Under A Foot Plant, Co. v. Exterior Design, Inc., et al, No. 1:2015cv00871 - Document 17 (D. Md. 2015)

Court Description: OPINION AND ORDER: Plaintiff's request for judicial notice 11 is GRANTED. Defendant's motion to dismiss or transfer venue 8 is GRANTED. This case shall be transferred to the District of Maryland. See formal OPINION AND ORDER. Signed on 3/24/2015 by Chief Judge Ann L. Aiken. (rh)
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Under A Foot Plant, Co. v. Exterior Design, Inc., et al Doc. 17 IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF OREGON UNDER A FOOT PLANT, CO., an Oregon corporation Plaintiff, Case No. 6:14-cv-01371-AA OPINION AND ORDER v. EXTERIOR DESIGN, INC., a Maryland corporation, doing business as THE PERENNIAL FARM, TREADWELL PERENNIALS, and PERENNIAL FARM MARKETPLACE, Defendant. ROBERT SWIDER MICHAEL DELL LONG ANDREA A. SELKREGG Swider Haver 621 SW Morrison, Suite 1420 Portland, Oregon 97205 Attorneys for plaintiff BARRY J. GOEHLER Law office of Barry Goehler 1001 SW Fifth Avenue, Suite 1530 Portland, Oregon 97204 Attorney for defendant Page 1 - OPINION AND ORDER Dockets.Justia.com AIKEN, Chief Judge: Defendant Exterior Design, Inc. filed a motion to dismiss plaintiff Under A Foot Plant, Co.'s complaint for lack of personal jurisdiction pursuant to Fed. R. Civ. P. (12) (b) (2). In the alternative, defendant moves to transfer venue to the District of Maryland. Additionally, plaintiff requests judicial notice of a printout from defendant's website. For the reasons set forth below, the parties' motions are granted. BACKGROUND Plaintiff, an Oregon corporation with its principal place of business in Salem, Oregon, is in the wholesale business of marketing and distributing groundcover plants. In 1999, plaintiff developed a product line entitled STEPABLES®. In the course of marketing STEPABLES®, plaintiff took a number of photographs for use in its promotional materials. Among these photographs are the nineteen copyrighted images ("Copyrighted Works") at issue in this case. Defendant, a Maryland corporation with its principal place of business in Glenn Arm, Maryland, is also in the wholesale plant business. Sometime around 2010, defendant developed a product line, entitled Treadwell Plants, that is similar in nature to plaintiff's STEP ABLES®. On August 26, 2014, plaintiff filed a complaint in this Court against defendant alleging Page 2 - OPINION AND ORDER copyright infringement, unfair and deceptive trade practices, plaintiff alleges that, and unjust enrichment. beginning in March Specifically, 2011, defendant impermissibly began using, and continues to use, the Copyrighted Works in promoting Treadwell Plants. On September 17, 2014, defendant filed the present motion to dismiss or transfer venue. STANDARDS Where the court lacks personal jurisdiction, the action must be dismissed. Fed. R. Ci v. P. 12 (b) ( 2) . When a defendant moves to dismiss for lack of personal jurisdiction, the plaintiff bears the burden of establishing Schwarzenegger v. Cir. 2004) that such jurisdiction Fred Martin Motor Co., (citation omitted). Where is appropriate. 374 F.3d 797, the court 800 (9th makes its jurisdictional finding based on pleadings and affidavits rather than an evidentiary hearing, the plaintiff need only make a prima facie showing of Psychoanalytical jurisdictional Ass'n, 59 F.3d facts. 126, Caruth 127-28 (9th v. Int'l Cir. 1995). "Although the plaintiff cannot rest solely on the allegations of the complaint to establish that jurisdiction is proper, the complaint's uncontroverted factual allegations must be accepted as true and any factual conflicts in the parties' declarations must be resolved in the plaintiff's favor." Ukrvaktsina v. Olden Grp., LLC, 2011 WL 5244697, *2 (D.Or. Oct. 30, 2011) (citations omitted). DISCUSSION Defendant asserts that Page 3 - OPINION AND ORDER dismissal or transfer of venue is warranted because plaintiff failed to allege facts that would support personal jurisdiction in this forum. Conversely, plaintiff argues that this District has both general and specific jurisdiction over defendant pursuant to Oregon's long arm statute. I. Request for Judicial Notice Plaintiff requests judicial notice of an archived printout from defendant's website, which was generated by The Internet Archive on November 30, 2010. This printout describes the shipping services provided by defendant. According to plaintiff, defendant "does not object to the existence of the document, Court [but] taking judicial notice of the does not consent to the Court taking judicial notice of the facts contained within the document." Pl.'s Mot. Jud. Notice 2. Defendant did not file an opposition to plaintiff's request for judicial notice. A court may take subject within to the accurately reasonable trial and judicial notice dispute" court's readily of because territorial determined it "a fact "is that generally jurisdiction" or from sources cannot reasonably be questioned." Fed. R. Evid. is whose not known "can be accuracy 201(b). District courts have routinely taken judicial notice of content from The Internet Archive pursuant to this rule. See, e.g., Pond Guy, Inc. v. Aguascape Designs, Inc., 2014 WL 2863871, *4 (E.D.Mich. June 24, 2014); Martins v. 3PD, Inc., 2013 WL 1320454, *16 (D.Mass. Mar. 28, 2013); In re Methyl Tertiary Butyl Ether Page 4 - OPINION AND ORDER (MTBE) Products Liab. Litig., 2013 WL 6869410, *4 (S.D.N.Y. Dec. 30, 2013). Accordingly, plaintiff's request for judicial notice is granted. II. Motion to Dismiss When no applicable federal governs statute personal jurisdiction, the district court applies the law of the state in which it sits. Schwarzenegqer, 374 F.3d at 800 (citations omitted). Because Oregon's long-arm statute is coextensive with federal due process requirements, the jurisdictional analyses under state law and federal due process are the same. Id. at 801; Or. R. Civ. P. 4L. Thus, determine the two whether inquiries the merge assertion of and this Court only jurisdiction personal need over defendant violates the due process clause. In order for a court to have the power to render judgment against a defendant, the plaintiff must show that the nature and quality of the non-resident's contacts are sufficient to establish either "general" or "specific" personal jurisdiction. Helicopteros Nacionales de Columbia, S.A. v. Hall, 466 U.S. 408, 414-15 (1984). A. General Jurisdiction The due process clause permits a court to exercise general personal jurisdiction if the non-resident defendant's activities within the forum state are "substantial" or "continuous and systematic," even if the cause of action is unrelated to those activities. Tuazon v. 1171 Cir. (9th 2006) R.J. Reynolds Tobacco Co., (citation Page 5 - OPINION AND ORDER omitted). The 433 F.3d 1163, standard for establishing general jurisdiction is "exacting" and requires that the defendant's contacts be of the sort that "approximate physical presence" in the (citation omitted). impact, forum state. physical Schwarzenegger, "Longevity, presence, continuity, and regulatory or economic markets into among the 8 01 economic volume, integration are 37 4 F. 3d at the state's indica of such a presence." Tuazon, 433 F.3d at 1172; see also Bancroft & Masters, Inc. V. Augusta Nat'l, ("[f]actors to defendant makes be Inc., taken sales, 223 F.3d 1082, 1086 (9th Cir. 2000) into consideration solicits or engages are whether in business the in the state, serves the state's markets, designates an agent for service of process, holds a license, or is incorporated there") (citation omitted). Plaintiff asserts that general jurisdiction exists because defendant makes consultant - i.e. purchases Dr. from Armitage - Oregon nurseries, who attended a employs a trade show in Oregon, and sells to national chains that "likely" distribute their products to Oregon. Pl.'s Resp. to Mot. finds, to the contrary, Dismiss 12-13. The Court that the contacts alleged by plaintiff cannot be said to be so continuous and systematic as to approximate defendant's physical presence in Oregon for four reasons. First, it is well established that purchasing products from a forum state is not enough to establish general jurisdiction over a defendant. See Helicopteros, 466 U.S. at 418 Page 6 - OPINION AND ORDER ("mere purchases, even if occurring at regular intervals, are not enough to warrant a State's assertion of in personam jurisdiction over a nonresident corporation in a cause of (citation action not omitted); related Bancroft, to those 223 purchase F. 3d at 1086 transactions") ("engaging in commerce with residents of the forum state is not in and of itself the kind of activity that approximates physical presence within the states borders") ( citation omitted) . Second, Dr. Armitage offered sworn testimony that he is not an agent or employee of defendant. Armitage Decl. 2. He also stated that any time spent in Oregon at trade shows and other events was for the benefit of his own career. Id. In other words, he never represented defendant or conducted any business on its behalf while in Oregon. Id. Third, plaintiff's vague assertion that defendant has national customers that "likely" distribute their products to Oregon does not support its argument Pl.'s to Mot. Resp. Dismiss 13 for general (citing Long jurisdiction. Decl. 7). Even assuming that some of defendant's products reach Oregon through its national customers, occasional, unsolicited sales to forum residents are insufficient to create general jurisdiction over a non-resident. Bancroft, 223 F.3d at 1086 (citation omitted). Finally, other evidence indicates defendant lacks the contacts with Oregon that would warrant general jurisdiction. See generally Watson Decl. Specifically, defendant is not licensed to do business in Oregon, does not have any agents or employees in Oregon, Page 7 - OPINION AND ORDER does not own any real estate or operate any facilities in Oregon, and does not own any Oregon bank accounts. Id. unrefuted by plaintiff and provide 4. These facts are further evidence that defendant's contact with Oregon is not systematic and continuous. Accordingly, this Court lacks general personal jurisdiction over defendant. B. Specific Jurisdiction Where general personal jurisdiction is lacking, a court may still exercise specific jurisdiction if the defendant has minimum contacts with the forum state such that the maintenance of the suit does not offend traditional notions of fair play and substantial justice. Pebble Beach Co. v. Caddy, 453 F.3d 1151, 1155 (9th Cir. (citation omitted) . Under the minimum contacts test, a court 2006) can exercise specific personal jurisdiction over a non-resident if: 1) the defendant performs an act or consummates a transaction within the forum, purposefully availing itself of the privilege of conducting activities there; 2) the plaintiff's claim arises out of or results from the defendant's forum-related activities; and 3) the exercise of personal jurisdiction over the defendant is reasonable. Id. ( citation omitted) . The plaintiff "bears the burden of satisfying the first two prongs of the 'minimum contacts' test." Id. of (citation omitted). "If the plaintiff fails to satisfy either these prongs, personal jurisdiction Schwarzenegger, 374 F.3d at 802 Page 8 - OPINION AND ORDER is not (citations omitted). established." The Ninth Circuit typically treats the first element of the minimum contacts test differently in tort and contract cases. Yahoo! Inc. v. La Ligue Contre Le Racisme Et L'Antisemitisme, 433 F.3d 1199, 1206 (9th Cir.), cert. denied, 547 U.S. 1163 (2006). In contract cases, "purposefully the avails court itself activities or consummate[s] inquires of the whether the defendant privilege of conducting [a] transaction in the forum, focusing on activities such as delivering goods or executing a contract." Id. (citation and internal quotations omitted). In tort cases, the court generally applies the effects test to determine whether the defendant purposefully directs its activities at the forum state, regardless of whether the actions themselves occurred within the forum. Id. Because plaintiff's allegations are based in tort, the effects test governs. Accordingly, plaintiff must demonstrate, in relevant part, that defendant committed an intentional act expressly aimed at this forum, which caused harm herein. Harris Rutsky & Co. Ins. Servs., Inc. v. Bell & Clements Ltd., 328 F.3d 1122, 1131 (9th Cir. 2003) (citation "intentional act" omitted). refers For to purposes "an intent of to the effects perform an test, actual, physical act in the real world, rather than an intent to accomplish a result or consequence of that act." Schwarzenegger, 374 F.3d at 806. Thus, in a copyright action, a defendant acts intentionally when it reproduces and distributes the protected work, regardless Page 9 - OPINION AND ORDER of whether or not it intended to violate the copyright. Herer v. Ah Ha Pub., LLC, 927 F.Supp.2d 1080, 1086 (D.Or. 2013). An intentional act with foreseeable effects in a forum state alone will not give rise to specific jurisdiction; rather, the intentional act must be "expressly aimed" at the forum state. Bancroft, 223 F.3d at 1087. Here, the Court finds that defendant committed an intentional act within the reproduced F.Supp.2d and at meaning of displayed 1086. The the the more effects test Copyrighted difficult when Works. question it allegedly Herer, is 927 whether defendant's conduct was "expressly aimed" at this forum. Plaintiff argues that defendant wilfully violated its rights in the Copyrighted Works despite being informed of its interest. Further, plaintiff contends that, based on email correspondences and the transmittal of its copyright registrations and a cease and desist letter, defendant had knowledge of its Salem, Oregon, location. 1 1 As such, plaintiff argues that Wash. Shoe Co. v. A-Z Sporting Goods Inc., 704 F.3d 668 (9th Cir. 2012), controls this Court's analysis. Pl.'s Resp. to Mot. Dismiss 9-11. That case held that when a plaintiff "allege[s] willful infringement of [its] copyright, and [the defendant's] knowledge of both the existence of the copyright and the forum of the copyright holder," the "expressly aimed" prong is satisfied. Wash. Shoe, 704 F.3d at 678-79. As defendant notes, however, the Supreme Court recently examined the Ninth Circuit's application of the effects test and held that a plaintiff cannot be the only connection between the defendant and the forum: "it is the defendant's conduct that must form the necessary connection with the forum State that is the basis for jurisdiction over him." Walden v. Fiore, 134 S.Ct. 1115, 1122 (2014) (citations omitted). Thus, intentional conduct directed at an individual who is known to reside in a particular forum is not enough, on its own, to satisfy the minimum contacts test. Id. at 1125. "The proper Page 10 - OPINION AND ORDER Plaintiff's argument is problematic because it shifts the focus of the minimum contacts analysis from defendant's connection with Oregon to defendant's connection with plaintiff; yet this is precisely what defendant's the Court intentional contacts with the jurisdiction. found conduct improper did not in Walden. create the Here, necessary forum to allow for the exercise of specific It is undisputed that defendant's conduct did not occur within the State of Oregon. Indeed, plaintiff alleges the reproduction and display of the Copyrighted Works took place in Maryland, Massachusetts, and on defendant's websites. The "maintenance of a passive website alone cannot satisfy the express aiming prong"; only operating "a passive website in conjunction with 'something more' - conduct directly targeting the forum - is sufficient." Marvix Photo, Inc. v. Brand Technologies, Inc., 647 F. 3d 1218, 1229 (9th Cir. 2011) (citations omitted). Courts consider multiple factors when determining if a defendant has done "something defendant's commercial website, ambitions, more," the and including: geographic whether "the scope the of interactivity the defendant of defendant's individually targeted a plaintiff known to be a forum resident." Id. (citation and internal quotations omitted). An analysis of these factors establishes that defendant's question is not where the plaintiff experienced a particular injury or effect but whether the defendant's conduct connects him to the forum in a meaningful way." Id. Page 11 - OPINION AND ORDER conduct lacked the requisite "something more." Defendant's websites have a low degree of interactivity. They allow a visitor to submit questions via a "contact us" page and sign up for an electronic newsletter but they do not allow visitors to purchase products online. See Willis v. (D.Or. Oct. 24, 2011) Debt Care, USA, Inc., 2011 WL 7121288, (defendant's website was passive because it only allowed customers to log-in and access their accounts, maintained a "contact us" page) Richard Watson, defendant's defendant's business *8 is and (citations omitted) . In addition, general conducted manager, almost testified exclusively in that the Northeast and Mid-Atlantic regions of the United States. Watson Decl. 2. Plaintiff has produced no evidence that defendant made sales in Oregon. There is also no evidence that defendant's alleged infringement was targeted at plaintiff's customers or other Oregon residents. ambition These in this facts forum, show as a general well as a absence lack of of commercial individualized targeting directed at Oregon and its citizens. In sum, plaintiff failed to establish that defendant "expressly aimed" its conduct at Oregon. Because plaintiff did not satisfy the first prong of the minimum contacts analysis, the Court need not examine the other two elements to determine that specific jurisdiction is lacking. Schwarzenegger, 374 F.3d at 802. III. Motion to Transfer Venue Even assuming defendant was subject to personal jurisdiction Page 12 - OPINION AND ORDER in this District, a transfer of venue would nonetheless be appropriate. See Jones v. GNC Franchising, Inc., 211 F.3d 495, 49899 (9th Cir.), cert. denied, 531 U.S. 928 (2000) (articulating non- exclusive factors in determining whether to transfer venue pursuant to 28 U.S.C. § 1404(a)). instituted in the Initially, District this action could have been of Maryland because defendant is a Maryland corporation. 28 U.S.C. 1400(a). Moreover, to the extent applicable, the factors determining venue weigh in favor of a transfer, as defendant has no contact with this forum outside of its dispute with plaintiff. As a result, defendant would be inconvenienced to a degree that outweighs the deference typically given to a plaintiff's choice of forum. For these reasons, defendant's motion is granted. CONCLUSION Plaintiff's request for judicial notice (doc. 11) is GRANTED. Defendant's GRANTED. motion This case to dismiss shall be or transfer transferred venue to Maryland. IT IS SO ORDERED. Dated this of March, 2015. Ann Aiken United States District Judge Page 13 - OPINION AND ORDER the (doc. 8) is District of