606 F.3d 1124 (9th Cir. 2010), 07-15383, Brayton Purcell LLP v. Recordon & Recordon

Docket Nº:07-15383.
Citation:606 F.3d 1124
Opinion Judge:D.W. NELSON, Senior Circuit Judge:
Party Name:BRAYTON PURCELL LLP, a California partnership, Plaintiff-Appellee, v. RECORDON & RECORDON, a California partnership, Defendant-cross-claimant-Appellant, v. Apptomix Inc.; Jonathan Lee, Cross-defendants.
Attorney:Jacob D. Zamora, Law Office of Jacob D. Zamora, Marysville, CA, for the defendant-appellant. David W. Fermino, Brayton Purcell LLP, Novato, CA, for the plaintiff-appellee.
Judge Panel:Before: MARY M. SCHROEDER, D.W. NELSON and STEPHEN REINHARDT, Circuit Judges. REINHARDT, Circuit Judge, dissenting:
Case Date:May 28, 2010
Court:United States Courts of Appeals, Court of Appeals for the Ninth Circuit
 
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606 F.3d 1124 (9th Cir. 2010)

BRAYTON PURCELL LLP, a California partnership, Plaintiff-Appellee,

v.

RECORDON & RECORDON, a California partnership, Defendant-cross-claimant-Appellant,

v.

Apptomix Inc.; Jonathan Lee, Cross-defendants.

No. 07-15383.

United States Court of Appeals, Ninth Circuit.

May 28, 2010

Argued and Submitted Oct. 21, 2008.

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[Copyrighted Material Omitted]

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Jacob D. Zamora, Law Office of Jacob D. Zamora, Marysville, CA, for the defendant-appellant.

David W. Fermino, Brayton Purcell LLP, Novato, CA, for the plaintiff-appellee.

Appeal from the United States District Court for the Northern District of California, Edward M. Chen, Magistrate Judge, Presiding. D.C. No. CV-04-04995-EMC.

Before: MARY M. SCHROEDER, D.W. NELSON and STEPHEN REINHARDT, Circuit Judges.

ORDER AND OPINION

ORDER

The Opinion filed August 5, 2009, and published at 575 F.3d 981 (9th Cir.2009), is hereby withdrawn and superceded by the Opinion filed concurrently herewith.

With the filing of the new opinion, Appellant's pending petition for rehearing en banc is DENIED as moot, without prejudice to refiling a subsequent petition for rehearing and/or rehearing en banc. See 9th Cir. G.O. 5.3(a).

OPINION

D.W. NELSON, Senior Circuit Judge:

Recordon & Recordon (" Recordon" ) appeals the district court's denial of its motion to dismiss for improper venue.1 In copyright infringement actions, venue is proper " in the district in which the defendant ... resides or may be found." 28 U.S.C. § 1400(a). This circuit interprets this provision to allow venue in any judicial district where, if treated as a separate state, the defendant would be subject to personal jurisdiction. See Columbia Pictures Television v. Krypton Broad. of Birmingham, Inc., 106 F.3d 284, 289 (9th Cir.1997), rev'd on other grounds, Feltner v. Columbia Pictures Television, Inc., 523 U.S. 340, 118 S.Ct. 1279, 140 L.Ed.2d 438 (1998). Because Recordon would be subject to personal jurisdiction in the Northern District of California if it were treated as a separate state, we hold that venue was proper and affirm the decision of the district court.

I. FACTUAL AND PROCEDURAL BACKGROUND

Appellant Recordon is a San Diego-based law firm composed of two attorneys, Kathy R. Recordon and Stephen G. Recordon. Recordon's practice is limited to Southern California; it does not have, nor in the past did it ever have, any clients in the Northern District of California (" the Forum" ). Recordon does not conduct any business, own any real or personal property, or maintain a mailing address or telephone listing in the Forum. The Recordons are both licensed to practice law in the state of California.

Appellee Brayton Purcell LLP (" Brayton Purcell" ) is a law firm based in Novato, California, located within the Forum. Brayton Purcell markets itself as a leader in elder abuse law, with a practice extending throughout California. It maintains an extensive website providing information on its elder abuse practice, which it copyrighted effective October 7, 2002.

In July 2004, Recordon contracted with Apptomix, Inc., a web-design company with its principal place of business in San Diego County, to add an elder law section to Recordon's website. Recordon claims

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this website " was designed for information only, was passive in nature, and was directed toward prospective clients located in San Diego County." Although Recordon's website includes only San Diego and Orange County phone numbers, the website does not restrict its promotion of the firm to Southern California or San Diego County, nor is there any indication that, as California-licensed attorneys, Recordon's practice is limited within California.

Brayton Purcell discovered Recordon's website using " Copyscape," a tool that scours the internet for unauthorized use of copyrighted materials. The elder law section of Recordon's website consisted entirely of material copied verbatim from, and without attribution to, Brayton Purcell's own website.

Brayton Purcell filed suit against Recordon for copyright infringement, unfair competition, false advertising, and common law misappropriation. 2 Brayton Purcell alleged that Recordon " knowingly and purposefully directed their infringing acts to this District, ... knowing Brayton Purcell is a resident of this District and would suffer any injuries ... in this District." Brayton Purcell further alleged that Recordon " made commercial use of Brayton Purcell's Website and of the copyrighted material ... [and] willfully, deliberately and knowingly used Plaintiff's copyrighted work for the purpose of promoting its business and attracting new business in the field of elder abuse law, in competition with [Brayton Purcell]."

Recordon filed a motion seeking, alternatively, dismissal pursuant to Fed.R.Civ.P. 12(b)(2) for lack of personal jurisdiction,3 dismissal pursuant to Fed.R.Civ.P. 12(b)(3) for improper venue, or change of venue under 28 U.S.C. § 1404(a). The district court denied Recordon's motion. After a settlement conference, the parties agreed to submit to binding arbitration. The arbitrator found for Brayton Purcell, and the district court entered judgment in its favor. Recordon has appealed only the district court's denial of its motion to dismiss for improper venue, not the entry of judgment on the arbitration award.

II. STANDARD OF REVIEW

A district court's rulings on personal jurisdiction and venue are reviewed de novo. See Pebble Beach Co. v. Caddy, 453 F.3d 1151, 1154 (9th Cir.2006) (personal jurisdiction); Immigrant Assistance Project of the L.A. County Fed'n of Labor v. INS, 306 F.3d 842, 868 (9th Cir.2002) (venue). Although the burden is on the plaintiff to demonstrate that the court has jurisdiction over the defendant, in the absence of an evidentiary hearing, the plaintiff need only make " a prima facie showing of jurisdictional facts to withstand the motion to dismiss." Pebble Beach, 453 F.3d at 1154 (internal quotation marks omitted). Additionally, " uncontroverted allegations in [plaintiff's] complaint must be taken as true, and conflicts between the facts contained in the parties' affidavits must be resolved in [plaintiff's] favor." Rio Props., Inc. v. Rio Int'l Interlink, 284 F.3d 1007, 1019 (9th Cir.2002); see also Pebble Beach, 453 F.3d at 1154 (" [F]or the purpose of this[prima facie] demonstration, the court resolves all disputed facts in favor of the plaintiff." ).

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III. DISCUSSION

In copyright infringement actions, venue is proper " in the district in which the defendant or his agent resides or may be found." 28 U.S.C. § 1400(a). The Ninth Circuit interprets this statutory provision to allow venue " in any judicial district in which the defendant would be amenable to personal jurisdiction if the district were a separate state." Columbia Pictures, 106 F.3d at 289.

This Court employs a three-prong test to determine whether a party has sufficient minimum contacts to be susceptible to specific personal jurisdiction: 4

(1) The non-resident defendant must purposefully direct his activities or consummate some transaction with the forum or resident thereof; or perform some act by which he purposefully avails himself of the privilege of conducting activities in the forum, thereby invoking the benefits and protections of its laws;

(2) the claim must be one which arises out of or relates to the defendant's forum-related activities; and

(3) the exercise of jurisdiction must comport with fair play and substantial justice, i.e. it must be reasonable.

Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797, 802 (9th Cir.2004) (quoting Lake v. Lake, 817 F.2d 1416, 1421 (9th Cir.1987)). Only the first prong is at issue in this appeal. The first prong is satisfied by either purposeful availment or purposeful direction, which, though often clustered together under a shared umbrella, " are, in fact, two distinct concepts." Pebble Beach, 453 F.3d at 1155. " A purposeful availment analysis is most often used in suits sounding in contract. A purposeful direction analysis, on the other hand, is most often used in suits sounding in tort." Schwarzenegger, 374 F.3d at 802 (internal citations omitted). Here, the underlying action is copyright infringement, which is often characterized as a tort. See Columbia Pictures, 106 F.3d at 289 (likening willful copyright infringement to an intentional tort). Purposeful direction is therefore the proper analytical framework in this case. See Schwarzenegger, 374 F.3d at 802.

This court evaluates purposeful direction using the three-part " Calder -effects" test, taken from the Supreme...

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