Diece-Lisa Industries, Inc. v. Disney Enterprises, Inc. dba Walt Disney Studios Motion Pictures et al

Filing 188

ORDER ADOPTING REPORT AND RECOMMENDATIONS for 159 Report and Recommendations. Signed by Judge Robert W. Schroeder, III on 09/29/2015. (nkl, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
DIECE-LISA INDUSTRIES, INC,
Plaintiff,
v.
DISNEY STORE USA, LLC ET AL.,
Defendants.

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Case No. 2:12-cv-00400-RWS-RSP

ORDER
Before the Court are Defendants Disney Enterprises and Disney Consumer Products’
(collectively, “Disney”) Objections (Doc. No. 167) to the Magistrate Judge’s Report and
Recommendation (Doc. No. 159).

Disney objects to the Magistrate Judge’s Report and

Recommendation only to the extent that it recommended denying Defendants’ Motion to
Dismiss for Lack of Personal Jurisdiction and Improper Venue (civil action number 2:14-cv-70,
Doc. No. 21).
Defendants object to the Report and Recommendation and assert they have shown (1)
Plaintiff did not make a prima facie showing that DEI was subject to personal jurisdiction in
Texas; (2) Plaintiff did not make a prima facie showing that DCP is subject to personal
jurisdiction in Texas; and (3) venue is not proper in the Eastern District of Texas “[b]ecause
neither DCI nor DCP is subject to personal jurisdiction in Texas.” (Doc. No. 167, at 7.)
These assertions boil down to one premise: that under Federal Circuit precedent, a
non-exclusive “licens[e] [to] third parties to make and sell Toy Story 3 merchandise throughout
the country does not support specific jurisdiction in Texas.” (Doc. No. 167, at 5, 6 (citing

Avocent Huntsville Corp. v. Aten Int’l Co., 552 F.3d 1324, 1336 (Fed. Cir. 2008); Red Wing Shoe
Co., Inc. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355, 1361–62 (Fed. Cir. 1998)).)
After reviewing the objected to portions of the Report and Recommendation de novo, the
Court finds that the Report and Recommendation should be ADOPTED. The Court
OVERRULES Defendants’ arguments: first, because the undisputed facts do not show that
specific personal jurisdiction is improper; and second, Defendants have not cited controlling
authority which holds that licensor is per se not subject to specific personal jurisdiction in Texas
based off the actions of a non-exclusive licensee. Accordingly, Defendants’ Rule 12(b)(1)
Motion to Dismiss Based on Lack of Jurisdiction (Doc. No. 21) is hereby DENIED.
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Furthermore, the Report and Recommendation also recommended denying Plaintiff’s
Motions for Summary Judgment on Knowledge and Protectability (Doc. Nos. 60 and 62) and
Defendants’ No Evidence Motion for Summary Judgment (Doc. No. 66).

There were no

objections to the Magistrate Judge’s recommendations with respect to those motions.
Accordingly, Plaintiff’s Motions for Summary Judgment (Doc. Nos. 60 and, 62) and Defendants’
Motions for Summary Judgment (Doc. No. 66) are DENIED.
SIGNED this 29th day of September, 2015.

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ROBERT W. SCHROEDER III
UNITED STATES DISTRICT JUDGE