Mayo Foundation for Medical Education and Research et al v. Enterprise Management Limited, Inc. et al
ORDER granting in part 11 Motion to Dismiss for Lack of Jurisdiction (Written Opinion) Signed by Senior Judge David S. Doty on 9/27/2017. (DLO)
UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
Civil No. 17-941(DSD/HB)
Mayo Foundation for Medical
Education and Research and
Enterprise Management Limited, Inc.
and Mary Lippitt,
Nicole M. Moen, Esq., Anne E. Rondoni Tavernier, Esq. and
Fredrikson & Byron, 200 South 6th Street, Suite 4000,
Minneapolis, MN 55402, counsel for plaintiffs.
Paul Allen Godfread, Esq. and Godfread Law Firm, 6043 Hudson
Road, Suite 305, Woodbury, MN 55125, counsel for defendants.
This matter is before the court upon the motion to dismiss
or transfer by defendants.
Based on a review of the file,
record, and proceedings herein, and for the following reasons,
the court grants the motion and transfers the case to the Middle
District of Florida.
contention that plaintiffs Mayo Clinic and Mayo Foundation for
Medical Education and Research (collectively Mayo) infringed one
of defendants’ copyrighted charts.
business is Rochester, Minnesota.
Mayo’s principal place of
Compl. ¶ 1.
Mary Lippitt, a Florida resident, is the sole owner and employee
of Enterprise Management Limited, Inc., a Florida corporation.1
business solutions to corporations, educational institutions, and
Lippitt Decl. ¶ 3.
include, among other things, numerous articles and two books
authored by Lippitt, which incorporate a series of graphics,
including the work at issue.
license to Lippitt’s work.
Id. ¶ 11.
EML owns the exclusive
Id. ¶ 12.
Neither EML nor Lippitt own property in Minnesota, directly
business with any company in Minnesota.2
Lippitt Decl. ¶¶ 6-7.
EML sells Lippitt’s works online both directly and through thirdparty websites such as Amazon.com.
See Tavernier Decl. ¶¶ 3-6.
On August 18, 2016, Mayo contacted EML via email requesting
permission to use one of Lippitt’s charts in an internal training
Compl. ¶ 12.
EML responded that it would grant Mayo a
five-year license to use the chart for $8,000.
Id. ¶ 13.
The court will refer to defendants collectively as EML
unless more specificity is required.
In 2012, Lippitt spoke at Mayo’s Jacksonville, Florida
campus during an event for the American College of Healthcare
Executives, but she had no contacts with Mayo personnel in
Minnesota before the events giving rise to this action. See id. ¶¶
parties negotiated over the next month, but were unable to reach
On September 23, 2016, EML withdrew its most
recent offer and requested contact information for Mayo’s legal
Thereafter, and through the month of November,
counsel for Mayo communicated directly with EML.
See id. ¶¶ 16-
In those communications, EML accused Mayo of copyright
infringement after learning that Mayo had been using the chart
for some period of time before seeking a license.
Id. ¶¶ 16-19.
copyright laws, it offered to resolve the dispute for $10,000,
with the assurance that it would not use the chart going forward.
Id. ¶ 18; id. Ex. A.
Several months later, on March 15, 2017,
and this time through counsel, EML responded with a counteroffer
Compl. ¶¶ 22, 24; id. Ex. B, at 3.
litigation if the matter could not be resolved and attached a
Compl. ¶ 23; id. Ex. B, at 1.
On March 29, 2017, Mayo commenced the instant action seeking
a declaration that it has not infringed and is not infringing the
allegedly copyrighted materials.
Less than a month later, EML
filed a copyright infringement action against Mayo in the Middle
District of Florida, which is the mirror image of this case.
It is undisputed that none of the parties’ communications
were in person.
Enter. Mgmt. Ltd. v. Mayo Clinic, No. 8:17-cv-943 (M.D. Fla.
filed Apr. 20, 2017).
That action has been stayed pending the
court’s determination of the present motion.
Id., ECF No. 12.
Standard of Review
jurisdiction, a plaintiff must establish a prima facie case that
the forum state has personal jurisdiction over the defendant.
Stevens v. Redwing, 146 F.3d 538, 543 (8th Cir. 1998). In the
absence of an evidentiary hearing, a 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.”
Indus., Inc. v. Dakota Sportswear, Inc., 946 F.2d 1384, 1387 (8th
A federal court may assume jurisdiction over a
nonresident defendant “only to the extent permitted by the longarm statute of the forum state and by the Due Process Clause.”
Romak USA, Inc. v. Rich, 384 F.3d 979, 984 (8th Cir. 2004)
(citation and internal quotation marks omitted).
Minnesota long-arm statute “confers jurisdiction to the fullest
extent permitted by the Due Process Clause,” the court need only
consider due process requirements.
905 (8th Cir. 2007).
Coen v. Coen, 509 F.3d 900,
To satisfy due process, a defendant must have “sufficient
minimum contacts” with the forum state such that maintaining the
Romak, 384 F.3d at 984.
contacts exist when [a] defendant’s conduct and connection with
the forum state are such that [it] should reasonably anticipate
being haled into court” here.
Coen, 509 F.3d at 905 (citation
and internal quotation marks omitted).
A defendant’s contacts with the forum state can establish
A forum state has specific jurisdiction when the
cause of action “arise[s] out of” or “relate[s] to” a defendant’s
activities within that state.
Burger King Corp. v. Rudzewicz,
471 U.S. 462, 472 (1985) (citation and internal quotation marks
omitted). General jurisdiction is present when, regardless of the
Coen, 509 F.3d at 905 (citation
contacts with the forum state.”
and internal quotation marks omitted).
Under either analysis,
the Eighth Circuit considers five factors in determining whether
personal jurisdiction exists:
“(1) the nature and quality of
contacts; (3) source and connection of the cause of action with
those contacts; and to a lesser degree, (4) the interest of the
forum state; and (5) the convenience of the parties.”
Arnold & Henderson v. Nat’l Med. Waste, Inc., 65 F.3d 1427, 1432
(8th Cir. 1995).
Sufficiency of Contacts
EML argues that it has insufficient contacts with Minnesota
to trigger either general or specific jurisdiction.
As an initial matter, Mayo has failed to establish a prima
facie case that Minnesota has specific jurisdiction over EML.
The legal issue in this case is whether Mayo has infringed EML’s
copyright by using Lippitt’s chart in internal training sessions
Yet specific jurisdiction is premised on the
Not only are those communications tangential
to the core issue in the case, i.e., infringement, they do not
Mayo seems to argue that the court should consider sales of
EML’s written works in the context of specific jurisdiction,
because some of those works contain the chart at issue. The court
disagrees. Although sales of those works, if substantial enough,
could be relevant to the issue of whether EML is subject to general
jurisdiction in Minnesota, they do not bear on the narrower issue
of specific jurisdiction, which focuses on EML’s contacts with
Minnesota in the context of this case.
Nor does EML’s website
confer specific jurisdiction given that this case does not involve
the website itself or sales generated by the website.
constitute “activities” within Minnesota by EML.
were initiated by Mayo.
See Datalink Corp. v. Perkins Eastman
Architects, P.C., 33 F. Supp. 3d 1068, 1073 (D. Minn. 2014)
(quoting Coen v. Coen, No. 05–596, 2006 WL 2727219, at *20 (D.
Minn. Sept. 22, 2006)) (“[W]hether or not the nonresidential
defendant is the aggressor in a transaction is important in
assessing” purposeful availment).
Second, they occurred only via
telephone, email, and letter.
See Digi–Tel Holdings, Inc. v.
Proteq Telecomm. (PTE), Ltd., 89 F.3d 519, 523 (8th Cir. 1996)
(“Although letters and faxes may be used to support the exercise
of personal jurisdiction, they do not by themselves establish
jurisdiction.”); see also Lucachick v. NDS Americas, Inc., 169 F.
Supp. 2d 1103, 1107 (D. Minn. 2001) (explaining that negotiations
jurisdiction); KG Funding, Inc. v. Partridge, No. 12-2155, 2012
WL 5904439, at *2 (D. Minn. Nov. 26, 2012) (“[T]he receivers’
location alone should not determine specific jurisdiction ....
[defendant] purposefully communicated with a resident who lived
in Minnesota, but there is no evidence that [he] purposefully
availed himself of the Minnesota legal forum.”).
they did not result in any agreement or future business between
directed” its activities to Mayo in Minnesota.
Burger King, 471
U.S. at 472.
triggered specific jurisdiction, but it cites to no authority
supporting the proposition that contacts initiated by a forumbased resident resulting in failed business negotiations with a
non-resident are sufficient to establish jurisdiction.
the court able to find any such authority.
As a result, specific
jurisdiction does not exist.
continuous or systematic contacts with Minnesota sufficient to
establish general jurisdiction.
Neither Lippitt nor EML has
traveled to, directly conducted business in, owned property in,
or had any other regular dealings with the state.
Mann, 896 F. Supp. 2d 775, 797 (D. Minn. 2012).
There is also no
evidence that EML took affirmative actions to sell Lippitt’s
works to Minnesota businesses or consumers.
The fact that some
of her works may have ended up here is not enough.
It is well established that isolated sales of products are
insufficient to confer general jurisdiction over a non-resident
See Helicopteros Nacionales de Colombia, S.A. v.
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 action not related to those purchase
transactions.”); Burlington Indus., Inc. v. Maples Indus., Inc.,
97 F.3d 1100, 1103 (8th Cir. 1996) (“Simple commercial contacts,
unrelated to [plaintiff]’s claims are insufficient to establish
[general] personal jurisdiction.”); Jacobs Trading, LLC v. Ningbo
Hicon Intern. Indus. Co., 872 F. Supp. 2d 838, 849 (D. Minn.
2012) (“[A] total of twenty individual shipments to only four
Minnesota companies over a period of more than four years does
not constitute such ‘continuous and systematic’ contacts with the
establish that EML’s conduct created “sufficient contacts ...
with [Minnesota]” that “are such that [it] should reasonably
anticipate being haled into court” here.
Coen, 509 F.3d at 905
(citation and internal quotation marks omitted).
As a result,
the court also lacks general jurisdiction over EML.5
discovery will reveal contacts sufficient to confer jurisdiction
Because the court concludes that it does not have personal
jurisdiction over EML, it will not address EML’s remaining
arguments or its request to transfer on the basis of forum non
in light of the meager contacts now known.
See Greenbelt Res.
Corp. v. Redwood Consultants, LLC, 627 F. Supp. 2d 1018, 1028 (D.
jurisdictional discovery must be “specifically targeted to flesh
out connections already shown to exist,” not merely an attempt
personal jurisdiction, the court may dismiss the case, or if in
the interest of justice, transfer the case to any district in
which it could have been brought.
28 U.S.C. § 1406(a); see also
Wilson v. St. Mary’s Hosp., 822 F. Supp. 1450, 1451 (D. Minn.
obstacle such as lack of personal jurisdiction is favored over
adjudication of a dispute on its merits.”).
In the interest of
justice, the court will transfer the case to the Middle District
of Florida, where the related case is pending, so as to avoid the
costs and delay associated with requiring Mayo to refile the
Accordingly, based on the above, IT IS HEREBY ORDERED that:
The motion to dismiss or transfer venue [ECF No. 11] is
granted in part as set forth above; and
The case is transferred to the United States District
Court for the Middle District of Florida.
Dated: September 27, 2017
s/David S. Doty
David S. Doty, Judge
United States District Court
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?