Minnesota Public Radio v. Virginia Beach Educ. Br., Civ. No. 06-4667 (PJS/RLE).

• Decision Date: 11 September 2007
• Docket Number: Civ. No. 06-4667 (PJS/RLE).
• Citation: 519 F.Supp.2d 970
• Parties: MINNESOTA PUBLIC RADIO, Plaintiff, v. VIRGINIA BEACH EDUCATIONAL BROADCASTING FOUNDATION, Inc., d/b/a Positive Hit Radio The Current, Defendant.
• Court: U.S. District Court — District of Minnesota

519 F.Supp.2d 970

MINNESOTA PUBLIC RADIO, Plaintiff, v. VIRGINIA BEACH EDUCATIONAL BROADCASTING FOUNDATION, Inc., d/b/a Positive Hit Radio The Current, Defendant.

Civ. No. 06-4667 (PJS/RLE).

United States District Court, D. Minnesota.

September 11, 2007.

Brent E. Routman, Ernest W. Grumbles, III, William D. Schultz, Merchant & Gould PC, Minneapolis, MN, for Plaintiff.

Colby M. May, American Center for Law & Justice, Washington, DC, Jennifer L. Whitelaw, Whitelaw Legal Group, Naples, FL, Marc A. Al, Stoel Rives LLP, Minneapolis, MN, for Defendants.

ORDER ADOPTING REPORT AND RECOMMENDATION

PATRICK J. SCHILTZ, District Judge.

Based upon the Report and Recommendation of United States Magistrate Judge Raymond L. Erickson, and after an independent review of the files, records and proceedings in the above-entitled matter, IT IS ORDERED:

That the Defendant's Motion to Dismiss or, in the Alternative, to Transfer [Docket No. 6] is granted, and that this action is transferred to the United States District Court for the Eastern District of Virginia.

REPORT AND RECOMMENDATION

RAYMOND L. ERICKSON, United States Chief Magistrate Judge.

I. Introduction

This matter came before the undersigned United States Magistrate Judge pursuant to a special assignment, made in accordance with the provisions of Title 28 U.S.C. § 636(b)(1)(B), upon the Motion of the Defendant Virginia Beach Educational Broadcasting Foundation, Inc. ("VBE"), to Dismiss or, in the Alternative, to Transfer. At the time of the Hearing, the Plaintiff Minnesota Public Radio ("MPR") appeared by Ernest W. Grumbles III, Esq., and VBE appeared by Rebecca J. Bishop, Esq. For reasons which follow, we recommend that VBE's Motion be granted, and that the action be transferred to the United States District Court for the Eastern District of Virginia.

II. Factual and Procedural Background

MPR's Complaint alleges that VBE is engaged in unfair competition, and cybersquatting, in violation of the Lanham Act, Title 15 U.S.C. § 1051, et seq., deceptive trade practices, under the Minnesota Deceptive Trade Practices Act, Minnesota Statutes Section 325D.43 et seq., and common law trademark infringement, and unfair competition. See, Complaint, Docket No. 1. Further, MPR alleges that it has filed an application with the United States Patent and Trademark Office, in order to register the trademark "The Current" to encompass "educational and entertainment services, namely, production of radio programs that are broadcast via radio and a global computer network, and distribution of radio programs for others," and has also applied for the registration of the marks "Cross Currents," "Live Currents," "The Current Hootenanny," and "The Current Fakebook." Id. at pp. 4-5. MPR asserts that VBE, which is a non-profit corporation that operates a radio station based in Virginia Beach, Virginia, had constructive notice of MPR's trademark rights since December 6, 2004, based upon MPR's application to register "The Current" as a trademark.

For its part, VBE disputes MPR's implication that its mark has official recognition, by noting that "the U.S. Government issued a refusal for [MPR's] application Serial No. 78808250 for the mark THE CURRENT and cited no less than twenty-seven (27) prior pending applications against [MPR's] application, as well as twelve (12) federal trademark applications which have been stated by the United States government, in written government action, to result in a `likelihood of confusion,'" and "[MPR's] alleged `trademark rights' are also openly contested by more than one entity in proceedings now pending before the U.S. Trademark Trial and Appeal Board." VBE's Reply Memorandum Docket No. 23, at p. 9 fn. 1 [emphasis in original]. VBE also challenges MPR's contention that MPR was first to use the asserted trademark. Id. at p. 2("However, first use is a contested issue on the merits; [MPR] may not simply assume its own alleged first use in order to support its jurisdictional argument.").

According to MPR, notwithstanding the notice it provided to VBE, VBE registered the Internet domain name "currentfm. com" on March 19, 2005, and subsequently, developed a website that incorporates the marks "The Current" and "current fm." See, Complaint, at p. 6. MPR maintains that VBE intentionally offers music in Minnesota, under the name "current fm," via the Internet on myspace.com/ currentfm, and claims that VBE's use of the name "The Current" infringes on MPR's trademark application, and injures the goodwill that is associated with its "The Current" mark. Id. MPR seeks both damages, and injunctive relief. Id. at p. 7.

On January 22, 2007, VBE filed its Motion to Dismiss, arguing that this Court lacks personal jurisdiction over it, and therefore, that MPR's action should be dismissed or, alternatively, that the case should be transferred to the United States District Court for the Eastern District of Virginia. See, Docket No. 6.

III. Discussion

A. The Defendant's Motion to Dismiss for Lack of Personal Jurisdiction.

1. Standard of Review. Once a defendant has challenged a Federal Court's jurisdiction over that defendant's person, the plaintiff bears the burden of proving that such jurisdiction exists. See, Romak USA, Inc. v. Rich, 384 F.3d 979, 983-84 (8th Cir.2004); Aero Systems Engineering, Inc. v. Opron, Inc. 21 F.Supp.2d 990, 995 (D.Minn.1998). Although the plaintiff bears the ultimate burden, at Trial, to establish personal jurisdiction by a preponderance of the evidence, when the challenge is made in a Motion to Dismiss, the plaintiff need only establish a prima facie case. Id.; Epps v. Stewart Information Services Corp., 327 F.3d 642, 647 (8th Cir. 2003); citing Falkirk Min. Co. v. Japan Steel Works, Ltd., 906 F.2d 369, 373 (8th Cir.1990); Clune v. Alimak AB, 233 F.3d 538, 541 (8th Cir.2000), cert. denied, 533 U.S. 929, 121 S.Ct. 2551, 150 L.Ed.2d 718 (2001).

Where, as here, personal jurisdiction is challenged at a pretrial stage, all factual disputes are required to be resolved in the plaintiff's favor. See, Romak USA, Inc. v. Rich, supra at 983-84, citing Epps v. Stewart Information Services Corp., supra at 647; Bell Paper Box, Inc. v. U.S. Kids, Inc., 22 F.3d 816, 818 (8th Cir.1994). Our inquiry into the Court's personal jurisdiction over a non-resident defendant has two facets:

1) Whether the facts presented satisfy the forum State's long-arm statute; and

2) Whether the non-resident has "minimum contacts" with the forum State so that the Court's exercise of jurisdiction would be fair and in accordance with due process.

Wessels, Arnold & Henderson v. Nat'l Medical Waste, 65 F.3d 1427, 1431 (8th Cir.1995); Wines v. Lake Havasu Boat Mfg., 846 F.2d 40, 42 (8th Cir.1988).

As determined by the Minnesota Supreme Court, Minnesota's Long-Arm Statute, Minnesota Statutes Section 543.19, extends the State's jurisdiction to the fullest extent allowed by the Due Process Clause. See, St. Paul Fire and Marine Ins. Co. v. Courtney Enterprises, Inc., 270 F.3d 621, 623 (8th Cir.2001), citing Minnesota Mining & Mfg. Co. v. Nippon Carbide Indus. Co., 63 F.3d 694, 697 (8th Cir.1995), cert. denied, 516 U.S. 1184, 116 S.Ct. 1288, 134 L.Ed.2d 232 (1996); St. Jude Medical Inc. v. Lifecare Ina, Inc., 250 F.3d 587, 591 (8th Cir.2001), citing Wessels, Arnold & Henderson v. Nat'l Medical Waste, supra at 1431; Valspar Corp. v. Lukken Color Corp., 495 N.W.2d 408, 410-11 (Minn. 1992).

As a consequence, we need only determine whether an assertion of jurisdiction over the defendant would be consistent with the constitutional guarantees of Due Process. See, Dever v. Hentzen Coatings, Inc., 380 F.3d 1070, 1072 (8th Cir.2004), cert. denied, 543 U.S. 1147, 125 S.Ct. 1304, 161 L.Ed.2d 108 (2005); St. Paul Fire and Marine Ins. Co. v. Courtney Enterprises, Inc., supra at 623; Wessels, Arnold & Henderson v. Nat'l. Medical Waste, supra at 1431.

Under the Due Process Clauses of the Fifth and Fourteenth Amendments, "personal jurisdiction over a nonresident defendant is proper only if the defendant has certain minimum contacts with [the forum state] such that the maintenance of the suit does not offend `traditional notions of fair play and substantial justice.'" International Shoe v. Washington, 326 U.S. 310, 316, 66 S.Ct. 154, 90 L.Ed. 95 (1945), citing Milliken v. Meyer, 311 U.S. 457, 463, 61 S.Ct. 339, 85 L.Ed. 278 (1940); Epps v. Stewart Information Services Corp., supra at 647, quoting World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 291-92, 100 S.Ct. 559, 62 L.Ed.2d 490 (1980).

In this respect, "the substantial connection between the defendant and the forum state necessary for a finding of minimum contacts must come about by an action of the defendant purposefully directed toward the forum state." Asahi Metal Industry Co. v. Superior Court, 480 U.S. 102, 112, 107 S.Ct. 1026, 94 L.Ed.2d 92 (1987), citing Burger King Corp. v. Rudzewicz, 471 U.S. 462, 476, 105 S.Ct. 2174, 85 L.Ed.2d 528 (1985). In determining the existence of a sufficient level of jurisdictional "contacts," the Court considers whether the defendant's conduct, and its connection to the forum State, are such that the defendant should have reasonably anticipated being haled into the Courts of that State, by purposefully availing itself of the privilege of doing business there. See, Burger King Corp. v. Rudzewicz, supra at 474, 105 S.Ct. 2174.

As the governing law makes clear:

This "purposeful availment" requirement ensures that a defendant will not be haled into a jurisdiction solely as a result of "random," "fortuitous," or "attenuated" contacts * * * or because of the "unilateral activity of another party or a third person."

Burger King Corp. v. Rudzewicz, supra at 475, 105 S.Ct. 2174; see also, Stanton v. St. Jude Medical, Inc., 340 F.3d 690, 693-94 (8th Cir.2003).

Accordingly, in determining the sufficiency of a defendant's contacts, the Court must evaluate the following factors:

1) the nature and quality of...