721 Bourbon, Inc. v. House of Auth, LLC, No. 2:2015cv00172 - Document 28 (E.D. La. 2015)
Court Description: ORDER AND REASONS granting 14 Motion to Dismiss for Lack of Jurisdiction. Signed by Judge Sarah S. Vance on 10/19/15. (jjs)
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721 Bourbon, Inc. v. House of Auth, LLC Doc. 28 UNITED STATES DISTRICT COURT EASTERN DISTRICT OF LOUISIANA 721 BOURBON, INC. CIVIL ACTION VERSUS NO: 15-172 HOUSE OF AUTH, LLC SECTION: R(3) ORD ER AN D REASON S Defendant House of Auth, LLC ("HOA") m oves the Court to dism iss plaintiff 721 Bourbon, Inc.'s trademark infringem ent, tradem ark dilution, unfair com petition, and unfair trade practices claim s against it for lack of personal jurisdiction. For the following reasons, the Court GRANTS the m otion. I. BACKGROU N D This is a tradem ark and unfair com petition case. Plaintiff 721 Bourbon is a Louisiana com pany that owns and operates several "Tropical Isle" bars in New Orleans.1 Tropical Isle serves specialty cocktails called GRENADES or HAND GRENADES, as well a GRENADE ENERGY DRINK beverage, and it 1 R. Doc. 1 at 1. Dockets.Justia.com holds eight federal tradem ark registrations protecting its fam ily of Grenaderelated m arks.2 HOA is a Delaware Lim ited Liability Com pany with its principal place of business in Stam ford, Connecticut.3 It produces and sells a beverage whose label contains the word GURRNAID, along with a stylized "G" that resem bles a hand grenade.4 HOA has a website that offers products for sale and allows users to order products online.5 HOA acknowledges that it has sold one set of its GURNNAID products--beverages, as well as apparel bearing the sam e GURRNAID m ark--to a Louisiana resident through its website and that it com m unicated with the resident via em ail and telephone about the order.6 But, as 721 Bourbon adm its, that resident was a private investigator hired by 721 Bourbon itself.7 721 Bourbon filed suit against HOA in this Court on J anuary 23, 20 15. Its com plaint pleads several claim s in connection with HOA's use of its 2 Id. at 1-2. 3 Id. at 2; R. Doc. 14-3, at 1. (Declaration fo Renate Cordts-Auth). 4 R. Doc. 1 at 4. 5 R. Doc. 14-3, at 3. (Declaration fo Renate Cordts-Auth). 6 Id. 7 See R. Doc. 24, at 17 (Plaintiff's Opposition to Defendant's Motion to Dism iss). 2 GURRNAID m ark, including federal tradem ark infringem ent, tradem ark dilution, and unfair com petition under the Lanham Act, as well as tradem ark infringem ent and dilution under Louisiana law.8 721 Bourbon seeks a prelim inary and perm anent injunction against HOA's alleged infringem ent of its Grenade tradem arks, as well as dam ages, interest, costs, and attorney fees.9 On May 1, 20 15, HOA filed a m otion to dism iss for lack of personal jurisdiction.10 Along with the m otion, HOA filed a sworn declaration by Renate Cordts-Auth, HOA's m anaging director, who states that HOA has no offices or em ployees in Louisiana, that it does not own or rent any property within the state, and that its only sale to a Louisiana resident was to 721 Bourbon's private investigator.11 721 Bourbon does not dispute these basic assertions. Instead, it argues that HOA has sufficient contacts with Louisiana to authorize personal jurisdiction based on (1) its sale of allegedly infringing products, through its website, to 721 Bourbon's Louisiana-based investigator and (2) HOA's aim ing of intentionally tortious conduct towards Louisiana.12 8 Id. at 10 -15. 9 Id. at 16. 10 R. Doc. 14-2. 11 R. Doc. 14-3. 12 R. Doc. 24 at 15-21. 3 After HOA filed its m otion to dism iss, the parties agreed to a period of jurisdictional discovery. Initially, HOA's motion was scheduled for submission on J une 17, 20 15, but HOA agreed to reset the subm ission date to August 5, 20 15, giving 721 Bourbon an additional seven weeks to develop facts to support its case for personal jurisdiction.13 721 Bourbon served a request for production on HOA on J une 3, 20 15.14 The very next day, HOA's counsel em ailed 721 Bourbon stating that HOA objected to the scope of several of 721 Bourbon's discovery requests.15 On J uly 6, 20 15, HOA served its discovery responses, which included m any of the sam e objections that counsel for HOA had previously described.16 Although 721 Bourbon now takes issue with som e of HOA's objections,17 it has not filed a m otion to com pel production of 13 Id. at 10 . 14 R. Doc. 24-3 at 1. 15 R. Doc. 27-4 at 2-3. 16 R. Doc. 24 at 10 . 17 Specifically, 721 Bourbon takes issue with HOA's failure to provide: (1) any and all com m unications which refer to or relate to Tropical Isle; (2) any and all docum ents relating to HOA's decision to use the GURRNAID m ark; (3) any and all docum ents relating to three tradem ark applications that HOA filed with the United States Patent and Tradem ark Office (USPTO); and (4) any and all docum ents relating to HOA's knowledge of Tropical Isle's registered tradem arks. According to 721 Bourbon, these docum ents are relevant to the existence of jurisdiction because they dem onstrate HOA's awareness of 721 Bourbon's registered tradem arks, which, in turn, shows that HOA's infringem ent was intentionally tortious conduct aim ed at 721 Bourbon in Louisiana. R. Doc. 24 at 11-12. 4 discovery in this case. II. STAN D ARD Personal jurisdiction "is an essential elem ent of the jurisdiction of a district court, without which it is powerless to proceed to an adjudication." Ruhrgas AG v. Marathon Oil Co., 526 U.S. 574, 583 (1999). When a nonresident defendant m oves the court to dism iss for lack of personal jurisdiction under Rule 12(b)(2), the plaintiff bears the burden to show that personal jurisdiction exists. Revell v. Lidov, 317 F.3d 467, 469 (5th Cir. 20 0 2). When a court rules on a m otion to dism iss for lack of personal jurisdiction without holding an evidentiary hearing, as in this case, the nonm oving party need only m ake a prim a facie showing; "[p]roof by a preponderance of the evidence is not required." Johnston v. Multidata Sy s. Int'l Corp., 523 F.3d 60 2, 60 9 (5th Cir.20 0 8). The allegations of the com plaint, except as controverted by opposing affidavits, m ust be taken as true, and all conflicts in the facts m ust be resolved in favor of plaintiffs. Thom pson v. Chry sler Motors Corp., 755 F.2d 1162, 1165 (5th Cir. 1985). In m aking its determ ination, the Court m ay consider "affidavits, interrogatories, depositions, oral testim ony, or any com bination of the recognized m ethods of discovery." Revell, 317 F.3d at 469 (quoting Stuart v. Spadem an, 772 F.2d 1185, 1192 (5th Cir.1985)). 5 A court has personal jurisdiction over a nonresident defendant if (1) the forum state's long-arm statute confers personal jurisdiction over that defendant, and (2) the forum state's exercise of jurisdiction com plies with the Due Process Clause of the Fourteenth Am endm ent. Latshaw v. Johnston, 167 F.3d 20 8, 211 (5th Cir. 1999). Because Louisiana's long-arm statute, La. R.S. § 13:320 1, et seq., extends jurisdiction to the full lim its of due process, the Court's focus is solely on whether the exercise of its jurisdiction in this case satisfies federal due process requirem ents. Dickson Marine Inc. v. Panalpina, Inc., 179 F.3d 331, 336 (5th Cir. 1999) (citing La. R.S. § 13:320 1(B)). The exercise of personal jurisdiction over a nonresident defendant satisfies due process when (1) the defendant has purposefully availed itself of the benefits and protections of the forum state by establishing "m inim um contacts" with that state, and (2) exercising personal jurisdiction over the defendant does not offend "traditional notions of fair play and substantial justice." Revell, 317 F.3d at 470 (quoting Mink v. AAAA Dev. LLC, 190 F.3d 333, 336 (5th Cir. 1999)). There are two ways to establish m inim um contacts: specific jurisdiction and general jurisdiction. W ilson v. Belin, 20 F.3d 644, 647 (5th Cir. 1994). General jurisdiction will attach, even if the act or transaction sued upon is unrelated to the defendant's contacts with the forum state, if the defendant has 6 engaged in "continuous and system atic" activities in the forum state. Helicopteros Nacionales de Colom bia, S.A. v. Hall, 466 U.S. 40 8, 415 (1984); W ilson, 20 F.3d at 647. Contacts between a defendant and the forum state m ust be "extensive" to satisfy the "continuous and system atic" test. Subm ersible Sy s., Inc. v. Perforadora Cent., S.A. de C.V., 249 F.3d 413, 419 (5th Cir. 20 0 1); see also Goody ear Dunlop Tires Operations, S.A. v. Brow n, 131 S.Ct. 28 46, 28 53– 54 (20 11) ("For an individual, the paradigm forum for the exercise of general jurisdiction is the individual's dom icile; for a corporation it is an equivalent place, one in which the corporation is fairly regarded as at hom e."). Specific jurisdiction exists when a nonresident defendant "has 'purposefully directed its activities at the forum state and the litigation results from alleged injuries that arise out of or relate to those activities.'" Panda Brandy w ine Corp. v. Potom ac Elec. Pow er Co., 253 F.3d 865, 868 (5th Cir. 20 0 1) (quoting Alpine View Co. v. Atlas Copco A.B., 20 5 F.3d 20 8, 215 (5th Cir. 20 0 0 )); see also Helicopteros Nacionales, 466 U.S. at 414 n.8. Minim um contacts m ay be established by actions, or even just a single act, by the nonresident defendant whereby it "purposefully avails itself of the privilege of conducting activities within the forum State, thus invoking the benefits and protections of its laws." Burger King Corp. v. Rudzew icz, 471 U.S. 462, 475 7 (198 5) (quoting Hanson v. Denckla, 357 U.S. 235, 253 (1958)). "The non-resident's 'purposeful availm ent' m ust be such that the defendant 'should reasonably anticipate being haled into court' in the forum state." Ruston Gas Turbines Inc. v. Donaldson Co., 9 F.3d 415, 419 (5th Cir. 1993) (quoting W orld– W ide Volksw agen Corp. v. W oodson, 444 U.S. 286, 297 (1980 )). Im portantly, "[t]he unilateral activity of [a plaintiff] who claim [s] som e relationship with a nonresident defendant cannot satisfy the requirem ent of contact with the forum State." Pervasive Softw are Inc. v. Lexw are Gm bH & Co. KG, 688 F.3d 214, 222 (5th Cir. 20 12) (quoting Hanson, 357 U.S. at 253, 78 S.Ct. 1228). The Fifth Circuit has synthesized the test for specific jurisdiction into a three-step inquiry. The court m ust determ ine (1) whether the defendant has m inim um contacts with the forum state, i.e., whether it purposely directed its activities toward the forum state or purposefully availed itself of the privileges of conducting activities there; (2) whether the plaintiff's cause of action arises out of or results from the defendant's forum -related contacts; and (3) whether the exercise of personal jurisdiction is fair and reasonable. Seiferth v. Helicopteros Atuneros, Inc., 472 F.3d 266, 271 (5th Cir. 20 0 6) (quoting N uovo Pignone, SpA v. STORMAN ASIA M/ V, 310 F.3d 374, 378 (5th Cir. 20 0 2)). "If the plaintiff successfully satisfies the first two prongs, the burden shifts to the defendant to defeat jurisdiction by showing that its 8 exercise would be unfair or unreasonable." Id. III. D ISCU SSION HOA contends that the Court lacks jurisdiction over it because 721 Bourbon has failed to allege sufficient m inim um contacts between it and Louisiana. 721 Bourbon counters that HOA has contacts with Louisiana sufficient to confer specific jurisdiction.18 In support, 721 Bourbon offers two basic argum ents. First, it argues that HOA m ade contact with Louisiana by selling products through its website to 721 Bourbon's Louisiana-based investigator and then com m unicating with the investigator about the sale. Second, 721 Bourbon contends that jurisdiction exists under the "effects test" of Calder v. Jones, 465 U.S. 783 (1984), because by m arketing products that allegedly infringe 721 Bourbon's tradem arks, HOA has engaged in intentional tortious conduct designed to injure 721 Bourbon in Louisiana. The Court addresses each argum ent in turn.19 18 721 Bourbon does not contend that this Court has general jurisdiction over HOA. R. Doc. 24 at 13 ("Because the facts establish that the Court has specific jurisdiction over HOA, [plaintiff] will forego establishing general jurisdiction."). 19 The Court notes that specific personal jurisdiction is claim -specific, m eaning that if a plaintiff's claim s relate to different forum contacts of the defendant, then specific jurisdiction m ust be established for each claim . Seiferth v. Helicopteros Atenuros, Inc., 472 F.3d 266, 274-75 (5th Cir. 20 0 6). Here, however, 721 Bourbon does not distinguish between its tradem ark claim s and its related claim s under federal and state law. Rather, it cites two particular sets of contacts and relies on two argum ents to 9 A. H OA's Sale o f Me rch an d is e Th ro u gh its W e bs ite 721 Bourbon argues that HOA has established "traditional business contacts" with Louisiana sufficient to confer specific jurisdiction. In support, 721 Bourbon relies chiefly on: (1) HOA's sale of allegedly infringing m erchandise, through its website, to 721 Bourbon's Louisiana-based investigator; (2) HOA's exchange of em ails and phone calls with 721 Bourbon's investigator concerning the order; (3) HOA's shipm ent of m erchandise to the investigator's Louisiana address; and (4) HOA's issuance of a partial refund to the investigator for expedited shipping services that were not provided. HOA subm its that it has no offices or em ployees in Louisiana; that it does not own or rent any property within the state; and that its only sale to a Louisiana resident was to 721 Bourbon's private investigator. Other than this single transaction, HOA has never sold any m erchandise in Louisiana--through its website or otherwise. HOA supports these contentions with the sworn declaration of Renate Cordts-Auth, HOA's m anaging director.20 721 Bourbon does not dispute these basic contentions.21 support jurisdiction over its lawsuit as a whole. Because both sets of contacts are plainly insufficient to authorize jurisdiction, the Court rejects both of 721 Bourbon's argum ents with respect to each one of its claim s. 20 R. Doc. 14-3. 21 While 721 Bourbon does argue that som e of HOA's responses to jurisdictional discovery were deficient, the responses that 721 Bourbon takes issue with relate to 10 A court, in determining whether it can exercise personal jurisdiction over a nonresident defendant based on the defendant's online presence, "look[s] to the 'nature and quality of com m ercial activity that an entity conducts over the Internet.'" Mink, 190 F.3d at 336 (quoting Zippo Mfg. Co. v. Zippo Dot Com , Inc., 952 F.Supp. 1119, 1124 (W.D.Pa.1997)). To structure this inquiry, courts frequently draw on the test set forth in Zippo, which "categorized Internet use into a spectrum of three areas" as follows: At 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 which "involve the knowing and repeated transm ission of com puter files over the Internet. . . ." In this situation, personal jurisdiction is proper. At the other end of the spectrum , there are situations where a defendant m erely establishes a passive website that does nothing m ore than advertise on the Internet. With passive websites, personal jurisdiction is not appropriate. In the m iddle of the spectrum , there are situations where a defendant has a website that allows a user to exchange inform ation with a host com puter. In this m iddle ground, "the exercise of jurisdiction is determ ined by the level of interactivity and com m ercial nature of the exchange of inform ation that occurs on the Website." Id. (alteration in original) (citations om itted). Im portantly, while the Zippo sliding scale rem ains a "factor in the jurisdiction analysis," the Fifth Circuit HOA's alleged knowledge of 721 Bourbon's tradem ark and its decision to use its own GURRNAID designation. See R. Doc. 24 at 10 -12. 721 Bourbon does not suggest that HOA m isrepresents the nature of its com m ercial activities in Louisiana; nor does not it give the Court reason to believe that HOA has sold products to any Louisiana resident other than 721 Bourbon's private investigator. 11 has indicated that "internet-based jurisdictional claim s m ust continue to be evaluated on a case-by-case basis, focusing on the nature and quality of online and offline contacts to dem onstrate the requisite purposeful conduct that establishes personal jurisdiction." Pervasive Softw are, Inc. v. Lexw are Gm bH & Co. KG, 688 F.3d 214, 227 n.7 (5th Cir. 20 12). In applying the Zippo test, district courts within the Fifth Circuit have often exercised personal jurisdiction over defendants whose websites enabled online purchases. See Tem pur– Pedic Int'l v. Go Satellite, Inc., 758 F.Supp.2d 366, 373 (N.D.Tex.20 10 ) (defendant's website "allow[ed] placem ent of online orders and enabl[ed] com m unication between Texas-based custom ers and [defendant's] sales staff via live chat and e-m ail"); AdvanceMe, Inc. v. Rapidpay , LLC, 450 F.Supp.2d 669, 673 (E.D.Tex.20 0 6) (defendant's website allowed potential custom ers to "fill out an online form and apply for [defendant's] services through its website"); Am . Ey ew ear, Inc. v. Peeper's Sunglasses & Accessories, Inc., 10 6 F.Supp.2d 895, 90 1 (N.D.Tex.20 0 0 ) (website allowed custom ers to "subm it product order form s that contain credit card and shipping inform ation" and to "receive personalized service directly from the web site by using the site's e-m ail option"). Im portantly, however, courts have also noted that personal jurisdiction requires m ore than a m ere possibility that forum residents m ay purchase 12 products on a nonresident defendant's website. In Origin Instrum ent Corp. v. Adaptive Com puter Sy stem s, Inc., a tradem ark case, defendant operated a "m oderately interactiv[e]" website, which contained inform ation about allegedly infringing products, provided a link to defendant's em ail, and allowed custom ers to purchase and directly download software via a hyperlink to another site. 1999 WL 76794, at *3. Nonetheless, the court found that personal jurisdiction was im proper because the defendant had not used its site to interact with anyone in the forum state. Id. at *4. The court reasoned that because specific jurisdiction requires a showing of purposeful availm ent, jurisdiction "should not be prem ised on the m ere possibility that a Defendant m ay be able to do business with Texas over its website, with nothing m ore." Id. Sim ilarly, in Monistere, the court found that a website that allowed users to purchase products that allegedly infringed the plaintiff's patent, did not give rise to personal jurisdiction. 20 13 WL 6383886, at *7. Following Origin Instrum ents, the court concluded that although the defendant's website was "highly interactive" and perm itted online transactions, "personal jurisdiction cannot be established by the m ere possibility that Louisiana residents m ay purchase products on Defendants' website, without further proof that Defendants have purposefully availed them selves of this forum ." Id. at *7-*8. As these cases m ake clear, personal jurisdiction cannot rest on internet-based 13 exchanges that are possible in theory but have yet to m aterialize. Instead, there m ust be evidence of an actual "relationship am ong the defendant, the forum , and the litigation." W alden v. Fiore, 134 S. Ct. 1115, 1121, 188 L. Ed. 2d 12 (20 14) (quoting Keeton v. Hustler Magazine, Inc., 465 U.S. 770 , 775 (1984)). Moreover, as the Suprem e Court has m ade clear, the relationship required for specific personal jurisdiction "m ust arise out of contacts that the 'defendant him self' creates with the forum State." Id. (quoting Burger King, 471 U.S. at 475). Thus, the focus of the jurisdictional inquiry is on the defendant's own conduct, not the unilateral activity of a plaintiff. See Asahi Metal Indus. Co. v. Superior Court of California, Solano Cnty ., 480 U.S. 10 2, 10 9 (1987) (noting that the Suprem e Court has "rejected the assertion that a consum er's unilateral act of bringing the defendant's product into the forum State was a sufficient constitutional basis for personal jurisdiction over the defendant"). In applying these principles, district courts within the Fifth Circuit have concluded that it is im proper to rely on a transaction--for jurisdictional purposes--that was initiated by the plaintiff. In QR Spex, Inc. v. Motorola, Inc., for exam ple, the defendant sold products that allegedly infringed the plaintiff's patent. 50 7 F. Supp. 2d 650 , 661 (E.D. Tex. 20 0 7). The plaintiff 14 hired an investigator, who purchased two such products by "reaching out to non-Texas retailers" and arranging a shipm ent to the forum state. Id. The Court refused to consider these purchases "because they constitute [plaintiff's] unilateral acts; albeit acts that successfully circum vented the m easures [defendant] undertook to avoid availing itself to this forum ." Id. Sim ilarly, in Tem pur-Pedic, a tradem ark case, the defendant operated a website that sold products online, m aking at least three sales to residents of the forum state. 758 F. Supp. 2d at 375. The defendant argued that jurisdiction was im proper because one of these sales was to a private investigator hired by the plaintiff. The court stated: "there are cases in this circuit that support the prem ise that plaintiff cannot establish in personam jurisdiction based on such sales." Nonetheless, the court found that jurisdiction existed, noting that the plaintiff had no involvem ent in two of the defendant's sales. Finally, in Monistere, a defendant used its website to sell products that allegedly infringed plaintiff's patent, but its only sale to a resident of the forum state was to the plaintiff him self. 20 13 WL 63838 8 6, at *7. The court found personal jurisdiction lacking, reasoning: "for this one contact with Louisiana to constitute purposeful availm ent of this forum by Defendants, the contact m ust result from Defendants' purposeful conduct, not m erely from the unilateral activity of Plaintiff." Id. 15 Here, HOA's website is m ore than just an online billboard, passively relaying inform ation; it allows visitors to purchase HOA's allegedly infringing products online. But while its online presence m akes sales to Louisiana residents possible, HOA's actual contact with Louisiana has been de m inim is. The undisputed evidence reveals that HOA has m ade only one sale to a Louisiana resident. Moreover, this single sale was m ade not to a disinterested third party but to an investigator acting on behalf of 721 Bourbon. As QR Spex, Tem pur-Pedic, and Monistere m ake clear, a plaintiff cannot rely on such unilateral activity to m anufacture jurisdiction in its chosen forum .22 Indeed, the Court finds it particularly problem atic for 721 Bourbon to rely on its own investigator's purchase here, given that its tradem ark claim s are founded on notions of custom er confusion. Clearly, 721 Bourbon's investigator was not confused as to the source of the products in question. See U.S. Oly m pic Com m . v. Does 1-10 , 20 0 8 WL 2948280 , at *2 (N.D. Cal. J uly 25, 20 0 8) ("Because the gravam en of such claim s involve deceiving and confusing custom ers, courts considering sim ilar claim s have rejected attem pts by plaintiffs to m anufacture contacts with the forum state by having an agent 22 The Court notes that num erous courts in other circuits have also expressed "hostility towards finding jurisdiction under such potentially m anufactured circum stances." Buccellati Holding Italia SPA v. Laura Buccellati, LLC, 935 F. Supp. 2d 615, 623 (S.D.N.Y. 20 13) (collecting cases). 16 purchase the alleged infringing products."); ISI Brands, Inc. v. KCC Int'l, Inc., 458 F. Supp. 2d 81, 88 (E.D.N.Y. 20 0 6) (noting that plaintiff's agents' purchase of products that allegedly infringed plaintiff's tradem ark had "nothing to do with Plaintiff's action for infringem ent since [they] cannot claim to have been confused as to with whom [they] [were] dealing"). Accordingly, the Court will not rely on the sale of GURRNAID m erchandise to 721 Bourbon's investigator as a basis for exercising personal jurisdiction over HOA. The rem aining contacts with Louisiana cited by 721 Bourbon are sim ilarly unavailing because they too were initiated by 721 Bourbon's own investigator. For instance, 721 Bourbon cites an em ail m essage that HOA' custom er service representative sent to its private investigator. But this em ail was not a m arketing outreach effort intended to create new inroads into the Louisiana m arket; its purpose was m erely to confirm the order that the investigator had already placed.23 721 Bourbon also cites two phone conversations between HOA representatives and the investigator. But these too were routine custom er service efforts that the investigator him self initiated, first by placing his order and then by em ailing and calling HOA to 23 Id. at 5 (Em ail from "andie@gurrnaid.com " to "dcbell3rd@m ac.com " stating: "Thank you for placing your order with Gurrnaid! This em ail is to confirm your recent order."). 17 check the status of his shipm ent.24 The sam e is true of the check that HOA m ailed the investigator, which m erely refunded the investigator for expedited shipping services, as the investigator specifically requested.25 Like the investigator's order itself, each of these contacts was initiated by 721 Bourbon itself. As such, they do not evidence purposeful availm ent of Louisiana by HOA and cannot give rise to personal jurisdiction in this forum .26 B. H OA's Aim in g o f In te n tio n ally To rtio u s Co n d u ct at Lo u is ian a 721 Bourbon's second argum ent is that this Court has personal jurisdiction over HOA because HOA "engaged in tortious conduct outside of the forum state that was intended to and d[id] in fact cause injury within the 24 Id. at 7 (Em ail from "david-bell@cox.net" to "info@gurrnaid.com " stating: "I placed an order on J anuary 0 7, 20 15 under order num ber 10 37. This order has not arrived to date, can som eone advise m e as to when I can expect the order? Also I paid for 2 day shipping which I would like to be refunded."). 25 Id. 26 721 Bourbon also sites a statem ent that a custom er service representative for HOA allegedly m ade to its 721 Bourbon's private investigator during a phone call. After first discussing HOA's shipm ent of the investigator's order, the investigator asked about HOA's distribution to stores in Louisiana. HOA's representative allegedly responded: "No, we're not in Louisiana yet. I'm hoping soon . . . . We'll be out there in the next couple of weeks--not weeks, next couple of years we'll definitely be out there." R. Doc. 24 at 9. HOA argues that this statem ent lacks a proper evidentiary foundation and is therefore inadm issible. But even if these statem ents could be adm itted into evidence, they would not support a finding of personal jurisdiction, because they do not indicate that HOA has purposefully availed itself of the benefits and protections of Louisiana. At m ost, they indicate that HOA "hopes" to engage with the forum at som e undefined point in the future. Hopes for the future do not constitute purposeful availm ent. 18 forum state."27 To support this argum ent, 721 Bourbon relies on Calder v. Jones, 465 U.S. 783 (1984), and on a district court case applying Calder, Source N etw ork Sales & Marketing, LLC v. Ningbo Desa Electrical Mfg. Co., Ltd., 20 15 WL 23410 63 (N.D. Tex. May 15, 20 15). The Court finds that unlike in those two cases, there is no evidence here that HOA's actions were specifically targeted at Louisiana, as is required to support specific jurisdiction. In Calder, an actress living in California brought a libel suit in California state court against a reporter and an editor for the National Enquirer, a publication based in Florida but whose largest market was California. 465 U.S. at 784-85. The Suprem e Court noted that the allegedly libelous article drew on California sources; that the article centered on the California activities of a California resident; and that the defendants knew that "the brunt of the harm , in term s both of respondent's em otional distress and the injury to her professional reputation, was suffered in California." Id. at 787-90 . Because California was the "focal point both of the story and of the harm suffered," the Court held that California's exercise of jurisdiction over defendants was consistent with due process. Id. at 789. 27 R. Doc. 17-21. 19 Recently, the Suprem e Court clarified the application of Calder in W alden v. Fiore, 134 S. Ct. 1115 (20 14). There, a Georgia police officer seized the plaintiffs' cash at an airport in Atlanta, Georgia. Id. at 1119. When the plaintiffs returned to Nevada, they filed suit against the officer in that state, alleging that the officer violated their Fourth Am endm ent rights by, am ong other things, seizing their cash without probable cause and drafting a false affidavit. Id. at 1120 . The Suprem e Court reiterated that the jurisdictional inquiry is focused on "the defendant's contacts with the forum state itself, not the defendant's contacts with persons who reside there." Id. at 1122. When the only basis for the exercise of specific personal jurisdiction is "a defendant's relationship with a plaintiff or third party," then jurisdiction will not lie. Id. at 1123. Applying these principles, the Court concluded that the Nevada district court lacked personal jurisdiction over the officer, who had "never traveled to, conduced activities with, contacted anyone in, or sent anything or anyone to Nevada." Id. at 1124. The Court reconciled its holding with its prior decision in Calder by stating: "The crux of Calder was that the reputation-based 'effects' of the alleged libel connected the defendants to California, not just to the plaintiff." Id. at 1123-24. The Court also noted that the strength of the relationship in Calder was largely a function of the nature of the libel tort. Id. at 1124. 20 Because libel requires publication to third persons, "the reputational injury caused by the defendants' story would not have occurred but for the fact that the defendants wrote an article for publication in California that was read by a large num ber of California citizens." Id. The Court concluded that under Calder, "the proper question is not where the plaintiff experienced a particular injury or effect but whether the defendant' conduct connects him to the forum in a m eaningful way." Id. at 1125. Here, HOA's use of allegedly infringing product designations does not m eaningfully connect it to Louisiana. Unlike in Calder, where the defendants' article was published to num erous readers in California, HOA has not m arketed or sold any merchandise in Louisiana or com pleted any transactions with Louisiana residents--excepting, of course, its single sale to 721 Bourbon's own investigator, which the Court has found insufficient to confer jurisdiction. HOA's only connection to Louisiana is that plaintiff 721 Bourbon happens to be based there. Specific personal jurisdiction cannot rest on such "random , fortuitous, or tentative" connections. Burger King, 471 U.S. , at 475; see also Panda Brandy w ine Corp. v. Potom ac Elec. Pow er Co., 253 F.3d 865, 870 (5th Cir. 20 0 1) ("We refuse to ignore the lim its of specific jurisdiction to allow Appellants to sue Appellee in the district court . . . when the 'potential' injury claim ed by Appellants resulted from interference with financing agreem ents 21 that have nothing to do with Texas except for the m ere fortuity that Appellants reside there."). 721 Bourbon m akes m uch of the fact that the USPTO previously denied two of HOA's applications for tradem ark registration, citing the likelihood of confusion with m arks owned by 721 Bourbon. 721 Bourbon argues that because these Office Actions put HOA on notice of 721 Bourbon's m ark, HOA's continued use of its m ark is aim ed directly at 721 Bourbon and intended to cause harm in this state.28 This argum ent fails because it focuses inordinately on HOA's connection with 721 Bourbon, not Louisiana. As the Suprem e Court instructed in W alden, specific jurisdiction cannot rest solely on a nonresident's defendant's relationship with a plaintiff, who happens to reside in the forum state. Where, as here, a defendant's contacts with the forum state occur m erely because a plaintiff is a resident of that state, there is nothing to indicate that the defendant directed its activities at the state or purposefully availed itself of the state's benefits and protections. See Moncrief Oil Int'l Inc. v. OAO Gazprom , 481 F.3d 30 9, 314 (5th Cir. 20 0 7) ("We have expressly declined to allow jurisdiction for even an intentional tort where the only jurisdictional basis is the alleged harm to a Texas resident."). Thus, personal jurisdiction 28 R. Doc. 24 at 4-8, 14-15. 22 does not lie in the forum . 721 Bourbon's reliance on Source N etw ork, a case from the Northern District of Texas, is also unavailing. There, a Texas plaintiff filed a tradem ark infringem ent and unfair com petition suit in Texas against a nonresident defendant, and the Texas court found that specific personal jurisdiction existed under Calder. 20 15 WL 23410 63, at *2. Im portantly, the court em phasized the defendant had initiated contact with Texas by sending the plaintiff a cease and desist letter and by em ailing several of the plaintiff's Texas-based custom ers about m atters directly relevant to the plaintiff's lawsuit. Id., at *8 n. 8. Neither of those factors are present here. HOA did not send 721 Bourbon a cease-and-desist letter; nor has it initiated contact with either 721 Bourbon or any of its Louisiana-based custom ers. Thus, the reasoning of the court in Source N etw ork does not apply to the very different facts at issue here. For these reasons, the Court therefore that HOA does not have sufficient m inim um contacts with Louisiana such that the exercise of specific personal jurisdiction over HOA would com port with due process. C. Ad d itio n al D is co ve ry o n Pe rs o n al Ju ris d ictio n 721 Bourbon submits in the alternative that the Court should defer ruling on personal jurisdiction until trial, citing the "intertwined" nature of its 23 jurisdictional case and the m erits of its claim s. 721 Bourbon argues that both the question of jurisdiction under Calder and the m erits of its case turn on HOA's awareness of 721 Bourbon's tradem arks and its intent to harm 721 Bourbon in Louisiana by infringing those m arks. 721 Bourbon also takes issue with HOA's responses to jurisdictional discovery, arguing that HOA's "deficient" responses to its requests for production deprived 721 Bourbon of the ability to m ake a m ore com plete showing of personal jurisdiction. For these reasons, 721 Bourbon argues that it should be perm itted to conduct additional discovery and present its jurisdictional case alongside its case on the m erits at trial.29 The Court rejects 721 Bourbon's request. Initially, the Court notes that 721 Bourbon had an opportunity to conduct jurisdictional discovery. After filing its m otion to dism iss, HOA agreed to reset the subm ission date for its m otion from J une 17, 20 15 to August 5, 20 15, thereby giving 721 Bourbon an additional seven weeks to develop facts to support its case for personal jurisdiction.30 On J uly 3, 20 15, 721 Bourbon served a request for production on HOA.31 HOA served its discovery responses on 721 Bourbon on J uly 6, 29 Id. at 21-22. 30 See id. at 10 . 31 R. Doc. 24-3 at 1. 24 20 15, outlining num erous objections to the scope of 721 Bourbon's discovery requests.32 This response gave 721 Bourbon over four weeks before the subm ission date to review HOA's subm ission and, if necessary, to seek an order com pelling production of discovery under Rule 37 of the Federal Rules of Civil Procedure. 721 Bourbon has filed no such order. Instead, it raises the adequacy of HOA's discovery for the first tim e in its opposition to HOA's m otion to dism iss. This tactic deviates from the procedural rules of this Court and unfairly prevents HOA from briefing its opposition to discovery in response to a properly-filed m otion. More im portantly, the inform ation that 721 Bourbon seeks is irrelevant to the existence of personal jurisdiction. It is well established that "discovery on m atters of personal jurisdiction . . . need not be perm itted unless the m otion to dism iss raises issues of fact." Kelly v. Sy ria Shell Petroleum Dev. B.V., 213 F.3d 841, 855 (5th Cir.20 0 0 ). And, "[w]hen the lack of personal jurisdiction is clear, discovery would serve no purpose and should not be perm itted." Id. Here, HOA has produced evidence that it operates entirely outside of Louisiana and that it has m ade no transactions with Louisiana residents, other than a single sale, through its website, to 721 Bourbon's own 32 R. Doc. 24 at 10 . 25 investigator. 721 Bourbon has not identified any evidence that m ight rebut HOA's evidence of its lack of contacts or raise an issue of fact regarding personal jurisdiction. 721 Bourbon argues instead that it should be perm itted to conduct m ore discovery on HOA's awareness of 721 Bourbon's registered tradem arks and its "intent relating to the sale of [its] infringing products."33 But, as noted, personal jurisdiction cannot rest solely on the relationship between a nonresident defendant and a plaintiff with ties to the forum state. Thus, the absence of personal jurisdiction is clear. And no am ount of additional inform ation on HOA's intent to harm 721 Bourbon in Louisiana through its sale of infringing products can cure the jurisdictional defect.34 33 Id. at 22. 34 721 Bourbon has also m oved the Court to take judicial notice of the following docum ents: (1) HOA's tradem ark application for its GURRNAID m ark, serial num ber 85334793; (2) an office action issued by the USPTO to HOA in connection with that application; (3) a notice of abandonm ent issued by the USPTO to HOA in connection with that application; (4) HOA's tradem ark application for its GURRNAID m ark with a stylized "G," serial num ber 85334885; (5) an office action issued by the USPTO to HOA in connection with that application; (6) a notice of abandonm ent issued by the USPTO to HOA in connection with that application ; and (7) a statem ent of use filed by HOA for a tradem ark application bearing serial num ber 85160 86. R. Doc. 23 at 1-2. 721 Bourbon argues that these docum ents are relevant to the question of personal jurisdiction because they "help establish the who did what, where, when, how, and with what m otive or intent." Id. at 3. In other words, 721 Bourbon subm its these docum ents to the Court as evidence of HOA's intentions vis-a-vis 721 Bourbon. The Court has already concluded that jurisdiction cannot rest on HOA's intent to harm 721 Bourbon alone. Thus, the docum ents for which 721 Bourbon seeks judicial notice do not alter the Court's ruling on HOA's m otion to dism iss for lack of personal jurisdiction. 721 Bourbon's m otion for judicial notice is therefore dism issed as m oot. 26 The Court finds that 721 Bourbon has failed to m ake a prim a facie showing of personal jurisdiction. As such, additional discovery on personal jurisdiction is not warranted, and 721 Bourbon's case m ust be dism issed. IV. CON CLU SION For the Court GRANTS defendant's m otion to dism iss for lack of personal jurisdiction. 19th New Orleans, Louisiana, this _ _ _ day of October, 20 15. ________________________________ SARAH S. VANCE UNITED STATES DISTRICT J UDGE 27
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