The Leaders Institute, LLC et al v. Jackson et al

Filing 54

Memorandum Opinion and Order granting in part and denying in part 39 Motion to Dismiss/Lack of Jurisdiction; granting 41 Motion to Dismiss/Lack of Jurisdiction. (Ordered by Judge Jane J Boyle on 7/24/2015) (ykp)

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF TEXAS
DALLAS DIVISION
THE LEADER’S INSTITUTE, LLC
and DOUG STANEART,
Plaintiffs,
v.
ROBERT JACKSON, MAGNOVO
TRAINING GROUP, LLC,
COLETTE JOHNSTON, and
SHORT SPLICE, INC.,
Defendants.

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CIVIL ACTION NO. 3:14-CV-3572-B

MEMORANDUM OPINION AND ORDER
Before the Court are two motions to dismiss for lack of personal jurisdiction, one of which
moves in the alternative for a transfer of venue to the U.S. District Court for the Southern District
of Indiana. For the reasons that follow, the Court GRANTS IN PART and DENIES IN PART the
Motion to Dismiss Plaintiffs’ First Amended Original Complaint Pursuant to Fed. R. Civ. P. 12(b)(2)
(doc. 39) filed by Defendants Robert Jackson and Magnovo Training Group, LLC, which as
explained below, results in the partial dismissal of the claims against these defendants and a denial
of their alternative request for a venue transfer. Also discussed below, the Court GRANTS the
Motion to Dismiss for Lack of Personal Jurisdiction (doc. 41) filed by Defendants Colette Johnston
and Short Splice, Inc., and dismisses the claims against these defendants in their entirety.
I.
BACKGROUND
This case was brought by Plaintiffs The Leader’s Institute, LLC (“TLI”), a Texas company
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headquartered in Arlington, Texas, and Doug Staneart (“Staneart”), a Texas resident and the
founding owner and CEO of TLI. Doc. 36, Pls.’ First Am. Compl. (“Am. Compl.”) ¶¶ 1, 2, 45.
Plaintiff TLI is “in the business of conducting corporate leadership, team-building and public
speaking seminars.” Id. ¶¶ 45-47. Integral to TLI’s business are the various pieces of intellectual
property owned by Plaintiffs, including registered trademarks for “Build-A-Bike®” and “BUILD-ABIKE®,” registered copyrights for materials used in TLI’s presentations, and customer information
lists that Plaintiffs maintain on a password-protected system housed in Texas. See id. ¶¶ 48, 52-65.
Plaintiffs filed this action against Defendants Robert Jackson (“Jackson”), Magnovo Training
Group, LLC (“Magnovo”), Colette Johnston (“Johnston”) and Defendant Short Splice, Inc. (“Short
Splice”), who together have allegedly exploited Plaintiffs’ intellectual property in such ways that
allow them to unfairly compete with TLI in the corporate seminar industry. Defendants, who all hail
from out of state, have filed two separate motions attempting to prevent Plaintiffs from further
pursuing the claims filed against them in this jurisdiction. The Court begins its review of these
motions with a background discussion of the relevant facts regarding each pair of movants.1
A.

Background: Defendants Jackson and Magnovo

The first motion at issue was filed by Defendants Jackson and Magnovo. Jackson is a resident
of Indiana, and has never lived or owned real estate in Texas. Doc. 40-1, Defs. Jackson’s &
Magnovo’s App. Supp. Mot. (“Defs. Jackson’s & Magnovo’s App.”) at 3 (Ex. A, Jackson Aff. ¶¶ 4-5).
He is also the President and owner of Magnovo, which was registered as a limited liability company

1

As discussed in more detail infra, this background discussion is guided by the applicable standard
of review, which requires the Court to accept “all undisputed facts submitted by the plaintiff” and resolve “all
facts contested in the affidavits” and other attachments “in favor of jurisdiction.” Luv N’ care, Ltd. v.
Insta-Mix, Inc., 438 F.3d 465, 469 (5th Cir. 2006) (citing Wyatt v. Kaplan, 686 F.2d 276, 280 (5th Cir. 1982)).

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under the laws of Indiana in August 2009, and has remained headquartered there since. Defs.
Jackson’s & Magnovo’s App. 7-8 (Ex. B, Jackson Aff. ¶¶ 3, 6).
Though Jackson served as an independent contractor for TLI as far back as 2006, he had a
falling out with Plaintiffs in 2009, and his conduct during this initial relationship does not appear to
be relevant to the present case. See Am. Compl. ¶ 70; Doc. 45, Pls.’ App. Supp. Resp. Defs. Jackson’s
& Magnovo’s Mot. (“Pls.’ App. Opp’n Jackson’s & Magnovo’s Mot.”) at 3 (Ex. A, Staneart Aff. ¶¶
10-11). Instead, the conduct relevant to this case dates back to September 2010, at which time
Jackson began reaching out to Staneart in Texas in an effort to re-establish his relationship with TLI.
Pls.’ App. Opp’n Jackson’s & Magnovo’s Mot. 3 (Ex. A, Staneart Aff. ¶ 12). Jackson continued to
contact Staneart in both October and November of 2010, “offering to instruct classes [as a
contractor for TLI] whenever available across the United States and to pay his own travel expenses.”
Id. at 4 (Ex. A, Staneart Aff. ¶¶ 13, 14). Staneart accepted Jackson’s proposal in November 2010,
and that month, Jackson flew to Texas at his own expense to lead a TLI event for a customer in
Texas. Id. (Ex. A, Staneart Aff. ¶¶ 14, 15). During his trip, Jackson also met with Staneart in person,
and continued to lobby for his return to TLI. Id. (Ex. A, Staneart Aff. ¶¶ 16, 17). In the face of
“Jackson’s persistent pleading,” Staneart eventually “agreed to give Jackson a second chance as an
independent contractor.” Id.
Subsequently, Jackson signed a written agreement with TLI, and returned the contract to
Staneart “in Texas via facsimile on approximately April 4, 2011.” Id. (Ex. A, Staneart Aff. ¶ 18); see
also id. at 13 (Ex. A-3, Agreement Dated 2/1/2011). This agreement was labeled “Independent
Contractor Agreement” at the top, and provided, among other things, that client lists and
instructional materials are the intellectual property of TLI, and that Jackson agreed not to use such
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materials “to compete with TLI for a period of 18 months” following termination. Id. at 13.
Pursuant to his Independent Contractor Agreement, Jackson thereafter began performing
team building and leadership seminars for TLI’s clients, and selling its services to prospective and
established customers. Id. at 5 (Ex. A, Staneart Aff. ¶ 20). Jackson performed most of his work for
TLI remotely—from his home in Indiana. See Defs. Jackson’s & Magnovo’s App. 5 (Ex. A, Jackson
Aff. ¶ 17). Nevertheless, Plaintiffs show that, over the course of his relationship with TLI, Jackson
contacted at least forty-seven Texas residents trying to sell TLI’s services and collect a commission
for himself, completed sales to these Texas customers on at least twenty-three occasions, and
conducted eight seminars or workshops in Texas for TLI’s clients. Pls.’ App. Opp’n Jackson’s &
Magnovo’s Mot. 5-6 (Ex. A, Staneart Aff. ¶¶ 21-23); id. at 14-33 (Exs. A-4, A-5). During this time,
Jackson was also given access to TLI’s password-protected customer database in Texas, became
certified to teach TLI workshops and classes, and was exposed to and made aware of TLI’s registered
trademarks and copyrighted works. Id. at 5-6 (Ex. A, Staneart Aff. ¶¶ 20, 24).
On August 1, 2013, Jackson sent Plaintiffs written notice, via email, that he was terminating
their contractual relationship. Id. at 7 (Ex. A, Staneart Aff. ¶ 28). Just one week prior to Jackson’s
resignation, “the website for Jackson’s company, Magnovo, was refreshed with changes that included
listing several of TLI’s customers as companies that trust Magnovo, implying that they were or are
customers of Magnovo.” Id. (Ex. A, Staneart Aff. ¶ 31). Then, later in August 2013, Jackson, only
weeks after resigning, traveled to Texas to conduct a workshop for Magnovo. Id. at 6 (Ex. A,
Staneart Aff. ¶ 26); Defs. Jackson’s & Magnovo’s App. 4 (Ex. A, Jackson Aff. ¶ 7). Plaintiffs allege
that this workshop was held for one of TLI’s long-standing Texas customers: Statoil Gulf Services,
LLC (“Statoil”). Pls.’ App. Opp’n Jackson’s & Magnovo’s Mot. 6 (Ex. A, Staneart Aff. ¶¶ 25-26).
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Jackson and Magnovo admittedly contracted and performed at least two additional corporate
workshops for Texas clients in October 2014, and while Plaintiffs are not aware of the identities of
those customers, they believe both are former TLI customers, to whom Jackson gained access
through his relationship with TLI. See id. at 6-7 (Ex. A, Staneart Aff. ¶ 27); Defs. Jackson’s &
Magnovo’s App. 4 (Ex. A, Jackson Aff. ¶ 7).
Also following Jackson’s departure from TLI, Plaintiffs claim that Jackson and Magnovo
began “using numerous domain names, marks, phrases and terms that are identical or nearly identical
to the Build-A-Bike® mark to advertise and sell charity team building and related services in direct
competition with TLI.” Pls.’ App. Opp’n Jackson’s & Magnovo’s Mot. 8 (Ex. A, Staneart Aff. ¶ 34).
These activities, Plaintiffs show, were carried out both on Magnovo’s website and infringing domains
registered by Jackson, such as www.letsbuildabike.com. Id. (Ex. A, Staneart Aff. ¶¶ 34-39); id. at 6079 (Exs. A-7, A-8, A-9, A-10, & A-11). And though Defendants say they removed all infringing
marks in response to Plaintiffs’ cease and desist letter in September 2014, see Defs. Jackson’s &
Magnovo’s App. 9 (Ex. B, Jackson Aff. ¶ 15), the record suggests that Defendants’ websites are still
infringing on Plaintiffs’ marks in various ways. See Pls.’ App. Opp’n Jackson’s & Magnovo’s Mot. 9
(Ex. A, Staneart Aff. ¶¶ 38-40); id. at 80-104 (Ex. A-12).
B.

Background: Defendants Johnston and Short Splice

The second motion before the Court was filed by Defendants Johnston and Short Splice.
Defendant Johnston is a resident of Florida, and like Jackson, formerly worked2 for TLI on a remote

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The parties dispute the legal characterization of Johnston’s and TLI’s former agency relationship:
Johnston says she was an employee; TLI claims she was an independent contractor. As seen below, the issues
presented herein do not require the Court to decide which of these two characterizations is applicable; it
generally suffices to find that she was or was not an agent at relevant times in this case. As such, the Court

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basis from Florida, without ever residing or owning real property in Texas. Doc. 42, Defs. Johnston’s
& Short Splice’s App. Supp. Mot. (“Defs. Johnston’s & Short Splice’s App.”) at 1-2 (Ex. A, Johnston
Decl. ¶¶ 5-10). Johnston is also the owner and principal operator of Short Splice, a corporation she
formed under the laws of Florida in 2011, where its principal operations have remained ever since.
Id. at 2 (Ex. A, Johnston Decl. ¶ 7).
Johnston’s relationship with TLI began in August 2008, around which time “TLI made some
organizational changes” and decided to hire its subcontractors, including Johnston, directly. Docs.
47 & 48, Pls.’ App. Supp. Resp. Defs. Johnston’s & Short Splice’s Mot. (“Pls.’ App. Opp’n Johnston’s
& Short Splice’s Mot.”) at 3 (Ex. A, Staneart ¶ 10). Thereafter, Jackson worked for TLI for five years
as a “Corporate Specialist,” initially providing both instructor and sales services and later working
solely in sales. Id. at 3-4 (Ex. A, Staneart Aff. ¶¶ 10, 16). As mentioned, Johnston performed most
of these services for TLI remotely—from her home in Florida.
Plaintiffs, nonetheless, show that Johnston, during her five-year agency relationship with TLI,
traveled to Texas on two different occasions: once for certification training as a TLI workshop
instructor, and a second time to assist in a TLI workshop. Id. at 5 (Ex. A, Staneart Aff. ¶ 23).
Plaintiffs also assigned Johnston as a sales agent for 368 prospective and established clients in Texas,
for whom “she submitted detailed sales proposals and to whom she ultimately made numerous sales,”
which earned her the commissions she was paid by TLI. Id. at 5-6 (Ex. A, Staneart Aff. ¶¶ 24-26);
id. at 20-156 (Exs. A-6, A-7, & A-8). Plaintiffs further point out that over Johnston’s five-year
tenure she submitted all payment requests to TLI’s offices in Texas, received all payments from a

hereinafter attempts to refer to Johnston, where appropriate, as simply an “agent” of TLI.

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bank located in Texas, and communicated with TLI’s representatives and support personnel also
located in Texas. Id. at 6-7 (Ex. A, Staneart ¶¶ 27-32); id. at 169-269 (Ex. A-15). In addition,
Johnston’s sales position afforded her access to TLI’s client lists and other intellectual property, “all
of which [was] kept on and accessed via TLI’s company computers located in Arlington, Texas.” Id.
at 4 (Ex. A, Staneart Aff. ¶¶ 17, 18). Similarly, Johnston was provided a hard copy of TLI’s 2013
corporate handbook, for which she signed a non-disclosure agreement dated April 16, 2013. Id. at
5 (Ex. A, Staneart Aff. ¶ 20). This agreement provides, in relevant part, that “[t]he information
contained in this document contains trade secrets of [TLI],”3 and that those “who receiv[e] this
document, and the trade secrets contained within, ha[ve] a fiduciary responsibility . . . to protect and
keep confidential these trade secrets.” Id. at 17 (Ex. A-4, Agreement Dated 4/16/2013).
Unlike her relationship with TLI, Johnston denies that Short Splice ever had any sort of
contacts or agency arrangement with TLI. See Defs. Johnston’s & Short Splice’s App. 4 (Ex. A,
Johnston’s Decl. ¶ 22). Plaintiffs, however, counter with averments from Staneart indicating that
Johnston informed Plaintiffs in 2011 that she had formed Short Splice as a corporation, that her
services from that point forward would be rendered “in her capacity as president of Short Splice,” and
that TLI should “pay all remuneration for her services directly to Short Splice.” Pls.’ App. Opp’n J&
SS’s Mot. 3 (Ex. A, Staneart Aff. ¶ 12). Plaintiffs additionally submit various documentation
suggesting that the services Johnston provided to TLI were rendered in exchange for payments to
her company, Short Splice. See id. at 11-16, 270-71 (Exs. A-1, A-2, A-3, A-16).

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The agreement defines “Trade Secrets” as including, “but not limited to, all client lists, sales and
marketing strategies, and materials, instruction techniques, class and event materials, vendors, and the like.”
App. at 17 (Ex. A-4).

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In July 2013, Johnston ended her relationship with TLI, and began working for Defendant
Magnovo, providing substantially the same services she performed at TLI. Id. at 7-8 (Ex. A, Staneart
Aff. ¶¶ 33, 36); id. at 157 (Ex. A-9). Plaintiffs claim that Johnston began using the confidential and
proprietary information she gathered at TLI to sell Magnovo’s services to past and prospective
customers of TLI. See id. at 8 (Ex. A, Staneart Aff. ¶¶ 37, 39). Though Johnston denies these
allegations, Staneart counters that, shortly after Johnston’s departure, he received multiple calls from
clients, to whom Johnston previously sold services on TLI’s behalf, who mistakenly contacted TLI
to pay for upcoming events sold to them by Johnston, but not on TLI’s behalf. Id. at 7 (Ex. A,
Staneart Aff. ¶ 35). Plaintiffs further submit evidence of team building events held by Magnovo after
Johnston’s departure for customers in Michigan to whom Johnston previously sold TLI’s services. See
id. at 158-64 (Exs. A-10 & A-11). Lastly, Plaintiffs additionally highlight demand letters sent by
Johnston’s counsel to Plaintiffs in Texas regarding commissions that TLI allegedly failed to pay
Johnston upon terminating her agency relationship. See id. at 9 (Ex. A, Staneart Aff. ¶ 40); id. at 1819 (Ex. A-5).
C.

Procedural History

Based on the above allegations, Plaintiffs filed suit against all four Defendants in this Court
on October 2, 2014. On December 30, 2014, Plaintiffs filed an Amended Complaint that is now
before the Court, and which contains ten causes of action in total. Its first five causes of action are
federal intellectual property claims asserted against Defendants Jackson and Magnovo, including
claims for (i) trademark infringement under 15 U.S.C. § 1114(1), (ii) trademark counterfeiting under
15 U.S.C. §§ 1114 and 1116, (iii) statutory infringement and false designation of origin under 15
U.S.C. § 1125, (iv) Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d), violations,
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and (v) copyright infringement under 17 U.S.C. § 501 et seq. See Am. Compl. ¶¶ 136-75. The next
three are state law claims filed against all four Defendants, including (vi) unfair competition by
misappropriation, (vii) Texas Theft Liability Act violations, and (viii) trade secret misappropriation.
See id. ¶¶ 176-99. The Amended Complaint’s last two claims are also filed pursuant to state law, and
charge Defendants Jackson and Johnston individually with (ix) breach of contract, and (x) tortious
interference with prospective business relations. See id. ¶¶ 200-11.
On January 30, 2015, Defendants Jackson and Magnovo moved to dismiss the Amended
Complaint’s claims against them for lack of personal jurisdiction, or alternatively, to sever and
transfer these claims to the U.S. District Court for the Southern District of Indiana, pursuant to 28
U.S.C. § 1404(a). See Doc. 39, Defs. Jackson’s & Magnovo’s Mot. Dismiss Pls.’ First Am. Compl.;
Doc. 40, Defs. Jackson’s & Magnovo’s Br. Supp. Mot. Dismiss (“Defs. Jackson’s & Magnovo’s Mot.”).
That same day, Defendants Johnston and Short Splice also moved to dismiss the Amended
Complaint’s claims asserted against them for lack of personal jurisdiction. See Doc. 41, Defs.
Johnston’s & Short Splice’s Mot. Dismiss & Supp. Br. (“Defs. Johnston’s & Short Splice’s Mot.”).
Plaintiffs timely responded to both motions on February 20, 2015. See Doc. 44, Pls.’ Resp. to Defs.
Jackson’s & Magnovo’s Mot. Dismiss & Br. in Supp. (“Pls.’ Br. Opp’n Jackson’s & Magnovo’s Mot.”);
Doc. 46, Pls.’ Resp. to Defs. Johnston’s & Short Splice’s Mot. Dismiss & Br. in Supp. (“Pls.’ Br.
Opp’n Johnston’s & Short Splice’s Mot.”). On March, 3, 2015, Defendants filed their respective
replies. See Doc. 52, Defs. Jackson’s & Magnovo’s Reply (“Defs. Jackson’s & Magnovo’s Reply”);
Doc. 53, Defs. Johnston’s & Short Splice’s Reply (“Defs. Johnston’s & Short Splice’s Reply”).
Defendants’ motions, then, are now ripe for the Court’s review. In doing so below, the Court
starts with the respective challenges made to its personal jurisdiction over the Defendants, and then
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moves to Defendants Jackson’s and Magnovo’s request, in the alternative, for a transfer of venues.
II.
PERSONAL JURISDICTION
The Court begins by addressing the two pending motions to dismiss for lack of personal
jurisdiction filed by Defendants Jackson and Magnovo, and Defendants Johnston and Short Splice,
respectively. After reviewing the applicable law in the first subsection that follows, the Court will
consider the contentions made by the parties regarding personal jurisdiction in this case.
A.

Legal Standard: Authority to Assert Personal Jurisdiction over Non-residents in Texas

Federal Rule of Civil Procedure 12(b)(2) allows defendants to move to dismiss claims brought
against them for lack of personal jurisdiction. In resolving a Rule 12(b)(2) motion, the Court may
consider “affidavits, interrogatories, depositions, oral testimony, or any combination of the recognized
methods of discovery.” Stuart v. Spademan, 772 F.2d 1185, 1192 (5th Cir. 1985). Parties “seeking to
invoke the power of the court bea[r] the burden of proving that jurisdiction [over the moving
defendant] exists.” Luv n’ Care, 438 F.3d at 469. But plaintiffs are not required to “establish
jurisdiction by a preponderance of the evidence; a prima facie showing suffices.” Id. at 469.
Moreover, any factual conflict contained in the parties’ submissions must be resolved in the plaintiff’s
favor. Cent. Freight Lines, Inc. v. APA Transp. Corp., 322 F.3d 376, 380 (5th Cir. 2003).
Two preconditions must be satisfied before this Court may assert personal jurisdiction: (1)
the defendant must be amenable to service of process under Texas’ long-arm statute, and (2) the
assertion of jurisdiction over the defendant must comport with the Due Process Clause of the United
States Constitution. Jones v. Petty–Ray Geophysical Geosource, Inc., 954 F.2d 1061, 1067 (5th Cir.
1992). Because Texas’ long-arm statute has been held to extend to the limits of due process, only the
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second jurisdictional precondition must be examined. Id. at 1067-68 (citing, inter alia, Schlobohm v.
Schapiro, 784 S.W.2d 355, 357 (Tex. 1990)). For personal jurisdiction to comport with due process,
the defendant, “if he be not present within the territory of the forum, [must] have certain minimum
contacts with it such that the maintenance of the suit does not offend traditional notions of fair play
and substantial justice.” Int’l Shoe Co. v. State of Wash., Office of Unemployment Comp. & Placement,
326 U.S. 310, 316, 66 S. Ct. 154, 158, 90 L. Ed. 95 (1945) (citations and quotation marks omitted).
In determining whether such non-resident defendants have had sufficient “minimum
contacts” with the forum state, courts “have differentiated between general or all-purpose
jurisdiction, and specific or case-linked jurisdiction.” Goodyear Dunlop Tires Operations, S.A. v.
Brown, 131 S. Ct. 2846, 2851, 180 L. Ed. 2d 796 (2011) (citing Helicopteros Nacionales de Colombia,
S.A. v. Hall, 466 U.S. 408, 414, nn. 8, 9, 104 S.Ct. 1868, 80 L.Ed.2d 404 (1984)). General
jurisdiction allows courts “to hear any and all claims against [a defendant]” based on that defendant’s
“continuous and systematic” contacts with that forum. Id. (citing Int’l Shoe, 326 U.S. at 317). Specific
jurisdiction, by contrast, is based on the proposition “that ‘the commission of some single or
occasional acts of the [defendant] in a state’ may sometimes be enough to subject the [defendant]
to jurisdiction in that State’s tribunals with respect to suits relating to that in-state activity.” Daimler
AG v. Bauman, 134 S. Ct. 746, 754, 187 L. Ed. 2d 624 (2014) (quoting Int’l Shoe, 326 U.S. at 318).
B.

Analysis: General Jurisdiction

The Court begins its analysis by quickly disposing of general jurisdiction as a basis for personal
jurisdiction over any of the four Defendants in this case. Recent Supreme Court precedent has made
clear “that the proper consideration when determining general jurisdiction is whether the defendant’s
‘affiliations with the State are so continuous and systematic as to render it essentially at home in the
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forum State.’” Monkton Ins. Servs., Ltd. v. Ritter, 768 F.3d 429, 432 (5th Cir. 2014) (quoting Daimler,
134 S. Ct. at 761; Goodyear, 131 S. Ct. at 2851) (bracket omitted). This standard makes it
“incredibly difficult to establish general jurisdiction in a forum other than the place of incorporation
or principal place of business” of a business entity, or the residence of an individual. Id. (citing
Daimler, 134 S. Ct. at 760; Helicopteros Nacionales, 466 U.S. at 414 nn. 8, 9).
In this case, Plaintiffs do not appear to argue that general jurisdiction is proper over any of
the four Defendants, each of whom hails from outside of Texas. But even if they did, none of the
Defendants have contacts with Texas that “are so ‘continuous and systematic’ as to render [them]
essentially at home in the forum State.” Daimler, 134 S. Ct. at 761 (citing Goodyear, 131 S. Ct. at
2851). Therefore, general jurisdiction is clearly not a proper constitutional basis for asserting personal
jurisdiction in this forum over any of the non-resident Defendants.
C.

Analysis: Specific Jurisdiction

The Court, then, focuses the remainder of its analysis on whether personal jurisdiction over
the Defendants comports with due process under the specific jurisdiction analysis. The specific
jurisdiction analysis “‘focuses on the relationship among the defendant, the forum, and the
litigation.’” Walden v. Fiore, 134 S. Ct. 1115, 1121, 188 L. Ed. 2d 12 (2014) (quoting Keeton v.
Hustler Magazine, Inc., 465 U.S. 770, 775, 104 S. Ct. 1473, 79 L. Ed.2d 790 (1984)). In the Fifth
Circuit, courts generally employ a three-step test in analyzing specific jurisdiction, requiring “(1)
minimum contacts by the defendant purposefully directed at the forum state, (2) a nexus between
the defendant’s contacts and the plaintiff’s claims, and (3) that the exercise of jurisdiction over the
defendant be fair and reasonable.” In re Chinese-Manufactured Drywall Products Liab. Litig., 753 F.3d
521, 540 (5th Cir. 2014) (citing ITL Int’l, Inc. v. Constenla, S.A., 669 F.3d 493, 498 (5th Cir. 2012)).
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Plaintiffs bear the burden of making out a prima facie case with respect to the first two prongs
of the specific jurisdiction analysis. Monkton, 768 F.3d at 433 (citing Seiferth v. Helicopteros Atuneros,
Inc., 472 F.3d 266, 271 (5th Cir. 2006)). The “touchstone” of the minimum contacts test under the
first prong “is whether the defendant’s conduct shows that it ‘reasonably anticipates being haled into
court.’” McFadin v. Gerber, 587 F.3d 753, 759 (5th Cir. 2009) (quoting Luv N’ Care, 438 F.3d at
470). “This requirement can be satisfied by showing that the defendant purposefully directed its
activities toward the forum state or purposely availed itself of the privileges of conducting activities
there.” ITL Int’l, 669 F.3d at 498 (citation and quotation marks omitted). While specific jurisdiction
is possible even if the defendant’s forum contacts “are only isolated or sporadic,” the relevant
contacts “must be more than ‘random, fortuitous, or attenuated, or of the unilateral activity of
another party or third person.’” Id. at 498-99 (quoting Burger King Corp. v. Rudzewicz, 471 U.S. 462,
474, 105 S. Ct. 2174, 2183, 85 L. Ed. 2d 528 (1985)).
Under the second prong, Plaintiffs must show that their claims are based on “‘alleged injuries
that arise out of or relate to those activities’” on which the defendant’s minimum contacts are
established. Chinese-Manufactured Drywall Products, 753 F.3d at 543 (Burger King, 471 U.S. at 472).
In other words, there must be a sufficient “nexus between the defendants’ contacts with [the forum
state] and the plaintiffs’ [underlying] claims.” ITL Int’l, 669 F.3d at 500. The Fifth Circuit has
suggested that this flexible standard aims to both ensure a “‘causal nexus between the [alleged]
conduct and the purposeful contact’” and account for “‘the foreseeability and fundamental fairness
principles forming the foundation upon which the specific jurisdiction doctrine rests.’”
Chinese-Manufactured Drywall Products, 753 F.3d at 543 (quoting Oilfield v. Pueblo De Bahia Lora,
S.A., 558 F.3d 1210, 1223, 1224 (11th Cir. 2009)).
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If Plaintiffs satisfy their burden at the first two prongs, the burden shifts to the Defendants
to show that asserting specific jurisdiction over them is unfair or unreasonable. Monkton, 768 F.3d
at 433. The Fifth Circuit has observed that “‘it is rare to say the assertion [of jurisdiction] is unfair
after minimum contacts have been shown.’” McFadin, 587 F.3d at 759-60 (quoting Wien Air Alaska,
Inc. v. Brandt, 195 F.3d 208, 215 (5th Cir. 1999)) (brackets in original). The factors considered
under this prong include: “‘(1) the burden on the nonresident defendant, (2) the forum state’s
interests, (3) he plaintiff’s interest in securing relief, (4) the interest of interstate judicial system in
the efficient administration of justice, and (5) the shared interest of the several states in furthering
fundamental social policies.’” Id. at 760 (quoting Luv N’ Care, 438 F.3d at 473).
Having set forth the applicable law, the Court turns now to the specific jurisdiction
contentions asserted in this case. Since personal jurisdiction “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) (emphasis in original), the Court individually considers the relevant assertions made
for each of the four Defendants, as follows.
1.

Defendant Jackson

The Court first addresses the parties’ contentions as to whether specific jurisdiction over
Defendant Jackson is proper. Plaintiffs submit that Jackson engaged in a number of contacts with
Texas relevant to this suit, for which they claim that specific jurisdiction over Jackson is proper. See
Pls.’ Br. Opp’n Jackson’s & Magnovo’s Mot. 7-10. The Court summarizes these contacts as follows:
(1) Jackson’s efforts to re-establish his independent contractor relationship TLI through a series of
telephone calls to Staneart in Texas between September and November 2010; (2) Jackson’s trip to
Texas in November 2010 taken at his own expense, where he performed a TLI team building event
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and met with Staneart in person to continue to lobby for a renewed relationship with TLI; (3) the
Independent Contractor Agreement that Jackson signed with TLI in February 2011, and returned
to Staneart in Texas; (4) the contacts Staneart had with TLI’s Texas-based clients pursuant to his
Independent Contractor Agreement, including forty-seven Texas customers he contacted in an effort
to sell TLI’s services, twenty-three Texas customers to whom he sold TLI’s services, and eight
workshops that he conducted for TLI’s customers in Texas; (5) Jackson’s access to TLI’s intellectual
property in Texas during his independent contractor relationship, including certification training to
teach team building workshops, his access to TLI’s password-protected customer lists on servers in
Texas, and his exposure to TLI’s registered trademarks; (6) Jackson’s alleged breach of his
Independent Contract Agreement by selling Magnovo’s competing services to TLI’s customers in
Texas while purporting to service those customers on TLI’s behalf; (7) the three team building
workshops Jackson conducted in Texas on behalf of Magnovo after leaving TLI, including one the
same month he terminated his relationship with TLI for its former repeat customer Statoil; (8) the
update Jackson made to the website of his company, Magnovo, just one week before terminating his
relationship with TLI, in which he referenced TLI’s customers in a way that suggested they were
actually Magnovo’s customers; (9) the webpages Jackson created for Magnovo’s website that
specifically targeted Texas cities for team building events; (10) the domains that Jackson registered
on behalf of Magnovo after leaving TLI that allegedly infringe on Plaintiffs’ registered trademarks;
(11) the infringing marks Jackson included on Magnovo’s website; and (12) the direct harm Jackson
intentionally caused Plaintiffs in Texas. See id. 8-9.
Jackson counters with averments of his own regarding at least some of the above contacts.
For example, while conceding that he performed seminars for Magnovo in Texas after leaving TLI
-15-

in August 2013, Jackson avers that these seminars were performed for “clients that were not solicited
from any client list of [Plaintiffs], but from other contacts who requested [Jackson’s] services.” Defs.
Jackson’s & Magnovo’s App. 4 (Ex. A, Jackson Aff. ¶ 7). Jackson further claims that the few Texas
seminars he has conducted on behalf of Magnovo are minimal compared to the seventy-eight total
he has conducted nationwide since that time. Id. (Ex. A, Jackson Aff. ¶ 8). Jackson additionally says
that he removed “all occurrences of ‘build a bike’ from all of [his] websites, domains, and other
marketing materials” in response to Plaintiffs’ cease and desist letter received in September 2014. Id.
(Ex. A, Jackson Aff. ¶ 12). He also denies: signing TLI’s Independent Contractor Agreement, using
any of TLI’s client lists post-August 2013, directly soliciting business from any of TLI’s clients on
behalf of Magnovo, using Plaintiffs’ copyrighted materials without their consent, or receiving any
trade secrets from Plaintiffs. Id. at 4-5 (Ex. A, Jackson Aff. ¶¶ 13-17). For these reasons, Jackson
argues that Plaintiffs have failed to demonstrate that he engaged in minimum contacts purposefully
directed at Texas, or that his forum contacts are sufficiently related to the claims asserted against
him. See Defs. Jackson’s & Magnovo’s Mot. 13-19; Defs. Jackson’s & Magnovo’s Reply 2, 3-6.
In determining whether it may exercise specific jurisdiction over Jackson, the Court divides
its below discussion based on the different groups of claims asserted against Jackson and the relevant
contacts underlying each group. See Seiferth, 472 F.3d at 275 (“[I]f a plaintiff’s claims relate to
different forum contacts of the defendant, specific jurisdiction must be established for each claim.”).
i.

Trademark and Anticybersquatting claims

The Amended Complaint’s first four causes of action allege, respectively, trademark
infringement, trademark counterfeiting, false designation of origin, and cybersquatting on the part
of Jackson. These four claims primarily arise from Jackson’s internet-based misconduct, including his
-16-

alleged display of marks similar or identical to Plaintiffs’ registered trademarks on the website of his
company, Magnovo, and Jackson’s registration of internet domains allegedly designed in a way to
profit from Plaintiffs’ registered marks and divert business from Plaintiffs.
There does not appear to be any Supreme Court or Fifth Circuit precedent directly on point
here, that is, the Court is unaware of any binding cases applying the minimum contacts test in the
context of trademark-related claims of this nature. That said, district courts throughout Texas “have
repeatedly held that ‘the exercise of specific personal jurisdiction over an individual for his Internet
activities, including allegations of trademark infringement and cybersquatting, is proper when a
defendant intentionally directs his tortious activities toward the forum state.’” First Fitness Int’l, Inc.
v. Thomas, 533 F. Supp. 2d 651, 656 (N.D. Tex. 2008) (Godbey, J.) (quoting Carrot Bunch Co. v.
Computer Friends, Inc., 218 F. Supp. 2d 820, 826 (N.D. Tex. 2002) (Buchmeyer, J.); citing Global
360, Inc. v. Spittin’ Image Software, Inc., No. 3:04–CV–1857–L, 2005 WL 625493, at *7 (N.D. Tex.
Mar. 17, 2005) (Lindsay, J.)) (brackets omitted).4
In First Fitness, for example, another court in this District held that personal jurisdiction over
two non-resident defendants was proper based on evidence showing that the defendants “acted
knowing that their use of [the plaintiff’s] trademarks [on their websites] would cause harm in Texas.”
Id. at 654. The evidence on which the court relied in reaching this conclusion included the fact that
the defendants previously maintained a “close relationship” with the plaintiff as one of its primary

4

See also IntelliGender, LLC v. Soriano, No. 2:10-CV-125-TJW, 2011 WL 903342, at *12 (E.D. Tex.
Mar. 15, 2011) (“As in First Fitness, the plaintiff has presented a prima facie case that Defendant HelloBaby
has purposefully directed its activities at this forum by intentionally undertaking the tortious actions in an
attempt to divert customers away from the plaintiff with intimate knowledge of the plaintiff, its location in
Texas, and its valuable trademark rights and trade secrets.”).

-17-

distributors, and that over the course of this relationship the defendants visited Texas on at least one
occasion, received orders from Texas, and had other business-related contacts with Texas. Id. at 656.
The court also found significant that the defendants “purported to operate their website from [a
potentially false address] within Texas” just prior to learning of the plaintiff’s impending suit. Id.
Similarly, in this case, Plaintiffs have shown that Jackson employed marks similar or identical
to Plaintiffs’ registered trademarks on websites specifically targeting Texas residents for purposes of
procuring customers from TLI in Texas. From his long-standing business relationship with Plaintiffs,
which ended shortly before the trademark violations allegedly began, the Court can infer that
Jackson intended his alleged conduct to impact Plaintiffs in Texas—by diverting business from them
to Magnovo—and to reach Plaintiffs’ robust customer base in this forum. Indeed, during his time as
an independent contractor with TLI, Jackson contacted numerous customers based in Texas, sold
TLI’s services to over twenty of these contacts, and traveled to Texas on at least eight occasions to
teach workshops. These customers were comprised of a distinct group of individuals and entities:
those in the market for corporate team building and leadership services. And it was this same group
of potential clients that Jackson began specifically targeting soon after terminating his relationship
with Plaintiffs. In doing so, Jackson employed marks identical or similar to the Build-a-Bike mark
that he had witnessed TLI successfully use to attract clients in the very industry he targeted on
Magnovo’s behalf.
In addition to these contacts, Plaintiffs further show that Jackson had multiple direct contacts
with Texas following his departure from TLI. Specifically, Plaintiffs highlight that Jackson admittedly
traveled to Texas on three separate occasions to perform team building events on Magnovo’s behalf.
And at least one of these events, Plaintiffs assert, was held for Statoil—a former long-standing
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customer of Plaintiffs. While not definitive, this evidence is enough to suggest, at this early stage in
the case, that Jackson not only caused purposeful harm to Plaintiffs in Texas, but intentionally used
Plaintiffs’ established trademarks to divert business from Plaintiffs in Texas, among other places.
To counter this evidence of his seemingly purposeful contacts, Jackson argues that his “use
of the internet to advertize [Magnovo’s] services throughout the nation, including Texas,” was not
purposeful, because his internet activities fall on the passive side of the sliding scale test set forth in
Zippo Mfg. Co. v. Zippo Dot Com, Inc., 952 F. Supp. 1119 (W.D. Pa. 1997). Defs. Jackson’s &
Magnovo’s Mot. 17-18. Though not directly on point here, the Fifth Circuit has indeed drawn upon
this so-called “Zippo sliding scale when a plaintiff argues that personal jurisdiction exists due to a
defendant’s website.” Monkton, 768 F.3d at 432 (citing Revell v. Lidov, 317 F.3d 467, 470 (5th Cir.
2002)). The aim of the Zippo sliding scale is to “measure an internet site’s connection to a forum
state,” which it attempts to do using a three-point spectrum of connectivity that includes: (i) a lowend marker for “passive” websites whose internet-based contacts are not sufficient to establish
personal jurisdiction; (ii) a middle point for “sites with some interactive elements” that require
deeper examination to determine whether such interactivity creates minimum contacts; and (iii)
lastly, a high-end marker for websites that “engage in repeated online contacts with forum residents,”
for which personal jurisdiction is typically appropriate. Revell, 317 F.3d at 470 (discussing Zippo, 952
F. Supp. at 1124). Importantly, while the Zippo sliding scale remains a “factor in an internet-based
personal jurisdiction analysis,” the Fifth Circuit has more recently intimated that “internet-based
jurisdictional claims must continue to be evaluated on a case-by-case basis, focusing on the nature
and quality of online and offline contacts to demonstrate the requisite purposeful conduct that
establishes personal jurisdiction.” Pervasive Software, Inc. v. Lexware GmbH & Co. KG, 688 F.3d 214,
-19-

227 n.7 (5th Cir. 2012) (internal citation omitted).
Applying the guidance from these internet-based jurisdictional cases to these circumstances,
the Court finds further support for its above conclusion that Jackson engaged in purposeful minimum
contacts relevant to the trademark claims asserted against him in this forum. As an initial matter,
despite his generalized assertions that his company’s website falls on the “passive” side of the Zippo
sliding scale, Plaintiffs have presented evidence indicating that Jackson’s internet activities more
closely resemble the “interactive” variety set forth in Zippo. Specifically, Plaintiffs show that the
website at issue does not simply advertise in Texas or provide general information accessible to Texas
residents, but rather, the site allows users to request a quote, after which—in the words of the
website itself—“one of [Magnovo’s] specialists will contact you shortly.” Pls.’ App. Opp’n Jackson’s
& Magnovo’s Mot. 47. This is the sort of exchange of commercial information that the Zippo sliding
scale appears to contemplate under its “interactive” category. See, e.g., Revell, 317 F.3d at 472
(finding a website to qualify as interactive on the Zippo sliding scale because it allowed users to “send
information . . . and receive information . . . [on] an open forum hosted by the website”).
Nevertheless, regardless of the “passive” or “interactive” nature of Jackson’s internet activities
under Zippo, the record reveals other relevant online and offline contacts that show Jackson’s forum
contacts were “sufficient” and “purposefully established.” Pervasive, 688 F.3d at 221 (quotation marks
and citations omitted). For example, Plaintiffs show that Jackson’s website singles out Dallas on
national and regional maps as a “key” city for team building events, and specifically identifies a
number of Texas cities in which team building events are offered. The website even provides separate
pages dedicated to these Texas cities, with information regarding the suitability of each city for team
building events, particular locations within each city capable of hosting such events, and details as
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to how prospective clients may go about booking such an event. This is all in addition to the offline
contacts Jackson knowingly directed at this forum in an effort to glean Plaintiffs’ customers in Texas
using, among other things, the reputation and good will Plaintiffs built up around its registered
trademarks. Accordingly, Jackson’s internet-based contacts only bolster the case for exercising
specific jurisdiction over him, and in no way diminish the Court’s above findings.
Lastly, Jackson also purports to challenge Plaintiffs’ showing at the second prong, arguing
“[t]here is no sufficient nexus between [his] contacts with Texas and Plaintiffs’ claims for
infringement and anticybersquatting.” Defs. Jackson’s & Magnovo’s Reply 5. Outside of this general
assertion, however, Jackson offers no insight as to why he believes the connection between his forum
contacts and Plaintiffs’ trademark-related claims is too attenuated. Instead, the thrust of his attack
here goes to the merits of Plaintiffs’ claims. For example, Jackson contends that “the alleged
trademark violation was ceased prior to filing this lawsuit, so there is no cause of action that existed
when this lawsuit was filed.”5 Defs. Jackson’s & Magnovo’s Mot. 18. But even assuming such
assertions are relevant to the personal jurisdiction analysis,6 they would not defeat specific
jurisdiction over Jackson for present purposes. As discussed, Plaintiffs need only establish a prima facie
case of specific jurisdiction at this point, and all factual disputes must be resolved in their favor. See,
e.g., Walk Haydel & Associates, Inc. v. Coastal Power Prod. Co., 517 F.3d 235, 242 (5th Cir. 2008)
(holding that “[b]ecause the district court did not conduct a full-blown evidentiary hearing, it should

5

See also Defs. Jackson’s & Magnovo’s Reply (purporting to attack second prong with argument that
“[t]here is no reason for Jackson to believe that build-a-bike was a registered trademark and was valuable
solely to Plaintiffs’ business when so many others in the industry were using it”).
6

But see Seiferth, 472 F.3d at 276 (rejecting argument under the second prong, because it did “not
bear on the jurisdictional question, but rather [went] to the merits of [the plaintiff’s] claims”).

-21-

have required [the plaintiff] to establish only a prima facie case for personal jurisdiction”). And since
Plaintiffs’ allegations, affidavits, and documentary evidence controvert each of Jackson’s veiled
attacks on the merits of their claims, the Court need not explore this issue further at this time.
Therefore, the Court concludes that Plaintiffs have made out a prima facie case of specific personal
jurisdiction over the trademark and anticybersquatting claims asserted against Jackson.
ii.

Copyright infringement claim

The Court next considers whether Plaintiffs have made out a prima facie case of specific
jurisdiction over Jackson for purposes of their federal copyright infringement claim. This claim is
based on Jackson’s and Magnovo’s purported use of Plaintiffs’ copyrighted leadership principles and
presentation manuals without Plaintiffs’ authorization. See Am. Compl. ¶¶ 55, 166-75. But aside
from a handful of conclusory allegations, see id., the Amended Complaint offers no insight into the
facts underlying this claim. One could arguably infer that this claim intends to charge Jackson with
employing copies or derivative versions of the copyrighted materials during events conducted on
behalf of Magnovo, but even then, Plaintiffs would have fallen short in showing that such conduct
took place in Texas. In fact, Plaintiffs’ brief appears to altogether omit any discussion of the Court’s
specific jurisdiction over Jackson as it relates to the Amended Complaint’s copyright claim.7
Given this lackluster showing, the Court cannot find that Plaintiffs have established a prima
facie case of specific jurisdiction over their federal copyright claim asserted against Jackson. In
contrast to the presentation they made with respect to their trademark and anticybersquatting

7

While Plaintiffs arguably mean to include the copyright claim in the “Specific Jurisdiction Over
Infringement and Anticybersquatting Claims” section of their brief, there is no discussion in this section as
to Jackson’s alleged copyright violations or cases addressing specific jurisdiction over federal copyright claims.

-22-

claims, Plaintiffs make no attempt to connect Jackson’s alleged copyright infringement to Texas, or
his alleged Texas contacts to the copyright infringement allegations. Moreover, the mere fact that
Plaintiffs’ felt the effects of the alleged infringement in Texas is not enough, on its own, to establish
specific jurisdiction over Jackson in this context. See, e.g., Papa Berg, Inc. v. World Wrestling Entm’t,
Inc., No. 3:12-CV-2406-B, 2013 WL 2090547, at *8 (N.D. Tex. May 15, 2013) (holding that “even
considering the alleged harm to” the plaintiff, a Texas resident, as a result of the defendants’ alleged
copyright infringement, “the effects test alone does not support personal jurisdiction over the
[defendants]”). Based on these deficiencies, the Court is unable to conclude that personal
jurisdiction over Jackson is proper for purposes of adjudicating the Amended Complaint’s federal
copyright infringement claim.
iii.

State law claims

The last claims the Court must address, in evaluating its authority to exercise specific
jurisdiction over Jackson, are Plaintiffs’ five state law actions, which include unfair competition by
misappropriation, trade secret misappropriation, Texas Theft Liability Act violations, breach of
contract, and tortious interference with prospective business relations. These five claims, Plaintiffs
point out, “all arise out of and relate to [Jackson’s alleged] use of Plaintiffs’ customer contact lists”
in violation of the state laws asserted. Pls.’ Br. Opp’n Jackson’s & Magnovo’s Mot. 17.
Plaintiffs argue that personal jurisdiction over Jackson is proper for purposes of these five state
law claims mainly because of Jackson’s purposeful contacts in this forum leading up to the
misconduct at issue. In particular, Plaintiffs highlight Jackson’s repeated attempts to re-establish an
independent contractor relationship with Plaintiffs in Texas, the written agreement that came out
of these efforts, and the numerous contacts Jackson had with Plaintiffs’ Texas customers pursuant
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to this contractual arrangement. See id. at 17-18. Plaintiffs argue that these contacts all relate to the
“access” Jackson gained with respect to Plaintiffs’ protected customer lists, which he later exploited
in allegedly violating the various state laws asserted. Id. Additionally, Plaintiffs rely on the fact that
“Defendants admittedly sold and provided their competing services to Texas residents, which
included [TLI’s] repeat customer, StatOil, and likely others.” Id. at 18. Plaintiffs allege that Jackson
unlawfully procured this and other business in Texas using Plaintiffs’ protected customer lists “both
during and after Jackson terminated his relationship with TLI.” Id. at 17. “Such activities in Texas,”
Plaintiffs contend, “gave rise to each of the [state law] causes of action” brought against Jackson. Id.
Based on the above assertions, the Court determines that Plaintiffs have carried their burden
of establishing the first two prongs of specific jurisdiction analysis as it relates to the five state law
claims brought against Jackson. As the Supreme Court has long held, “parties who ‘reach out beyond
one state and create continuing relationships and obligations with citizens of another state’ are
subject to regulation and sanctions in the other State for the consequences of their activities.” Burger
King, 471 U.S. at 473, 105 S. Ct. at 2182 (quoting Travelers Health Assn. v. Virginia, 339 U.S. 643,
647, 70 S. Ct. 927, 929, 94 L. Ed. 1154 (1950)). And in this case, Plaintiffs show that it was
Jackson’s purposeful actions—in particular, his repeated pleas to Staneart in Texas, both over the
phone and in person—that led to the formation of the parties’ long-standing business relationship
underlying the state law claims at issue. Jackson, furthermore, entered this relationship with the
express understanding that he would not use Plaintiffs’ customer contacts in competition with
Plaintiffs for eighteen months following his termination, as demonstrated by the written contract he
signed and returned to Plaintiffs in Texas. Nevertheless, Plaintiffs show that Jackson, thereafter,
exploited his ongoing relationship with Plaintiffs to gain extensive access to their current and
-24-

prospective clients based in Texas and elsewhere, only to later use these contacts to compete with
Plaintiffs in violation of the parties’ express written agreement. Based on these purposeful contacts
with Texas, all of which give rise or relate to Plaintiffs’ state law claims, the Court concludes that
Jackson’s “‘conduct and connection with [Texas] are such that he should reasonably anticipate being
haled into court there.’” Burger King, 471 U.S. at 474, 105 S. Ct. at 2183 (quoting World-Wide
Volkswagen Corp. v. Woodson, 444 U.S. 286, 295, 100 S. Ct. 559, 566, 62 L. Ed. 2d 490 (1980)).
None of Jackson’s contrary assertions defeat this prima facie showing made by Plaintiffs. For
example, Jackson emphasizes that his work for TLI was primarily performed from his home in
Indiana, and that the contacts he did have with Texas, both during his relationship with TLI and
after, were “very minimal and sporadic.” Defs. Jackson’s & Magnovo’s Reply 2, 5; see also Defs.
Jackson’s & Magnovo’s Mot. 13-14. This argument, however, ignores that “specific jurisdiction may
exist where there are only isolated or sporadic contacts.” ITL Intern, 669 F.3d at 499-500 (citations
omitted). Indeed, the Court determined above that Jackson had the requisite “minimum contacts,”
not because his contacts added up to some arbitrary quantity, but because the nature of his contacts
suggests he purposefully availed himself of the privileges of this forum. See Burger King, 471 U.S. at
475, 105 S. Ct. at 2183 (explaining that 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, or of the unilateral activity of another party or a third person”) (internal quotation marks
and citations omitted); Gustafson v. Provider HealthNet Servs., Inc., 118 S.W.3d 479, 483-84 (Tex.
App. 2003) (“In analyzing minimum contacts, it is not the number but rather the quality and nature
of the nonresident defendant’s contacts with the forum state that are important.”).
Jackson’s repeated assertions that go to the merits of Plaintiffs’ state law claims are similarly
-25-

unavailing.8 As discussed before, the Court cannot accept such assertions at this point in the
proceedings, as they run contrary to Plaintiffs’ prima facie allegations and proof. See Walk Haydel &
Associates, 517 F.3d at 241 (“[U]nless there is a full and fair hearing, [a district court assessing
personal jurisdiction] should not act as a fact finder and must construe all disputed facts in the
plaintiff’s favor and consider them along with the undisputed facts.”) (citations omitted).
Lastly, the Court also finds unpersuasive Jackson’s contentions that Plaintiffs’ state law claims
do not arise from or relate to his Texas contacts that pre-date his alleged misconduct.9 Jackson cites
no authority for the proposition that contacts pre-dating the alleged wrongdoing underlying a claim
are unrelated to that claim as a matter of law. On the contrary, the Supreme Court in Burger King
found a breach of contract claim arose out of or related to the defendant’s efforts to reach into the
forum state and negotiate a long-term contract with a forum resident, even though these contacts
all occurred before the misconduct at issue took place.10 417 U.S. at 466-68, 479-80, 105 S. Ct. at
2179-80, 2186. Similarly, here, Plaintiffs’ five state law claims arise out of or relate to the long-term

8

See, e.g., Defs. Jackson’s & Magnovo’s Mot. 18 (arguing that the “alleged copy of an independent
contractor agreement” produced by Plaintiffs “is fraudulent because it was not signed by Jackson”); id. at 1819 (denying that Jackson has solicited any TLI clients or otherwise used Plaintiffs’ customer lists); id. at 19
(“Jackson has not been privy to any trade secrets of Plaintiffs, and therefore could not misappropriate them.”).
9

See, e.g., Defs. Jackson’s & Magnovo’s Mot. 14 (“Plaintiffs attempt to argue past activities in the
State of Texas as though those activities are at issue, but do not show how those activities were the cause of
the alleged injuries that are related to their alleged complaints.”); Defs. Jackson’s & Magnovo’s Reply 5-6
(“Plaintiffs rely on Jackson’s work as an independent contractor with TLI for several years prior to his
resignation . . . . However, the claims in this case arise from Jackson’s alleged actions taken after his
resignation in August 2013.”).
10

See also Havel v. Honda Motor Europe Ltd., No. CIV.A. H-13-1291, 2014 WL 4967229, at *10 (S.D.
Tex. Sept. 30, 2014) (“Although the connection between a defendant’s suit-related conduct and the forum
state will clearly be strongest when that conduct forms one of the elements of the intentional tort alleged[,]
. . . [the Supreme Court has] not limit[ed] ‘suit-related conduct’ to the elements of a tort.”) (citing Walden,
134 S.Ct. at 1123–24).

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contract that was formed as a result of Jackson’s purposeful efforts to create an ongoing business
relationship with TLI in Texas. Even though much of Jackson’s alleged misconduct occurred after
this relationship ended, the parties’ dispute nonetheless “grew directly out of a contract which had
a substantial connection with [Texas].” Burger King, 417 U.S. at 479, 105 S. Ct. at 2186 (citation,
quotation marks, and emphasis omitted). The Court, therefore, rejects Jackson’s contentions that
the nexus between these contacts and Plaintiffs’ state law claims is inadequate. And as such, the
Court reaffirms its above conclusion that Plaintiffs have established a prima facie case of specific
jurisdiction over the state law claims asserted against Jackson.
iv.

Fair and reasonable

To recap, the Court concludes that Plaintiffs have carried their burden of establishing the
first two prongs of the specific jurisdiction analysis as it relates to all causes of action asserted against
Jackson, with the exception of the copyright infringement claim. Plaintiffs’ copyright claim aside, the
burden now shifts to Jackson to demonstrate that “the assertion of personal jurisdiction would [not]
comport with ‘fair play and substantial justice.’” Burger King, 471 U.S. at 476, 105 S. Ct. at 2184
(citing Int’l Shoe, 326 U.S. at 320, 66 S. Ct. at 160).
On this point, Jackson offers no particular arguments as to why defending this suit in Texas
would be unfair or unreasonable. Nor does he address the factors, detailed above, that courts
typically consider under this third jurisdictional prong. Instead, he merely points to general
inconveniences common to nearly all non-residents forced to defend suit in a forum outside their
home state.11 Such assertions fall well short of demonstrating the “rare” circumstances necessary to

11

See, e.g., Defs. Jackson’s & Magnovo’s Mot. 16 (“[R]equir[ing] Jackson to defend this lawsuit in
Texas . . . is unduly burdensome and inconvenient, given that Jackson resides in Indiana and does not

-27-

satisfy the third prong of the specific jurisdiction analysis. McFadin, 587 F.3d at 759-60 (citation
omitted). Accordingly, the Court finds that Jackson has failed to carry his burden of showing that
the exercise of personal jurisdiction over him in Texas is unfair or unreasonable.
In sum, the Court concludes that Plaintiffs have established a prima facie case of personal
jurisdiction over Jackson for purposes of adjudicating all claims asserted against him in the Amended
Complaint, with the exception of Plaintiffs’ copyright infringement claim, which is, therefore, subject
to dismissal pursuant to Rule 12(b)(2). In all other respects, the Court denies Jackson’s motion to
dismiss for lack of personal jurisdiction based his failure to show that the Court’s assertion of personal
jurisdiction is unfair or unreasonable.
2.

Defendant Magnovo

The Court moves next to the issue of whether asserting specific personal jurisdiction over
Defendant Magnovo accords with due process. The Court, of course, must evaluate personal
jurisdiction here based on Magnovo’s own contacts with Texas, rather than those attributable to
Jackson alone. See Rush v. Savchuk, 444 U.S. 320, 332, 100 S. Ct. 571, 579, 62 L. Ed. 2d 516 (1980)
(holding that while “[t]he parties’ relationships with each other may be significant in evaluating their
ties to the forum,” the minimum contacts test “must be met as to each defendant over whom a state
court exercises jurisdiction”). Nonetheless, Jackson’s in-state contacts “may be relevant to the
existence of specific jurisdiction” over Magnovo to the extent Jackson was acting as Magnovo’s agent
at the time. Daimler AG, 134 S. Ct. at 759 n.13 (citation and emphasis omitted).
Plaintiffs assert that Magnovo engaged in the following relevant contacts with Texas: (1)

maintain a presence in the state of Texas, and does not do business in Texas on a regular basis.”).

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“Magnovo expressly directed its infringing website at Texas residents, with knowledge of [TLI’s]
business, its registered trademark and its location in this forum”; (2) “Magnovo admittedly entered
into at least three [] contracts with Texas residents and subsequently performed such contracts in
the state of Texas”; and (3) “Magnovo’s website is interactive and allows customers, including Texas
residents, to request a quote for services and subsequently be contacted in Texas by a representative
of Magnovo.” Pls.’ Br. Opp’n Jackson’s & Magnovo’s Mot. 10. As it did with Jackson, the Court
proceeds to discuss whether these contacts are sufficient to confer specific jurisdiction over Magnovo
with respect to the three groups of claims asserted against these two defendants.
First, in regards to their trademark and anticybersquatting claims, the Court finds that Plaintiffs
have presented a prima facie case of specific jurisdiction over Magnovo. As they did for Jackson,
Plaintiffs show that Magnovo purposefully directed its trademark infringing activities at customers
in Texas via its interactive website, with the intention of harming Plaintiffs in Texas by diverting
customers in this forum and elsewhere from TLI. Similarly, Plaintiffs demonstrate that Magnovo
contracted to sell at least three seminars in Texas to former and/or prospective customers of TLI,
which Jackson, acting on behalf of Magnovo, subsequently performed in this forum. Moreover, the
Court, at this point in the proceedings, can infer that Magnovo’s Texas seminars sufficiently relate
to its alleged efforts to divert customers from TLI using the infringing marks and domains. For these
reasons, the Court concludes that Plaintiffs have adequately demonstrated Magnovo’s purposeful
minimum contacts with Texas, as well as a sufficient nexus between these contacts and the
trademark and anticybersquatting claims asserted.
Second, with respect to their copyright infringement claim, the Court conversely determines
that Plaintiffs have not met their burden of establishing specific jurisdiction over Magnovo. Like with
-29-

Jackson, Plaintiffs make no effort to demonstrate a connection between Magnovo’s alleged
infringement and Texas or between Magnovo’s Texas contacts and the alleged infringement.
Likewise, the effects Plaintiffs allegedly felt in Texas as a result of Magnovo’s infringement are not
sufficient to establish specific jurisdiction in this context. Therefore, for the same reasons it found
jurisdiction lacking over the copyright claim against Jackson, the Court determines that Plaintiffs
have failed to show that personal jurisdiction is proper over the copyright claim against Magnovo.
Third, regarding their state law claims against Magnovo,12 the Court additionally finds that
Plaintiffs have not presented a prima facie case of specific jurisdiction over Magnovo. As an initial
matter, most of Magnovo’s forum contacts do not give rise or relate to the three state law claims
alleged. Take, for example, Magnovo’s internet activities directed at Texas and its interactive
website; these asserted contacts do not relate in any known way to the state law claims brought
against Magnovo, and Plaintiffs make no effort to argue to the contrary. See Pl.’s Br. Opp’n Jackson’s
& Magnovo’s Mot. 17-19 (arguing which forum contacts form a sufficient nexus to Plaintiffs’ state
law claims, and omitting any reference to Magnovo’s internet activities). Likewise, Jackson’s
contractual relationship with TLI and associated contacts with Texas—on which Plaintiffs heavily
rely to establish specific personal jurisdiction over Jackson—are not forum contacts for which
jurisdiction over Magnovo may be asserted. This is because Plaintiffs have not alleged or shown that
these contacts on the part of Jackson, which seemingly took place in his capacity as an independent
contractor for TLI, occurred while Jackson was acting as an agent of Magnovo or under its direction.
See Daimler AG, 134 S. Ct. at 759 n.13 (“A corporation can purposefully avail itself of a forum by

12

These claims include unfair competition, trade secret misappropriation, and Texas Theft Liability
Act violations.

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directing its agents or distributors to take action there.") (citation omitted); see also Havel, 2014 WL
4967229, at *15 (noting that “an agency relationship must be affirmatively established[;] it may not
be presumed”) (citation and internal quotation marks omitted, bracket in original).
That leaves just one set of forum contacts that could potentially confer specific jurisdiction
over the state law claims against Magnovo: the three seminars Magnovo contracted and performed
in Texas between August 2013 and October 2014. Applying the relatively low burden of proof
applicable at this stage, these contacts appear to be sufficiently related to the state law claims at issue,
which center on the clients Magnovo purportedly stole from Plaintiffs using, most notably, the
customer contact list that Jackson allegedly misappropriated from Plaintiffs. The weight of these
contacts, however, is diminished by the weak connection that Plaintiffs trace between the three
Texas seminars and the general misconduct alleged. Plaintiff Staneart, to illustrate, merely avers that
he “believe[s] the customer” for whom Magnovo conducted one of its three Texas seminars “was
Statoil, a long-term repeat customer of TLI,” and that he similarly “believe[s]” that Magnovo’s other
two Texas seminars “were sold to contacts on TLI’s customer list.” Pls.’ App. Opp’n Jackson’s &
Magnovo’s Mot. 6-7 (Ex. A, Staneart Aff. ¶¶ 26, 27). Staneart does not, however, indicate the
source of his stated beliefs, which contrast with the version of events told by Defendants—that these
seminars were sold to “clients that were not solicited from any client list of [Plaintiffs], but from other
contacts who requested [Magnovo’s] services.”13 Defs. Jackson’s & Magnovo’s App. 4 (Ex. A,

13

While the Court must resolve all factual disputes in Plaintiffs’ favor, it need not accept as true
conclusory statements based solely “on information and belief.” Panda Brandywine Corp. v. Potomac Elec.
Power Co., 253 F.3d 865, 869 (5th Cir. 2001) (finding that “the district court correctly held that the
prima-facie-case requirement does not require the court to credit conclusory allegations,” which in this case
included allegations “‘on information and belief’ that Appellee knew Appellants are Texas residents and knew
its actions would intentionally cause harm to Appellants in Texas”).

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Jackson Aff. ¶ 7). Moreover, Magnovo shows that its Texas seminars were just three of the seventyeight total it conducted on a nationwide basis over this period, further diminishing the weight of
Magnovo’s few relevant contacts. Under these circumstances, the Court finds Magnovo’s minimal
relevant contacts with this forum insufficient to show purposeful availment for purposes of asserting
specific jurisdiction over the state law claims alleged. See, e.g., Gen. Retail Servs., Inc. v. Wireless Toyz
Franchise, LLC, 255 Fed. App’x 775, 793 (5th Cir. 2007) (“While it is true that a single act can
confer personal jurisdiction over a defendant if that act gives rise to the claim being asserted, General
Retail has not carried its burden to show that these individuals could reasonably expect to be hailed
into court in Texas.”) (citing Wilson v. Belin, 20 F.3d 644, 648 (5th Cir. 1994)) (internal citation
omitted).
Lastly, with respect to the claims for which Plaintiffs have satisfied their burden of
establishing Magnovo’s minimum contacts, the burden now shifts to Magnovo to show that the
exercise of personal jurisdiction over it is unfair or unreasonable. Like Jackson, Magnovo makes
virtually no effort to satisfy its burden here. As such, the Court concludes that it may lawfully assert
personal jurisdiction over the trademark and anticybersquatting claims against Magnovo. But since
Plaintiffs failed to carry their burden with respect to their copyright infringement and state law claims
against Magnovo, the Court concludes that exercising personal jurisdiction over these claims would
not comport with due process.
3.

Defendant Johnston

Next up, the Court considers whether exercising personal jurisdiction over the claims against
Defendant Johnston, a Florida resident, accords with due process. As mentioned, only specific
personal jurisdiction is at issue. Plaintiffs, therefore, must show that Johnston engaged in purposeful
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minimum contacts with Texas, and that those contacts give rise or relate to the state law claims
asserted against her. These claims, as a reminder, seek relief for Johnston’s alleged trade secret
misappropriation, Texas Theft Liability Act violations, unfair competition, breach of contract, and
tortious interference with Plaintiffs’ prospective business relations. The asserted misconduct
underlying each of these claims are allegations that Johnston, upon terminating her agency
relationship with TLI, unlawfully used Plaintiffs’ trade secrets, including their confidential customer
lists, to unfairly compete with Plaintiffs on Defendant Magnovo’s behalf.
In arguing that specific jurisdiction over Johnston is constitutional, Plaintiffs primarily rely
on Johnston’s Texas contacts during her five-year relationship with TLI from August 2008 to July
2013. See Pls.’ Br. Opp’n Johnston’s & Short Splice’s Mot. 3-9, 17-19, 20-22. These contacts include
(1) the relationship itself; (2) Johnston’s two trips to Texas (once for training and another to assist
in a TLI workshop); (3) her numerous communications with Texas-based customers; (4) sales
resulting from such communications; (5) the multiple event proposals she submitted to TLI for
customers in Texas; (6) her various communications with TLI’s support personnel in Texas; and (7)
the payment requests she submitted to TLI in Texas along with the payments she received from TLI’s
bank in Texas. See id. at 17. Plaintiffs also show that during this five-year relationship (8) Johnston
signed and returned to Plaintiffs in Texas a non-disclosure agreement promising not to disclose
Plaintiffs’ trade secrets, and (9) routinely accessed TLI’s customers list and related intellectual
property stored on servers located in Texas. See id. at 17, 20-21. In addition, Plaintiffs allege that
Johnston had at least some contacts with Texas after terminating her five-year agency relationship
with TLI in July 2013. These contacts include (10) Johnston’s alleged use of Plaintiffs’ trade secrets
to compete with Plaintiffs in Texas and elsewhere, knowing the effect her unlawful conduct would
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have on Plaintiffs in Texas. See id. at 19, 21-22. Likewise, Plaintiffs point to (11) demand letters sent
to Plaintiffs in Texas following Johnston’s departure from TLI by an attorney retained by Johnston
“in connection with commissions allegedly owed by TLI to Johnston for past services.” Id. at 8-9.
Johnston counters that the majority of Plaintiffs’ allegations “could be condensed to one
simple and undisputed statement—Collette Johnston worked remotely from Florida for five years for
Plaintiff TLI, a Texas company with its headquarters in Texas.” Defs. Johnston’s & Short Splice’s
Reply 3. But “simply working for a Texas company is not enough,” Johnston argues, “to satisfy the
exercise of personal jurisdiction against a non-resident.” Id. Johnston similarly contends that her
alleged contacts with Texas over the course of her relationship with TLI, “such as the fact that
Johnston communicated with TLI’s employees in Texas or received payments from Texas[,] are
insufficient to establish specific jurisdiction because they relate only superficially to [her] employment
relationship with Texas and not to the basis of the underlying claims.” Id. at 5. Johnston additionally
points out that “nowhere do Plaintiffs allege that any ostensible misuse or misappropriation of [their]
information occurred in Texas.” Id. at 6. Applying the holdings reached by other Texas courts faced
with similar circumstances, Johnston posits, leads to the conclusion that “Plaintiffs have failed to
establish specific jurisdiction.” Id. The Court, for the reasons that follow, finds Johnston’s position
here the more persuasive one.14
In Gustafson v. Provider HealthNet Servs., Inc., 118 S. W. 3d 479 (Tex. App. 2003), the Texas
Court of Appeals found specific jurisdiction lacking over a non-resident defendant—Paul
Gustafson—under

circumstances similar to those presented here. The plaintiff in

14

The Court reaches this conclusion without addressing Johnston’s objections to certain allegations
made in Staneart’s affidavit. See Johnston’s & Short Splice’s Reply Br. 7.

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Gustafson—Provider HealthNet Services, Inc. (“PHNS”)—had “sued Gustafson for breach of a
confidentiality agreement, common law misappropriation, misappropriation of trade secrets, and
breach of fiduciary duty,” id. at 483, all arising out of allegations “that Gustafson had, while employed
by PHNS [from his residence in Michigan], provided PHNS’s confidential information to [his former
Michigan-based employer] as well as a PHNS competitor.” Id. at 481. In arguing that specific
jurisdiction over Gustafson was constitutional, “PHNS relie[d] on Gustafson’s contacts with Texas
by virtue of his employment with PHNS,” including the relationship itself, two employment-related
trips he made to Texas, payments he submitted and received from Texas, and communications he
had with PHNS employees in Texas. Id. at 483.
The Texas Court of Appeals found these contacts insufficient to confer specific jurisdiction
over PHNS’s claims against Gustafson. In reaching this conclusion, the court noted initially “that
the mere fact that Gustafson was employed by a company with its principal place of business in Texas
is not sufficient to establish the requisite minimum contacts with Texas.” Id. (citing Rittenmeyer v.
Grauer, 104 S.W.3d 725, 733 (Tex. App. 2003); Burger King, 471 U.S. at 478, 105 S. Ct. at 2174).
The court further explained that Gustafson’s alleged contacts with Texas “relate[d] only superficially
to his general employment relationship with PHNS,” and “were necessarily created” by PHNS’s own
restructuring of its operations and employment arrangements. Id. at 484. The court similarly found
Gustafson’s two trips to Texas insignificant, reasoning that PHNS had failed to show or allege that
Gustafson had “breached any duties to it or committed any torts during these meetings.” Id. The
court additionally rejected PHNS’s contention that Gustafson created “‘continuing obligations’ with
Texas” through his employment relationship, because “Gustafson signed no employment agreement”
and his confidentiality agreement with PHNS was “executed in Michigan, made no reference to the
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State of Texas and did not require any performance in this State.” Id. Lastly, the court observed that
while “a breach of the confidentiality agreement could cause an injury in Texas[,] . . . the mere fact
that an injury is caused in the forum state is insufficient to establish minimum contacts.” Id. (citing
City of Riverview, Michigan v. Am. Factors, Inc., 77 S.W.3d 855, 858 (Tex. App. 2002)).
Drawing on Gustafson’s reasoning, another case from this District—Wheel-Source, Inc. v.
Gullekson, No. 3:12-CV-1500-M, 2013 WL 944430 (N.D. Tex. Mar. 12, 2013) (Lynn, J.)—also
found specific jurisdiction lacking over a non-resident defendant whose forum contacts and alleged
misconduct mirror Johnston’s. To illustrate, Wheel-Source involved a non-resident defendant who
worked for the plaintiff, a Texas-based corporation, as a salesperson for seven years, during which
time the defendant worked primarily from his home offices in Michigan, but engaged in various
contacts with Texas pursuant to his agency relationship. This relationship ended when the defendant
took a position with one of the plaintiff’s competitors, after which the plaintiff apparently discovered
the defendant’s wrongful sharing of confidential information to third parties outside of Texas. The
plaintiff, accordingly, filed suit in Texas against the defendant, asserting various claims arising from
this alleged misconduct, including, inter alia, trade secret misappropriation, tortious interference, and
breach of contract.
Addressing the plaintiff’s claims in turn, the court in Wheel-Source found no specific
jurisdiction over the defendant for similar reasons as discussed in Gustafson. In regards to its specific
jurisdiction over the trade secret claim, the court reasoned that “[a]s was true in Gustafson,
Defendants contacts with Texas relate only superficially to his general independent contractor
relationship,” and therefore, are merely “attenuated or fortuitous, as opposed to purposeful.” Id. at
*6. Moving next to the tortious interference claim, the court noted that the plaintiff had not alleged
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“any contracts it lost as a result of Defendant’s alleged wrongful conduct, all of which appears to have
occurred in Michigan.” Id. Moreover, the court found that the fact that the defendant could foresee
that his intentional acts would cause harm to the plaintiff in Texas was not sufficient to establish
jurisdiction. Id. The court also dismissed the breach of contract claim for lack of personal jurisdiction,
finding that the contract at issue was performed “in Michigan, not Texas,” and that the breach of
contract claim centered on the defendant’s “alleged dissemination of confidential information, all
of which occurred in Michigan or states other than Texas.” Id. at *7. In short, the plaintiff’s
relationship to Texas “rest[ed] on the mere fortuity that Wheel-Source is located in Texas,” and
therefore, the court concluded that jurisdiction was not appropriate. Id. (citing Moncrief Oil Intern,
Inc. v. OAO Gazprom, 481 F.3d 309, 313 (5th Cir. 2007). This holding accords with a number of
other cases from courts in Texas finding the same under similar circumstances.15
In this case, the contacts on which Plaintiffs rely in attempting to show specific jurisdiction
over Johnston are indistinguishable from those rejected as insufficient in Gustafson, Wheel-Source,
and related Texas cases. Like in those cases, nearly all of Johnston’s forum contacts over the course
of her agency relationship with Plaintiffs bear only a superficial relation to the misconduct alleged.
Plaintiffs have not asserted, for example, that Johnston’s numerous communications with TLI
personnel and customers, her sales proposals for Texas customers, or her payments from Texas gave
rise or relate to the misappropriation at issue. Likewise, Johnston’s two trips to Texas, much like
15

See, e.g., 360 Mortgage Grp., LLC v. Stonegate Mortgage Corp., No. A-13-CA-942-SS, 2014 WL
2092496, at *3-4 (W.D. Tex. May 19, 2014) (no specific jurisdiction over trade secret claims brought against
an individual “who worked exclusively in North Carolina,” but had a number of contacts in Texas pursuant
to his employment with the plaintiff, a company headquartered in Texas); Rushmore Inv. Advisors, Inc. v. Frey,
231 S.W.3d 524, 529-30 (Tex. App. 2007) (no specific jurisdiction over trade secret misappropriation, unfair
competition, and breach of contract claims against non-resident defendant based on defendant’s insufficient
forum contacts during a “twenty-two month course of employment with a Texas firm”).

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those taken by the defendants in Gustafson and Wheel-Source, were merely work related and have
nothing to do with the underlying suit. Additionally, Johnston’s post-employment demand letters
sent to Plaintiffs in Texas concern a dispute over unpaid commissions allegedly owed to Johnston,
which is unrelated to Johnston’s purported use of Plaintiffs’ confidential information in this case.
Similarly, Plaintiffs also fail to demonstrate an adequate connection between Johnston’s
alleged misconduct and this forum. Plaintiffs do not show, for instance, that Johnston’s alleged
misuse of their trade secrets took place in Texas, or that she helped secure new customers or business
for Magnovo in Texas, or that her conduct in any way had an effect on Texas residents outside of
Plaintiffs themselves. These in-state effects on Plaintiffs, moreover, are not sufficient on their own
to establish jurisdiction over Johnston, just as they weren’t sufficient in Wheel-Source or Gustafson.16
And while Plaintiffs say that Johnston “likely contacts Texas residents in an effort to make sales on
behalf of Magnovo,” they base this assertion solely on Magnovo’s activities—the fact that it “targets
Texas residents through its Texas directed webpages.” Pls.’ App. Opp’n Johnston’s & Short Splice’s
Mot. 8 (Ex. A, Staneart Aff. ¶ 38). Such unilateral activities on the part of another party cannot be
used to confer jurisdiction over Johnston. See Walden, 134 S. Ct. at 1122.
Plaintiffs’ reliance on Johnston’s long-term agency relationship with TLI does not salvage
their inadequate showing of relevant contacts purposefully directed at Texas. Unlike Defendant
Jackson or the non-resident defendant in Burger King, Johnston’s forum contacts over the course of
her relationship with TLI arose, not from Johnston’s purposeful efforts to secure work from TLI in

16

See also Walden, 134 S. Ct. at 1123 (clarifying that under the effects test established by Calder v.
Jones, 465 U.S. 783, 104 S. Ct. 1482, 79 L.Ed. 2d 804 (1984) the Supreme Court “examined the various
contacts the defendants had created with California (and not just with the plaintiff)”).

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Texas, but from TLI’s unilateral decision to internally restructure and directly hire its former
subcontractors, including Johnston. Johnston, moreover, never signed an employment or
independent contractor agreement governing her relationship with TLI, which she performed almost
exclusively from Florida. Though at one point during her five year agency relationship, Johnston did
sign a non-disclosure agreement with TLI before receiving TLI’s 2013 corporate handbook, this
discrete agreement—like those in Gustafson and Wheel-Source—was executed by Johnston in Florida,
made no mention of Texas, and required no performance in Texas. Thus, like in those cases, the
mere fortuity that Johnston had an employment relationship with TLI, a Texas company, and
engaged in mostly remote contacts with Texas from her home in Florida pursuant to this
relationship, is not enough for the Court to lawfully assert jurisdiction over Johnston here in Texas.
In the end, Plaintiffs fail to show that the connection between Johnston, Texas, and this
litigation extends beyond the mere fortuity that Plaintiffs happen to reside here. See Walden, 134 S.
Ct. at 1122 (“[T]he plaintiff cannot be the only link between the defendant and the forum [for
personal jurisdiction to exist]”). Because of this, the Court concludes that Plaintiffs have failed to
present a prima facie case of personal jurisdiction over Johnston, and therefore, that dismissal of the
claims asserted against her under Rule 12(b)(2) is warranted.
4.

Defendant Short Splice

Having found personal jurisdiction over Johnston lacking, the Court can quickly dispose of
the jurisdictional arguments made in regards to Short Splice. Plaintiffs’ primary contention here is
that “the aforementioned actions of Johnston during the period of January 1, 2011 through July
2013, are directly attributable to Short Splice,” and therefore, “Short Splice’s contacts with Texas
were sufficient to support the Court’s exercise of personal jurisdiction in this case.” Pls.’ Br. Opp’n
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Johnston’s & Short Splice’s Mot. 20. But even assuming that all of Johnston’s contacts during this
time period may be imputed to Short Splice, Plaintiffs’ efforts to show personal jurisdiction over Short
Splice would still fall short, given the Court’s above conclusion that Johnston’s contacts are
insufficient to establish personal jurisdiction over the same claims against her. Accordingly, the Court
determines that Plaintiffs have also failed to present a prima facie case of personal jurisdiction over
Short Splice, and that dismissal of the claims against Short Splice is, therefore, warranted under Rule
12(b)(2).
III.
TRANSFER OF VENUE
Having determined that it may lawfully assert jurisdiction over at least some of Plaintiffs’
claims against Defendants Jackson and Magnovo, the Court turns next to Jackson’s and Magnovo’s
request, in the alternative, for a transfer of venues to the judicial district in which they reside: the
Southern District of Indiana. Defendants argue that such a transfer is warranted under 28 U.S.C.
§ 1404(a), which codifies “the doctrine of forum non conveniens for the subset of cases in which the
transferee forum is within the federal court system.” Atl. Marine Const. Co. v. U.S. Dist. Court for W.
Dist. of Texas, 134 S. Ct. 568, 580, 187 L. Ed. 2d 487 (2013). This doctrine, and thus the § 1404(a)
analysis, requires courts to balance a number of judicially-developed factors, including:
(1) the relative ease of access to sources of proof; (2) the availability of compulsory
process to secure the attendance of witnesses; (3) the cost of attendance for willing
witnesses; (4) all other practical problems that make trial of a case easy, expeditious
and inexpensive; (5) the administrative difficulties flowing from court congestion; (6)
the local interest in having localized interests decided at home; (7) the familiarity of
the forum with the law that will govern the case; and (8) the avoidance of
unnecessary problems of conflict of laws or in the application of foreign law.
In re Radmax, Ltd., 720 F.3d 285, 288 (5th Cir. 2013) (quoting In re Volkswagen of Am., Inc., 545
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F.3d 304, 311 (5th Cir. 2008) (en banc)) (quotation marks and brackets omitted).
Importantly, courts must weigh these factors in a way that “reflect[s] the appropriate
deference to which the plaintiff’s choice of venue is entitled.” Volkswagen, 545 F.3d at 315. The party
seeking a transfer, thus, bears the burden of establishing “‘that the transferee venue is clearly more
convenient’” when judged in light of the above factors. Radmax, 720 F.3d at 288 (quoting
Volkswagen, 545 F.3d at 315).
Here, Jackson and Magnovo have not satisfied the heavy burden they must carry to show that
the Southern District of Indiana is a clearly more convenient venue than this District—the venue
in which Plaintiffs chose to file suit and labored to establish personal jurisdiction. Of the few points
raised by Defendants here, nearly all are typical of the circumstances faced by out of state litigants.
For example, Defendants assert that “the majority of [their] evidence is located in Indiana, as well
as several of [their] witnesses,” and “the fact that Indiana is the place of residence of Jackson and the
principal place of business of Magnovo makes trial of this case easier, more expeditious, and less
inexpensive (sic).” Defs. Jackson’s & Magnovo’s Mot. 21-22. This, of course, is offset by the fact that
Plaintiffs’ witnesses and evidence are primarily in Texas, and that it would be easier and less
expensive for them to try this case at home in Texas. Defendants also argue that Plaintiffs’ request
for injunctive relief makes it “more appropriate for an Indiana court to determine and regulate the
future activities of [Defendants] located in Indiana.” Id. at 22. They offer no explanation, however,
as to why a federal court in Indiana would be more adept at deciding the issues in this case than a
federal court in Texas, and they even admit that the injunction requested “would apply on a national
level, not merely in Texas” or Indiana. Id. Lastly, Defendants point out that “litigation is already
pending in the United States District Court, Southern District of Indiana, between the parties.” Id.
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But aside from asserting in conclusory fashion that both cases “involv[e] a substantial number of the
same basic facts, witnesses, and parties,” id., Defendants do not explain why it would be any more
efficient to send this seemingly separate case to Indiana for adjudication, simply because the parties
are engaged in another legal dispute in that forum.
Ultimately, the record suggests that the Southern District of Indiana stands on equal footing
with this venue in terms of convenience and fairness to the parties. In such circumstances, the Court
must defer to Plaintiffs’ choice of forum in filing suit in this venue. See Volkswagen, 545 F.3d at 315.
Therefore, the Court concludes that Jackson and Magnovo are not entitled to the relief sought in
their motion to transfer pursuant to 28 U.S.C. § 1404(a).
IV.
CONCLUSION
For the foregoing reasons, the Court concludes that it may assert personal jurisdiction over
the trademark and anticybersquatting claims brought against Defendants Jackson and Magnovo, and
the state law claims against Defendant Jackson. For these claims, the Court further determines that
Defendants Jackson and Magnovo have not shown that a transfer of venues pursuant to 28 U.S.C.
§ 1404(a) is warranted. For all other claims against Defendants Jackson and Magnovo, Plaintiffs have
failed to make out a prima facie case of personal jurisdiction. Likewise, the Court finds that Plaintiffs
have failed to make out a prima facie case of personal jurisdiction with respect to any of their claims
against Defendants Johnston and Short Splice.
Accordingly, the Court GRANTS IN PART Defendants Jackson’s and Magnovo’s Motion
to Dismiss (doc.39), and hereby DISMISSES WITHOUT PREJUDICE TO REFILE IN
ANOTHER FORUM FOR LACK OF PERSONAL JURISDICTION Plaintiffs’ claim against
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Defendant Jackson for Federal Copyright Infringement (Am. Compl. ¶¶ 166-75), as well as Plaintiffs’
claims against Defendant Magnovo for Federal Copyright Infringement (id. ¶¶ 166-75), Unfair
Competition by Misappropriation (id. ¶¶ 176-83), Texas Theft Liability Act (id. ¶¶ 184-86), and
Conversion and Misappropriation of Trade Secrets (id. ¶¶ 187-99). The Court DENIES IN PART
Defendants Jackson’s and Magnovo’s Motion (doc. 39) in all other respects.
The Court also GRANTS Defendants Johnston’s and Short Splice’s Motion to Dismiss (doc.
41), and hereby DISMISSES WITHOUT PREJUDICE TO REFILE IN ANOTHER FORUM
FOR LACK OF PERSONAL JURISDICTION all of Plaintiffs’ claims against Defendants Johnston
and Short Splice.
SO ORDERED.
Dated: July 24, 2015.
_________________________________
JANE J. BOYLE
UNITED STATES DISTRICT JUDGE

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