Autodesk, Inc. v. Kobayashi + Zedda Architects Ltd., Case No. 15–cv–03822–MEJ

• Court: United States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Northern District of California
• Writing for the Court: MARIA–ELENA JAMES, United States Magistrate Judge
• Citation: 191 F.Supp.3d 1007
• Parties: AUTODESK, INC., Plaintiff, v. KOBAYASHI + ZEDDA ARCHITECTS LTD., Defendant.
• Decision Date: 22 April 2016
• Docket Number: Case No. 15–cv–03822–MEJ

191 F.Supp.3d 1007

AUTODESK, INC., Plaintiff,
v.
KOBAYASHI + ZEDDA ARCHITECTS LTD., Defendant.

Case No. 15–cv–03822–MEJ

United States District Court, N.D. California.

Signed April 22, 2016

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Andrew Scott Mackay, Eric W. Doney, Eric Andrew Handler, Julie E. Hofer, Donahue Fitzgerald LLP, Oakland, CA, for Plaintiff.

Steven C. Vondran, The Law Offices of Steven C. Vondran, Newport Beach, CA, for Defendant.

ORDER RE: MOTION TO DISMISS

MARIA–ELENA JAMES, United States Magistrate Judge

INTRODUCTION

Defendant Kobayashi + Zedda Architects Ltd., dba KZA ("Defendant") moves to dismiss Plaintiff Autodesk, Inc.'s ("Plaintiff") copyright infringement action for lack of personal jurisdiction under Federal Rule of Civil Procedure ("Rule") 12(b)(2), improper venue under Rule 12(b)(3), and failure to state a claim upon

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which relief can be granted under Rule 12(b)(6). Dkt. No. 21. Plaintiff filed an Opposition (Dkt. No. 26), and Defendant filed a Reply (Dkt. No. 33). The Court finds this matter suitable for disposition without oral argument and VACATES the May 5, 2016 hearing. See Fed. R. Civ. P. 78(b) ; Civ. L.R. 7–1(b). Having considered the parties' positions, relevant legal authority, and the record in this case, the Court DENIES Defendant's Motion for the following reasons.

BACKGROUND

Plaintiff brings this action for copyright infringement pursuant to the Copyright Act, 17 U.S.C. § 501, et seq. Compl. ¶ 3, Dkt. No. 1. Plaintiff is a Delaware corporation with its principal place of business in San Rafael, California. Id. ¶ 1. It develops, publishes, and markets computer software programs, including computer-aided design ("CAD") software products. Id. ¶¶ 7, 12; Alioto Decl. ¶ 4, Dkt. No. 30. In connection with its software products, Plaintiff owns copyrights that are the subject of registrations with the United States Copyright Office. Compl. ¶ 8.

Defendant is an architectural design firm that uses CAD software to render architectural designs for its clients. Id. ¶ 17; Bergeron Decl. ¶ 2, Dkt. No. 28. It began doing business with Plaintiff over a decade ago when, in June of 2002, Defendant purchased a license for Autodesk^®AutoCAD LT^®2002 software and registered that license with Plaintiff. Alioto Decl. ¶ 11. Plaintiff's written license agreement for the product states that it "shall be governed by the laws of the State of California." Baker Decl. ¶ 5, Ex. A (AutoCAD LT^®2002 Software License Agreement) § 9(B), Dkt. No. 29. The agreement also provides that Plaintiff is located at 111 McInnis Parkway, San Rafael, California 94903. Id. § 7.

Over the next thirteen years, Defendant purchased licenses for: (1) Autodesk^®AutoCAD LT^®2004 software, which Defendant registered with Plaintiff on December 12, 2003; (2) Autodesk^®AutoCAD^®2011 software, which Defendant registered with Plaintiff on September 21, 2010 (and which Defendant subsequently upgraded into a more current version); (3) Autodesk^® AutoCAD LT^®2012 software, which Defendant registered with Plaintiff on September 21, 2011 (and which Defendant subsequently upgraded into a more current version); (4) Autodesk^®AutoCAD LT^®2013 software, which Defendant registered with Plaintiff on May 10, 2012; (5) Autodesk^®AutoCAD^®2015 software, which Defendant registered with Plaintiff on November 19, 2014; (6) Autodesk^®Building Design Suite Premium 2015 software, a bundle of various software products which Defendant registered with Plaintiff on February 4, 2015 (and which Defendant subsequently upgraded into a more current version); and (7) Autodesk^®Building Design Suite Premium 2016 software, also a bundle of various software products, which Defendant has not yet activated. Alioto Decl. ¶ 11.

As part of each of these licensure purchases, Plaintiff contends Defendant entered into and expressly agreed to the terms of its applicable written license service agreements ("LSAs"). Baker Decl. ¶ 5. Plaintiff contends Defendant affirmatively consented to the terms of the applicable LSAs when it initially accessed the copies of the Autodesk software products for which it had purchased licenses, a process that in each instance required Defendant to click through a confirmation screen on its computers to accept and agree to the LSAs in order to access the associated software. Id. ¶ 6.

Plaintiff filed its Complaint on August 20, 2015, alleging Defendant copied and

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reproduced certain Autodesk products without Plaintiff's authorization and circumvented technological measures that control access to the products. Compl. ¶ 20. Plaintiff alleges Defendant's acts constitute willful, intentional, and malicious infringement of Plaintiff's copyrights under the Copyright Act. Id.

Defendant moves to dismiss on three grounds: (1) it lacks the requisite "minimum contacts" with California to establish personal jurisdiction here; (2) venue is improper because a substantial part of the alleged events did not occur in California; and (3) Plaintiff fails to state a cause of action for copyright infringement. Mot. at 3.

PERSONAL JURISDICTION

Defendant first argues personal jurisdiction is lacking because "[t]here is no circumstance where [it] would have had any reason to believe that Autodesk, Inc., a DELAWARE corporation would ‘bear the brunt’ in California or sue them in Federal Court in San Francisco for alleged copyright infringement of their ‘certain’ (but not specified) software products." Id. at 5–6. Defendant notes it is a Canadian company, nearly two thousand miles away, and contends the burden of litigating in a foreign forum is fundamentally unfair. Id. at 7. It argues that "if Plaintiff truly believes there is copyright infringement going on they should file suit where Defendant is located." Id.

In response, Plaintiff argues Defendant's alleged acts of deliberate and willful infringement caused irreparable and substantial harm in this District, where Plaintiff is headquartered and has its principal place of business. Opp'n at 6. Plaintiff further argues Defendant, at a minimum, should have known Plaintiff's principal place of business is in this District. Id.

A. Legal Standard

Rule 12(b)(2) governs motions to dismiss for lack of personal jurisdiction. The plaintiff bears the burden of establishing that the court has jurisdiction over the defendant. Pebble Beach Co. v. Caddy , 453 F.3d 1151, 1154 (9th Cir. 2006). However, this demonstration requires that the plaintiff "make only a prima facie showing of jurisdictional facts to withstand the motion to dismiss." Love v. Assoc'd. Newspapers, Ltd. , 611 F.3d 601, 608 (9th Cir. 2010). To make this showing, "the plaintiff need only demonstrate facts that if true would support jurisdiction over the defendant." Ballard v. Savage , 65 F.3d 1495, 1498 (9th Cir. 1995). "Uncontroverted allegations in the complaint must be taken as true, and conflicts over statements contained in affidavits must be resolved in [plaintiff's] favor." Love , 611 F.3d at 608. Otherwise, a defendant could prevent a plaintiff from meeting his burden simply by contradicting the plaintiff's affidavits. Farmers Ins. Exch. v. Portage La Prairie Mut. Ins. Co. , 907 F.2d 911, 912 (9th Cir. 1990).

Courts properly exercise personal jurisdiction over a defendant "if it is permitted by a long-arm statute and if the exercise of jurisdiction does not violate federal due process." Pebble Beach Co. , 453 F.3d at 1154. "Federal courts ordinarily follow state law in determining the bounds of their jurisdiction over persons." Daimler AG v. Bauman , –––U.S. ––––, 134 S.Ct. 746, 753, 187 L.Ed.2d 624 (2014). Because "California's long-arm statute allows the exercise of personal jurisdiction to the full extent permissible under the U.S. Constitution," a court's inquiry centers on whether exercising jurisdiction comports with due process. Id. ; see Cal. Civ. Proc. Code § 410.10 ("A court of this state may exercise jurisdiction on any basis not inconsistent with the Constitution of this state or of the United States."). Due

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process requires that nonresident defendants have "minimum contact" with the forum state such that the exercise of personal jurisdiction "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) (internal quotations omitted).

A court may exercise either general or specific jurisdiction over a nonresident defendant. Helicopteros Nacionales de Colombia, S.A. v. Hall , 466 U.S. 408, 414, 104 S.Ct. 1868, 80 L.Ed.2d 404 (1984). General jurisdiction exists where a defendant has "substantial" or "continuous and systematic" contacts with the forum. Id. at 415, 104 S.Ct. 1868. If general jurisdiction exists, the forum has jurisdiction over the defendant regardless of where the events giving rise to the litigation occurred. Id.

If a defendant's contacts with the forum are not sufficient to establish general jurisdiction, specific jurisdiction may still be shown. The Court may assert specific jurisdiction...