Inventors Row Inc. v. Blankenship

Filing 16

MEMORANDUM AND ORDER signed by Senior Judge William B. Shubb on 5/2/2018 DENYING 8 Motion to Dismiss, or in the Alternative, to Transfer Venue on the condition that within 30 days, plaintiff submits evidence that plaintiff owns the trademark at issue. (Fabillaran, J)

1
2
3
4
5
6
7
8

UNITED STATES DISTRICT COURT

9

EASTERN DISTRICT OF CALIFORNIA

10

----oo0oo----

11
12

INVENTORS ROW INC.,
Plaintiff,

13
v.

14
15

Civ. No. 17-2387 WBS EFB

MEMORANDUM AND ORDER RE:
MOTION TO DISMISS, OR, IN THE
ALTERNATIVE, TO TRANSFER
VENUE

PAULA BLANKENSHIP dba NODPOD;
and DOES 1-5,

16

Defendant.

17
18

----oo0oo----

19
20
21
22
23
24
25
26
27

Plaintiff Inventors Row Inc., brought this action
against defendants Paula Blankenship doing business as Nodpod
(“defendant” or “Blankenship”) and Does 1-5 arising out of
defendant’s alleged trademark infringement.

The matter is now

before the court on defendant Blankenship’s Motion to Dismiss the
Complaint or, in the Alternative, to Transfer Venue.

(Docket No.

8.)
I.

Factual and Procedural Background
Plaintiff is the owner of a California corporation with

28
1

1

its principal place of business in Rocklin, California that

2

develops, markets, distributes, and sells pillows, including

3

travel pillow attachments.

4

Defendant is the owner of a privately-owned business with its

5

principal place of business in Shepherdsville, Kentucky that also

6

develops, markets, distributes, and sells travel pillows.

7

1.)

8

business nationwide via internet sales.

(Compl. ¶ 2 (Docket No. 1).)

(Id. ¶

Plaintiff alleges that defendant transacts substantial

9

(Id. ¶ 3.)

Beginning in October of 2014, plaintiff began

10

advertising, marketing, and distributing the NODPOD pillow.

(Id.

11

¶ 9.)

12

a design mark in the United States Patent and Trademark Office

13

(“USPTO”) on the Principal Register, registration number 5173967,

14

containing the words “NODPOD EYE PILLOW.”

15

January 17, 2016, the design mark was published.

On March 12, 2015, plaintiff submitted an application for

16

(Id. ¶¶ 12, 13.)

On

(Id. ¶ 13.)

Beginning in 2016, defendant began advertising,

17

marketing, and distributing a NODPOD pillow.

18

March 18, 2016, defendant filed a trademark application for

19

“NODPOD.”

20

suspension notice from the USPTO informing them of the conflict

21

with plaintiff’s application.

22

launched a Kickstarter Campaign for the NODPOD travel pillow and

23

by September of 2016 defendant raised $307,274 from 7,280 backers

24

through Kickstarter, and $328,081 through an Indiegogo campaign.

25

(Id. ¶¶ 15, 16.)

26

published or featured in at least 30 media sources including,

27

among others, Cosmopolitan, Elle, The Telegraph, The Huffington

28

Post, and the Today Show.

(Id. ¶ 14.)

(Id. ¶ 10.)

On

On June 29, 2016, defendant received a

(Id.)

On July 26, 2016, defendant

Defendant’s version of the NODPOD pillow was

(Id. ¶ 18.)
2

On April 4, 2017, a

1

registration certificate was issued to plaintiff by the USPTO.

2

(Id. ¶ 13.)

3

As a result of defendant’s media campaign, plaintiff

4

alleges that it has been harmed because consumers and marketers

5

confuse defendant’s product and brand with plaintiff’s product

6

and brand.

7

defendant has committed and continues to commit acts of trademark

8

infringement against plaintiff.

9

2017, plaintiff filed a Complaint against defendant for: (1)

(See id. ¶ 20.)

In addition, plaintiff alleges that

(Id. ¶ 21.)

On November 13,

10

trademark infringement under section 32(1) of the Lanham Act; (2)

11

false representations in commerce and false designation of origin

12

under section 43(a) of the Lanham Act; (3) federal unfair

13

competition under section 43(a) of the Lanham Act; and (4)

14

trademark infringement under California common law.

15

Plaintiff seeks damages, an accounting, the imposition of a

16

constructive trust upon defendant’s illegal profits, and

17

injunctive relief.

18

III.

19
20

(Compl.)

(Id.)

Discussion
A.

Rule 12(b)(2) Motion
A plaintiff has the burden of establishing that the

21

court has personal jurisdiction over a defendant.

22

Corp., 248 F.3d 915, 922 (9th Cir. 2001).

23

not hold an evidentiary hearing and the motion is based on

24

written materials, the plaintiff need only establish a prima

25

facie showing of personal jurisdiction.

26

Martin Motor Co., 374 F.3d 797, 800 (9th Cir. 2004); see also

27

Data Disc, Inc. v. Sys. Tech. Assocs., Inc., 557 F.2d 1280, 1285

28

(9th Cir. 1977) (“[I]f a plaintiff’s proof is limited to written
3

Doe v. Unocal

Where the court does

Schwarzenegger v. Fred

1

materials, it is necessary only for these materials to

2

demonstrate facts [that] support a finding of jurisdiction in

3

order to avoid a motion to dismiss.”).

4

means that the plaintiff need only demonstrate facts that, if

5

true, would support jurisdiction over the defendant.”

6

Orthodontics Corp. v. MidAtl. Orthodontics, Inc., Civ. No. 3:17-

7

1129 BEN AGS, 2017 WL 4151241, at *2 (S.D. Cal. Sept. 18, 2017).

8

To meet its burden, “the plaintiff cannot simply rest on the bare

9

allegations of its complaint, . . . uncontroverted allegations in

“A ‘prima facie’ showing

Am.

10

the complaint must be taken as true,” and “[c]onflicts between

11

parties over statements contained in affidavits must be resolved

12

in the plaintiff’s favor.”

13

Schwarzenegger, 374 F.3d at 800.

If there is no applicable federal statute governing

14

personal jurisdiction, the court applies the law of the state in

15

which it sits.

16

601, 608-09 (9th Cir. 2010).

17

statute is coextensive with federal due process requirements.”

18

Id.; see also Cal. Code Civ. Proc. § 410.10.

19

requires that for a nonresident defendant to be subject to the

20

court’s jurisdiction, the defendant must “have certain minimum

21

contacts with [the forum state] such that the maintenance of the

22

suit does not offend traditional notions of fair play and

23

substantial justice.”

24

310, 316 (1945) (citation omitted).

25

required depends on which of the two categories of personal

26

jurisdiction a litigant invokes: specific jurisdiction or general

27

jurisdiction.

28

2015) (citing Daimler AG v. Bauman, 134 S. Ct. 746, 754 (2014)).

Love v. Associated Newspapers, Ltd., 611 F.3d
“California’s long-arm jurisdiction

Due process

Int’l Shoe Co. v. Washington, 326 U.S.
The strength of contacts

Ranza v. Nike, Inc., 793 F.3d 1059, 1068 (9th Cir.

4

1

The parties do not dispute that defendant is not

2

subject to general jurisdiction in California.

3

is whether defendant is subject to specific jurisdiction in

4

California.

5

The sole dispute

Specific jurisdiction exists when a case “aris[es] out

6

of or relate[s] to the defendant’s contacts with the forum.”

7

Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408,

8

414 n.8 (1984).

9

determine whether specific jurisdiction exists:

10
11
12
13
14
15
16
17

The Ninth Circuit uses a three-prong test to

(1) The non-resident defendant must purposefully
direct his activities or consummate some
transaction with the forum or resident thereof;
or perform some act by which he purposefully
avails himself of the privilege of conducting
activities in the forum, thereby invoking the
benefits and protections of its laws;
(2) the claim must be one which arises out of or
relates to the defendant’s forum-related
activities; and
(3) the exercise of jurisdiction must comport
with fair play and substantial justice, i.e. it
must be reasonable.

18

Schwarzenegger, 374 F.3d at 802 (quoting Lake v. Lake, 817 F.2d

19

1416, 1421 (9th Cir. 1987)) (internal quotation marks omitted).

20

“The plaintiff bears the burden of satisfying the first

21

two prongs of the test.

22

of these prongs, personal jurisdiction is not established in the

23

forum state.”

24

prongs, “the burden then shifts to the defendant to ‘present a

25

compelling case’ that the exercise of jurisdiction would not be

26

reasonable.”

27

U.S. 462, 476–78 (1985)).

28

1.

Id.

If the plaintiff fails to satisfy either

Once the plaintiff satisfies the first two

Id. (quoting Burger King Corp. v. Rudzewicz, 471

Purposeful Availment or Direction
5

1

Under the first prong, plaintiff must establish that

2

defendant “either purposefully availed itself of the privilege of

3

conducting activities in California, or purposefully directed its

4

activities toward California.”

5

While courts use the term “purposeful availment,” to include both

6

purposeful availment and purposeful direction, availment and

7

direction are, in fact, two distinct concepts.

8

“Purposeful availment typically consists of action taking place

9

in the forum that invokes the benefits and protections of the

Schwarzenegger, 374 F.3d at 802.

Id.

10

laws of the forum.”

11

2009 WL 210503, at *9 (N.D. Cal. Jan. 23, 2009) (citing

12

Schwarzenegger, 374 F.3d at 802).

13

consists of actions outside the forum state that are directed at

14

the forum.”

15

used in suits sounding in contract . . . [while] [a] purposeful

16

direction analysis . . . is most often used in suits sounding in

17

tort.”

18

omitted).

19

Id.

Advice Co. v. Novak, Civ. No. 08-1951 JCS,

“A

“Purposeful direction usually

purposeful availment analysis is most often

Schwarzenegger, 374 F.3d at 802 (internal citations

“For trademark infringement actions, the Ninth Circuit

20

requires a showing of purposeful direction.”

AirWair Int’l Ltd.

21

v. Schultz, 73 F. Supp. 3d 1225, 1232–33 (N.D. Cal. 2014) (citing

22

Nissan Motor Co. v. Nissan Comput. Corp., 246 F.3d 675 (9th Cir.

23

2000)).

24

test” derived from Calder v. Jones, 465 U.S. 783 (1984).

25

the “effects test” the defendant must have:

26

intentional act, (2) expressly aimed at the forum state, (3)

27

causing harm that the defendant knows is likely to be suffered in

28

the forum state.”

Purposeful direction is evaluated under the “effects
Under

“(1) committed an

Axiom Foods, Inc. v. Acerchem Int’l, Inc., 874
6

1

F.3d 1064, 1069 (9th Cir. 2017).

2

a.

3

Intentional Act

In the context of the Calder “effects test,” an

4

intentional act refers to “an intent to perform an actual,

5

physical act in the real world.”

6

806.

7

relatively low.”

8

defendant’s alleged sales of an infringing good constitute

9

intentional acts under the Calder effects test.

Schwarzenegger, 374 F.3d at

“The threshold of what constitutes an intentional act is
AirWair, 73 F. Supp. 3d at 1233.

Here,

See Cal. Brewing

10

Co. v. 3 Daughters Brewing LLC, Civ. No. 2:15-2278 KJM CMK, 2016

11

WL 1573399, at *3 (E.D. Cal. Apr. 19, 2016) (marketing and

12

selling products that allegedly infringed plaintiff’s trademark

13

constituted intentional acts); see also Wash. Shoe Co. v. A-Z

14

Sporting Goods Inc., 704 F.3d 668, 674 (9th Cir. 2012), abrogated

15

on other grounds by Axiom Foods, Inc. v. Acerchem Int’l, Inc.,

16

874 F.3d 1064 (9th Cir. 2017) (purchasing and selling boots that

17

allegedly infringed on plaintiff’s copyright constituted an

18

intentional act within the meaning of the Calder effects test).

19

Accordingly, the court finds that the first prong of the Calder

20

“effects test” is met.

21

b.

22

Expressly Aimed

The second prong of the Calder effects test, asks

23

whether defendant “expressly aimed its intentional act at the

24

forum.”

25

defendant expressly aims at the forum state, “[t]he proper

26

question is not where the plaintiff experienced a particular

27

injury or effect but whether the defendant’s conduct connects him

28

to the forum in a meaningful way.”

Axiom Foods, 874 F.3d at 1069.

7

To determine whether the

Walden v. Fiore, 134 S. Ct.

1

1115, 1125 (2014).

2

a sufficient connection to the forum,” nor is defendant’s

3

knowledge of plaintiff’s strong forum connections, combined with

4

the foreseeable harm the plaintiff suffered in the forum.

5

id.

6

Thus, “mere injury to a forum resident is not

See

In Washington Shoe, the Ninth Circuit held that a

7

theory of “individualized targeting” satisfied the express aiming

8

requirement.

9

individualized targeting alleges that a defendant ‘engaged in

See Wash. Shoe, 704 F.3d at 675.

“A theory of

10

wrongful conduct targeted at a plaintiff whom the defendant knows

11

to be a resident of the forum state.’”

12

1069 (quoting Wash. Shoe, 704 F.3d at 675).

13

Court in Walden made clear that the court must look to the

14

“defendant’s ‘own contacts’ with the forum, not to the

15

defendant’s knowledge of a plaintiff’s connections to a forum.”

16

Id. at 1070 (citing Walden, 134 S. Ct. at 1124-25).

17

Walden, the Ninth Circuit recently held that “[w]hile a theory of

18

individualized targeting may remain relevant to the minimum

19

contacts inquiry, it will not, on its own, support the exercise

20

of specific jurisdiction, absent compliance with what Walden

21

requires.”

22

Axiom Foods, 874 F.3d at
However, the Supreme

In light of

Axiom Foods, 874 F.3d at 1070-71.
“The Ninth Circuit utilizes the ‘sliding scale’

23

approach . . . to determine whether the operation of a website

24

supports the exercise of personal jurisdiction.”1

25
26
27
28

1

Dale Tiffany,

“Axiom Foods did not explicitly answer how Walden
applies to cases where all of the alleged activity occurs online
. . . However, the Axiom Foods decision does suggest that minimal
online activity, when unaccompanied by any connections to the
forum state in the physical world, are not enough to confer
personal jurisdiction.” Republic of Kazakhstan v. Ketebaev, Civ.
8

1

Inc. v. Meyda Stained Glass, LLC, Civ. No. 2:17-00536 CAS AGRX,

2

2017 WL 4417585, at *6 (C.D. Cal. Oct. 2, 2017) (citing

3

Cybersell, Inc., v. Cybersell, Inc., 130 F.3d 414, 418 (9th Cir.

4

1997)).

5

interactivity and commercial nature of the exchange of

6

information that occurs on the Web site.”

7

418 (9th Cir. 1997).

8
9

Under this approach, the court considers the “level of

Cybersell, 130 F.3d at

“A passive website ‘that does little more than make
information available to those who are interested in it is not

10

grounds for the exercise personal jurisdiction.’”

Dale Tiffany,

11

2017 WL 4417585, at *6 (citation omitted).

12

passive website in conjunction with ‘something more’—conduct

13

directly targeting the forum—is sufficient.”

14

Enters., L.P. v. Nebel, 200 F. Supp. 3d 976, 985 (N.D. Cal. 2016)

15

(quoting Rio Props., Inc. v. Rio Int’l Interlink, 284 F.3d 1007,

16

1020 (9th Cir. 2002)).

17

defendant has done “something more,” the Ninth Circuit has

18

considered several factors, “including the interactivity of the

19

defendant’s website, the geographic scope of the defendant’s

20

commercial ambitions, and whether the defendant ‘individually

21

targeted’ a plaintiff known to be a forum resident.”

22

Photo, Inc. v. Brand Techs., Inc., 647 F.3d 1218, 1229 (9th Cir.

23

2011) (internal citations omitted).

24

courts in this circuit have generally found that online product

25

sales to residents of the forum are sufficient to satisfy this

26

‘something more’ requirement in trademark infringement cases.”

However, “operating a

Sec. Alarm Fin.

In determining whether a nonresident

Mavrix

Furthermore, “[d]istrict

27
28

No. 17-246-LHK, 2017 WL 6539897, at *6 (N.D. Cal. Dec. 21, 2017).
9

1

Nat. Wellness Centers of Am., Inc. v. Golden Health Prod., Inc.,

2

Civ. No. 12-05586 CW, 2013 WL 245594, at *4 (N.D. Cal. Jan. 22,

3

2013).

4

“[A]n interactive website through which ‘the defendant

5

enters into contracts with residents of a foreign jurisdiction

6

that involve the knowing and repeated transmission of computer

7

files’ justifies a court’s exercise of personal jurisdiction.’”

8

Dale Tiffany, 2017 WL 4417585, at *6 (citation omitted).

9

website falls somewhere in between passive and interactive, “the

If the

10

likelihood that personal jurisdiction can be constitutionally

11

exercised is directly proportionate to the nature and quality of

12

commercial activity that an entity conducts over the Internet.”

13

See id. (quoting Cybersell, 130 F.3d at 419).

14

In this case, plaintiff alleges that defendant was

15

aware of plaintiff’s residence in the forum state and could

16

foresee that plaintiff would be harmed in California because

17

defendant received a suspension notice from the USPTO informing

18

defendant of the conflict with plaintiff’s trademark application.

19

(Compl. ¶ 14.)

20

identifies plaintiff as a California corporation.

21

defendant admits that she spoke to plaintiff prior to

22

infringement, and also attempted to negotiate with plaintiff to

23

either coexist or to purchase the name “NODPOD EYE PILLOW.”

24

(Pl.’s Opp’n (Docket No. 13) at 2; Blankenship Decl. ¶¶ 11-12

25

(Docket No. 8-2).)

26

establish individualized targeting.

27

Domains, Inc., 141 F. Supp. 2d 763, 777 (E.D. Mich. 2001) (citing

28

Panavision, 141 F.3d at 1321) (“Relevant considerations in

Additionally, plaintiff’s trademark registration
Furthermore,

Thus, these contacts are sufficient to

10

See Ford Motor Co. v. Great

1

assessing the level of individual targeting include [] whether

2

the trademark owner has been directly solicited to purchase the

3

domain name.”)

4

solely on, plaintiff’s allegations that defendant intentionally

5

infringed on plaintiff’s trademark and knew that plaintiff was

6

located in California in conducting the “minimum contacts”

7

analysis.2

8
9

Therefore, the court considers, but does not rely

(Compl. ¶ 19; Pl.’s Opp’n at 2-4.)
Defendant also created contacts with California by

selling goods to California residents through Kickstarter,

10

Indiegogo, and its website.

11

Of the 7,280 backers of defendant’s travel pillow on Kickstarter,

12

128 came from Los Angeles, and 99 came from San Francisco.

13

(Pl.’s Opp’n, Ex. B (Docket No. 13-2).)

14

than “[r]andom, fortuitous, or attenuated contacts.”

15

King Corp, 471 U.S. at 475.

16

than a passive website, as the website is not purely

17

informational.

18

Furthermore, the “nature and quality of commercial activity,”

19

including defendant’s online sales to more than 200 California

20

residents, provides the “something more” necessary to establish

21

conduct that directly targets the forum.

22
23
24
25
26
27
28

(Compl. ¶ 15, 16; Pl.’s Opp’n at 2.)

These contacts are more
See Burger

The Kickstarter campaign is more

See Dale Tiffany, 2017 WL 4417585, at *6.

Furthermore, other courts have considered crowdfunding
2

Plaintiff also argues that defendant engaged in an
aggressive media marketing campaign as defendant’s product was
featured in articles by bloggers, in newspapers, in magazines,
and on television. While this media marketing campaign may have
reached California residents, the Ninth Circuit has made clear
that a defendant cannot be haled into court based upon the
unilateral activities of third parties. Brainerd v. Governors of
the Univ. of Alberta, 873 F.2d 1257, 1259 (9th Cir. 1989) (citing
Burger King, 471 U.S. at 475).
11

1

websites like Kickstarter and Indiegogo in holding that the court

2

may exercise specific personal jurisdiction over a party.

3

Imation Corp. v. Sanho Corp., Civ. No. 15-1883 (JRT/JSM), 2016 WL

4

4179363, at *1 (D. Minn. Aug. 5, 2016) (finding specific personal

5

jurisdiction over a Delaware corporation with its principal place

6

of business located in California where at least one of the

7

company’s Kickstarter backers was a Minnesota resident and

8

plaintiff presented evidence that many, if not all, of

9

defendant’s backers were sent the infringing product); Robinson

See

10

v. Bartlow, Civ. No. 3:12-24, 2012 WL 4718656, at *4 (W.D. Va.

11

Oct. 3, 2012) (finding specific personal jurisdiction over

12

Washington company where company shipped products to Virginia

13

residents through the Kickstarter fundraising websites).

14

Nutramarks, Inc. v. Life Basics, LLC, Civ. No. 2:15-571-DN, 2017

15

WL 2178422, at *5 (D. Utah May 17, 2017) (finding no specific

16

personal jurisdiction over Illinois company that launched its

17

crowdfunding campaign using Indiegogo where none of the

18

crowdfunding donors were from Utah and there were no other facts

19

to show that the company targeted or solicited any donations or

20

business in the State of Utah).

21

Compare

In response, defendant alleges that none of the

22

products made and shipped in relation to the Kickstarter

23

campaign, or at any other time, bore the mark Nodpod; however,

24

plaintiff contends that contrary to defendant’s claims, no

25

significant rebranding took place.

26

Pl.’s Opp’n at 3.)3

27
28

3

(Blankenship Decl. ¶ 18;

“Because the prima facie jurisdictional

To support its contention that no significant
rebranding took place, plaintiff attaches a screen capture of
12

1

analysis requires us to accept the plaintiff’s allegations as

2

true, we must adopt [plaintiff’s] version of events for purposes

3

of this [motion].”

4

Inc., 223 F.3d 1082, 1087 (9th Cir. 2000); see also Pebble Beach

5

Co. v. Caddy, 453 F.3d 1151, 1154 (9th Cir. 2006) (“[F]or the

6

purpose of [plaintiff’s demonstration that the court has

7

jurisdiction over the defendant], the court resolves all disputed

8

facts in favor of the plaintiff.”)

9

allegations as true, defendant committed acts of trademark

10

infringement against plaintiff when it sold its products on

11

Kickstarter.

12
13
14
15

Bancroft & Masters, Inc. v. Augusta Nat’l

Thus, accepting plaintiff’s

Accordingly, the court finds that plaintiff has met the
express aiming prong of the Calder “effects test.”
c.

Causing Harm

Under the third prong of the Calder test, defendant

16

must have caused harm that the defendant knows is likely to be

17

suffered in the forum state.

18

resided in California, and defendant spoke to Ms. Bamberg and

19

attempted to negotiate with her to either coexist or purchase the

20

name “NODPOD EYE PILLOW.”

21

Decl. ¶ 3 (Docket No. 8-3).)

22

the suspension letter for the Nodpod trademark application in

23

July of 2016 (Blankenship Decl. ¶ 6).

24

trademark registration identifies Melissa Bamberg as a Rocklin,

25

defendant’s Kickstarter campaign that plaintiff says was taken in
April of 2017 (Pl.’s Opp’n at 2, Ex. B.) In some of the images,
the product contains the word “Nodpod,” and in other images the
product does not. (Id.) Plaintiff also attached a screen shot
from a television show that appears to show use of the mark
“Nodpod.” (Pl.’s Opp’n, Ex. F.)
13

26
27
28

Here, defendant knew that plaintiff

(Blankenship Decl. ¶¶ 11-12; Cameron
Defendant also admits to receiving

In addition, plaintiff’s

1

California resident.

2

foreseeable that defendant’s conduct would cause harm in

3

California.

4

(finding the foreseeable harm prong of the Calder test met where:

5

(1) defendant knew plaintiff resided in California, (2) plaintiff

6

contacted defendant to stop using the mark (3) defendant

7

investigated plaintiff’s use and registration, (4) the USPTO

8

rejected defendant’s application to register a mark in light of

9

plaintiff’s mark, and (5) plaintiff’s registration identifies it

(Def.’s Mem., Ex. C.)

Thus, it was

(See California Brewing, 2016 WL 1573399, at *5

10

as a resident of the district).

11

established the third prong of the Calder test.

12
13

Accordingly, plaintiff has

Because plaintiff has established all three prongs of
the Calder test, plaintiff has established purposeful direction.

14

2.

Arise Out of

15

Under the second prong of the Ninth Circuit’s specific

16

jurisdiction test, a court cannot establish personal jurisdiction

17

over a defendant unless a plaintiff can show that its claims

18

“arise[ ] out of the defendant’s forum related activities.”

19

Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316, 1322 (9th Cir.

20

1998).

21

this analysis,” under which the court must determine whether,

22

“but for [defendant’s] contacts with California, would

23

[plaintiff’s] claims against [defendant] have arisen?”

24

Inc. v. Greiner & Hausser GmbH, 354 F.3d 857, 864 (9th Cir.

25

2003); accord Bancroft,223 F.3d at 1088.

26

recognized that, in trademark or copyright infringement actions,

27

if the defendant’s infringing conduct harms the plaintiff in the

28

forum, this element is satisfied.”

The Ninth Circuit “use[s] a ‘but for’ test to conduct

14

Mattel,

“The Ninth Circuit has

Adobe Sys. Inc. v. Blue

1

Source Grp., Inc., 125 F. Supp. 3d 945, 963 (N.D. Cal. 2015)

2

(citing Panavision, 141 F.3d at 1322).

3

Here, as discussed previously, plaintiff has

4

established that defendant’s conduct harms plaintiff in the

5

forum.

6

because consumers and marketers are unable to identify the

7

difference between the products, and plaintiff has been denied

8

covered in media sources that have already covered defendant’s

9

product.

In addition, plaintiff alleges that it suffered harm

(Compl. ¶¶ 20, 22.)

This is sufficient to show that

10

plaintiff’s claims arose out of defendant’s activity, and that

11

“but for” defendant’s contacts with California, plaintiff’s

12

claims would not have arisen.

13

(finding requirement satisfied where defendant’s registration of

14

plaintiff’s trademarks as his own domain name on the Internet had

15

the effect of injuring plaintiff in California); Adobe, 125 F.

16

Supp. 3d at 963 (finding requirement satisfied where plaintiff

17

alleged infringement by defendant in the district by, depriving

18

plaintiff of revenue, diminishing plaintiff’s goodwill, and

19

diluting plaintiff’s trademark).

20

See Panavision, 141 F.3d at 1322

Accordingly, plaintiff has met the second prong for

21

personal jurisdiction.

22

3.

23

Because plaintiff has established a prima facie showing

Reasonableness

24

of specific jurisdiction, the burden is now on defendant to

25

demonstrate why jurisdiction would be unreasonable in light of

26

traditional considerations of fair play and substantial justice.

27

See Dole Food Co., Inc. v. Watts, 303 F.3d 1104, 1114 (9th Cir.

28

2002) (citing Burger King, 471 U.S. at 477).
15

To meet this

1

burden, a defendant must present a “compelling case that the

2

presence of some other considerations would render jurisdiction

3

unreasonable.”

4

1991).

5

whether jurisdiction would be reasonable:

6
7
8
9
10
11
12

Roth v. Garcia, 942 F.2d 617, 625 (9th Cir.

The Ninth Circuit considers seven factors in determining

(1) the extent of the defendant’s purposeful injection
into the forum state’s affairs;
(2) the burden on the defendant of defending in the
forum;
(3) the extent of conflict with the sovereignty of the
defendant’s state;
(4) the forum state’s interest in adjudicating the
dispute;
(5) the most efficient judicial resolution of the
controversy;
(6) the importance of the forum to the plaintiff’s
interest in convenient and effective relief; and
(7) the existence of an alternative forum.

13

Caruth v. Int’l Psychoanalytical Ass’n, 59 F.3d 126, 128 (9th

14

Cir. 1995).

15

Here, defendant argues that personal jurisdiction is

16

unreasonable because defendant has not injected herself in

17

California’s affairs, it would be burdensome and expensive for

18

defendant to defend herself in California, and there is a concern

19

that hearing the case in California may conflict with Kentucky’s

20

sovereignty.

21

discussed, defendant has significantly injected herself into the

22

California economy so as to make jurisdiction in California

23

reasonable.

24

that defending this suit in California would place an undue

25

burden on defendant given modern advances in communication and

26

transportation.

27

third factor, “concerns for sovereignty are low when the

28

defendant is a citizen of a sister state, not a foreign country.”

(Def.’s Mem. at 10.)

First, as previously

As to the second factor, the court does not believe

See Panavision, 141 F.3d at 1323.

16

As to the

1

Huang v. Marriott Int’l, Inc., Civ. No. 2:11-01574 WBS, 2012 WL

2

170166, at *5 (E.D. Cal. Jan. 19, 2012) (citing Harris Rutsky &

3

Co. Ins. Servs. v. Bell & Clements Ltd., 328 F.3d 1122, 1133 (9th

4

Cir. 2003).

5

weigh in favor of defendant.

6

Thus, the court finds that this factor does not

As to the fourth factor, plaintiff is located in

7

California, and thus “California maintains a strong interest in

8

providing an effective means of redress for its residents

9

tortiously injured.”

See Panavision, 141 F.3d at 1323 (quoting

10

Gordy v. Daily News, L.P., 95 F.3d 829, 836 (9th Cir. 1996)).

11

Under the sixth factor, plaintiff is a resident of California,

12

and thus California is clearly the most convenient forum for

13

plaintiff.

14

Lastly, addressing the fifth and seventh factor,

15

defendant argues that this case should be brought in Kentucky

16

where the witnesses and products are located, where defendant is

17

located, and where the courts have smaller dockets.

18

at 11.)

19

have the case tried in its own home jurisdiction, and it is

20

likely that witnesses and evidence are located in both California

21

and Kentucky.

22

and transportation, this factor is probably neutral.”

23

Panavision, 141 F.3d at 1324 (9th Cir. 1998).

24

factor, plaintiff does not argue that Kentucky lacks an

25

alternative forum, but only that each state has an equal interest

26

in the case.

27

the unavailability of an alternative forum (See Core-Vent Corp.

28

v. Nobel Indus. AB, 11 F.3d 1482, 1490 (9th Cir. 1993)), this

(Def.’s Mem.

No doubt it would be more convenient for each party to

However, given “modern advances in communication
See

As to the seventh

Thus, because plaintiff has the burden of proving

17

1

factor weighs in favor of defendant.

2

defendant has not met its burden of presenting a “compelling

3

case” of unreasonableness, the court will deny defendant’s motion

4

to dismiss for lack of personal jurisdiction.

5

B.

6

Nevertheless, because

Standing
Defendant also moves to dismiss on the ground that

7

plaintiff lacks standing.

To have standing, “[t]he plaintiff

8

must have (1) suffered an injury in fact, (2) that is fairly

9

traceable to the challenged conduct of the defendant, and (3)

10

that is likely to be redressed by a favorable judicial decision.”

11

Spokeo, Inc. v. Robins, 136 S. Ct. 1540, 1547, as revised (May

12

24, 2016).

13

“personal stake” in the litigation “to justify exercise of the

14

court’s remedial powers on his behalf.

15

v. Bryan, 916 F.2d 1384, 1391 (9th Cir. 1990) (quoting Arlington

16

Heights v. Metro. Hous. Corp., 429 U.S. 252, 261 (1977)).

17

“Section 32(1) of the Lanham Act specifically provides that a

18

‘registrant’ may bring a civil action for trademark

19

infringement.”

20

13-2015 VAP DTBX, 2014 WL 12601016, at *3 (C.D. Cal. Feb. 21,

21

2014); 15 U.S.C. § 1114(1).

22

A plaintiff has standing if he or she has alleged a

Nev. Emps.’ Ass’n, Inc.

Lasco Fittings, Inc. v. Lesso Am., Inc., Civ. No.

Here, the trademark registrant is Melissa Bamberg

23

Corporation, not Inventors Row.

(Def.’s Mem., Ex. C (Docket No.

24

8-6).)

25

sole owner of Inventors Row, and that Inventors Row is the sole

26

owner and assignee of all intellectual property, including the

27

Nodpod trademark.

28

Bamberg explains that when she applied for the trademark, she

Melissa Bamberg (“Bamberg”) represents that she is the

(Bamberg Decl. ¶¶ 1-2 (Docket No. 13-7.)

18

1

mistakenly listed “Melissa Bamberg Corporation”4 on the requisite

2

paperwork instead of Inventors Row.

3

represents that now that she has an attorney, the appropriate

4

paperwork is in the process of being filed with the USPTO to

5

correct the error.

(Id. ¶ 3.)

Bamberg

(Id.)

6

At oral argument, counsel for plaintiff represented,

7

without offering any evidence, that Inventors Row does in fact

8

own the trademark.

9

record presently before the court that Inventors Row is the

However, because it is not clear on the

10

owner, the court cannot find that Inventors Row has a personal

11

stake in the outcome of this litigation.

12

plaintiff the opportunity to clear up what appears to have been a

13

clerical mistake, the court will deny defendant’s motion to

14

dismiss for lack of standing upon the condition that within 30

15

days from the date this Order is signed plaintiff provide the

16

court with evidence that it owns the trademark at issue.

In order to afford

17
18

C.

19

Motion to Dismiss for Improper Venue, or, in the
Alternative to Transfer Venue
Rule 12(b)(3) authorizes a court to dismiss an action

20

for improper venue.

21

§ 1406(a) (“The district court of a district in which is filed a

22

case laying venue in the wrong division or district shall

23

dismiss, or if it be in the interest of justice, transfer such

24

case to any district or division in which it could have been

25

brought.”).

26

proper in the district in which the suit was initiated.

27
4

28

Fed. R. Civ. P. 12(b)(3); see also 28 U.S.C.

Plaintiff has the burden of proving that venue is
Munns v.

Apparently, there is no “Melissa Bamberg Corporation.”
19

1

Clinton, 822 F. Supp. 2d 1048, 1079 (E.D. Cal. 2011) (England,

2

J.) (citing Piedmont Label Co. v. Sun Garden Packing Co., 598

3

F.2d 491, 496 (9th Cir. 1979)).

4

dismiss for improper venue, a court is not required to accept the

5

pleadings as true and may consider facts outside the pleadings.”

6

Presidio Home Care, LLC v. B-E., LLC, Civ. No. 14-1864 RSWL JEMX,

7

2014 WL 2711299, at *2 (C.D. Cal. June 13, 2014).

8

trial court must draw all reasonable inferences in favor of the

9

nonmoving party and resolve all factual conflicts in favor of the

“In considering a motion to

10

non-moving party.”

11

However, “the

362 F.3d 1133, 1138 (9th Cir. 2003)).

12

Id. (quoting Murphy v. Schneider Nat’l, Inc.,

Venue as to a trademark claim is evaluated under the

13

general venue statute, 28 U.S.C. § 1391(b).

14

Supp. 3d at 1184.

15

in “a judicial district in which a substantial part of the events

16

or omissions giving rise to the claim occurred.”

17

1391(b)(2).

18

the events have occurred in the district where suit is filed, nor

19

does it require that the events in that district predominate.”

20

Rodriguez v. Cal. Highway Patrol, 89 F. Supp. 2d 1131, 1136 (N.D.

21

Cal. 2000).

22

Kaia Foods, 70 F.

Under 28 U.S.C. § 1391(b)(2), venue is proper

28 U.S.C. §

This provision “does not require that a majority of

In a trademark infringement action, “a substantial part

23

of the events occur . . .

where confusion of purchasers is

24

likely to occur,”

25

1178, 1184 (N.D. Cal. 2014), “whether that occurs solely in one

26

district or in many.”

27

Online, LLC, 666 F. Supp. 2d 1109, 1128 (C.D. Cal. 2009)

28

(citations omitted).

Kaia Foods, Inc. v. Bellafiore, 70 F. Supp. 3d

Allstar Mktg. Grp., LLC v. Your Store

“Confusion of customers occurs where the
20

1

passing off occurs, that is, ‘where the deceived customer buys

2

the defendant’s product in the belief that he is buying the

3

plaintiffs.’”

4

Lab., Inc. v. Kalvin, 610 F. Supp. 849, 860 n. 8 (C.D. Cal.

5

1985)).

6

a small amount of merchandise into the forum.”

7

v. Cougar Sport, Inc., 169 F. Supp. 3d 1079, 1095 (D. Or. 2016).

8

Here, plaintiff alleges that a substantial part of the

9

Kaia Foods, 70 F. Supp. 3d at 1184 (quoting Sykes

“Venue may be proper even where the defendant sells only
Adidas Am., Inc.

events giving rise to their tort claims occurred in the Eastern

10

District of California.

Plaintiff alleges that defendant

11

transacts substantial business nationwide via internet sales.

12

(Compl. ¶ 3.)

13

backers of defendant’s product on Kickstarter, 227 were

14

California residents.

15

that it is almost certain the defendant sold products in this

16

district.

17

District of California, the plaintiff has shown a likelihood of

18

consumer confusion in this district.

19

2016 WL 1573399, at *7 (finding venue is proper where “the

20

complaint alleges a likelihood of consumer confusion in [the]

21

district, where plaintiff is based, as a result of defendants’

22

sales, marketing, and advertising to California consumers”);

23

Allstar Mktg. Grp., LLC v. Your Store Online, LLC, 666 F. Supp.

24

2d 1109, 1128 (C.D. Cal. 2009) (denying defendants’ Motion to

25

Dismiss for improper venue where plaintiffs “adduced evidence

26

that 19% of defendants’ sales of the products at issue occur in

27

California, but evidence of defendants’ products in this

28

district, however, is at best minimal.”)

Plaintiff provides evidence that of the 7,280

(Pl.’s Opp’n, Ex. B).

Plaintiff asserts

Thus, given that plaintiff is located in the Eastern

21

See California Brewing,

1

Moreover, defendant does not dispute that it sold

2

products in the Eastern District of California; instead,

3

defendant alleges that its products did not infringe on

4

plaintiff’s trademark.

5

venue, courts accept as true uncontroverted allegations.

6

Allstar, 666 F. Supp. 2d at 1129–30.

7

true the fact that defendant made sales in this district.

8

id., at 1128 (noting that “defendant[], who [is] in the best

9

position to adduce evidence regarding [its] sales in this

10

district, have come forward with no evidence controverting

11

plaintiff[’s] allegations regarding [its] sales.”).

12

On a motion to dismiss for improper
See

Thus, the court accepts as
See

Accordingly, because venue is proper is this district,

13

the court will deny defendant’s Motion to Dismiss for Improper

14

Venue, or, in the Alternative, to Transfer Venue.

15

IT IS THEREFORE ORDERED that defendant’s Motion to

16

Dismiss the Complaint, in the Alternative, to Transfer Venue

17

(Docket No. 8) be, and the same hereby is, DENIED on the

18

condition that within 30 days from the date this Order is signed

19

plaintiff submits evidence that plaintiff owns the trademark at

20

issue.

21

Dated:

May 2, 2018

22
23
24
25
26
27
28
22