Mayo Foundation for Medical Education and Research et al v. Enterprise Management Limited, Inc. et al

Filing 29

ORDER granting in part 11 Motion to Dismiss for Lack of Jurisdiction (Written Opinion) Signed by Senior Judge David S. Doty on 9/27/2017. (DLO) [Transferred from mnd on 9/29/2017.]

UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
Civil No. 17-941(DSD/HB)
Mayo Foundation for Medical
Education and Research and
Mayo Clinic,
Plaintiffs,
v.

ORDER

Enterprise Management Limited, Inc.
and Mary Lippitt,
Defendants.
Nicole M. Moen, Esq., Anne E. Rondoni Tavernier, Esq. and
Fredrikson & Byron, 200 South 6th Street, Suite 4000,
Minneapolis, MN 55402, counsel for plaintiffs.
Paul Allen Godfread, Esq. and Godfread Law Firm, 6043 Hudson
Road, Suite 305, Woodbury, MN 55125, counsel for defendants.

This matter is before the court upon the motion to dismiss
or transfer by defendants.

Based on a review of the file,

record, and proceedings herein, and for the following reasons,
the court grants the motion and transfers the case to the Middle
District of Florida.

BACKGROUND
This

declaratory

judgment

action

arises

out

of

the

contention that plaintiffs Mayo Clinic and Mayo Foundation for
Medical Education and Research (collectively Mayo) infringed one
of defendants’ copyrighted charts.
business is Rochester, Minnesota.

Mayo’s principal place of
Compl. ¶ 1.

Defendant Dr.

Mary Lippitt, a Florida resident, is the sole owner and employee
of Enterprise Management Limited, Inc., a Florida corporation.1
Id.

¶

2.

EML

develops

educational

materials

and

provides

business solutions to corporations, educational institutions, and
non-profit organizations.

Lippitt Decl. ¶ 3.

EML’s materials

include, among other things, numerous articles and two books
authored by Lippitt, which incorporate a series of graphics,
including the work at issue.
license to Lippitt’s work.

Id. ¶ 11.

EML owns the exclusive

Id. ¶ 12.

Neither EML nor Lippitt own property in Minnesota, directly
advertise

to

Minnesota

businesses

or

business with any company in Minnesota.2

consumers,

or

conduct

Lippitt Decl. ¶¶ 6-7.

EML sells Lippitt’s works online both directly and through thirdparty websites such as Amazon.com.

See Tavernier Decl. ¶¶ 3-6.

On August 18, 2016, Mayo contacted EML via email requesting
permission to use one of Lippitt’s charts in an internal training
program.

Compl. ¶ 12.

EML responded that it would grant Mayo a

five-year license to use the chart for $8,000.

Id. ¶ 13.

The

1

The court will refer to defendants collectively as EML
unless more specificity is required.
2

In 2012, Lippitt spoke at Mayo’s Jacksonville, Florida
campus during an event for the American College of Healthcare
Executives, but she had no contacts with Mayo personnel in
Minnesota before the events giving rise to this action. See id. ¶¶
16-20.
2

parties negotiated over the next month, but were unable to reach
agreement.

Id.

On September 23, 2016, EML withdrew its most

recent offer and requested contact information for Mayo’s legal
counsel.

Id.

Thereafter, and through the month of November,

counsel for Mayo communicated directly with EML.
18.

See id. ¶¶ 16-

In those communications, EML accused Mayo of copyright

infringement after learning that Mayo had been using the chart
for some period of time before seeking a license.
Although

Mayo

denied

that

the

chart

was

Id. ¶¶ 16-19.

protected

by

the

copyright laws, it offered to resolve the dispute for $10,000,
with the assurance that it would not use the chart going forward.
Id. ¶ 18; id. Ex. A.

Several months later, on March 15, 2017,

and this time through counsel, EML responded with a counteroffer
of $125,000.

Compl. ¶¶ 22, 24; id. Ex. B, at 3.

EML threatened

litigation if the matter could not be resolved and attached a
draft complaint.3

Compl. ¶ 23; id. Ex. B, at 1.

On March 29, 2017, Mayo commenced the instant action seeking
a declaration that it has not infringed and is not infringing the
allegedly copyrighted materials.

Less than a month later, EML

filed a copyright infringement action against Mayo in the Middle
District of Florida, which is the mirror image of this case.

3

It is undisputed that none of the parties’ communications
were in person.
3

Enter. Mgmt. Ltd. v. Mayo Clinic, No. 8:17-cv-943 (M.D. Fla.
filed Apr. 20, 2017).

That action has been stayed pending the

court’s determination of the present motion.

Id., ECF No. 12.

DISCUSSION
I.

Standard of Review
To

survive

a

motion

to

dismiss

for

lack

of

personal

jurisdiction, a plaintiff must establish a prima facie case that
the forum state has personal jurisdiction over the defendant.
Stevens v. Redwing, 146 F.3d 538, 543 (8th Cir. 1998). In the
absence of an evidentiary hearing, a court “must look at the
facts in the light most favorable to the nonmoving party and
resolve all factual conflicts in favor of that party.”

Dakota

Indus., Inc. v. Dakota Sportswear, Inc., 946 F.2d 1384, 1387 (8th
Cir. 1991).

A federal court may assume jurisdiction over a

nonresident defendant “only to the extent permitted by the longarm statute of the forum state and by the Due Process Clause.”
Romak USA, Inc. v. Rich, 384 F.3d 979, 984 (8th Cir. 2004)
(citation and internal quotation marks omitted).

Because the

Minnesota long-arm statute “confers jurisdiction to the fullest
extent permitted by the Due Process Clause,” the court need only
consider due process requirements.
905 (8th Cir. 2007).
4

Coen v. Coen, 509 F.3d 900,

To satisfy due process, a defendant must have “sufficient
minimum contacts” with the forum state such that maintaining the
suit

“does

not

offend

substantial justice.”

traditional

notions

of

fair

Romak, 384 F.3d at 984.

play

and

“Sufficient

contacts exist when [a] defendant’s conduct and connection with
the forum state are such that [it] should reasonably anticipate
being haled into court” here.

Coen, 509 F.3d at 905 (citation

and internal quotation marks omitted).
A defendant’s contacts with the forum state can establish
personal

jurisdiction

jurisdiction.

under

either

general

or

specific

A forum state has specific jurisdiction when the

cause of action “arise[s] out of” or “relate[s] to” a defendant’s
activities within that state.

Burger King Corp. v. Rudzewicz,

471 U.S. 462, 472 (1985) (citation and internal quotation marks
omitted). General jurisdiction is present when, regardless of the
cause

of

action,

a

defendant

has

“continuous

and

systematic

Coen, 509 F.3d at 905 (citation

contacts with the forum state.”

and internal quotation marks omitted).

Under either analysis,

the Eighth Circuit considers five factors in determining whether
personal jurisdiction exists:
defendant’s

contacts

with

“(1) the nature and quality of

the

forum

state;

(2)

quantity

of

contacts; (3) source and connection of the cause of action with
those contacts; and to a lesser degree, (4) the interest of the
5

forum state; and (5) the convenience of the parties.”

Wessels,

Arnold & Henderson v. Nat’l Med. Waste, Inc., 65 F.3d 1427, 1432
(8th Cir. 1995).
II.

Sufficiency of Contacts
EML argues that it has insufficient contacts with Minnesota

to trigger either general or specific jurisdiction.

The court

agrees.
A.

Specific Jurisdiction

As an initial matter, Mayo has failed to establish a prima
facie case that Minnesota has specific jurisdiction over EML.
The legal issue in this case is whether Mayo has infringed EML’s
copyright by using Lippitt’s chart in internal training sessions
in Minnesota.

Yet specific jurisdiction is premised on the

parties’

communications

regarding

licensing

copyright claim.4

and

via

telephone,

subsequent

email,

attempts

to

and

letters

resolve

EML’s

Not only are those communications tangential

to the core issue in the case, i.e., infringement, they do not

4

Mayo seems to argue that the court should consider sales of
EML’s written works in the context of specific jurisdiction,
because some of those works contain the chart at issue. The court
disagrees. Although sales of those works, if substantial enough,
could be relevant to the issue of whether EML is subject to general
jurisdiction in Minnesota, they do not bear on the narrower issue
of specific jurisdiction, which focuses on EML’s contacts with
Minnesota in the context of this case.
Nor does EML’s website
confer specific jurisdiction given that this case does not involve
the website itself or sales generated by the website.
6

constitute “activities” within Minnesota by EML.
were initiated by Mayo.

First, they

See Datalink Corp. v. Perkins Eastman

Architects, P.C., 33 F. Supp. 3d 1068, 1073 (D. Minn. 2014)
(quoting Coen v. Coen, No. 05–596, 2006 WL 2727219, at *20 (D.
Minn. Sept. 22, 2006)) (“[W]hether or not the nonresidential
defendant is the aggressor in a transaction is important in
assessing” purposeful availment).

Second, they occurred only via

telephone, email, and letter.

See Digi–Tel Holdings, Inc. v.

Proteq Telecomm. (PTE), Ltd., 89 F.3d 519, 523 (8th Cir. 1996)
(“Although letters and faxes may be used to support the exercise
of personal jurisdiction, they do not by themselves establish
jurisdiction.”); see also Lucachick v. NDS Americas, Inc., 169 F.
Supp. 2d 1103, 1107 (D. Minn. 2001) (explaining that negotiations
conducted

over

the

telephone

are

not

enough

to

confer

jurisdiction); KG Funding, Inc. v. Partridge, No. 12-2155, 2012
WL 5904439, at *2 (D. Minn. Nov. 26, 2012) (“[T]he receivers’
location alone should not determine specific jurisdiction ....
[defendant] purposefully communicated with a resident who lived
in Minnesota, but there is no evidence that [he] purposefully
availed himself of the Minnesota legal forum.”).

And, third,

they did not result in any agreement or future business between
the

parties

therefore

in

Minnesota

insufficient

to

or

elsewhere.

establish
7

that

The

contacts

are

EML

“purposefully

directed” its activities to Mayo in Minnesota.

Burger King, 471

U.S. at 472.
Mayo

argues

that

EML’s

decision

to

negotiate

with

Mayo

triggered specific jurisdiction, but it cites to no authority
supporting the proposition that contacts initiated by a forumbased resident resulting in failed business negotiations with a
non-resident are sufficient to establish jurisdiction.
the court able to find any such authority.

Nor is

As a result, specific

jurisdiction does not exist.
B.

General Jurisdiction
Mayo

has

likewise

failed

to

establish

that

EML

has

continuous or systematic contacts with Minnesota sufficient to
establish general jurisdiction.

Neither Lippitt nor EML has

traveled to, directly conducted business in, owned property in,
or had any other regular dealings with the state.
Mann, 896 F. Supp. 2d 775, 797 (D. Minn. 2012).

Westley v.

There is also no

evidence that EML took affirmative actions to sell Lippitt’s
works to Minnesota businesses or consumers.

The fact that some

of her works may have ended up here is not enough.
It is well established that isolated sales of products are
insufficient to confer general jurisdiction over a non-resident
defendant.
Hall,

466

See Helicopteros Nacionales de Colombia, S.A. v.
U.S.

408,

418

(1984)
8

(“[M]ere

purchases,

even

if

occurring at regular intervals, are not enough to warrant a
State’s assertion of in personam jurisdiction over a nonresident
corporation in a cause of action not related to those purchase
transactions.”); Burlington Indus., Inc. v. Maples Indus., Inc.,
97 F.3d 1100, 1103 (8th Cir. 1996) (“Simple commercial contacts,
unrelated to [plaintiff]’s claims are insufficient to establish
[general] personal jurisdiction.”); Jacobs Trading, LLC v. Ningbo
Hicon Intern. Indus. Co., 872 F. Supp. 2d 838, 849 (D. Minn.
2012) (“[A] total of twenty individual shipments to only four
Minnesota companies over a period of more than four years does
not constitute such ‘continuous and systematic’ contacts with the
forum

such

jurisdiction

that

this

over

Court

could

[defendant].”).

exercise
Mayo

general

thus

has

personal

failed

to

establish that EML’s conduct created “sufficient contacts ...
with [Minnesota]” that “are such that [it] should reasonably
anticipate being haled into court” here.

Coen, 509 F.3d at 905

(citation and internal quotation marks omitted).

As a result,

the court also lacks general jurisdiction over EML.5
The

court

is

unconvinced

that

additional

jurisdictional

discovery will reveal contacts sufficient to confer jurisdiction

5

Because the court concludes that it does not have personal
jurisdiction over EML, it will not address EML’s remaining
arguments or its request to transfer on the basis of forum non
conveniens.
9

in light of the meager contacts now known.

See Greenbelt Res.

Corp. v. Redwood Consultants, LLC, 627 F. Supp. 2d 1018, 1028 (D.
Minn.

2008)

(holding

that

a

plaintiff’s

request

for

jurisdictional discovery must be “specifically targeted to flesh
out connections already shown to exist,” not merely an attempt
“to

cast

a

wide

net

for

potential

contacts

with

the

forum

state”).
III. Transfer
When

a

plaintiff

brings

a

case

in

a

district

lacking

personal jurisdiction, the court may dismiss the case, or if in
the interest of justice, transfer the case to any district in
which it could have been brought.

28 U.S.C. § 1406(a); see also

Wilson v. St. Mary’s Hosp., 822 F. Supp. 1450, 1451 (D. Minn.
1993)

(“Transfer

pursuant

to

§

1406

to

remove

a

procedural

obstacle such as lack of personal jurisdiction is favored over
dismissing

an

action

because

transfer

adjudication of a dispute on its merits.”).

facilitates

the

In the interest of

justice, the court will transfer the case to the Middle District
of Florida, where the related case is pending, so as to avoid the
costs and delay associated with requiring Mayo to refile the
case.

10

CONCLUSION
Accordingly, based on the above, IT IS HEREBY ORDERED that:
1.

The motion to dismiss or transfer venue [ECF No. 11] is

granted in part as set forth above; and
2.

The case is transferred to the United States District

Court for the Middle District of Florida.

Dated: September 27, 2017

s/David S. Doty
David S. Doty, Judge
United States District Court

11