ,'. corporation 's place of incorporation and business .' ' F .3d are principal place BNSF Railway Co . v . Tyrrell, ( 2017) ( citing Daimler, general jurisdiction 1549, 1558 at 760). not limited the 'The exercise ' these forums; 'exceptional case ,' a corporate defendant 's operations an another forum ' may be so substantial and of such a nature as to render the corporation at home that State.'' ' n. 19) difficu lt. 429, 432 Id. ( quoting Daimler, 134 asserting that exceptional case Monkton Insurance Services, Ltd . v . Ritter , 768, F .3d ( 5th 2014). Vague allegations uthat give indication as to the extent, duration , or frequency of contacts are insufficient to support general jurisdiction.' Johnston, 523 F. ' 3d at 610 . Specific Jurisdiction A court may exercise specific jurisdiction when the alleged injuries arise from or are directly related to the nonresident defendant 's contacts with the forum state . Gundle Lining Construction Corp . v . Adams Countv Asphalt, Inc w ( 5th Cir. 1996) ( citing Helicopteros Nacionales de Colombia, S. . A v . Hall, 1868, 1872 n . ( 8 1984) and Quick Technologies, F. at 344). 3d To determine whether specific jurisdiction ex ists, a court must 'examine the relationship among the defendant, ' the forum , and the litigation to determine whether maintaining the suit offends traditional notions justice.' Gundle Lining, ' fair play and substantial F. at 205. Even a single contact 3d can support specific jurisdiction if the defendant u' purposefully avails itself of the priv ilege of conducting activities within the forum State , thus invoking laws .'' ' benefits and protections Ct . at 2183 . Burger King, 1O5 'purposeful availment ' must uThe non-resident 's such that defendant 'shou ld reasonably anticipate being haled into court ' in the forum state .' ' Ru ston Ga s , Woodson , F. at 3d ( citing World-Wide Volkswaqen Corp . v . Ct. 559, 567 ( 1980)). There are three parts a purposeful availment inquiry . First, only the defendant's contacts with the forum are relevant, not the unilateral activ ity of the plaintiff or a third party . Sanqha, 882 F.3d at ( citing Walden v . Fiore, 1122 ( 2014) (u have consistently rejected attempts to satisfy the We defendant-focused ' inimum m contacts ' contacts between the plaintiff State.' ')) inquiry by demonstrating third parties) and the forum Second, the contacts relied upon must be purposeful rather than random, fortuitous, or attenuated . Id . ( citing Walden, Ct. at 1123). benefit, advantage, Finally, the defendant must seek some or profit by availing jurisdiction. Burger King, purposefully avoid itself the 2183. A defendant may particular forum by structuring its transactions in such a way as to neither profit from the forum 's laws nor subject itself jurisdiction there. Expeditions v . Drugg, 221 S. W.3d 569, Burger King, 1O5 S. Moki Mac River ( Tex . 2007) ( citing at 2181-85). Since specific jurisdiction claim specific, ' aq plaintiff bringing multiple claims that hE arise out establish different forum contacts defendant must specific jurisdiction for each claim.' ' Helicopteros Atuneros, Incw 472 C. the Seiferth v. (5th Cir . 2006) Analysis General Jurisdiction Defendants argue that the court lacks general jurisdiction over Ambler because he is not dom iciled in Texas and has no relevant connections to Texas, and that the court lacks general jurisdiction over Boyd Tech Florida because is incorporated in Florida , has its principal places of business in Florida , and does not have continuous and systematic contacts in Texas that render them u at home' in Texas x ' Defendants also argue that employing 8 oefendants' Motion to Dismiss , Docket Entry No . 5, pp . 10, Boyd and Svetlik , residents of Texas , and having two shareholders who reside in Texas is not sufficient for the court to exercise general jurisdiction over Boyd Tech Floridax Plaintiff responds that under the Texas long -arm statute Boyd Tech Florida was ndoing business' in Texas because it contracted with Boyd and Svetlik , two ' Texas residents who uwere both officers and constituted 5O% of BTIFlorida 's workforce p' and because Boyd Tech Florida committed ' in Texas x o Plaintiff does not dispute Defendants' argument that the court lacks general jurisdiction over Ambler, and does not argue or cite any case 1aw demonstrating how the court could exercise general jurisdiction over Boyd Tech Florida under the constitutional due process analysis. Because Texas is not Amb ler 's domicile and because Plaintiff does not dispute that the court lacks general jurisdiction over the court concludes that Plaintiff has not met its burden establish that the court has general jurisdiction over Ambler. Because Boyd Tech Florida 's p lace of incorporation and principal place of business are in Florida, to exercise general jurisdiction the facts must establish an nexceptional case .' ' See BNSF , 137 Ct . at 1558; Patterson v . Aker Solutions Incorporated , 826 F .3d 231, 234 ( 5th Cir. 2016). At a11 relevant times Boyd Tech Florida maintained p lace of incorporation and principal place of 9Id . at l oplaintiff 's Response , Docket Entry No . 6 , pp . 25-26 and n .7 . Florida x l business state is Merely employ ing residents of the forum establish general sufficient corporate defendant. See BNSF, jurisdiction over a at 1559 ( holding that the court lacked general jurisdiction even though the defendant employed more than 2,000 employees Plaintiff alleges that 'one-half ' the forum state). Although of BTl-Florida 's workforce' ' resided in and performed their duties in Texasxz those contacts do not amount to an exceptional circumstance that would permit court to exercise general jurisdiction over Boyd Tech Florida. The paradigm forums which a corporation corporation 's place of incorporation and business, the residence at corporate officers . their entirety .' ' are the principal place jurisdiction inquiry ucalls for an appraisal activities home Daim ler, 134 The general corporation's Ct . at 762 . Plaintiff has not alleged facts that establish that Boyd Tech Florida 's contacts in Texas are so substantial and of such nature as to render the corporation at home Texas . Id . at n .19. Although Plaintiff argues that the Texas long-arm statute allows the court to exercise general jurisdiction over Boyd Tech Florida, even does, the exercise of personal jurisdiction would be inconsistent Amendment . with the due process clause the Fourteenth The court concludes that this is not the exceptional l original Complaint, Docket Entry No . l $ 2. Hplaintiff's Response , Docket Entry No . 6, 25. case that would allow the court to exercise general jurisdiction over Boyd Tech Florida in a forum that is not its place of incorporation or principal place of business . Specific Jurisdiction uIn contrast to general, allpurpose jurisdiction, specific jurisdiction is confined to adjudication of issues deriving from, connected with , ' Jurisdiction .' ' the very controversy Goodyear, quotations omitted) that at 2851 establishes ( citations and Defendants argue that Plaintiff has failed to present any basis for specific jurisdiction over Ambler or Boyd claim specific, Tech Floridax3 Because specific jurisdiction the court ordinarily determ ines whether the plaintiff has established specific jurisdiction for each claim. Seiferth, F .3d at Plaintiff has brought claims for trademark infringement, unfair competition , and cyberpiracy under the Lanham Act, and trademark infringement and unfair competition under Texas common law .l 4 The Cyberpiracy Protection Act , Section the Lanham Act, 15 U . . S C. 5 1125( d), states that a person is liable who, with bad faith intent uregisters, traffics identical or confusingly 1125 ( ( ( d) 1) A) profit from a protected mark , or uses a domain name that sim ilar that mark .' ' Because the cyberpiracy claim is U .S .C . premised on HDefendants ' Motion to D ismiss, Docket Entry No . 5, pp . 7-11 . Moriginal Complaint, Docket Entry No. pp. $$ 41-56. unauthorized use a protected mark , for purposes personal jurisdiction, the analysis is substantially similar to the analysis for trademark infringement and unfair competition under the Lanham Act. And ul trademark infringement and unfair competition action al under Texas common law presents essentially no difference in issues than those under federal trademark infringement actions .' Amazing ' Spaces, Inc. v. Metro Mini Storage, 6O8 F. 225, 235 n . ( 3d 7 5th Cir. 2010) ( internal citations and quotations omitted) Therefore, although the court will only refer to utrademark infringement,' the ' following analysis app lies to all of Plaintiff's claims . The Court Lacks Specific Jurisdiction Over Ambler Defendants argue that the court does not have specific jurisdiction over Ambler because Plaintiff has not pled an alter ego theory and therefore the contacts of Boyd Tech Florida may not be attributed to its owners, because the contact created by Ambler's alleged signing of a trademark application on behalf of Boyd Tech Florida would be attributed to the company , and because Ambler did not operate Boyd Tech Florida 's website , encapsulac .org , and even if he did, the website sells no goods or services to or from Texas x s Plaintiff responds that the court has specific ls oefendants' Motion to Dismiss, Docket Entry No . 5 , pp . 12-13 . jurisdiction over Ambler because he is a controlling person of Boyd Tech Florida who directed tortious conduct at Texas x 6 The court must first determine whether Ambler purposefully established minimum contacts with Texas such that he reasonably anticipate being haled into court there . ' 'fiduciary -shield doctrine should Under the indiv idual's transaction of business within the state solely as a corporate officer does not create personal jurisdiction over that individual v . Spademan, 772 F. 2d 1185, 1197 ( 5th general rule Stuart 1985). ' ' While the that jurisdiction over an individual cannot be predicated upon jurisdiction over a corporation, courts have recognized an excep tion to this rule when the corporation is the alter ego of the indiv idual .' ' Because Plaintiff has not pled facts establishing that Ambler alter ego Boyd Tech Florida , Boyd Tech Florida's activities in Texas may not be imputed to Amb ler . Plaintiff alleges that hAmb ler directed the individual who has infringing activities on behalf BTI-Florida .' 7 'l specifically , Plaintiff alleges that Ambler usigned the app lication to register Plaintiff's mark on behalf of BTI-F1orida'l8 and argues ' l6 plaintiff's Response , Docket Entry No . loriginal Complaint, Docket Entry No. V l8 d I p . 19. p. $ that Mas president , he would also have controlled, or at least had the ability to control, the drafting and transm ittal of the cease- and -desist letter ' 9 '1 Because the fiduciary-shield prohibits attribution of corporate acts doctrine corporate officers, Ambler's contacts to Texas based on actions taken in his corporate capacity do not confer the court with personal jurisdiction over him . The court therefore concludes that Ambler 's signing the trademark app lication and h is involvement , if any , in sending the cease-and-desist letter was done corporate capacity and therefore cannot support specific jurisdictionxo Plaintiff's on ly allegation of Ambler's conduct that was not taken on behalf Boyd Tech Florida is that uAmbler individually caused or directed encapsulac .com website .vz l be caused the redirection of Plaintiff 's BTl-Florida 's encapsulac .org website Citing Zippo Mfq . Co . V . Zippo Dot Com , Inc w supp . 1119, 1124 ( . Pa. 1997), Defendants argue that Boyd Tech W D. Florida 's website a passive website that has no connection l plaintiff 's Response , Docket Entry No . g 2 see Defendants' Trademark Registration , Exhib it C to Original 0 Complaint , Docket Entry No . 1-3 , pp . 1, 5 . The application indicates that Boyd Tech , Inc . Florida is the app licant, and that the signatory ubelieves that the applicant is entitled to use the mark in commerce .' ' Ambler signed the application under his position as 'President .' ' ' noriginal Complai nt, Docket Entry No. - 15- 3$ Texas and therefore cannot establish jurisdiction.z z responds that Ambler 's attacks Plaintiff's Plaintiff website was a purposeful tort directed at Texas because na party attempting to visit BTl-Texas's website, marketing BTl-Texas's services, provided from its office in Texas , was instead transported to BTl-Florida 's website offering infringing materials .r 3 'z that the Zippo analysis Plaintiff also argues irrelevant because u E wlhile Plaintiff does allege that hencapsulac' as used on Defendant 's website is infringing, E zippo) test irrelevant the issue the undisputed purposefu l redirection of Plaintiff's Texas website to BTl-Florida's website described above .' 4 '2 Plaintiff does not allege a cause of action against Defendants for alleged redirection itself . redirection of Plaintiff uses the alleged website as Ambler's purposeful forum -related contact to support personal jurisdiction. meet burden, Plaintiff must establish that the underly ing causes of action arise that contact . Luv N ' Care , Ltd . v . Insta-Mix , Inc w F. 465, 473 ( 3d 5th Cir. 2006). To determine whether redirection of Plaintiff 's website is a forum -related contact that constitutes purposeful availment of the privileges of conducting business in Texas, and whether that contact gives rise to Plaintiff's causes of H Defendants ' Motion to Dismiss , Docket Entry No . 5, z3 plaintiff's Response , Docket Entry No . 2 Id 4 p . 22 . action , the court must examine case law on personal jurisdiction based on website use and based on trademark infringement . ( i) Personal Jurisdiction Activ ities Based The Fifth Circuit has adopted the reasoning on Website Zippo to determine personal jurisdiction based on online interactions on an internet website. Mink, 190 F.3d at 336 (uWe find that the reasoning of Zipro is persuasive and adopt in this Circuit' . o The Zirpo decision categorized Internet use into a spectrum of three areas . At the one end of the spectrum , there are situations where a defendant clearly does business over the Internet by entering into contracts with residents of other states wh ich involve the knowing and repeated transmission of computer files over the Internet. In this situation, personal jurisdiction is proper . At the other end of the spectrum , there are situations where a defendant merely establishes a passive website that does nothing more than advertise on the Internet. With passive websites, personal jurisdiction is not appropriate . In the middle of the spectrum , there are situations where a defendant has a website that allows a u ser to exchange information with a host computer . In this m iddle ground, the exercise of jurisdiction is determined by the level of interactivity and commercial nature of the exchange of information that occurs on the Website. Id . ( internal citations and quotations omitted). In Mink the Fifth Circuit held that although the defendant's website u provide g dl users with a printable mail-in order form, E the defendantl sl toll-free telephone number, a mailing address and an electronic mail (Me-mail') address, orders are not ' defendant's) website . taken through E the This does not classify the website as - 17 - anything more than passive advertisement which is not grounds for the exercise of personal jurisdiction.' Id. at 337. ' ( ii) Personal Jurisdiction in Trademark Infringem en t Ca ses Although some circuits app ly the 'effects test' from Calder v . ' ' Jones, ( 1984), to determine whether they have specific jurisdiction over defendants trademark infringement cases, see e .q . Dakota Industries , Inc . v . Dakota Sportswear , Inc ., 946 F. 1384, 1390-91 ( 2d 8th Cir. 1991); Licciardello v . Lovelady, F. 3d 1280, 1286 ( 11th 2008), the Fifth Circuit has not app lied the test in trademark disputes . Instead , the Fifth Circuit has used a ustream -of-commerce' inquiry . See Luv N ' Care , 438 F .3d ' at 472-73 C' This court has been reluctant to extend the stream-ofcommerce principle outside the context of products liability cases Nevertheless, we have found jurisdiction where the same public policy concerns that justify use of stream-of-commerce principle are present.' ( ') internal citations and quotations omitted). Luv N ' Care , the Fifth Circuit held that the defendant had purposefully availed itself conducting business the forum state the privileges of when placed the infringing products into the stream of commerce and knew that the product would reach the forum state . held that Id . at 470 . The court also plaintiff's claims arose out contacts with the forum state because - 18 - the defendant's infringement claims involved uthe same E product) that traveled through the stream of commerce from Colorado to ( the forum statel.' ' at 473. Therefore nE tlhis connection between the allegedly infringing product and the forum state E was) sufficient to confer personal jurisdiction.' Id. ' ( iii) Personal Jurisdiction Based on Trademark Use on Websites Ouick Technologies prov ides some guidance on the intersection of websites and trademarks for purposes of personal jurisdiction. There , Fifth Circuit held that plaintiff's claims for trademark infringement and unfair competition did not uarise out of or relate the defendant's use of a registered mark . Technoloqies, 313 F .3d at 345 . Ouick The court explained that E the defendant) had used the mark SAGE in advertisements placed in pub lications wh ich circulate in the United States . Generally , advertisements are insufficient to establish personal jurisdiction. See Singletary v. B. . R X., Incw 828 F. 2d 1135, 1136-37 ( 5th Cir. 1987) ( concluding that advertisements did not establish personal jurisdiction where there was no evidence that the uclaim arose out of or was related to' the ' advertisements). Second, ( the defendant's) operation of a website containing company and product in formation and links to its U .S . subsidiaries also does not prov ide sufficient grounds for the exercise of personal jurisdiction. See Mink, l90 F.3d at 337 ( finding that a website that is nothing more than a npassive advertisement ,' i .e . a website that provides product ' information , toll-free telephone numbers , e-mail addresses, mail addresses, and mail-in order form s, does not support the exercise of personal jurisdiction). Id . In Mid City Bowling Lands & Sports Palace, Inc . v . Ivercrest , Inc. 2O8 F.3d 1006 ( Table), 2000 - 19 - 178135 at ( th 5 2000), the Fifth Circuit held that the plaintiff's allegation that suffered injury in the forum state based on the defendant's use of the plaintiff's trademark a passive web site and other advertisements targeted at an audience outside the forum state, was insufficient to support the exercise of specific jurisdiction. ( iv) Analysis Defendants ' website , encapsulac .org , udoes not target any /z state or make products or services available for direct purchase .' s Plaintiff does not dispute that Defendants' website is a passive website . Even though Plaintiff alleges that Defendants' website disp layed the Mark and used the Mark as its domain name , the website merely advertises products . This is not enough to permit personal jurisdiction. See Ouick Technologies, 313 F. at 345; 3d Healix Infusion Therapy , Inc . v . Human Arc Corp of Ohio , Civil Action No. H-08-3262, 2009 WL 7326369, at ( D. Tex . July S. 2009) (u merely registering someone else's trademark as a domain name and posting a website on the Internet , without more , is not sufficient to jurisdiction subject a another.' ') party domiciled in one state Because Defendants' website a passive website that does not allow viewers to enter into contracts with them , Defendants have not, by means of their website , directed any infringing material at Texas or Texas residents, or otherwise placed infringing material into stream commerce for the noeclaration of Edward A lan Ambler, Exhibit A to Defendants ' Moti to Dismiss, Docket Entr No. 5-3, p. 4 f l2. on y purpose of reach ing Texas . Therefore , the Defendants' website does not allow the court to exercise personal jurisdiction over them . Plaintiff argues that personal jurisdiction over Ambler is not premised on the use of infringing marks on Defendants' website, but Ambler 's redirection website .2 6 does not Plaintiff's website Defendants' Because Defendants ' website is a passive website that direct infringing materials Texas , and because Plaintiff does not contend that its website is an interactive website that would by itself allow a federal court Texas to exercise specific jurisdiction over Plaintiff,z Ambler' alleged 7 s redirection from one passive website to another passive website is not sufficient to show that Ambler purposefully availed himself of privileges of conducting business Texas . Because b0th websites are passive , and because Plaintiff has not alleged that Ambler has sent emails, letters , products , or other communications bearing the Mark Texas residents , Plaintiff has failed establish that Ambler directed an act toward Texas or otherwise purposefully availed himself of the privilege of conducting activities in Texas . Therefore the court concludes that it cannot exercise specific jurisdiction over Ambler . z plaintiff's Response , Docket Entry No . S 2See Original Complaint, Docket Entry No. 1, p. 3 $ 12 (u. . . 0 Plaintiff 's encapsulac .com website , which promotes and markets Plaintiff's business in Texas to the world, - 21 - .'). ' b. The Court Lacks Specific Jurisdiction Over Boyd Tech Florida Defendants argue the court does not have specific jurisdiction over Boyd Tech Florida because n E tlhe allegation that Florida and Texas individuals formed Boyd Tech Fla . to operate in Florida is completely unrelated to the allegations of trademark infringement in the complaint' and because the cease-and-desist letter sent by ' Boyd Tech Florida Boyd hdid not relate to the infringement of Plain tiff 's alleged trademark rights' and therefore do not relate ' the merits of the claim .28 Defendants also argue that any injury felt Plaintiff in Texas not su fficient specific ' Jurisdiction .2 Plaintiff responds that the cease-and -desist letter 9 was directed Plaintiff and related Plaintiff's intellectual property , and that Boyd Tech Florida's redirection of Plaintiff's website confers personal jurisdiction. o 3 Plaintiff argues that the Calder effects test applies to its trademark infringement claim s and that nPlaintiff has alleged intentional business torts and has alleged that the brunt harm will be felt by Plaintiff jurisdiction Gazprom, rare. F . 309, 3d the forum .'3l ' such ueffects' ' Moncrief Oi1 International Inc. v. OAO 2OO7). the test applied, z Defendants ' Motion to Dism iss , Docket Entry No . 8 pp . 14-15 . 2 9Id . at 15 . 3 plaintiff's Response , Docket Entry No . o 3 Id . at 12 . l pp . 15-16, l8 . the uforeseeable effects of a tort are to be assessed as part of the analysis of the defendant 's relevant contacts with the forum .' ' Wien Air Alaska, Inc . v . Brandt, ( internal citation F. 208, 3d and quotation omitted). ( 5th Cir. 1999) As explained in II.C. a.( 2. ii), above, under Fifth Circuit authority the effects test does not apply to Plaintiff's claim s . Even if did , Plaintiff must still show that Boyd Tech Florida directed specific acts towards Texas . Plaintiff relies on SGs-Thomson Micro-Electronics, Inc . v . Ferris, 55 F.3d 632, 1995 WL 313932 ( 5th Cir. 1995), to argue that sending a cease-and-desist letter alleging trademark infringement enough confer personal jurisdiction over the sender.2 3 However in Thom son , the contents of the letter gave rise to the plaintiff's causes of action for tortious harassment, extortion , and defamation . Id . at *2 . Here , although the letter was directed at Plaintiff , mentions EncapsulAc, and informs Plaintiff that it breached the shareholders agreement, Plaintiff's claims of trademark infringement and unfair competition do not arise out of the letter 's contents . In the letter Defendants put Boyd uon formal notice of your blatant and intentional breaches of the Boyd Tech, Inc . ( Florida) Shareholders Agreement'3 and ask Boyd to '3 uterminate any and all applications you submitted which are 32Id ( J 3 Demand to Cease and Desist , Exhibit B to Defendants' Motion 3 to Dismiss , Docket Entry No . 5-4, p . - 23 - currently pending with the USPTO as they relate to our client's licensed product, Encap sulAC .'34 ' Whether Defendants correctly assert their claims of breach of contract and their rights to the licensed product is irrelevant the mere act of asserting rights through a cease-and-desist letter does not subject Defendants to specific jurisdiction in the forum to which the letter was sent . See, e .q ., Ham v . La Cienega Music 4 F.3d 413, 4l6 & n.l4 ( 5th Cir. 1993) ( citing Cascade Corp v. Hiab-Foco AB, 6l9 F. 2d 36 ( 9th 1980)); Axxess Technologv Solutions Inc . v . Epic Svstems Corp w Civil Action No . 3 :16-02893- 2017 WL 3841604 ( . . Tex . Jan. N D 2017) established that sending cease and desist letters is insufficient to establish personal jurisdiction.v) ( citing Red Wing Shoe Co. v. HockersonHalberstadt, Incw 1998)). F.3d 1355, 1360-61 ( Fed . n When the actual content of communications with a forum gives rise intentional tort causes of action , this alone constitutes purposeful availment .' ' 213 . Wien Air Alaska , Boyd Tech Florida 's alleged appropriation of Plaintiff's EncapsulAc Mark the conduct that gives rise Plaintiff's causes of action of trademark infringement and unfair competition . Plaintiff asserts no claim based on the content of the cease-and desist letter . 3 Id 4 at 5 . - 24 - Plaintiff also argues that Boyd Tech Florida's redirection of Plaintiff's website establishes personal jurisdiction over Boyd Tech Florida . For the same reasons that the court has concluded that this conduct does not establish specific jurisdiction over Ambler , the court concludes that this conduct does not establish specific jurisdiction over Boyd Tech Florida. court therefore concludes that Plaintiff has failed to allege facts sufficient exercise specific allow the court jurisdiction over Defendants. Because the court concludes that it may not exercise personal jurisdiction over Defendants, it need not decide whether it fair and reasonab le to require a Defendants to litigate in Texas .35 111 . Conclusions and Order For the reasons explained above, the court concludes that Plaintiff has failed meet his burden establishing facts capable of supporting the court's exercise of personal jurisdiction over Defendants . Accordingly , Defendants ' Motion to Dismiss for Lack of Personal Jurisdiction ( Docket Entry No. 31n 5 its Response Plaintiff states, is GRANTED, and ' ilf hl Court finds insufficient m inimum contacts to support the exercise of personal jurisdiction over BTl-Florida or Ambler, BTl-Texas requests an opportunity to conduct jurisdictional discovery .' Because the ' perfunctory request does not explain what discovery is necessary or how p laintiff expects the discovery would change the outcome , the court DENIES Plaintiff's request for jurisdictional discovery. - 25 - this action be dismissed without prejudice lack of personal jurisdiction. SIGN ED a t Hou s ton , Texas, on this the 25th day of July , 2018. < SIM LAKE UN ITED STA TES D ISTR ICT JUD GE

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