Tanga.com LLC et al v. Gordon

Filing 21

ORDER, Defendant Christopher Gordon's Motion to Dismiss for Lack of Personal Jurisdiction 12 is granted; the Alternative Motion to Dismiss for Improper Venue or Transfer Venue 12 is denied as moot; directing the Clerk to terminate this action and enter judgment accordingly. Signed by Judge G Murray Snow on 2/9/15. (REW)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE DISTRICT OF ARIZONA

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Tanga.com LLC, et al.,
Plaintiffs,

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ORDER

v.

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No. CV-14-01871-PHX-GMS

Christopher Gordon,

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Defendant.

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Pending before the Court is Defendant Christopher Gordon’s Motion to Dismiss

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for Lack of Personal Jurisdiction and Alternative Motion to Dismiss for Improper Venue

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or to Transfer Venue. (Doc. 12.) For the following reasons, the Motion to Dismiss for

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lack of personal jurisdiction is granted and the Alternative Motion to Dismiss for

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Improper Venue or to Transfer Venue is denied as moot.

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BACKGROUND

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This suit arises from a copyright and trademark dispute between Plaintiff

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Tanga.com LLC (“Tanga”) and Defendant Christopher Gordon. Gordon created a popular

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Internet video by replacing the existing audio of a nature video about honey badgers with

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his own comical narration. In the video, Gordon often uses the phrase, “Honey Badger

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Don’t Care.” Gordon has allegedly copyrighted his narration in the video and

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trademarked the phrase, “Honey Badger Don’t Care.”

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Plaintiff Tanga.com LLC (“Tanga”) is a Delaware limited liability company with

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its headquarters in Chandler, Arizona that sells merchandise over the Internet. Gordon

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alleges that Tanga sells t-shirts and other merchandise bearing the “Honey Badger Don’t

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Care” trademark and other expressions from Gordon’s copyrighted narration.

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On July 25, 2014, Gordon sent Tanga a cease and desist letter, and on August 15,

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2014, Tanga filed suit for declaratory relief, requesting a declaration of non-infringement

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and cancellation of Gordon’s federal trademark registrations. Gordon, in response, filed

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the current Motion, claiming that Gordon does not have sufficient contacts in Arizona to

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support personal jurisdiction. Tanga has submitted affidavits and other evidence of

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Gordon’s contacts in Arizona, which include travelling to a bookstore in Tempe to

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promote a book about honey badgers, selling his book through that bookstore, placing a

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phone call to a radio station to promote the book, creating a website that allows Arizona

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residents to purchase memorabilia over the Internet, and sending the cease and desist

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letter to Tanga.
DISCUSSION

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I.

Legal Standard

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Because the Court is resolving this Motion without holding an evidentiary hearing,

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Tanga “need make only a prima facie showing of jurisdictional facts to withstand the

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motion.” Ballard v. Savage, 65 F.3d 1495, 1498 (9th Cir. 1995); see Brainerd v.

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Governors of the Univ. of Alberta, 873 F.2d 1257, 1258 (9th Cir. 1989). That is, it “need

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only demonstrate facts that, if true, would support jurisdiction over the defendant.”

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Ballard, 65 F.3d at 1498. “Conflicts between parties over statements contained in

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affidavits must be resolved in the plaintiff’s favor.” Schwarzenegger v. Fred Martin

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Motor Co., 374 F.3d 797, 800 (9th Cir. 2004) (citing AT&T v. Compagnie Bruxelles

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Lambert, 94 F.3d 586, 588 (9th Cir. 1996)).

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To establish the prima facie case for personal jurisdiction, the plaintiff has the

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burden of showing that: (1) the forum state’s long-arm statute confers jurisdiction over

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the nonresident defendant; and (2) the exercise of jurisdiction comports with principles of

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due process. Omeluk v. Langsten Slip & Batbyggeri A/S, 52 F.3d 267, 269 (9th Cir.

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1995). Arizona’s long-arm statute confers jurisdiction to the maximum extent allowed by

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the Due Process Clause of the United States Constitution. Ariz. R. Civ. P. 4.2(a); Doe v.

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American Nat’l Red Cross, 112 F.3d 1048, 1050 (9th Cir. 1997). Due process requires a

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nonresident defendant to have “certain minimum contacts with [the forum] such that the

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maintenance of the suit does not offend traditional notions of fair play and substantial

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justice.” Int’l Shoe Co. v. Washington, 326 U.S. 310, 316 (1945) (internal citation

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omitted). There are two types of personal jurisdiction, general and specific. Burger King

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Corp. v. Rudzewicz, 471 U.S. 462, 473 n.5 (1985). General jurisdiction allows a court to

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entertain all actions against defendants because they have significant, continuous contacts

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with a forum state, while specific jurisdiction allows only actions against defendants that

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relate directly to their contacts with the forum state because the contacts are minimal. See

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id. In its Response to Gordon’s Motion, Tanga makes no argument that this Court may

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exercise general jurisdiction over Gordon. Rather it asserts that specific jurisdiction

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exists.

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A.

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Defendants’ contacts with the forum state are sufficient to subject them to the

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state’s specific jurisdiction if (1) they purposefully directed tortious activities at the

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forum or a resident thereof or performed some act by which they purposefully availed

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themselves of the privileges of conducting activities in the forum, (2) the claims arise out

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of or result from the defendant’s forum-related activities, and (3) the exercise of

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jurisdiction is reasonable. See Bancroft & Masters, Inc. v. Augusta Nat. Inc., 223 F.3d

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1082, 1086 (9th Cir. 2000); Brainerd, 873 F.2d at 1259.

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Specific Jurisdiction

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Purposeful Availment and “Arising out of”

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The Ninth Circuit has held that the specific jurisdiction test “may be satisfied by

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purposeful availment of the privilege of doing business in the forum; by purposeful

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direction of activities at the forum; or by some combination thereof.” Yahoo! Inc. v. La

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Ligue Contre Le Racisme Et L’Antisemitisme, 433 F.3d 1199, 1206 (9th Cir. 2006) (per

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curiam) (applying this hybrid purposeful availment/direction test to a plaintiff’s claims

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for declaratory judgment regarding the enforceability of orders issued by a French court).

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Under either of these tests, plaintiffs must also show that their suit arises out of the

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defendant’s contacts in the forum state. See Terracom v. Valley Nat. Bank, 49 F.3d 555,

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561 (9th Cir. 1995); Bancroft & Masters, 223 F.3d at 1088. This “arising out of”

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requirement is met if, but for the contacts between the defendant and the forum state, the

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cause of action would not have arisen. See Omeluk, 52 F.3d at 271.

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Purposeful availment “requires that the defendant engage in some form of

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affirmative conduct allowing or promoting the transaction of business within the forum

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state. This focus on the defendant’s affirmative conduct is designed to ensure that the

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defendant is not haled into court as the result of random, fortuitous, or attenuated

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contacts.” Gray & Co. v. Firstenberg Mach. Co., 913 F.2d 758, 760 (9th Cir. 1990)

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(citation omitted). A defendant has engaged in affirmative conduct and thereby

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“purposely availed himself of the benefits of a forum if he has deliberately ‘engaged in

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significant activities within a State or has created “continuing obligations” between

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himself and the residents of the forum.’” Gray, 913 F.2d at 760 (quoting Burger King,

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471 U.S. at 475–76); see Cybersell, Inc. v. Cybersell, Inc., 130 F.3d 414, 417 (9th Cir.

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1997) (stating that “the ‘purposeful availment’ requirement is satisfied if the defendant

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has taken deliberate action within the forum state or if he has created continuing

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obligations to forum residents”) (citing Ballard, 65 F.3d at 1498).

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In contrast, courts evaluate purposeful direction using the Calder “effects test.”

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See Brayton Purcell LLP v. Recordon & Recordon, 606 F.3d 1124, 1128 (9th Cir. 2010).

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Under the “effects test,” the defendant must allegedly have: “(1) committed an intentional

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act, (2) expressly aimed at the forum state, (3) causing harm that the defendant knows is

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likely to be suffered in the forum state.” Dole Food Co., Inc. v. Watts, 303 F.3d 1104,

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1111 (9th Cir. 2002). All three elements of the test must be satisfied. Schwarzenegger v.

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Fred Martin Motor Co., 374 F.3d 797, 805 (9th Cir. 2004). “A finding of ‘express

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aiming’ . . . does not mean ‘that a foreign act with foreseeable effects in the forum states

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always gives rise to specific jurisdiction.’” Dole, 303 F.3d at 1112 (quoting Bancroft, 223

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F.3d at 1087). Under the causing harm requirement, the Ninth Circuit has made it clear

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that any intentional conduct must be “targeted at a plaintiff whom the defendant knows to

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be a resident of the forum state.” Bancroft, 223 F.3d at 1087.

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Tanga has not met its burden of showing that Gordon purposefully availed himself

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of the opportunity of doing business in Arizona, or that he purposefully directed activity

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at this state or its occupants. As mentioned above, Gordon’s contacts include making a

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trip to a bookstore in the Tempe to promote a book about honey badgers, selling his book

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through that bookstore, making a phone call to a radio station to promote the book,

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creating a website that allows Arizona residents to purchase memorabilia over the

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Internet, and sending the cease and desist letter to Tanga. These activities, taken together,

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would likely constitute purposeful availment of the opportunity of doing business in

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Arizona if they were the events that gave rise to the current suit. See Sher v. Johnson, 911

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F.2d 1357, 1363–64 (9th Cir. 1990) (finding that a partnership’s making phone calls and

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sending letters into the forum state, visiting the state for business, and having a deed of

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trust executed in favor of the partnership gave rise to the plaintiff’s suit and provided

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sufficient evidence of purposeful availment). However, in this case the only activity of

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Gordon’s that was the “but for” cause of Tanga’s suit against Gordon was the cease and

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desist letter that Gordon sent to Tanga. See Glencore Grain Rotterdam B.V. v. Shivnath

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Rai Harnarain Co., 284 F.3d 1114, 1123–24 (9th Cir. 2002) (refusing to analyze

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defendant’s contacts of shipping products into the forum state as purposeful availment

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because they did not give rise to the suit and holding that there was no personal

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jurisdiction over defendant); Bryant v. Weintraub, Genshlea, Hardy, Erich & Brown, 42

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F.3d 1398 (9th Cir. 1994) (holding that a defendant’s brief unrelated trip did not give rise

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to the plaintiff’s suit and was, thus, not considered in the personal jurisdiction analysis).

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Thus, the cease and desist letter is the only contact that could give rise to personal

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jurisdiction in this case.

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It is well settled law that “a cease and desist letter is not in and of itself sufficient

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to establish personal jurisdiction over the sender of the letter.” Yahoo, 433 F.3d at 1208;

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see also Cascade Corp. v. Hiab–Foco AB, 619 F.2d 36, 38 (9th Cir. 1980); Kransco Mfg.,

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Inc. v. Markwitz, 656 F.2d 1376, 1380 (9th Cir. 1981); Douglas Furniture Co. of Cal.,

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Inc. v. Wood Dimensions, Inc., 963 F. Supp. 899, 903 (C. D. Cal. 1997). In both Yahoo

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and another recent case, Bancroft & Masters, the Ninth Circuit found specific personal

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jurisdiction to exist over defendants who sent cease and desist letters into a forum state

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because, beyond sending the letters, they had other forum related activities that gave rise

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to the plaintiffs’ claims. See Yahoo, 433 F.3d at 1208; Bancroft & Masters, 223 F.3d at

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1087. (emphasis added). In Yahoo, the defendant had obtained orders from French courts

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directing the plaintiff to perform actions in the forum state, which gave rise to the

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plaintiff’s claims in the forum state. 433 F.3d at 1208. In Bancroft & Masters, the sent a

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cease and desist letter both to the plaintiff and to a third-party corporation, which had

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competing claims to an Internet domain name, with the intent of triggering the dispute

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resolution procedures of the third-party corporation. 223 F.3d at 1087. The court in

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Bancroft & Masters found that this triggering of the dispute resolution procedures gave

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rise to the plaintiff’s suit and held that it constituted purposeful direction. Id.

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In the present case, as noted above, Gordon has directed no activity at Arizona that

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gave rise to Tanga’s claims beyond sending a cease and desist letter to Tanga. This

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differentiates the present case from both Yahoo and Bancroft & Masters and prevents this

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Court from acquiring jurisdiction over Gordon.

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2.

Reasonableness and Venue

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Because Tanga has not satisfied the first and second prongs of the personal

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jurisdiction test, the Court need not consider the reasonableness of exercising jurisdiction.

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See Schwarzenegger, 374 F.3d at 802. Because the Court lacks personal jurisdiction over

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a defendant, the venue concerns in the present case have become moot. See Bryant v.

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Weintraub, Genshlea, Hardy, Erich & Brown, 42 F.3d 1398 (9th Cir. 1994) (affirming a

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district court’s decision to dismiss for lack of personal jurisdiction and deny a motion to

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transfer venue as moot).

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CONCLUSION

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Tanga has failed to meet its burden of making a prima facie case of personal

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jurisdiction over Gordon. Dismissal is appropriate, and the venue concerns raised by

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Gordon have become moot.

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IT IS THEREFORE ORDERED that Defendant Christopher Gordon’s Motion

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to Dismiss for Lack of Personal Jurisdiction is GRANTED, and the Alternative Motion

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to Dismiss for Improper Venue or Transfer Venue, (Doc. 12.) is DENIED AS MOOT.

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IT IS FURTHER ORDERED directing the Clerk of Court to terminate this
action and enter judgment accordingly.
Dated this 9th day of February, 2015.

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Honorable G. Murray Snow
United States District Judge

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