721 Bourbon, Inc. v. House of Auth, LLC

Filing 28

ORDER AND REASONS granting 14 Motion to Dismiss for Lack of Jurisdiction. Signed by Judge Sarah S. Vance on 10/19/15. (jjs)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF LOUISIANA
721 BOURBON, INC.

CIVIL ACTION

VERSUS

NO: 15-172

HOUSE OF AUTH, LLC

SECTION: R(3)

ORDER AND REASONS
Defendant House of Auth, LLC ("HOA") moves the Court to dismiss
plaintiff 721 Bourbon, Inc.'s trademark infringement, trademark dilution,
unfair competition, and unfair trade practices claims against it for lack of
personal jurisdiction. For the following reasons, the Court GRANTS the
motion.

I.

BACKGROUND
This is a trademark and unfair competition case. Plaintiff 721 Bourbon

is a Louisiana company that owns and operates several "Tropical Isle" bars in
New Orleans.1 Tropical Isle serves specialty cocktails called GRENADES or
HAND GRENADES, as well a GRENADE ENERGY DRINK beverage, and it

1

R. Doc. 1 at 1.

holds eight federal trademark registrations protecting its family of Grenaderelated marks.2
HOA is a Delaware Limited Liability Company with its principal place
of business in Stamford, Connecticut.3 It produces and sells a beverage whose
label contains the word GURRNAID, along with a stylized "G" that resembles
a hand grenade.4 HOA has a website that offers products for sale and allows
users to order products online.5 HOA acknowledges that it has sold one set of
its GURNNAID products--beverages, as well as apparel bearing the same
GURRNAID mark--to a Louisiana resident through its website and that it
communicated with the resident via email and telephone about the order.6
But, as 721 Bourbon admits, that resident was a private investigator hired by
721 Bourbon itself.7
721 Bourbon filed suit against HOA in this Court on January 23, 2015.
Its complaint pleads several claims in connection with HOA's use of its

2

Id. at 1-2.

3

Id. at 2; R. Doc. 14-3, at 1. (Declaration fo Renate Cordts-Auth).

4

R. Doc. 1 at 4.

5

R. Doc. 14-3, at 3. (Declaration fo Renate Cordts-Auth).

6

Id.

7

See R. Doc. 24, at 17 (Plaintiff's Opposition to Defendant's Motion to Dismiss).
2

GURRNAID mark, including federal trademark infringement, trademark
dilution, and unfair competition under the Lanham Act, as well as trademark
infringement and dilution under Louisiana law.8

721 Bourbon seeks a

preliminary and permanent injunction against HOA's alleged infringement of
its Grenade trademarks, as well as damages, interest, costs, and attorney fees.9
On May 1, 2015, HOA filed a motion to dismiss for lack of personal
jurisdiction.10 Along with the motion, HOA filed a sworn declaration by
Renate Cordts-Auth, HOA's managing director, who states that HOA has no
offices or employees in Louisiana, that it does not own or rent any property
within the state, and that its only sale to a Louisiana resident was to 721
Bourbon's private investigator.11 721 Bourbon does not dispute these basic
assertions. Instead, it argues that HOA has sufficient contacts with Louisiana
to authorize personal jurisdiction based on (1) its sale of allegedly infringing
products, through its website, to 721 Bourbon's Louisiana-based investigator
and (2) HOA's aiming of intentionally tortious conduct towards Louisiana.12

8

Id. at 10-15.

9

Id. at 16.

10

R. Doc. 14-2.

11

R. Doc. 14-3.

12

R. Doc. 24 at 15-21.
3

After HOA filed its motion to dismiss, the parties agreed to a period of
jurisdictional discovery. Initially, HOA's motion was scheduled for submission
on June 17, 2015, but HOA agreed to reset the submission date to August 5,
2015, giving 721 Bourbon an additional seven weeks to develop facts to
support its case for personal jurisdiction.13 721 Bourbon served a request for
production on HOA on June 3, 2015.14 The very next day, HOA's counsel
emailed 721 Bourbon stating that HOA objected to the scope of several of 721
Bourbon's discovery requests.15 On July 6, 2015, HOA served its discovery
responses, which included many of the same objections that counsel for HOA
had previously described.16 Although 721 Bourbon now takes issue with some
of HOA's objections,17 it has not filed a motion to compel production of

13

Id. at 10.

14

R. Doc. 24-3 at 1.

15

R. Doc. 27-4 at 2-3.

16

R. Doc. 24 at 10.

17

Specifically, 721 Bourbon takes issue with HOA's failure to provide: (1) any and
all communications which refer to or relate to Tropical Isle; (2) any and all documents
relating to HOA's decision to use the GURRNAID mark; (3) any and all documents
relating to three trademark applications that HOA filed with the United States Patent
and Trademark Office (USPTO); and (4) any and all documents relating to HOA's
knowledge of Tropical Isle's registered trademarks. According to 721 Bourbon, these
documents are relevant to the existence of jurisdiction because they demonstrate HOA's
awareness of 721 Bourbon's registered trademarks, which, in turn, shows that HOA's
infringement was intentionally tortious conduct aimed at 721 Bourbon in Louisiana. R.
Doc. 24 at 11-12.
4

discovery in this case.

II.

STANDARD
Personal jurisdiction "is an essential element of the jurisdiction of a

district court, without which it is powerless to proceed to an adjudication."
Ruhrgas AG v. Marathon Oil Co., 526 U.S. 574, 583 (1999). When a
nonresident defendant moves the court to dismiss for lack of personal
jurisdiction under Rule 12(b)(2), the plaintiff bears the burden to show that
personal jurisdiction exists. Revell v. Lidov, 317 F.3d 467, 469 (5th Cir. 2002).
When a court rules on a motion to dismiss for lack of personal jurisdiction
without holding an evidentiary hearing, as in this case, the nonmoving party
need only make a prima facie showing; "[p]roof by a preponderance of the
evidence is not required." Johnston v. Multidata Sys. Int'l Corp., 523 F.3d
602, 609 (5th Cir.2008).

The allegations of the complaint, except as

controverted by opposing affidavits, must be taken as true, and all conflicts in
the facts must be resolved in favor of plaintiffs. Thompson v. Chrysler Motors
Corp., 755 F.2d 1162, 1165 (5th Cir. 1985). In making its determination, the
Court may consider "affidavits, interrogatories, depositions, oral testimony,
or any combination of the recognized methods of discovery." Revell, 317 F.3d
at 469 (quoting Stuart v. Spademan, 772 F.2d 1185, 1192 (5th Cir.1985)).
5

A court has personal jurisdiction over a nonresident defendant if (1) the
forum state's long-arm statute confers personal jurisdiction over that
defendant, and (2) the forum state's exercise of jurisdiction complies with the
Due Process Clause of the Fourteenth Amendment. Latshaw v. Johnston, 167
F.3d 208, 211 (5th Cir. 1999). Because Louisiana's long-arm statute, La. R.S.
§ 13:3201, et seq., extends jurisdiction to the full limits of due process, the
Court's focus is solely on whether the exercise of its jurisdiction in this case
satisfies federal due process requirements. Dickson Marine Inc. v. Panalpina,
Inc., 179 F.3d 331, 336 (5th Cir. 1999) (citing La. R.S. § 13:3201(B)). The
exercise of personal jurisdiction over a nonresident defendant satisfies due
process when (1) the defendant has purposefully availed itself of the benefits
and protections of the forum state by establishing "minimum contacts" with
that state, and (2) exercising personal jurisdiction over the defendant does not
offend "traditional notions of fair play and substantial justice." Revell, 317
F.3d at 470 (quoting Mink v. AAAA Dev. LLC, 190 F.3d 333, 336 (5th Cir.
1999)).
There are two ways to establish minimum contacts: specific jurisdiction
and general jurisdiction. Wilson v. Belin, 20 F.3d 644, 647 (5th Cir. 1994).
General jurisdiction will attach, even if the act or transaction sued upon is
unrelated to the defendant's contacts with the forum state, if the defendant has
6

engaged in "continuous and systematic" activities in the forum state.
Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 415 (1984);
Wilson, 20 F.3d at 647. Contacts between a defendant and the forum state
must be "extensive" to satisfy the "continuous and systematic" test.
Submersible Sys., Inc. v. Perforadora Cent., S.A. de C.V., 249 F.3d 413, 419
(5th Cir. 2001); see also Goodyear Dunlop Tires Operations, S.A. v. Brown,
131 S.Ct. 2846, 2853–54 (2011) ("For an individual, the paradigm forum for
the exercise of general jurisdiction is the individual's domicile; for a
corporation it is an equivalent place, one in which the corporation is fairly
regarded as at home.").
Specific jurisdiction exists when a nonresident defendant "has
'purposefully directed its activities at the forum state and the litigation results
from alleged injuries that arise out of or relate to those activities.'" Panda
Brandywine Corp. v. Potomac Elec. Power Co., 253 F.3d 865, 868 (5th Cir.
2001) (quoting Alpine View Co. v. Atlas Copco A.B., 205 F.3d 208, 215 (5th
Cir. 2000)); see also Helicopteros Nacionales, 466 U.S. at 414 n.8. Minimum
contacts may be established by actions, or even just a single act, by the
nonresident defendant whereby it "purposefully avails itself of the privilege of
conducting activities within the forum State, thus invoking the benefits and
protections of its laws." Burger King Corp. v. Rudzewicz, 471 U.S. 462, 475
7

(1985) (quoting Hanson v. Denckla, 357 U.S. 235, 253 (1958)).

"The

non-resident's 'purposeful availment' must be such that the defendant 'should
reasonably anticipate being haled into court' in the forum state." Ruston Gas
Turbines Inc. v. Donaldson Co., 9 F.3d 415, 419 (5th Cir. 1993) (quoting
World–Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 297 (1980)).
Importantly, "[t]he unilateral activity of [a plaintiff] who claim[s] some
relationship with a nonresident defendant cannot satisfy the requirement of
contact with the forum State." Pervasive Software Inc. v. Lexware GmbH &
Co. KG, 688 F.3d 214, 222 (5th Cir. 2012) (quoting Hanson, 357 U.S. at 253,
78 S.Ct. 1228).
The Fifth Circuit has synthesized the test for specific jurisdiction into a
three-step inquiry. The court must determine
(1) whether the defendant has minimum contacts with the forum
state, i.e., whether it purposely directed its activities toward the
forum state or purposefully availed itself of the privileges of
conducting activities there; (2) whether the plaintiff's cause of
action arises out of or results from the defendant's forum-related
contacts; and (3) whether the exercise of personal jurisdiction is
fair and reasonable.
Seiferth v. Helicopteros Atuneros, Inc., 472 F.3d 266, 271 (5th Cir. 2006)
(quoting Nuovo Pignone, SpA v. STORMAN ASIA M/V, 310 F.3d 374, 378 (5th
Cir. 2002)). "If the plaintiff successfully satisfies the first two prongs, the
burden shifts to the defendant to defeat jurisdiction by showing that its
8

exercise would be unfair or unreasonable." Id.

III. DISCUSSION
HOA contends that the Court lacks jurisdiction over it because 721
Bourbon has failed to allege sufficient minimum contacts between it and
Louisiana. 721 Bourbon counters that HOA has contacts with Louisiana
sufficient to confer specific jurisdiction.18 In support, 721 Bourbon offers two
basic arguments. First, it argues that HOA made contact with Louisiana by
selling products through its website to 721 Bourbon's

Louisiana-based

investigator and then communicating with the investigator about the sale.
Second, 721 Bourbon contends that jurisdiction exists under the "effects test"
of Calder v. Jones, 465 U.S. 783 (1984), because by marketing products that
allegedly infringe 721 Bourbon's trademarks, HOA has engaged in intentional
tortious conduct designed to injure 721 Bourbon in Louisiana. The Court
addresses each argument in turn.19
18

721 Bourbon does not contend that this Court has general jurisdiction over
HOA. R. Doc. 24 at 13 ("Because the facts establish that the Court has specific
jurisdiction over HOA, [plaintiff] will forego establishing general jurisdiction.").
19

The Court notes that specific personal jurisdiction is claim-specific, meaning
that if a plaintiff's claims relate to different forum contacts of the defendant, then
specific jurisdiction must be established for each claim. Seiferth v. Helicopteros
Atenuros, Inc., 472 F.3d 266, 274-75 (5th Cir. 2006). Here, however, 721 Bourbon does
not distinguish between its trademark claims and its related claims under federal and
state law. Rather, it cites two particular sets of contacts and relies on two arguments to
9

A.

HOA's Sale of Merchandise Through its Website

721 Bourbon argues that HOA has established "traditional business
contacts" with Louisiana sufficient to confer specific jurisdiction. In support,
721 Bourbon relies chiefly on: (1) HOA's sale of allegedly infringing
merchandise, through its website, to 721 Bourbon's Louisiana-based
investigator; (2) HOA's exchange of emails and phone calls with 721 Bourbon's
investigator concerning the order; (3) HOA's shipment of merchandise to the
investigator's Louisiana address; and (4) HOA's issuance of a partial refund to
the investigator for expedited shipping services that were not provided. HOA
submits that it has no offices or employees in Louisiana; that it does not own
or rent any property within the state; and that its only sale to a Louisiana
resident was to 721 Bourbon's private investigator. Other than this single
transaction, HOA has never sold any merchandise in Louisiana--through its
website or otherwise. HOA supports these contentions with the sworn
declaration of Renate Cordts-Auth, HOA's managing director.20 721 Bourbon
does not dispute these basic contentions.21
support jurisdiction over its lawsuit as a whole. Because both sets of contacts are plainly
insufficient to authorize jurisdiction, the Court rejects both of 721 Bourbon's arguments
with respect to each one of its claims.
20

R. Doc. 14-3.

21

While 721 Bourbon does argue that some of HOA's responses to jurisdictional
discovery were deficient, the responses that 721 Bourbon takes issue with relate to
10

A court, in determining whether it can exercise personal jurisdiction over
a nonresident defendant based on the defendant's online presence, "look[s] to
the 'nature and quality of commercial activity that an entity conducts over the
Internet.'" Mink, 190 F.3d at 336 (quoting Zippo Mfg. Co. v. Zippo Dot Com,
Inc., 952 F.Supp. 1119, 1124 (W.D.Pa.1997)). To structure this inquiry, courts
frequently draw on the test set forth in Zippo, which "categorized Internet use
into a spectrum of three areas" as follows:
At one end of the spectrum, there are situations where a defendant
clearly does business over the Internet by entering into contracts
with residents of other states which "involve the knowing and
repeated transmission of computer files over the Internet. . . ." In
this situation, personal jurisdiction is proper. At the other end of
the spectrum, there are situations where a defendant merely
establishes a passive website that does nothing more than
advertise on the Internet. With passive websites, personal
jurisdiction is not appropriate. In the middle of the spectrum,
there are situations where a defendant has a website that allows a
user to exchange information with a host computer. In this
middle ground, "the exercise of jurisdiction is determined by the
level of interactivity and commercial nature of the exchange of
information that occurs on the Website."
Id. (alteration in original) (citations omitted). Importantly, while the Zippo
sliding scale remains a "factor in the jurisdiction analysis," the Fifth Circuit

HOA's alleged knowledge of 721 Bourbon's trademark and its decision to use its own
GURRNAID designation. See R. Doc. 24 at 10-12. 721 Bourbon does not suggest that
HOA misrepresents the nature of its commercial activities in Louisiana; nor does not it
give the Court reason to believe that HOA has sold products to any Louisiana resident
other than 721 Bourbon's private investigator.
11

has indicated that "internet-based jurisdictional claims must continue to be
evaluated on a case-by-case basis, focusing on the nature and quality of online
and offline contacts to demonstrate the requisite purposeful conduct that
establishes personal jurisdiction." Pervasive Software, Inc. v. Lexware GmbH
& Co. KG, 688 F.3d 214, 227 n.7 (5th Cir. 2012).
In applying the Zippo test, district courts within the Fifth Circuit have
often exercised personal jurisdiction over defendants whose websites enabled
online purchases. See Tempur–Pedic Int'l v. Go Satellite, Inc., 758 F.Supp.2d
366, 373 (N.D.Tex.2010) (defendant's website "allow[ed] placement of online
orders and enabl[ed] communication between Texas-based customers and
[defendant's] sales staff via live chat and e-mail"); AdvanceMe, Inc. v.
Rapidpay, LLC, 450 F.Supp.2d 669, 673 (E.D.Tex.2006) (defendant's website
allowed potential customers to "fill out an online form and apply for
[defendant's] services through its website"); Am. Eyewear, Inc. v. Peeper's
Sunglasses & Accessories, Inc., 106 F.Supp.2d 895, 901 (N.D.Tex.2000)
(website allowed customers to "submit product order forms that contain credit
card and shipping information" and to "receive personalized service directly
from the web site by using the site's e-mail option").
Importantly, however, courts have also noted that personal jurisdiction
requires more than a mere possibility that forum residents may purchase
12

products on a nonresident defendant's website. In Origin Instrument Corp.
v. Adaptive Computer Systems, Inc., a trademark case, defendant operated a
"moderately interactiv[e]" website, which contained information about
allegedly infringing products, provided a link to defendant's email, and
allowed customers to purchase and directly download software via a hyperlink
to another site. 1999 WL 76794, at *3. Nonetheless, the court found that
personal jurisdiction was improper because the defendant had not used its site
to interact with anyone in the forum state. Id. at *4. The court reasoned that
because specific jurisdiction requires a showing of purposeful availment,
jurisdiction "should not be premised on the mere possibility that a Defendant
may be able to do business with Texas over its website, with nothing more."
Id. Similarly, in Monistere, the court found that a website that allowed users
to purchase products that allegedly infringed the plaintiff's patent, did not give
rise to personal jurisdiction. 2013 WL 6383886, at *7. Following Origin
Instruments, the court concluded that although the defendant's website was
"highly interactive" and permitted online transactions, "personal jurisdiction
cannot be established by the mere possibility that Louisiana residents may
purchase products on Defendants' website, without further proof that
Defendants have purposefully availed themselves of this forum." Id. at *7-*8.
As these cases make clear, personal jurisdiction cannot rest on internet-based
13

exchanges that are possible in theory but have yet to materialize. Instead,
there must be evidence of an actual "relationship among the defendant, the
forum, and the litigation." Walden v. Fiore, 134 S. Ct. 1115, 1121, 188 L. Ed. 2d
12 (2014) (quoting Keeton v. Hustler Magazine, Inc., 465 U.S. 770, 775
(1984)).
Moreover, as the Supreme Court has made clear, the relationship
required for specific personal jurisdiction "must arise out of contacts that the
'defendant himself' creates with the forum State." Id. (quoting Burger King,
471 U.S. at 475). Thus, the focus of the jurisdictional inquiry is on the
defendant's own conduct, not the unilateral activity of a plaintiff. See Asahi
Metal Indus. Co. v. Superior Court of California, Solano Cnty., 480 U.S. 102,
109 (1987) (noting that the Supreme Court has "rejected the assertion that a
consumer's unilateral act of bringing the defendant's product into the forum
State was a sufficient constitutional basis for personal jurisdiction over the
defendant").
In applying these principles, district courts within the Fifth Circuit have
concluded that it is improper to rely on a transaction--for jurisdictional
purposes--that was initiated by the plaintiff. In QR Spex, Inc. v. Motorola,
Inc., for example, the defendant sold products that allegedly infringed the
plaintiff's patent. 507 F. Supp. 2d 650, 661 (E.D. Tex. 2007). The plaintiff
14

hired an investigator, who purchased two such products by "reaching out to
non-Texas retailers" and arranging a shipment to the forum state. Id. The
Court refused to consider these purchases "because they constitute [plaintiff's]
unilateral acts; albeit acts that successfully circumvented the measures
[defendant] undertook to avoid availing itself to this forum." Id. Similarly, in
Tempur-Pedic, a trademark case, the defendant operated a website that sold
products online, making at least three sales to residents of the forum state.
758 F. Supp. 2d at 375. The defendant argued that jurisdiction was improper
because one of these sales was to a private investigator hired by the plaintiff.
The court stated: "there are cases in this circuit that support the premise that
plaintiff cannot establish in personam jurisdiction based on such sales."
Nonetheless, the court found that jurisdiction existed, noting that the plaintiff
had no involvement in two of the defendant's sales. Finally, in Monistere, a
defendant used its website to sell products that allegedly infringed plaintiff's
patent, but its only sale to a resident of the forum state was to the plaintiff
himself. 2013 WL 6383886, at *7. The court found personal jurisdiction
lacking, reasoning: "for this one contact with Louisiana to constitute
purposeful availment of this forum by Defendants, the contact must result
from Defendants' purposeful conduct, not merely from the unilateral activity
of Plaintiff." Id.
15

Here, HOA's website is more than just an online billboard, passively
relaying information; it allows visitors to purchase HOA's allegedly infringing
products online. But while its online presence makes sales to Louisiana
residents possible, HOA's actual contact with Louisiana has been de minimis.
The undisputed evidence reveals that HOA has made only one sale to a
Louisiana resident. Moreover, this single sale was made not to a disinterested
third party but to an investigator acting on behalf of 721 Bourbon. As QR
Spex, Tempur-Pedic, and Monistere make clear, a plaintiff cannot rely on such
unilateral activity to manufacture jurisdiction in its chosen forum.22 Indeed,
the Court finds it particularly problematic for 721 Bourbon to rely on its own
investigator's purchase here, given that its trademark claims are founded on
notions of customer confusion. Clearly, 721 Bourbon's investigator was not
confused as to the source of the products in question. See U.S. Olympic
Comm. v. Does 1-10, 2008 WL 2948280, at *2 (N.D. Cal. July 25, 2008)
("Because the gravamen of such claims involve deceiving and confusing
customers, courts considering similar claims have rejected attempts by
plaintiffs to manufacture contacts with the forum state by having an agent

22

The Court notes that numerous courts in other circuits have also expressed
"hostility towards finding jurisdiction under such potentially manufactured
circumstances." Buccellati Holding Italia SPA v. Laura Buccellati, LLC, 935 F. Supp.
2d 615, 623 (S.D.N.Y. 2013) (collecting cases).
16

purchase the alleged infringing products."); ISI Brands, Inc. v. KCC Int'l, Inc.,
458 F. Supp. 2d 81, 88 (E.D.N.Y. 2006) (noting that plaintiff's agents'
purchase of products that allegedly infringed plaintiff's trademark had
"nothing to do with Plaintiff's action for infringement since [they] cannot
claim to have been confused as to with whom [they] [were] dealing").
Accordingly, the Court will not rely on the sale of GURRNAID merchandise to
721 Bourbon's investigator as a basis for exercising personal jurisdiction over
HOA.
The remaining contacts with Louisiana cited by 721 Bourbon are
similarly unavailing because they too were initiated by 721 Bourbon's own
investigator. For instance, 721 Bourbon cites an email message that HOA'
customer service representative sent to its private investigator. But this email
was not a marketing outreach effort intended to create new inroads into the
Louisiana market; its purpose was merely to confirm the order that the
investigator had already placed.23

721 Bourbon also cites two phone

conversations between HOA representatives and the investigator. But these
too were routine customer service efforts that the investigator himself
initiated, first by placing his order and then by emailing and calling HOA to
23

Id. at 5 (Email from "[e-mail]" to "[e-mail]" stating:
"Thank you for placing your order with Gurrnaid! This email is to confirm your recent
order.").
17

check the status of his shipment.24 The same is true of the check that HOA
mailed the investigator, which merely refunded the investigator for expedited
shipping services, as the investigator specifically requested.25

Like the

investigator's order itself, each of these contacts was initiated by 721 Bourbon
itself. As such, they do not evidence purposeful availment of Louisiana by
HOA and cannot give rise to personal jurisdiction in this forum.26
B.

HOA's Aiming of Intentionally Tortious Conduct at
Louisiana

721 Bourbon's second argument is that this Court has personal
jurisdiction over HOA because HOA "engaged in tortious conduct outside of
the forum state that was intended to and d[id] in fact cause injury within the

Id. at 7 (Email from "[e-mail]" to "[e-mail]"
stating: "I placed an order on January 07, 2015 under order number 1037. This order
has not arrived to date, can someone advise me as to when I can expect the order? Also
I paid for 2 day shipping which I would like to be refunded.").
24

25

Id.

26

721 Bourbon also sites a statement that a customer service representative for
HOA allegedly made to its 721 Bourbon's private investigator during a phone call. After
first discussing HOA's shipment of the investigator's order, the investigator asked about
HOA's distribution to stores in Louisiana. HOA's representative allegedly responded:
"No, we're not in Louisiana yet. I'm hoping soon . . . . We'll be out there in the next
couple of weeks--not weeks, next couple of years we'll definitely be out there." R. Doc.
24 at 9. HOA argues that this statement lacks a proper evidentiary foundation and is
therefore inadmissible. But even if these statements could be admitted into evidence,
they would not support a finding of personal jurisdiction, because they do not indicate
that HOA has purposefully availed itself of the benefits and protections of Louisiana. At
most, they indicate that HOA "hopes" to engage with the forum at some undefined point
in the future. Hopes for the future do not constitute purposeful availment.
18

forum state."27 To support this argument, 721 Bourbon relies on Calder v.
Jones, 465 U.S. 783 (1984), and on a district court case applying Calder,
Source Network Sales & Marketing, LLC v. Ningbo Desa Electrical Mfg. Co.,
Ltd., 2015 WL 2341063 (N.D. Tex. May 15, 2015). The Court finds that unlike
in those two cases, there is no evidence here that HOA's actions were
specifically targeted at Louisiana, as is required to support specific
jurisdiction.
In Calder, an actress living in California brought a libel suit in California
state court against a reporter and an editor for the National Enquirer, a
publication based in Florida but whose largest market was California. 465 U.S.
at 784-85. The Supreme Court noted that the allegedly libelous article drew
on California sources; that the article centered on the California activities of
a California resident; and that the defendants knew that "the brunt of the
harm, in terms both of respondent's emotional distress and the injury to her
professional reputation, was suffered in California." Id. at 787-90. Because
California was the "focal point both of the story and of the harm suffered," the
Court held that California's exercise of jurisdiction over defendants was
consistent with due process. Id. at 789.

27

R. Doc. 17-21.
19

Recently, the Supreme Court clarified the application of Calder in
Walden v. Fiore, 134 S. Ct. 1115 (2014). There, a Georgia police officer seized
the plaintiffs' cash at an airport in Atlanta, Georgia. Id. at 1119. When the
plaintiffs returned to Nevada, they filed suit against the officer in that state,
alleging that the officer violated their Fourth Amendment rights by, among
other things, seizing their cash without probable cause and drafting a false
affidavit. Id. at 1120. The Supreme Court reiterated that the jurisdictional
inquiry is focused on "the defendant's contacts with the forum state itself, not
the defendant's contacts with persons who reside there." Id. at 1122. When
the only basis for the exercise of specific personal jurisdiction is "a defendant's
relationship with a plaintiff or third party," then jurisdiction will not lie. Id.
at 1123. Applying these principles, the Court concluded that the Nevada
district court lacked personal jurisdiction over the officer, who had "never
traveled to, conduced activities with, contacted anyone in, or sent anything or
anyone to Nevada." Id. at 1124.
The Court reconciled its holding with its prior decision in Calder by
stating: "The crux of Calder was that the reputation-based 'effects' of the
alleged libel connected the defendants to California, not just to the plaintiff."
Id. at 1123-24. The Court also noted that the strength of the relationship in
Calder was largely a function of the nature of the libel tort. Id. at 1124.
20

Because libel requires publication to third persons, "the reputational injury
caused by the defendants' story would not have occurred but for the fact that
the defendants wrote an article for publication in California that was read by
a large number of California citizens." Id. The Court concluded that under
Calder, "the proper question is not where the plaintiff experienced a particular
injury or effect but whether the defendant' conduct connects him to the forum
in a meaningful way." Id. at 1125.
Here, HOA's use of allegedly infringing product designations does not
meaningfully connect it to Louisiana. Unlike in Calder, where the defendants'
article was published to numerous readers in California, HOA has not
marketed or sold any merchandise in Louisiana or completed any transactions
with Louisiana residents--excepting, of course, its single sale to 721 Bourbon's
own investigator, which the Court has found insufficient to confer jurisdiction.
HOA's only connection to Louisiana is that plaintiff 721 Bourbon happens to
be based there. Specific personal jurisdiction cannot rest on such "random,
fortuitous, or tentative" connections. Burger King, 471 U.S. , at 475; see also
Panda Brandywine Corp. v. Potomac Elec. Power Co., 253 F.3d 865, 870 (5th
Cir. 2001) ("We refuse to ignore the limits of specific jurisdiction to allow
Appellants to sue Appellee in the district court . . . when the 'potential' injury
claimed by Appellants resulted from interference with financing agreements
21

that have nothing to do with Texas except for the mere fortuity that Appellants
reside there.").
721 Bourbon makes much of the fact that the USPTO previously denied
two of HOA's applications for trademark registration, citing the likelihood of
confusion with marks owned by 721 Bourbon. 721 Bourbon argues that
because these Office Actions put HOA on notice of 721 Bourbon's mark, HOA's
continued use of its mark is aimed directly at 721 Bourbon and intended to
cause harm in this state.28 This argument fails because it focuses inordinately
on HOA's connection with 721 Bourbon, not Louisiana. As the Supreme Court
instructed in Walden, specific jurisdiction cannot rest solely on a nonresident's
defendant's relationship with a plaintiff, who happens to reside in the forum
state. Where, as here, a defendant's contacts with the forum state occur
merely because a plaintiff is a resident of that state, there is nothing to indicate
that the defendant directed its activities at the state or purposefully availed
itself of the state's benefits and protections. See Moncrief Oil Int'l Inc. v. OAO
Gazprom, 481 F.3d 309, 314 (5th Cir. 2007) ("We have expressly declined to
allow jurisdiction for even an intentional tort where the only jurisdictional
basis is the alleged harm to a Texas resident."). Thus, personal jurisdiction

28

R. Doc. 24 at 4-8, 14-15.
22

does not lie in the forum.
721 Bourbon's reliance on Source Network, a case from the Northern
District of Texas, is also unavailing. There, a Texas plaintiff filed a trademark
infringement and unfair competition suit in Texas against a nonresident
defendant, and the Texas court found that specific personal jurisdiction
existed under Calder. 2015 WL 2341063, at *2.

Importantly, the court

emphasized the defendant had initiated contact with Texas by sending the
plaintiff a cease and desist letter and by emailing several of the plaintiff's
Texas-based customers about matters directly relevant to the plaintiff's
lawsuit. Id., at *8 n. 8. Neither of those factors are present here. HOA did not
send 721 Bourbon a cease-and-desist letter; nor has it initiated contact with
either 721 Bourbon or any of its Louisiana-based customers. Thus, the
reasoning of the court in Source Network does not apply to the very different
facts at issue here.
For these reasons, the Court therefore that HOA does not have sufficient
minimum contacts with Louisiana such that the exercise of specific personal
jurisdiction over HOA would comport with due process.
C.

Additional Discovery on Personal Jurisdiction

721 Bourbon submits in the alternative that the Court should defer ruling
on personal jurisdiction until trial, citing the "intertwined" nature of its
23

jurisdictional case and the merits of its claims. 721 Bourbon argues that both
the question of jurisdiction under Calder and the merits of its case turn on
HOA's awareness of 721 Bourbon's trademarks and its intent to harm 721
Bourbon in Louisiana by infringing those marks. 721 Bourbon also takes issue
with HOA's responses to jurisdictional discovery, arguing that HOA's
"deficient" responses to its requests for production deprived 721 Bourbon of
the ability to make a more complete showing of personal jurisdiction. For
these reasons, 721 Bourbon argues that it should be permitted to conduct
additional discovery and present its jurisdictional case alongside its case on
the merits at trial.29
The Court rejects 721 Bourbon's request. Initially, the Court notes that
721 Bourbon had an opportunity to conduct jurisdictional discovery. After
filing its motion to dismiss, HOA agreed to reset the submission date for its
motion from June 17, 2015 to August 5, 2015, thereby giving 721 Bourbon an
additional seven weeks to develop facts to support its case for personal
jurisdiction.30 On July 3, 2015, 721 Bourbon served a request for production
on HOA.31 HOA served its discovery responses on 721 Bourbon on July 6,
29

Id. at 21-22.

30

See id. at 10.

31

R. Doc. 24-3 at 1.
24

2015, outlining numerous objections to the scope of 721 Bourbon's discovery
requests.32 This response gave 721 Bourbon over four weeks before the
submission date to review HOA's submission and, if necessary, to seek an
order compelling production of discovery under Rule 37 of the Federal Rules
of Civil Procedure. 721 Bourbon has filed no such order. Instead, it raises the
adequacy of HOA's discovery for the first time in its opposition to HOA's
motion to dismiss. This tactic deviates from the procedural rules of this Court
and unfairly prevents HOA from briefing its opposition to discovery in
response to a properly-filed motion.
More importantly, the information that 721 Bourbon seeks is irrelevant
to the existence of personal jurisdiction. It is well established that "discovery
on matters of personal jurisdiction . . . need not be permitted unless the
motion to dismiss raises issues of fact." Kelly v. Syria Shell Petroleum Dev.
B.V., 213 F.3d 841, 855 (5th Cir.2000). And, "[w]hen the lack of personal
jurisdiction is clear, discovery would serve no purpose and should not be
permitted." Id. Here, HOA has produced evidence that it operates entirely
outside of Louisiana and that it has made no transactions with Louisiana
residents, other than a single sale, through its website, to 721 Bourbon's own

32

R. Doc. 24 at 10.
25

investigator. 721 Bourbon has not identified any evidence that might rebut
HOA's evidence of its lack of contacts or raise an issue of fact regarding
personal jurisdiction. 721 Bourbon argues instead that it should be permitted
to conduct more discovery on HOA's awareness of 721 Bourbon's registered
trademarks and its "intent relating to the sale of [its] infringing products."33
But, as noted, personal jurisdiction cannot rest solely on the relationship
between a nonresident defendant and a plaintiff with ties to the forum state.
Thus, the absence of personal jurisdiction is clear. And no amount of
additional information on HOA's intent to harm 721 Bourbon in Louisiana
through its sale of infringing products can cure the jurisdictional defect.34

33

Id. at 22.

34

721 Bourbon has also moved the Court to take judicial notice of the following
documents: (1) HOA's trademark application for its GURRNAID mark, serial number
85334793; (2) an office action issued by the USPTO to HOA in connection with that
application; (3) a notice of abandonment issued by the USPTO to HOA in connection
with that application; (4) HOA's trademark application for its GURRNAID
mark with a stylized "G," serial number 85334885; (5) an office action issued

by the USPTO to HOA in connection with that application; (6) a notice of
abandonment issued by the USPTO to HOA in connection with that
application; and (7) a statement of use filed by HOA for a trademark application

bearing serial number 8516086. R. Doc. 23 at 1-2. 721 Bourbon argues that these
documents are relevant to the question of personal jurisdiction because they "help
establish the who did what, where, when, how, and with what motive or intent." Id. at 3.
In other words, 721 Bourbon submits these documents to the Court as evidence of
HOA's intentions vis-a-vis 721 Bourbon. The Court has already concluded that
jurisdiction cannot rest on HOA's intent to harm 721 Bourbon alone. Thus, the
documents for which 721 Bourbon seeks judicial notice do not alter the Court's ruling on
HOA's motion to dismiss for lack of personal jurisdiction. 721 Bourbon's motion for
judicial notice is therefore dismissed as moot.
26

The Court finds that 721 Bourbon has failed to make a prima facie
showing of personal jurisdiction. As such, additional discovery on personal
jurisdiction is not warranted, and 721 Bourbon's case must be dismissed.

IV.

CONCLUSION
For the Court GRANTS defendant's motion to dismiss for lack of

personal jurisdiction.

19th
New Orleans, Louisiana, this ___ day of October, 2015.

________________________________
SARAH S. VANCE
UNITED STATES DISTRICT JUDGE

27