Inspired by Design, LLC v. Sammy's Sew Shop, LLC, Case No. 16-CV-2290-DDC-KGG

• Decision Date: 03 August 2016
• Docket Number: Case No. 16-CV-2290-DDC-KGG
• Parties: INSPIRED BY DESIGN, LLC, Plaintiff, v. SAMMY'S SEW SHOP, LLC, et al., Defendants.
• Court: U.S. District Court — District of Kansas

200 F.Supp.3d 1194

INSPIRED BY DESIGN, LLC, Plaintiff,

v.SAMMY'S SEW SHOP, LLC, et al., Defendants.

Case No. 16-CV-2290-DDC-KGG

United States District Court, D. Kansas.

Signed August 3, 2016

Mark E. Brown, Law Office of Mark Brown, LLC, Shawnee, KS, for Plaintiff.

Arthur K. Shaffer, Intellectual Property Center, LLC, Overland Park, KS, for Defendants.

MEMORANDUM AND ORDER

Daniel D. Crabtree, United States District Judge

Plaintiff Inspired by Design, LLC brought this lawsuit against Sammy's Sew Shop, LLC and Samantha Pantaleo, asserting trade dress infringement, unfair competition, and copyright infringement claims. This action comes before the court on defendants' Motion to Dismiss or, Alternatively, to Transfer Venue (Doc. 6). Plaintiffs have filed a response opposing the motion (Doc. 9), and defendants have submitted a reply (Doc. 10). After considering the evidence and arguments presented in the parties' briefs, the court denies defendants' motion.

I. Factual Background

Plaintiff's Complaint (Doc. 1) and an affidavit submitted with plaintiff's opposition brief (Doc. 9-2) allege the following facts, which the court accepts as true for the purpose of this motion. See Wenz v. Memery Crystal , 55 F.3d 1503, 1505 (10th Cir.1995) (explaining that on motion to dismiss for lack of personal jurisdiction, "[t]he allegations in the complaint must be taken as true to the extent they are uncontroverted by the defendant's affidavits." (quotation omitted)); see alsoOMI Holdings, Inc. v. Royal Ins. Co. of Can. , 149 F.3d 1086, 1091 (10th Cir.1998) (explaining that plaintiff may satisfy her prima facie burden of demonstrating jurisdiction by submitting an "affidavit or other written materials [containing] facts that if true would support jurisdiction over the defendant").

Plaintiff is a Kansas limited liability company that makes customized pet beds and pet-related products. Alisa Self formed the company on April 30, 2015. Before then, Ms. Self sold pet beds and pet-related products as a sole proprietor. On June 23, 2012, Ms. Self had started using the website, https://adorepetbeds.com, for advertising and selling her products. Then, on July 31, 2012, Ms. Self began selling her products on an Etsy webpage,¹ under the name "AdoreCustomPetBeds."² After Ms. Self formed the plaintiff company, plaintiff continued selling custom pet beds through the https://adorepetbeds.com website and the Etsy webpage. On April 28, 2016, plaintiff acquired a copyright covering photographs, 2-D artwork, technical drawings, and text content published on https://adorepetbeds.com on August 12, 2014.

Defendant Sammy's Sew Shop, LLC also sells custom pet beds. Its primary place of business is in California. It began operating an Etsy webpage around December 19, 2014.³ It also has a Facebook webpage.⁴ Defendant Samantha Pantaleo is the owner of Sammy's Sew Shop. Ms. Pantaleo is a California resident.

Plaintiff alleges that defendants began selling replicas of plaintiff's pet beds around June 12, 2015. On July 16, 2015, an Etsy user named Tyler Gage ordered and paid for a pet bed from plaintiff's Etsy webpage. On August 6, 2015, Ms. Self shipped the pet bed from Shawnee, Kansas, to Tyler Gage, 6108 Hilltree Ave., Citrus Heights, California 95621. UPS delivered the package containing the pet bed to that address on August 11, 2015. Tyler Gage has a "close personal relationship" with Ms. Pantaleo and, according to plaintiff, Ms. Pantaleo "is associated" with the address 6108 Hilltree Ave., Citrus Heights, California 95621. Also according to plaintiff, Mr. Gage "is associated" with the address, 8236 Crestshire Cir., Orangevale, California 95662, the same address where plaintiff served Ms. Pantaleo with the summons issued as part of service of process for this lawsuit.

Plaintiff contends that defendants modified their Etsy webpage and pet beds after Tyler Gage ordered and received plaintiff's custom pet bed, making defendants' pet beds even closer replicas of plaintiff's pet beds. Specifically, plaintiff contends that the modification included advertising bed inserts with zippers to adjust firmness, advertising a fabric and embroidery proofing process, and altering the dip on the front of the pet beds to match the dip on plaintiff's pet beds.

On September 25, 2015, plaintiff's counsel sent a letter to defendants demanding that they cease and desist from violating plaintiff's intellectual property rights. On October 14, 2015, defendants' counsel responded to plaintiff's letter, denying any violation of plaintiff's intellectual property rights. On November 18, 2015, plaintiff learned of actual customer confusion between plaintiff and defendants' products.

On May 5, 2016, plaintiff filed its Complaint against defendants in this action. It asserts trade dress infringement and unfair competition claims under the Lanham Act, 15 U.S.C. § 1125, and a copyright infringement claim under the federal Copyright Act, 17 U.S.C. § 501. Doc. 1. Plaintiff seeks an injunction prohibiting defendants from misusing plaintiff's trade dress, engaging in unfair competition, and infringing on plaintiff's copyright content. Plaintiff also seeks its lost profits and damages sufficient to compensate it for defendants' unjust enrichment after allegedly violating plaintiff's intellectual property rights.

II. Motion to Dismiss for Lack of Personal Jurisdiction

Defendants seek dismissal of plaintiffs' Complaint under Fed. R. Civ. P. 12(b)(2), asserting that our court lacks personal jurisdiction over them. The court addresses defendants' motion under the governing legal standard set forth below.

A. Legal Standard

A plaintiff bears the burden to establish personal jurisdiction over each defendant named in the action. Rockwood Select Asset Fund XI (6) – 1, LLC v. Devine, Millimet & Branch , 750 F.3d 1178, 1179–80 (10th Cir.2014) (citation omitted). But in the preliminary stages of litigation, a plaintiff's burden to prove personal jurisdiction is light. AST Sports Sci., Inc. v. CLF Distrib. Ltd. , 514 F.3d 1054, 1056 (10th Cir.2008) (citation omitted).

Where, as here, the court is asked to decide a pretrial motion to dismiss for lack of personal jurisdiction without conducting an evidentiary hearing, plaintiff must make no more than a prima facie showing of jurisdiction to defeat the motion. Id. at 1056–57 (citing OMI Holdings, Inc. , 149 F.3d at 1091 ). "The plaintiff may make this prima facie showing by demonstrating, via affidavit or other written materials, facts that if true would support jurisdiction over the defendant." OMI Holdings, Inc. , 149 F.3d at 1091.

To defeat a plaintiff's prima facie showing of personal jurisdiction, defendants "must present a compelling case demonstrating ‘that the presence of some other considerations would render jurisdiction unreasonable.’ " Id. (quoting Burger King Corp. v. Rudzewicz , 471 U.S. 462, 477, 105 S.Ct. 2174, 85 L.Ed.2d 528 (1985) ). Where defendants fail to controvert a plaintiff's allegations with affidavits or other evidence, the court must accept the well-pleaded allegations in the complaint as true, and resolve any factual disputes in the plaintiff's favor. Wenz , 55 F.3d at 1505.

B. Analysis

Plaintiff asserts subject matter jurisdiction under 28 U.S.C. § 1331, which confers original jurisdiction on federal district courts over "all civil actions arising under the Constitution, laws, or treaties of the United States." 28 U.S.C. § 1331 ; see also Doc. 9 at ¶ 4. In a federal question case, like this one, a court can assert personal jurisdiction over a defendant if: (1) the applicable statute potentially confers jurisdiction by authorizing service of process on the defendant; and (2) the exercise of jurisdiction comports with due process. Klein v. Cornelius , 786 F.3d 1310, 1317 (10th Cir.2015) (quoting Peay v. BellSouth Med. Assistance Plan , 205 F.3d 1206, 1209 (10th Cir.2000) (further citations omitted)).

Neither the federal Copyright Act, 17 U.S.C. § 101 et seq. , nor the Lanham Act, 15 U.S.C. § 1051 et seq. , provide for nationwide service of process. See be2 LLC v. Ivanov , 642 F.3d 555, 558 (7th Cir.2011) (stating the Lanham Act does not provide for nationwide service of process); Dudnikov v. Chalk & Vermilion Fine Arts, Inc. , 514 F.3d 1063, 1070 (10th Cir.2008) (noting the same about the federal Copyright Act). Fed. R. Civ. P. 4(k)(1)(A) thus governs service. See Dudnikov , 514 F.3d at 1070 (citing Fed. R. Civ. P. 4(k)(1)(A) ). This Rule requires the court to apply the law of the forum state where the district court is situated. Fed. R. Civ. P. 4(k)(1)(A).

Kansas' long-arm statute is construed liberally to permit exercise of jurisdiction in every situation that is consistent with the United States Constitution. Federated Rural Elec. Ins. Corp. v. Kootenai Elec. Coop. , 17 F.3d 1302, 1305 (10th Cir.1994) (citation omitted); see also Kan. Stat. Ann. § 60–308(b)(1)(L) & (b)(2). Thus, the court need not conduct a separate personal jurisdiction analysis under Kansas law, because the "first, statutory, inquiry effectively collapses into the second, constitutional, analysis." Dudnikov , 514 F.3d at 1070.

The constitutional analysis requires a court to determine whether "exercise[ing] jurisdiction [is] in harmony with due process." Dudnikov , 514 F.3d at 1070. This analysis involves a two-step inquiry: (1) a defendant "must have ‘minimum contacts' with the forum state, such that having to defend a lawsuit" in the forum, (2) "would not ‘offend traditional notions of fair play and substantial justice.’ " Id. (quoting Int'l Shoe Co. v. Washington , 326 U.S. 310, 316, 66 S.Ct. 154, 90 L.Ed. 95 (1945) ). The "minimum contacts" standard is satisfied in one of two ways—either by establishing general jurisdiction or specific jurisdiction based on a defendant's contacts with the forum state. Rockwood Select Asset Fund , 750 F.3d at 1179. The Tenth Circuit has described how general jurisdiction and specific jurisdiction differ, as follows:

General jurisdiction is

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