Adidas Am., Inc. v. Cougar Sport, Inc.

• Decision Date: 14 March 2016
• Docket Number: Case No. 3:15–cv–01856–SI
• Citation: 169 F.Supp.3d 1079
• Parties: Adidas America, Inc., a Delaware corporation; and Adidas AG, a foreign entity, Plaintiffs, v. Cougar Sport, Inc., a New York corporation, Defendant.
• Court: U.S. District Court — District of Oregon

169 F.Supp.3d 1079

Adidas America, Inc., a Delaware corporation; and Adidas AG, a foreign entity, Plaintiffs,
v.
Cougar Sport, Inc., a New York corporation, Defendant.

Case No. 3:15–cv–01856–SI

United States District Court, D. Oregon.

Signed March 14, 2016

169 F.Supp.3d 1084

Stephen M. Feldman, Perkins Coie, LLP, 1120 N.W. Couch Street, Tenth Floor, Portland, OR 97209; R. Charles Henn Jr. and Charles H. Hooker III, Kilpatrick Townsend & Stockton, LLP, 1100 Peachtree Street, Suite 2800, Atlanta, GA 30309. Of Attorneys for Plaintiffs.

Kenneth R. Davis II and Parna A. Mehrbani, Lane Powell, PC, 601 S.W. Second Avenue, Suite 2100, Portland OR 97204; Anthony F. LoCicero and William M. Frank, Amster, Rothstein & Ebenstein, LLP, 90 Park Avenue, New York N.Y. 10016. Of Attorneys for Defendant.

OPINION AND ORDER

Michael H. Simon, District Judge.

In this lawsuit, adidas America, Inc. and adidas AG (collectively, “Adidas”) allege claims of trademark infringement, unfair competition, trademark dilution, and deceptive trade practices against Cougar Sport, Inc. (“Cougar Sport”). Cougar Sport has moved to dismiss the case for lack of personal jurisdiction and improper venue, or, alternatively, to transfer venue to the Southern District of New York. Dkt. 29. For the following reasons, Cougar Sport's motion is denied.

STANDARDS

A. Personal Jurisdiction

On a motion to dismiss for lack of personal jurisdiction brought pursuant to Fed.R.Civ.P. 12(b)(2), the plaintiff bears the burden of demonstrating that the court's exercise of jurisdiction is proper. See CollegeSource, Inc. v. AcademyOne, Inc., 653 F.3d 1066, 1073 (9th Cir.2011) (citing Boschetto v. Hansing, 539 F.3d 1011, 1015 (9th Cir.2008) ). When the court's determination is based on written materials rather than an evidentiary hearing, “the plaintiff need only make a prima facie showing of jurisdictional facts.” Bos c hetto, 539 F.3d at 1015 (quotation marks and citation omitted). In resolving the motion on written materials, the court must “only inquire into whether [the plaintiff's] pleadings and affidavits make a prima facie showing of personal jurisdiction.” Id . (alteration in original) (quotation marks omitted) (quoting Caruth v. Int'l Psychoanalytical Ass'n, 59 F.3d 126, 128 (9th Cir.1995) ). A plaintiff cannot solely rest on the bare allegations of its complaint, but uncontroverted allegations in the complaint must be taken as true. Id . “Conflicts between the parties over statements contained in affidavits must be resolved in the plaintiff's favor.” Id. (quoting Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797, 800 (9th Cir.2004) ).

B. Improper Venue

On a motion to dismiss for improper venue brought pursuant to Fed.R.Civ.P. 12(b)(3), a “defendant over whom personal jurisdiction exists but for whom venue is improper may move for dismissal or transfer under 28 U.S.C. § 1406(a).” Action Embroidery Corp. v. Atl. Embroidery, Inc., 368 F.3d 1174, 1181 (9th Cir.2004). 28 U.S.C. § 1406(a) provides, “The district court of a district in which is filed a case laying venue in the wrong division or district shall dismiss, or if it be in the interest of justice, transfer such case to any district or division in which it could have been brought.” The plaintiff bears the burden of showing that venue is proper. See Piedmont Label Co. v. Sun Garden Packing Co., 598 F.2d 491, 496 (9th Cir.1979) ( “Plaintiff had the burden of showing

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that venue was properly laid in the Northern District of California.”).

C. Transfer Venue

On a motion to transfer venue brought pursuant to 28 U.S.C. § 1404(a), a court may transfer any civil action “[f]or the convenience of the parties and witnesses, in the interests of justice.” 28 U.S.C. § 1404(a). The forum to which transfer of venue is sought must be a district court where the case “might have been brought.” Id . Under § 1404(a), the district court has discretion “to adjudicate motions for transfer according to an individualized, case-by-case consideration of convenience and fairness.” Stewar t Org., Inc. v. Ricoh Corp., 487 U.S. 22, 29, 108 S.Ct. 2239, 101 L.Ed.2d 22 (1988) (internal quotation marks and citation omitted); see Jones v. GNC Franchising, Inc., 211 F.3d 495, 498–99 (9th Cir.2000).

BACKGROUND

Plaintiff adidas America, Inc. is a Delaware corporation, and Plaintiff adidas AG is a German company. adidas America, Inc., the principal distributor of adidas AG's merchandise, is headquartered and maintains its principal place of business in Portland, Oregon. Adidas manufactures and sells apparel and footwear bearing its “Three Stripe” trademark. Cougar Sport is a New York corporation with its principal place of business in New York City, New York. Cougar Sport is a small company with four employees, including its President, Raymond Dayan. Cougar Sport manufactures athletic wear, which it sells on an international scale. Cougar Sport's merchandise can be found at stores such as Ross Stores, Inc. and Burlington Coat Factory, both of which have retail locations in Portland, Oregon. Cougar Sport additionally sells its merchandise online, including through its own website, cougarsportinc.com; Amazon.com; and eBay.com. Cougar Sport has knowingly sold five items to buyers located in Oregon.¹ Two of the buyers purchased the merchandise through Amazon.com. The third buyer used eBay.com.

Adidas's claims arise out of the “2 Pipe / 2 Stripe” design for apparel used on Cougar Sport's manufactured goods. Adidas alleges that Cougar Sport's “2 Pipe / 2 Stripe” design is a confusingly similar imitation of Adidas's trademarked “Three–Stripe” mark. Adidas alleges that Cougar Sport intentionally adopted its “2 Pipe / 2 Stripe” design to trade on the goodwill associated with Adidas's “Three–Stripe” mark and that the alleged imitation has diluted Adidas's “Three–Stripe” mark and caused Adidas substantial injury.

Adidas brings the following claims against Cougar Sport: (1) federal trademark infringement, in violation of 15 U.S.C. § 1114 ; (2) false representation, false description, and false designation, in violation of 15 U.S.C. § 1125(a) ; (3) unfair and deceptive trade practices, in violation of the statutes of several states including California, Colorado, Delaware, Georgia, Hawaii, Illinois, Maine, Minnesota, Nebraska, New Mexico, New York, Ohio, and Oklahoma; (4) common law trademark infringement and unfair competition; (5) and federal trademark dilution, in violation of 15 U.S.C. § 1125(c).

DISCUSSION

Cougar Sport asserts three arguments in its motion. First, Cougar Sport argues that this case should be dismissed under Fed.R.Civ.P. 12(b)(2) for lack of personal jurisdiction. Second, Cougar Sport argues

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that this case should be dismissed or transferred to the Southern District of New York under Fed.R.Civ.P. 12(b)(3) because venue is improper in this District. Third, Cougar Sport argues that the Court, alternatively, should exercise its discretion under 28 U.S.C. § 1404(a) to transfer this case to the Southern District of New York. Each argument is addressed in turn.

A. Personal Jurisdiction

Unless a federal statute governs personal jurisdiction, a district court applies the law of the forum state. See CollegeSource, Inc., 653 F.3d at 1073 (citing Fed.R.Civ.P. 4(k)(1)(A) ). Oregon's long-arm statute is co-extensive with constitutional standards. Capsugel Belgium NV v. Bright Pharma Caps, Inc., 2015 WL 7185463, at *2 (D.Or. Nov. 13, 2015) (citing Or. R. Civ. P. 4(L) ). Thus, this Court need only determine whether its exercise of personal jurisdiction over Cougar Sport would offend constitutional due process requirements. See Boschetto, 539 F.3d at 1015 ; see also Hydraulic Servocontrols Corp. v. Dale, 294 Or. 381, 384, 657 P.2d 211 (1982).

Due process requires that the defendant “have certain minimum contacts with [the forum] such that the maintenance of the suit does not offend ‘traditional notions of fair play and substantial justice.’ ” Int'l Shoe Co. v. Washington, 326 U.S. 310, 316, 66 S.Ct. 154, 90 L.Ed. 95 (1945) (quoting Milliken v. Meyer, 311 U.S. 457, 463, 61 S.Ct. 339, 85 L.Ed. 278 (1940) ). The Supreme Court has rejected the application of “mechanical” tests to determine personal jurisdiction. Id . at 319, 66 S.Ct. 154 ; see also Burger King Corp. v. Rudzewicz, 471 U.S. 462, 478, 105 S.Ct. 2174, 85 L.Ed.2d 528 (1985). Rather, a court should consider the “quality and nature of the activity in relation to the fair and orderly administration of the laws which it was the purpose of the due process clause to ensure.” Int'l Shoe, 326 U.S. at 319, 66 S.Ct. 154.

“There are two forms of personal jurisdiction that a forum state may exercise over a nonresident defendant—general jurisdiction and specific jurisdiction.” Boschetto, 539 F.3d at 1016. A court has general personal jurisdiction over a defendant whose contacts with the forum are “so ‘continuous and systematic’ as to render them essentially at home in the forum state.” Daimler AG v. Bauman, ––– U.S. ––––, 134 S.Ct. 746, 754, 187 L.Ed.2d 624 (2014) (citing Goodyear v. Dunlop Tires Operations, S.A. v. Brown, 564 U.S. 915,...