Foreign Candy Company Inc v. Tropical Paradise Inc

Filing 21

ORDER: Granting 5 Motion to Dismiss: Denying Request for Jurisdictional Discovery in the 13 Response to Motion to Dismiss Complaint. Signed by Judge Mark W Bennett on 06/24/13. (kfs)

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF IOWA
WESTERN DIVISION
THE FOREIGN CANDY COMPANY,
INC.,
No. C 13-4005-MWB
Plaintiff,
vs.
TROPICAL PARADISE, INC., d/b/a
COOL TROPICS,

MEMORANDUM OPINION AND
ORDER REGARDING DEFENDANT’S
MOTION TO DISMISS

Defendant.
___________________________
TABLE OF CONTENTS
I. 

INTRODUCTION........................................................................... 3 
A. 
Factual Background ............................................................... 3 
1. 
The parties ................................................................... 4 
2. 
Jurisdictional facts ......................................................... 5 
B. 
Procedural Background ........................................................... 6 
1. 
Foreign Candy’s Complaint .............................................. 6 
2. 
Tropical Paradise’s Motion To Dismiss ................................ 7 

II. 

LEGAL ANALYSIS ........................................................................ 8 
A. 
Personal Jurisdiction .............................................................. 8 
1. 
Arguments of the parties .................................................. 8 
2. 
Applicable standards ..................................................... 11 
a. 
Rule 12(b)(2) standards ......................................... 11 
b. 
Due process requirements ...................................... 12 
c. 
Internet contacts ................................................. 15 
3. 
Analysis .................................................................... 24 
a. 
Nature and quality of contacts ................................ 24 
b. 
The quantity of contacts ........................................ 26 
c. 
The relationship of the contacts with the
cause of action.................................................... 28 
d. 
Interest and convenience of the forum....................... 29 
e. 
“Effects” in this forum ......................................... 30 

“Fair play and substantial justice” in the
totality of the circumstances ................................... 31 
4. 
Jurisdictional discovery ................................................. 32 
a. 
Arguments of the parties ....................................... 32 
b. 
Analysis ............................................................ 33 
5. 
Summary ................................................................... 34 
Venue ............................................................................... 34 
1. 
Arguments of the parties ................................................ 34 
2. 
Analysis .................................................................... 35 
f. 

B. 

III. 

CONCLUSION ............................................................................ 36 

In this action by a candy importer against a fruit juice seller, involving federal
and state law claims of trademark, trade dress, and copyright infringement and unfair
competition, the fruit juice seller’s motion to dismiss for lack of personal jurisdiction
and improper venue exemplifies the collision between modern conceptions of a “global
marketplace” and long-standing constitutional conceptions of due process. The United
States Supreme Court recognized, a decade and a half ago, that “[t]he Internet is ‘a
unique and wholly new medium of worldwide human communication,’”1 yet
commentators and courts have suggested that the analysis of personal jurisdiction based
on Internet activity “‘should not be different at its most basic level from any other

1

Reno v. American Civil Liberties Union, 521 U.S. 844, 850 (1997) (quoting the
district court below).
2

personal jurisdiction case.’”2 Here, the fruit juice seller, a New York corporation
based in Massachusetts with no business presence in Iowa, asserts that it simply has
insufficient contacts with this Iowa forum for the exercise of personal jurisdiction to
comport with due process. The candy importer, on the other hand, asserts that the fruit
juice seller has sufficient contacts for the exercise of personal jurisdiction to meet due
process requirements based on a link on the fruit juice seller’s otherwise passive
website to the website of a distributor from whom the fruit juice seller’s products can
be purchased online and based on a single purchase of the fruit juice seller’s products
from the distributor’s website for shipment to an Iowa customer (the plaintiff’s
president, chief executive officer (CEO), and owner).
I.
A.

INTRODUCTION
Factual Background

Because this case is before me on a motion to dismiss, and no jurisdictional
discovery has been authorized or conducted, the factual background is necessarily
drawn—at least in the first instance—from the factual allegations in the plaintiff’s
Complaint (docket no. 1). On a Rule 12(b)(2) motion to dismiss for lack of personal
jurisdiction, however, I may also consider affidavits and exhibits presented with the
motion and in opposition to it. See Dairy Farmers of Am., Inc. v. Bassett & Walker
Int’l, Inc., 702 F.3d 472, 474-75 (8th Cir. 2012). Where appropriate or necessary, I
have amplified the facts alleged in the Complaint with facts from such additional
sources. For present purposes, the focus is on facts relevant to personal jurisdiction
and venue, rather than all facts giving rise to the parties’ dispute.
2

See, e.g., Pervasive Software, Inc. v. Lexware GmbH & Co. KG, 688 F.3d
214, 226-27 (5th Cir. 2012) (quoting 4A CHARLES ALAN WRIGHT, ET AL., FED. PRAC.
& PROC. § 1073.1, at 327 (3d ed. 2002)).
3

1.

The parties

The Foreign Candy Company (Foreign Candy), the plaintiff in this action,
alleges that it is an Iowa corporation with its principal place of business in Hull, Iowa,
and that it is engaged in the business of importing, distributing, and selling candy
products.

Foreign Candy alleges that it is the exclusive owner of a number of

registered trademarks, including the following: “RIPS,” Registration No. 2,848,847
(the '847 Mark); “LET 'ER RIP,” Registration No. 2,738,693 (the '693 Mark); and
“RIP ROLLS,” Registration No. 2,763,991 (the '991 Mark). Foreign Candy describes
these marks collectively as “the RIP Marks.” See Complaint, Exhibits A-C. Foreign
Candy also alleges that it is the owner of the trade dress (Foreign Candy Trade Dress)
embodied in the packaging, label, and the like, used in connection with its RIPS
Products.

See Complaint, Exhibit E.

Further, Foreign Candy alleges that it has

applied for and been issued copyright certificates of registration for various
embodiments of its packaging (Foreign Candy’s Packaging) used in connection with the
RIPS Products, consisting of certificates of registration bearing Registration Nos. TX 7446-536, TX 7-452-638, TX 7-451-463, and TX 7-452-521, with effective dates of
September 7, 2011, September 8, 2011, September 9, 2011, and September 15, 2011,
respectively.
Tropical Paradise, Inc., doing business as Cool Tropics (Tropical Paradise), the
defendant in this action, alleges in its Motion To Dismiss (docket no. 5) that it is a New
York corporation headquartered in Bedford, Massachusetts. Foreign Candy alleges,
and Tropical Paradise has not yet disputed, that Tropical Paradise sells, offers for sale,
distributes, and advertises fruit juice packs available in a variety of fruit flavors under a
Cool Tropics brand name (the Cool Tropics Products). Foreign Candy alleges that
Tropical Paradise has adopted, used, and continues to use the term “RIPS” and the

4

phrase “LET IT RIP!,” Complaint, Exhibit D, in connection with the sale, offering for
sale, distribution, and advertising of the Cool Tropics Products.
The gravamen of Foreign Candy’s trademark infringement claims is its
allegation that, from about 2009 to the present, Tropical Paradise has offered and
continues to offer for sale, through its dealers and distributors, the Cool Tropics
Products that contain marks identical to or confusingly similar to Foreign Candy’s RIP
Marks, but that those products are not and were not distributed by Foreign Candy, the
owner of the RIP Marks.

Foreign Candy also alleges that Tropical Paradise has

adopted, used, and continues to use, in intrastate and interstate commerce, a packaging
and trade dress for its Cool Tropics Products (the Cool Tropics Trade Dress) that
creates an overall impression that is similar to, identical to, or confusingly similar to
Foreign Candy’s Trade Dress, including but not limited to, the font, coloring, and
placement of “RIPS” and “LET IT RIP!” on the packaging.

Finally, for present

purposes, Foreign Candy alleges that Tropical Paradise has knowingly and willfully
directly copied Foreign Candy’s Packaging for the specific purpose of infringing
Foreign Candy’s copyrights in furtherance of its business objectives, specifically,
selling its Cool Tropics Products.
2.

Jurisdictional facts

Foreign Candy alleges in its Complaint that Tropical Paradise operates and
conducts business in the Northern District of Iowa and has and is conducting business
and has committed acts of infringement of Foreign Candy’s RIP Marks in this judicial
district. Tropical Paradise disputes these allegations and avers, instead, that it is not
registered to do business in Iowa; has no registered agent for service of process in
Iowa; has no offices in Iowa; does not rent or own real estate in Iowa; and has no
customers or employees in the state. Indeed, Tropical Paradise avers that it has not
sold even a single item in the State of Iowa in at least the last ten years. Tropical
5

Paradise also contends that none of the allegedly infringing or wrongful conduct at issue
in Foreign Candy’s Complaint occurred in Iowa, and Foreign Candy has not even
alleged that it did.
In its Response (docket no. 13) to Tropical Paradise’s Motion To Dismiss,
Foreign Candy avers that, on Tropical Paradise’s website (www.cool-tropics.com),
Tropical Paradise advertises the Cool Tropics Products as “NOW AVAILABLE FOR
PURCHASE!” with a direct link to an online retailer’s website (www.coffeecow.com),
operated by CofeeCow.com. Foreign Candy alleges that CoffeeCow.com has been and
continues to be a distributor of the Cool Tropics Products, and that customers may
direct that the Cool Tropics Products purchased on CoffeeCow.com’s website be
shipped to Iowa by selecting “Iowa” from a drop-down menu listing U.S. states.
Indeed, Foreign Candy’s president, CEO, and owner, Peter W. De Yager, avers that,
on or about November 12, 2012, before Foreign Candy’s Complaint was filed on
January 10, 2013, he clicked the link on the Tropical Paradise website to the online
retailer, proceeded through the required steps, and purchased and had shipped to his
home in Hull, Iowa, and later received, various Cool Tropics RIPS Products. See
Response, Exhibit C. In its reply, Tropical Paradise asserts that its website is not
interactive, but simply provides a link to an unaffiliated third party’s website to
purchase Cool Tropics Products.

B.
1.

Procedural Background

Foreign Candy’s Complaint

Beginning in about 2009, the parties engaged in unsuccessful attempts to resolve
their disputes, involving various exchanges of correspondence between their respective
attorneys. On January 10, 2013, Foreign Candy filed its Complaint (docket no. 1)
initiating this action for trademark infringement, trade dress infringement, false
6

designation of origin, false representation and description, and other unfair competitive
conduct by Tropical Paradise, in violation of the Lanham Act, 15 U.S.C. §1051 et
seq.; Sections 32 and 43(a) of the Lanham Act, 15 U.S.C. §§1114 and 1125(a),
respectively; the Iowa Trademark Act, Chapter 548 (Iowa Code) and Iowa unfair
competition at common law; copyright infringement in violation of the Copyright Act,
17 U.S. C. § 101 et seq.; and common law trademark and other rights. Somewhat
more specifically, in Count I of its Complaint, Foreign Candy alleges a federal
trademark infringement claim pursuant to 15 U.S.C. § 1114; in Count II, Foreign
Candy alleges a false designation of origin claim pursuant to 15 U.S.C. § 1125(a); in
Count III, Foreign Candy alleges an infringement of trade dress claim pursuant to 15
U.S.C. § 1125; in Count IV, Foreign Candy alleges a trademark violation and unfair
competition claim under Iowa law; in Count V, Foreign Candy alleges a common-law
trademark infringement claim; and in Count VI, Foreign Candy alleges a copyright
infringement claim pursuant to 17 U.S.C. § 501.
2.

Tropical Paradise’s Motion To Dismiss

On April 11, 2013, Tropical Paradise filed a pre-answer Motion To Dismiss
(docket no. 5), seeking dismissal of Foreign Candy’s Complaint for lack of personal
jurisdiction and improper venue, pursuant to Rules 12(b)(2) and 12(b)(3) of the Federal
Rules of Civil Procedure, respectively, accompanied by an affidavit of Fadi S.
Massabni, the CEO of Tropical Paradise. On May 13, 2013, Foreign Candy filed its
Response To Motion To Dismiss Complaint (docket no. 13), accompanied by three
exhibits,

consisting

of

“screen

shots”

from

www.cool-tropics.com,

www.coffeecow.com, and an affidavit by Mr. De Yager, accompanied by its own
exhibit, consisting of a packing slip for Cool Tropics Products that Mr. De Yager
ordered online from www.coffeecow.com and had shipped to his address in Iowa.
Foreign Candy’s brief in support of its Response included a request that, if I determine
7

that Foreign Candy has not made a prima facie showing of personal jurisdiction over
Tropical Paradise, I grant Foreign Candy the opportunity to conduct jurisdictional
discovery, because the facts known to date give rise to additional unknown facts that
are solely under the control of Tropical Paradise and are otherwise difficult, if not
impossible, to determine without formal discovery.

On May 30, 2013, Tropical

Paradise filed its Reply Brief In Support Of Motion To Dismiss (docket no. 19),
reiterating that there is no basis for the exercise of personal jurisdiction over it and
asserting that jurisdictional discovery is not appropriate in this case.
No party requested oral arguments on Tropical Paradise’s Motion To Dismiss in
the manner required by applicable local rules, and I do not find that oral arguments are
necessary, in light of the sufficiency of the parties’ briefing and other written
submissions. Therefore, I will deem the Motion To Dismiss fully submitted on the
parties’ written submissions.
II.

LEGAL ANALYSIS

A.

Personal Jurisdiction

Tropical Paradise seeks dismissal of Foreign Candy’s Complaint, first, on the
ground that this court lacks personal jurisdiction over Tropical Paradise.

Foreign

Candy disputes that contention.
1.

Arguments of the parties

Tropical Paradise asserts that it lacks sufficient “minimum contacts” with Iowa
to support “general” jurisdiction, and Foreign Candy does not argue otherwise.
Tropical Paradise also asserts that it lacks sufficient “minimum contacts,” from which
any of Foreign Candy’s claims arise, for the exercise of “specific” jurisdiction to be
proper, a contention that Foreign Candy does dispute. More specifically, Tropical
Paradise argues that it has not engaged in any business transaction in Iowa for at least
8

ten years. It also argues that, while it maintains a general information website, that
website is not specifically directed toward residents of Iowa, but is a “passive” website
that does not establish sufficient “minimum contacts” to create personal jurisdiction
over Tropical Paradise in this state. Indeed, Tropical Paradise argues that these facts
make clear that it in no way “purposefully availed” itself of the benefits of doing
business in Iowa, such that it could expect to be haled into court here, that forcing it to
litigate in Iowa would offend traditional notions of fair play and substantial justice, and
that the exercise of personal jurisdiction would, consequently, violate due process.
In contrast, Foreign Candy contends that consideration of the pertinent factors
demonstrates that exercising specific personal jurisdiction over Tropical Paradise would
comport with due process.

Foreign Candy argues that the nature and quality of

Tropical Paradise’s contacts with Iowa through its website are sufficient, because that
website has a link to a distributor’s website, where the Cool Tropics Products can be
purchased, raising it above a merely “passive” website into an “active” website.
Foreign Candy asserts that other courts have found that sales through a website that
included the forum as a potential shipping destination, like Tropical Paradise’s
distributor’s website does, were sufficient for the defendant to reasonably anticipate
being haled into the forum. Indeed, Foreign Candy contends that its CEO made an
online purchase and had Cool Tropics Products shipped to Iowa. Foreign Candy also
argues that courts within this Circuit have recognized that a single purchase by a
plaintiff’s counsel in the forum was sufficient contact with the forum for personal
jurisdiction purposes, although Foreign Candy does not cite any decisions so holding by
any such courts.

Foreign Candy argues, next, that there is a strong relationship

between its causes of action and Tropical Paradise’s contacts, because the contacts
through the website involve the sale of infringing products, so that those sales directly
cause the alleged harm to Foreign Candy, a forum resident. Foreign Candy also argues
9

that the interest of the forum state and the convenience of the parties also weigh in
favor of personal jurisdiction here over Tropical Paradise, because Iowa has a
significant interest in giving an Iowa resident a convenient forum to adjudicate injuries
by out-of-state actors, and Tropical Paradise has not asserted what alternative forum
might be more appropriate.
In addition, Foreign Candy argues that the “effects” test warrants the exercise of
personal jurisdiction over Tropical Paradise in this case, because Tropical Paradise has
continued infringing activity even after notice from Foreign Candy, from as early as
2009, that Tropical Paradise’s activities were causing effects in Iowa by injuring an
Iowa resident. Indeed, Foreign Candy asserts that, because Tropical Paradise had such
notice, it knew that its continuing infringing activity would have a potentially
devastating impact on Foreign Candy in Iowa.
In reply, Tropical Paradise reiterates that its website is merely “passive,” so that
it cannot be the basis for the exercise of personal jurisdiction in Iowa.

Tropical

Paradise contends that its website is not even a “middle ground” website, because it
does not allow for the direct purchase of its products.

Rather, Tropical Paradise

contends, any purchase was from another independent online retailer, although that
retailer could be reached by a link from Tropical Paradise’s website. Tropical Paradise
argues that its website does not provide for any other interaction or exchange of
information between customers and Tropical Paradise’s website, but only allows
visitors to provide contact information to the company so that the company may contact
them via telephone or e-mail. Tropical Paradise attempts to distinguish cases on which
Foreign Candy relies, while arguing that, contrary to Foreign Candy’s contentions,
courts have consistently found that a website like Tropical Paradise’s is not enough for
personal jurisdiction. Tropical Paradise also argues that Foreign Candy’s reliance on
the “effects” test is unavailing, because the Eighth Circuit Court of Appeals construes
10

that test narrowly, as only an additional factor in the personal jurisdiction analysis, not
as the basis for personal jurisdiction when traditional contacts are absent.
2.

Applicable standards

It does not appear that the Federal Circuit Court of Appeals has ever held that
personal jurisdiction in a copyright or trademark case is a matter governed by Federal
Circuit law rather than the law of the regional circuit. Therefore, I will apply Eighth
Circuit standards to the personal jurisdiction issue presented here.
a.

Rule 12(b)(2) standards

As the Eighth Circuit Court of Appeals recently explained, “Personal jurisdiction
over a defendant represents the power of a court to enter ‘a valid judgment imposing a
personal obligation or duty in favor of the plaintiff.’” Viasystems, Inc. v. EBM-Papst
St. Georgen GmbH & Co., KG, 646 F.3d 589, 592-93 (8th Cir. 2011) (quoting Kulko
v. Superior Court of Cal., 436 U.S. 84, 91 (1978)). Rule 12(b)(2) of the Federal Rules
of Civil Procedure authorizes a pre-answer motion to dismiss for “lack of personal
jurisdiction.” FED. R. CIV. P. 12(b)(2).
As the Eighth Circuit Court of Appeals recently explained,
“To allege personal jurisdiction, ‘a plaintiff must state
sufficient facts in the complaint to support a reasonable
inference that the defendant[ ] can be subjected to
jurisdiction within the state.’” Wells Dairy, Inc. v. Food
Movers Int’l, Inc., 607 F.3d 515, 518 (8th Cir.) (quoting
Dever v. Hentzen Coatings, Inc., 380 F.3d 1070, 1072 (8th
Cir. 2004)), cert. denied, ––– U.S. ––––, 131 S.Ct. 472,
178 L.Ed.2d 289 (2010). “If the defendant controverts or
denies jurisdiction, the plaintiff bears the burden of proving
facts supporting personal jurisdiction.” Id. Its “showing
must be tested, not by the pleadings alone, but by the
affidavits and exhibits presented with the motions and in
opposition thereto.” Id. (internal quotation marks omitted).

11

Dairy Farmers of Am., Inc. v. Bassett & Walker Int’l, Inc., 702 F.3d 472, 474-75 (8th
Cir. 2012); Pangaea, Inc. v. Flying Burrito, L.L.C., 647 F.3d 741, 744-45 (8th Cir.
2011) (“Where, as here, ‘the district court does not hold a hearing and instead relies on
pleadings and affidavits, . . . the court must look at the facts in the light most favorable
to the nonmoving party, and resolve all factual conflicts in favor of that party.’”
(quoting Dakota Indus., Inc. v. Dakota Sportswear, Inc., 946 F.2d 1384, 1387 (8th
Cir. 1991), with internal citations omitted)).
Although I may consider affidavits and other matters outside of the pleadings on
a Rule 12(b)(2) motion, the pleader’s burden, in the absence of an evidentiary hearing,
is only to make a “minimal” prima facie showing of personal jurisdiction, and I “must
view the evidence in the light most favorable to the [pleader] and resolve all factual
conflicts in its favor in deciding whether the [pleader] has made the requisite showing.”
K-V Pharm. Co. v. Uriach & CIA, S.A., 648 F.3d 588, 581-82 (8th Cir. 2011).
Notwithstanding that facts are viewed in the light most favorable to the pleader, “‘[t]he
party seeking to establish the court’s in personam jurisdiction carries the burden of
proof, and the burden does not shift to the party challenging jurisdiction.” Viasystems,
Inc., 646 F.3d at 592 (quoting Epps v. Stewart Info. Servs. Corp., 327 F.3d 642, 647
(8th Cir. 2003)). The Eighth Circuit Court of Appeals reviews de novo orders granting
dismissals pursuant to Rule 12(b)(2). Johnson v. Arden, 614 F.3d 785, 793 (8th Cir.
2010).
b.

Due process requirements

The exercise of personal jurisdiction is only permissible when it comports with
due process. See, e.g., K-V Pharm. Co., 646 F.3d at 592.3 “Due process requires that

3

It is not clear whether or not the reach of a state’s long-arm statute is relevant
to the personal jurisdiction inquiry in an action against a non-resident defendant that is
not based on diversity of citizenship. Cf. Dairy Farmers of Am., Inc., 702 F.3d at 475
12

a defendant have certain ‘minimum contacts’ with the forum state for personal
jurisdiction to be exercised.” Myers v. Casino Queen, Inc., 689 F.3d 904, 911 (8th
Cir. 2012) (citing International Shoe Co. v. Washington, 326 U.S. 310, 316 (1945)).
More specifically,
Contacts with the forum state must be sufficient that
requiring a party to defend an action would not “offend
traditional notions of fair play and substantial justice.”
[International Shoe Co., 326 U.S.] at 316, 66 S.Ct. 154
(internal quotation marks and citation omitted). “The
‘substantial connection’ between the defendant and the
forum State necessary for a finding of minimum contacts
must come about by an action of the defendant purposefully
directed toward the forum State.” Asahi Metal Indus. Co. v.
Super. Ct. of Cal., 480 U.S. 102, 112, 107 S.Ct. 1026, 94
L.Ed.2d 92 (1987) (internal citations omitted).
We developed a five-factor test to evaluate whether a
defendant’s actions are sufficient to support personal
jurisdiction: (1) the nature and quality of the contacts with
the forum state; (2) the quantity of those contacts; (3) the
(“‘Specific personal jurisdiction can be exercised by a federal court in a diversity suit
only if authorized by the forum state’s long-arm statute and permitted by the Due
Process Clause of the Fourteenth Amendment.’” (quoting Viasystems, 646 F.3d at
593)); see also Dakota Indus., Inc. v. Dakota Sportswear, Inc., 946 F.2d 1384, 138898 & n.2 (8th Cir. 1991) (noting that, even though subject matter jurisdiction in the
case was predicated on a “federal question,” so that due process for personal
jurisdiction purposes was examined in light of the Fifth Amendment rather than the
Fourteenth Amendment, and Congress had authorized nationwide service of process in
federal question cases, the court nevertheless applied “minimum contacts” analysis and
considered the reach of the state’s long-arm statute). Even if the reach of the state’s
long-arm statute is relevant, however, “[b]ecause Iowa’s long-arm statute ‘expands
Iowa’s jurisdictional reach to the widest due process parameters allowed by the United
States Constitution,’ Hammond v. Fla. Asset Fin. Corp., 695 N.W.2d 1, 5 (Iowa
2005), [the federal court’s] inquiry is limited to whether the exercise of personal
jurisdiction comports with due process.” Wells Dairy, Inc. v. Food Movers Int’l, Inc.,
607 F.3d 515, 518 (8th Cir. 2010).
13

relationship of those contacts with the cause of action;
(4) [the state’s] interest in providing a forum for its
residents; and (5) the convenience or inconvenience to the
parties. See, e.g., Precision Const. Co. v. J.A. Slattery Co.,
Inc., 765 F.2d 114, 118 (8th Cir. 1985) (noting that the first
three factors are of primary importance and the last two of
secondary importance).
Myers, 689 F.3d at 911.
Furthermore, although “‘[p]ersonal jurisdiction can be specific or general,’”
Dairy Farmers of Am., Inc., 702 F.3d at 476 (quoting Viasystems, 646 F.3d at 593),
only “specific” personal jurisdiction is at issue here. “‘Specific jurisdiction refers to
jurisdiction over causes of action arising from or related to a defendant’s actions within
the forum state. . . .’” Id. (quoting Miller v. Nippon Carbon Co., Ltd., 528 F.3d 1087,
1091 (8th Cir. 2008)). In the five-factor test, “[t]he third factor distinguishes between
specific and general [personal] jurisdiction.” Myers, 689 F.3d at 911. This is so,
because “[s]pecific personal jurisdiction, unlike general jurisdiction, requires a
relationship between the forum, the cause of action, and the defendant.” Id. at 912.
The Eighth Circuit Court of Appeals recently clarified that it does not adhere to
a “proximate cause standard” for the required connection between the defendant’s
contacts with the forum and the plaintiff’s cause of action. See id.
Rather, we have said specific jurisdiction is warranted when
the defendant purposely directs its activities at the forum
state and the litigation “result[s] from injuries ... relating to
[the defendant’s] activities [in the forum state.]” Steinbuch
v. Cutler, 518 F.3d 580, 586 (8th Cir. 2008). We have also
emphasized the need to consider “the totality of the
circumstances in deciding whether personal jurisdiction
exists[,]” K–V Pharm. Co. v. J. Uriach & CIA, S.A., 648
F.3d 588, 592–93 (8th Cir. 2011) (citing Johnson, 614 F.3d
at 794). This stance is consistent with other circuits which
have focused on the need to adopt a flexible approach when
construing the “relate to” aspect of the Supreme Court's
14

standard. See Nowak [v. Tak How Invs., Ltd., 94 F.3d 708,]
716 [(1st Cir. 1996)] (“By this approach, we intend to
emphasize the importance of proximate causation, but to
allow a slight loosening of that standard when circumstances
dictate. We think such flexibility is necessary in the
jurisdictional inquiry: relatedness cannot merely be reduced
to one tort concept for all circumstances.”).
Myers, 689 F.3d at 913.
c.

Internet contacts

The primary basis on which Foreign Candy asserts that specific personal
jurisdiction over Tropical Paradise is appropriate is Tropical Paradise’s purported
Internet contacts with this forum. The Eighth Circuit Court of Appeals has considered
on only a few occasions when contacts via a website will satisfy due process. In its
earliest significant discussion on the issue, the Eighth Circuit Court of Appeals noted,
The great majority of these cases have adopted the
analytical framework of Zippo Manufacturing Co. v. Zippo
Dot Com, Inc., 952 F.Supp. 1119, 1124 (W.D.Pa.1997). In
Zippo—also a case of specific jurisdiction—the court
examined the few cases that had previously addressed the
issue of whether a Web site could provide sufficient contacts
for specific personal jurisdiction. It applied the results of
these cases to the traditional personal jurisdiction analytical
framework, noting that “the likelihood that personal
jurisdiction can be constitutionally exercised is directly
proportionate to the nature and quality of the commercial
activity that an entity conducts over the Internet.” 952
F.Supp. at 1124. In order to measure the nature and quality
of the commercial activity, the court created a “sliding
scale” to measure the likelihood of personal jurisdiction. It
noted:
At one end of the spectrum are situations where a
defendant clearly does business over the Internet. If
the defendant enters into contracts with residents of a
foreign jurisdiction that involve the knowing and
15

repeated transmission of computer files over the
Internet, personal jurisdiction is proper. At the
opposite end are situations where a defendant has
simply posted information on an Internet Web site
which is accessible to users in foreign jurisdictions. A
passive Web site that does little more than make
information available to those who are interested in it
is not grounds for the exercise [of] personal
jurisdiction. The middle ground is occupied by
interactive Web sites where a user can exchange
information with the host computer. In these cases,
the exercise of jurisdiction is determined by
examining the level of interactivity and commercial
nature of the exchange of information that occurs on
the Web site.
Id. (citations omitted).
Lakin v. Prudential Sec., Inc., 348 F.3d 704, 710-11 (8th Cir. 2003).

The court

opined, “We agree with our sister circuits that the Zippo model is an appropriate
approach in cases of specific jurisdiction—i.e., ones in which we need only find
‘minimum contacts.’”

Id. at 711.

Although the court recognized that Zippo was

helpful to assessing the nature and quality of commercial contacts via a website, the
court did not treat Zippo as the complete test of specific personal jurisdiction in cases
based on Internet contacts. Instead, it noted that “we have long held that the ‘nature
and quality’ of contacts is only one factor to consider,” and that it “consider[s] a
variety of factors—depending on the circumstances—in a personal jurisdiction
analysis,” citing the five-factor test.

Id.

However, because “general” personal

jurisdiction was asserted in the case before it, the court in Lakin found the Zippo model
less helpful. Id.
Subsequently, the court considered internet contacts in cases that did involve
assertions of “specific” personal jurisdiction. In Johnson v. Arden, 614 F.3d 785 (8th
Cir. 2010), the court again recognized the applicability of the Zippo sliding scale for
16

determination of specific personal jurisdiction based on internet activity. 614 F.3d at
796. In that case, as to the defamation claim, the court concluded,
The www.ComplaintBoards.com site lands on the “mere
posting” end of the scale. Although InMotion represents
www.ComplaintsBoard.com as an “interactive” website,
users may actually only post information. There is no
interaction between users and a host computer; the site
merely makes information available to other people. The
website's accessibility in Missouri alone is insufficient to
confer personal jurisdiction.
Johnson, 614 F.3d at 796 (emphasis added). As to a federal Lanham Act claim, the
court concluded,
The Johnsons argue that Heineman sells cats and kittens
throughout the United States, including in the State of
Missouri via advertising on www.BoutiqueKittens.com, thus
creating specific personal jurisdiction. However, under
Zippo, whether specific personal jurisdiction could be
conferred on the basis of an interactive website depends not
just on the nature of the website but also on evidence that
individuals in the forum state accessed the website in doing
business with the defendant. Zippo, 952 F.Supp. at 1125–
26.
Although
www.BoutiqueKittens.com
may
be
characterized as interactive, there is no evidence in the
record that Heineman engaged in any transaction or
exchange of information with a Missouri resident via
www.BoutiqueKittens.com, or that a Missouri resident ever
accessed the website. We decline to confer personal
jurisdiction based on only the possibility that a Missouri
resident
had
contact
with
Heineman
through
www.BoutiqueKittens.com.
Johnson, 614 F.3d at 797 (emphasis added). Similarly, in Pangaea, Inc. v. Flying
Burrito, L.L.C., 647 F.3d 741 (8th Cir. 2011), the Eighth Circuit Court of Appeals
rejected the contention that merely maintaining a website that could be viewed by

17

customers in the forum was insufficient to confer specific personal jurisdiction over an
out-of-state defendant in a trademark infringement action. 647 F.3d at 747.
Another decision of the Eighth Circuit Court of Appeals, Viasystems, Inc. v.
EMB-Papst St. Georgen GmbH & Co., KG, 646 F.3d 589 (8th Cir. 2011), involved
somewhat different circumstances, in that the plaintiff asserted general personal
jurisdiction over a defendant, not specific personal jurisdiction, on the basis of web
activity of the defendant’s purported agent, but the decision is instructive, nevertheless.
In Viasystems, the court held,
Even if [certain] scattered marketing statements could
support an inference that the two companies have a legally
recognized agency relationship, St. Georgen cannot be held
responsible for the statements on www.ebm-papst.com for
the simple reason that this website is owned and operated
not by St. Georgen, but by its corporate parent, ebm-papst
Mulfingen GmbH & Co. KG (“Mulfingen”).
Viasystems, 646 F.3d at 596.

Thus, the Eighth Circuit Court of Appeals has

recognized the distinction between web activity of a defendant and web activity of a
third party, which may benefit or relate to the defendant, where the third party is not
owned or operated by the defendant.
Other courts and commentators have applied a traditional three-factor test of
personal jurisdiction even in cases involving Internet contacts, although some of those
courts inform their analysis of those traditional factors with concerns raised in Zippo,
because such a traditional test “‘seems fully applicable to jurisdiction questions
generated by new technologies.’” Pervasive Software, Inc. v. Lexware GmbH & Co.
KG, 688 F.3d 214, 227 (5th Cir. 2012) (quoting 4A CHARLES ALAN WRIGHT, ET AL.,
FED. PRAC. & PROC. § 1073.1, at 334 (3d ed. 2002)). That three-factor test asks the
following questions: “‘(1) Did the plaintiff’s cause of action arise out of or result from
the defendant’s forum-related contacts? (2) Did the defendant purposely direct its
18

activities toward the forum state or purposely avail itself of the privilege of conducting
activities therein? (3) Would the exercise of personal jurisdiction over the defendant be
reasonable and fair?’” Id. (again quoting 4A CHARLES ALAN WRIGHT, ET AL., FED.
PRAC. & PROC. § 1073.1, at 334 (3d ed. 2002)); see also Arpaio v. Dupre, 2013 WL
2150869, *4 (3d Cir. May 20, 2013) (unpublished op.) (formulating the test, in a case
in which personal jurisdiction was based on Internet contacts, as the typical three-step
test of specific personal jurisdiction:

“(1) the defendant must have purposefully

directed his activities to the forum; (2) the plaintiff’s claim must arise out of or relate to
at least one of those specific activities; and (3) the assertion of jurisdiction must
otherwise comport with fair play and substantial justice” (citing Kehm Oil Co. v.
Texaco, Inc., 537 F.3d 290, 300 (3d Cir. 2008)); uBID, Inc. v. GoDaddy Group, Inc.,
623 F.3d 421, 427-33 (7th Cir. 2010) (examining the sufficiency of Internet contacts in
terms of the nature of the contacts, the relationship between the contacts and the claims,
and fairness).

These three factors address essentially the same concerns as the

traditional five-factor test for personal jurisdiction in the Eighth Circuit. See Myers,
689 F.3d at 911.
Using the three-factor test, the Fifth Circuit Court of Appeals has explained,
“Website interactivity is important only insofar as it reflects
commercial activity, and then only insofar as that
commercial activity demonstrates purposeful targeting of
residents of the forum state or purposeful availment of the
benefits or privileges of the forum state.” Shamsuddin v.
Vitamin Research Prods., 346 F.Supp.2d 804, 813 (D. Md.
2004). A corporation’s sales to forum residents must be
more than “‘isolated’” occurrences for the assertion of
jurisdiction to satisfy the requirements of due process.
Burger King [Corp. v. Rudzewicz], 471 U.S. [462,] 475
n.18, 105 S.Ct. 2174 [(1985)] (citation omitted).

19

Pervasive Software, Inc., 688 F.3d at 228. Similarly, the Seventh Circuit Court of
Appeals has explained,
One conclusion we might draw from [the fact that internet
sales and services can be provided to customers anywhere]
is that a physical geographical nexus is simply less important
in cases where the alleged harm occurred over the Internet.
Such a conclusion would not necessarily be inconsistent with
due process. After all, the geographical relationship between
claim and contacts is only one facet of the constitutional
inquiry. The plaintiff must still prove that the defendant had
constitutionally sufficient contacts with the forum and that
the defendant’s contacts were temporally and substantively
related to the lawsuit. Without that showing, the mere fact
that the defendant allegedly caused harm by conducting
business or advertising over the Internet is not adequate to
establish jurisdiction in the plaintiff’s chosen forum state.
uBid, Inc., 623 F.3d at 431 (citations omitted; emphasis added); see id. at n.3
(explaining, “This is true even if the website is highly interactive,” using the Zippo
factor considering the degree of interactivity as relevant, but not dispositive, and
rejecting the use of “a separate test for Internet-based contacts when the traditional
analysis of the ‘nature, quality, and quantity of contacts, as well as their relation to the
forum state,’ remains up to this more modern task.”)
Applying a test based on traditional factors, the Third Circuit Court of Appeals
recognized that, as a general matter, “the sale of products on a third-party website
simply cannot support the exercise of personal jurisdiction,” because it does not
demonstrate the defendant’s “purposeful availment” of the privilege of doing business
in the forum that is required by due process.

Arpaio, 2013 WL 2150869 at *5

(emphasis added). So, too, the Federal Circuit Court of Appeals rejected the exercise
of personal jurisdiction over a defendant based on sales from or the availability of its
products on a third-party’s website:
20

Trintec refers to the availability of Pedre products on
non-Pedre websites, but those sites would support
jurisdiction only if Pedre had some responsibility for the
third party’s advertising of Pedre products on non-Pedre
sites. See, e.g., Jung v. Ass'n of Am. Med. Colls., 300
F.Supp.2d 119, 132 n. 5 (D.D.C.2004) (distinguishing cases
where personal jurisdiction is based upon defendant's
activities on its own website from situation where third
party's website was used); GTE [New Media Servs. Inc. v.
BellSouth Corp.], 199 F.3d [1343,] 1352 [(D.C. Cir. 2000)]
(indicating the importance of “know[ing] for certain which
defendants own and operate which websites” in determining
jurisdiction). Although some of the non-Pedre websites
contain hyperlinks to Pedre.com, it is unclear exactly how
much, if any, control Pedre has over the contents of these
third-party sites.
Trintec Indus., Inc. v. Pedre Promotional Prods., Inc., 395 F.3d 1275, 1281 (Fed. Cir.
2005). If a hyperlink from a third-party vendor’s website to the defendant’s website is
insufficient to establish personal jurisdiction without a demonstration that the defendant
controlled the third-party, then, likewise, the mere existence of a hyperlink from a
defendant’s otherwise “passive” website to a third-party vendor’s website where the
defendant’s products could be purchased also would not demonstrate, by itself, that the
defendant controls the third-party sufficiently for sales from the third-party’s website to
constitute “contacts” by the defendant. Indeed, the federal district courts to consider
that precise issue have concluded that such a hyperlink to a third-party vendor’s website
is insufficient to establish personal jurisdiction over a defendant.4

4

See, e.g., Celorio v. Goole, Inc., 872 F. Supp. 2d 1327, 1333 (N.D. Fla.
2012) (“While [customers] can click on links that take them [from the defendant’s
website] to other websites to purchase books, this is insufficient to support minimum
contacts [by the defendant].”); Roblor Mktg. Group, Inc. v. GPS Indus., Inc., 645 F.
Supp. 2d 1130, 1156-57 (S.D. Fla. 2009) (holding that a website that passively
advertises the defendant’s products with links to resellers and distributors of the
21

The cases cited by Foreign Candy are not to the contrary. In 3M Co. v Mohan,
Civil No. 09-1413 (ADM/FLN), 2010 WL 786519 (D. Minn. March 5, 2010), the
district court concluded as follows:
Mohan clearly did business over the Internet when he
created a website that allowed customers to 1) browse
products online, 2) select items to purchase, 3) direct that
the products be shipped to Minnesota by selecting Minnesota
from a drop-down menu listing U.S. states, and 4) pay for
the products online via a credit card. (Schultz Aff. Exs. 23.)

products, where none of the resellers or distributors were located in the forum, did not
establish sufficient contacts “specifically targeting” forum residents); 1st Tech., L.L.C.
v. Digital Gaming Solutions, S.A., No. 4:08 CV 586 DDN, 2009 WL 879463, *5
(E.D. Mo. March 30, 2009) (holding that reliance on hyperlinks and attributes of thirdparty websites was “unavailing” to establish personal jurisdiction); Dynetech Corp. v.
Leonard Fitness, Inc., 523 F. Supp. 2d 1344, 1347 (M.D. Fla. 2007) (“[T]he fact that
the website of a company that sells products in Florida can be reached via a link on
Defendants’ website is too narrow a thread on which to find meaningful ‘contact’ for
the purposes of due process.”); Simplicity, Inc. v. MTS Prods., Inc., No. 05-3008,
2006 WL 924993, *7 (E.D. Pa. April 6, 2006) (“MTS’s website falls short of a
commercially interactive site for which personal jurisdiction is proper because it does
not allow customers to purchase products online—it merely provides the names and
website links to retailers, etailers and specialty stores which sell its products.”); David
White Instruments, L.L.C. v. TLZ, Inc., No. 02 C 7156, 2003 WL 21148224, *6 (N.D.
Ill. May 16, 2003) (holding that, where the defendant’s website was not interactive,
because visitors could not purchase allegedly infringing items there, but had to visit an
unaffiliated website, albeit one reached by a hyperlink from the defendant’s website, to
purchase allegedly infringing products, there was no allegation that reasonably
supported the inference that the defendant directed its activity at forum residents); but
see Arriaga v. Imperial Palace, Inc., 252 F. Supp. 2d 380, 387 (S.D. Tex. 2003) (the
fact that the defendant’s reservations were handled through a third-party website was
“irrelevant,” where the defendant “created the ‘face’ of the web site such that a user
would reasonably believe he is forwarding his reservation and credit card information
directly to [the defendant], for use in securing a room at the [defendant’s] hotel”).
22

Mohan., 2010 WL 786519 at *2. Thus, in the first instance, it was the defendant’s
interactive sales from his own website to Minnesota residents that were sufficient
contacts with the forum to establish personal jurisdiction. Similarly, this was the only
basis on which the courts in 3M Co. v. Icuiti Corp., Civil No. 05-2945 ADM/RLE,
2006 WL 1579816, *2 (D. Minn. June 2006), and Multi-Tech Systems, Inc. v.
VocalTec Communications, Inc., 122 F. Supp. 2d 1046, 1051 (D. Minn. 2000), also
cited by Foreign Candy, found that the defendants’ contacts with the forum were
sufficient to establish specific personal jurisdiction.

Neither Icuiti or Multi-Tech

Systems involved any sales from third-party websites.
In Mohan, the district court also observed,
Further supporting a finding of personal jurisdiction, Mohan
also does significant business over the Internet via the
commercial interactive website ebay.com (over 2,100
transactions) and the national website Amazon.com—both of
which include Minnesota as a shipping destination for
purchases.
Mohan, 2010 WL 786519 at *3. There was no evidence in that case, however, that
either ebay.com or Amazon.com, rather than the defendant, was acting as the actual
vendor for the sales from those “commercial interactive websites”—that is, that they
were acting as a retailer or distributor of the defendant’s products—where ebay.com
serves as an “auction” website for products offered by other vendors, but is not itself
the vendor, and Amazon.com facilitates sales in which the actual vendor may be either
Amazon or another entity using Amazon.com as a “sales forum.” Internet sales on an
“auction” or “sales forum” website may properly be considered contacts by the actual
vendor, for essentially the same reasons that sales from the actual vendor’s own website
may be considered contacts by the actual vendor. See, e.g., Lakin, 348 F.3d at 710-11.
However, decisions finding such Internet sales were contacts by the actual vendor do
23

not stand for or support the notion that every sale from a “third-party” website is
necessarily a contact by the product manufacturer.
3.

Analysis
a.

Nature and quality of contacts

Here, as to “the nature and quality of the [defendant’s] contacts with the forum
state,” the first factor in the five-factor test of personal jurisdiction in this Circuit, see
Myers, 689 F.3d at 911, the mere fact that Tropical Paradise’s website is accessible in
Iowa or that it provides the possibility that an Iowa resident might have contact with
Tropical Paradise (by leaving contact information) is not sufficient, alone, to confer
personal jurisdiction. See Johnson, 614 F.3d at 796-97; see also Pangaea, Inc., 647
F.3d at 747. Indeed, Tropical Paradise’s website falls at the “passive” end of the Zippo
sliding scale, in terms of the nature and quality of the commercial activity it permits,
because it does not allow a visitor to enter into a contract or to make a purchase, or
even allow for an exchange of information with the host computer, but does little more
than allow Tropical Paradise to post information, even if it allows visitors to leave
contact information (a one-way transfer of information, not an exchange) and is
accessible to visitors from a foreign jurisdiction. Lakin, 348 F.3d at 710 (quoting the
formulation of the “sliding scale” in Zippo, 952 F. Supp. 2d at 1124). The Eighth
Circuit Court of Appeals has also recognized the difference between web activity of a
defendant (here, Tropical Paradise) and web activity of a third-party vendor of the
defendant’s products (here, CoffeeCow.com), where the third-party vendor is not
owned or operated by the defendant. Viasystems, 646 F.3d at 596; accord Arpaio,
2013 WL 2140869 at *5 (“[T]he sale of products on a third-party website simply cannot
support the exercise of personal jurisdiction,” because it does not demonstrate the
defendant’s “purposeful availment” of the privilege of doing business in the forum
required by due process). There is no evidence here of any ownership or operation of
24

CoffeeCow.com’s website by Tropical Paradise and, indeed, the only evidence is that
CoffeeCow.com is not affiliated in any way with Tropical Paradise. See Defendant’s
Reply (docket no. 19), Second Affidavit Of Fadi S. Massabni, ¶ 8 (“CoffeeCow is not
an affiliate of Tropical Paradise.”).
There is also no evidence here—from the “screen shots” provided by Foreign
Candy—that Tropical Paradise “created the ‘face’ of [CoffeeCow.com’s] website such
that a user would reasonably believe” that the user was actually making a purchase
from Tropical Paradise itself. Compare Arriaga v. Imperial Palace, Inc., 252 F. Supp.
2d 380, 387 (S.D. Tex. 2003) (finding personal jurisdiction was proper against a
defendant based on contacts through a third-party’s hotel reservations website, because
the defendant “created the ‘face’ of the web site such that a user would reasonably
believe he is forwarding his reservation and credit card information directly to [the
defendant], for use in securing a room at the [defendant’s] hotel”). Furthermore, the
overwhelming weight of authority is that the existence of a hyperlink from Tropical
Paradise’s website to CoffeeCow.com—even where the hyperlink appears under a
banner or text indicating that Tropical Paradise’s Cool Tropics Products are “NOW
AVAILABLE FOR PURCHASE!”—does not establish that Internet sales of Tropical
Paradise’s product from the third-party’s website constitute contacts by Tropical
Paradise with this forum. Cf. Trintec Indus., Inc., 395 F.3d at 1281 (rejecting the
sufficiency of hyperlinks from a retailers’ websites to a manufacturer’s website to
establish contacts by the manufacturer, where the manufacturer had no control over the
contents of the third-parties’ websites); see also, supra, n.4 (citing district court
decisions expressly rejecting the proposition that hyperlinks from a defendant’s website
to the websites of retailers where the defendant’s products could be purchased establish
sufficient contacts by the manufacturer); and compare Mahon, 2010 WL 786519 at *3

25

(holding that a defendant’s sales through ebay.com and Amazon.com were contacts by
the defendant relevant to personal jurisdiction).
Thus, even viewing the facts in the light most favorable to Foreign Candy,
Foreign Candy has failed to meet its “minimal” burden of proof to show that this factor
weighs in favor of the exercise of personal jurisdiction over Tropical Paradise in this
forum, see K-V Pharm. Co., 648 F.3d at 581-82 (explaining the burden of proof and
the court’s view of the evidence when facts are controverted on a Rule 12(b)(2) motion,
but no evidentiary hearing is held). To the contrary, this factor weighs heavily against
the exercise of personal jurisdiction.
b.

The quantity of contacts

The second factor in the five-factor test of personal jurisdiction in this Circuit is
“the quantity of those contacts with the forum state.” Myers, 689 F.3d at 911. As to
this factor, Foreign Candy contends that “courts within this Circuit have recognized
that a single purchase by plaintiff’s counsel in the forum was a sufficient quantity of
contacts with the forum.”

Plaintiff’s Response Brief (docket no. 13), 8.

Foreign

Candy cites no decisions so holding, however. Indeed, my own research suggests that
most decisions from courts in this Circuit are to the contrary.5 Here, I believe that a

5

See AFTG-TG, L.L.C. v. Nuvoton Tech. Corp., 689 F.3d 1358, 1366-67 (8th
Cir. 2012) (although indicating a reluctance to read the concurrence by Justice Breyer
in J. McIntyre Mach., Ltd. v. Nicastro, ___ U.S. ___, 131 S.Ct. 2780, 2792 (2011), as
stating a new rule, holding that a single sale or a few sales to customers in the forum
were not enough to establish personal jurisdiction); Pangaea, 647 F.3d at 749 n.5
(noting that, in J. McIntyre, “where jurisdiction in a products liability action had been
premised upon a ‘stream of commerce’ theory, Justices Breyer and Alito noted in an
opinion concurring in the judgment that jurisdiction based on the single sale of a
product is insufficient for purposes of conferring personal jurisdiction,” and that,
“[w]hile the basis for jurisdiction in [the case before the Eighth Circuit Court of
Appeals] does not involve the sale of a single product or a stream of commerce theory,
the conclusion in the J. McIntyre concurrence that a single contact, in certain contexts,
26

is an insufficient basis for personal jurisdiction, provides relevant guidance”); Bell
Paper Box, Inc. v. Trans Western Polymers, Inc., 53 F.3d 920, 922 (8th Cir. 1995)
(holding that, where “[o]nly a single purchase order link[ed] the [defendant] to South
Dakota,” that was not enough to establish personal jurisdiction); see also Cox v.
Generac Power Sys., Inc., No. 2:08-CV-04278-NKL, 2009 WL 1664491, *4 (W.D.
Mo. June 15, 2009) (holding that the defendant’s sale of a single product to a person
holding a Missouri CDL was insufficient to establish personal jurisdiction in Missouri);
Quick Point, Inc. v. Excel Eng’g, Inc., No. 4:08CV00797ERW, 2009 WL 330837, *3*5 (E.D. Mo. Feb. 9, 2009) (noting that “courts will generally not exercise personal
jurisdiction where the defendant’s only contacts with a state arise from purchases
initiated by the plaintiff, its lawyers, or its investigators,” but concluding that, based on
two other shipments of products to other buyers in the forum, not affiliated with the
plaintiff, which constituted six percent of the defendant’s total sales of that product,
with evidence of other solicitations in the forum, were enough to establish personal
jurisdiction); Johnson v. Welsh Equip., Inc., 518 F. Supp. 2d 1080, 1091-92 (D. Minn.
2007) (observing that a single sale by the defendant to someone in the forum is more
likely to establish the required minimum contacts when the defendant also solicited the
sale in some way or actively engaged in negotiating its terms, and holding that the
single sale of a truck at issue was not sufficiently related to a tort claim against the
defendant to establish personal jurisdiction).
Indeed, in cases in which personal jurisdiction was based on one or only a very
few sales by the defendant to customers in the forum state, jurisdiction was not based
on a contact manufactured by the plaintiff or anyone affiliated with the plaintiff, and the
circumstances showed more than the single sale as the basis for the exercise of personal
jurisdiction. See P.S. Products, Inc. v. Maxsell Corp., No. 4:12CV00214 SWW, 2012
WL 3860609, *3 (E.D. Ark. Sept. 5, 2012) (holding, using “the Zippo test” that the
nature and quality of the defendant’s contacts with the forum weighed in favor of
exercising personal jurisdiction, where the defendant admitted two sales in the forum,
and he had “purposefully availed himself” of the privilege of doing business in the
forum “by setting up a website by which residents of [the forum] can and allegedly did
purchase alleged copies of products patented by plaintiffs”); Pope v. Elabo GmbH¸588
F. Supp. 2d 1008, 1021 (D. Minn. 2008) (holding that personal jurisdiction over an
out-of-state defendant was proper, where “Elabo sold one of its machines to a company
in Minnesota, having first negotiated the price and other terms of the sale with that
Minnesota company, knowing that the company was located in Minnesota and would be
using the machine in Minnesota. Elabo then put its machine on an airplane and shipped
it to Minnesota. Without question, then, Elabo purposefully availed itself of the benefits
and privileges of conducting business in Minnesota. And without question, Elabo could
27

single sale to a representative of the plaintiff that was not by the defendant, but by a
third-party retailer, and that involved no negotiation of terms of the sale between a
forum resident and the defendant, is an insufficient “quantity” of sales to support
personal jurisdiction, even if the sale was of a product allegedly bearing marks and
packaging that allegedly infringed the plaintiff’s trademarks and copyrights.
Thus, even viewing the facts in the light most favorable to Foreign Candy,
Foreign Candy has failed to meet its “minimal” burden of proof to show that this
second factor weighs in favor of the exercise of personal jurisdiction over Tropical
Paradise in this forum, see K-V Pharm. Co., 648 F.3d at 581-82 (explaining the burden
of proof and the court’s view of the evidence when facts are controverted on a Rule
12(b)(2) motion, but no evidentiary hearing is held); indeed, this factor also weighs
against the exercise of personal jurisdiction.
c.

The relationship of the contacts with the cause of action

The third factor in the five-factor test of personal jurisdiction in this Circuit
involves specifically the kinds of considerations that led me to reject the single sale to
plaintiff’s representative as sufficient contact with the forum for purposes of personal
jurisdiction, because the third factor is “the relationship of those contacts with the cause
of action.” Myers, 689 F.3d at 911. Again, it is this factor that “distinguishes between
specific and general [personal] jurisdiction.” Id. I agree with Foreign Candy that the
sale of a product bearing marks and packaging that allegedly infringed the plaintiff’s
trademarks and copyrights bears a close relationship to the causes of action.
Nevertheless, the sale here was not by the defendant, but by an unaffiliated third-party
retailer. Thus, while the sale bears an appropriate relationship to the cause of action, it

reasonably have anticipated that if the machine that it shipped to Minnesota for use in
Minnesota by a Minnesota company injured a Minnesotan, Elabo would be haled into
court in Minnesota.”).
28

is not a pertinent “contact” by the defendant, and I have concluded, above, that
Tropical Paradise’s website does not otherwise establish the required “contacts” with
the forum.
Thus, even viewing the facts in the light most favorable to Foreign Candy,
Foreign Candy has failed to meet its “minimal” burden of proof to show that this third
factor weighs in favor of the exercise of personal jurisdiction over Tropical Paradise in
this forum, see K-V Pharm. Co., 648 F.3d at 581-82 (explaining the burden of proof
and the court’s view of the evidence when facts are controverted on a Rule 12(b)(2)
motion, but no evidentiary hearing is held). Instead, this factor weighs heavily against
the exercise of personal jurisdiction.
d.

Interest and convenience of the forum

The remaining factors in the five-factor test of personal jurisdiction in this
Circuit—requiring consideration of the forum state’s interest in providing a forum for
its residents and the convenience or inconvenience of the forum to the parties—are the
less important ones. Myers, 689 F.3d at 911. While I agree with Foreign Candy that
Iowa has an interest in providing a forum for its residents asserting federal and state
law claims of trademark, trade dress, and copyright infringement and unfair
competition, and that this forum is more convenient for Foreign Candy, Tropical
Paradise is under no obligation to demonstrate that personal jurisdiction over it exists in
some other forum, as Foreign Candy seems to contend. Even though Foreign Candy
did not identify such a forum, it is highly likely that Massachusetts is a forum with
personal jurisdiction over Tropical Paradise, one that would also likely be much more
convenient to Tropical Paradise, and one in which it is likely that allegedly infringing
acts occurred, because Massachusetts is where Tropical Paradise has its principal place
of business. The interest of this forum and its convenience to Foreign Candy simply

29

cannot outweigh Tropical Paradise’s lack of contacts with this forum in the personal
jurisdiction analysis.
e.

“Effects” in this forum

Foreign Candy argues, apparently in the alternative, that the “effects test”
warrants the exercise of personal jurisdiction over Tropical Paradise in this case,
because Tropical Paradise has continued infringing activity even after notice from
Foreign Candy, from as early as 2009, that Tropical Paradise’s activities were causing
effects in Iowa by injuring an Iowa resident. This argument is untenable.
The “effects test” was set out in Calder v. Jones, 465 U.S. 783 (1984). See
Johnson, 614 F.3d at 796. The Eighth Circuit Court of Appeals has explained the
“effects test” as follows:
Due process allows a state to assert personal jurisdiction
over a defendant based on the in-state effects of defendants'
extraterritorial tortious acts only if those acts “(1) were
intentional, (2) were uniquely or expressly aimed at the
forum state, and (3) caused harm, the brunt of which was
suffered—and which the defendant knew was likely to be
suffered—[in the forum state].” Johnson, 614 F.3d at 796
(alteration in original) (quoting Lindgren v. GDT, LLC, 312
F.Supp.2d 1125, 1132 (S.D.Iowa 2004)).
Viasystems, Inc., 646 F.3d at 594. As the court had previously explained in Johnson,
Additionally, even if the effect of [the defendant’s] alleged
statement was felt in Missouri, we have used the Calder test
merely as an additional factor to consider when evaluating a
defendant's relevant contacts with the forum state. In
Dakota, we declined to grant personal jurisdiction solely on
the basis of forum state effects from an intentional tort.
[Dakota Indus., Inc., 946 F.2d] at 1391 (“In relying on
Calder, we do not abandon the five-part [Aftanase] test....
We simply note that Calder requires the consideration of
additional factors when an intentional tort is alleged.”). We
therefore construe the Calder effects test narrowly, and hold
30

that, absent additional contacts, mere effects in the forum
state are insufficient to confer personal jurisdiction. See
Hicklin Eng'g, Inc. v. Aidco, Inc., 959 F.2d 738, 739 (8th
Cir.1992) (per curiam).
Johnson, 614 F.3d at 796-97.
Here, as in Viasystems, even assuming that Foreign Candy could satisfy factors
(1) and (3) of the “effects test,” nothing here suggests that Tropical Paradise’s allegedly
infringing activity was “uniquely or expressly aimed at the forum state,” where
Tropical Paradise does not, itself, conduct any business and has had no direct sales in
or other contacts with Iowa. See Viasystems, Inc., 646 F.3d at 594. Also, as in
Johnson, where the “effects test” is narrowly construed to require “additional
contacts,” but where, as explained above, “there are no additional contacts between
[Tropical Paradise] and [Iowa] to justify conferring personal jurisdiction,” the “effects
test” does not require or weigh in favor of the exercise of personal jurisdiction over
Tropical Paradise in this forum. Johnson, 614 F.3d at 797.
f.

“Fair play and substantial justice” in the totality of the
circumstances

Finally, due process requires that “[c]ontacts with the forum state must be
sufficient that requiring a party to defend an action would not ‘offend traditional notions
of fair play and substantial justice,’” Myers, 689 F.3d at 911 (quoting International
Shoe Co., 326 U.S. at 316), and the court’s consideration of “‘the totality of the
circumstances in deciding whether personal jurisdiction exists,’” id. at 913 (quoting KV Pharm. Co., 648 F.3d at 592-93). Where, as here, even viewing the totality of the
facts in the light most favorable to Foreign Candy, Foreign Candy has failed to meet its
“minimal” burden of proof to show that the balance of the factors weighs in favor of
the exercise of personal jurisdiction over Tropical Paradise in this forum. See K-V
Pharm. Co., 648 F.3d at 581-82 (explaining the burden of proof and the court’s view
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of the evidence when facts are controverted on a Rule 12(b)(2) motion, but no
evidentiary hearing is held). Tropical Paradise’s lack of direct contacts with this forum
demonstrates that exercising personal jurisdiction over it in this forum would “offend
traditional notions of fair play and substantial justice.”

Myers, 689 F.3d at 911

(internal quotation marks and citations omitted).
Consideration of the relevant factors leads to the conclusion that, on this record,
dismissal for lack of personal jurisdiction over Tropical Paradise is appropriate.
4.

Jurisdictional discovery
a.

Arguments of the parties

In its Response to the Motion To Dismiss, Foreign Candy argues that, if I
determine that it has failed to make a prima facie showing of personal jurisdiction, I
should grant Foreign Candy the opportunity to conduct jurisdictional discovery.
Foreign Candy argues that the facts known to date give rise to additional unknown facts
that are solely under the control of Tropical Paradise and that are otherwise difficult, if
not impossible, to determine without formal discovery. Foreign Candy argues that only
Tropical Paradise has access to information related to its sales efforts and other contacts
with Iowa, so that its request for jurisdictional discovery is not frivolous and should be
granted.
In its Reply, Tropical Paradise argues that jurisdictional discovery is not
appropriate where Foreign Candy has only offered speculation or conclusory assertions
about contacts with a forum state. Tropical Paradise argues that it has no contacts with
Iowa, that Foreign Candy’s arguments to the contrary are specious, leaving it with no
basis for establishing personal jurisdiction other than speculation or conclusory
assertions; and that discovery would be completely unavailing, because Tropical
Paradise has no contacts with Iowa and has had no sales in Iowa for at least ten years.
Thus, Tropical Paradise asserts that Foreign Candy is asking for a “fishing expedition.”
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b.

Analysis

The Eighth Circuit Court of Appeals has held that “‘[w]hen a plaintiff offers
only speculation or conclusory assertions about contacts with a forum state, a court is
within its discretion in denying jurisdictional discovery.’” Viasystems, Inc., 646 F.3d
at 598 (quoting Dever v. Hentzen Coatings, Inc., 380 F.3d 1070, 1074 n.1 (8th Cir.
2004), in turn quoting Carefirst of Md., Inc. v. Carefirst Pregnancy Ctrs., Inc., 334
F.3d 390, 402 (4th Cir. 2003)). More specifically, where a defendant offers affidavits
denying corporate control over another entity that may have been subject to personal
jurisdiction, and the plaintiff fails to rebut those affidavits and offers only speculative
and conclusory assertions about any other contacts by the defendant with the forum
state, denial of jurisdictional discovery is not an abuse of discretion. See Steinbuch v.
Cutler, 518 F.3d at 580, 590 (8th Cir. 2008). On the other hand, where the plaintiff
offers “documentary evidence” in support of allegations of personal jurisdiction, the
court abuses its discretion by dismissing the action without permitting the plaintiff to
take some jurisdictional discovery. Id. at 589.
Here, Foreign Candy asserted that Tropical Paradise had sufficient contact with
this forum, because of an Internet purchase by Foreign Candy’s CEO from the website
of a third-party retailer, but offered no evidence that Tropical Paradise had any control
over or affiliation with the third-party retailer. In response, Tropical Paradise offered
an affidavit averring that CoffeeCow.com, the third-party retailer, is not affiliated in
any way with Tropical Paradise.

See Defendant’s Reply (docket no. 19), Second

Affidavit Of Fadi S. Massabni, ¶ 8 (“CoffeeCow is not an affiliate of Tropical
Paradise.”). Foreign Candy has not rebutted that affidavit in any way, or even
attempted to do so, and has offered nothing but speculative and conclusory assertions
that Tropical Paradise might have some other contacts with Iowa, not any documentary
evidence that provides any inference of additional contacts that Tropical Paradise might
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have with Iowa. Under these circumstances, Tropical Paradise is not entitled to any
jurisdictional discovery. See Viasystems, Inc., 646 F.3d at 598; Steinbruch, 518 F.3d
at 590.
5.

Summary

In this case, even viewing the totality of the facts in the light most favorable to
Foreign Candy, Foreign Candy has failed to meet its “minimal” burden of proof to
show that the balance of the factors weighs in favor of the exercise of personal
jurisdiction over Tropical Paradise in this forum. See K-V Pharm. Co., 648 F.3d at
581-82. Foreign Candy has also failed to demonstrate that consideration of that part of
Tropical Paradise’s Motion To Dismiss seeking dismissal for lack of personal
jurisdiction should be stayed so that the parties can conduct jurisdictional discovery.
Under these circumstances, that part of Tropical Paradise’s Motion To Dismiss seeking
dismissal for lack of personal jurisdiction is granted.

B.
1.

Venue

Arguments of the parties

In its Motion To Dismiss, Tropical Paradise seeks dismissal of Foreign Candy’s
Complaint, in addition or in the alternative, for improper venue, pursuant to Rule
12(b)(3) of the Federal Rules of Civil Procedure. Tropical Paradise asserts that venue
is improper under any subdivision of 28 U.S.C. § 1391, as to Foreign Candy’s Lanham
Act claims, and that venue in copyright disputes pursuant to 28 U.S.C. § 1400(a) is
improper, because that statute has been construed to make venue coextensive with
personal jurisdiction, and personal jurisdiction is lacking. In Response, Foreign Candy
argues that venue and personal jurisdiction are coextensive, so that venue is proper in
this forum for the same reasons that personal jurisdiction is proper.

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2.

Analysis

The parties are correct that, in this case, venue is coextensive with personal
jurisdiction. Under § 1391(b)(1), venue is proper where a defendant “resides,” but
under § 1391(c)(2), a corporate defendant “resides” where it is subject to personal
jurisdiction. Section 1391(b)(2) is inapplicable, because Foreign Candy does not argue,
and I cannot find, that a substantial part of the events or omissions giving rise to
Foreign Candy’s claims occurred in this judicial district. Section 1391(b)(3) provides
that, if there is no other district where the action may be brought, venue is proper in a
district in which the defendant is subject to personal jurisdiction. The Eighth Circuit
Court of Appeals has recognized that, because the statute makes where the defendant
“resides” equivalent to where the defendant is subject to personal jurisdiction, “[i]f
personal jurisdiction exists at the commencement of the action, then venue is proper
under 29 U.S.C. § 1391(b).”

Dakota Indus., Inc., 946 F.3d at 1392.

Here, I

concluded, above, that Tropical Paradise is not subject to personal jurisdiction in this
district, so that this district is not one in which Tropical Paradise “resides,” within the
meaning of § 1391(c)(2). Thus, venue is not proper in this district under § 1391(b)(1).
Similarly, there is no showing that there is no other district in which the action may be
brought and, even if I could conclude that there is no other district in which the action
may be brought, I concluded, above, that Tropical Paradise is not subject to personal
jurisdiction in this district.

Thus, venue is not proper in this district under

§ 1391(b)(3).
Similarly, § 1400(a), the provision establishing venue in copyright cases,
provides that venue is proper “in the district in which the defendant or his agent resides
or may be found.” 28 U.S.C. § 1400(a). Courts have construed this provision as also
making venue proper only where personal jurisdiction is proper. See, e.g., Brayton v.
Purcell, L.L.P. v. Recordon & Recordon, 606 F.3d 1124, 1126 (9th Cir. 2010); In re
35

LimitNone, L.L.C., 551 F.3d 572, 575 n.1 (7th Cir. 2008) (noting that the definition of
“resides” in § 1391(c) is applicable to § 1400(a)); Palmer v. Braun, 376 F.3d 1254,
1259-60 (11th Cir. 2004) (equating a district in which a defendant “may be found”
under § 1400(a) with “a district which may assert personal jurisdiction over the
defendant”). Therefore, the lack of personal jurisdiction over Tropical Paradise is also
fatal to venue in this district for Foreign Candy’s copyright claim under § 1400(a).
Therefore, in addition or in the alternative, that part of Tropical Paradise’s
Motion To Dismiss seeking dismissal for lack of proper venue is also granted.
III.

CONCLUSION

Upon the foregoing, neither personal jurisdiction nor venue is proper in this
district.

Furthermore, I find that jurisdictional discovery is inappropriate in the

circumstances presented here.
THEREFORE,
1.

Tropical Paradise’s April 11, 2013, Motion To Dismiss (docket no. 5) is

granted, and this matter is dismissed in its entirety pursuant to Rule 12(b)(2) for lack
of personal jurisdiction and Rule 12(b)(3) for improper venue; and
2.

Foreign Candy’s request for jurisdictional discovery in its May 13, 2013,

Response To Motion To Dismiss Complaint (docket no. 13) is also denied.
IT IS SO ORDERED.
DATED this 24th day of June, 2013.

______________________________________
MARK W. BENNETT
U.S. DISTRICT COURT JUDGE
NORTHERN DISTRICT OF IOWA
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