Pub. Impact, LLC v. Bos. Consulting Grp., Inc., 15–cv–464.

• Decision Date: 03 August 2015
• Docket Number: No. 15–cv–464.,15–cv–464.
• Citation: 117 F.Supp.3d 732
• Court: U.S. District Court — Middle District of North Carolina
• Parties: PUBLIC IMPACT, LLC, Plaintiff, v. BOSTON CONSULTING GROUP, INC., Defendant.

117 F.Supp.3d 732

PUBLIC IMPACT, LLC, Plaintiff,

v.BOSTON CONSULTING GROUP, INC., Defendant.

No. 15–cv–464.

United States District Court, M.D. North Carolina.

Signed Aug. 3, 2015.

Matthew S. Deantonio, Corby Cochran Anderson, Nexsen Pruet, PLLC, Charlotte, NC, for Plaintiff.

John M. Nading, DLA Piper LLP, Washington, DC, Alice Carmichael Richey, Parker Poe Adams & Bernstein LLP, Charlotte, NC, for Defendant.

MEMORANDUM OPINION AND ORDER

THOMAS D. SCHROEDER, District Judge.

This is a trademark infringement case brought by Plaintiff Public Impact, LLC ("Public Impact"), against Boston Consulting Group, Inc. ("BCG"). Before the court are three motions: (1) Public Impact's motion for temporary restraining order and preliminary injunction (Doc. 6); (2) Public Impact's motion to seal (Doc. 11); and (3) BCG's motion to dismiss for lack of personal jurisdiction and, alternatively, to transfer venue (Doc. 20). For the reasons set forth below, Public Impact's motion to seal and BCG's motion to dismiss for lack of personal jurisdiction will be granted; Public Impact's motion for injunctive relief will therefore be denied without prejudice as moot.

I. BACKGROUND

The allegations of the complaint and supporting affidavits show the following:¹

Public Impact is an education policy and management consulting firm, located in Carrboro, North Carolina. (Doc. 8 ¶¶ 3, 7.) Its clients include private foundations, government agencies, nonprofits, and education policy leaders. (Id. ¶ 13.) Public Impact owns a federally registered trademark, PUBLIC IMPACT, Registration No. 2,805,013, which has been used continuously since 1996 and was registered in 2006. (Id. ¶¶ 5–8; Doc. 8–1.) In 2009, the United States Patent and Trademark Office declared the registration incontestable, pursuant to 15 U.S.C. § 1065. (Doc. 8 ¶ 10; Doc. 8–2.) Public Impact uses its trademark on its publications, websites, Facebook account, and Twitter page. (Doc. 8 ¶¶ 15–16, 26–27.)

BCG is a global management consulting firm incorporated in Massachusetts and maintains its corporate offices in Boston, Massachusetts. (Doc. 22 ¶ 3.) It is registered to do business in North Carolina and in every other State that requires such registration. (Id. ¶ 5; Doc. 1–1.) BCG has previously initiated, solicited, and engaged in education-related business within North Carolina. In 2010, BCG representatives attended a North Carolina State Board of Education planning session. (Doc. 31–3.) In 2012, BCG and Public Impact exchanged emails to discuss an education initiative. (Doc. 8 ¶ 32; Doc. 8–7.) In a 2010 publication, BCG listed its business accomplishments in North Carolina to include managing North Carolina's proposal for federal education funding and reorganizing North Carolina's Department of Public Instruction. (Doc. 31–4 at 7; see also Doc. 31–2; Doc. 31–5; Doc. 31–6.) BCG also lists North Carolina on its website as a state to which it has provided "recent [educational] efforts." (Doc. 10–2 at 5.) From 2007 to 2014, BCG's North Carolina revenue comprised about 0.3% of its worldwide revenue, which amounts to tens of millions of dollars. (Doc. 22 ¶ 5; Doc. 30 at 6 (citing Doc. 31–7).) There is no indication, though, as to what percentage of that revenue derived from any education-related business activity by BCG in North Carolina. Finally, BCG helps host a consulting "Case Competition" every year at Duke University. (Doc. 31–1.)

In June 2014, BCG created the "Centre for Public Impact: A BCG Foundation" ("CPI"). (Doc. 23 ¶ 3.) BCG owns the trademark, THE CENTRE FOR PUBLIC IMPACT: A BCG FOUNDATION, No. UK00003069013, in the United Kingdom, and owns several trademarks in other countries as well. (Id. ¶ 6.) BCG solely funds CPI, and CPI shares an office with BCG in London, where CPI is based. (Id. ¶ 3.) BCG publishes about CPI on its website. (See, e.g., Doc. 10–7 at 4–6.)

CPI's mission is to "bring[ ] together world leaders to learn, exchange ideas and inspire each other to strengthen the public impact of their organizations." (Doc. 10–1 at 46.) CPI describes itself as "a global forum where leaders can learn" by "[s]haring insights from around the world." (Id. ) Its officers include those who specialize in education. (Id. at 17, 19–20.) CPI, however, has no employees in the United States, and it is in the process of registering as a not-for-profit organization in Switzerland. (Doc. 23 ¶¶ 3–4.) CPI has conducted four events using its mark, all of which have occurred outside the United States, namely in London, England; New Delhi, India; and Jakarta, Indonesia. (Doc. 10–1 at 32–34, 46–47.)

CPI has a website, as well as Twitter and LinkedIn accounts. (Doc. 9–4; Doc. 9–5; Doc. 23 ¶ 7.) BCG owns CPI's website. (Doc. 9–2.) CPI has published at least one education-related article on its website and also tweets about education. (Doc. 9–5; Doc. 10–1 at 15–16.) CPI's website contains informational links titled "Who We Are" and "What We Do," which describe CPI and its mission. (Doc. 10–1 at 2.) The site also links to news articles and interviews relating to CPI—none of which is alleged to connect to North Carolina. (Id. at 15–16, 22–23, 32–39, 41–45.) The website also allows visitors to "Participate" but limits visitors' participation to signing up for news about CPI. (Id. at 40.)

On June 9, 2015, Public Impact filed its complaint against BCG, raising various claims regarding the use of Public Impact's registered trademark and claiming essentially that BCG is using CPI, and specifically the similarly-named "Centre for Public Impact" through CPI's website, to confuse and lure customers to BCG's consulting business that competes directly with Public Impact's. (Doc. 1) Contemporaneous with its complaint, Public Impact moved for temporary and preliminary injunctive relief and to seal certain documents filed in support. (Docs. 6, 11.) On June 16, 2015, BCG moved to dismiss the complaint for lack of personal jurisdiction and, alternatively, to transfer venue to Boston. (Doc. 20) The parties filed responding briefs (Docs. 24, 28), and the court held an adversarial hearing on Public Impact's motion for a temporary restraining order on June 17, 2015. Following the hearing, the parties filed supplemental briefing on BCG's motion to dismiss for lack of personal jurisdiction and, alternatively, to transfer venue. (Docs. 30, 32.) On July 6, 2015, BCG responded to Public Impact's motion for preliminary injunction and motion to seal. (Docs. 33, 36.)

The motions are now ready for resolution.

II. ANALYSIS

A. Motion to Dismiss for Lack of Personal Jurisdiction

Public Impact bears the burden of establishing personal jurisdiction by a preponderance of the evidence. See Universal Leather, LLC v. Koro AR, S.A., 773 F.3d 553, 558 (4th Cir.2014) ; Carefirst of Md., Inc. v. Carefirst Pregnancy Ctrs., Inc., 334 F.3d 390, 396 (4th Cir.2003) ; Combs v. Bakker, 886 F.2d 673, 676 (4th Cir.1989). "When, however, as here, a district court decides a pretrial personal jurisdiction motion without conducting an evidentiary hearing, the plaintiff need only make a prima facie showing of personal jurisdiction."² Carefirst, 334 F.3d at 396 ; see also Combs, 886 F.2d at 676. "In deciding whether the plaintiff has proved a prima facie case of personal jurisdiction, the district court must draw all reasonable inferences arising from the proof, and resolve all factual disputes, in the plaintiff's favor." Mylan Labs., Inc. v. Akzo, N.V., 2 F.3d 56, 60 (4th Cir.1993) ; accord Carefirst, 334 F.3d at 396. If the existence of jurisdiction turns on disputed factual questions, the court may resolve the challenge on the basis of an evidentiary hearing or, if a prima facie demonstration of personal jurisdiction has been made, it can proceed "as if it has personal jurisdiction over th[e] matter, although factual determinations to the contrary may be made at trial." Pinpoint IT Servs., L.L.C. v. Atlas IT Exp. Corp.,

812 F.Supp.2d 710, 717 (E.D.Va.2011) (citing 2 James Wm. Moore et al., Moore's Federal Practice ¶ 12.31 (3d ed.2011)); see also Indus. Carbon Corp. v. Equity Auto & Equip. Leasing Corp., 737 F.Supp. 925, 926 (W.D.Va.1990) ("When conflicting facts are contained in the affidavits, they are to be resolved in the plaintiff's favor."). Nevertheless, either at trial or at a pretrial evidentiary hearing, the plaintiff must eventually prove the existence of personal jurisdiction by a preponderance of the evidence. New Wellington Fin. Corp. v. Flagship Resort Dev. Corp., 416 F.3d 290, 294 n. 5 (4th Cir.2005).

"Under Federal Rule of Civil Procedure 4(k)(1)(A), a federal court may exercise personal jurisdiction over a defendant in the manner provided by state law." ALS Scan, Inc. v. Digital Serv. Consultants, Inc., 293 F.3d 707, 710 (4th Cir.2002) ; see also Daimler AG v. Bauman, ––– U.S. ––––, 134 S.Ct. 746, 753, 187 L.Ed.2d 624 (2014) ("Federal courts ordinarily follow state law in determining the bounds of their jurisdiction over persons."). To determine whether personal jurisdiction is proper, the court engages in a two-part inquiry: first, North Carolina's long-arm statute must provide a statutory basis for the assertion of personal jurisdiction, and, second, the exercise of personal jurisdiction must comply with due process. See Carefirst, 334 F.3d at 396 ; Pan–Am. Prods. & Holdings, LLC v. R.T.G. Furniture Corp., 825 F.Supp.2d 664, 677 (M.D.N.C.2011).

In Christian Science Board of Directors of the First Church of Christ, Scientist v. Nolan, 259 F.3d 209 (4th Cir.2001), the Fourth Circuit held that N.C. Gen.Stat. § 1–75.4(1)(d) runs coextensively with the Due Process Clause, thereby collapsing the two-step process "into a single inquiry" as to whether the nonresident defendant has such "minimal contacts" with North Carolina that exercising jurisdiction over the defendant does not offend "traditional notions of fair play and substantial justice."³ 259 F.3d at 215 (quoting Int'l Shoe Co. v. Washington, 326 U.S. 310, 316, 66 S.Ct. 154, 90 L.Ed. 95 (1945) ); see...