Bros. & Sisters in Christ, LLC v. Zazzle, Inc.
| Decision Date | 12 April 2021 |
| Docket Number | Case No. 4:20-CV-280-NAB |
| Parties | BROTHERS AND SISTERS IN CHRIST, LLC, Plaintiff, v. ZAZZLE, INC., Defendant. |
| Court | U.S. District Court — Eastern District of Missouri |
This matter is before the court on Defendant Zazzle, Inc.'s Motion to Dismiss for Lack of Personal Jurisdiction [Doc. 8.] Plaintiff Brothers and Sisters in Christ, LLC ("BASIC") filed a Memorandum in Opposition. [Doc. 14.] Defendant filed a Reply Memorandum. [Doc. 18.] For the following reasons, the court will GRANT Defendant's motion.
Plaintiff BASIC brought this action on February 19, 2020 asserting claims under the Lanham Act, 15 U.S.C. §§ 1051 et seq. for trademark infringement and dilution, unfair competition, and unfair business practices, and under "the anti-dilution laws of several states; the fair business practices and unfair and deceptive trade practices acts of several states; and the common law." [Doc. 1 ¶¶ 6, 19.] Plaintiff states that it is the owner and user of the trademark "love happens" for use with clothing, has used and advertised its trademark in the clothing industry for years, that competitors, customers, and potential customers know and associate the trademark with BASIC, and that as a result of Plaintiff's use and promotion of the mark, Plaintiff has built up andowns valuable goodwill that is symbolized by the mark. Id. ¶¶ 5, 20-24. Plaintiff alleges that Defendant knew of its trademark, intentionally misled customers and potential customers by using its webpage to advertise and sell trademark infringing clothing that utilized Plaintiff's mark, and sold at least one trademark infringing shirt to a resident of Missouri. Id. ¶¶ 8-11, 15, 25-26. Plaintiff alleges that, as a result of Defendant's actions, customers and potential customers are likely to mistakenly attribute Defendant's business and products with its own, that the public and customers are likely to be confused or deceived, and that Plaintiff's brand has been irreparably damaged. Id. ¶¶ 15-18, 27. Plaintiff seeks injunctive relief, monetary damages, Defendant's profits from trademark infringing sales, punitive damages, and attorneys' fees and costs. Id. ¶ 19.
"To survive a motion to dismiss for lack of personal jurisdiction, a plaintiff must make a prima facie showing that personal jurisdiction exists, which is accomplished by pleading sufficient facts 'to support a reasonable inference that the defendant can be subjected to jurisdiction within the state.'" K-V Pharm. Co. v. J. Uriach & CIA, S.A., 648 F.3d 588, 591-92 (8th Cir. 2011) (quoting Dever v. Hentzen Coatings, Inc., 380 F.3d 1070, 1072 (8th Cir. 2004)). "Although the evidentiary showing required at the prima facie stage is minimal, the showing must be tested, not by the pleadings alone, but by the affidavits and exhibits supporting or opposing the motion." Id. (internal citations and quotations omitted). The evidence must be viewed in the light most favorable to the plaintiff and all factual conflicts are resolved in its favor in deciding whether the plaintiff made the requisite showing. Id. ). "If jurisdiction is controverted, the plaintiff has the burden of proving facts supporting personal jurisdiction." Coen v. Coen, 509 F.3d 900, 904 (8th Cir. 2007) (citing Dever, 380 F.3d at 1072).
In this case, federal subject matter jurisdiction is predicated upon a federal statute. "Where a federal court's subject matter jurisdiction over a case arises from the existence of a federal question, the court may exercise personal jurisdiction over a defendant if the plaintiff has properly served the defendant with process under the forum's long arm statute and if the defendant has sufficient contacts with the forum state to satisfy procedural due process." Enter. Rent-A-Car Co., v. U-Haul Int'l, 327 F. Supp. 2d 1032, 1036 (E.D. Mo. 2004) (citing Omni Cap. Int'l, Ltd. v. Rudolf Wolff & Co., 484 U.S. 97, 104-05 (1987)).
"In adopting the long-arm statute, the Missouri legislature 'intended to provide for jurisdiction, within the specific categories enumerated in the statutes [e.g. transacting business or making a contract within the state,] to the full extent permitted by the due process clause.'" K-V Pharm. Co., 648 F.3d at 592 (quoting State ex rel. Metal Serv. Ctr. of Ga., Inc. v. Gaertner, 677 S.W.2d 325, 327 (Mo. 1984) (en banc)). See also Dairy Farmers of Am. v. Bassett & Walker Int'l, Inc., 702 F.3d 472, 475 (8th Cir. 2012) (collecting cases). Because the Missouri long-arm statute is not coextensive with the limits of due process, the analysis of each should be conducted separately. See Viasystems, Inc. v. EBM-Papst St. Georgen GmbH & Co., 646 F.3d 589, 593 n.2 (8th Cir. 2011); see also Andra v. Left Gate Prop. Holding, Inc., 453 S.W.3d 216, 225 (Mo. 2015) (en banc) (). As such, the court examines whether the suit arises out of an activity enumerated by the Missouri long-arm statute before examining whether the Defendant has sufficient minimum contacts with Missouri to due process requirements. Dairy Farmers of Am., 702 F.3d at 475-76.
Defendant argues that none of the alleged facts of Plaintiff's complaint are sufficient to establish that it can be subjected to jurisdiction within Missouri. [Doc. 8.] More specifically, Defendant asserts that the court cannot exercise general jurisdiction over it because Missouri is neither its place of incorporation nor its principal place of business, and that the court cannot exercise specific jurisdiction based on Plaintiff's allegations because Plaintiff's residence or principal place of business, Plaintiff's counsel's residence, its use of an interactive website to sell goods —without more—, and a single sale of an allegedly trademark-infringing product to a person affiliated with the Plaintiff are insufficient to establish minimum contacts with Missouri. [Doc. 9 at 7-9.] Defendant argues that specific jurisdiction must be based on contacts that the Defendant itself creates within the forum state, rather than contacts created by the Plaintiff or a third party. Id. at 9. While Defendant acknowledges that an internet purchase and delivery to a forum state may be sufficient to establish specific jurisdiction under certain circumstances, it contends that such circumstances are not found when a Plaintiff orchestrates an online purchase for the purpose of creating jurisdiction, or where the purchases was a mere result of a unilateral act by a third party. Id.
Plaintiff filed several exhibits together with its complaint, which show that an allegedly trademark-infringing t-shirt [Doc. 1-2] was ordered from Defendant in November 2019 [Doc. 1-4] and shipped to Clayton, Missouri [Doc. 1-1]. In response to Defendant's motion to dismiss, Plaintiff argues that federal law does not preclude this court from exercising specific jurisdiction over Defendant on the basis of an infringing sale made to a person associated with a Plaintiff. Plaintiff asserts that this court may exercise specific jurisdiction over Defendant based on the following circumstances: (1) Defendant operates an interactive website which sells goods into Missouri; (2) Defendant's website offered trademark infringing goods into Missouri; (3)Defendant actually sold trademark infringing goods into Missouri; (4) the State of Missouri has an interest in protecting its local businesses from predatory practices carried out by foreign businesses using the internet; and that (5) "with electronic filing, this District Court is not inconvenient to Defendant." [Doc. 14 at 8-10.]
Plaintiff asserts that Defendant admits that it "operat[es] an interactive website," "has sold other goods into Missouri," "admits the infringing good was purchased from Defendant's website" and "offered the infringing good for sale into Missouri." [Doc. 14 at 4.] Plaintiff argues that such admissions support the exercise of personal jurisdiction by this court because "[o]ffering or selling an infringing good is considered a tort" and that "[m]erely offering to sell an infringing good to [a] Missourian constitutes the commission of a tort in Missouri and satisfies the Missouri Long Arm Statute." Id. at 5. Plaintiff further asserts that Defendant's argument is not supported by law because the cases cited by Defendant have either been overturned or are factually distinguishable from the instant case. Specifically, Plaintiff stresses that Defendant Zazzle has a "fully interactive website . . . which allows full internet commerce and sales to be made" "in Missouri and elsewhere," and that the cases supporting Defendant's argument are based on collateral estoppel. Id. at 7. Plaintiff argues that because Defendant operates an interactive website from which it sells goods into Missouri, and from which it both offered and sold a trademark infringing good, and because trademark is tortious in nature, that Defendant has "strong and extensive contacts with Missouri." Id. at 8-9. Plaintiff also argues that its status as a "small Missouri LLC" and the availability and convenience of electronic filing should weigh on the court's assessment of whether it would be proper to exercise personal jurisdiction over Defendant in the instant action. Plaintiff requests leave to conduct limited jurisdictional discovery regarding the operation of Defendant's website and Defendant's sales into Missouri, and requests that the court transfer this case to "aCalifornia District Court with personal jurisdiction" in the event that this court is unable to exercise personal jurisdiction over Defendant. [Doc. 1 at 1.]
In its reply, Defendant reiterates that the residence of Plaintiff or that of Plain...
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