Burnett v. The Teaching Mermaid LLC et al

Filing 17

ORDER granting 10 Motion to Dismiss, as more fully set out. Signed by Honorable David L. Russell on 1/7/21. (jw)

Case 5:20-cv-01102-R Document 17 Filed 01/07/21 Page 1 of 8

THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF OKLAHOMA
EVA BURNETT,
Plaintiff,
v.
THE TEACHING MERMAID, LLC,
A Florida Corporation and
VAYTIERRE VALDES, individually,
Defendants.

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CIV-20-1102-R

ORDER
Before the Court is Defendants’ Motion to Dismiss (Doc. No. 8), to which Plaintiff
filed a Response (Doc. No. 16). Upon consideration of the parties’ submissions, the Court
finds as follows.
In support of its motion Defendants cite Federal Rule of Civil Procedure 12(b)(2),
asserting that the Court cannot exercise personal jurisdiction over them, because they are
both domiciled in Florida and lack sufficient contacts to be sued in Oklahoma.
Plaintiff alleges trademark infringement and state law unfair competition claims
based on the actions of Defendant, which Plaintiff contends infringed on her use of “The
Teaching Mermaid.” Plaintiff contends she started using the name in 2015 and opened a
storefront on Teachers Pay Teachers in 2017. In 2018, Plaintiff became aware that
Defendant Valdes was utilizing the same name on her Teachers Pay Teachers storefront.
Ms. Burnett reached out to Teachers Pay Teachers per their terms and conditions and
Teachers Pay Teachers contacted Defendant Valdes. As an apparent result of the outreach

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by Teachers Pay Teachers Ms. Valdes changed her storefront name to “The Creative
Mermaid.” The logo affiliated with her storefront continued to have “The Teaching
Mermaid,” and, as a result, Plaintiff again reached out to Teachers Pay Teachers to inquire
about a change.
Plaintiff subsequently discovered that although Defendant Valdes had changed the
name of her storefront on Teachers Pay Teachers, she had purchased “The Teaching
Mermaid” domain name and opened accounts on Instagram, Facebook, YouTube, and
Amazon with that name. In July 2020, Plaintiff wrote a letter to Defendant Valdes
requesting that she consider changing her Instagram profile name to avoid confusion. (Doc.
No. 16-1).
Thereafter, on July 30, 2020 Defendant filed the paperwork for creation of a Florida
limited liability corporation, “The Teaching Mermaid.” The LLC filed an application to
trademark “The Teaching Mermaid” on August 10, 2020. (Doc. No. 16-3). Shortly
thereafter, in September 2020, Plaintiff Burnett filed an application for the same trademark.
In October 2020, Plaintiff filed this action. Defendants contend the Court cannot exercise
personal jurisdiction over them because they lack sufficient contacts with the forum state.
In assessing a motion to dismiss pursuant to Rule 12(b)(2), the plaintiff bears the
burden of establishing personal jurisdiction over a defendant.

Behagen v. Amateur

Basketball Ass’n, 744 F.2d 731, 733 (10th Cir. 1984). Where, as here, the Court does not
hold an evidentiary hearing before ruling on jurisdiction, “the plaintiff need only make a
prima facie showing” of personal jurisdiction to defeat a motion to dismiss. Id. (citing Am.
Land Program, Inc. v. Bonaventura Uitgevers Maatschappij, N.V., 710 F.2d 1449, 1454
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n.2 (10th Cir. 1983)). A plaintiff “may make this prima facie showing by demonstrating,
via affidavit or other written materials, facts that if true would support jurisdiction over the
defendant.” OMI Holdings, Inc. v. Royal Ins. Co. of Can., 149 F.3d 1086, 1091 (10th Cir.
1998). To defeat the plaintiff’s prima facie case, a defendant “must present a compelling
case demonstrating ‘that the presence of some other considerations would render
jurisdiction unreasonable.’” Id. (quoting Burger King Corp. v. Rudzewicz, 471 U.S. 462,
477 (1985)). Factual conflicts arising from affidavits or other submitted materials are
resolved in the plaintiff’s favor. Wenz v. Memery Crystal, 55 F.3d 1503, 1505 (10th Cir.
1995).
In support of their contention that dismissal is appropriate for want of personal
jurisdiction, Defendants submitted the affidavit of Defendant Valtierre Valdes. (Doc. No.
10-1). Therein she avers that she is domiciled in Florida, that neither she nor The Teaching
Mermaid, LLC, a Florida limited liability corporation, conducts business in Oklahoma.
They do not advertise, solicit, or target Oklahoma, do not own property, have accounts or
pay taxes here, and they are not registered to do business in the state. Beyond these
averments, Defendants’ affidavit makes no representations about the operation of The
Teaching Mermaid, LLC, such as how and where items are available for sale. The
concluding paragraph of her affidavit indicates that neither Defendant engaged in any
significant or ongoing activities in Oklahoma.
This case involves claims under both federal law and state law, and jurisdiction rests
on a federal question, 28 U.S.C. § 1331, and supplemental jurisdiction, 28 U.S.C. § 1367.
To determine whether a court may exercise jurisdiction over a defendant in a federal
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question case, the court must examine (1) whether the federal statute confers jurisdiction
by authorizing service of process on the defendant, and (2) whether the exercise of
jurisdiction would violate due process. See Peay v. BellSouth Med. Assistance Plan, 205
F.3d 1206, 1209 (10th Cir. 2000). Neither party contends that the relevant trademark statute
provides for nationwide service of process. Rather, both parties agree the Court must apply
the law of the state of Oklahoma. See Dudnikov v. Chalk & Vermilion Fine Arts, Inc., 514
F.3d 1063, 1070 (10th Cir. 2008) (holding that where neither federal act provided for
nationwide service of process, Federal Rule of Civil Procedure 4(k)(1)(A) commands court
to apply law of state in which district court sits).To obtain personal jurisdiction over a
nonresident defendant, Plaintiff “must show that jurisdiction is legitimate under the laws
of the forum state and that the exercise of jurisdiction does not offend the due process
clause of the Fourteenth Amendment.” Benton v. Cameco Corp., 375 F.3d 1070, 1075
(10th Cir. 2004) (quoting Soma Med. Int’l v. Standard Chartered Bank, 196 F.3d 1292,
1295 (10th Cir. 1999)). Oklahoma’s long-arm statute is co-extensive with the due process
clause, and accordingly, the Court’s analysis is a single inquiry. See Okla. Stat. tit. 12
§ 2004(F).
Personal jurisdiction over Defendant is based on Defendant's contacts with
Oklahoma. Contacts-based personal jurisdiction is either general or specific. Old Republic
Ins. Co. v. Cont’l Motors, Inc., 877 F.3d 895, 903 (10th Cir. 2017). Plaintiff does not argue
that this Court may exercise general jurisdiction over Defendant. Accordingly, this Court's
analysis shall focus on specific personal jurisdiction.

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Specific jurisdiction calls for a two-step inquiry: “(a) whether the plaintiff
has shown that the defendant has minimum contacts with the forum state;
and, if so, (b) whether the defendant has presented a ‘compelling case that
the presence of some other considerations would render jurisdiction
unreasonable.’” [Old Republic, 877 F.3d at 904] (quoting Burger King, 471
U.S. at 476–77, 105 S.Ct. 2174). The minimum contacts test also has two
requirements: “(i) that the defendant must have ‘purposefully directed its
activities at residents of the forum state,’ and (ii) that ‘the plaintiff’s injuries
must arise out of [the] defendant’s forum-related activities.’” Id. (quoting
Shrader v. Biddinger, 633 F.3d 1235, 1239 (10th Cir. 2011)).
C5 Med. Werks., LLC v. CeramTec GMBH, 937 F.3d 1319 1323 (10th Cir. 2019). If the
Plaintiff carries her burden of proof to show that each Defendant has minimum contacts
with the forum state, then the court next asks if a Defendant “has presented a ‘compelling
case that the presence of some other considerations would render jurisdiction
unreasonable.’” Id.
Plaintiff’s contention that Defendants are subject to suit in this forum is premised
solely on the parties’ internet presence on a variety of websites.1 There are no allegations
that Defendant Valdes has been to Oklahoma and she denies targeting residents of
Oklahoma or soliciting sales in the state. Defendants contend they do not engage in
significant or ongoing activities in Oklahoma. Defendants contend that, even if general
internet commerce constitutes purposeful direction of activity to Oklahoma for purposes
of specific personal jurisdiction, exercising jurisdiction over them would offend traditional
notions of fair play and substantial justice.
“[W]here the defendant deliberately has engaged in significant activities within a

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The parties do not distinguish in their briefs between the actions of Ms. Valdes as an individual and those of The
Teaching Mermaid, LLC.

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State, . . . he manifestly has availed himself of the privilege of conducting business there.”
Old Republic, 877 F.3d at 905 (quotation marks and citation omitted). Where, as here, the
case is premised on internet-based activities, “emphasis [is] on the internet use or site
intentionally directing his/her/its activity or operation at the forum state rather than just
having an activity or operation accessible there.” Shrader v. Biddinger, 633 F.3d 1235,
1240 (10th Cir. 2011).
The Court must look to whether the “defendant deliberately directed its
message at an audience in the forum state and intended to harm the plaintiff
occurring primarily or particularly in the forum state.” [Shrader, 633 F.3d at
1241]. Courts have recently focused on whether an internet sales transaction
occurs between buyer and seller to determine whether the website owner is
intentionally directing its activities or operations at the forum state. See id;
Otter Prod., 2019 WL 4736462, at*4; see also Job Store, Inc. v. Job Store of
Loveland, Ohio, LLC, No. 15-cv-02228-PAB-KLM, 2016 WL 9735786, at
*5 (D. Colo. Sept. 7, 2016). With cases involving internet sales transactions,
rather than the operation of a website alone, courts have held that “a
defendant’s use of a website to conduct business in the forum state, such as
having a website that” customers in the forum state have accessed and on
which the customers have purchased the alleged infringing product, provides
a basis for a court’s exercise of personal jurisdiction. See PopSockets, 2019
WL 7168661, at *3 (citations omitted).
Onyx Enterprises Int’l Corp. v. Sloan Int’l Holding Corp., No. 19-cv-2992-DDD-KLM,
2020 WL 1958414, * 4 (D. Colo. Mar. 26, 2020).
Purposeful availment may be shown where an out-of-state defendant causes its
product to be distributed in the forum state. See, e.g., Keeton v. Hustler Magazine, Inc.,
465 U.S. 770, 774-75 (1984). However, Plaintiff presents no evidence that Defendants
actually caused their products to be sold in Oklahoma. There is no record of any sales via
Teachers Pay Teachers or Defendant’s social media to persons in Oklahoma. The cases
cited by Plaintiff emanating from this jurisdiction in support of personal jurisdiction can
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be distinguished on this basis. In short, Plaintiff’s allegations and evidence are insufficient
to support a prima facie case that either Defendant purposefully directed activities at
Oklahoma and that her injuries arose out of their forum-related activities.
Additionally, although jurisdiction may be properly asserted over a defendant who
directs its tortious conduct toward the forum state, knowing the effects of the conduct will
cause harm, Calder v. Jones, 465 U.S. 783, 789–90 (1984), here there is no indication that
either Defendant engaged in such conduct. The evidence submitted by Plaintiff indicates
that on July 14, 2020 she e-mailed a letter to Defendant Vaytierre Valdes. In the letter
Plaintiff indicates the prior confusion regarding the Teachers Pay Teachers website because
both Plaintiff and Defendant Valdes had stores called “The Teaching Mermaid.” Plaintiff
requested that Defendant consider changing her profile name on Instagram from “The
Teaching Mermaid.” Plaintiff did not, however, identify in the letter that she was from
Oklahoma. Additionally, the first reference to Oklahoma in the current record is September
2020, when Plaintiff first filed to register “The Teaching Mermaid.” Accordingly, any
search by Defendant of the filings at the USPTO would not have revealed that Plaintiff was
domiciled in Oklahoma. Similarly, there is no indication that the request by Teachers Pay
Teachers that Defendant Valdes change the name of her storefront informed Defendant of
Burnett’s location.
The vague allegation that Plaintiffs sold products to persons in Oklahoma is
insufficient to permit this Court to exercise personal jurisdiction over either Ms. Valdes or
The Teaching Mermaid, LLC. Accordingly, the Court hereby DISMISSES Plaintiff’s
Complaint against both Defendants, whose Motion to Dismiss is GRANTED.
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IT IS SO ORDERED this 7th day of January 2021.

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