Herer v. Ah Ha Publ'g, LLC

• Decision Date: 25 February 2013
• Docket Number: Case No. 3:12–cv–01451–SI.
• Citation: 927 F.Supp.2d 1080
• Parties: Mark HERER, personal representative of the Estate of Jack Herer, Plaintiff, v. AH HA PUBLISHING, LLC, a Texas limited liability company, and Michael Kleinman, Defendant.
• Court: U.S. District Court — District of Oregon

927 F.Supp.2d 1080

Mark HERER, personal representative of the Estate of Jack Herer, Plaintiff,

v.AH HA PUBLISHING, LLC, a Texas limited liability company, and Michael Kleinman, Defendant.

Case No. 3:12–cv–01451–SI.

United States District Court, D. Oregon.

Feb. 25, 2013.

Leonard D. DuBoff, The DuBoff Law Group, LLC, Scott T. Cliff, The Law Office of Scott T. Cliff, Portland, OR, for Plaintiff.

Robert Swider, Swider Medeiros Haver, LLP, Portland, OR, for Defendants.

OPINION AND ORDER

SIMON, District Judge.

This copyright dispute concerns the printing of a book, The Emperor Wears No Clothes: Cannabis and the Conspiracy Against Marijuana (the “Work”), written by the now deceased Jack Herer. Plaintiff Mark Herer brings suit on behalf of the author's estate, alleging Defendants Ah Ha Publishing, LLC, (“Ah Ha”) and Michael Kleinman have produced and distributed and continue to produce and distribute infringing copies of the Work. Jack Herer held the Work's copyright, registered with the United States Copyright Office on April 20, 1990, and it passed to his estate on his death. Defendants have filed a motion to dismiss pursuant to Fed. R. Civ. P. 12(b)(2), for lack of personal jurisdiction, and Fed. R. Civ. P. 12(b)(3), for improper venue; alternatively, Defendants argue that venue in this case should be transferred to the United States District Court for the Western District of Texas where a previously-filed similar case is pending. (Doc. 9.)

For the reasons stated below, this case is transferred to the United States District Court for the Western District of Texas, Austin Division.

BACKGROUND

Mark Herer, personal representative of the estate of Jack Herer, brings suit against Ah Ha Publishing, LLC, and Michael Kleinman (collectively “Defendants”), alleging a claim for copyright infringement. Compl. ¶ 6–16. Defendants filed a motion to dismiss, arguing that the Court cannot assert personal jurisdiction over them and that the District of Oregon is an improper venue for this suit. Alternatively, Defendants seek to terminate the case pending before this Court in favor of an earlier filed action pending in the United States District Court for the Western District of Texas.

Mr. Kleinman asserts that he was business partners with Jack Herer from 1996 through 2010. Kleinman Decl., Ex. 1, at 2. During this partnership, Mr. Kleinman and Jack Herer published the eighth edition of Jack Herer's book, The Emperor Wears No Clothes: Cannabis and the Conspiracy Against Marijuana. Id. Mr. Kleinman further contends that he and Jack Herer entered into an oral agreement that provided for Mr. Kleinman to advance funds to Jack Herer as pre-paid royalties. Id. During this time, the book went through four printings, which were paid for with funds advanced by Mr. Kleinman. Id. at 2–3. A formal agreement was never executed. Id. at 3.

Mr. Kleinman operated under the name Ah Ha Publishing for many years, but only recently established Ah Ha Publishing as a Texas limited liability company. Id. at 4. Mr. Kleinman alleges that all rights relating to the present cause of action were assigned to Ah Ha at its formation. Id. Neither Mr. Kleinman nor Ah Ha maintain a website or have any business contacts with Oregon. See Kleinman Decl. ¶ 3–19. Mr. Herer asserts that Defendants provided copies of the Work to distributors in Washington and California, who “generally do not limit their sales to [the] state of domicile.” Herer Decl. ¶¶ 3–5. Mr. Kleinman has traveled to Oregon to work on specific voter initiatives, and he sent a gift to Mark Herer in Oregon at Mark Herer's request, consisting of $10,000 and 5,000 copies of the Work, to help with Jack Herer's funeral expenses. Kleinman Decl. ¶¶ 4, 24.

Jack Herer died in 2010, and his will was probated in Oregon. Kleinman Decl., Ex. 1, at 4. In a letter dated November 17, 2011, the estate requested that Mr. Kleinmanproduce a license agreement demonstrating Kleinman's right to publish the Work. Id. at 4, 10. Mark Herer was unsatisfied with the evidence presented by Mr. Kleinman. Id. at 4–5. On May 21, 2012, Ah Ha filed a declaratory judgment action in Texas state court, located in Travis County, against Mark Herer, as the representative of the estate. Kleinman Decl. ¶ 20.

The present action was filed in this Court by Mr. Herer against Mr. Kleinman and Ah Ha on August 8, 2012. On September 12, 2012, Mr. Herer removed the earlier-filed suit in Texas state court to the United States District Court for the Western District of Texas. Kleinman Decl. ¶ 21. On January 7, 2013, the court in the Texas suit denied Mr. Herer's motion to dismiss for lack of personal jurisdiction and improper venue, and it denied his request to transfer venue to this district. Order, Ah Ha Publishing, LLC v. Herer ex rel. Estate of Herer, Case No. A–12–CA–844–SS (W.D.Tex. Jan. 7, 2013) (ECF No. 26).

STANDARDS

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 Dole Food Co., Inc. v. Watts, 303 F.3d 1104, 1108 (9th Cir.2002) (citing Myers v. Bennett Law Offices, 238 F.3d 1068, 1071 (9th Cir.2001)). 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.” Id. (quotations omitted). In resolving the motion, the court may look at pleadings and affidavits, taking uncontroverted allegations as true and resolving all factual disputes in the plaintiff's favor. Id. (citing AT & T v. Compagnie Bruxelles Lambert, 94 F.3d 586, 588 (9th Cir.1996)).

On a motion to dismiss for improper venue brought pursuant to Fed.R.Civ.P. 12(b)(3), the “pleadings need not be accepted as true, and facts outside the pleadings may be considered.” Doe 1 v. AOL LLC, 552 F.3d 1077, 1081 (9th Cir.2009) (citing Argueta v. Banco Mexicano, S.A., 87 F.3d 320, 324 (9th Cir.1996)).

DISCUSSION

A. Venue and Personal Jurisdiction

Defendants argue that the Court may not exercise personal jurisdiction over them and that venue in the District of Oregon is improper. In single-district states, as is Oregon, personal jurisdiction and venue in copyright cases are intertwined and can be analyzed together. “The venue of suits for infringement of copyright is not determined by the general provision governing suits in the federal district courts,” but instead by 28 U.S.C. § 1400(a). Lumiere v. Mae Edna Wilder, Inc., 261 U.S. 174, 176, 43 S.Ct. 312, 67 L.Ed. 596 (1923); 28 U.S.C. § 1400(a). Proper venue is found “in the district in which the defendant or his agent resides or may be found.” 28 U.S.C. § 1400(a). The Ninth Circuit has interpreted the language of the statute “to allow venue ‘in any judicial district in which the defendant would be amenable to personal jurisdiction if the district were a separate state.’ ” Brayton Purcell LLP v. Recordon & Recordon, 606 F.3d 1124, 1128 (9th Cir.2010) (quoting Columbia Pictures Television v. Krypton Broad. of Birmingham, Inc., 106 F.3d 284, 289 (9th Cir.1997), rev'd on other grounds Feltner v. Columbia Pictures Television, Inc., 523 U.S. 340, 118 S.Ct. 1279, 140 L.Ed.2d 438 (1998)). As such, venue is proper if this Court may exercise personal jurisdiction over Defendants.

Unless a federal statute governs personal jurisdiction, a district court applies the law of the forum state. See Boschetto v. Hansing, 539 F.3d 1011, 1015 (9th Cir.2008) (citing Panavision Int'l L.P. v. Toeppen, 141 F.3d 1316, 1320 (9th Cir.1998)). Oregon's long-arm statute is co-extensive with constitutional standards. SeeOr. R. Civ. Pro. 4(L). Thus, this Court need only determine whether its exercise of personal jurisdiction over Defendants would offend constitutional due process requirements. See State ex rel. Hydraulic Servocontrols Corp. v. Dale, 294 Or. 381, 384, 657 P.2d 211 (1982). “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. Here, there is no contention that the Court may exercise general jurisdiction over Defendants.

To be subject to a court's specific jurisdiction, a defendant must “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) (citations omitted). The Ninth Circuit uses a three-part test to determine if such minimum contacts exist:

(1) The non-resident defendant must purposefully direct his activities or consummate some transaction with the forum or resident thereof; or perform some act by which he purposefully avails himself of the privilege of conducting activities in the forum, thereby invoking the benefits and protections of its laws;

(2) the claim must be one which arises out of or relates to the defendant's forum-related activities; and

(3) the exercise of jurisdiction must comport with fair play and substantial justice, i.e. it must be reasonable.

Brayton Purcell, 606 F.3d at 1128 (citing Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797, 802 (9th Cir.2004)). The plaintiff bears the burden as to the first two prongs, but if both are established, then “the defendant must come forward with a ‘compelling case’ that the exercise of jurisdiction would not be reasonable.” Boschetto, 539 F.3d at 1016 (quotations omitted).

The first prong embodies two distinct, although sometimes conflated, concepts: purposeful availment and purposeful direction. See, e.g., Brayton Purcell, 606 F.3d at 1128 (citing Pebble Beach Co. v. Caddy, 453 F.3d 1151, 1155 (9th Cir.2006)); Washington Shoe Co. v. A–Z Sporting Goods Inc., 704 F.3d 668, 672–73 (9th Cir.2012). “A purposeful availment analysis is most often used in suits sounding in contract. A purposeful direction...