Fraserside IP L.L.C. v. Gamma Entm't., Inc.
| Decision Date | 05 April 2012 |
| Docket Number | No. C11-3056-MWB,C11-3056-MWB |
| Parties | FRASERSIDE IP L.L.C., an Iowa Limited Liability Company, Plaintiff, v. GAMMA ENTERTAINMENT, INC., a Canadian Entity, d/b/a PornerBros.com and WILD BLUE MEDIA, d/b/a PornerBros.com, www.pornerbros.com, and JOHN DOES 1-100 and JOHN DOE COMPANIES 1-100, Defendants. |
| Court | U.S. District Court — Northern District of Iowa |
DEFENDANTS' MOTION TO
DISMISS
TABLE OF CONTENTS
Over fifty years ago, the United States Supreme Court recognized that technological advances affecting the nature of commerce would require the doctrine of personal jurisdiction to adapt and evolve along with those advances. See Hanson v. Denckla, 357 U.S. 235, 250-52 (1958) (). As predicted, the advent of internet commerce has forced courts to confront new challenges regarding personal jurisdiction and venue. Plaintiff, a producer of adult motion pictures, alleges that defendants, a Canadian corporation and its Barbadian subsidiary, have willfully violated plaintiff's copyright and trademarks by offering plaintiff's motion pictures on an Internet website they operate. However, the merits of plaintiff's claims are not presently before me. Rather, I must resolve, inter alia, whether plaintiff has made a prima facie showing that defendants have sufficient minimum contacts with Iowa to satisfy due process and permit the exercise of personal jurisdiction over them, and whether venue in this district is proper.
On November 7, 2011, plaintiff Fraserside IP L.L.C. ("Fraserside") filed a Complaint against Gamma Entertainment ("Gamma") and Wild Blue Media ("Wild Blue"), doing business as PornerBros.com, and operating the website www.PornerBros.com (collectively "the Gamma defendants" unless otherwise indicated), John Does, and John Doe Companies, alleging the following causes of action: copyright infringement, in violation of 17 U.S.C. §§ 106 and 501 et seq.; contributory copyright infringement, in violation of 17 U.S.C. §§ 106 and 501 et seq.; vicarious copyright infringement, in violation of 17 U.S.C. §§ 106 and 501 et seq.; inducing copyright infringement, in violation of 17 U.S.C. §§ 106 and 501 et seq.; false designation of origin, in violation of 15 U.S.C. § 1125(a); and, dilution of trademark, in violation of 15 U.S.C. § 1125(c).
On January 30, 2012, the Gamma defendants filed a Motion to Dismiss and Motion to Strike (docket no. 14). In their motion, the Gamma defendants contend that they are not subject to personal jurisdiction in Iowa and the Complaint must be dismissed pursuant to Federal Rule of Civil Procedure 12(b)(2).1 The Gamma defendants also contend that, even if I were to find that the Gamma defendants are subject to personal jurisdiction in Iowa, the Complaint must be dismissed for improper venue under Federal Rule of Civil Procedure 12(b)(3) and/or forum non conveniens. Alternatively, the Gamma defendants move to strike various portions of the Complaint pursuant to Federal Rule of Civil Procedure 12(f).
On February 21, 2012, Fraserside filed a resistance to the Gamma defendants' motion. Fraserside argues that the Gamma defendants' Internet activities establish a sufficient basis for specific personal jurisdiction. Fraserside also contends that the facts support a finding of general jurisdiction over the Gamma defendants. Fraserside further asserts that jurisdiction over the Gamma defendants is proper under Federal Rule of Civil Procedure 4(k)(2). Fraserside also argues that venue is proper in this district and dismissal based on forum non conveniens is unwarranted. Finally, Fraserside argues that the Gamma defendants' Motion to Strike should be denied. The Gamma defendants filed a reply brief on February 28, 2012. On March 5, 2012, Fraserside filed a Supplemental Briefing in which it seeks to "clarify" statements made by Robert Bailey in his declaration.
On a motion to dismiss, I must assume all facts alleged in the Complaint are true, and must liberally construe those allegations. Conley v. Gibson, 355 U.S. 41, 45-46 (1957). The following factual background is drawn from the Complaint, documents attached to the Complaint, public records, and affidavits submitted by the parties.2
Plaintiff Fraserside is a wholly owned subsidiary of Fraserside Holdings, Ltd. ("Fraserside Holdings"). Fraserside was created in October 2010. Fraserside Holdings is a Cyprus-based company. Fraserside Holdings is a producer of adult motion pictures. Its adult films are distributed on a wide range of platforms, including mobile handsets in 45 countries, digital television in 24 countries, broadband internet, a South American cable channel, DVDs, and on demand and subscription based services on the Internet. Fraserside Holdings, in turn, is a wholly owned subsidiary of Private Media Group, Inc. ("Private Media"), a Nevada Corporation. Fraserside, its parent and sibling companies, collectively, are known commercially as "Private." Private has been producing adult entertainment materials since 1968 in a variety of forms, including print magazines, adult films, and online digital download and streaming.
Fraserside has protected its films through United States copyright registration. Since 1975, Fraserside Holdings has registered its intellectual property in more than 25countries, including Australia, Brazil, Canada, Chile, Denmark, Europe, France, Germany, India, Italy, Japan, Mexico, Norway, New Zealand, Panama, Philippines, Poland, South Africa, Spain, Sweden, Switzerland, Taiwan, Thailand, United Kingdom, and Venezuela.
Fraserside Holdings has protected its trade names, PRIVATE, PRIVATE GOLD, PIRATE, and THE PRIVATE LIFE OF, through United States trademark and service mark registrations. Fraserside Holdings's PRIVATE trademark and service mark have been in continuous use in commerce since 1968. PRIVATE is United States Trademark Registration No. 1014975. It was registered on July 1, 1975, and renewed on September 6, 2005. Fraserside Holdings's PRIVATE GOLD trademark and service mark have been in continuous use in commerce since 2004. PRIVATE GOLD is United States Trademark Registration No. 3188677, and was registered on December 26, 2006. Fraserside Holdings's PRIVATE trademark and service mark design of two human female figures has been in continuous use in commerce since December 2004. PRIVATE is United States Trademark Registration No. 3389749, and was registered on May 28, 2008. Fraserside Holdings's PIRATE trademark and service mark have been in continuous use in commerce since May 24, 2000. PIRATE is United States Trademark Registration No. 3137445, and was registered on September 5, 2006. Fraserside Holdings's THE PRIVATE LIFE OF trademark and service mark have been in continuous use in commerce since September 1999. THE PRIVATE LIFE OF is United States Trademark Registration No. 2875138, and was registered on August 17, 2004.
Defendant Gamma is a private corporation, incorporated in Quebec, Canada, which specializes in complex information technology solutions and web hosting for the adult entertainment industry. Gamma's principal offices are located in Montreal, Quebec, Canada. Defendant Wild Blue is a wholly owned subsidiary of Gamma. Wild Blue'sprincipal office is located in Bridgetown, Barbados. In August 2011, Gamma purchased and began to run an online adult entertainment website, www.PornerBros.com. The PornerBros website is visited daily by over 2,500,000 internet users worldwide. Roughly 21.1 percent of the website's visitors are from United States. As of November 7, 2011, the PornerBros website was the 1,049 ranked website on the internet according to the number of visitors to the site. The PornerBros website's "Terms of Use" offers the following description of the website:
PornerBros's Terms of Use at 1; Plaintiff's Ex. F.
The Gamma defendants operate the PornerBros website as on online internet...
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