Franko Maps, Ltd. v. Nielsen et al
ORDER GRANTING IN PART AND DENYING IN PART MOTIONS TO DISMISS re 44 Motion to Dismiss for Lack of Jurisdiction re 19 Motion to Dismiss. Signed by JUDGE LESLIE E. KOBAYASHI on 09/29/2017. Pro se Defendant Gale Dean Lattman's Motion to Dismiss, filed February 19, 2017, and Defendants Derek Hermon and Bear Valley Bikes Speed-Evolution's Motion to Dismiss, filed June 9, 2017, are HEREBY GRANTED IN PART AND DENIED IN PART. Both of the Motions ar e: - GRANTED insofar as Counts I, II, III, IV, V, VI, and VIII of Plaintiff Franko Maps, Ltd.'s Amended Complaint, [filed 11/15/16 (dkt. no. 12),] are DISMISSED;- DENIED insofar as the dismissal of those claims is WITHOUT PREJUDICE;- DEN IED as to their requests to dismiss Count VII of the Amended Complaint; and- DENIED as to their requests for dismissal based on improper venue.Further, the Lattman Motion is DENIED as to his request to transfer venue and his request to dismis s Counts II, III, IV, V, and VII for failure to state a claim. Plaintiff is GRANTED leave to file a second amended complaint by December 14, 2017. Plaintiff is only granted leave to amend its jurisdictional allegations. Plaintiff does not have lea ve to add any new parties, claims, or theories of liability. If Plaintiff wishes to make such amendments, it must file a motion for leave to amend, pursuant to Fed. R. Civ. P. 15(a)(2). This Court also GRANTS Plaintiff leave to conduct jurisdictional discovery prior to December 14, 2017. If Plaintiff does not file a second amended complaint by December 14, 2017, its case against Lattman and the Bear Valley Defendants will proceed on Count VII only. (eps, )CERTIFICATE OF SERVICEParticipants registered to receive electronic notifications received this document electronically at the e-mail address listed on the Notice of Electronic Filing (NEF). Participants not registered to receive electronic notifications served by first class mail on the date of this docket entry
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF HAWAII
FRANKO MAPS LTD.,
FRANK NIELSEN; CYNTHIA
NIELSEN; GREEN PLANET MAPS,
LLC; GALE DEAN LATTMAN doing
business as H2O TO GO MAPS;
DEREK T. HERMON; BEAR VALLEY
BIKES SPEED-EVOLUTION, INC.,
PALM TRADERS LLC; VICKI
CIVIL 16-00600 LEK-RLP
ORDER GRANTING IN PART AND DENYING IN PART MOTIONS TO DISMISS
Before the Court are: pro se Defendant Gale Dean
Lattman’s (“Lattman”) Motion to Dismiss (“Lattman Motion”), filed
on February 19, 2017; and Defendants Derek Hermon (“Hermon”) and
Bear Valley Bikes Speed-Evolution’s (“Bear Valley” and
collectively “Bear Valley Defendants”) Motion to Dismiss (“Bear
Valley Motion”), filed on June 9, 2017.
[Dkt. nos. 19, 44.]
Plaintiff Franko Maps, Ltd. (“Plaintiff”) filed its memorandum in
opposition to the Lattman Motion (“Lattman Opposition”) on
April 6, 2017, and its memorandum in opposition to the Bear
Valley Motion (“Bear Valley Opposition”) on July 24, 2017.
nos. 25, 49.]
Lattman filed his reply declaration in support of
his motion (“Lattman Reply Declaration”) on April 13, 2017,1 and
the Bear Valley Defendants filed their reply on July 31, 2017.
[Dkt. nos. 28, 51.]
August 14, 2017.
These matters came on for hearing on
The Lattman Motion and the Bear Valley Motion
(“the Motions”) are hereby granted in part and denied in part for
the reasons set forth below.
The Motions are denied as to
Count VII and the Motions are granted insofar as all of
Plaintiff’s other claims are dismissed without prejudice.
other requests in the Motions are denied.
Plaintiff filed its original Complaint on November 7,
Plaintiff filed its Amended Complaint on November 15,
[Dkt. no. 12.]
The Amended Complaint names the following
Defendants: Frank Nielsen (“F. Nielsen”); Cynthia Nielsen
(“C.B. Nielsen”); Green Planet Maps, LLC (“Green Planet”);
Lattman; Hermon; Bear Valley; Palm Traders LLC (“Palm Traders”);
and Vicki Whitter (“Whitter”).
According to Plaintiff,
Defendants Frank and Cynthia Nielsen (“the Nielsens”) are Green
Planet’s managing members.
[Amended Complaint at ¶ 4.]
factual allegations regarding Lattman and the Bear Valley
Defendants are relevant to the instant Motions.
The Lattman Reply Declaration filed on April 13, 2017 did
not have an original signature. Lattman filed another version
with an original signature on April 17, 2017. [Dkt. no. 29.]
Allegations Regarding Lattman
Plaintiff states that, beginning on January 21, 2005,
Lattman, doing business as H2O to Go Maps (“H2O”), began
purchasing Plaintiff’s maps as a wholesale distributor and
selling them at retail stores at wholesale prices.
[Id. at ¶¶ 5,
In July 2005, Plaintiff and Lattman verbally agreed that
Lattman would be its distributor for the California Delta area.
[Id. at ¶ 15.]
On July 31, 2005, Plaintiff first sold Franko’s
California Delta Adventure Guide (“Delta Map”) and Franko’s
California Delta Fish Identification Guide (“Delta Fish Card”) to
Lattman, in bulk, at distributor prices.
copyright notice printed on them.
Both products had a
Plaintiff sold additional
shipments of the Delta Maps and the Delta Fish Cards to Lattman
on: December 31, 2006; April 7, July 13, and November 14, 2011;
February 28, May 22, June 6, and June 10, 2012.
From 2007 to
early 2011, Plaintiff made bulk distributor sales to Lattman
through a subsidiary – Franko Maps LLC.
[Id. at ¶¶ 12-14,
Exhs. A-B (list of invoices and products sold).]
Lattman would only deal with Plaintiff through
F. Nielsen, who – at the time – was both an employee and a part
owner of the company.
[Id. at ¶ 16.]
On August 27, 2012,
Plaintiff’s Board of Directors terminated F. Nielsen as an
officer and employee for cause.
In an email dated August 28,
2012, Plaintiff: informed Lattman of the termination; instructed
him that all future communications with it must take place
through the current officers, not through F. Nielsen; and
informed him that it owned all of the company’s intellectual
property (“8/28/12 Email”).
Plaintiff also sent Lattman a letter
with substantially the same information.
Exh. E (8/28/12 Email).]
[Id. at ¶¶ 17-18,
Along with the 8/28/12 Email and
letter, Plaintiff provided Lattman with a copy of F. Nielsen’s
work for hire agreement (“Nielsen Agreement”), which confirmed
that Plaintiff owned the copyright to all of its publications,
including the Delta Map and Delta Fish Card, and all of the
intellectual property created by F. Nielsen prior to his
[Id. at ¶ 19, Exh. F (F. Nielsen Agreement).]
Plaintiff alleges that, sometime after his termination,
F. Nielsen created derivative works using property that he failed
to return to Plaintiff, including a computer, software, and
intellectual property files.
The derivative works included
“Famous Franko’s California Delta Map,” which Plaintiff alleges
infringes upon Plaintiff’s Delta Map.
[Id. at ¶ 20.]
distributed Famous Franko’s California Delta Map, and another
version of it, under his H2O to Go band.
[Id. & Exh. G (copies
of illustrative portions of the allegedly infringing maps).]
Plaintiff also alleges, upon information and belief, that Lattman
distributes a product which infringes upon the Delta Fish Card.
F. Nielsen allegedly created the product using Plaintiff’s
computer, software, and intellectual property.
[Id. at ¶ 21.]
Plaintiff filed a civil action against F. Nielsen and
others in this district court.
[Franko Maps Ltd., et al. v.
Trident Diving Equipment, et al., CV 13-00637 LEK-KSC (“Franko
Maps v. Trident”), Complaint, filed 11/20/13 (dkt. no. 1).]
December 2, 2013, Plaintiff filed an amended complaint alleging
copyright infringement and other claims.
Trident, dkt. no. 5.]
[Franko Maps v.
Plaintiff entered into a Settlement
Agreement with F. Nielsen.
This Court filed a consent judgment
with a permanent injunction against F. Nielsen and Jonathan
Nielsen (“Permanent Injunction”) on March 18, 2014.
The Amended Complaint in the instant case notes that,
in the Permanent Injunction, F. Nielsen admitted to committing
copyright infringement and agreed not to commit further
infringements, including making further derivatives or products
that contained the same locations, subject matter, or titles as
Plaintiff emphasizes that the Settlement
Agreement did not release Lattman, the Bear Valley Defendants,
Whitter, or Palm Traders.
[Amended Complaint at ¶ 23, Exh. H
(Permanent Injunction and Settlement Agreement).]
Injunction applies to “Frank Nielsen and Jonathan Nielsen, and
their agents, servants, representatives, employees, assigns,
successors, affiliates, attorneys, or licensees, any persons,
businesses, corporations, limited liability companies, or
entities acting by, through, under, in concert, or in
participation with them.”
[Id., Exh. H (Permanent Injunction) at
Plaintiff registered its copyright for the Delta Map on
August 6, 2013.
Its registration number is VA0001899229.
Plaintiff registered the Delta Fish Card copyright on August 12,
2013, registration number VA0001898361.
[Id. at ¶ 24, Exh. I
(copyright registration information, excerpts of the Delta Map
and entire Delta Fish Card).]
Plaintiff alleges that, from a
comparison of the Delta Map and the product Lattman distributed,
the infringement is obvious.
[Id. at ¶ 24, Exh. J (excerpts of
Delta Map and excerpts of allegedly infringing map).]
Plaintiff alleges that Lattman “willfully engaged in a
course of conduct that infringes upon [Plaintiff]’s copyright
rights by creating, displaying, offering, and/or selling
derivative works and/or substantially similar copies of
[Plaintiff]’s intellectual property, without the consent or
authorization of [Plaintiff], and displaying, offering for sale,
and selling such infringing items.”
[Id. at ¶ 25.]
Some of the
infringing items bore Plaintiff’s name, while others bore the
name “Famous Franko’s Maps” or H2O to Go.
Plaintiff alleges, on
information and belief, that F. Nielsen worked on the designs of
the infringing products using the computer and software that he
retained from his employment with Plaintiff.
F. Nielsen and Green Planet helped to create the H2O to Go Delta
map – and other infringing products that Plaintiff expects to
find in discovery – after the Settlement Agreement.
infringements were not released in the Settlement Agreement and
they are violations of the Permanent Injunction.
Plaintiff alleges that these infringements and violations have
caused it to suffer significant damages.
[Id. at ¶ 26.]
In addition, Plaintiff alleges that Lattman’s products
which contain the name “Famous Franko’s Maps” infringe upon
Plaintiff’s “Franko’s Maps” trademark.
[Id. at ¶ 27.]
the H20 to Go map falsely claims that “Dean
Lattman H20 to Go” owns the copyright to that map
and falsely states “Fabulous Maps of the
California Delta Since 2002. Compiled by H20 Maps
to Go” whereas [Plaintiff] was the designer and
creator of the copyrighted design for those maps,
H20 to Go did not compile or create them from 2002
and did not compile or create any Delta maps, and
it was instead Frank Nielsen who wrongly created
the H20 to Go map by improperly using
[Plaintiff’s] copyrighted design, which is a false
representation under the Lanham Act and common
law, and unfair competition and deceptive trade
practice. . . .
According to Plaintiff, Lattman’s H2O to Go products also
contain misleading uses of Green Planet’s ISBN prefix to suggest
that F. Nielsen and Green Planet created those maps for Lattman’s
Further, Plaintiff alleges that Lattman has
accused Plaintiff of fraud because Plaintiff does not own the
maps’ copyrights and Lattman has represented that he “is ‘the
Plaintiff alleges this is trademark
Allegations Regarding the Bear Valley Defendants
According to the Amended Complaint, every year from
2005 until F. Nielsen’s termination in August 2012, Plaintiff
sold Hermon its Franko Maps Big Bear trail map – 2005 copyright
registration number VA0001975995 – (“Big Bear Map”).
the Big Bear Map at his store at Big Bear Lake in California and
on his websites.
[Id. at ¶ 32, Exh. O (excepts of Big Bear Map
and copyright registration information).]
Plaintiff alleges that
Hermon knew Plaintiff was a Hawai`i citizen because the bills it
sent him had its Hawai`i address, and Hermon sent checks to
Plaintiff in Hawai`i.
Plaintiff also alleges, on information and
belief, that Hermon knew about: Plaintiff’s copyrights to the Big
Bear Map; and F. Nielsen’s termination because he stopped buying
maps from Plaintiff.
[Id. at ¶¶ 32-33.]
Plaintiff alleges that, at some point after his
termination, F. Nielsen and Green Planet created derivative works
using Plaintiff’s computer, software and intellectual property,
which F. Nielsen had wrongfully retained.
In the Settlement
Agreement and the Permanent Injunction, F. Nielsen admitted that
one of these derivative works – Green Planet Maps Big Bear! &
Lake Arrowhead Trail Map – infringed upon the Big Bear Map.
at ¶ 34, Exh. P (excerpts of the Green Planet map).]
Settlement Agreement required F. Nielsen not to copy or make
derivatives of Green Planet’s Big Bear map or Plaintiff’s Big
Plaintiff alleges, on information and belief, that
Hermon distributed Green Planet’s infringing map because Hermon
did not buy Plaintiff’s Big Bear Map after F. Nielsen’s
[Id. at ¶ 34.]
Plaintiff alleges, on information and belief, that
F. Nielsen created an infringing version of the Big Bear Map for
the Bear Valley Defendants called “The Definitive Big Bear Trail
[Id. at ¶ 34, Exh. Q (excerpts of the Bear Valley
Defendants’ Big Bear map).]
Plaintiff alleges that the Bear
Valley Defendants’ Big Bear map falsely claimed that Hermon owned
the copyright to the design and misleadingly used Green Planet’s
Plaintiff alleges the use of Green Planet’s ISBN
shows that F. Nielsen and Green Planet created the infringing map
for the Bear Valley Defendants.
Plaintiff argues that it is
obvious from a comparison of its Big Bear Map to Green Planet’s
version and the Bear Valley Defendants’ version that there was
[Id. at ¶ 34, Exh. R (examples of Pltf.’s Big
Bear Map, compared to the Green Planet map and the Bear Valley
Plaintiff alleges, on information and belief,
that F. Nielsen’s involvement with the Bear Valley Defendants’
Big Bear map occurred after the 2013 settlement.
[Id. at ¶ 40.]
Plaintiff alleges that F. Nielsen, Green Planet, and
the Bear Valley Defendants “willfully engaged in a course of
conduct that infringes upon [Plaintiff]’s copyright rights by
creating, displaying, offering, and/or selling derivative works
and/or substantially similar copies of [Plaintiff]’s intellectual
property, without the consent or authorization of [Plaintiff],
and displaying, offering for sale, and selling such infringing
[Id. at ¶ 35.]
Plaintiff alleges, on information and
belief, that F. Nielsen designed the infringing products using
Plaintiff’s computer and intellectual property that he wrongfully
retained after his termination.
Plaintiff argues that the
false and misleading information in the infringing maps of Big
Bear “constitute false advertising under the Lanham Act,
misrepresentation, and unfair competition and deceptive trade
[Id. at ¶ 36.]
Plaintiff alleges that the Nielsens, Green Planet, and
others acting in concert or participating with them – which may
include the Bear Valley Defendants – were prohibited by the
Permanent Injunction and the Settlement Agreement “not just from
infringing and making or distributing any derivatives, but also
from making, having made, displaying, offering, distributing, or
selling any map or card dealing with Big Bear or Bear Valley,
regardless of how similar or dissimilar it looked from
[Plaintiff]’s copyrighted designs.”
[Id. at ¶ 37 (citing
Permanent Injunction at ¶ 2(a); Settlement Agreement at ¶ 4(a)).]
Thus, Plaintiff alleges that making, ordering, displaying,
distributing, and selling of either Green Planet’s Big Bear map
or the Bear Valley Defendants’ Big Bear map violated the
Permanent Injunction and the Settlement Agreement.
Plaintiff also argues that, because Green Planet’s map and the
Bear Valley Defendants’ map were obviously made with Plaintiff’s
trade secrets, software, and intellectual property, the Nielsens,
Green Planet, and those acting in concert/participation with them
violated the Settlement Agreement and Permanent Injunction, which
prohibited the use, retention, distribution, passing on, or
keeping of Plaintiff’s trade secrets, software, computer files,
or other property.
[Id. at ¶ 38 (citing Permanent Injunction at
¶ 2(j); Settlement Agreement at ¶ 4(j)).]
Plaintiff alleges that it has suffered and will suffer
significant damages as a result of F. Nielsen and the Bear Valley
Defendants’ wrongful activity, including lost profits and loss of
goodwill, trust, and reputation in their industry.
III. Plaintiff’s Claims and the Pending Motions
Plaintiff alleges the following claims: copyright
infringement (“Count I”); an unfair methods of competition claim
under Haw. Rev. Stat. § 480-2 (“Count II”); an unfair and
deceptive trade practices claim under Haw. Rev. Stat. § 481A-3
(“Count III”); common law claims of unfair competition, palming
off, and trade name and trademark infringement (“Count IV”);
trademark infringement and counterfeiting, pursuant to 15 U.S.C.
§ 1114 (“Count V”); breach of contract (“Count VI”); violation of
the Permanent Injunction (“Count VII”); and false advertising and
misrepresentation under the Lanham Act and under common law, and
defamation (“Count VIII”).
Lattman seeks dismissal of Plaintiff’s claims against
him pursuant to Fed. R. Civ. P. 12(b)(2) and (3) for lack of
personal jurisdiction and improper venue.
In the alternative,
Lattman asks this Court to transfer venue to the Eastern District
of California, pursuant to 28 U.S.C. § 1404.
If this Court
rejects these arguments, Lattman seeks dismissal of Counts II,
III, IV, V, and VII pursuant to Rule 12(b)(6).
The Bear Valley Motion also seeks dismissal for lack of
personal jurisdiction and improper venue.
The Bear Valley
Defendants do not seek transfer of venue because they contend
that the claims Plaintiff has included in this case are unrelated
and there is no one venue that is proper for all claims.
In reviewing a Rule 12(b)(2) motion to dismiss for lack
of personal jurisdiction, this Court has stated:
A plaintiff has the burden of establishing
personal jurisdiction over a nonresident
defendant. See Love v. Associated Newspapers,
Ltd., 611 F.3d 601, 608 (9th Cir. 2010);
Schwarzenegger v. Fred Martin Motor Co., 374 F.3d
797, 800 (9th Cir. 2004). A plaintiff must
establish personal jurisdiction over a defendant
with respect to each claim. Action Embroidery
Corp. v. Atl. Embroidery, Inc., 368 F.3d 1174,
1180 (9th Cir. 2004) (“Personal jurisdiction must
exist for each claim asserted against a
defendant.” (citing Data Disc, Inc. v. Sys. Tech.
Assocs., Inc., 557 F.2d 1280, 1289 n.8 (9th Cir.
When, as here, a district court acts on a
motion to dismiss without holding an evidentiary
hearing, a plaintiff need only make a prima facie
showing of jurisdictional facts to withstand the
motion to dismiss. Love, 611 F.3d at 608;
Schwarzenegger, 374 F.3d at 800. Although a
plaintiff may not simply rest on the bare
allegations of the complaint, uncontroverted
allegations in the complaint must be taken as
true, and conflicts between parties over
statements contained in affidavits or declarations
must be resolved in the plaintiff’s favor. See
Love, 611 F.3d at 608; Schwarzenegger, 374 F.3d at
Barranco v. 3D Sys. Corp., 6 F. Supp. 3d 1068, 1076 (D. Hawai`i
2014) (some citations omitted).
The district court considers two factors
before exercising personal jurisdiction over a
nonresident defendant in a diversity of
citizenship case: “(1) whether an applicable state
rule or statute potentially confers jurisdiction
over the defendant; and (2) whether assertion of
such jurisdiction accords with constitutional
principles of due process.” Flynt Distrib. Co. v.
Harvey, 734 F.2d 1389, 1392 (9th Cir. 1984). “The
jurisdictional inquiries under state law and
federal due process merge into one analysis” when,
as here, the state’s long-arm statute is “coextensive with federal due process requirements.”
Roth v. Garcia Marquez, 942 F.2d 617, 620 (9th
Cir. 1991). See Cowan v. First Ins. Co. of
Subject matter jurisdiction in the instant case is not
based on diversity jurisdiction, but federal question and
Hawaii, 61 Haw. 644, 649, 608 P.2d 394, 399 (1980)
(Hawaii’s long-arm statute, Haw. Rev. Stat. § 63435, was adopted to expand the jurisdiction of
Hawaii’s courts to the extent permitted by the due
process clause of the Fourteenth Amendment). . . .
The Due Process Clause protects a person’s
“liberty interest in not being subject to the
binding judgments of a forum with which he has
established no meaningful ‘contacts, ties, or
relations.’” Burger King Corp. v. Rudzewicz, 471
U.S. 462, 471-72 (1985) (quoting Int’l Shoe Co. v.
Washington, 326 U.S. 310, 319 (1945)). The Due
Process Clause requires that defendants have
“certain minimum contacts with [Hawaii] such that
the maintenance of the suit does not offend
traditional notions of fair play and substantial
justice.” Int’l Shoe, 326 U.S. at 316; Data Disc,
Inc. v. Systems Tech. Assocs., Inc., 557 F.2d
supplemental jurisdiction. The personal jurisdiction analysis is
the same, except that Fifth Amendment due process rights are also
In a “federal question case [in which] a federally
created right is at issue, we examine due process
in light of the fifth amendment rather than the
fourteenth amendment.” Dakota Indus., Inc. v.
Dakota Sportswear, Inc., 946 F.2d 1384, 1389 n.2
(8th Cir. 1991). Although this is a federal
question case, the Fourteenth Amendment is also
involved in that determining whether personal
jurisdiction is present requires examining the
forum state’s long-arm statute. Genetic Implant
[Sys., Inc. v. Core-Vent Corp.], 123 F.3d [1455,]
1458 [(Fed. Cir. 1997)]. Hawaii’s long-arm
statute permits personal jurisdiction to the full
extent permitted by the Fourteenth Amendment. The
due process inquiry in this case therefore
concerns the protections provided by the Due
Process Clauses of both the Fifth and Fourteenth
Amendments, collapsing into a single inquiry.
Kowalski v. Anova Food, LLC, Civ. No. 11-00795 HG-RLP, 2012 WL
3308884, at *5 n.1 (D. Hawai`i Aug. 10, 2012) (some alterations
1280, 1287 (9th Cir. 1977). The minimum contacts
required mean that the defendant must have
purposefully availed itself of the privilege of
conducting activities within the foreign
jurisdiction, thereby invoking the benefits and
protections of the foreign jurisdiction’s laws.
See Asahi Metal Indus. Co. v. Sup. Court of Cal.,
480 U.S. 102, 109 (1987). In applying Due Process
Clause requirements, courts have created two
jurisdictional concepts – general and specific
A court may exercise general jurisdiction
over the defendant when the defendant is a
resident or domiciliary of the forum state, or the
defendant’s contacts with the forum state are
continuous, systematic, and substantial.
Helicopteros Nacionales de Columbia, S.A. v. Hall,
466 U.S. 408, 414-16 [104 S. Ct. 1868, 80 L. Ed.
2d 404 (1984)]; Data Disc, 557 F.2d at
1287 . . . .
. . . .
Specific jurisdiction, on the other hand, may
be found when the cause of action arises out of
the defendant’s contact or activities in the forum
state. See Roth v. Garcia Marquez, 942 F.2d 617,
620 (9th Cir. 1991); Data Disc, 557 F.2d at
1287. . . .
Id. at 1077-78 (some alterations in Barranco) (some citations
Although Plaintiff pled general jurisdiction, [Amended
Complaint at ¶ 10 (pg. 5),] at the hearing on the Motions,
Plaintiff’s counsel represented that Plaintiff is not contending
that there is general jurisdiction.
Based on this representation
and its own review of Plaintiff’s factual allegations and the
relevant case law, this Court concludes that it does not have
general jurisdiction over either Lattman or the Bear Valley
Minimum Contacts Analysis
[The Ninth Circuit] employ[s] a three-part test to
determine if a defendant has sufficient minimum
contacts to be subject to specific personal
(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 forumrelated activities; and
(3) the exercise of jurisdiction must
comport with fair play and substantial
justice, i.e. it must be reasonable.
Brayton Purcell [LLP v. Recordon & Recordon], 606
F.3d [1124,] 1128 [(9th Cir. 2010)] (quoting
Schwarzenegger, 374 F.3d at 802) (internal
quotation marks omitted). As Washington Shoe
bears the burden of establishing the district
court’s jurisdiction over A–Z, it must satisfy the
first two prongs. If it does so, then A–Z must
come forward with a “‘compelling case’ that the
exercise of jurisdiction would not be reasonable.”
CollegeSource, Inc. v. AcademyOne, Inc., 653 F.3d
1066, 1076 (9th Cir. 2011) (quoting Burger King
Corp. v. Rudzewicz, 471 U.S. 462, 477, 105 S. Ct.
2174, 85 L. Ed. 2d 528 (1985)).
Washington Shoe Co. v. A-Z Sporting Goods, Inc., 704 F.3d 668,
672 (9th Cir. 2012) (footnote omitted).
“Purposeful direction requires a defendant to have
(1) committed an intentional act, (2) expressly aimed at the
forum state, [and] (3) causing harm that the defendant knows is
likely to be suffered in the forum state.”
Lazar v. Kroncke, 862
F.3d 1186 (9th Cir. 2017) (alteration in Lazar) (citations and
internal quotation marks omitted).
In analyzing whether a
defendant purposefully directed his activities at the forum
state, the district court must focus upon “the relationship
between the defendant, the forum, and the litigation.”
v. Hawaii, CIV. NO. 17-00163 HG-RLP, 2017 WL 3187215, at *4 (D.
Hawai`i July 26, 2017) (citing Walden v. Fiore, 134 S. Ct. 1115,
Under the Walden analysis, “the relationship must
arise out of contacts that the defendant himself creates with the
forum State,” and the court must “look to the defendant’s
contacts with the forum State itself, not the defendant’s
contacts with persons who reside there.”
134 S. Ct. at 1122.
Plaintiff argues that Lattman purposefully directed his
activities at Hawai`i because he purchased Plaintiff’s maps and
sent payment checks and correspondence to Plaintiff in Hawai`i
from 2005 to 2012.
See Decl. of Peter Cannon (“Cannon Decl.”),
filed 4/7/17 (dkt. no. 26), at ¶¶ 29, 32.3
Further, it contends
The original version of the Cannon Declaration that
Plaintiff filed with the Lattman Opposition was not properly
Lattman’s sale of the infringing products was expressly aimed at
Hawai`i because Plaintiff knew about F. Nielsen’s termination and
that the intellectual property F. Nielsen used to create the
products Lattman distributed after the termination belonged to
Similar arguments are made regarding the Bear Valley
Defendants’ purposeful direction.
Plaintiff’s interactions with Lattman and with the Bear
Valley Defendants are insufficient to establish purposeful
direction under Walden because these interactions did not create
meaningful connections by either Lattman or the Bear Valley
Defendants with Hawai`i.
See Walden, 134 S. Ct. at 1122 (“the
plaintiff cannot be the only link between the defendant and the
forum”); id. (“however significant the plaintiff’s contacts with
the forum may be, those contacts cannot be decisive in
determining whether the defendant’s due process rights are
violated” (citation and internal quotation marks omitted)); id.
at 1125 (“The proper question is not where the plaintiff
experienced a particular injury or effect but whether the
defendant’s conduct connects him to the forum in a meaningful
Plaintiff, however, argues that, in Walden, the United
States Supreme Court “expressly said its ruling did not apply to
situations involving the Internet.”
[Bear Valley Opp. at 19
signed. [Dkt. no. 25-1.] Peter Cannon is Plaintiff’s chief
executive officer. [Cannon Decl. at ¶ 1.]
(citing Walden, 134 S. Ct. 1125 n.9).]
First, no allegation exists in the Amended Complaint
that Lattman sold the allegedly infringing products on the
See also Lattman Motion, Decl. of Def. Gale Dean
Lattman in Supp. of Def. Gale Dean Lattman’s Motion to Dismiss
(“Lattman Decl.”) at ¶ 7 (“I never offered the maps for sale on
the Internet, or advertised them for sale on the Internet.”).
Plaintiff has not presented any argument why the Walden analysis
should not apply to Lattman.
Second, the Supreme Court in Walden stated:
Respondents warn that if we decide petitioner
lacks minimum contacts in this case, it will bring
about unfairness in cases where intentional torts
are committed via the Internet or other electronic
means (e.g., fraudulent access of financial
accounts or “Peiching” schemes). As an initial
matter, we reiterate that the “minimum contacts”
inquiry principally protects the liberty of the
nonresident defendant, not the interests of the
plaintiff. World-Wide Volkswagen Corp. v.
Woodson, 444 U.S. 286, 291-292, 100 S. Ct. 559, 62
L. Ed. 2d 490 (1980). In any event, this case
does not present the very different questions
whether and how a defendant’s virtual “presence”
and conduct translate into “contacts” with a
particular State. . . . We leave questions about
virtual contacts for another day.
134 S. Ct. at 1125 n.9 (emphasis added).
that Walden does not apply in cases where the Internet is
“involved” goes too far.
The Supreme Court merely indicated that
the analysis did not apply where jurisdiction was based on a
defendant’s virtual contacts with the forum state.
That is not
the case here.
While the Amended Complaint alleges that the Bear
Valley Defendants had online sales of the map they collaborated
with F. Nielsen on, the Amended Complaint does not allege that
the Bear Valley Defendants had a virtual presence in Hawai`i.
See also Bear Valley Motion, Decl. of Def. Derek Harmon in Supp.
of Defs. Derek Hermon and Bear Valley Bikes Speed-Evolution,
Inc.’s Motion to Dismiss (“Hermon Decl.”) at ¶ 14 (“none of the
maps sold online have been sent to Hawaii.”).
Neither Plaintiff’s claims against Lattman nor its
claims against the Bear Valley Defendants involve the “virtual
contacts” to which the Walden analysis are inapplicable.
the Walden analysis applies here, and the contacts with Hawai`i
alleged against Lattman and the Bear Valley Defendants are
insufficient under that analysis.
In sum, Plaintiff has failed
to allege that either Lattman or the Bear Valley Defendants
purposefully directed their activities to Hawai`i, and the
factual allegations of the Amended Complaint are insufficient to
allege that either Lattman or the Bear Valley Defendants
purposefully availed themselves of the privileges of conducting
business in Hawai`i.
Other Washington Shoe Prongs
The second Washington Shoe prong requires that the
plaintiff’s claim arise out of the defendant’s forum-related
Washington Shoe, 704 F.3d at 672.
This factor is
not met because neither Lattman nor the Bear Valley Defendants
have forum-related activities.
The third Washington Shoe prong requires that the
exercise of jurisdiction over the defendant be reasonable.
Exercising jurisdiction over either Lattman or the Bear Valley
Defendants would be unreasonable where Plaintiff has not
established the first two prongs of the analysis.
This Court therefore concludes that it does not have
specific jurisdiction over either Lattman or the Bear Valley
Defendants under the minimum contacts analysis.
Plaintiff also argues that this Court has specific
jurisdiction over Lattman and the Bear Valley Defendants because
of their violation of the Permanent Injunction.
on SEC v. Homa, in which the Seventh Circuit stated:
[A] person who knowingly circumvents a freeze
order is subject to a show cause order and
contempt and thereby submits to the jurisdiction
of the court for contempt proceedings, as held in
Waffenschmidt [v. MacKay], 763 F.2d [711,] 714
[(5th Cir. 1985)]; Fed. R. Civ. P. 65.
“Nonpareils who reside outside the territorial
jurisdiction of a district court may be subject to
that court’s jurisdiction if, with actual notice
of the court’s order, they actively aid and abet a
party in violating that order. This is so despite
the absence of other contacts with the forum.”
Id. Jurisdiction over persons who knowingly
violate a court’s injunctive order, even those
without any other contact with the forum, is
“necessary to the proper enforcement and
supervision of a court’s injunctive authority and
offends no precept of due process.” Id. at 716.
514 F.3d 661, 674-75 (7th Cir. 2008).
The Ninth Circuit,
however, has never adopted the Homa analysis.
Further, as the
Bear Valley Defendants point out, knowledge of the Settlement
Agreement and Permanent Injunction between Plaintiff and
F. Nielsen only came about when Hermon was served with the
Complaint in the instant case.
[Hermon Decl. at ¶ 16.]
even if this Court were inclined to follow Homa, the Bear Valley
Defendants could not have intentionally violated the Permanent
Injunction until after being served with the lawsuit, and they
argue that any post-filing violation cannot be the basis for
personal jurisdiction over them pursuant to Farmers Insurance
Exchange v. Portgage La Prairie Mutual Insurance Co., 907 F.2d
911 (9th Cir. 1990).
In Farmers, the Ninth Circuit held that
“[only contacts occurring prior to the event causing the
litigation may be considered” in the minimum contacts analysis.
907 F.2d at 913.
Farmers, however, does not address the specific issue
of whether an alleged intentional violation of a district court’s
injunction confers personal jurisdiction over a defendant over
whom the court would not otherwise have jurisdiction.
directly on point, and its analysis is largely based upon the
Federal Rules of Civil Procedure and Supreme Court case law.
First, a court possesses the independent
authority to enforce its own injunctive decrees.
[Waffenschmidt, 763 F.2d] at 716. In this
respect, Rule 65(d), which governs the contents
and scope of injunctions, must be regarded as a
codification rather than a limitation on a federal
court’s inherent power to protect its ability to
render a binding judgment. Berry v. Midtown Serv.
Corp., 104 F.2d 107, 110 (2d Cir. 1939).
Second, the injunctive mandate of a federal
court runs nationwide, and the issuing court has
the authority to deal with defiance of its order
regardless of where that defiance occurs.
Waffenschmidt, 763 F.2d at 716. Indeed, the court
whose order was defied must enforce the injunction
through the contempt power because contempt is, in
essence, an affront to the court that issues the
order. Id. As the Supreme Court put it in In re
[The power of a court to make an order
carries with it the equal power to punish for
a disobedience of that order, and the inquiry
as to the question of disobedience has been,
from time immemorial, the special function of
the court. And this is no technical rule.
In order that a court may compel obedience to
its orders, it must have the right to inquire
whether there has been any disobedience
thereof. To submit the question of
disobedience to another tribunal, be it a
jury or another court, would operate to
deprive the proceeding of half its
efficiency. . . . [Every court, at least of
the superior kind, in which great confidence
is placed, must be the sole judge, in the
last resort, of concepts arising therein.
158 U.S. 564, 594-95, 15 S. Ct. 900, 39 L. Ed.
1092 (1895), abrogated in the criminal contempt
context as recognized by United States v. Dixon,
509 U.S. 688, 113 S. Ct. 2849, 125 L. Ed. 2d 556
Third, an injunction binds not only the
parties to the injunction but also Nonpareils who
act with the named party. Commenting on
Rule 65(d), the Supreme Court has noted that the
is derived from the common-law doctrine that
a decree of injunction not only binds the
parties defendant but also those identified
with them in interest, in “privity” with
them, represented by them or subject to their
control. In essence . . . defendants may not
nullify a decree by carrying out prohibited
acts through aiders and abettors, although
they were not parties to the original
Regal Knitwear Co. v. NLRB, 324 U.S. 9, 14, 65 S.
Ct. 478, 89 L. Ed. 661 (1945). In Stettler v.
Able, 870 F.2d 1158, 1164 (7th Cir. 1989), we
specifically noted the vitality of this rule and
its implementation through Rule 71. Indeed, if
courts did not have the power to punish those who
cooperate with those named in an injunction, the
named parties could easily thwart the injunction
by operating through others.
Homa, 514 F.3d at 673-74 (some alterations in Homa).
Reebok International Ltd. v. McLaughlin, 49 F.3d 1387 (9th Cir.
1995), suggests that the Ninth Circuit would be inclined to adopt
the Homa analysis under circumstances such as those presented in
the instant case.
Homa relied heavily on Waffenschmidt, and in Reebok,
the Ninth Circuit stated:
Although Waffenschmidt speaks in expansive terms,
it was speaking about the authority of district
courts within the United States. The court
grounded its decision on the simple fact that the
“mandate of an injunction issued by a federal
district court runs nationwide. . . .” [763 F.2d]
at 716. That being so, the court could hold
enjoined parties in contempt, no matter in what
state they violated the court’s orders. Id. As
the court went on to say: “The nationwide scope of
an injunction carries with it the concomitant
power of the court to reach out to Nonpareils who
knowingly violate its orders.” Id. at 717. Once
the court accepted that proposition, it is not
surprising that it determined that a national
court which could issue nationwide orders could
also reach out and enforce those orders on a
nationwide basis by taking personal jurisdiction
over violators. Of course, in Waffenschmidt the
individuals held in contempt had accepted assets
from the enjoined party after they knew that he
was enjoined from transferring those assets. Id.
A finding of personal jurisdiction over the
violators in that instance may be sound, even
necessary. . . .
49 F.3d at 1391-92.
The Ninth Circuit ultimately declined to
apply the Waffenschmidt analysis in Reebok because the plaintiff
was seeking contempt sanctions against Banquet Internationale a
Luxembourg S.A. (“BIL”) for violating a district court temporary
restraining order (“TRO”).
Id. at 1389, 1392.
The Ninth Circuit
[The strength of the analysis begins to crumble
when a district court seeks to reach out across
the Atlantic in an attempt to impose conflicting
duties on another country’s nationals within its
own borders. It is a general principle that one
state cannot require a person “to do an act in
another state that is prohibited by the law of
that state or by the law of the state of which he
is a national,” nor can the person be required to
refrain from an act that is required. Restatement
(Third) of the Foreign Relations Law of the United
States § 441(1)(a) (1987). Cf. In re
Establishment Inspection of Her Iron Works, 881
F.2d 722, 726 n.11 (9th Cir. 1989) (“The
invalidity of the underlying order is always a
defense to a civil contempt charge.”). The record
demonstrates that Luxembourg banking law normally
compels both the release of depositors’ funds on
demand and strict secrecy regarding bank accounts.
At the very least, those banking laws meant that
BIL was subjected to conflicting legal demands,
but that would assume that the TRO had some force
in Luxembourg. In fact, however, the TRO had no
effect in Luxembourg because it was never
Id. at 1392.
The international concerns in Reebok do not exist
in the instant case, which involves the circumstances where the
Waffenschmidt analysis is “sound, even necessary.”
Court therefore concludes that the Homa analysis is appropriate
in the instant case.
Count VII alleges violations of the Permanent
Injunction and effectively seeks contempt sanctions.
requires a knowing violation of an injunction to support the
exercise of personal jurisdiction over a defendant in spite of
the defendant’s lack of other contacts with the forum state.
Plaintiff has alleged:
Defendant Frank Nielsen’s entering into the
settlement agreement and consent judgment and
injunction in Hawaii and then breaching them with
the knowing assistance, aid, abetment and
conspiracy of his wife Cynthia Nielsen, and on
information and belief, Lattman’s, Hermon’s, and
Whitter’s awareness of that settlement agreement
and consent judgment and injunction when they
acted, provides personal jurisdiction over Frank
and Cynthia Nielsen, Lattman, Hermon, Whitter and
the personal/family businesses they owned and
controlled: Green Planet Maps, LLC (owned by Frank
and Cynthia Nielsen), Bear Valley Bikes
Speed-Evolution, Inc. (owned by Derek Hermon), and
Palm Traders LLC (owned by Vicki Whitter) . . . .
[Amended Complaint at ¶ 10, pg. 4.]
This is sufficient to allege
that Lattman and the Bear Valley Defendants had knowledge of the
Further, the Permanent Injunction was
attached to both the original Complaint and the Amended Complaint
as an exhibit.
[Complaint, Exh. H; Amended Complaint, Exh. H.]
Count VII alleges that Lattman’s and the Bear Valley Defendants’
“wrongful actions constitute violations of” the Permanent
[Amended Complaint at ¶ 79.]
Plaintiff also alleges
that all of the defendants’ conduct is on-going.
See id. at ¶ 57
(“Defendants have continued to infringe [Plaintiff’s] copyrighted
designs and[,] unless enjoined by order of this Court, will
continue to infringe said copyrights[.]”).4
In light of the foregoing, the Amended Complaint
alleges a sufficient basis for this Court to exercise personal
jurisdiction over Lattman and the Bear Valley Defendants –
despite lack of contacts with Hawai`i – to enforce the Permanent
To the extent that the Lattman Motion and the Bear
Valley Motion seek dismissal of Count VII for lack of personal
jurisdiction, the Motions are denied.
Plaintiff also argues that this Court’s personal
jurisdiction over Lattman and the Bear Valley Defendants for
purposes of Count VII also allows this Court to exercise
jurisdiction over them for purposes of Plaintiff’s other claims.
This Court notes that, at the hearing on the Motions, the
Bear Valley Defendants’ counsel acknowledged that the Bear Valley
Defendants continue to sell the products at issue in this case.
Plaintiff’s other counts do not seek to enforce the Permanent
Injunction; they assert affirmative claims for relief.
the other counts arise from the same set of facts as Count VII,
they are independent claims and the finding of personal
jurisdiction for purposes of Count VII does not automatically
confer jurisdiction as to the other counts.
Plaintiff has not
submitted any authority to support its position that the Homa
analysis applies to its affirmative claims, nor has this Court
The cases applying Homa are limited to the context of
See, e.g., Clearance Commc’ns, Inc. v. Bowers,
651 F.3d 1200, 1215–16 (10th Cir. 2011) (“Because we find the
Seventh Circuit’s analysis in Homa persuasive, we adopt its rule
and hold that a district court may properly exercise personal
jurisdiction over a nonparty for purposes of entering contempt
orders, when the nonparty, with actual notice of an injunctive
order issued by the district court, and in active concert or
participation with a party, violates that order.”); F.T.C. v.
Asia Pac. Telecom, Inc., 788 F. Supp. 2d 779, 781, 789 (N.D. Ill.
2011) (applying Homa in an order declining to hold the defendants
in contempt of court); S.E.C. v. Bilzerian, 613 F. Supp. 2d 66,
68, 73 (D.D.C. 2009) (applying Homa in an order holding the
defendant in contempt), decision clarified on reconsideration,
641 F. Supp. 2d 16, and aff’d, 410 F. App’x 346 (D.C. Cir. 2010).
The policies behind the personal jurisdiction analysis
and a court’s ability to enforce its injunctions nationwide do
not support an extension of the Homa analysis to Plaintiff’s
“The Due Process Clause of the Fourteenth
Amendment constrains a State’s authority to bind a nonresident
defendant to a judgment of its courts.”
Walden, 134 S. Ct. at
The Supreme Court has emphasized that “Due [P]rocess
limits on the State’s adjudicative authority principally protect
the liberty of the nonresident defendant - not the convenience of
plaintiffs or third parties.”
Id. at 1122.
In addition, a
district court must have the ability to enforce its injunctions
nationwide to preserve the authority and effectiveness of its
orders and because requiring another tribunal to determine
whether a district court’s injunction has been violated “would
operate to deprive the [injunction] proceeding of half its
Homa, 514 F.3d at 674 (quoting In re Debs, 158 U.S.
Extending personal jurisdiction under the Homa analysis
to Plaintiff’s affirmative claims would not further the policy
behind nationwide enforcement of court injunctions, even if the
affirmative claims arise from the same conduct that constitutes a
violation of the injunction.
Extending personal jurisdiction to
Plaintiff’s affirmative claims would violate Lattman’s and the
Bear Valley Defendants’ Due Process rights because there would be
no personal jurisdiction over them but for the violation of the
Moreover, lack of personal jurisdiction
over these affirmative claims does not impair Plaintiff’s ability
to enforce the Permanent Injunction in this district.
analysis therefore does not allow the exercise of personal
jurisdiction over Plaintiff’s affirmative claims.5
Because there is no basis for this Court to exercise
personal jurisdiction over Lattman and the Bear Valley Defendants
as to Counts I, II, III, IV, VI, and VIII, the Motions are
granted insofar as those claims are dismissed.
It is arguably possible to amend its jurisdictional
allegations to plead a factual basis for specific jurisdiction
under the minimum contacts analysis.
Dismissal must therefore be
See Sonoma Cty. Ass’n of Retired Emps. v.
Sonoma Cty., 708 F.3d 1109, 1118 (9th Cir. 2013) (“As a general
rule, dismissal without leave to amend is improper unless it is
clear, upon de novo review, that the complaint could not be saved
by any amendment.” (brackets, citation, and internal quotation
Plaintiff is granted leave to file a second
This Court acknowledges that, from the perspective of
judicial economy, it does not seem to make much sense to require
Plaintiff to file its affirmative claims in multiple other
jurisdictions, as opposed to allowing Plaintiff to pursue all of
its claims arising out of the conduct which constitutes
violations of the Permanent Injunction together with its attempt
to enforce the injunction in this district court. However,
judicial economy cannot override the defendants’ Due Process
amended complaint in order to address the jurisdictional defects
identified in this Order.
To the extent that the Motions argue
that the dismissal of Counts I to VI and Count VIII for lack of
personal jurisdiction should be with prejudice, the Motions are
Dismissal for Improper Venue
Pursuant to Fed. R. Civ. P. 12(b)(3), Lattman and the
Bear Valley Defendants also seek dismissal based on improper
In light of this Court’s rulings regarding personal
jurisdiction, the only remaining claim in this case is Count VII.
Venue is proper in this district court as to Count VII because of
this Court’s authority to enforce its Permanent Injunction.
28 U.S.C. § 1391(b)(2) (“A civil action may be brought in . . . a
judicial district in which a substantial part of the events or
omissions giving rise to the claim occurred, or a substantial
part of property that is the subject of the action is
The Lattman Motion and the Bear Valley Motion are
denied, to the extent that they seek dismissal of Count VII based
on improper venue.
This Court has dismissed Counts I to VI and Count VIII
for lack of personal jurisdiction, but has granted Plaintiff
leave to file a second amended complaint to cure the
It is therefore premature to address
whether this district court is an improper venue as to the claims
Plaintiff attempted to allege in Counts I to VI and Count VIII of
the Amended Complaint.
The Lattman Motion and the Bear Valley
Motion are denied, to the extent that they seek dismissal of
Counts I to VI and Count VIII based on improper venue.
denial is without prejudice insofar as Lattman and the Bear
Valley Defendants may revisit this argument, if appropriate,
after Plaintiff files its second amended complaint.
Transfer of Venue
Lattman argues that, even if this Court concludes that
venue is proper in this district, it should transfer the case
against him to the Eastern District of California pursuant to 28
U.S.C. § 1404(a), which states: “For the convenience of parties
and witnesses, in the interest of justice, a district court may
transfer any civil action to any other district or division where
it might have been brought or to any district or division to
which all parties have consented.”
The following standard applies to a request to transfer
[A] district court may, pursuant to § 1404(a),
transfer any civil action to any other district or
division where it might have been brought if it is
in the interests of justice and convenient for the
parties and witnesses. See Lung v. Yachts Int’l,
Ltd., 980 F. Supp. 1362, 1370 (D. Haw. 1997). The
purpose of § 1404(a) is to prevent the waste of
time, energy, and money and to protect litigants,
witnesses, and the public against unnecessary
inconvenience and expense. Id. at 1369 (citing
Van Dusen v. Barrack, 376 U.S. 612, 616, 84 S. Ct.
805, 11 L. Ed. 2d 945 (1964)).
A motion to transfer venue under § 1404(a)
requires this court to weigh multiple factors to
determine whether transfer is appropriate. These
factors may include: (1) the location where the
relevant agreements were negotiated and executed,
(2) the state that is most familiar with the
governing law, (3) the plaintiff’s choice of
forum, (4) the respective parties’ contacts with
the forum, (5) the contacts relating to the
plaintiff’s cause of action in the chosen forum,
(6) the differences in the costs of litigation in
the two forums, (7) the availability of compulsory
process to compel attendance of unwilling nonparty
witnesses, and (8) the ease of access to sources
of proof. See Jones v. GNC Franchising, Inc., 211
F.3d 495, 498–99 (9th Cir. 2000).
S.E.C. v. Lyndon, Civil No. 13–00486 SOM–KSC, 2014 WL 2711966, at
*7 (D. Hawai`i June 13, 2014).
Because Count VII is the only claim before the Court at
this time, transfer of venue would not be in the interests of
justice because of this Court’s authority to enforce the
The Lattman Motion is therefore denied as
to Lattman’s request for transfer of venue as to Count VII.
Lattman’s request is denied as moot as to the other counts of the
The denial of Lattman’s request as to
Counts I to VI and Count VIII is without prejudice, insofar as
Lattman may revisit this argument, if appropriate, after
Plaintiff files its second amended complaint.
III. Failure to State a Claim
Lattman also argues that Counts II, III, IV, V, and VII
fail to state a claim upon which relief can be granted.
R. Civ. P. 12(b)(6).
Insofar as Counts II to V have been dismissed for lack
of personal jurisdiction, this Court construes the Lattman Motion
as arguing that the dismissal of those claims should be with
prejudice because amendment would be futile.
why Counts II to V fail to state a claim mirror his
jurisdictional argument – he asserts that Plaintiff cannot bring
claims against him for violating Hawai`i law if he did not have
any contacts with Hawai`i.
This Court rejects Plaintiff’s
arguments because this Court has already concluded that it is
arguably possible for Plaintiff to cure the defect in his factual
allegations regarding Lattman’s contacts with Hawai`i.
Lattman argues that Count VII fails to state a claim
because he is not bound by the Settlement Agreement and Permanent
As previously noted, the Permanent Injunction
applies to “Frank Nielsen and . . . any persons, businesses,
corporations, limited liability companies, or entities acting by,
through, under, in concert, or in participation with them.”
[Amended Complaint, Exh. H (Permanent Injunction) at 2.]
Further, Plaintiff alleges:
[F.] Nielsen and Green Planet may have helped
create the H20 to Go Delta map after they settled
with [Plaintiff], and if so, that wrongful
activity was not released in the settlement –
infringement as well as violation of the
Injunction and settlement agreement prohibitions
against making or distributing derivatives; making
or distributing any products concerning the same
location, subject matter or titles as
[Plaintiff’s] copyrighted designs; and/or using
[Plaintiff’s] software, computer or
programs . . . . The injunction covers those
acting in concert or participation with Nielsen,
which may include Lattman.
[Id. at ¶ 25 (emphasis omitted).]
Based on these allegations, read in the context of the
Amended Complaint as a whole, Plaintiff has stated a plausible
claim that Lattman violated the Permanent Injunction.
Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (“To survive a motion
to dismiss, a complaint must contain sufficient factual matter,
accepted as true, to ‘state a claim to relief that is plausible
on its face.’” (quoting Bell Atlantic Corp. v. Twombly, 550 U.S.
544, 570, 127 S. Ct. 1955 (2007))).
The Lattman Motion is denied as to Lattman’s argument
that Counts II, III, IV, V, and VII fail to state a claim.
On the basis of the foregoing, pro se Defendant
Gale Dean Lattman’s Motion to Dismiss, filed February 19, 2017,
and Defendants Derek Hermon and Bear Valley Bikes SpeedEvolution’s Motion to Dismiss, filed June 9, 2017, are HEREBY
GRANTED IN PART AND DENIED IN PART.
Both of the Motions are:
-GRANTED insofar as Counts I, II, III, IV, V, VI, and VIII of
Plaintiff Franko Maps, Ltd.’s Amended Complaint, [filed
11/15/16 (dkt. no. 12),] are DISMISSED;
-DENIED insofar as the dismissal of those claims is WITHOUT
-DENIED as to their requests to dismiss Count VII of the Amended
-DENIED as to their requests for dismissal based on improper
Further, the Lattman Motion is DENIED as to his request to
transfer venue and his request to dismiss Counts II, III, IV, V,
and VII for failure to state a claim.
Plaintiff is GRANTED leave to file a second amended
complaint by December 14, 2017.
Plaintiff is only granted leave
to amend its jurisdictional allegations.
Plaintiff does not have
leave to add any new parties, claims, or theories of liability.
If Plaintiff wishes to make such amendments, it must file a
motion for leave to amend, pursuant to Fed. R. Civ. P. 15(a)(2).
This Court also GRANTS Plaintiff leave to conduct jurisdictional
discovery prior to December 14, 2017.
If Plaintiff does not file
a second amended complaint by December 14, 2017, its case against
Lattman and the Bear Valley Defendants will proceed on Count VII
IT IS SO ORDERED.
DATED AT HONOLULU, HAWAII, September 29, 2017.
/s/ Leslie E. Kobayashi
Leslie E. Kobayashi
United States District Judge
FRANKO MAPS LTD. VS. FRANK NIELSEN, ET AL; CIVIL 16-00600 LEKRLP; ORDER GRANTING IN PART AND DENYING IN PART MOTIONS TO
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