Pokitdok, Inc et al v. Martin

Filing 29

ORDER DENYING DEFENDANT'S MOTION TO DISMISS; GRANTING MOTION FOR TRANSFER OF VENUE; AND TRANSFERRING ACTION TO THE DISTRICT OF SOUTH CAROLINA (Illston, Susan) (Filed on 11/6/2012) [Transferred from California Northern on 11/8/2012.]

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

United States District Court
For the Northern District of California

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No. C 12-3947 SI

POKITDOK, INC., et al.,

ORDER DENYING DEFENDANT’S
MOTION TO DISMISS; GRANTING
MOTION FOR TRANSFER OF VENUE;
AND TRANSFERRING ACTION TO THE
DISTRICT OF SOUTH CAROLINA

Plaintiffs,
v.
JEREMY MARTIN,
Defendant.

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Currently before the Court is defendant’s motion to dismiss for lack of personal jurisdiction and

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improper venue, or, in the alternative, to transfer venue to the District of South Carolina. Pursuant to

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Civil Local Rule 7-1(b), the Court finds this matter suitable for disposition without oral argument and

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therefore VACATES the hearing currently scheduled for November 8, 2012. Having considered the

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parties’ papers, and for good cause appearing, the Court hereby DENIES the motion to dismiss,

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GRANTS the motion to transfer venue, and TRANSFERS this action to the District of South Carolina.

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BACKGROUND

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Plaintiff PokitDok, Inc. is a social networking website and application that focuses on health and

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wellness. Compl. ¶ 9. PokitDok is incorporated in Delaware and has its principal place of business in

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Menlo Park, California. Compl. ¶ 1. Defendant Jeremy Martin (“Martin”), a resident of Charleston,

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South Carolina, is a computer software engineer who performed uncompensated work for Plaintiffs
PokitDok, Inc., Lisa Maki, and Theodore Tanner (“Plaintiffs”) in 2011. Compl. ¶¶ 4, 12. During this

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period, PokitDok’s principal place of business was in South Carolina, where Martin performed all of

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his work for plaintiffs. Mot. at 4.

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On June 27, 2012, after Martin’s volunteer work for plaintiffs ended, Martin sent a letter to

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plaintiffs which (1) demanded that plaintiffs cease and desist using his intellectual property, and (2)

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threatened to file a copyright lawsuit against plaintiffs in federal court if they did not comply. Id. at 1.

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On July 26, 2012, plaintiffs filed this action against Martin; and, on August 1, 2012, Martin filed a

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copyright infringement action against plaintiffs in the District of South Carolina. Opp’n at 4. In this

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case Plaintiffs seek declaratory relief on most of the same claims asserted by Martin in the action before

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the District of South Carolina Court. See Compl.; Mot., Ex. I.

United States District Court
For the Northern District of California

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Defendant now moves to dismiss this case under Rule 12(b)(2) and 12(b)(3) for lack of personal

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jurisdiction, or transfer the case to the United States District Court for the District of South Carolina

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pursuant to 28 U.S.C. § 1406(a), based on improper venue. Alternatively, defendant requests transfer

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for convenience under 28 U.S.C. § 1404(a). Plaintiffs contend that dismissal and transfer should be

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denied because this Court has specific personal jurisdiction over defendant.

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LEGAL STANDARD
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Personal Jurisdiction

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Personal jurisdiction over a nonresident defendant may exist if the defendant has either a

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continuous and systematic presence in the state (general jurisdiction), or minimum contacts with the

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forum state such that the exercise of jurisdiction “does not offend traditional notions of fair play and

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substantial justice” (specific jurisdiction). Int’l Shoe Co. v. Washington, 326 U.S. 310, 316 (1945)

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(citation omitted). Where there is no federal statute applicable to determine personal jurisdiction, a

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district court should apply the law of the state where the court sits. See Schwarzenegger v. Fred Martin

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Motor Co., 374 F.3d 797, 800 (9th Cir. 2004). California law requires only that the exercise of personal

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jurisdiction comply with federal due process requirements. See id. at 800-01.

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In order for a court to exercise specific jurisdiction in accordance with due process, a nonresident

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defendant must have “‘minimum contacts’ with the forum state such that the assertion of jurisdiction

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‘does not offend traditional notions of fair play and substantial justice.’” Pebble Beach Co. v. Caddy,
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453 F.3d 1151, 1155 (9th Cir. 2006) (quoting Int’l Shoe, 326 U.S. at 315). The Ninth Circuit employs

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a three-part test to determine whether the defendant has such minimum contacts with a forum state.

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First, the “nonresident defendant must do some act or consummate some transaction with the forum or

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perform some act by which he purposefully avails himself of the privilege of conducting activities in

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the forum,” thereby invoking the benefits and protections of the forum state. Cybersell, Inc. v.

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Cybersell, Inc., 130 F.3d 414, 418 (9th Cir. 1997) (quoting Ballard v. Savage, 65 F.3d 1495, 1498 (9th

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Cir. 1998)). Second, the claim must “arise out of or result from the defendant’s forum-related

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activities,” and third, the exercise of personal jurisdiction over the defendant must be reasonable.

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Pebble Beach Co., 453 F.3d at 1155. The plaintiff bears the burden of proving the first two conditions.

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United States District Court
For the Northern District of California

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Boschetto v. Hansing, 539 F.3d 1011, 1016 (9th Cir. 2008). If the plaintiff carries this burden, “the

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defendant must come forward with a ‘compelling case’ that the exercise of jurisdiction would not be

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reasonable.” Id. (citing Schwarzenegger, 374 F.3d at 802).

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If a district court acts on the defendant’s motion to dismiss without holding an evidentiary

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hearing, the plaintiff “need only demonstrate facts that if true would support jurisdiction over the

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defendant.” Id. at 1129 (citation omitted). Unless directly contravened, the plaintiff’s version of the

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facts is taken as true, and conflicts between the facts contained in the parties’ affidavits must be resolved

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in the plaintiff’s favor for purposes of deciding whether a prima facie case for personal jurisdiction

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exists. Id. (citation omitted).

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2.

Transfer of Venue

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Civil actions arising under federal copyright laws may be brought in the district in which the

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defendant or his agent resides or may be found. 28 U.S.C. § 1400(a). The 9th Circuit “interprets this

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provision to allow venue in any judicial district where, if treated as a separate state, the defendant would

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be subject to personal jurisdiction.” Brayton Purcell LLP v. Recordon & Recordon, 606 F.3d 1124,

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1126 (9th Cir. 2010).

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If the court determines that venue is improper, the court may either dismiss or, if it is in the

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interests of justice, transfer an action to a district or division in which it could have been brought. 28

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U.S.C. § 1406(a). Courts should consider the basic equities of the case in deciding whether to transfer
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or dismiss, including any statute of limitations bar and the harshness of dismissal in light of such a bar,

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and the relative injustice imposed on the parties. King v. Russell, 963 F.2d 1301, 1304-05 (9th Cir.

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1992).

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DISCUSSION

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1.

Specific Personal Jurisdiction
Plaintiffs concede that there is no general jurisdiction over defendant Martin. They contend,

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instead, that this Court has specific jurisdiction over him. Opp’n at 6, 9. Plaintiffs assert that Martin

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subjected himself to personal jurisdiction in this Court by sending the cease and desist letter to Northern

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United States District Court
For the Northern District of California

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California residents PokitDok, Inc. and Lisa Maki. Id. at 9. Martin argues that this Court lacks personal

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jurisdiction over him because sending a cease and desist letter, without more, is insufficient to subject

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an individual to personal jurisdiction. Mot. at 12.

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Under the first prong of the three-part specific jurisdiction test, plaintiff must establish that the

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defendant either purposefully availed himself of the privilege of conducting activities in California, or

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purposefully directed his activities toward California. Schwarzenegger, 374 F.3d at 802. A purposeful

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availment analysis is most often used in suits sounding contract; a purposeful direction analysis is used

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in suits sounding in tort. Id. Here, the declaratory claims for copyright infringement sound in tort, and

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therefore, the Court will apply a purposeful direction analysis. Id.; see also Lang v. Morris, 823 F.

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Supp. 2d 966, 969 (N.D. Cal. 2011) (applying purposeful direction analysis to copyright claim).

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Purposeful direction analyses are guided by the Supreme Court’s “effects” test set forth in

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Calder v. Jones, 465 U.S. 783 (1984). Under the Calder effects test, the defendant must have (1)

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committed an intentional act, which was (2) expressly aimed at the forum state, and (3) caused harm

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which is suffered and which the defendant knows is likely to be suffered in the forum state. Bancroft

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& Masters, Inc. v. Augusta Nat. Inc., 223 F.3d 1082, 1087 (9th Cir. 2000) (holding modified by Yahoo!

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Inc. v. La Ligue Contre Le Racisme Et L’Antisemitisme, 433 F.3d 1199 (9th Cir. 2006)). “Each of the

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three tests must be satisfied to permit a district court to exercise limited personal jurisdiction over a

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non-resident defendant.” See Peterson v. Kennedy, 771 F.2d 1244, 1261 (9th Cir. 1985).

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Plaintiffs rely on Yahoo!, 433 F.3d 1199 to argue that Martin’s cease and desist letter is a proper

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basis for personal jurisdiction. Opp’n at 7. In Yahoo!, the Ninth Circuit held that the district court had

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personal jurisdiction over defendants who sent a cease and desist letter to a California plaintiff, when

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coupled with French court orders directing Yahoo! to take action in California. Yahoo!, 433 F.3d at

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1210-11. The court reasoned that the first two requirements of purposeful direction S an intentional act

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expressly aimed at the forum state S were satisfied because the foreign defendants filed suit in France

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(an intentional act), which was “expressly aimed at California” as it sought “orders directing Yahoo!

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to perform significant acts in California.” Id. at 1209. The third requirement S that the foreign

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defendants’ acts caused harm they knew would likely be suffered in the forum state S was also satisfied

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United States District Court
For the Northern District of California

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because of the possibility of a substantial penalty arising out of one of the French orders and the

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“shadow on the legality of Yahoo!’s current policy.” Id. at 1209-11. See also Bancroft, 223 F.3d at 1087

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(upholding personal jurisdiction over the defendant because, in addition to sending plaintiff a cease and

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desist letter, the defendant triggered a third-party dispute resolution process which would have aimed

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to prevent plaintiff from using defendant’s website).

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Here, unlike in Yahoo!, the cease and desist letter sent to plaintiffs by Martin was not sent in

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conjunction with any enforcement action that would cause plaintiffs to take action in California. The

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letter merely alerted plaintiffs that defendant might file a legal action against them for copyright

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infringement. See Reply, Ex. A. Therefore, none of the purposeful direction requirements have been

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satisfied, and sending a cease and desist letter, without more, does not establish personal jurisdiction

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over defendant.

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Hockerson-Halberstadt, Inc., 148 F.3d 1355, 1361 (Fed.Cir.1998) (“A patentee should not subject itself

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to personal jurisdiction in a forum solely by informing a party who happens to be located there of

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suspected infringement.”)).

Yahoo!, 433 F.3d at 1208 (9th Cir. 2006) (citing Red Wing Shoe Co. v.

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2.

Transfer Preferred Over Dismissal

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Defendant argues that this case should be transferred, pursuant to 28 U.S.C. § 1406(a), because

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venue is improper under 28 U.S.C. § 1400(a). This Court agrees that venue is improper because this

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Court lacks personal jurisdiction over defendant. To avoid the necessity of plaintiff having to file and
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serve a new action, this Court hereby DENIES defendant’s motion to dismiss and GRANTS defendant’s

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motion to transfer under 28 U.S.C. § 1406(a).

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CONCLUSION

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For the foregoing reasons and for good cause shown, the Court hereby DENIES defendant’s

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motion to dismiss, GRANTS defendant’s motion to transfer venue, and TRANSFERS this action to the

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District of South Carolina.

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IT IS SO ORDERED.

United States District Court
For the Northern District of California

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Dated: November 6, 2012

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_________________________
SUSAN ILLSTON
United States District Judge

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