Impact Productions, Inc. v. Impact Productions

• Decision Date: 19 October 2004
• Docket Number: No. CIV.A. 02-K-783.,CIV.A. 02-K-783.
• Citation: 341 F.Supp.2d 1186
• Parties: IMPACT PRODUCTIONS, INC., a Colorado corporation, Plaintiff, v. IMPACT PRODUCTIONS, LLC., a New Jersey limited liability corporation, Defendant.
• Court: U.S. District Court — District of Colorado

341 F.Supp.2d 1186

IMPACT PRODUCTIONS, INC., a Colorado corporation, Plaintiff, v. IMPACT PRODUCTIONS, LLC., a New Jersey limited liability corporation, Defendant.

No. CIV.A. 02-K-783.

United States District Court, D. Colorado.

October 19, 2004.

COPYRIGHT MATERIAL OMITTED

J. Mark Smith, Esq., Pendleton, Friedberg, Wilson & Hennessey, P.C., Denver, CO, for Plaintiff.

Mark W. Fischer, Esq., Faegre & Benson, LLP, Boulder, CO, for Defendant.

MEMORANDUM OPINION AND ORDER

KANE, District Judge.

This is an action for trademark infringement brought by Plaintiff Impact Productions, Inc., a Colorado corporation ("Impact CO"), against Defendant Impact Productions, LLC, a New Jersey limited liability company with its principal place of business in New Jersey ("Impact NJ"). Impact NJ moved to dismiss for lack of personal jurisdiction and improper venue. After a period of discovery limited to the jurisdictional issue, the parties completed briefing on this motion. Upon careful consideration of the motion and the parties' memoranda, and all applicable legal authorities, and being fully advised in the premises, I grant the motion.

Factual Background

Impact CO is in the business of organizing exhibitions for entertainment purposes and providing multimedia presentations and promotional advice for conventions, trade shows and special events. It alleges it began using the mark "Impact Productions" in commerce in March, 1997, and filed its application to register this mark with United States Patent and Trademark Office in the same year. This application was granted and the mark was registered to Impact CO in October, 2001.

Impact NJ is also in the business of special event planning. It alleges it has used the "Impact Productions" mark in its business since February, 1996, more than a year before Impact CO began utilizing the mark.

According to the declaration of Impact NJ's executive producer, Lauren Roth, her company first became aware of the existence of Impact CO in January, 2001. Later that year, in June, 2001, Impact NJ sent Impact CO a "cease and desist" letter notifying the Colorado company of its claimed senior use of the "Impact Productions" mark. The parties then negotiated for several months to resolve their conflicting claims to the mark. These negotiations were not successful.

In March, 2002, Impact NJ sought to resolve the parties' dispute by petitioning the federal Trademark Trial and Appeal Board ("TTAB") to cancel Impact CO's trademark registration because it interferes with Impact NJ's allegedly senior common law trademark rights. Impact CO responded by filing this action.

In January, 2001, at approximately the same time she learned of Impact CO's existence, Impact NJ's Roth volunteered to produce a dinner and awards presentation at the 2002 "Special Event," an annual international conference and trade show in which Roth had participated since 1993. The Special Event is organized and produced by Primedia Business Exhibitions ("Primedia"), which is headquartered in Connecticut but has offices in California, Colorado and elsewhere. Impact NJ sought to build good will and gain industry recognition and experience through this volunteer effort.

Primedia ultimately invited Impact NJ to produce the 2002 Special Event dinner and presentation. In the course of planning this event, Impact NJ had numerous phone, letter and e-mail contacts with Colorado employees of Primedia and Colorado-based Primedia agents and consultants. These contacts occurred between January, 2001, and January, 2002, when the 2002 Special Event took place in Phoenix, Arizona. Primedia did not enter into a contract or pay Impact NJ for its services, but its Colorado representatives and agents reimbursed Impact NJ for its out-of-pocket expenses.

To promote the 2002 Arizona event, Primedia developed and printed an advertising flyer that it distributed throughout the country, including to Impact CO and some other Colorado residents. This lengthy flyer names Impact NJ twice in the course of identifying Roth as one of numerous contributors to the trade show. See Compl., Ex. B. Primedia prepared, produced and distributed the flyer without the direction, involvement or knowledge of Impact NJ.

Throughout the period in question Impact NJ also maintained a passive website advertising its services that was accessible in Colorado and elsewhere. Impact NJ does not have any employees, bank accounts, property, or customers in Colorado, or any other contacts with Colorado beyond those stated above.

Legal Framework

Impact CO, as the plaintiff, has the burden of establishing this court's personal jurisdiction over Impact NJ. Benton v. Cameco Corp., 375 F.3d 1070, 1074 (10th Cir.2004). On a motion to dismiss decided without an evidentiary hearing,¹ a plaintiff satisfies this burden by making a prima facie showing of personal jurisdiction. Id. In considering the motion, I must take all well pled facts of the complaint, but not mere conclusory allegations, as true. See Wenz v. Memery Crystal, 55 F.3d 1503, 1505 (10th Cir.1995). I may also consider affidavits and other written materials submitted by the parties, id., and must resolve any factual disputes raised by these materials in favor of Impact CO. Benton, 375 F.3d at 1074-75.

In a federal question case such as this, in which the federal statute at issue does not authorize nationwide service, personal jurisdiction is determined according to the law of the forum state. Fed.R.Civ.P. 4(k)(1)(A); SCC Communications Corp. v. Anderson, 195 F.Supp.2d 1257, 1260 (D.Colo.2002). The Colorado Supreme Court has interpreted Colorado's long arm statute to extend jurisdiction to the fullest extent permitted by the Due Process Clause of the Fourteenth Amendment. See, e.g., Keefe v. Kirschenbaum & Kirschenbaum, 40 P.3d 1267, 1270 (Colo.2002); Benton, 375 F.3d at 1075. Accordingly, if jurisdiction over a non-resident defendant is proper under the Due Process Clause, it is also authorized by Colorado's long arm statute. Benton, 375 F.3d at 1075; see Keefe, 40 P.3d at 1270.

The Due Process Clause permits the exercise of personal jurisdiction over a non-resident defendant "only so long as there exist minimum contacts between the defendant and the forum State." World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 291, 100 S.Ct. 559, 62 L.Ed.2d 490 (1980). The requisite minimum contacts exist if the non-resident defendant has continuous and systematic contacts with the forum state (general jurisdiction) or if the defendant (i) has purposefully directed activities at forum residents or otherwise acted to avail itself purposefully of the privilege of conducting activities there and (ii) the litigation results from alleged injuries that arise out of or relate to those activities (specific jurisdiction). See Benton, 375 F.3d at 1075; Intercon, Inc. v. Bell Atlantic Internet Solutions, Inc., 205 F.3d 1244, 1247 (10th Cir.2000). The touchstone of the minimum contacts analysis in both cases is "whether `the defendant's conduct and connection with the forum State are such that he should reasonably anticipate being haled into court there.'" Benton, 375 F.3d at 1078 (quoting World-Wide Volkswagen, 444 U.S. at 297, 100 S.Ct. 559).

If sufficient minimum contacts are shown to establish either general or specific jurisdiction, the Due Process Clause requires that I further consider whether the exercise of personal jurisdiction over defendant would nonetheless offend traditional notions of fair play and substantial justice. Intercon, 205 F.3d at 1247; see Benton, 375 F.3d at 1078 This inquiry turns on whether it is reasonable in light of the circumstances surrounding the case to exercise personal jurisdiction over the non-resident defendant. Benton, 375 F.3d at 1078.

Analysis

Impact CO asserts Impact NJ is subject to specific jurisdiction in this forum. Consistent with the authority cited above, in order to prevail on this issue at this stage of the litigation, Impact CO must make a prima facie showing that: (1) Impact NJ purposefully directed its activities at Colorado or its residents or performed some act by which it purposefully availed itself of the privilege of conducting activities in Colorado; and (2) Impact CO's claims arise out of or relate to Impact NJ's forum-related activities. Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797, 802 (9th Cir.2004); see Intercon, 205 F.3d at 1247. If Impact CO carries its burden with respect to these minimum contacts elements, then the burden shifts to Impact NJ to present a compelling case that the exercise of jurisdiction would nonetheless be unreasonable and thus offend traditional notions of fair play and substantial justice. See Burger King Corp. v. Rudzewicz, 471 U.S. 462, 477, 105 S.Ct. 2174, 85 L.Ed.2d 528 (1985); Schwarzenegger, 374 F.3d at 802; see also Benton, 375 F.3d at 1083 (Holloway, J., dissenting).

With respect to the first element, Impact CO asserts Impact NJ purposefully directed activities at Colorado under the "effects" test derived from Calder v. Jones, 465 U.S. 783, 104 S.Ct. 1482, 79 L.Ed.2d 804 (1984), and its progeny. This test generally applies to determination of specific jurisdiction in cases of intentional torts, including trademark infringement, see, e.g., Dakota Industries, Inc. v. Dakota Sportswear, Inc., 946 F.2d 1384, 1388, 1391 (8th Cir.1991), in which a non-resident defendant has acted outside the forum state in a manner that injures a forum resident. See, e.g., Far West Capital, Inc. v. Towne, 46 F.3d 1071, 1077-78 (10th Cir.1995); IMO Indus., Inc. v. Kiekert AG, 155 F.3d 254, 261-65 (3rd Cir.1998). To show purposeful direction at the forum state in this instance, the plaintiff must make a prima facie case that the non-resident defendant: (1) committed an intentional act (2) expressly aimed at the forum state (3) that had an effect and defendant knew was likely to have an effect in the forum state. See Calder, 465 U.S. at 789-90, 104 S.Ct. 1482;...