Paradise Media Ventures, LLC v. Mills

Filing 24

OPINION AND ORDER granting 6 Motion to Dismiss, Motion to Transfer Case.. Signed by Judge Thomas W. Thrash, Jr on 12/5/13. (dr)

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF GEORGIA
ATLANTA DIVISION
PARADISE MEDIA VENTURES,
LLC doing business as
Interactive Media Ventures
also known as Social Media Marketing
University,
Plaintiff,
v.

CIVIL ACTION FILE
NO. 1:13-CV-1003-TWT

ERIC MILLS,
Defendant.

OPINION AND ORDER

This is a trademark infringement action concerning the mark “Certified Social
Media Strategist.” It is before the Court on the Defendant Eric Mills’ Motion to
Dismiss for Lack of Personal Jurisdiction, or in the Alternative to Transfer to the
United States District Court for the District of Minnesota [Doc. 6]. For the reasons set
forth below, the Motion to Dismiss [Doc. 6] is GRANTED.
I. Background
This case is about a service mark used to identify the Plaintiff Paradise Media
Ventures, LLC’s online social media training course. The Plaintiff is in the business

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of training individuals to better utilize social media outlets for marketing. (Am.
Compl. ¶ 18.) Since 2009, it has conferred the title “Certified Social Media Strategist”
upon those that have successfully completed its course. (Am. Compl. ¶¶ 20-21.) The
"Certified Social Media Strategist" mark has not been registered. (Am. Compl. ¶ 23.)
The Defendant Eric Mills, a Minnesota resident, operates the National Institute
for Social Media (“NISM”), a Minnesota company. (Am. Compl. ¶ 28.) The NISM
provides its own social media training course. (Am. Compl. ¶ 28.) Initially, the course
awarded successful students with the title “Certified Master of Social Media.” (Am.
Compl. ¶ 30, Ex. A.) Eventually, the Defendant modified this title to “Certified Social
Media Strategist.” (Am. Compl. ¶ 32.) Unlike the Plaintiff’s course, which costs
around $4,000, the Defendant’s course is offered for as low as $295. (Am. Compl. ¶¶
24, 33.) The Defendant’s course has also been offered through academic institutions,
including Atlanta Technical College and Columbus State University. (Am. Compl. ¶
34, Exs. B, C.) However, neither the Defendant nor the NISM has any employees in
Georgia. (Mills Decl. ¶¶ 3, 5.) The NISM does not physically offer any classes in
Georgia, and there is no indication that anyone in Georgia has signed up for the
Defendant’s class through the NISM. (Mills Decl. ¶ 5.) The Plaintiff brought claims
under the Lanham Act and the Georgia Uniform Deceptive Trade Practices Act. The
Defendant now moves to dismiss for lack of personal jurisdiction, or in the alternative

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to have the case transferred to the United States District Court for the District of
Minnesota.
II. Legal Standard
"In the context of a motion to dismiss for lack of personal jurisdiction in which
no evidentiary hearing is held, the plaintiff bears the burden of establishing a prima
facie case of jurisdiction over the movant, nonresident defendant." Morris v. SSE,
Inc., 843 F.2d 489, 492 (11th Cir. 1988). The plaintiff establishes a prima facie case
by presenting “enough evidence to withstand a motion for directed verdict." Madara
v. Hall, 916 F.2d 1510, 1514 (11th Cir. 1990). A party presents enough evidence to
withstand a motion for directed verdict by putting forth "substantial evidence . . . of
such quality and weight that reasonable and fair-minded persons in the exercise of
impartial judgment might reach different conclusions . . ." Walker v. NationsBank of
Florida, 53 F.3d 1548, 1555 (11th Cir. 1995). The facts presented in the plaintiff’s
complaint are taken as true to the extent they are uncontroverted. Foxworthy v.
Custom Tees, Inc., 879 F. Supp. 1200, 1207 n.10 (N.D. Ga. 1995). If, however, the
defendant submits affidavits challenging the allegations in the complaint, the burden
shifts back to the plaintiff to produce evidence supporting jurisdiction. Diamond
Crystal Brands, Inc. v. Food Movers Intern., Inc., 593 F.3d 1249, 1257 (11th Cir.
2010); Meier v. Sun Int’l Hotels, Ltd., 288 F.3d 1264, 1269 (11th Cir. 2002). If the

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plaintiff's complaint and supporting evidence conflict with the defendant's affidavits,
the court must construe all reasonable inferences in favor of the plaintiff. Madara, 916
F.2d at 1514.
III. Discussion
Two requirements must be met for the Court to have personal jurisdiction over
the Defendant. First, there must be jurisdiction under Georgia's long-arm statute. See
Madara, 916 F.2d at 1514 ("First, we consider the jurisdictional question under the
state long-arm statute."). Second, the exercise of jurisdiction must be consistent with
the Due Process Clause of the Fourteenth Amendment. See id. ("[W]e next determine
whether sufficient minimum contacts exist to satisfy the Due Process Clause of the
Fourteenth Amendment so that maintenance of the suit does not offend 'traditional
notions of fair play and substantial justice.'").
Here, the Court’s analysis begins--and ends--with the first requirement: the
Court does not have personal jurisdiction over the Defendant under Georgia’s longarm statute.1 This statute reads, in relevant part:

1

The Georgia long-arm statute does not confer personal jurisdiction to the full
extent permitted by the Due Process Clause of the Fourteenth Amendment. See
Diamond Crystal Brands, 593 F.3d at 1259 ("[T]he Georgia long-arm statute does not
grant courts in Georgia personal jurisdiction that is coextensive with procedural due
process. . . .[i]t imposes independent obligations that a plaintiff must establish for the
exercise of personal jurisdiction that are distinct from the demands of procedural due
process.").
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A court . . . may exercise personal jurisdiction over any nonresident . . . as to
a cause of action arising from any of the acts . . . enumerated in this Code
section, in the same manner as if he or she 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 . . .; (3) Commits
a tortious injury in this state caused by an act or omission outside this state if
the tort-feasor regularly does or solicits business, or engages 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. The Plaintiff contends that jurisdiction may be found under all
three subsections. Each will be discussed.
First, subsection 1 is read literally, circumscribed only by the Due Process
Clause. See Innovative Clinical & Consulting Servs., LLC v. First Nat. Bank of Ames,
279 Ga. 672, 675 (2005). "[U]nless and until the Georgia courts provide further
authoritative guidance, courts in this circuit construing the statute literally will have
to delineate the precise contours of the ‘[t]ransacts any business within this state’
requirement of O.C.G.A. § 9-10-91(1) according to the facts of each case." Diamond
Crystal Brands, 593 F.3d at 1263. The Court must “examine all of a nonresident's
tangible and intangible conduct and ask whether it can fairly be said that the
nonresident has transacted any business within Georgia.” Id. at 1264. Subsection 1
applies to business transactions "conducted through . . . Internet contacts." ATCO
Sign & Lighting Co., LLC v. Stamm Mfg., Inc., 298 Ga. App. 528, 534 (2009); see
also Innovative Clinical, 279 Ga. at 675 (“[N]othing in subsection (1) requires the

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physical presence of the nonresident in Georgia or minimizes the import of a
nonresident's intangible contacts with the State.”). The defendant must have
"purposefully done some act or consummated some transaction in this state."2 Aero
Toy Store, LLC v. Grieves, 279 Ga. App. 515, 517 (2006).
Here, the Defendant never transacted business with anyone in Georgia. The
Defendant testified that nobody in Georgia took the class he offered through NISM.
(Mills Decl. ¶ 5.) The Plaintiff argues that the Defendant “marketed and promoted his
Social Media Strategist certification course in Georgia.” (Pl.’s Resp. to Mot. to
Dismiss, at 6-7.) Even assuming this to be true, "subsection (1) long-arm jurisdiction
in Georgia expressly depends on the actual transaction of business . . . by the
defendant in the state." Diamond Crystal Brands, 593 F.3d at 1260 (emphasis added).
"The statutory requirement that a nonresident defendant transact any business in
Georgia must mean something more than . . . mere minimum contacts in a due process
sense." Id. at 1262. Promoting a course is not the same as actually transacting business
with a person or corporate entity. The Plaintiff then argues that two academic
institutions in Georgia -- Atlanta Technical College and Columbus State University --

2

In addition, Georgia courts require the plaintiff to show that the cause of
action arises from or is connected to the act or transaction, and that the exercise of
jurisdiction does not “offend traditional fairness and substantial justice.” See Aero
Toy Store, 279 Ga. App. at 517-18.
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offered his course. But the Defendant did not engage in any transactions with these
institutions, and nobody in Georgia signed up for the course. (Def.’s Reply in Supp.
of Mot. to Dismiss, at 2-3.) To be clear, the Defendant contracted with a Wisconsinbased company called Learning Resources Network (“LERN”). (Id., at 2.) The
Defendant’s lectures are displayed on LERN’s online system UGotClass. (Id.) LERN
markets these lectures to academic institutions. (Id.) The Defendant, however, was
never informed of which institutions LERN was contracting with. (Id.) At most,
LERN transacted business in Georgia, not the Defendant.
Second, for jurisdiction to exist under subsection 2, the tortious conduct itself
must have occurred in Georgia. See Anderson v. Deas, 279 Ga. App. 892, 893 (2006)
(Disapproving of cases which “held that a tortious act may be said to have been
committed in this state within the meaning of paragraph (2) based either on occurrence
of the tortious conduct or commission of the injury in this state.”). “In trademark
actions, the tort is said to occur where the defendant sells or attempts to sell the
offending product.” Schieffelin & Co. v. Jack Co. of Boca, Inc., 725 F. Supp. 1314,
1319 (S.D.N.Y. 1989); see also Vanity Fair Mills, Inc. v. T. Eaton Co., 234 F.2d 633,
639 (2d Cir. 1956) ("[I]n cases of trade-mark infringement and unfair competition, the
wrong takes place . . . where the passing off occurs, i.e., where the deceived customer
buys the defendant's product in the belief that he is buying the plaintiff's."); Swift v.

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Medicate Pharmacy, Inc., 10 C 689, 2010 WL 3548006, at *4 (N.D. Ill. Sept. 3, 2010)
("[I]n trademark infringement and unfair competition claims, the 'wrong' is considered
to have occurred where the 'passing off' occurs. . . .the situs is where the infringing
product is sold, even if the defendant is located elsewhere."). When the tortious
conduct occurs over an Internet website, “the situs of this tort is considered to be
where the website, or servers which maintain the website, are located.”3 Gucci Am.,

3

The Plaintiff, citing Licciardello v. Lovelady, 544 F.3d 1280 (11th Cir. 2008),
states that the tortious act occurs wherever the website is accessible. Lovelady,
however, dealt with an analogous provision in the Florida long-arm statute which -unlike subsection 2 of the Georgia statute -- confers jurisdiction so long as the injury
occurred in Florida. See id. at 1283. This is why the Circuit Court noted that it did not
have to determine where the tortious conduct occurred. See id.; Louis Vuitton
Malletier, S.A. v. Mosseri, 12-12501, 2013 WL 6224027, at *12 (11th Cir. Dec. 2,
2013) (“Applying our precedent in Lovelady, we conclude that under Florida law
where [the defendant] created the websites and posted the alleged infringing material
does not matter.”) In the Internet context, Georgia courts have made clear that the
culpable conduct occurs wherever the defendant initiates the transmission of
information. See LABMD, Inc. v. Tiversa, Inc., 509 Fed. Appx. 842, 844-45 (11th
Cir. 2013) ("The conduct giving rise to Defendants' alleged offense occurred where
Johnson and Tiversa used computers . . . [b]ecause [they] used computers outside of
Georgia, Defendants are not subject to personal jurisdiction under subsection (2).");
Huggins v. Boyd, 304 Ga. App. 563, 565 (2010) ("The conduct giving rise to the
offense . . . occurred at the physical place where Huggins typed in and sent his
e-mails. The effect was the transmission of the communications along electronic lines
and receipt by Boyd . . . at the other end. Therefore, Huggins did not engage in any
conduct . . . in Georgia, when he sent the e-mails from out of state."); Jordan Outdoor
Enterprises, Ltd. v. That 70's Store, LLC, 819 F. Supp. 2d 1338, 1345 (M.D. Ga.
2011) (“Even if infringement occurred in Georgia as a result of Georgia residents
viewing the infringing marks on Defendants' websites . . . the conduct giving rise to
the infringement occurred in Arkansas, where Defendants created the websites.”).
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Inc. v. Frontline Processing Corp., 721 F. Supp. 2d 228, 241 (S.D.N.Y. 2010); see also
Swift, 2010 WL 3548006, at *4 ("In infringement litigation involving Internet
websites courts have tended to emphasize the location where the website is
maintained--otherwise the alleged tort would be too diffuse to pinpoint.").
Here, the NISM is based in Minnesota. The alleged tortious conduct did not
occur in Georgia. The Plaintiff argues that the “site is interactive and . . . is accessible
from Georgia.” (Pl.’s Resp. to Mot. to Dismiss, at 7.) The focus, however, is on where
the website is hosted.4 The Plaintiff further argues that the Defendant committed a tort
in Georgia when two Georgia academic institutions offered his course. (Pl.’s Resp. to
Mot. to Dismiss, at 8.) That two Georgia institutions offered his course does not mean
that the Defendant committed a tort in Georgia. There is no evidence that the
Defendant is affiliated with these institutions, or that they were acting as his agents
when they offered the course. The Defendant testified that he has no educational
partners in Georgia. (Mills Decl. ¶ 5.)

4

The Plaintiff conflates the minimum contacts analysis with the subsection 2
analysis. It is true that sufficient minimum contacts may be found based on
transactions through an interactive website. See Aero Toy Store, 279 Ga. App. at
522-24 (Discussing the Zippo sliding-scale jurisdiction test for Internet-based
activity.). Subsection 2, however, requires the existence of tortious conduct in
Georgia.
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Third, the Plaintiff only briefly argues that there is jurisdiction under subsection
3. “In order for this subsection to apply, the defendant must regularly do or solicit
business or engage in any other persistent course of conduct in the state, or derive
substantial revenue from goods used or consumed or services rendered in Georgia.”
Catholic Stewardship Consultants, Inc. v. Ruotolo Associates, Inc., 270 Ga. App. 751,
757 (2004). Neither the Defendant, nor the NISM, has any employees or customers
in Georgia. (Mills Decl. ¶¶ 3, 5.) There is no evidence that the Defendant specifically
solicited business from Georgia. The Plaintiff reiterates its claim that two Georgia
institutions offered the Defendant’s course, and further states that the Defendant
planned on attending a conference in Atlanta, Georgia. This falls far short of the
regular contact required by subsection 3. The Court lacks personal jurisdiction over
the Defendant.
IV. Conclusion
For these reasons, the Court GRANTS the Defendant Eric Mills' Motion to
Dismiss for Lack of Personal Jurisdiction, or in the Alternative to Transfer to the
United States District Court for the District of Minnesota [Doc. 6].

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SO ORDERED, this 5 day of December, 2013.

/s/Thomas W. Thrash
THOMAS W. THRASH, JR.
United States District Judge

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