GN Trade Inc. et al v. Siemens et al

Filing 32

ORDER signed by Judge Lawrence K. Karlton on 9/29/2011 ORDERING that for the reasons set forth above, the 18 Motion To Dismiss the complaint for lack of personal jurisdiction is GRANTED. This action is DISMISSED with prejudice as to defendant Brighton Bazaar. (Duong, D)

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UNITED STATES DISTRICT COURT
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FOR THE EASTERN DISTRICT OF CALIFORNIA
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GN TRADE, INC., a California
Corporation; VLADIMIR DEMIN;
VLADIMIR SCHEVCHENKO,

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NO. CIV. S-11-0994 LKK/KJN
Plaintiffs,

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v.
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O R D E R
ANDREAS SIEMENS, SIEMENS
INTERNATIONAL TRADING
CORP.; BRIGHTON BAZAAR;
DOES 1-25,

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Defendants.
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/

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Defendant Brighton Bazaar moves to be dismissed from this

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trademark infringement action for lack of personal jurisdiction,

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pursuant to Fed. R. Civ. P. 12(b)(2).

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below, the motion to dismiss Brighton Bazaar is GRANTED.1

For the reasons set forth

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Plaintiffs, at the very end of their opposition papers,
request jurisdictional discovery in the event the court is inclined
to dismiss Brighton Bazaar. Plaintiffs’ Opposition at 16 (Dkt.
No. 22 at 21). Plaintiffs have not filed a motion for such relief,
nor have they made a showing that jurisdictional discovery could
affect the outcome of this motion. Accordingly, the request will
1

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I.

BACKGROUND

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Plaintiffs sued Brighton Bazaar, Siemens Int’l Trading Corp.,

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and other defendants,2 alleging claims under the Lanham Act, 15

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U.S.C. § 1051, et seq., for federal trademark infringement, and

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also alleging several state law claims.

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the holder of a federally registered trademark with “a civil action

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against anyone employing an imitation of it in commerce when ‘such

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use is likely to cause confusion, or to cause mistake, or to

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deceive.’”

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The Lanham Act provides

KP Permanent Make-Up, Inc. v. Lasting Impression I,

Inc., 543 U.S. 111, 117 (2004).3
Siemens imported bakery products – specifically, bread –

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produced by the “Back Shop” of Hamburg, Germany.

Siemens provided

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the products almost exclusively to Plaintiffs, who were the U.S.

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distributors of these products.

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Siemens did, however, reserve for itself the right to provide the

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products directly to two retail stores, one of which is Brighton

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Bazaar, a retail bakery in New York.

Complaint ¶¶ 19-25, 33 & 35.

Complaint ¶ 24.

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Plaintiffs registered a federal trademark – “Bäcker Bäck” –

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for the products, and distributed them under that trademark.

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Complaint ¶ 21.

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intended for them, which plaintiffs would have distributed within

Plaintiffs allege that Siemens took product

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not be considered.
2

It appears that at least one of the Siemens defendants has
filed for bankruptcy. At the hearing on this motion, both sides
agreed that this development had no effect on the motion.
3

Quoting 15 U.S.C. § 1114(1)(a).
2

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their exclusive distributorship territory, and diverted it to

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Brighton Bazaar.

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turn, the Complaint alleges, then distributed the product, at a

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cheaper price, within plaintiffs’ exclusive distribution territory.

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Complaint ¶ 201.

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II.

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Complaint ¶¶ 48, 58, 78.

Brighton Bazaar in

ARGUMENTS
Defendant Brighton Bazaar asserts that it has never shipped

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a single loaf of bread into California.

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argues, it lacks the “minimum contacts” with California that is

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Accordingly, defendant

needed for this court to assert personal jurisdiction over it.
Plaintiffs

argue

that

Brighton’s

alleged

actions

in

12

plaintiffs’ exclusive distributorship area had a devastating effect

13

on GN Trade, a California company, thus establishing that the court

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can exercise “special” personal jurisdiction over defendant.4

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III. STANDARD

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“In opposing a defendant's motion to dismiss for lack of

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personal

jurisdiction,

the

plaintiff

bears

the

burden

of

18

establishing that jurisdiction is proper.” CollegeSource, Inc. v.

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AcademyOne, Inc., ___ F.3d at ___, ___, 2011 WL 3437040 at *4 [2011

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U.S. App. LEXIS 16328] (9th Cir. August 8, 2011).5

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the court acts on the motion without conducting an evidentiary

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hearing, plaintiff’s burden is light: “the plaintiff need only make

When, as here,

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Plaintiffs concede that the court does not have “general”
personal jurisdiction over defendant.

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5

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Citing Boschetto v. Hansing, 539 F.3d 1011, 1015 (9th
Cir. 2008), cert. denied, 555 U.S. ___, 129 S. Ct. 1318 (2009)
3

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‘a prima facie showing of jurisdictional facts to withstand the

2

motion to dismiss.’”

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3437040 at *4.6

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are taken as true, and factual disputes are resolved in the

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plaintiff’s favor. CollegeSource, ___ F.3d at ___, 2011 WL 3437040

6

at *4.7

CollegeSource, ___ F.3d at ___, 2011 WL

The uncontroverted allegations in the complaint

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Plaintiff has not identified any provision in the Lanham Act,

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or any other federal statute, that provides either for nationwide

9

service of process, or for any other basis of personal jurisdiction

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over this defendant in this case.8

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rely upon Fed. R. Civ. P. 4(k)(1) (personal jurisdiction over

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defendant “who is subject to the jurisdiction of a court of general

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jurisdiction in the state where the district court is located”),

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and applies California law.

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2011 WL 3437040 at *4 (where “no federal statute authorizes

Accordingly, the court must

See CollegeSource, ___ F.3d at ___,

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Quoting Brayton Purcell LLP v. Recordon & Recordon, 606 F.3d
1124, 1127 (9th Cir. 2010).
7

Citing Schwarzenegger v. Fred Martin Motor Co., 374 F.3d
797, 800 (9th Cir. 2004), and Pebble Beach Co. v. Caddy, 453 F.3d
1151, 1154 (9th Cir. 2006).
8

Unlike the federal securities laws, see SEC v. Ross, 504
F.3d 1130, 1139-40 (9th Cir. 2007) (federal securities laws provide
for nationwide service of process), and the federal Racketeer
Influenced and Corrupt Organizations Act (“RICO”), accord,
Butcher’s Union Local No. 498 v. SDC Investment, Inc., 788 F.2d
535, 538 (9th Cir. 1986) (RICO provides for nationwide service of
process “when it is shown that ‘the ends of justice’ require it”),
it appears that the Lanham Act does not provide for nationwide
service of process, accord, be2 LLC v. Ivanov, 642 F.3d 555, 558
(7th Cir. 2011) (“The Lanham Act does not authorize nationwide
service of process”) (citing Sunward Electronics, Inc. v. McDonald,
362 F.3d 17, 22 (2d Cir.2004)).

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4

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personal jurisdiction, the district court applies the law of the

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state in which the court sits”).

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Cal. Code Civ. Proc. § 410.10, therefore governs this inquiry, and

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it authorizes the court to exercise personal jurisdiction to the

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extent permitted by federal due process.

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at ___, 2011 WL 3437040 at *4.

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For

a

court

to

exercise

California’s long-arm statute,

CollegeSource, ___ F.3d

personal

jurisdiction

over

a

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nonresident defendant consistent with due process, that defendant

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must have “certain minimum contacts ... such that the maintenance

10

of the suit does not offend ‘traditional notions of fair play and

11

substantial justice.’” Calder v. Jones, 465 U.S. 783, 788 (1984);9

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CollegeSource, ___ F.3d at ___, 2011 WL 3437040 at *4.

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nonresident

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sufficiently continuous or systematic to give rise to “general

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personal jurisdiction,” the defendant may still be subject to

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“specific

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defendant's contacts with the forum state.

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Rudzewicz, 471 U.S. 462, 477-78 (1985); Haisten v. Grass Valley

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Medical Reimbursement Fund, Ltd., 784 F.2d 1392, 1397 (9th Cir.

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1986). Specifically, a “nonresident defendant's discrete, isolated

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contacts with the forum” will support “specific jurisdiction” over

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that defendant “on a cause of action arising directly out of its

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forum contacts.”

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at *5.

defendant’s

personal

contacts

jurisdiction”

with

on

the

claims

state

arising

If the
are

out

not

of

Burger King Corp. v.

CollegeSource, ___ F.3d at ___, 2011 WL 3437040

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9

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Quoting International Shoe Co. v. Washington, 326 U.S. 310,
316 (1945).
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Whether specific jurisdiction exists is determined by a threepronged test:

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(1) The non-resident defendant must purposefully direct

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his activities or consummate some transaction with the

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forum or resident thereof; or perform some act by which

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he purposefully avails

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conducting activities in the forum, thereby invoking the

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benefits and protections of its laws; (2) the claim must

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be one which arises out of or relates to the defendant's

himself of the privilege of

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forum-related

activities;

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jurisdiction must comport with fair play and substantial

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justice, i.e., it must be reasonable.
___

F.3d

at

and

___,

(3)

2011

the

WL

exercise

3437040

of

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CollegeSource,

at

*6-*7.

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Plaintiff bears the burden of satisfying the first two prongs.

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CollegeSource, ___ F.3d at ___, 2011 WL 3437040 at *7.10

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Application of the first prong of this test depends upon the

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nature of the underlying claim. The underlying federal claims here

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are based upon trademark infringement, which sound in tort.

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See Levi Strauss & Co. v. Toyo Enterprise Co., Ltd., 665 F.

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Supp.2d 1084 (N.D. Cal. 2009) (“trademark infringement and dilution

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... are generally characterized as sounding in tort”).11

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“In tort cases, we typically inquire whether a defendant

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Citing
Cir. 1990).

Sher

v.

Johnson,

911

F.2d

1357,

1361

(9th

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11

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Citing Panavision Intern., L.P. v. Toeppen, 141 F.3d 1316,
1321 (9th Cir. 1998).
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‘purposefully direct[s] his activities' at the forum

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state, applying an ‘effects' test that focuses on the

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forum

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whether or not the actions themselves occurred within

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the forum.”

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Supreme Court's decision in Calder v. Jones, 465 U.S.

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783 (1984), requires that “the defendant allegedly must

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have (1) committed an intentional act, (2) expressly

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aimed at the forum state, (3) causing harm that the

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defendant knows is likely to be suffered in the forum

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state.”

in

which

the

defendant's

actions

were

felt,

The “effects” test, which derives from the

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CollegeSource, ___ F.3d at ___, 2011 WL 3437040 at *7 (citations
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omitted).12
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Finally, there is the question whether a defendant “expressly
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aimed” its tortious conduct at the forum state.

It is not

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sufficient that the conduct foreseeably caused injury in the forum
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state.

World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 295

(1980)

(“‘foreseeability’

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alone

has

never

been

a

sufficient

19
benchmark for personal jurisdiction under the Due Process Clause”);
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Brayton Purcell LLP v. Recordon & Recordon, 606 F.3d 1124, 1129
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(9th Cir. 2010) (“‘something more’ than mere foreseeability [is
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required]

in

order

to

justify

the

assertion

of

personal

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12

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Quoting Yahoo! Inc. v. La Ligue Contre Le Racisme, 433 F.3d
1199, 1206 (9th Cir.) (en banc), cert denied, 547 U.S. 1163 (2006).
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jurisdiction”);13 Lansing v. Feast at Lele, 2009 WL 800228 at *4,

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2009 U.S. Dist. LEXIS 28380 at *10 (E.D. Cal. March 25, 2009)

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(Karlton,

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California resident does not give rise to minimum contacts”).

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“something more” means “conduct expressly aimed at [or “targeting”]

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the forum,” Brayton Purcell, 606 F.3d at 1129, not just at the

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plaintiff who resides in the forum.

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IV.

(“The

mere

foreseeability

of

an

effect

on

a

The

DISCUSSION
A.

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J.)

Conduct in California
1.

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Plaintiff’s Jurisdictional Allegations.

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Plaintiffs allege that defendant Brighton Beach received GN

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TRADE’s “diverted,” trademarked goods from defendant Siemens for

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distribution “in GN TRADES’s exclusive distribution territory,”

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which includes California.14

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text).

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[and other] markets.”

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benefit of every reasonable inference, plaintiffs are alleging that

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Brighton

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California, thus infringing on GN TRADE’s trademark.

The product was diverted “from GN TRADE’s Californa ...

Bazaar

2.

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Complaint ¶¶ 68 & 78 (emphasis in

Complaint ¶ 78.

unfairly

distributed

Giving the Complaint the

GN

TRADE’s

goods

in

Defendant’s Declarations

Unfortunately for plaintiffs, defendant Brighton Bazaar has

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submitted

a

sworn

declaration

from

its

Vice

President

and

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Secretary, Rita Straschnow, asserting that “Brighton Bazaar has

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Quoting Schwarzenegger, 374 F.3d at 805.

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GN Trade’s original “exclusive territory” was the entire

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U.S.
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never sold any products bearing Plaintiffs’ trademark and has never

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sold or shipped bread into the state of California.”

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Decl. ¶ 4 (Dkt. No. 20).

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has never sold one loaf of bread under the name or from a box

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containing the name Bäcker Bäck.”

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doubt remain, defendant further asserts that “Brighton Bazaar has

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never sold or shipped one loaf of bread, under any name, into the

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state

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Brighton’s attorney has submitted a sworn declaration asserting

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that he asked his client to check the company’s records, and that

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“Brighton’s review of its records indicate that Brighton has not

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sold any bread” to the California businesses defendant identified

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as having received bread from Brighton.

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No. 19).

of

California.”

3.

15

Straschnow

She also asserts that “Brighton Bazaar

Straschnow Decl. ¶ 5.

Strachnow

Decl.

¶

8.

In

Lest any

addition,

Barrett Decl. at 10 (Dkt.

Plaintiffs’ Response

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In response, plaintiffs assert, in a sworn declaration: “Based

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on information I received from our clients, I believe some of

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California clients, including Citrus Heights Plaza located in

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Cirtus Heights, CA, RDM Express Food located in San Francisco, CA,

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and Rodeo Food Distribution located in Los Angeles, CA, have also

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received Back Shop product from Brighton Bazaar and/or Siemens IT

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Corp.”

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declaration.

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Shop product came from Brighton Bazaar, saying only that it came

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from Brighton “and/or” Siemens.

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consistent with defendant’s declarations – the Back Shop product

There

are

two

principal

problems

with

this

hedged

First, it fails to commit to an assertion that Back

In other words, it is entirely

9

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could, under this declaration, have all come from Siemens IT Corp.,

2

with

3

declaration is basically an “information and belief” allegation,

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no more weighty than the Complaint itself, and thus not enough to

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overcome defendant’s unequivocal, sworn denials.15

none

of

it

coming

from

Brighton

Bazaar.

Second,

the

Conduct Expressly Aimed at California

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B.

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Plaintiff argues, and supports with a declaration, that

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Brighton Bazaar took over its other exclusive markets – that is,

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markets other than California.16

Plaintiffs’ argument is that by

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taking away defendant’s market in Colorado and other states,

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defendant injured them in California, since they are a California

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business.

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Back product into Colorado and other states in knowing violation

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of plaintiffs’ trademark, that is not conduct that is “aimed at”

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California. It is conduct that is aimed at the markets in Colorado

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and those other states.

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Brighton knew that its alleged conduct was injuring a California-

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based company.

Even assuming that Brighton deliberately sold Backer

There is not even an allegation that

See Rogers v. Ferrari, 2006 WL 335587 at *3, 2006

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Defendant Brighton Bazaar admits that it has shipped three
“strudel” orders into California. But plaintiffs have never argued
that the three strudel orders have anything to do with this lawsuit
– which involves “bread” sold under the Bäcker Bäck trademark – or
with their claim of personal jurisdiction. Accordingly, although
the court is aware that there appears to be something called
“strudel bread,” the court will not further consider whether a
shipment of three strudel shipments into California is enough to
establish personal jurisdiction over Brighton Bazaar.
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At the hearing on this motion, plaintiffs appear to have
abandoned any assertion that Brighton Bazaar took over, or
attempted to take over its market in California.
10

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U.S. Dist. LEXIS 17132 at *11 (E.D. Cal. February 9, 2006)

2

(Karlton, J.) (unpublished) (“In this regard, it is significant

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that at oral argument plaintiff's counsel admitted that nothing in

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the record supported a conclusion that defendant Johnson-Norman

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knew that plaintiff was in California.

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knowledge, personal jurisdiction does not exist.”).

In the absence of such

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A brief review of the controlling cases helps to distinguish

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situations where “aiming” conduct occurred, and where it did not.

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The Supreme Court approved the exercise of personal jurisdiction

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in Calder v. Jones, 465 U.S. 783 (1984), where the “focal point”

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of defendants’ allegedly libelous story was the forum state and its

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residents.17

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jurisidiction in Brayton Purcell LLP v. Recordon & Recordon, 606

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F.3d 1124 (9th Cir. 2010), where the law firm defendant unfairly

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attempted to lure away plaintiff’s California clients.18

Similarly,

the

Ninth

Circuit

found

personal

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17

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The story, in the National Enquirer, was distributed in
California, to be read by a California audience.
The paper’s
largest circulation was in California. The alleged wrongdoing was
“intentionally directed at a California resident.” The story
“concerned the California activities of a California
resident, ... impugned the professionalism of an
entertainer whose television career was centered in
California, ... was drawn from California sources, ...
and the brunt of the harm, in terms both of respondent's
emotional distress and the injury to her professional
reputation, was suffered in California.”
In sum, California was “the focal point both of the story and of
the harm suffered.” Calder, 465 U.S. at 788-789.

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18

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In Brayton (a venue case, where venue is proper wherever
“the defendant would be subject to personal jurisdiction”),
defendant law firm allegedly competed unfairly for California
clients, in the limited California market for elder abuse cases.
11

1

On

the

other

hand,

the

Ninth

Circuit

found

personal

2

jurisdiction lacking in Schwarzenegger v. Fred Martin Motor Co.,

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374

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advertising allegedly injured Arnold Schwarzenegger, a California

5

resident, but was directed only at the car dealer’s local Ohio

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community.19

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1154 (9th Cir. 2006).20

8

F.3d

797,

800

(9th

Cir.

2004),

where

the

defendant’s

See also, Pebble Beach Co. v. Caddy, 453 F.3d 1151,

The cases cited by plaintiffs do not hold otherwise.

In Dole

9

Food Co., Inc. v. Watts, 303 F.3d 1104, 1111 (9th Cir. 2002), the

10

court found that personal jurisdiction exists when “the defendant

11

is alleged to have engaged in wrongful conduct targeted at a

12

plaintiff whom the defendant knows to be a resident of the forum

13

state.”

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plaintiff who is a resident of the forum state.

In Dole, there is “something more” than mere injury to a
In that case,

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16
17

Personal jurisdiction was found because there was something more
than injury to a California plaintiff – defendants specifically
targeted plaintiff’s California practice, including of course, its
California clients.

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19

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20
21
22

It may be true that Fred Martin's intentional
act eventually caused harm to Schwarzenegger
in California, and Fred Martin may have known
that Schwarzenegger lived in California. But
this does not confer jurisdiction, for Fred
Martin's express aim was local. We therefore
conclude that the Advertisement was not
expressly aimed at California.
Schwarzenegger, 374 F.3d at 807.

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20

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In Pebble Beach Co. v. Caddy, defendant, an Englishman,
created a website with “Pebble Beach” in the domain name,
www.pebblebeach.com. He did this after a trip to Carmel, CA, where
Pebble Beach, the golf course and resort, is located.
Just
maintaining this website was not enough to confer personal
jurisdiction.
12

1

defendants “communicated directly with ... [plaintiff’s] California

2

decisionmakers” in “Dole’s California offices via telphone, fax and

3

mail,” in fraudulently inducing those decisionmakers to lease

4

certain warehouse space.

Id., 303 F.3d at 1108 & 1109.

5

In Bancroft & Masters, Inc. v. Augusta National Inc.,223 F.3d

6

1082 (9th Cir. 2000), the golf tournament host Augusta National,

7

a Georgia company, sent a letter to the national internet registry

8

service

9

plaintiff’s use of the Internet domain name masters.com.

in

Virginia

(Network

Solutions,

Inc.),

challenging
This

10

triggered plaintiff’s obligation to file a declaratory action

11

lawsuit to protect its right to use the website.

12

suit in California, where it was located.

13

that the California district court had personal jurisdiction over

14

Augusta National because it did “something more” than allegedly

15

injure

16

“individualized targeting” of “a known forum resident.” Bancroft,

17

223 F.3d at 1088.

a

California

resident.

Plaintiff filed

The Ninth Circuit found

Namely,

it

engaged

in

18

Plaintiffs here have made no showing of the “something more”

19

that is required to exercise personal jurisdiction over Brighton

20

Bazaar.

21

California, that it intended to damage a company it knew was based

22

in California, that it attempted to take away the California market

23

from plaintiffs, or even that defendant was aware that plaintiffs

24

were California-based or had anything to do with California or the

25

California market. The allegation that defendant competed unfairly

26

in

They have not alleged that defendant contacted them in

non-California

markets

where
13

plaintiffs

had

exclusive

1

distributorship

2

requirement that defendant’s conduct must be “aimed at” California.

3

V.

4

rights,

simply

is

not

enough

to

satisfy

the

CONCLUSION
For the reasons set forth above, the Motion To Dismiss the

5

complaint for lack of personal jurisdiction is GRANTED.

6

action is DISMISSED with prejudice as to defendant Brighton Bazaar.

7

IT IS SO ORDERED.

8

DATED:

September 29, 2011.

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This