Jordan Outdoor Enterprises, Ltd. v. That 70's Store LLC et al
Filing
35
ORDER granting 15 Motion to Set Aside Default. Ordered by Judge Clay D. Land on 09/26/2011 (ajp)
IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF GEORGIA
COLUMBUS DIVISION
JORDAN
LTD.,
OUTDOOR
ENTERPRISES, *
*
Plaintiff,
*
vs.
CASE NO. 4:10-CV-16 (CDL)
*
THAT 70‟S STORE, LLC and
RICK W. MORGAN,
*
Defendants.
*
O R D E R
Plaintiff
Jordan
Outdoor
Enterprises,
LTD.
(“JOEL”
or
“Plaintiff”) sued Defendants That 70‟s Store, LLC (“That 70‟s
Store”)
and
“Defendants”)
Rick
for
W.
Morgan
trademark
(“Morgan”)
infringement,
(collectively
trademark
unfair competition, and deceptive trade practices.
dilution,
Defendants
never filed a proper answer to Plaintiff‟s Complaint, and a
default judgment was entered against Defendants.
ECF No. 14.
Default J.,
Defendants subsequently filed the presently pending
Motion to Set Aside Entry of Default Judgment (ECF No. 15),
pursuant to Federal Rule of Civil Procedure 60(b)(4) for lack of
personal jurisdiction.
finds
that
Plaintiff
For the following reasons, the Court
has
Georgia‟s long-arm statute.
not
satisfied
the
requirements
of
Therefore, Defendants‟ motion is
granted,
and
this
action
is
dismissed
for
lack
of
personal
jurisdiction.
MOTION TO SET ASIDE DEFAULT JUDGMENT STANDARD
The Court may relieve a party from a final judgment if the
judgment is void.
Fed. R. Civ. P. 60(b)(4).
A judgment entered
without personal jurisdiction over the defendant is void.
Sloss
Indus. Corp. v. Eurisol, 488 F.3d 922, 924 (11th Cir. 2007).
Where
the
defendant
challenges
the
exercise
of
personal
jurisdiction after entry of a default judgment, “the plaintiff
bears
the
ultimate
burden
jurisdiction is present.”
of
establishing
that
personal
Oldfield v. Pueblo De Bahia Lora,
S.A., 558 F.3d 1210, 1217 (11th Cir. 2009).
BACKGROUND
The
Court
jurisdictional
Defendants‟
permitted
discovery
contacts
the
to
with
parties
to
ascertain
the
state
engage
the
of
in
full
limited
nature
Georgia.
Text
of
Only
Order, Mar. 1, 2011; see also Scheduling Order, Mar. 16, 2011,
ECF
No.
28.
After
completing
that
discovery,
the
parties
supplemented their previously filed motion and motion responses.
See
Pl.‟s
Supplemental
Mem.
Regarding
Personal
Jurisdiction
Under Georgia‟s Long-Arm Statute, ECF No. 32 [hereinafter Pl.‟s
Supplemental
Regarding
Statute,
Mem.];
Personal
ECF
No.
Defs.‟
Reply
Jurisdiction
33
to
Under
[hereinafter
2
Pl.‟s
Supplemental
Georgia‟s
Defs.‟
Reply
Mem.
Long-Arm
to
Pl.‟s
Supplemental
Mem.].
The
present
record
establishes
the
following.
JOEL owns numerous copyrights and trademarks for “REALTREE”
brand camouflage patterns and goods bearing the REALTREE name
and incorporating the camouflage patterns. JOEL is a Georgia
corporation with its principal place of business in Columbus,
Georgia.
That 70's Store is incorporated in Arkansas and has
its principal place of business in Conway, Arkansas.
Mem. Br.
in Supp. of Defs.‟ Mot. to Set Aside Entry of Default J. Ex. A,
Morgan
Aff.
Arkansas.
¶
2,
ECF
Id. ¶ 1.
No.
16-1.
Morgan
is
a
resident
of
That 70's Store is not licensed to do
business in Georgia and does not have an agent for service of
process
in
Georgia.
subsidiaries,
offices,
Id.
¶
3.
employees,
records or assets in Georgia.
That
real
70‟s
or
Store
personal
has
no
property,
Id.
Defendants promote and sell articles of clothing bearing a
marijuana
BUD,”
leaf
camouflage
“REALBUD,”
“REAL
pattern
using
CAMO,”
BUD
and
the
and
marks
“REALBUD
(collectively “REALBUD marks” or “REALBUD products”).
“REAL
CAMO”
Morgan
Aff. ¶ 4; Pl‟s Mem. in Opp‟n to Defs.‟ Mot. to Set Aside Entry
of Default J. [hereinafter Pl.‟s Mem.] Ex. C, That 70's Store
Website Home 2-3, ECF No. 18-4; Pl.‟s Mem. Ex. A, RealBudCamo Products 3-7, ECF No. 18-2.
Defendants own and operate two
websites
REALBUD
that
display
the
3
marks.
Defendants‟
www.that70sstore.com website displays images of REALBUD products
and
represents
Store.
No.
the
products
are
for
sale
at
That
70's
Pl‟s Mem. Ex. C, That 70's Store Website Home 1-2, ECF
18-4.
“friends
that
The
website
jealous”
by
encourages
“[w]ear[ing]
customers
the
REALBUD!!!! Everybody needs a hat!!!!”
best
to
make
shirt
Id. at 1.
their
in
town.
The website
explains that “REALBUD CAMO is not just for you hunters out
there but for everyone‟s daily apparel!”
Id. at 2.
Defendants‟
www.realbudcamo.com website offers REALBUD products for sale and
allows
customers
to
purchase
website‟s shopping cart feature.
REALBUD
products
using
the
Pl.‟s Mem. Ex. A, RealBudCamo
- Products 3-7, ECF No. 18-2; Pl.‟s Mem. Ex. B, Shopping Cart,
ECF No. 18-3.
Available clothing includes bandanas, caps, logo
tees, and t-shirts.
It
is
Id.
undisputed
that
neither
the
www.that70sstore.com
website nor the www.realbudcamo.com website generated any sales
of
REALBUD
products
Supplemental Mem. 5.
in
Georgia.
Morgan
Aff.
¶¶
6-7;
Pl.‟s
Plaintiff, however, did submit evidence
that Georgia residents accessed Defendants‟ www.realbudcamo.com
website.
See Pl.‟s Supplemental Mem. Ex. B, Internet Traffic
Report for www.realbudcamo.com, ECF No. 32-3; Pl.‟s Supplemental
4
Mem. Ex. C, Geographic Location Report of Internet Traffic, ECF
No. 32-4.1
DISCUSSION
For Defendants to be subject to personal jurisdiction here,
“the exercise of jurisdiction must (1) be appropriate under the
[Georgia] long-arm statute and (2) not violate the Due Process
Clause
of
the
Constitution.”
Fourteenth
Diamond
Amendment
Crystal
to
Brands,
the
Inc.
United
v.
Food
States
Movers
Int’l, Inc., 593 F.3d 1249, 1257-58 (11th Cir. 2010) (internal
quotation marks omitted).
Court
decisions
to
Notwithstanding some Georgia Appeals
the
contrary,
the
Eleventh
Circuit
has
clearly held that “the Georgia long-arm statute does not grant
courts in Georgia personal jurisdiction that is coextensive with
procedural
due
process,”
but
instead
“imposes
independent
obligations that a plaintiff must establish for the exercise of
personal
jurisdiction
that
procedural due process.”
are
distinct
Id. at 1259.
1
from
the
demands
of
“[C]ourts must apply the
Defendants submitted the affidavit of a network engineer to contest
the reliability of Plaintiff‟s evidence, claiming that the evidence
does not conclusively establish that twelve Georgia residents actually
accessed the www.realbudcamo.com website.
See Defs.‟ Reply to Pl.‟s
Supplemental Mem. Ex. A, Dunn Aff., ECF No. 33-1. Further, Defendants
argue that the Court should strike Plaintiff‟s counsel‟s affidavit and
attached exhibits as a violation of Georgia Rule of Professional
Conduct 3.7.
Even if the Court accepts Plaintiff‟s evidence as true
for the purposes of this Order, the Court concludes that Defendants‟
conduct in Georgia does not satisfy the requirements of the Georgia
long-arm statute. Accordingly, the Court finds it unnecessary to rule
on Defendants‟ motion to strike.
5
specific
limitations
and
requirements
of
O.C.G.A. §
9-10-91
literally and must engage in a statutory examination that is
independent of, and distinct from, the constitutional analysis
to
ensure
that
both,
separate
prongs
inquiry are satisfied.”
Id. at 1263.
the
in
Court
begins
(and
this
case
of
the
jurisdictional
Following this direction,
ends)
its
analysis
by
examining whether Defendants‟ conduct meets the requirements of
the Georgia long-arm statute.
I.
Georgia’s Long-Arm Statute
Plaintiff relies upon three separate and independent bases
for
jurisdiction
under
the
Georgia
long-arm
statute:
(1)
Defendants‟ transaction of business in Georgia; (2) Defendants‟
commission of a tort in Georgia; and (3) Defendants‟ commission
of a tortious injury in Georgia caused by an act or omission
outside of Georgia.
The Georgia long-arm statute, O.C.G.A. § 9-
10-91, provides in relevant part that:
A
court
of
this
state
may
exercise
personal
jurisdiction over any nonresident or his or her
executor or administrator, as to a cause of action
arising from any of the acts, omissions, ownership,
use, or possession enumerated in this Code section, in
the same manner as if he were a resident of this
state, if in person or through an agent, he or she:
(1) Transacts any business within this state;
(2) Commits a tortious act or omission within this
state . . . ; [or]
(3) Commits a tortious injury in this state caused by
an act or omission outside this state if the tortfeasor regularly does or solicits business, or engages
6
in any other persistent course of conduct, or derives
substantial revenue from goods used or consumed or
services rendered in this state[.]
O.C.G.A. § 9-10-91(1)-(3).
A.
Transacts Any Business in Georgia
To meet the “transacts any business” prong of the Georgia
long-arm statute, a nonresident defendant must “„purposefully
do[] some act or consummate[] some transaction‟” in Georgia.
Diamond Crystal Brands, Inc., 593 F.3d at 1260 (quoting Aero Toy
Store, LLC v. Grieves, 279 Ga. App. 515, 517, 631 S.E.2d 734,
737 (2006)).
In Innovative Clinical & Consulting Services, LLC
v. First National Bank of Ames, Iowa, 279 Ga. 672, 620 S.E.2d
352
(2005),
the
Supreme
Court
of
Georgia
clarified
the
requirements of the transacts any business prong, noting that
“nothing in subsection (1) requires the physical presence of the
nonresident
in
Georgia
or
minimizes
the
import
nonresident‟s intangible contacts with the State.”
of
a
Innovative
Clinical & Consulting Servs., LLC, 279 Ga. at 675, 620 S.E.2d at
355.
“As a result, a nonresident‟s mail, telephone calls, and
other „intangible‟ acts, though occurring while the defendant is
physically outside of Georgia, must be considered.”
Crystal Brands, Inc.,
subsection
“expressly
(1)
of
depends
593 F.3d at 1264.
the
on
the
long-arm
actual
7
Diamond
Jurisdiction under
statute,
transaction
however,
of
still
business—the
doing of some act or consummation of some transaction—by the
defendant in the state.”
Apparently
conduct
on
the
unable
part
Id. at 1260.
to
of
point
to
any
consistent
Defendants
that
would
course
amount
to
of
the
traditional transaction of business in Georgia, Plaintiff relies
upon the “due process personal jurisdiction test” expressed in
Calder v. Jones, 465 U.S. 783 (1984) that Plaintiff contends has
also been adopted by the Eleventh Circuit in Licciardello v.
Lovelady, 544 F.3d 1280 (11th Cir. 2008).
Plaintiff maintains
that under that test personal jurisdiction is satisfied here
because the Defendants committed an intentional tort aimed at
Plaintiff in Georgia, and the effect of that tort was suffered
by Plaintiff in Georgia.
Plaintiff
argues
that
Relying on Calder and Licciardello,
Defendants‟
intentional
display
of
the
REALBUD marks on Defendants‟ websites, causing harm to JOEL in
Georgia, constitutes an “act” sufficient to meet the transaction
of
business
requirement
of
the
2
Georgia
long-arm
statute.2
Plaintiff contends that as a result of Defendants‟ default the Court
must accept the facts contained in the Complaint as true, and thus
trademark infringement by Defendants and injury to Plaintiff are
established in this action. Defendants claim, however, that Plaintiff
failed to introduce any evidence to support a finding that Defendants
actually committed trademark infringement or caused injury to
Plaintiff.
Assuming for the purposes of this Order that Defendants
infringed Plaintiff‟s trademarks and caused Plaintiff injury, the
Court
concludes
that
Defendants‟
conduct
fails
to
meet
the
jurisdictional requirements of Georgia‟s long-arm statute. Therefore,
the Court does not need to decide whether Plaintiff must introduce
actual evidence of infringement or injury.
8
Pretermitting whether Calder and Licciardello would support a
finding in the present case that the exercise of jurisdiction
over Defendants would not offend notions of constitutional due
process, the Court finds both cases inapplicable to the question
of whether Defendants‟ conduct amounts to the transaction of
business
as
Conflating
contemplated
the
of
that
F.3d
at
this
that
constitutional
would
is
1263.
test
the
must
“engage
independent
of,
Diamond
Furthermore,
statute.
into
determination
violate
Court
analysis.”
long-arm
effects
business
O.C.G.A. § 9-10-91(1)
examination
Georgia‟s
Calder/Licciardello
transaction
directive
by
Eleventh
and
a
under
Circuit‟s
statutory
distinct
Crystal
allowing
in
the
from,
the
Brands,
Inc.,
593
the
tortious
injury
suffered by JOEL in Georgia to be considered the transaction of
business
under
subsection
(1)
of
the
long-arm
statute
would
“turn the „transacts any business within Georgia‟ prong into the
new
stepping
stone
around
subsection
(3).”
Id.
at
1262.
Therefore, the Court rejects Plaintiff‟s argument that an injury
suffered by JOEL in Georgia due to an intentional tort satisfies
the
Georgia
long-arm
statute‟s
transaction
of
business
requirement.
Plaintiff also argues that Defendants transacted business
in
Georgia
by
operating
www.realbudcamo.com websites.
the
www.that70sstore.com
and
Both websites are accessible in
9
Georgia, the www.realbudcamo.com website offers REALBUD products
for
sale,
accessed
and
the
some
evidence
exists
www.realbudcamo.com
that
Georgia
website.
It
is
residents
undisputed,
however, that no sales resulted from Georgia residents viewing
the websites.
The
finding
Court
finds
that
Defendants
meet
that
sufficient
to
the
statute.
Defendants
this
evidence
transacted
requirements
operated
does
business
of
websites
support
a
in
Georgia
Georgia
the
long-arm
that
everywhere and not specifically in Georgia.
target Georgia residents.
not
are
accessible
The websites do not
The websites failed to generate any
business for Defendants in Georgia.
Defendants did not sell any
products to Georgia residents through the internet or otherwise.
Defendants did not ship any products to Georgia.
fails
to
Georgia.
reveal
any
“intangible”
conduct
Defendants
in
Defendants have not corresponded via email, mail, or
telephone with Georgia residents.
that
by
The record
merely
everywhere
business—the
operating
else,
doing
a
website
constitutes
of
some
The Court cannot conclude
accessible
“the
act
or
actual
in
Georgia,
and
transaction
of
consummation
transaction—by the [Defendants] in the state.”
of
some
Diamond Crystal
Brands, Inc., 593 F.3d at 1260 (emphasis added); see also Aero
Toy Store, LLC v. Grieves, 279 Ga. App. 515, 523, 631 S.E.2d
734, 740 (2006) (finding that the defendant transacted business
10
in Georgia based on defendant‟s operation of an “interactive
website through which it has reached out to, and done business
with,
persons
in
Georgia,”
and
offering
as
a
contrasting
example, Barton Southern Co. v. Manhole Barrier Systems, 318 F.
Supp.
2d
(N.D.
Ga.
2004),
“where
there
was
nothing
on
the
[defendant‟s] website showing an intent to reach out to persons
living in Georgia and no evidence that any Georgia residents had
done business with the defendant either through the Internet or
otherwise.”).3
Based on the foregoing, the Court finds that Plaintiff has
failed
to
demonstrate
that
Defendants
transacted
business
in
Georgia sufficient to meet the requirements of Georgia‟s longarm statute.
B.
Tortious Act in Georgia
Plaintiff also argues that Defendants committed a tort in
Georgia by causing the REALBUD marks to be displayed in Georgia
on the websites.
may
exercise
Therefore, Plaintiff maintains that this Court
personal
jurisdiction
3
over
Defendants
under
the
The Court recognizes that in Barton Southern Co. the federal district
court evaluated the defendant‟s contacts in the context of the due
process inquiry and not under the Georgia long-arm statute. Moreover,
the Court is mindful of the Eleventh Circuit‟s finding that the
Georgia Court of Appeals in Aero Toy Store, LLC improperly collapsed
the minimum contacts due process analysis into the transacts any
business test.
Diamond Crystal Brands, Inc., 593 F.3d at 1260 n.11.
The Court, however, still finds the reasoning from the Aero Toy Store,
LLC decision instructive for its finding that, in contrast to Barton
Southern, Co., the defendant in Aero Toy Store, LLC had done business
with persons in Georgia.
11
“commits a tortious act” in Georgia provision of the long-arm
statute.
Plaintiff again relies on Licciardello, arguing that
the Eleventh Circuit construed language from Florida‟s long-arm
statute
identical
to
subsection
(2)
of
Georgia‟s
long-arm
statute and concluded that a tort occurred in Florida.
Eleventh
Circuit
in
Licciardello,
however,
recognized
The
that
Florida‟s “long-arm statute permits jurisdiction over the nonresident defendant who commits a tort outside of the state that
causes injury inside the state.”
1283.
Licciardello, 544 F.3d at
In contrast, the Georgia Supreme Court
has
expressly
rejected a line of Georgia cases that “expanded subsection (2)
to encompass nonresidents in those situations where the cause of
action arising from injury in Georgia resulted from a tortious
act
or
omission
occurring
outside
this
State.”
Innovative
Clinical & Consulting Servs., LLC, 279 Ga. at 673, 620 S.E.2d at
354.
According to the Georgia Supreme Court, “under subsection
(2) a Georgia court may exercise personal jurisdiction over a
nonresident who commits a tortious act or omission within this
State. . . and under subsection (3) a Georgia court may exercise
personal jurisdiction over a nonresident who commits a tortious
injury in Georgia caused by an act or omission outside Georgia
only if” the tort-feasor‟s conduct in Georgia meets the other
requirements
set
S.E.2d at 354.
forth
in
subsection
(3).
Id.
at
674,
620
Thus, the Georgia courts interpret subsection
12
(2) of the Georgia long-arm statute differently than the Florida
courts
interpret
statute.
a
similar
requirement
in
their
long-arm
Sitting in Georgia, this Court must follow the Georgia
courts on this issue.
The Court finds that Defendants‟ alleged tortious conduct
occurred
in
Arkansas,
where
Defendants
displaying the REALBUD products.
created
the
websites
See Huggins v. Boyd, 304 Ga.
App. 563, 565, 697 S.E.2d 253, 255 (2010) (finding that although
the offense at issue was deemed by statute to occur where the
email communication was received, the conduct giving rise to the
offense “occurred at the physical place where [the defendant]
typed in and sent his emails,” and therefore the defendant‟s
conduct failed to satisfy subsection (2) of the Georgia long-arm
statute).
Under
the
Georgia
courts‟
interpretation
of
the
tortious act requirement, injury to JOEL in Georgia as a result
of
Defendants‟
“tortious
act
conduct
or
in
Arkansas
be
considered
a
within”
omission
cannot
Georgia
for
purposes
of
subsection (2) of the Georgia long-arm statute.
Plaintiff
concluded
that
also
argues
that
the
defendant
the
court
actually
in
committed
Licciardello
the
tort
of
trademark infringement in Florida because the website displaying
the
infringing
Licciardello,
marks
544
F.3d
was
at
accessible
1283
in
(finding
Florida.
“the
See
alleged
infringement clearly also occurred in Florida by virtue of the
13
website‟s
accessibility
in
Florida”).
Even
if
infringement
occurred in Georgia as a result of Georgia residents viewing the
infringing
marks
on
Defendants‟
websites,
so
that
the
infringement was “passed off” in Georgia, the conduct giving
rise to the infringement occurred in Arkansas, where Defendants
created the websites.
See Huggins, 204 Ga. App. at 565, 697
S.E.2d at 255 (holding that although offense of stalking was
deemed
to
occur
communications,
stalking
typed
the
occurred
in
and
subsection
where
conduct
at
sent
(2)
of
the
the
the
the
victim
giving
physical
emails
rise
to
place
the
the
email
offense
of
where
the
defendant
therefore
and
long-arm
received
did
not
meet
under
the
statute).
Thus,
Georgia long-arm statute, Defendants‟ tortious act did not occur
in Georgia.
C.
Tortious Injury in Georgia
Finally, Plaintiff argues that it has satisfied subsection
(3)
of
the
Georgia
long-arm
statute
by
demonstrating
that
Defendants committed a tortious injury in Georgia caused by an
act or omission outside the state.
Plaintiff, however, cannot
satisfy the other prong of subsection (3), which requires that
such
a
tort-feasor
“regularly
does
or
solicits
business,
or
engages in any other persistent course of conduct, or derives
substantial
revenue
from
rendered in this state.”
goods
used
O.C.G.A.
14
or
§
consumed
9-10-91(3).
or
services
Plaintiff
argues that Defendants caused a tortious injury in Georgia and
that
Defendants
regularly
solicit
business
in
Georgia
by
operating the websites that are accessible to Georgia residents.
The Court rejects this argument.
Georgia residents in any way.
Defendants
regularly
solicit
The websites do not target
The Court cannot conclude that
business
in
Georgia
solely
by
operating a website that is accessible here and everywhere else.
In Georgia, “[t]he rule that controls is our statute, which
requires that an out-of-state defendant must do certain acts
within
the
personal
state
of
Georgia
jurisdiction.”
before
Innovative
he
can
be
Clinical
subjected
&
to
Consulting
Servs., LLC, 279 Ga. at 673, 620 S.E.2d at 353 (alteration in
original) (internal quotation marks omitted).
Defendants have
not regularly solicited business in Georgia or satisfied the
other
additional
long-arm statute.
requirements
of
subsection
(3)
of
Georgia‟s
Therefore, personal jurisdiction cannot be
exercised over Defendants under this provision of the statute.
II.
Constitutional Due Process
Although the Court suggested in a previous Order that the
exercise
of
personal
jurisdiction
over
Defendants
would
not
likely violate their constitutional right to due process, Order,
Jan. 21, 2011, ECF No. 21, the Court does not need to decide
this issue given its finding that Defendants‟ conduct fails to
15
meet the independent requirements imposed by the Georgia longarm statute.
CONCLUSION
For the reasons set forth above, Defendants‟ Motion to Set
Aside Entry of Default Judgment (ECF No. 15) is granted, and
this action is dismissed for lack of personal jurisdiction.
IT IS SO ORDERED, this 26th day of September, 2011.
S/Clay D. Land
CLAY D. LAND
UNITED STATES DISTRICT JUDGE
16
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?