PUBLIC IMPACT, LLC V. BOSTON CONSULTING GROUP, INC.
Filing
48
MEMORANDUM OPINION AND ORDER. Signed by JUDGE THOMAS D. SCHROEDER on 8/3/2015, that Public Impact's motion to seal (Doc. 11 ) is GRANTED. FURTHER that BCG's motion to dismiss for lack of personal jurisdiction (Doc. 20 ) is GRANTED. As a result, Public Impact's motion for temporary restraining order and preliminary injunction (Doc. 6 ) is DENIED WITHOUT PREJUDICE AS MOOT, and this action is DISMISSED WITHOUT PREJUDICE. (Daniel, J)
IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
PUBLIC IMPACT, LLC,
Plaintiff,
v.
BOSTON CONSULTING GROUP, INC.,
Defendant.
)
)
)
)
)
)
)
)
)
15-cv-464
MEMORANDUM OPINION AND ORDER
THOMAS D. SCHROEDER, District Judge.
This is a trademark infringement case brought by Plaintiff
Public Impact, LLC (“Public Impact”), against Boston Consulting
Group, Inc. (“BCG”).
Public
Impact’s
Before the court are three motions: (1)
motion
for
temporary
restraining
order
and
preliminary injunction (Doc. 6); (2) Public Impact’s motion to
seal (Doc. 11); and (3) BCG’s motion to dismiss for lack of
personal jurisdiction and, alternatively, to transfer venue (Doc.
20).
For the reasons set forth below, Public Impact’s motion to
seal and BCG’s motion to dismiss for lack of personal jurisdiction
will be granted; Public Impact’s motion for injunctive relief will
therefore be denied without prejudice as moot.
I.
BACKGROUND
The allegations of the complaint and supporting affidavits
show the following: 1
Public
Impact
is
an
education
policy
and
management
consulting firm, located in Carrboro, North Carolina.
¶¶ 3, 7.)
Its clients include private foundations, government
agencies, nonprofits, and education policy leaders.
Public
Impact
IMPACT,
owns
a
Registration
federally
No.
registered
2,805,013,
(Id. ¶ 13.)
trademark,
which
has
continuously since 1996 and was registered in 2006.
Doc. 8-1.)
(Doc. 8
PUBLIC
been
used
(Id. ¶¶ 5–8;
In 2009, the United States Patent and Trademark Office
declared the registration incontestable, pursuant to 15 U.S.C.
§ 1065.
(Doc. 8 ¶ 10; Doc. 8-2.)
Public Impact uses its trademark
on its publications, websites, Facebook account, and Twitter page.
(Doc. 8 ¶¶ 15–16, 26–27.)
BCG is a global management consulting firm incorporated in
Massachusetts
and
Massachusetts.
North
Carolina
registration.
maintains
(Doc. 22 ¶ 3.)
and
in
every
its
corporate
offices
in
Boston,
It is registered to do business in
other
(Id. ¶ 5; Doc. 1-1.)
State
that
requires
such
BCG has previously initiated,
solicited, and engaged in education-related business within North
1
The court may consider supporting affidavits when determining whether
a plaintiff has made a prima facie showing of personal jurisdiction.
Universal Leather, LLC v. Koro AR, S.A., 773 F.3d 553, 558 (4th Cir.
2014) (“When a district court considers a question of personal
jurisdiction based on the contents of a complaint and supporting
affidavits, the plaintiff has the burden of making a prima facie showing
in support of its assertion of jurisdiction.”).
2
Carolina.
In 2010, BCG representatives attended a North Carolina
State Board of Education planning session.
(Doc. 31-3.)
In 2012,
BCG and Public Impact exchanged emails to discuss an education
initiative.
(Doc. 8 ¶ 32; Doc. 8-7.)
In a 2010 publication, BCG
listed its business accomplishments in North Carolina to include
managing North Carolina’s proposal for federal education funding
and
reorganizing
Instruction.
31-6.)
North
Carolina’s
Department
of
Public
(Doc. 31-4 at 7; see also Doc. 31-2; Doc. 31-5; Doc.
BCG also lists North Carolina on its website as a state to
which it has provided “recent [educational] efforts.”
at 5.)
(Doc. 10-2
From 2007 to 2014, BCG’s North Carolina revenue comprised
about 0.3% of its worldwide revenue, which amounts to tens of
millions of dollars.
7).)
(Doc. 22 ¶ 5; Doc. 30 at 6 (citing Doc. 31-
There is no indication, though, as to what percentage of
that revenue derived from any education-related business activity
by BCG in North Carolina.
Finally, BCG helps host a consulting
“Case Competition” every year at Duke University.
(Doc. 31-1.)
In June 2014, BCG created the “Centre for Public Impact: A
BCG Foundation” (“CPI”).
(Doc. 23 ¶ 3.)
BCG owns the trademark,
THE CENTRE FOR PUBLIC IMPACT: A BCG FOUNDATION, No. UK00003069013,
in
the
United
Kingdom,
countries as well.
and
owns
(Id. ¶ 6.)
several
trademarks
in
BCG solely funds CPI, and CPI
shares an office with BCG in London, where CPI is based.
¶ 3.)
other
BCG publishes about CPI on its website.
3
(Id.
(See, e.g., Doc.
10-7 at 4–6.)
CPI’s mission is to “bring[] together world leaders to learn,
exchange ideas and inspire each other to strengthen the public
impact of their organizations.”
(Doc. 10-1 at 46.)
CPI describes
itself as “a global forum where leaders can learn” by “[s]haring
insights from around the world.” (Id.) Its officers include those
who specialize in education.
(Id. at 17, 19–20.)
CPI, however,
has no employees in the United States, and it is in the process of
registering
as
a
(Doc. 23 ¶¶ 3–4.)
not-for-profit
organization
in
Switzerland.
CPI has conducted four events using its mark,
all of which have occurred outside the United States, namely in
London, England; New Delhi, India; and Jakarta, Indonesia.
(Doc.
10-1 at 32–34, 46–47.)
CPI has a website, as well as Twitter and LinkedIn accounts.
(Doc. 9-4; Doc. 9-5; Doc. 23 ¶ 7.)
9-2.)
BCG owns CPI’s website.
(Doc.
CPI has published at least one education-related article on
its website and also tweets about education.
1 at 15–16.)
(Doc. 9-5; Doc. 10-
CPI’s website contains informational links titled
“Who We Are” and “What We Do,” which describe CPI and its mission.
(Doc. 10-1 at 2.)
The site also links to news articles and
interviews relating to CPI — none of which is alleged to connect
to North Carolina.
(Id. at 15–16, 22–23, 32–39, 41–45.)
The
website also allows visitors to “Participate” but limits visitors’
participation to signing up for news about CPI.
4
(Id. at 40.)
On June 9, 2015, Public Impact filed its complaint against
BCG, raising various claims regarding the use of Public Impact’s
registered trademark and claiming essentially that BCG is using
CPI,
and
specifically
the
similarly-named
“Centre
for
Public
Impact” through CPI’s website, to confuse and lure customers to
BCG’s
consulting
Impact’s.
business
(Doc. 1)
that
competes
directly
with
Public
Contemporaneous with its complaint, Public
Impact moved for temporary and preliminary injunctive relief and
to seal certain documents filed in support.
(Docs. 6, 11.)
On
June 16, 2015, BCG moved to dismiss the complaint for lack of
personal jurisdiction and, alternatively, to transfer venue to
Boston.
(Doc. 20)
The parties filed responding briefs (Docs. 24,
28), and the court held an adversarial hearing on Public Impact’s
motion
for
a
temporary
restraining
order
on
June
17,
2015.
Following the hearing, the parties filed supplemental briefing on
BCG’s motion to dismiss for lack of personal jurisdiction and,
alternatively, to transfer venue.
(Docs. 30, 32.)
On July 6,
2015, BCG responded to Public Impact’s motion for preliminary
injunction and motion to seal.
(Docs. 33, 36.)
The motions are now ready for resolution.
II.
ANALYSIS
A.
Motion to Dismiss for Lack of Personal Jurisdiction
Public
Impact
bears
the
burden
of
establishing
jurisdiction by a preponderance of the evidence.
5
personal
See Universal
Leather, LLC v. Koro AR, S.A., 773 F.3d 553, 558 (4th Cir. 2014);
Carefirst of Md., Inc. v. Carefirst Pregnancy Ctrs., Inc., 334
F.3d 390, 396 (4th Cir. 2003); Combs v. Bakker, 886 F.2d 673, 676
(4th Cir. 1989). “When, however, as here, a district court decides
a pretrial personal jurisdiction motion without conducting an
evidentiary hearing, the plaintiff need only make a prima facie
showing of personal jurisdiction.” 2
see also Combs, 886 F.2d at 676.
Carefirst, 334 F.3d at 396;
“In deciding whether the
plaintiff has proved a prima facie case of personal jurisdiction,
the district court must draw all reasonable inferences arising
from
the
proof,
and
plaintiff’s favor.”
resolve
all
factual
disputes,
in
the
Mylan Labs., Inc. v. Akzo, N.V., 2 F.3d 56,
60 (4th Cir. 1993); accord Carefirst, 334 F.3d at 396.
If the
existence of jurisdiction turns on disputed factual questions, the
court may resolve the challenge on the basis of an evidentiary
hearing or, if a prima facie demonstration of personal jurisdiction
has been made, it can proceed “as if it has personal jurisdiction
over th[e] matter, although factual determinations to the contrary
may be made at trial.”
Pinpoint IT Servs., L.L.C. v. Atlas IT
Exp. Corp., 812 F. Supp. 2d 710, 717 (E.D. Va. 2011) (citing 2
James Wm. Moore et al., Moore’s Federal Practice ¶ 12.31 (3d ed.
2
By the time of the June 17, 2015 hearing on Public Impact’s motion for
temporary restraining order, the parties lacked the opportunity to have
fully briefed the issue of personal jurisdiction or gather evidence.
6
2011)); see also Indus. Carbon Corp. v. Equity Auto & Equip.
Leasing Corp., 737 F. Supp. 925, 926 (W.D. Va. 1990) (“When
conflicting facts are contained in the affidavits, they are to be
resolved in the plaintiff’s favor.”).
Nevertheless, either at
trial or at a pretrial evidentiary hearing, the plaintiff must
eventually prove the existence of personal jurisdiction by a
preponderance of the evidence.
New Wellington Fin. Corp. v.
Flagship Resort Dev. Corp., 416 F.3d 290, 294 n.5 (4th Cir. 2005).
“Under Federal Rule of Civil Procedure 4(k)(1)(A), a federal
court may exercise personal jurisdiction over a defendant in the
manner provided by state law.”
ALS Scan, Inc. v. Digital Serv.
Consultants, Inc., 293 F.3d 707, 710 (4th Cir. 2002); see also
Daimler AG v. Bauman, 134 S. Ct. 746, 753 (2014) (“Federal courts
ordinarily follow state law in determining the bounds of their
jurisdiction
over
persons.”).
To
determine
whether
personal
jurisdiction is proper, the court engages in a two-part inquiry:
first, North Carolina’s long-arm statute must provide a statutory
basis for the assertion of personal jurisdiction, and, second, the
exercise of personal jurisdiction must comply with due process.
See Carefirst, 334 F.3d at 396; Pan-Am. Prods. & Holdings, LLC v.
R.T.G. Furniture Corp., 825 F. Supp. 2d 664, 677 (M.D.N.C. 2011).
In Christian Science Board of Directors of the First Church
of Christ, Scientist v. Nolan, 259 F.3d 209 (4th Cir. 2001), the
Fourth Circuit held that N.C. Gen. Stat. § 1-75.4(1)(d) runs
7
coextensively with the Due Process Clause, thereby collapsing the
two-step process “into a single inquiry” as to whether the nonresident defendant has such “minimal contacts” with North Carolina
that exercising jurisdiction over the defendant does not offend
“traditional notions of fair play and substantial justice.” 3 259
F.3d at 215 (quoting Int’l Shoe Co. v. Washington, 326 U.S. 310,
316 (1945)); see also Cambridge Homes of N.C., LP v. Hyundai
Const., Inc., 670 S.E.2d 290, 295 (N.C. Ct. App. 2008) (“When
personal jurisdiction is alleged to exist pursuant to the longarm statute, the question of statutory authority collapses into
one inquiry — whether defendant has the minimum contacts necessary
to meet the requirements of due process.”
(quoting Filmar Racing,
Inc. v. Stewart, 541 S.E.2d 733, 736 (N.C. Ct. App. 2001))).
The
Fourth Circuit recently confirmed its interpretation of North
Carolina’s long-arm statute, holding that the issue of specific
jurisdiction under N.C. Gen. Stat. § 1-75.4(1)(d) “merges” the
two-prong test “into the single question” of whether a defendant
has
“sufficient
contacts
constitutional due process.”
59.
with
North
Carolina
to
satisfy
Universal Leather, 773 F.3d at 558–
Thus, the single inquiry here is whether the exercise of
personal jurisdiction over BCG “is consonant with the strictures
3
BCG makes no argument that Public Impact fails to cite a statutory
provision supporting personal jurisdiction. See Danner v. Int’l Freight
Sys. of WA, L.L.C., No. CIVA RDB-09-3139, 2010 WL 2483474, at *3 (D. Md.
June 15, 2010) (analyzing personal jurisdiction despite plaintiffs’
failure to cite a long-arm statutory provision).
8
of due process.”
Tire Eng’g & Distribution, LLC v. Shandong
Linglong Rubber Co., 682 F.3d 292, 301 (4th Cir. 2012) (per
curiam).
Under the Due Process Clause, personal jurisdiction over a
defendant may be either general or specific.
See Goodyear Dunlop
Tires Operations, S.A. v. Brown, 131 S. Ct. 2846, 2851 (2011);
Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408,
414 nn.8–9 (1984); Tire Eng’g & Distribution, 682 F.3d at 301.
Public Impact argues that this court may exercise both over BCG.
1.
General Jurisdiction
The Supreme Court has recently held that, aside from the
“exceptional
case,”
general
personal
jurisdiction
over
a
corporation is usually only appropriate in the corporation’s state
of incorporation or principal place of business.
S. Ct. at 761 n.19.
See Daimler, 134
There is no allegation that North Carolina is
BCG’s state of incorporation or its principal place of business. 4
Instead, Public Impact argues that general jurisdiction exists
because BCG is registered to do business in North Carolina.
(Doc.
28 at 3–11; Doc. 30 at 1–2.)
Public Impact’s argument is foreclosed by binding Fourth
Circuit precedent.
In Ratliff v. Cooper Labs., Inc., 444 F.2d 745
4
Nor does Public Impact argue that BCG’s contacts with North Carolina
— outside of BCG’s registration — are “so substantial and of such a
nature as to render the corporation at home in [North Carolina].”
Daimler, 134 S. Ct. at 761 n.19.
9
(4th Cir. 1971), the Fourth Circuit held that registration to do
business in a forum does not confer personal jurisdiction over an
out-of-state
corporation.
Id.
at
748.
It
reasoned,
“The
principles of due process require a firmer foundation than mere
compliance with state domestication statutes.”
Id.
The Fourth
Circuit recently reaffirmed Ratliff’s holding in Rosenruist-Gestao
E Servicos LDA v. Virgin Enters. Ltd., 511 F.3d 437 (4th Cir.
2007), citing Ratliff for the proposition that “the designation of
a statutory agent for service [is] insufficient to confer general
jurisdiction
over
an
out-of-state
corporation.”
Rosenruist-
Gestao, 511 F.3d at 446 (citing Ratliff, 444 F.2d at 748).
After Ratliff, lower courts in this circuit have routinely
applied its holding.
For example, in Kuennen v. Stryker Corp.,
No. 1:13CV00039, 2013 WL 5873277 (W.D. Va. Oct. 30, 2013), the
court held that a defendant’s “business certificate and appointed
agent . . . are not independent support for general jurisdiction
— ‘the principles of due process require a firmer foundation than
mere compliance with state domestication statutes.’”
Id. at *4
(quoting Ratliff, 444 F.2d at 748); see also Reynolds & Reynolds
Holdings, Inc. v. Data Supplies, Inc., 301 F. Supp. 2d 545, 551
(E.D. Va. 2004) (citing and relying on Ratliff for the proposition
that “complying with registration statutes and appointing an agent
for service of process do not amount to consent to general personal
jurisdiction”).
Similarly, another decision from this district
10
concluded, citing Ratliff, “A corporation’s registration to do
business in the state alone is not the deciding factor on which
jurisdiction should be determined.”
Estate of Thompson ex rel.
Thompson v. Mission Essential Pers., LLC, No. 1:11CV547, 2013 WL
6058308,
at
*2
n.1
(M.D.N.C.
Nov.
14,
2013),
report
and
recommendation adopted sub nom. Estate of Thompson v. Mission
Essential Pers., LLC, No. 1:11CV547, 2014 WL 4745947 (M.D.N.C.
Sept. 23, 2014).
In sum, Fourth Circuit law forecloses Public
Impact’s argument that this court has general jurisdiction over
BCG because it is registered to do business in this State. 5
Public Impact’s arguments to the contrary are unpersuasive.
First, Public Impact argues that the Supreme Court’s decision in
Insurance Corp. of Ireland v. Compagnie des Bauxites de Guinee,
456 U.S. 694 (1982), abrogated the Fourth Circuit’s decision in
Ratliff.
(Doc. 28 at 9–11.)
The Fourth Circuit has recognized no
such abrogation and, as noted, continues to rely on Ratliff, after
Insurance
Corp.
of
Ireland,
for
the
proposition
that
“the
designation of a statutory agent for service [is] insufficient to
confer general jurisdiction over an out-of-state corporation.”
Rosenruist-Gestao, 511 F.3d at 446 (citing Ratliff, 444 F.2d at
5
Outside of this circuit, courts are split on this issue. Compare Senju
Pharm. Co. v. Metrics, Inc., No. CIV.A. 14-3962, 2015 WL 1472123, at *5–
8 & n.7 (D.N.J. Mar. 31, 2015), with AstraZeneca AB v. Mylan Pharm.,
Inc., 2014 WL 5778016, at *4–5 (D. Del. 2014), motion to certify appeal
granted sub nom. Astrazeneca AB v. Aurobindo Pharma Ltd., No. CV 14-664,
2014 WL 7533913 (D. Del. Dec. 17, 2014).
11
748).
Public
Impact
argues
that
Insurance
Corp.
of
Ireland
“endorsed jurisdiction by consent” (Doc. 28 at 10) but fails to
explain
how
that
endorsement
—
in
a
decision
upholding
the
imposition of sanctions under Rule 37 of the Federal Rules of Civil
Procedure — abrogated Ratliff.
See Ins. Corp. of Ireland, 456
U.S. at 702–09 (upholding district court’s Rule 37 sanctions, which
had the effect of assuming personal jurisdiction over certain
defendants).
Second,
Public
century-old
decision
Impact
in
argues
that
Pennsylvania
the
Fire
Supreme
Insurance
Court’s
Co.
of
Philadelphia v. Gold Issue Mining & Milling Co., 243 U.S. 93
(1917), allows for general jurisdiction over a defendant who
follows
a
state’s
unconvincing.
registration
statute.
This
argument
is
Most importantly, the Fourth Circuit’s decision in
Ratliff is binding on this court. Moreover, courts have recognized
that Supreme Court decisions since Pennsylvania Fire “cast doubt
on the continued viability” of that decision. Cognitronics Imaging
Sys., Inc. v. Recognition Research Inc., 83 F. Supp. 2d 689, 692
(E.D. Va. 2000).
Most significant is the Supreme Court’s landmark
decision in Int’l Shoe Co. v. Washington, 326 U.S. 310 (1945),
where the Court held that to extend personal jurisdiction over a
defendant, the defendant must “have certain minimum contacts with
[the forum] such that the maintenance of the suit does not offend
traditional notions of fair play and substantial justice.”
12
Id. at
316 (internal quotation marks and citations omitted).
As courts
elsewhere have observed, “After International Shoe, the focus [of
the
personal
defendant
jurisdiction
had
defendant’s
been
inquiry]
served
contacts
with
within
the
shifted
the
state
from
state
to
justified
whether
the
whether
the
the
state’s
assertion of jurisdiction.” Cognitronics Imaging Sys., 83 F. Supp.
2d at 692; see also Shaffer v. Heitner, 433 U.S. 186, 212 (1977)
(“[A]ll assertions of state-court jurisdiction must be evaluated
according to the standards set forth in International Shoe and its
progeny.”).
More recently, in Daimler, the Supreme Court held
that “continuous and systematic” business contacts with a State
were insufficient for extending general jurisdiction unless those
contacts were “so substantial and of such a nature as to render
the corporation at home in [the forum] State.”
62 & n.19.
that
a
134 S. Ct. at 761–
At least some courts have interpreted Daimler to mean
defendant’s
mere
conformance
with
a
State’s
business
registration statute “cannot constitute consent to jurisdiction”
and
therefore
is
not
sufficient
for
general
jurisdiction.
AstraZeneca AB v. Mylan Pharm., Inc., 2014 WL 5778016, at *5 (D.
Del. 2014), motion to certify appeal granted sub nom. Astrazeneca
AB v. Aurobindo Pharma Ltd., No. CV 14-664-GMS, 2014 WL 7533913
(D. Del. Dec. 17, 2014); see also Cognitronics Imaging Sys., 83 F.
Supp. 2d at 692 (observing, before Daimler, that “[t]he Supreme
Court has not yet addressed whether registration alone would be
13
sufficient to confer general personal jurisdiction in light of its
holding in International Shoe”).
Lastly, even taking Public Impact’s argument at face value,
it is unclear whether Pennsylvania Fire would apply in this case.
In
Pennsylvania
Fire,
the
Supreme
Court
extended
personal
jurisdiction over an insurance company that was registered to do
business in Missouri and, in further compliance with the law, had
executed
a
power
of
attorney
making
service
on
an
representative “the equivalent of personal service.”
94–95.
in-state
243 U.S. at
The Court observed, “[W]hen a power actually is conferred
by a document, the party executing it takes the risk of the
interpretation that may be put upon it by the courts.”
Id. at 96.
Following Pennsylvania Fire, the Court limited that decision’s
reach, noting strong “reasons for a limited interpretation of . . .
compulsory assent” by way of a State statute.
Robert Mitchell
Furniture Co. v. Selden Breck Const. Co., 257 U.S. 213, 215–16
(1921) (“[W]hen a foreign corporation appoints one as required by
statute it takes the risk of the construction that will be put
upon the statute and the scope of the agency by the State Court.”).
In Robert Mitchell Furniture, the Court held that only when a
“state law either expressly [extends] or by local construction” is
interpreted to extend jurisdiction over an out-of-State defendant
regarding out-of-State business should a federal court construe
the State statute as such.
Id.
14
Here, Public Impact fails to demonstrate how North Carolina’s
registration statute “expressly” extends personal jurisdiction
over registering businesses like BCG.
Public Impact’s suggested
interpretation of North Carolina’s registration statute is not
immediately obvious from the face of the statute.
Stat.
§
55-15-05(b)
(“[A]
foreign
corporation
See N.C. Gen.
with
a
valid
certificate of authority has the same but no greater rights and
has the same but no greater privileges as, and is subject to the
same duties, restrictions, penalties, and liabilities now or later
imposed on, a domestic corporation of like character.”).
It also
cites no decision — State or federal — construing North Carolina’s
registration
statute
to
extend
personal
jurisdiction
over
registered businesses.
For all these reasons, Public Impact has not demonstrated
that the court has general jurisdiction over BCG.
2.
Specific Jurisdiction
Specific jurisdiction requires “that the relevant conduct
have such a connection with the forum state that it is fair for
the defendant to defend itself in that state.”
CFA Inst. v. Inst.
of Chartered Fin. Analysts of India, 551 F.3d 285, 292 n.15 (4th
Cir. 2009).
A court may exercise specific jurisdiction when the
cause of action “arises out of the defendant’s contacts with the
forum.”
Cir.
Saudi v. Northrop Grumman Corp., 427 F.3d 271, 276 (4th
2005).
The
determination
15
of
whether
jurisdiction
is
appropriate depends on the facts and circumstances of each case.
See Walden v. Fiore, 134 S. Ct. 1115, 1121 (2014) (holding that
the specific jurisdiction inquiry necessitates a study of the
interconnection
between
the
defendant,
the
forum,
and
the
litigation); Burger King Corp. v. Rudzewicz, 471 U.S. 462, 485–86
(1985).
of
Extension of specific jurisdiction requires consideration
three
factors:
purposefully
availed
“(1)
the
itself
extent
of
the
to
which
privilege
the
defendant
of
conducting
activities in the forum state; (2) whether the plaintiff’s claims
arise out of those activities; and (3) whether the exercise of
personal jurisdiction is constitutionally reasonable.”
Tire Eng’g
& Distribution, 682 F.3d at 301–02; see also Universal Leather,
773 F.3d at 559.
Each prong must be satisfied.
See Consulting
Eng’rs Corp. v. Geometric Ltd., 561 F.3d 273, 278-79 (4th Cir.
2009).
The
“purposeful
availment”
requirement
ensures
that
“a
defendant will not be haled into a jurisdiction solely as a result
of random, fortuitous, or attenuated contacts.”
U.S.
at
475
(internal
quotation
marks
Burger King, 471
omitted).
Rather,
a
defendant’s conduct and connection to the forum must be “such that
[it] should reasonably anticipate being haled into court there.”
Universal Leather, 773 F.3d at 559 (quoting Fed. Ins. Co. v. Lake
Shore Inc., 886 F.2d 654, 658 (4th Cir. 1989)).
If a defendant
has created a “substantial connection” to the forum, then it has
16
purposefully
availed
business there.
itself
of
the
privilege
of
conducting
See Diamond Healthcare of Ohio, Inc. v. Humility
of Mary Health Partners, 229 F.3d 448, 450 (4th Cir. 2000); ESAB
Grp., Inc. v. Centricut, Inc., 126 F.3d 617, 625 (4th Cir. 1997)
(holding that “contacts related to the cause of action must create
a ‘substantial connection’ with the forum state, although this
connection need not be as extensive as is necessary for general
jurisdiction” (citation omitted)).
The connection to the forum
“must arise out of contacts that the defendant himself creates
with the forum State.”
Walden, 134 S. Ct. at 1122 (quoting Burger
King, 471 U.S. at 475) (internal quotation marks omitted).
This purposeful availment inquiry is flexible and includes an
evaluation of (1) “whether the defendant maintains offices or
agents
in
the
forum
state”;
(2)
“whether
the
defendant
owns
property in the forum state”; (3) “whether the defendant reached
into the forum state to solicit or initiate business”; (4) “whether
the defendant deliberately engaged in significant or long-term
business activities in the forum state”; (5) “whether the parties
contractually agreed that the law of the forum state would govern
disputes”; (6) “whether the defendant made in-person contact with
the resident of the forum in the forum state regarding the business
relationship”; (7) “the nature, quality and extent of the parties’
communications
about
the
business
being
transacted”;
and
(8)
“whether the performance of contractual duties was to occur within
17
the
forum.”
Consulting
Eng’rs,
561
F.3d
at
278
(citations
omitted).
To demonstrate purposeful availment, Public Impact cites the
following facts as favoring the exercise of personal jurisdiction
over BCG.
As to the first factor, BCG has maintained a registered
agent in North Carolina since 2007 because it holds a certificate
of authority to transact business in North Carolina requiring it
to do so.
(Doc. 1-1.)
Regarding the third and fourth factors,
BCG has previously initiated, solicited, and engaged in educationrelated business within North Carolina.
In a 2010 publication,
BCG listed its business accomplishments in North Carolina to
include managing North Carolina’s proposal for federal education
funding and reorganizing North Carolina’s Department of Public
Instruction.
(Doc. 31-4 at 7; Doc. 31-2; Doc. 31-5; Doc. 31-6.)
BCG also lists North Carolina as a State to which it has provided
“recent [educational] efforts.”
(Doc. 10-2 at 5.)
From 2007 to
2014, BCG’s North Carolina revenue comprised about 0.3% of its
worldwide revenue, which amounts to tens of millions of dollars.
(Doc. 22 ¶ 5; Doc. 30 at 7 (citing Doc. 31-7).)
There is again no
allegation, though, as to what percentage of that revenue, if any,
came from education-related business activity by BCG in North
Carolina.
As to the sixth and seventh factors, there is no
allegation that BCG has made in-person contact with Public Impact
in the forum State regarding any business relationship.
18
BCG and
Public Impact did exchange emails in 2012 to discuss an education
initiative.
(Doc.
8
¶
32;
Doc.
8-7.)
And,
in
2010,
BCG
representatives attended a North Carolina State Board of Education
planning session, but there is no allegation that Public Impact
representatives were in attendance or any business relationship
between them resulted from BCG’s presence.
(Doc. 31-3.)
Finally,
BCG helps host a consulting “Case Competition” every year at Duke
University.
Public
(Doc. 31-1.)
Impact,
however,
fails
to
demonstrate
how
those
contacts with North Carolina give rise to the claims in this case.
See Tire Eng’g & Distribution, 682 F.3d at 301–03 (holding that a
plaintiff’s claims must “arise out of” a defendant’s contacts with
the forum state); Saudi, 427 F.3d at 276 (same).
“Specific
jurisdiction must rest on the litigation-specific conduct of the
defendant in the proposed forum state.” Advanced Tactical Ordnance
Sys., LLC v. Real Action Paintball, Inc., 751 F.3d 796, 801 (7th
Cir. 2014), as corrected (May 12, 2014).
Here, the complaint
raises claims concerning BCG’s alleged use of Public Impact’s
trademark.
(Doc. 1 ¶¶ 49–82.)
None of those activities cited
above by Public Impact, however, gives rise to its claims of
trademark infringement.
See Walden, 134 S. Ct. at 1121 (“For a
State to exercise jurisdiction consistent with due process, the
defendant’s
suit-related
conduct
must
create
a
substantial
connection with the forum State.” (emphasis added)); Goodyear
19
Dunlop Tires Operations, 131 S. Ct. at 2851 (referring to specific
jurisdiction as “case-linked” jurisdiction); Advanced Tactical,
751 F.3d at 801 (holding, in a trademark action, that “[t]he only
sales” in a forum by a defendant “that [are] relevant are those
that
were
activity”).
related
to
[a
defendant’s]
allegedly
unlawful
None of BCG’s past activity in North Carolina relates
to its alleged trademark infringement.
education-related
business
in
North
In fact, all of BCG’s
Carolina
cited
by
Public
Impact occurred well before Public Impact claims the trademark
infringement began and CPI was created.
Public Impact attempts to tie BCG and the alleged trademark
infringement to North Carolina through BCG’s Internet activity.
Notably, Public Impact does not allege that BCG has infringed its
trademark in North Carolina other than through the Internet, namely
through BCG’s and CPI’s websites, Twitter, and LinkedIn.
¶¶ 41–46.)
(Doc. 1
Public Impact’s allegations of trademark infringement,
however, fail to sufficiently connect BCG to this State.
In ALS Scan, Inc. v. Digital Service Consultants, Inc., 293
F.3d 707 (4th Cir. 2002), the Fourth Circuit addressed “when
electronic contacts with a State are sufficient” to exercise
personal jurisdiction over a defendant.
Id. at 713.
The ALS Scan
decision expressly “adopt[ed] and adapt[ed]” the model established
in Zippo Manufacturing Co. v. Zippo Dot Com, Inc., 952 F. Supp.
1119 (W.D. Pa. 1997).
The Zippo model created a “sliding scale”
20
for examining personal jurisdiction in the context of electronic
contacts with a forum state.
ALS Scan, 293 F.3d at 713.
Outlining
this “sliding scale,” the Zippo Court explained:
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 [of] personal jurisdiction.
The middle ground is occupied by interactive Web sites
where a user can exchange information with the host
computer. In these cases, the exercise of jurisdiction
is determined by examining the level of interactivity
and commercial nature of the exchange of information
that occurs on the Web site.
Id. at 713–14 (quoting Zippo, 952 F. Supp. at 1124).
Applying
Zippo, the Fourth Circuit held,
[A] State may, consistent with due process, exercise
judicial power over a person outside of the State when
that person (1) directs electronic activity into the
State, (2) with the manifested intent of engaging in
business or other interactions within the State, and (3)
that activity creates, in a person within the State, a
potential cause of action cognizable in the State’s
courts.
Id. at 714.
Elucidating this three-prong test, the Fourth Circuit
further instructed, “Under this standard, a person who simply
places information on the Internet does not subject himself to
jurisdiction in each State into which the electronic signal is
transmitted and received.”
Id.
21
Applying that test to a case involving claims of trademark
infringement, the Fourth Circuit in ALS Scan found that the alleged
Internet
activity
“was,
at
most,
passive”
and
no
personal
jurisdiction existed because the defendant “did not select or
knowingly transmit” the infringing material “specifically to” the
forum State “with the intent of engaging in business or any other
transaction” in the forum State.
Id. at 714–15.
Two Fourth Circuit decisions have since applied ALS Scan’s
three-prong test.
In Young v. New Haven Advocate, 315 F.3d 256
(4th Cir. 2002), the Fourth Circuit found that a district court
lacked specific jurisdiction over a Virginia libel suit against
two Connecticut newspapers.
Id. at 261–64.
The newspapers in
question had posted an article about a Virginia prison on their
websites.
Fourth
Id. at 259.
Circuit
Examining the website in question, the
concluded
that
“neither
newspaper’s
website
contain[ed] advertisements aimed at a Virginia audience” and that
the newspapers posted their articles with an intent to target a
Connecticut — not Virginia — audience.
Id. at 263–64.
As a
result, the Fourth Circuit held, “[T]he newspapers do not have
sufficient Internet contacts with Virginia to permit the district
court to exercise specific jurisdiction over them.”
Id. at 264.
The second case — Carefirst of Maryland, Inc. v. Carefirst
Pregnancy Centers, Inc., 334 F.3d 390 (4th Cir. 2003) — was a
trademark infringement case.
There, a Maryland corporation had
22
sued
an
Illinois
corporation
in
Maryland
because
of
alleged
trademark infringement on the Illinois corporation’s website.
at 393–95.
Id.
The Fourth Circuit examined whether the Illinois
corporation, through its website, “expressly aimed its trademarkinfringing conduct at the forum state” and determined that the
corporation had not done so.
Id. at 398, 401.
In reaching its
conclusion, the Fourth Circuit found persuasive that (1) the
website was “semi-interactive,” containing “features that make it
possible
for
a
user
to
exchange
information
with
the
host
computer,” with little “concrete evidence” of exchanges between
Maryland residents and the Illinois corporation; and (2) the
content on the website had “a strongly local character.”
Id. at
400–01.
“These cases demonstrate that the Fourth Circuit has been
notably reluctant to extend personal jurisdiction to out-of-state
defendants
Internet.”
based
on
little
more
than
their
presence
on
the
Rao v. Era Alaska Airlines, 22 F. Supp. 3d 529, 539
(D. Md. 2014).
Applying the reasoning of ALS Scan and its progeny
to the facts in this case, the court finds that BCG’s use of its
and CPI’s website, as well as Twitter and LinkedIn, fails to
support the extension of specific jurisdiction over BCG.
First, CPI’s website is, at best, “semi-interactive” and
could more appropriately be described as “minimally interactive.”
Christian Sci., 259 F.3d at 218 n.11 (applying this description to
23
a website that “invited visitors . . . to e-mail questions and
information requests” to the out-of-state defendant).
Most of
CPI’s website does “little more than make information available to
those who are interested in it.” ALS Scan, 293 F.3d at 714 (quoting
Zippo, 952 F. Supp. at 1124).
For example, CPI’s website contains
informational links titled “Who We Are” and “What We Do,” which
describe CPI and its mission.
(Doc. 10-1.)
The site also links
to news articles and interviews relating to CPI — none of which is
alleged to connect to North Carolina.
(Id.)
The website also
allows visitors to “Participate,” but presently limits visitors’
participation to signing up for news about CPI.
similar
to
the
facts
in
Carefirst,
there
is
(Id.)
no
Moreover,
evidence
of
exchanges, of any nature, between North Carolina residents and BCG
or CPI through the site.
334 F.3d at 400–01.
CPI’s remaining
Internet presence is largely “passive,” consisting of occasional
informational articles posted to BCG’s webpage, a Twitter page,
and a LinkedIn account. 6
(Id.; Doc. 10-7.)
Second, nothing about CPI’s website suggests that it is
specifically directed at North Carolina.
at 714–15.
See ALS Scan, 293 F.3d
Although not “decidedly local” as in Young, 315 F.3d
at 263, BCG’s CPI website is broadly directed toward a “global”
6
Public Impact makes no allegation that BCG, through CPI, has had any
interaction with North Carolina residents through Twitter or LinkedIn.
24
audience.
According to the website, CPI “is a global forum where
leaders can learn” by “[s]haring insights from around the world.”
(Doc.
10-1
at
“bring[ing]
(Id.)
46.)
The
together
world
website
further
leaders”
describes
through
“global
CPI
as
forums.”
As Public Impact admits, BCG’s only alleged trademark
infringement beyond its electronic presence has occurred outside
the United States, namely in London, England; New Delhi, India;
and Jakarta, Indonesia.
(Id.)
This content and BCG’s conduct
abroad provide nothing to suggest the BCG is using CPI’s website
to specifically target North Carolina. 7
Third, BCG’s online use of CPI manifests no intent to target
North Carolina.
In its brief, Public Impact argues that BCG
launched CPI as “a marketing tool for BCG’s education-related
consulting work in North Carolina.”
of
its
assertion,
Public
Impact
(Doc. 30 at 7.)
notes
that
In support
BCG’s
“thought
leadership” marketing strategy involves “distributing its ideas
freely” and cites BCG’s past education-related activity in North
Carolina.
(Id. at 4–7; Doc. 31-8.)
7
Even inferring that BCG uses
Citing Cable News Network L.P., L.L.L.P. v. CNNews.com, 177 F. Supp.
2d 506 (E.D. Va. 2001), aff’d in part, vacated in part sub nom. Cable
News Network, LP, LLLP v. CNNews.com, 56 F. App’x 599 (4th Cir. 2003),
Public Impact argues, “American courts routinely adjudicate Lanham Act
cases involving extraterritorial uses of federally registered trademarks
that cause a likelihood of confusion in the United States.” (Doc. 30
at 12.)
In that case, however, the district court exercised in rem
jurisdiction over the allegedly infringing domain name because a Virginia
corporation served as the domain name’s registrar and registry. Id. at
512–14. The court did not find that it had personal jurisdiction over
the domain name’s owner.
25
CPI as part of its marketing strategy despite CPI’s status as a
soon-to-be non-profit organization, Public Impact fails to show
that BCG manifested an intent to use CPI via the Internet to engage
in business or other interactions within North Carolina.
Also,
while it may perhaps be reasonable to infer that BCG intends to
continue education-related business in North Carolina (despite
little evidence of education-related work within the State in
several
years),
the
presented
evidence
permits
no
reasonable
inference that BCG intends to somehow use CPI to specifically
target North Carolina.
There is no allegation that BCG has used
Public Impact’s trademark in North Carolina (other than via the
Internet), nor does it appear that BCG has specifically used the
trademark to establish any contact with a North Carolina resident
or the State of North Carolina itself.
See ALS Scan, 293 F.3d at
714–15 (finding no personal jurisdiction where plaintiff failed to
show
defendant’s
knowing
transmission
of
infringing
material
specifically to the forum State “with the intent of engaging in
business or any other transaction in” the forum State); 6 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition § 32:38.40
(4th ed. 2004) (“A claim of trademark infringement takes place
where the allegedly infringing sales occur.”).
Under Public Impact’s theory, specific jurisdiction would
exist in any forum with Internet access in which BCG previously
conducted education-related business because that past activity
26
has the potential to give rise to speculative, future infringing
use of its trademark within that forum.
However, “[a] plaintiff
cannot establish personal jurisdiction by relying solely on the
basis of [its] own conclusory, speculative assertions.”
Luellen
v. Gulick, No. 1:10CV203, 2012 WL 1029577, at *5 (N.D.W. Va. Mar.
26, 2012); see also Carefirst, 334 F.3d at 402 (“When a plaintiff
offers only speculation or conclusory assertions about contacts
with a forum state, a court is within its discretion in denying
jurisdictional
discovery.”).
Public
Impact’s
speculative
assertion here is unpersuasive.
In conclusion, the court finds that it lacks specific, as
well as general, jurisdiction over BCG and will grant BCG’s motion
to dismiss on that basis.
B.
Motion to Seal
Public Impact has also moved to seal both its unredacted brief
(Doc. 14) filed in support of its underlying motion for preliminary
injunction
and
temporary
restraining
order
(Doc.
unredacted declaration of Bryan Hassel (Doc. 15).
does not oppose the motion.
The
public
enjoys
a
6)
and
the
(Doc. 11.)
BCG
(Doc. 36.)
right
to
access
documents
connection with a dispositive motion in a civil case.
filed
in
ATI Indus.
Automation, Inc. v. Applied Robotics, Inc., 801 F. Supp. 2d 419,
427 (M.D.N.C. 2011) (citing Rushford v. New Yorker Magazine, Inc.,
846 F.2d 249, 252–53 (4th Cir. 1988)).
27
However, a district court
has discretion to seal documents when the “public’s right of access
is outweighed by competing interests.”
In re Knight Publ’g Co.,
743 F.2d 231, 235 (4th Cir. 1984). Before sealing documents, a
district court must “(1) provide public notice of the request to
seal and allow interested parties a reasonable opportunity to
object, (2) consider less drastic alternatives to sealing the
documents, and (3) provide specific reasons and factual findings
supporting its decision to seal the documents and for rejecting
the alternatives.”
Ashcraft v. Conoco, Inc., 218 F.3d 288, 302
(4th Cir. 2000) (citations omitted). The burden falls on the party
seeking to keep the information sealed.
Va. Dep’t of State Police
v. Wash. Post, 386 F.3d 567, 575 (4th Cir. 2004).
Public Impact has met its burden here by redacting only a
small portion of material concerning two proprietary financial
figures.
Public notice of Public Impact’s request to seal was
provided on June 09, 2015, when Public Impact filed its “First
MOTION
to
Seal,”
seeking
declaration under seal.
to
file
(Doc. 11.)
its
unredacted
brief
and
The motion has now been
pending for over a month without any objection having been raised.
The court has also considered less drastic alternatives to sealing
the unredacted brief and declaration. Public Impact has also filed
redacted versions of both documents. (Docs. 7–8.) After a careful
comparison of the redacted and unredacted documents, the court
sees no less drastic alternative to the redaction of the two
28
financial figures.
financial
(Docs. 7–8, 14–15.)
information
redacted
in
Public
Finally, the limited
Impact’s
brief
and
declaration is proprietary and its public release would negatively
affect Public Impact’s business.
See Bayer Cropscience Inc. v.
Syngenta Crop Prot., LLC, 979 F. Supp. 2d 653, 656–57 (M.D.N.C.
2013) (holding that “certain marketing [and] sales” information
should be sealed as it was “not ordinarily public” and would cause
“harm[] by public disclosure”); Harrell v. Duke Univ. Health Sys.,
Inc., No. CIV.A. 7:07-813, 2007 WL 4460429, at *1 (D.S.C. Dec. 18,
2007) (approving the sealing of an entire exhibit because of the
potential disclosure of proprietary information).
The court,
therefore, will grant Public Impact’s motion to seal its unredacted
brief and declaration (Docs. 14–15).
III. CONCLUSION
For the reasons stated,
IT IS THEREFORE ORDERED that Public Impact’s motion to seal
(Doc. 11) is GRANTED.
IT IS FURTHER ORDERED that BCG’s motion to dismiss for lack
of personal jurisdiction (Doc. 20) is GRANTED. As a result, Public
Impact’s motion for temporary restraining order and preliminary
injunction (Doc. 6) is DENIED WITHOUT PREJUDICE AS MOOT, and this
action is DISMISSED WITHOUT PREJUDICE.
/s/
Thomas D. Schroeder
United States District Judge
August 3, 2015
29
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