True Fitness Technology, Inc. v. Samsara Fitness LLC
OPINION MEMORANDUM AND ORDER - IT IS HEREBY ORDERED that Defendants Motion to Dismiss [Doc. No. 12 ] is GRANTED. A Judgment consistent with this Opinion will issue forthwith. Signed by District Judge Henry Edward Autrey on 6/18/15. (KJS)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MISSOURI
TRUE FITNESS TECHNOLOGY, INC.,
SAMSARA FITNESS, LLC,
No. 4:14CV1930 HEA
OPINION, MEMORANDUM AND ORDER
This matter is before the Court on Defendant’s Motion to Dismiss Plaintiff’s Complaint
for Lack of Personal Jurisdiction. [Doc. No. 12]. Plaintiff has filed a Response in opposition to
the Motion. [Doc. No. 17]. Defendant has filed a Reply [Doc. No. 18], Plaintiff has filed a SurReply [Doc. No. 21], and Defendant has filed a Sur-Sur Reply [Doc. No. 24]. For the reasons set
forth below, Defendant’s Motion is granted.
Facts and Background1
Plaintiff True Fitness Technology, Inc. (“Plaintiff”) brings this action against Defendant
Samsara Fitness LLC (“Defendant”) under the Lanham Act, 15 U.S.C. § 1051 et seq., alleging
trademark infringement and unfair competition. Plaintiff also alleges a violation of Missouri
Plaintiff, a Missouri corporation with its principal place of business in Missouri,
manufactures, sells, and services high quality exercise equipment, including treadmills. Since
1983, Plaintiff has used the trademark, TRUE®, to brand its products, and the mark has been
The recitation of facts is taken from Plaintiff’s Complaint and are taken as true for the purposes of this motion.
Such recitation in no way relieves any party from the necessary proof thereof in later proceedings.
federally registered with the United States Patent and Trademark Office for use with treadmills
since 1987 and for use with exercise equipment generally since 2005.
Defendant, a limited liability corporation organized under the laws of Connecticut with
its principal place of business in Connecticut, operates an e-commerce site under the domain
name http://www.samsarafitness.com. On the website, Defendant advertises and offers treadmills
for sale using the mark “TRUE,” including a model named the TrueForm Runner. Defendant is
not an authorized dealer of True Fitness treadmills, nor a licensee of Plaintiff’s trademarks.
Plaintiff alleges that “Defendant, through its website and communications with potential
customers, is using Plaintiff’s TRUE Marks in connection with the sale, offering for sale,
distribution, and advertising of treadmills.” [Doc. No. 1 at ¶ 15].
Plaintiff alleges that “[t]his Court has personal jurisdiction over Defendant because
Defendant sold the infringing product in this district, Defendant conducts business in the State of
Missouri through its e-commerce site, http://www.samsarafitness.com, and has engaged in acts
or omissions within this District causing injury within this District, or has otherwise made or
established contacts with this District sufficient to permit the exercise of personal jurisdiction
over Defendant.” [Id. at ¶ 4].
A defendant may move to dismiss a case under Rule 12(b)(2) of the Federal Rules for
“lack of personal jurisdiction.” Fed. R. Civ. P. 12(b)(2).
A plaintiff alleging personal jurisdiction “‘must state sufficient facts in the complaint to
support a reasonable inference that the defendant can be subjected to jurisdiction within the
state.’” Dairy Farmers of Am., Inc. v. Bassett & Walker Int’l, Inc., 702 F.3d 472, 474 (8th Cir.
2012) (alteration in original) (quoting Wells Dairy, Inc. v. Food Movers Int’l, Inc., 607 F.3d 515,
518 (8th Cir. 2010)). “If the defendant controverts or denies jurisdiction, the plaintiff bears the
burden of proving facts supporting personal jurisdiction.” Wells Dairy, 607 F.3d at 518. Personal
jurisdiction “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).
Although the Court 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 the Court “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, 591–92 (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. v. EBM-Papst St. Georgen GmbH & Co., KG, 646 F.3d 589, 592
(8th Cir. 2011) (quoting Epps v. Stewart Info. Servs. Corp., 327 F.3d 642, 647 (8th Cir. 2003)).
The perspective in our Circuit is one where courts should to “approach [the] analysis of
personal jurisdiction on two levels, first examining whether the exercise of jurisdiction is proper
under the forum state’s long-arm statute[,] [and] [i]f the activities of the non-resident defendant
satisfy the statute’s requirements, [to] then address whether the exercise of jurisdiction comports
with due process.” Dakota Indus. v. Dakota Sportswear, 946 F.2d 1384, 1391 (8th Cir. 1991).
“Due process requires that 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 Int’l Shoe Co. v. Washington., 326 U.S. 310, 316, 66 S. Ct. 154, 90 L. Ed.
95 (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.” [Int’l Shoe Co., 326 U.S.] at 316, 66 S. Ct. 154, 90 L. Ed. 95 (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).
Myers, 689 F.3d at 911. The Supreme Court has observed:
Even if the defendant would suffer minimal or no inconvenience from being
forced to litigate before the tribunals of another State; even if the forum State has
a strong interest in applying its law to the controversy; even if the forum State is
the most convenient location of litigation, the Due Process Clause, acting as an
instrument of interstate federalism, may sometimes act to divest the State of its
power to render a valid judgment.
World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 294 (1980).
There are two methods in which the Due Process Clause may be satisfied such that
minimum contacts between the defendant and the forum state are established: the first is through
general jurisdiction, and the second is through specific jurisdiction. General jurisdiction refers to
the power of a court to hear a lawsuit against a defendant who has “continuous and systematic”
contacts with the forum state, regardless of where the cause of action actually arose.
Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 415–16 (1984). Here,
Defendant concedes that the Court cannot maintain general personal jurisdiction over it, and
alleges only specific personal jurisdiction. [See Doc. No. 17 at 4 n.3].
“Specific personal jurisdiction, unlike general jurisdiction, requires a relationship
between the forum state, the cause of action, and the defendant.” Myers, 689 F.3d at 912 (citing
Helicopteros, 466 U.S. at 414). The Eighth Circuit has established a five-factor test to determine
whether a defendant’s contacts with the forum state are sufficient to establish personal
jurisdiction over the defendant. These factors, from Land–O–Nod v. Bassett Furniture Industries,
Inc., 708 F.2d 1338, 1340 (8th Cir. 1983), are: (1) the nature and quality of contacts with the
forum state; (2) the quantity of such contacts; (3) the relation of the cause of action to the
contacts; (4) the interest of the forum state in providing a forum for its residents; and (5) the
convenience of the parties. “[The court] must look at all of the factors in the aggregate and
examine the totality of the circumstances in making a personal jurisdiction determination.”
Johnson v. Arden, 614 F.3d 785, 794 (8th Cir. 2010) (citation omitted).
In addition to the five Land–O–Nod factors, the Court must consider whether
Defendant’s alleged intentional acts were performed “for the very purpose of having their
consequences felt in the forum state.” Dakota Indus., 946 F.2d at 1390–91. This is known as the
“effects test,” which was first employed by the Supreme Court in Calder v. Jones, 465 U.S. 783
(1984). The Calder effects test requires Plaintiff to make three prima facie showings in order for
Defendant’s alleged trademark infringement to serve as a source of personal jurisdiction.
Plaintiff must show that Defendant’s acts (1) were intentional, (2) were uniquely or expressly
aimed at Missouri, and (3) caused harm, the brunt of which was suffered—and which Defendant
knew was likely to be suffered—in Missouri. Johnson, 614 F.3d at 796 (internal quotation
omitted). Rather than superseding the Land-O-Nod five-part test for personal jurisdiction, the
Calder effects test merely “requires the consideration of additional factors when an intentional
tort is alleged.” Dakota Indus., 946 F.2d at 1391; see also Johnson, 614 F.3d at 796–97.
The Eighth Circuit has 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, 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). Courts consider “the totality of the circumstances in deciding whether personal
jurisdiction exists.” K-V Pharm. Co., 648 F.3d at 592–93.
Defendant contends that this Court lacks personal jurisdiction over it and should therefore
grant its Motion to Dismiss Plaintiff’s claims. For the reasons discussed below, the Court agrees,
will grant Defendant’s Motion, and dismiss this action.
The Court frames its due process inquiry within the Eighth Circuit’s admonition
that “[s]pecific jurisdiction is proper ‘only if the injury giving rise to the lawsuit occurred within
or had some connection to the forum state, meaning that the defendant purposely directed its
activities at the forum state and the claim arose out of or relates to those activities.’” Johnson,
614 F.3d at 795 (quoting Steinbuch, 518 F.3d at 586 (citing Burger King Corp., 471 U.S. at 472).
The Nature and Quality of the Contacts with Missouri
The first Land–O–Nod factor concerns the nature and quality of Defendant’s contacts
with Missouri. It is undisputed that the Defendant never maintained businesses, properties,
offices, employees in Missouri, and is not now, nor ever has been, registered to do business in
Although Plaintiff alleges in its Complaint that “Defendant sold the infringing product in
this district,” [Doc. No. 1 at ¶ 4], Defendant denies selling infringing products in this district or
any other in Missouri, or shipping any infringing products to Missouri.2 Although Plaintiff
repeatedly states in its Response that Defendant made sales in Missouri, personal jurisdiction is
evaluated “not by the pleadings alone, but by the affidavits and exhibits presented with the
motions and in opposition thereto,” with Plaintiff bearing the burden. Wells Dairy, 607 F.3d at
518. Plaintiff has failed to carry its burden as to Defendant’s sales in Missouri.
Defendant acknowledges that it sold one Samsara Fitness TrueForm Runner treadmill in Missouri to Jennifer
Gustafson, counsel for Plaintiff. [Doc. No. 13 at 3]. Plaintiff makes no direct reference to this single sale, and its
weight on the personal jurisdiction analysis is negligible. See Foreign Candy Co., Inc. v. Tropical Paradise, Inc.,
950 F. Supp. 2d 1017, 1032–33 n.5 (N.D. Iowa 2013) (collecting cases).
Plaintiff also contends that, because Defendant’s products were offered for sale on its
website, which is accessible in Missouri, Defendant has sufficient contacts with the state for this
Court to exercise personal jurisdiction. Defendant counters that its website should be considered
“passive” because the products cannot be purchased directly from the website, but rather must be
purchased through www.paypal.com—an independent third party website. Further, Defendant
argues that merely offering a product for sale on a website that can be accessed in any state does
not confer nationwide personal jurisdiction over Defendant.
The Zippo test is instructive in evaluating the sufficiency of internet contacts under a
specific jurisdiction analysis. See Johnson, 614 F.3d at 796 (citing Zippo Mfg. Co. v. Zippo Dot
Com, Inc., 952 F. Supp. 1119, 1124 (W.D. Pa. 1997)). In Zippo, the court created a “sliding
scale” to evaluate websites for conferring personal jurisdiction:
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 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 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.
952 F. Supp. at 1124 (internal citations and quotation marks omitted).
It is entirely unconvincing that Defendant’s website is “passive” merely because
consumers purchase products from its website by making payments to an independent third
party. The fact that Defendant sells products to consumers through its website inherently makes
the site interactive, not passive. It is irrelevant by what method consumers proffer, and
Defendant ultimately receives, payment.
In considering where Defendant’s website, and its role in this case, falls on the interactive
section of the Zippo spectrum, the Court notes well the Eight Circuit’s explanation that “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.” Johnson, 614 F.3d at 797
(citing id. at 1125–26). In this regard, “although [http://www.samsarafitness.com] may be
characterized as interactive, there is no evidence in the record that [Defendant] engaged in any
transaction or exchange of information with a Missouri resident via
[http://www.samsarafitness.com], or that a Missouri resident ever accessed the website.” Id.
Accordingly, [the Court] decline[s] to confer personal jurisdiction based on only the possibility
that a Missouri resident had contact with [Defendant] through [http://www.samsarafitness.com].”
The Court therefore finds that, due to the nature and quality of the contacts between the
parties, Defendant could not have reasonably anticipated being haled into court in Missouri, and
thus, the first Land–O–Nod factor weighs in favor of Defendant.
The Quantity of Contacts
Because Plaintiff failed to sufficiently allege the nature and quality of the contacts
between Defendant and Missouri to confer specific jurisdiction, the numerosity of such contacts
is immaterial to the Court’s analysis. Further, as noted, the record only reflects one Defendant
sale in Missouri. That sale was to Plaintiff’s counsel. The second Land–O–Nod factor thus
weighs in favor of Defendant.
The Relationship of the Cause of Action to the Contacts
The third Land–O–Nod factor focuses on Defendant’s contacts with Missouri as it relates
to the particular cause or causes of action asserted. Bell Paper Box, Inc. v. U.S. Kids, Inc., 22
F.3d 816, 819 (8th Cir. 1994). “The 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 Calder effects test may be utilized in analyzing the
third factor where, as here, the plaintiff alleges tortious conduct. N.C.C. Motorsports, Inc. v. KVA-T Food Stores, Inc., 975 F. Supp. 2d 993, 1003 (E.D. Mo. 2013) (citing Johnson, 614 F.3d at
The Calder Court found that the defendants were subject to California’s personal
jurisdiction because the defendants’ acts were intentional, the allegedly libelous article they
wrote was centered on the life and career of a longstanding California resident, “and the brunt of
the harm, in terms both of Plaintiff’s emotional distress and the injury to her professional
reputation, was suffered in California.” 465 U.S. at 789. Because the defendants’ acts were
“expressly aimed at California,” and they knew that “injury would be felt by Plaintiff in the State
in which she lives and works and in which the National Enquirer has its largest circulation,” the
defendants were assumed to have reasonably anticipated being haled into court in the forum
state. Id. at 789–90.
Following Calder, cases decided throughout this Circuit uniformly have held that in order
for a defendant’s tortious conduct to confer personal jurisdiction, there must be a prima facie
showing that the defendant's intentional acts were “performed for the very purpose of having
their consequences felt in the forum state.” Dakota Indus., 946 F.2d at 1391 (internal citation
omitted). See, e.g., Johnson, 614 F.3d at 796 (no personal jurisdiction where defendant’s
allegedly defamatory comments were not expressly aimed at forum, and no other evidence of
minimum contacts existed); Gen. Elec. Capital Corp. v. Grossman, 991 F.2d 1376, 1387 (8th
Cir. 1993) (no personal jurisdiction where “focal point” of tortious injury occurred in outside
forum, even though the court agreed that effects of harm ultimately were felt in forum); Hicklin
Eng’g, Inc. v. Aidco, Inc., 959 F.2d 738, 739 (8th Cir. 1992) (no personal jurisdiction where
defendant had knowledge that plaintiff would be affected by intentional tort, but otherwise had
no other connection with forum); N.C.C. Motorsports, 975 F. Supp. 2d 993 (no personal
jurisdiction where non-resident defendant entered into a lease with Missouri plaintiff to use
plaintiff’s copyrighted shopping cart vehicle for promotional purposes, knowingly hired third
party to build an infringing shopping cart, and then terminated lease when shopping cart was
ready); Express Scripts, Inc. v. Care Continuum Alliance, Inc., 2011 U.S. Dist. LEXIS 61157,
2011 WL 2199967, *4 (E.D. Mo. June 7, 2011) (no personal jurisdiction where defendant did not
knowingly target trademark infringement at forum, and defendant had no other contacts with
Even a close examination of Calder reveals that the Supreme Court’s finding of personal
jurisdiction in that case depended on something more than the defendants’ knowledge that the
plaintiff would feel the brunt of the injury in her state of residence. 465 U.S. at 784–87. Other
contacts between the defendants and the forum state were found in Calder, including the fact that
the defendants made frequent trips to the forum for business, made direct phone calls to residents
of the forum in furtherance of the tort, and published the defamatory article about the plaintiff in
the forum, a state where the defendants’ publication had its highest circulation. Id. All of these
facts combined evidenced the Calder defendants’ purposeful availment of the forum and justified
the court’s exertion of personal jurisdiction over them.
Johnson is particularly instructive to the facts of this case. Plaintiff repeatedly invokes the
argument that the effect of Defendant’s alleged trademark infringement was felt in Missouri by
virtue of the fact that Plaintiff is the holder of the mark and a Missouri citizen. However, the
Johnson court applied Calder to such an argument and rejected it. 614 F.3d at 797–98. The court
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explained that “even if the effect of [the alleged tort] was felt in Missouri, [the Eighth Circuit]
use[s] the Calder test merely as an additional factor to consider when evaluating a defendant’s
relevant contacts with the forum state.” Id. at 796–97. Following this logic, the Johnson court
“construed the Calder effects test narrowly, and h[e]ld that, absent additional contacts, mere
effects in the forum state are insufficient to confer personal jurisdiction.” Id. at 797.
Here, as noted, Defendants not only has too few additional contacts with Missouri to
confer personal jurisdiction on the basis of the Calder effects tests, it has no additional contacts
with Missouri. Cf. N.C.C. Motorsports, 975 F. Supp. 2d 993 (holding that Calder effects test did
not confer personal jurisdiction in copyright infringement case where defendant had previously
entered into a lease with Missouri plaintiff to use plaintiff’s copyright).3
Based on the application of the Calder effects test, the third Land–O–Nod factor weighs
in favor of Defendant.
Missouri’s Interest in Providing a Forum for its Residents and the
Convenience of the Parties
Before the Court considers the final two Land–O–Nod factors, it is important to recognize
that they cannot outweigh the first three factors. See Land–O–Nod, 708 F.2d at 1340 (“For
instance, the last two factors are said to be of secondary importance and not determinative.”)
Defendant concedes that the interest of Missouri in litigating this matter weighs in favor of
Plaintiff. Defendant argues, and the Court agrees, that the fifth factor—the convenience of the
Plaintiff relies on several trademark infringement cases in which courts found personal jurisdiction and, as one
factor, noted the import of the trademark holder’s state of residence. However, these cases are distinguishable
because of the defendants in them had additional contacts with the forum state. See Dakota Indus. v. Dakota
Sportswear, 946 F.2d 1384 (8th Cir. 1991) (additional contacts included shipping infringing products to forum state
and sales of infringing products in forum state; Calder factor two more clearly established because there was
evidence that defendant directed the infringing activity toward the forum state in that it had received phone calls as
well as a cease and desist letter from plaintiff); Reliant Care Grp., LLC v. Reliant Mgmt. Grp., LLC, 2014 WL
6607167 (E.D. Mo. Nov. 19, 2014) (additional contacts included the defendant’s website listing employment
positions in Missouri and an online application for a recruiter whose territory included Missouri; Calder factor two
more clearly established because defendant and plaintiff exchanged letters regarding use of the mark); AnheuserBusch v. City Merchandise, 176 F. Supp. 2d 951 (E.D. Mo. 2001) (additional contacts such as defendant sending
200 infringing products directly to Missouri, including some which were shipped following plaintiff sending a cease
and desist letter and defendant representing that all infringing products had been destroyed).
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parties—is neutral. These factors do little to influence the personal jurisdiction analysis in this
case, and the Court notes that Missouri’s “interest in providing its residents with a forum cannot
make up for the absence of minimum contacts.” Digi-Tel Holdings v. Proteq Telcoms., 89 F.3d
519, 525 (8th Cir. 1996).
Due Process Conclusion
For the reasons explained, the Court finds that Plaintiff failed to allege the minimum
contacts with Missouri necessary to comport with the Due Process Clause as it relates to
Plaintiff’s claims against Defendant. Although the personal jurisdiction analysis incorporates
both a due process inquiry and a long-arm statute inquiry, given that the Missouri long-arm
statute authorizes personal jurisdiction to the extent permissible under the Due Process Clause, a
finding that a plaintiff has failed to establish that personal jurisdiction comports with the Due
Process Clause is dispositive in Missouri cases, thus obviating the necessity of a long-arm
inquiry. See Eagle Tech., Inc. v. Expander Ams., Inc., 783 F.3d 1131, 1136 (8th Cir. 2015)
(“Because ‘the Missouri long-arm statute authorizes the exercise of jurisdiction over nonresidents to the extent permissible under the due process clause, we turn immediately to the
question whether the assertion of personal jurisdiction would violate the due process clause.’”)
(quoting Romak USA, Inc. v. Rich, 384 F.3d 979, 984 (8th Cir. 2004)); see also Viasystems, 646
F.3d at 594 (“We need not decide whether these actions by St. Georgen suffice to place it within
the bounds of Missouri’s long-arm statute, because it is clear that the cited activities are not
sufficient to surmount the due-process threshold.”).4 Accordingly, based on the Court’s due
process analysis, it finds that it does not have personal jurisdiction over Defendant arising from
By contrast, a court’s finding that it does have personal jurisdiction over a non-resident defendant requires analysis
of both the long-arm statute and the Due Process Clause. See Myers, 689 F.3d at 909–910 (citing Bryant v. Smith
Interior Design Group, Inc., 310 S.W.3d 227, 231 (Mo. banc 2010)).
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its alleged acts in infringing Plaintiff’s trademarks by using them in Defendant’s products sold
Based on the foregoing, the Court grants Defendant’s Motion to Dismiss for Lack of
Personal Jurisdiction, and dismisses this action.
IT IS HEREBY ORDERED that Defendant’s Motion to Dismiss [Doc. No. 12] is
A Judgment consistent with this Opinion will issue forthwith.
Dated this 18th day of June, 2015.
HENRY EDWARD AUTREY
UNITED STATES DISTRICT JUDGE
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