Cfa Institute v. Financial Analysts of India

• Citation: 551 F.3d 285
• Decision Date: 09 January 2009
• Docket Number: No. 07-1970.,07-1970.
• Parties: CFA INSTITUTE, Plaintiff-Appellee, v. INSTITUTE OF CHARTERED FINANCIAL ANALYSTS OF INDIA, Defendant-Appellant.
• Court: U.S. Court of Appeals — Fourth Circuit

551 F.3d 285

CFA INSTITUTE, Plaintiff-Appellee, v. INSTITUTE OF CHARTERED FINANCIAL ANALYSTS OF INDIA, Defendant-Appellant.

No. 07-1970.

United States Court of Appeals, Fourth Circuit.

Argued: October 30, 2008.

Decided: January 9, 2009.

ARGUED:

Robert Phillip Charrow, Greenberg Traurig, Washington, D.C., for Appellant. Stephen Patrick Demm, Hunton & Williams, Richmond, Virginia, for Appellee.

ON BRIEF:

G. Roxanne Elings, David Saenz, Natalia McNamara, Greenberg Traurig, L.L.P., New York, New York, for Appellant. W. Jeffery Edwards, William H. Wright, Jr., Hunton & Williams, Richmond, Virginia, for Appellee.

Before WILLIAMS, Chief Judge, and NIEMEYER and KING, Circuit Judges.

Affirmed by published opinion. Judge KING wrote the opinion, in which Chief Judge WILLIAMS and Judge NIEMEYER joined.

OPINION

KING, Circuit Judge:

The Institute of Chartered Financial Analysts of India ("ICFAI") appeals from the district court's September 2007 reinstatement of a 1998 default judgment in favor of the plaintiff, the CFA Institute.¹ By its ruling, the court determined that it possessed personal jurisdiction over ICFAI under Federal Rule of Civil Procedure 4(k)(2). On appeal, ICFAI contends that the court erred in its application of Rule 4(k)(2) and lacked personal jurisdiction in these proceedings. As explained below, we conclude that it was unnecessary for the court to reach and address Rule 4(k)(2), because it possessed jurisdiction over ICFAI under Virginia's long-arm statute. We thus affirm the judgment.

I.

At the outset, we identify and briefly explain the three rulings at issue in this appeal. The first is the October 9, 1998 default judgment entered in favor of the CFA Institute and against ICFAI, premised on the existence of personal jurisdiction over ICFAI under the Virginia long-arm statute. That ruling is comprised of a set of findings of fact and conclusions of law (the "1998 Opinion"), and an order entering default judgment (the "1998 Order"). See Inst. of Chartered Fin. Analysts v. Inst. of Chartered Fin. Analysts of India, No. 3:98-cv-00417 (E.D.Va. Oct. 9, 1998).² By the second ruling, issued on May 8, 2007, the district court vacated the 1998 Order on the ground that it lacked personal jurisdiction over ICFAI under Virginia's long-arm statute when it entered the default judgment in 1998. See CFA Inst. v. Inst. of Chartered Fin. Analysts of India, No. 3:98-cv-00417 (E.D.Va. May 8, 2007) (the "Relief Order"). Finally, by the third ruling, made on September 4, 2007, the court reinstated the 1998 Order. That ruling is comprised of a memorandum opinion (the "Reinstatement Opinion") and an order (the "Reinstatement Order"). See CFA Inst. v. Inst. of Chartered Fin. Analysts of India, No. 3:98-cv-00417 (E.D.Va. Sept. 4, 2007).³ In the Reinstatement Opinion, the court explained that, although it lacked personal jurisdiction over ICFAI under Virginia's long-arm statute, it possessed such jurisdiction under Rule 4(k)(2).

A.

Turning to the pertinent facts of this case, the CFA Institute is a non-profit association based in Charlottesville, Virginia.⁴ It was founded in 1959 "for the purposes of administering a unique and intensive program of specialized study and testing in the field of financial analysis and [conferring] upon qualifying candidates the right to use a charter reflecting membership" (the "CFA program"). 1998 Opinion 2. The CFA Institute owns and uses the trademark "Chartered Financial Analyst" (the "CFA mark").⁵ ICFAI, established in 1984, is an Indian corporation headquartered in Hyderabad, India. Its purpose is the "study of corporate finance, financial services and financial analysis" in India. Id. at 7. The CFA Institute and ICFAI are separate business entities.

The parties' underlying relationship began in about 1984, when ICFAI's founder, N.J. Yasaswy, travelled to Charlottesville and approached CFA Institute officials about establishing a CFA program in India.⁶ Although nothing was apparently agreed upon during the Charlottesville meeting, CFA Institute representatives travelled to India in August 1985, and a business agreement was then reached (the "License Agreement"). Pursuant thereto, the CFA Institute authorized ICFAI to establish a CFA program in India. In an apparent effort to reflect this new relationship ICFAI changed its corporate name from the "Institute of Certified Financial Analysts of India" to the "Institute of Chartered Financial Analysts of India."

ICFAI representatives visited the CFA Institute in Virginia on at least one additional occasion, when, in 1987, Yasaswy and another ICFAI official attended a CFA Institute board meeting in Virginia as "special guests of honour." J.A. 260.⁷ Furthermore, in November 1994, ICFAI's executive director, Subhash Sarnikar, directed, among other correspondence, a letter to the CFA Institute, requesting expanded permission to use CFA Institute intellectual property in India.

In 1995, the relationship between the parties began to sour when the CFA Institute ascertained that ICFAI was violating the License Agreement by marketing its version of the CFA program in the United States and Canada through written and online materials. Concerned that ICFAI's use of the CFA program in these countries could confuse consumers, the CFA Institute notified ICFAI that it was in violation of the License Agreement. As a result, on December 18, 1995, ICFAI agreed to recognize the CFA Institute's superior rights in the CFA mark and to cease using it in the United States and Canada (the "Settlement Agreement").

Unfortunately, the Settlement Agreement survived less than two years. In January 1997, suspecting that ICFAI was violating the Settlement Agreement, the CFA Institute terminated the License Agreement. A year thereafter, on January 13, 1998, ICFAI responded by notifying the CFA Institute by letter that it would no longer abide by the Settlement Agreement.

B.

As a result of the foregoing, the CFA Institute, on July 16, 1998, filed its Complaint against ICFAI in the Eastern District of Virginia, alleging trademark infringement and unfair competition under the Lanham Act, plus breach of contract. When ICFAI failed to appear in the proceedings, the district court, by its 1998 Order, entered a default judgment against ICFAI. The default judgment, inter alia, enjoined ICFAI from using the CFA mark, promoting employment opportunities for ICFAI charter-holders in the United States and Canada, and holding itself out as in any way affiliated with the CFA Institute.⁸

In its 1998 Opinion, the district court identified several of ICFAI's contacts with the CFA Institute in Virginia that supported the exercise of personal jurisdiction in the Commonwealth. From those facts, the court concluded that the CFA Institute's claims "arose out of conduct by ICFAI in the Commonwealth of Virginia"; that "ICFAI intentionally patterned its `CFA Program' on the plaintiffs' well established program based in the Commonwealth of Virginia"; that ICFAI "sent representatives to the Commonwealth of Virginia to meet with [the CFA]"; and that "ICFAI representatives attended [CFA] Board meetings" and "had meetings" with CFA officers in Virginia. 1998 Opinion 15. Thus, the court concluded that it possessed personal jurisdiction over ICFAI under Virginia's long-arm statute.⁹ Additionally, the court observed that ICFAI had waived any objection to personal jurisdiction by directing correspondence to the court.¹⁰

More than eight years after the 1998 Order, on December 22, 2006, ICFAI appeared before the district court and requested it to reopen the proceedings and vacate the default judgment. ICFAI sought such relief under Federal Rule of Civil Procedure 60(b)(4), claiming that the default judgment was void because the court lacked personal jurisdiction when it was entered. In support of its Rule 60(b)(4) motion, ICFAI maintained that Indian currency regulations had prevented it from retaining counsel in 1998, and it was thus unable to timely contest the Complaint. On May 8, 2007, observing that it "appear[ed] that the Court lacked personal jurisdiction at the time default judgment was entered," the court granted ICFAI's Rule 60(b)(4) motion and vacated the 1998 Order. Relief Order.¹¹

On May 23, 2007, the CFA Institute requested that the district court reconsider its Relief Order and reinstate the 1998 Order. This request was predicated on two separate grounds. First, the CFA Institute contended that, pursuant to Federal Rule of Civil Procedure 12(h)(1), ICFAI had waived its objection to personal jurisdiction by virtue of the five letters it submitted to the court in 1998. Second, the CFA Institute asserted that, even if ICFAI's contacts with Virginia failed to satisfy Virginia's long-arm statute, its contacts with the United States as a whole warranted the court's exercise of personal jurisdiction under Rule 4(k)(2).¹²

Three months later, on September 4, 2007, the district court filed its Reinstatement Opinion and Order, reinstating the 1998 Order.¹³ The Reinstatement Opinion summarized the procedural posture of the case, explaining that the court, in making its Relief Order, had "found merit in [ICFAI's] arguments and found that it lacked personal jurisdiction over [ICFAI] in 1998." Reinstatement Opinion 1. The court then addressed the CFA Institute's contentions, first concluding that the waiver argument was "without merit." Id. at 2. Although a party may waive its objection to personal jurisdiction under Rule 12(h), the court explained, the party does not waive an objection to jurisdiction by failing to respond or appear. In these proceedings, it was "undisputed that [ICFAI] neither filed any responsive pleadings nor made a general appearance." Id. And, the court observed, "the letters written by [ICFAI] to the Court were deemed improper and stricken from the record." Id. Thus, it found no basis from which to conclude that ICFAI had waived an objection to personal jurisdiction...