Vavi, Inc. v. Newton et al, No. 3:2013cv01128 - Document 16 (S.D. Cal. 2013)
Court Description: ORDER Denying 8 Motion to Dismiss or Transfer Venue. Signed by Judge Barry Ted Moskowitz on 8/19/2013. (rlu)
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Vavi, Inc. v. Newton et al Doc. 16 1 2 3 4 5 6 7 UNITED STATES DISTRICT COURT 8 SOUTHERN DISTRICT OF CALIFORNIA 9 10 VAVI, INC., a California corporation, 11 v. Case No. 13cv01128 BTM (KSC) Plaintiff, ORDER DENYING MOTION TO DISMISS OR TRANSFER VENUE 12 13 14 15 SCOTT NEWTON, an individual; SOLE 2 SOUL SPORTS, an entity of unknown type or status; GO FOR IT EVENTS, an entity of unknown type or status, Defendants. 16 17 SCOTT NEWTON, 18 v. Counterclaimant, 19 20 VAVI, INC., a California corporation, Counterdefendant. 21 22 On June 5, 2013, defendant and counterclaimant Scott Newton (“Defendant” or 23 24 25 26 27 28 “Defendant Newton”) filed a motion to dismiss or transfer on the grounds of improper venue (ECF No. 8). The motion was taken under submission by the Court on July 19, 2013. For the reasons below, Defendant Newton’s motion is hereby DENIED. // // 1 13cv01128 BTM (KSC) Dockets.Justia.com I. BACKGROUND 1 2 On May 10, 2013, VAVi, Inc. (“Plaintiff” or “VAVi”) filed suit against 3 Defendant Newton and his two companies, Sole 2 Soul Sports and Go For It Events, 4 for copyright infringement, trademark infringement, false advertising, and unfair 5 competition. VAVi is a California corporation with its principal place of business in 6 San Diego County. Defendant Newton is an individual residing in Tulare County. 7 Defendant Sole 2 Soul Sports is a chain of three retail fitness stores located in Fresno, 8 Visalia, and Bakersfield. Defendant Go For It Events is a company that organizes 9 community athletic events in the central San Joaquin Valley. 10 VAVi alleges that Defendants infringed by directly copying materials that VAVi 11 uses to promote its annual “Ridiculous Obstacle Challenge” race, also known as the 12 “R.O.C. Race.” According to the Complaint, Defendants used these materials to 13 promote their own race, the “Wipeout Race,” which they held on the same day as the 14 R.O.C. Race. See Compl. ¶ 32. Such materials include photographs and the 15 trademarks “VAVi” and “R.O.C. Race.” In some instances, the trademarks are actually 16 imprinted on the photographs used on Defendants’ website. See Compl., Ex. J (ECF 17 No. 1-12). 18 II. DISCUSSION 19 20 Defendant Newton moves to dismiss or transfer on the grounds of improper 21 venue under 28 U.S.C. § 1406(a), or in the alternative, to transfer for convenience 22 under § 28 U.S.C. 1404(a). 23 24 A. § 1406(a) 25 Under § 1406(a), a court may dismiss a case for improper venue or, “if it be in 26 the interest of justice,” transfer the case to a district in which the case could have been 27 brought originally. 28 U.S.C. § 1406(a). 28 Suits for copyright infringement “may be instituted in the district in which the 2 13cv01128 BTM (KSC) 1 defendant or his agent resides or may be found.” 28 U.S.C.A. § 1400. As both parties 2 acknowledge, “[t]he Ninth Circuit has interpreted the statute to mean that venue ‘is 3 proper in any judicial district in which the defendant would be amenable to personal 4 jurisdiction if the district were a separate state.’” Brayton Purcell LLP v. Recordon & 5 Recordon, 361 F. Supp. 2d 1135, 1138 (N.D. Cal. 2005). 6 Thus, the Court must determine whether it has personal jurisdiction over 7 Defendants. There are two kinds of personal jurisdiction, general and specific. The 8 Court has general jurisdiction over a nonresident defendant where the defendant has 9 “substantial” or “continuous and systematic” contacts with the state, such that it may 10 be haled into court in that state for any action without violating due process. See 11 Hirsch v. Blue Cross, Blue Shield of Kansas City, 800 F.2d 1474, 1477 (9th Cir. 1986). 12 However, “[t]he standard for establishing general jurisdiction is ‘fairly high,’ and 13 requires that the defendant’s contacts be of the sort that approximate physical 14 presence.” Bancroft & Masters, Inc. v. Augusta Nat. Inc., 223 F.3d 1082, 1086 (9th 15 Cir. 2000) (citation omitted). 16 Alternatively, specific jurisdiction exists where: (1) the non-resident defendant 17 has performed some act or consummated some transaction within the forum or 18 otherwise purposefully availed himself of the privilege of conducting activities in the 19 forum, (2) the claim arises out of or results from the defendant’s forum-related 20 activities, and (3) the exercise of jurisdiction is reasonable. Bancroft, 223 F.3d at 1086. 21 With regard to general jurisdiction, VAVi makes only the conclusory statement 22 that “Newton has conducted sufficient activities to qualify for this Court’s exercise of 23 general jurisdiction over him,” Pl.’s Opp. (ECF No. 11) at 5, without any supporting 24 factual allegations or argumentation. There is nothing in the record before the Court 25 to support this contention. Therefore, the Court holds that it does not have general 26 personal jurisdiction over Defendants. 27 As to specific jurisdiction, VAVi argues that Defendants’ alleged willful 28 infringement of its copyrighted materials is sufficient to enable the Court to exercise 3 13cv01128 BTM (KSC) 1 specific jurisdiction over Defendants. The Court agrees. 2 Because copyright infringement is an intentional tort, the purposeful 3 availment/direction prong is analyzed under the “effects” test from Calder v. Jones, 465 4 U.S. 783 (1984). See Dole Food Co., Inc. v. Watts, 303 F.3d 1104, 1111 (9th Cir. 5 2002). Under that test, the defendant must be alleged to have (1) committed an 6 intentional act, (2) expressly aimed at the forum state, (3) causing harm that the 7 defendant knows is likely to be suffered in the forum state. Id. As VAVi points out, 8 in Columbia Pictures Television v. Krypton Broad. of Birmingham, Inc., 106 F.3d 284 9 (9th Cir. 1997), rev’d on other grounds sub nom. Feltner v. Columbia Pictures 10 Television, Inc., 523 U.S. 340, 118 S. Ct. 1279, 140 L. Ed. 2d 438 (1998), the Ninth 11 Circuit held that where the plaintiff had alleged that the defendant willfully infringed 12 the plaintiff’s copyrights, knowing that the plaintiff had its principal place of business 13 in the district where the plaintiff eventually brought its suit, the purposeful availment 14 requirement was satisfied. Id. at 289. The same is true in this case – VAVi has alleged 15 that Defendants willfully infringed its copyrighted materials, knowing that VAVi was 16 based in San Diego. Therefore, the Court holds that the purposeful availment prong 17 has been satisfied. 18 With regard to the second prong of the specific jurisdiction test, VAVi’s claims 19 certainly arise out of Defendants’ alleged forum-related activities, namely, the alleged 20 copyright infringement. See Brayton Purcell, 361 F. Supp. 2d at 1142 (holding that 21 this prong was “easily met” where defendant’s willful copyright infringement “reached 22 into this District”). Therefore, the second prong is satisfied. 23 Finally, as to the third prong, the exercise of jurisdiction is reasonable where it 24 comports with “fair play and substantial justice.” Bancroft, 223 F.3d at 1088 (citing 25 Burger King Corp. v. Rudzewicz, 471 U.S. 462, 476 (1985)). However, “[t]here is a 26 presumption that jurisdiction is reasonable so long as the first two prongs of the 27 specific jurisdiction test have been met.” Brayton Purcell, 361 F. Supp. 2d at 1143. 28 The burden is on the defendant to show that the exercise of jurisdiction would be 4 13cv01128 BTM (KSC) 1 unreasonable, and “requires the defendant to put on a ‘compelling case.’ ” Bancroft, 2 223 F.3d at 1088 (citing Burger King, 471 U.S. at 476-77). 3 There are seven factors to be considered: (1) the extent of the defendant’s 4 purposeful interjection into the forum state, (2) the burden on the defendant in 5 defending in the forum, (3) the extent of the conflict with the sovereignty of the 6 defendant’s state, (4) the forum state’s interest in adjudicating the dispute, (5) the most 7 efficient judicial resolution of the controversy, (6) the importance of the forum to the 8 plaintiff’s interest in convenient and effective relief, and (7) the existence of an 9 alternative forum. Id. 10 In Brayton Purcell, the court found that the “degree of interjection” by the 11 defendant was minimal because the interjection was limited to the defendant’s 12 publishing copyrighted material on its website. 361 F. Supp. 2d at 1143. The court 13 held that, even so, the balance of the factors ultimately weighed in favor of maintaining 14 jurisdiction because the burden on the defendant to litigate in the Northern District of 15 California rather than the Southern District of California was minimal. Id. 16 The Court finds that the same result is compelled here. Obviously, many of the 17 above factors are irrelevant, since this district and Defendants’ preferred district are 18 both in the state of California. As to the factors that remain, they focus on the 19 convenience of the parties and efficiency in resolution of the case. Mindful that the 20 burden is on Defendants to present a “compelling case,” the Court holds that they have 21 failed to show that the exercise of jurisdiction would be unreasonable. It is not unduly 22 burdensome for Defendants to litigate in the Southern District rather than the Eastern 23 District, and Defendants are free to retain local counsel. Moreover, there will likely 24 be discovery needed in both districts, so neither district is preferable over the other in 25 that regard. Finally, there is a strong presumption in favor of honoring a plaintiff’s 26 choice of forum. See Creative Technology, Ltd. v. Aztech Sys., Ltd., 61 F.3d 696, 703 27 (9th Cir.1995)). Therefore, the Court DENIES Defendant Newton’s motion to dismiss 28 or transfer for improper venue. 5 13cv01128 BTM (KSC) 1 2 B. § 1404(a) 3 Under § 1404(a), a court may transfer a civil action to any district in which it 4 could have been brought originally, or to any district to which all the parties have 5 consented, “[f]or the convenience of parties and witnesses, in the interest of justice.” 6 § 28 U.S.C. 1404(a). 7 As noted above, there is a strong presumption in favor of honoring a plaintiff’s 8 choice of forum. On a motion to transfer venue, the defendant has the burden of 9 showing that transfer is appropriate. Sarinana v. DS Waters of Am., Inc., C-13-0905 10 EMC, 2013 WL 3456687 at *1 (N.D. Cal. July 9, 2013) (citing Commodity Futures 11 Trading Comm’n v. Savage, 611 F.2d 270, 279 (9th Cir. 1979)). “The defendant must 12 make a strong showing of inconvenience to warrant upsetting the plaintiff’s choice of 13 forum.” Decker Coal Co. v. Commonwealth Edison Co., 805 F.2d 834, 843 (9th Cir. 14 1986). 15 Courts in the Ninth Circuit consider the following nonexclusive factors in 16 determining whether transfer of venue is warranted: (1) the plaintiff’s choice of forum, 17 (2) the contacts relating to the plaintiff’s cause of action in the chosen forum, (3) the 18 respective parties’ contacts with the forum, (4) the availability of compulsory process 19 to compel attendance of unwilling non-party witnesses, (5) the differences in the costs 20 of litigation in the two forums, (6) the ease of access to sources of proof, (7) the 21 location where the relevant agreements were negotiated and executed, and (8) the state 22 that is most familiar with the governing law. In re Ferrero Litig., 768 F. Supp. 2d 1074, 23 1078 (S.D. Cal. 2011) (citing Jones v. GNC Franchising, Inc., 211 F.3d 495, 498-99 24 (9th Cir. 2000)). 25 The Court need not engage in an in-depth discussion of these factors, as both 26 districts are in the state of California, so any inconvenience for Defendants would be 27 relatively minor, especially when weighed against the strong presumption in favor of 28 Plaintiff’s choice of forum. It suffices to say that what would be convenient for 6 13cv01128 BTM (KSC) 1 Defendants would be inconvenient for Plaintiff, and vice versa, and given that both 2 districts play a significant role in the allegations at issue, Plaintiff’s choice of forum 3 must prevail. Therefore, the Court DENIES Defendants’ motion to transfer venue for 4 convenience. 5 IV. CONCLUSION 6 7 8 For the reasons above, Defendant Newton’s motion to dismiss or transfer venue (ECF No. 8) is hereby DENIED. 9 10 11 IT IS SO ORDERED. 12 DATED: August 19, 2013 13 14 BARRY TED MOSKOWITZ, Chief Judge United States District Court 15 16 17 18 19 20 21 22 23 24 25 26 27 28 7 13cv01128 BTM (KSC)
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