Under A Foot Plant, Co. v. Exterior Design, Inc., et al
Filing
17
OPINION AND ORDER: Plaintiff's request for judicial notice 11 is GRANTED. Defendant's motion to dismiss or transfer venue 8 is GRANTED. This case shall be transferred to the District of Maryland. See formal OPINION AND ORDER. Signed on 3/24/2015 by Chief Judge Ann L. Aiken. (rh)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF OREGON
UNDER A FOOT PLANT, CO., an
Oregon corporation
Plaintiff,
v.
EXTERIOR DESIGN, INC., a
Maryland corporation, doing
business as THE PERENNIAL FARM,
TREADWELL PERENNIALS, and
PERENNIAL FARM MARKETPLACE,
Defendant.
ROBERT SWIDER
MICHAEL DELL LONG
ANDREA A. SELKREGG
Swider Haver
621 SW Morrison, Suite 1420
Portland, Oregon 97205
Attorneys for plaintiff
BARRY J. GOEHLER
Law office of Barry Goehler
1001 SW Fifth Avenue, Suite 1530
Portland, Oregon 97204
Attorney for defendant
Page 1 - OPINION AND ORDER
Case No.
6:14-cv-01371-AA
OPINION AND ORDER
AIKEN, Chief Judge:
Defendant Exterior Design,
Inc.
filed a motion to dismiss
plaintiff Under A Foot Plant, Co.'s complaint for lack of personal
jurisdiction
pursuant
to
Fed.
R.
Civ.
P.
(12) (b) (2).
In
the
alternative, defendant moves to transfer venue to the District of
Maryland.
Additionally,
plaintiff requests
judicial notice of a
printout from defendant's website. For the reasons set forth below,
the parties' motions are granted.
BACKGROUND
Plaintiff, an Oregon corporation with its principal place of
business
in
Salem,
Oregon,
is
in
the
wholesale
business
of
marketing and distributing groundcover plants. In 1999, plaintiff
developed a product line entitled STEPABLES®.
In the course of
marketing STEPABLES®, plaintiff took a number of photographs for
use in its promotional materials. Among these photographs are the
nineteen copyrighted images ("Copyrighted Works") at issue in this
case.
Defendant, a Maryland corporation with its principal place of
business in Glenn Arm, Maryland,
is also in the wholesale plant
business. Sometime around 2010, defendant developed a product line,
entitled Treadwell Plants, that is similar in nature to plaintiff's
STEP ABLES®.
On August 26, 2014, plaintiff filed a complaint in this Court
against
defendant
alleging
Page 2 - OPINION AND ORDER
copyright
infringement,
unfair
and
deceptive trade practices,
plaintiff
alleges
that,
and unjust enrichment.
beginning
in
March
Specifically,
2011,
defendant
impermissibly began using, and continues to use, the Copyrighted
Works
in
promoting
Treadwell
Plants.
On
September
17,
2014,
defendant filed the present motion to dismiss or transfer venue.
STANDARDS
Where the court lacks personal jurisdiction, the action must
be dismissed. Fed. R. Ci v. P. 12 (b) ( 2) . When a defendant moves to
dismiss for lack of personal jurisdiction, the plaintiff bears the
burden
of
establishing
Schwarzenegger v.
Cir.
2004)
that
such
jurisdiction
Fred Martin Motor Co.,
(citation
omitted).
Where
is
appropriate.
374 F.3d 797,
the
court
800
(9th
makes
its
jurisdictional finding based on pleadings and affidavits rather
than an evidentiary hearing, the plaintiff need only make a prima
facie
showing
of
Psychoanalytical
jurisdictional
Ass'n,
59
F.3d
facts.
126,
Caruth
127-28
(9th
v.
Int'l
Cir.
1995).
"Although the plaintiff cannot rest solely on the allegations of
the
complaint
to
establish
that
jurisdiction
is
proper,
the
complaint's uncontroverted factual allegations must be accepted as
true and any factual conflicts in the parties' declarations must be
resolved in the plaintiff's favor." Ukrvaktsina v. Olden Grp., LLC,
2011 WL 5244697, *2 (D.Or. Oct. 30, 2011)
(citations omitted).
DISCUSSION
Defendant
asserts
that
Page 3 - OPINION AND ORDER
dismissal
or
transfer
of venue
is
warranted because
plaintiff
failed
to
allege
facts
that
would
support personal jurisdiction in this forum. Conversely, plaintiff
argues
that
this
District
has
both
general
and
specific
jurisdiction over defendant pursuant to Oregon's long arm statute.
I. Request for Judicial Notice
Plaintiff requests judicial notice of an archived printout
from
defendant's
website,
which was
generated by The
Internet
Archive on November 30, 2010. This printout describes the shipping
services provided by defendant. According to plaintiff, defendant
"does
not
object
to
the
existence of the document,
Court
[but]
taking
judicial
notice
of
the
does not consent to the Court
taking judicial notice of the facts contained within the document."
Pl.'s Mot. Jud. Notice 2. Defendant did not file an opposition to
plaintiff's request for judicial notice.
A court may take
subject
within
to
the
accurately
reasonable
trial
and
judicial notice
dispute"
court's
readily
of
because
territorial
determined
it
"a
fact
"is
that
generally
jurisdiction" or
from
sources
cannot reasonably be questioned." Fed. R. Evid.
is
whose
not
known
"can be
accuracy
201(b). District
courts have routinely taken judicial notice of content from The
Internet Archive pursuant to this rule. See, e.g., Pond Guy, Inc.
v. Aguascape Designs, Inc., 2014 WL 2863871, *4 (E.D.Mich. June 24,
2014); Martins v. 3PD, Inc., 2013 WL 1320454, *16 (D.Mass. Mar. 28,
2013);
In re Methyl Tertiary Butyl Ether
Page 4 - OPINION AND ORDER
(MTBE)
Products Liab.
Litig., 2013 WL 6869410, *4 (S.D.N.Y. Dec. 30, 2013). Accordingly,
plaintiff's request for judicial notice is granted.
II. Motion to Dismiss
When
no
applicable
federal
governs
statute
personal
jurisdiction, the district court applies the law of the state in
which it sits. Schwarzenegqer, 374 F.3d at 800 (citations omitted).
Because Oregon's long-arm statute is coextensive with federal due
process requirements, the jurisdictional analyses under state law
and federal due process are the same. Id. at 801; Or. R. Civ. P.
4L.
Thus,
determine
the
two
whether
inquiries
the
merge
assertion
of
and
this
Court
only
jurisdiction
personal
need
over
defendant violates the due process clause.
In order for a court to have the power to render judgment
against a defendant, the plaintiff must show that the nature and
quality of the non-resident's contacts are sufficient to establish
either "general" or "specific" personal jurisdiction. Helicopteros
Nacionales de Columbia, S.A. v. Hall, 466 U.S. 408, 414-15 (1984).
A. General Jurisdiction
The due process clause permits a court to exercise general
personal jurisdiction if the non-resident defendant's activities
within
the
forum
state
are
"substantial"
or
"continuous
and
systematic," even if the cause of action is unrelated to those
activities.
Tuazon v.
1171
Cir.
(9th
2006)
R.J.
Reynolds Tobacco Co.,
(citation
Page 5 - OPINION AND ORDER
omitted).
The
433 F.3d 1163,
standard
for
establishing general jurisdiction is "exacting" and requires that
the defendant's contacts be of the sort that "approximate physical
presence"
in the
(citation
omitted).
impact,
forum state.
physical
Schwarzenegger,
"Longevity,
presence,
continuity,
and
regulatory or economic markets
into
among the
8 01
economic
volume,
integration
are
37 4 F. 3d at
the
state's
indica of such a
presence." Tuazon, 433 F.3d at 1172; see also Bancroft & Masters,
Inc. V. Augusta Nat'l,
("[f]actors
to
defendant makes
be
Inc.,
taken
sales,
223 F.3d 1082, 1086 (9th Cir. 2000)
into
consideration
solicits or engages
are
whether
in business
the
in the
state, serves the state's markets, designates an agent for service
of process, holds a license, or is incorporated there")
(citation
omitted).
Plaintiff asserts that general jurisdiction exists because
defendant
makes
consultant -
i.e.
purchases
Dr.
from
Armitage -
Oregon
nurseries,
who attended a
employs
a
trade show in
Oregon, and sells to national chains that "likely" distribute their
products to Oregon. Pl.'s Resp. to Mot.
finds,
to the contrary,
Dismiss 12-13. The Court
that the contacts alleged by plaintiff
cannot be said to be so continuous and systematic as to approximate
defendant's physical presence in Oregon for four reasons. First, it
is well established that purchasing products from a forum state is
not enough to establish general jurisdiction over a defendant. See
Helicopteros, 466 U.S. at 418
Page 6 - OPINION AND ORDER
("mere purchases, even if occurring
at regular intervals, are not enough to warrant a State's assertion
of in personam jurisdiction over a nonresident corporation in a
cause
of
(citation
action
not
omitted);
related
Bancroft,
to
those
223
purchase
F. 3d
at
1086
transactions")
("engaging
in
commerce with residents of the forum state is not in and of itself
the kind of activity that approximates physical presence within the
states borders")
( citation omitted) .
Second, Dr. Armitage offered sworn testimony that he is not an
agent or employee of defendant. Armitage Decl.
~
2. He also stated
that any time spent in Oregon at trade shows and other events was
for the benefit of his own career.
Id.
In other words,
he never
represented defendant or conducted any business on its behalf while
in Oregon.
Id. Third, plaintiff's vague assertion that defendant
has national customers that "likely" distribute their products to
Oregon does
not support its argument
Pl.'s
to Mot.
Resp.
Dismiss
13
for
general
(citing Long
jurisdiction.
Decl.
~
7).
Even
assuming that some of defendant's products reach Oregon through its
national
customers,
occasional,
unsolicited
sales
to
forum
residents are insufficient to create general jurisdiction over a
non-resident. Bancroft, 223 F.3d at 1086 (citation omitted).
Finally, other evidence indicates defendant lacks the contacts
with Oregon that would warrant general jurisdiction. See generally
Watson Decl. Specifically, defendant is not licensed to do business
in Oregon, does not have any agents or employees in Oregon,
Page 7 - OPINION AND ORDER
does
not own any real estate or operate any facilities in Oregon, and
does not own any Oregon bank accounts. Id.
unrefuted
by
plaintiff
and
provide
at~
4. These facts are
further
evidence
that
defendant's contact with Oregon is not systematic and continuous.
Accordingly, this Court lacks general personal jurisdiction over
defendant.
B. Specific Jurisdiction
Where general personal jurisdiction is lacking, a court may
still exercise specific jurisdiction if the defendant has minimum
contacts with the forum state such that the maintenance of the suit
does not offend traditional notions of fair play and substantial
justice. Pebble Beach Co. v. Caddy, 453 F.3d 1151, 1155 (9th Cir.
(citation omitted) . Under the minimum contacts test, a court
2006)
can exercise specific personal jurisdiction over a non-resident if:
1)
the
defendant
performs
an act or consummates
a
transaction
within the forum, purposefully availing itself of the privilege of
conducting activities there; 2) the plaintiff's claim arises out of
or results from the defendant's forum-related activities; and 3)
the
exercise
of
personal
jurisdiction
over
the
defendant
is
reasonable. Id. ( citation omitted) . The plaintiff "bears the burden
of satisfying the first two prongs of the 'minimum contacts' test."
Id.
of
(citation omitted). "If the plaintiff fails to satisfy either
these
prongs,
personal
jurisdiction
Schwarzenegger, 374 F.3d at 802
Page 8 - OPINION AND ORDER
is
not
(citations omitted).
established."
The Ninth Circuit typically treats the first element of the
minimum contacts
test
differently
in
tort
and
contract
cases.
Yahoo! Inc. v. La Ligue Contre Le Racisme Et L'Antisemitisme, 433
F.3d 1199, 1206 (9th Cir.), cert. denied, 547 U.S. 1163 (2006). In
contract
cases,
"purposefully
the
avails
court
itself
activities or consummate[s]
inquires
of
the
whether
the
defendant
privilege
of
conducting
[a] transaction in the forum, focusing
on activities such as delivering goods or executing a contract."
Id.
(citation and internal quotations omitted). In tort cases, the
court generally applies the effects test to determine whether the
defendant purposefully directs its activities at the forum state,
regardless of whether the actions themselves occurred within the
forum. Id.
Because plaintiff's allegations are based in tort, the effects
test governs. Accordingly, plaintiff must demonstrate, in relevant
part, that defendant committed an intentional act expressly aimed
at this forum, which caused harm herein. Harris Rutsky & Co. Ins.
Servs., Inc. v. Bell & Clements Ltd., 328 F.3d 1122, 1131 (9th Cir.
2003)
(citation
"intentional
act"
omitted).
refers
For
to
purposes
"an
intent
of
to
the
effects
perform
an
test,
actual,
physical act in the real world, rather than an intent to accomplish
a result or consequence of that act." Schwarzenegger, 374 F.3d at
806. Thus,
in a copyright action, a defendant acts intentionally
when it reproduces and distributes the protected work, regardless
Page 9 - OPINION AND ORDER
of whether or not it intended to violate the copyright. Herer v. Ah
Ha Pub., LLC, 927 F.Supp.2d 1080, 1086 (D.Or. 2013). An intentional
act with foreseeable effects in a forum state alone will not give
rise to specific jurisdiction; rather, the intentional act must be
"expressly aimed" at the forum state. Bancroft, 223 F.3d at 1087.
Here, the Court finds that defendant committed an intentional
act
within
the
reproduced
F.Supp.2d
and
at
meaning
of
displayed
1086.
The
the
the
more
effects
test
Copyrighted
difficult
when
Works.
question
it
allegedly
Herer,
is
927
whether
defendant's conduct was "expressly aimed" at this forum. Plaintiff
argues
that
defendant
wilfully
violated
its
rights
in
the
Copyrighted Works despite being informed of its interest. Further,
plaintiff contends that,
based on email correspondences and the
transmittal of its copyright registrations and a cease and desist
letter, defendant had knowledge of its Salem, Oregon, location. 1
1
As such, plaintiff argues that Wash. Shoe Co. v. A-Z
Sporting Goods Inc., 704 F.3d 668 (9th Cir. 2012), controls this
Court's analysis. Pl.'s Resp. to Mot. Dismiss 9-11. That case
held that when a plaintiff "allege[s] willful infringement of
[its] copyright, and [the defendant's] knowledge of both the
existence of the copyright and the forum of the copyright
holder," the "expressly aimed" prong is satisfied. Wash. Shoe,
704 F.3d at 678-79. As defendant notes, however, the Supreme
Court recently examined the Ninth Circuit's application of the
effects test and held that a plaintiff cannot be the only
connection between the defendant and the forum: "it is the
defendant's conduct that must form the necessary connection with
the forum State that is the basis for jurisdiction over him."
Walden v. Fiore, 134 S.Ct. 1115, 1122 (2014) (citations omitted).
Thus, intentional conduct directed at an individual who is known
to reside in a particular forum is not enough, on its own, to
satisfy the minimum contacts test. Id. at 1125. "The proper
Page 10 - OPINION AND ORDER
Plaintiff's argument is problematic because
it shifts
the
focus of the minimum contacts analysis from defendant's connection
with Oregon to defendant's connection with plaintiff; yet this is
precisely
what
defendant's
the
Court
intentional
contacts with the
jurisdiction.
found
conduct
improper
did
not
in
Walden.
create
the
Here,
necessary
forum to allow for the exercise of specific
It is undisputed that defendant's conduct did not
occur within the State of Oregon.
Indeed,
plaintiff alleges the
reproduction and display of the Copyrighted Works took place in
Maryland, Massachusetts, and on defendant's websites.
The "maintenance of a passive website alone cannot satisfy the
express
aiming
prong";
only
operating
"a
passive
website
in
conjunction with 'something more' - conduct directly targeting the
forum - is sufficient." Marvix Photo, Inc. v. Brand Technologies,
Inc.,
647
F. 3d 1218,
1229
(9th Cir.
2011)
(citations omitted).
Courts consider multiple factors when determining if a defendant
has
done
"something
defendant's
commercial
website,
ambitions,
more,"
the
and
including:
geographic
whether
"the
scope
the
of
interactivity
the
defendant
of
defendant's
individually
targeted a plaintiff known to be a forum resident." Id.
(citation
and internal quotations omitted).
An analysis
of these
factors
establishes that
defendant's
question is not where the plaintiff experienced a particular
injury or effect but whether the defendant's conduct connects him
to the forum in a meaningful way." Id.
Page 11 - OPINION AND ORDER
conduct lacked the requisite "something more." Defendant's websites
have a low degree of interactivity. They allow a visitor to submit
questions via a "contact us" page and sign up for an electronic
newsletter but they do not allow visitors to purchase products
online.
See Willis v.
(D.Or. Oct. 24, 2011)
Debt Care,
USA,
Inc.,
2011 WL 7121288,
(defendant's website was passive because it
only allowed customers to log-in and access their accounts,
maintained a "contact us" page)
Richard
Watson,
defendant's
defendant's
business
*8
is
and
(citations omitted) . In addition,
general
conducted
manager,
almost
testified
exclusively
in
that
the
Northeast and Mid-Atlantic regions of the United States. Watson
Decl.
~
2. Plaintiff has produced no evidence that defendant made
sales in Oregon. There is also no evidence that defendant's alleged
infringement was targeted at plaintiff's customers or other Oregon
residents.
ambition
These
in
this
facts
forum,
show
as
a
general
well
as
a
absence
lack
of
of
commercial
individualized
targeting directed at Oregon and its citizens.
In
sum,
plaintiff
failed
to
establish
that
defendant
"expressly aimed" its conduct at Oregon. Because plaintiff did not
satisfy the first prong of the minimum contacts analysis, the Court
need not examine the other two elements to determine that specific
jurisdiction is lacking. Schwarzenegger, 374 F.3d at 802.
III. Motion to Transfer Venue
Even assuming defendant was subject to personal jurisdiction
Page 12 - OPINION AND ORDER
in
this
District,
a
transfer
of
venue
would
nonetheless
be
appropriate. See Jones v. GNC Franchising, Inc., 211 F.3d 495, 49899 (9th Cir.), cert. denied, 531 U.S. 928 (2000)
(articulating non-
exclusive factors in determining whether to transfer venue pursuant
to 28 U.S.C.
§
1404(a)).
instituted in the
Initially,
District
this action could have been
of Maryland because defendant
is
a
Maryland corporation. 28 U.S.C. 1400(a). Moreover, to the extent
applicable,
the
factors
determining venue weigh in favor
of a
transfer, as defendant has no contact with this forum outside of
its
dispute
with
plaintiff.
As
a
result,
defendant
would
be
inconvenienced to a degree that outweighs the deference typically
given
to
a
plaintiff's
choice
of
forum.
For
these
reasons,
defendant's motion is granted.
CONCLUSION
Plaintiff's request for judicial notice (doc. 11) is GRANTED.
Defendant's
GRANTED.
motion
This
case
to
dismiss
shall
be
or
transfer
transferred
venue
to
Maryland.
IT IS SO ORDERED.
Dated this
~11Jay
of March, 2015.
Ann Aiken
United States District Judge
Page 13 - OPINION AND ORDER
the
(doc.
8)
is
District
of
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