St Andrews Links Limited v. Source and Design International (UK) Ltd

[3] 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA [6] 7 ST ANDREWS LINKS LIMITED, Case No. 21-cv-06470-JST 8 Plaintiff, ORDER GRANTING MOTION TO 9 v. DISMISS 10 Re: ECF No. 18 11 SOURCE AND DESIGN INTERNATIONAL (UK) LTD, et al., [12] Defendants. [13] 14 Before the Court is a motion to dismiss filed by Defendants Source and Design 15 International (UK) LTD (“Source and Design”) and John Charles Morton (“Morton”) 16 (collectively, “Defendants”). ECF No. 18. The Court will grant the motion. 17 I. BACKGROUND 18 On October 20, 2021, Plaintiff St Andrews Links Ltd. (“St Andrews”) filed a first amended 19 complaint (“FAC”) against Defendants for trademark infringement, counterfeiting, cybersquatting 20 and false designation of origin and unfair competition under the United States Lanham Act, 15 21 U.S.C. § 1051 et seq., unfair competition under California Business and Professions Code § 17200 22 et seq., and trademark infringement and unfair competition under California common law. ECF 23 No. 8. 24 St Andrews operates seven golf courses. Id. ¶ 11. It is a United Kingdom entity with its 25 principal place of business in Scotland. Id. ¶ 8. Morton is a resident of Scotland and the director 26 of clothing company Source and Design. Id. ¶ 10. St Andrews alleges that Defendants infringed 27 its United States Trademark by promoting and selling apparel bearing the name “St Andrews” on 1 media sites. Id. ¶¶ 4, 27. In addition, St Andrews alleges that Defendants made at least one 2 delivery to a customer with a California address, and two sales to a customer with a Florida 3 address. ECF No. 8 ¶ 42; ECF No. 18-1 ¶ 45. 4 Defendants filed a motion to dismiss St Andrews’ FAC for lack of personal jurisdiction, 5 ECF No. 18, St Andrews opposed the motion, ECF No. 33, and Defendants replied, ECF No. 39. 6 II. LEGAL STANDARD 7 In contesting a motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(2), 8 “the plaintiff bears the burden of establishing that jurisdiction is proper.” Boschetto v. Hansing, [9] 539 F.3d 1011, 1015 (9th Cir. 2008). Where the “motion is based on written materials rather than 10 an evidentiary hearing, the plaintiff need only make a prima facie showing of jurisdictional facts to 11 withstand the motion to dismiss.” Mavrix Photo, Inc. v. Brand Techs., Inc., 647 F.3d 1218 , 1223 12 (9th Cir. 2011). “[A] plaintiff cannot simply rest on the bare allegations of its complaint, but 13 uncontroverted allegations in the complaint must be taken as true.” Id. (internal quotation marks 14 and citation omitted). Courts “may not assume the truth of allegations in a pleading which are 15 contradicted by affidavit,” Data Disc, Inc. v. Sys. Tech. Assocs., Inc., 557 F.2d 1280, 1284 (9th 16 Cir. 1977), but factual disputes are resolved in favor of the plaintiff, Mavrix, 647 F.3d at 1223 . 17 “Where, as here, there is no applicable federal statute governing personal jurisdiction, the 18 district court applies the law of the state in which the district court sits.” Schwarzenegger v. Fred 19 Martin Motor Co., 374 F.3d 797, 800 (9th Cir. 2004). “Because California’s long-arm 20 jurisdictional statute is coextensive with federal due process requirements, the jurisdictional 21 analyses under state law and federal due process are the same.” Id. at 800–01. The relevant 22 question, therefore, is whether a nonresident defendant has “at least ‘minimum contacts’ with the 23 relevant forum such that the exercise of jurisdiction ‘does not offend traditional notions of fair 24 play and substantial justice.’” Id. at 801 (quoting Int’l Shoe Co. v. Washington, 326 U.S. 310 , 316 25 (1945)). 26 St Andrews asserts that this Court may exercise specific personal jurisdiction over 27 Defendants based on their contacts with California. ECF No. 33 at 10. Alternatively, it argues 1 Procedure 4(k)(2) based on contacts with the United States as a whole. Id. at 23. 2 III. DISCUSSION 3 A. Specific Personal Jurisdiction 4 Specific personal jurisdiction “depends on an affiliatio[n] between the forum and the 5 underlying controversy, principally, activity or an occurrence that takes place in the forum State 6 and is therefore subject to the State’s regulation.” Goodyear Dunlop Tires Operations, S.A. v. 7 Brown, 564 U.S. 915, 919 (2011) (internal quotation marks omitted). The Ninth Circuit has 8 established a three-part test to determine whether a court has specific personal jurisdiction over a 9 defendant: 10 (1) the non-resident defendant must purposefully direct his activities or consummate some transaction with the forum or resident thereof; 11 or perform some act by which he purposefully avails himself of the privilege of conducting activities in the forum, thereby invoking the 12 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; 13 and (3) the exercise of jurisdiction must comport with fair play and substantial justice, i.e. it must be reasonable. [14] 15 Schwarzenegger, 374 F.3d at 802 . “The plaintiff bears the burden of satisfying the first two 16 prongs of the test.” Id. “If the plaintiff fails to satisfy either of these prongs, personal jurisdiction 17 is not established in the forum state. Id. If the plaintiff satisfies both prongs, “the burden then 18 shifts to the defendant to ‘present a compelling case’ that the exercise of jurisdiction would not be 19 reasonable.” Id. (quoting Burger King Corp. v. Rudzewicz, 471 U.S. 462, 476-78 (1985)). 20 1. Purposeful Direction 21 The first prong of the Ninth Circuit’s three-prong specific personal jurisdiction test asks 22 whether a defendant purposefully directed its activities towards the forum or purposefully availed 23 itself of the privilege of conducting activities in the forum. Id. A purposeful direction analysis is 24 most often used in cases, like this one, that sound in tort. Id. Courts determine whether a 25 defendant purposefully directed its actions at a forum by applying the “effects” test derived from 26 Calder v. Jones, 465 U.S. 783 (1984). The test “requires that the defendant allegedly have (1) 27 committed an intentional act, (2) expressly aimed at the forum state, (3) causing harm that the 1 1104, 1111 (9th Cir. 2002). “All three parts of the test must be satisfied.” Schwarzenegger, 374 2 F.3d at 805. 3 a. Intentional Act 4 The FAC alleges that Defendants promoted and shipped apparel bearing the “St Andrews” 5 mark through their website and Amazon.co.uk account to consumers in California and the United 6 States. ECF No. 8 ¶ 24, 41-42. This is sufficient to establish that Defendants engaged in 7 intentional acts. See Schwarzenegger, 374 F.3d at 806 (interpreting “intent” in this context “as 8 referring to an intent to perform an actual, physical act in the real world, rather than an intent to 9 accomplish a result or consequence of that act); Five Star Gourmet Foods, Inc. v. Fresh Express, 10 Inc., No. 19-cv-05611-PJH, 2020 WL 1244918 , at *6 (N.D. Cal. March 16, 2020) (“sending 11 prototype salad containers to Fresh Express’s facility in California for testing” constituted an 12 intentional act); Fighter’s Mkt., Inc. v. Champion Courage LLC, 207 F. Supp. 3d 1145, 1152 (S.D. 13 Cal. 2016 ) (intentional act satisfied where “Plaintiff alleges that Defendant manufactured, sold, 14 and shipped [uniforms] bearing Plaintiff’s K/M trademarks”). 15 b. Express Aiming 16 The “express aiming” test requires a showing that “the defendant’s conduct connects him 17 to the forum in a meaningful way,” not just residents who live in the forum. Walden v. Fiore, 571 18 U.S. 277, 290 (2014) (emphasis added); see also Morrill v. Scott Fin. Corp., 873 F.3d 1136 , 114819 49 (9th Cir. 2017) (“Plaintiffs were required to make a prima facie showing that Defendants’ 20 alleged actions were directed at [the forum state], not just at individuals who resided there.”). 21 “Express aiming requires more than the defendant’s awareness that the plaintiff is alleged to have 22 harmed resides in or has strong ties to the forum, because ‘the plaintiff cannot be the only link 23 between the defendant and the forum.’” Ayla, LLC v. Alya Skin Pty. Ltd., 11 F.4th 972 , 980 (9th 24 Cir. 2021) (quoting Walden, 571 U.S. at 285). “‘[S]omething more—conduct directly targeting 25 the forum’—is required to confer personal jurisdiction.” Id. (quoting Mavrix, 647 F.3d at 1229 ). 26 In the context of a website, courts consider the “interactivity of the defendant’s website, the 27 geographic scope of the defendant’s commercial ambitions, and whether the defendant 1 citations and quotations omitted). 2 Here, St Andrews maintains that Defendants expressly aimed their activity towards 3 California by operating interactive websites and social media accounts that are “accessible to 4 consumers in this State and judicial district.” ECF No. 8 ¶ 4. Specifically, St Andrews points out 5 that Defendants’ website provided “delivery times and costs for products being shipped to the 6 U.S.,” id. ¶ 41, Defendants sold an infringing shirt to a customer in California, id. ¶ 42, and 7 Defendants used companies like PayPal, Facebook, Instagram, and Twitter, with headquarters in 8 this judicial district, ECF No. 33 at 8. These allegations are insufficient. 9 First, St Andrews has failed to establish that Defendants’ online activity involves a 10 “forum-specific focus.” AMA Multimedia, LLC v. Wanat, 970 F.3d 1201, 1210 (9th Cir. 2020); 11 Mavrix, 647 F.3d at 1230 (finding express aiming where the defendant’s website had a “specific 12 focus on the California—centered celebrity and entertainment industries”). The simple fact that 13 Defendants’ websites are interactive and accessible to Californians is not enough to satisfy the 14 express aiming prong. See Bungie, Inc. v. Thorpe, No. 21-cv-05677-EMC (DMR), 2021 WL 15 5178825, at *5 (N.D. Cal. Nov. 8, 2021) (noting that “[d]istrict courts in California have declined 16 to find express aiming based on alleged sales of products that infringe intellectual property rights 17 through commercial, interactive websites accessible to California consumers”) (internal quotation 18 marks omitted)); Graco Minnesota Inc. v. PF Brands, Inc., No. 18-cv-1690-WQH-AGS, 2019 WL 19 1746580, at *6 (S.D. Cal. Apr. 17, 2019) (finding no express aiming where the allegedly 20 infringing products were sold online to customers, including customers in California); Matus v. 21 Premium Nutraceuticals, LLC, No. EDCV 15-01851 DDP (DTBx), 2016 WL 3078745 , at *3 22 (C.D. Cal. May 31, 2016) (finding that the “maintenance of a minimally interactive website,” 23 without “something more,” did not satisfy the express aiming prong).1 24 Second, the delivery of a single polo shirt to an address in Burlingame, California is also [26] 1 Although the Ninth Circuit has, in the past, distinguished between “passive” and “interactive” websites, and looked to the “level of interactivity and commercial nature of the exchange of [27] information,” Cybersell, Inc. v. Cybersell, Inc., 130 F.3d 414, 418 (9th Cir. 1997), “[i]n more 1 insufficient to establish that Defendants expressly aimed their activity towards California. 2 Defendants allege that St Andrews initiated the California sale, which St Andrews appears to 3 concede. ECF No. 33 at 8 n.1. Many courts in this district have found that “[a] plaintiff cannot 4 manufacture personal jurisdiction in a trademark case by purchasing the accused product in the 5 forum state.” Clarus Transphase Sci., Inc. v. Q-Ray, Inc., No. C 06-3450 JF (RS), 2006 WL 6 2374738, at *3 n.3 (N.D. Cal. Aug. 16, 2006); see Adobe Sys. Inc. v. Nwubah, No. 18-CV-060637 LHK, 2019 WL 6611096 , at *7 (N.D. Cal. Dec. 5, 2019) (finding that “evidentiary buys” by 8 Plaintiff’s investigator do not amount to express aiming); Cisco Sys. Inc. v. Link US, LLC, No. 189 cv-07576-CRB, 2019 WL 6682838 , at *5 (N.D. Cal. Dec. 6, 2019) (“[S]ince the personal 10 jurisdiction analysis focuses on the defendant’s, not the plaintiff’s contacts with the forum,” it 11 would be “incongruous to allow the plaintiff to unilaterally create personal jurisdiction” by 12 instigating a sale in the forum state).2 Even if St Andrews did not initiate the California sale, the 13 single sale is still insufficient to satisfy the express aiming prong. See Adobe, 2019 WL 6611096 , 14 at *7 (citing cases for the proposition that “a limited number of products shipped into a forum 15 flowing from a defendant’s online sales activity is insufficient to establish express aiming”); Adam 16 v. Barone, No. 20-cv-00761-EMC, 2020 WL 4584182 , at *9 (N.D. Cal. Aug. 10, 2020) (declining 17 to find that a single transaction satisfies the express aiming prong). 18 Finally, the Court rejects St Andrews argument that because Facebook, Instagram, Twitter, 19 and PayPal are headquartered in this judicial district, Defendants’ use of these platforms amounts 20 to express aiming. ECF No. 33 at 8. Accepting such an argument would “subject millions of 21 persons around the globe to personal jurisdiction in California” and “render the ‘expressly aimed’ 22 prong of the Calder test essentially meaningless.” DFSB Kollective Co. v. Bourne, 897 F. Supp. 23 2d 871, 883 (N.D. Cal. 2012); Datatech Enters. LLC v. FF Magnat Ltd., No. C 12-04500 CRB, [24] 2012 WL 4068624 , at *3 (N.D. Cal. Sept. 14, 2012) (“The maintenance of a website accessible to [26] 2 St Andrews’ citation to a single case in this district that supports its position does not persuade this Court to depart from this reasoning. See ECF No. 33 at 8 (citing Chanel Inc. v. Yang, No. C [27] 12-4428-PJH, 2013 WL 5755217 , at *7 (N.D. Cal. Oct. 21, 2013)). 1 U.S. visitors, and the use of U.S.-based web services like PayPal, may not themselves provide 2 contacts sufficient to satisfy due process.”). 3 After assessing the factors separately and together, the Court finds that St Andrews has not 4 established that Defendants’ “conduct directly target[ed] the forum,” Rio Properties, Inc. v. Rio 5 Int’l Interlink, 284 F.3d 1007, 1020 (9th Cir. 2002), and it has therefore failed to meet its burden 6 under the “effects” test. 7 B. Nationwide Jurisdiction Under Rule 4(k)(2) 8 St Andrews also argues that the Court may exercise personal jurisdiction under Federal 9 Rule of Civil Procedure 4(k)(2). ECF No. 33 at 23. “Personal jurisdiction is proper under Rule 10 4(k)(2) when (1) the action arises under federal law, (2) the defendant is not subject to jurisdiction 11 in any state’s courts of general jurisdiction, and (3) the court’s exercise of jurisdiction comports 12 with due process.” Ayla, 11 F.4th at 978 (internal quotation marks omitted). “[T]he due process 13 analysis ‘is nearly identical to traditional personal jurisdiction analysis . . . [but] rather than 14 considering contacts between [the defendant] and the forum state, we consider contacts with the 15 nation as a whole.’” Id. at 979 (quoting Holland Am. Line Inc. v. Wärtsilä N. Am., Inc., 485 F.3d 16 450, 462 (9th Cir. 2007)). Here, the first two requirements under Rule 4(k)(2) are indisputably 17 met. Thus, the only question before this Court is whether hailing Defendants into a United States 18 District Court “comports with due process.” Fed R. Civ. P. 4(k)(2). In conducting this analysis, 19 courts apply the Calder test to the United States as a whole. See Ayla, 11 F.4th at 979-80. 20 To support its argument, St Andrews uses the same allegations referenced in its argument 21 that Defendants “purposefully directed” their actions at California,” and adds the additional fact 22 that Defendants shipped two orders to a single customer in Tampa, Florida. ECF No. 33 at 24. St 23 Andrews also points to the fact that Defendants’ website “had four times more users from the 24 United States than Defendants’ home jurisdiction in the United Kingdom,” Defendants “appl[ied] 25 for trademark protection from the USPTO,” and Defendants used “former United States President 26 Barack Obama in a Facebook advertisement promoting the mark ST ANDREWS.” Id. 27 While St Andrews’s argument for express aiming is stronger under Rule 4(k)(2), it still is 1 Defendants’ two sales to a customer in Tampa, Florida, along with the single sale to a customer in 2 Burlingame, California, are precisely the kind of “random, isolated, or fortuitous” interactions that 3 are insufficient to establish personal jurisdiction. Keeton v. Hustler Mag., Inc., 465 U.S. 770 , 774 4 (1984); see Glencore Grain Rotterdam B.V. v. Shivnath Rai Harnarain Co., 284 F.3d 1114 , 1127 5 (9th Cir. 2002) (declining to exercise personal jurisdiction under Rule 4(k)(2) where defendant’s 6 contacts with the United States included seven shipments to the East Coast). 7 The remaining allegations are also insufficient. St Andrews does not cite any case where a 8 court found express aiming met simply because a website received more hits from users in the 9 United States. Instead, cases suggest that there must be other “indicia of . . . personal direction.” 10 AMA, 970 F.3d at 1211 (9th Cir. 2020) (finding the substantial number of hits to the defendant’s 11 website insufficient to “establish that [the defendant] tailored the website to attract U.S. traffic,” 12 absent other “indicia of . . . personal direction”). Although the existence of a “substantial number 13 of hits” was relevant in Mavrix, this was in part because the “website hits from Californians 14 translated to more advertising revenue from the site’s California advertisers” and the defendant 15 knew about its California user base due to its advertising structure. Id. (distinguishing Mavrix on 16 this basis). Here, Defendants only shipped three orders to two customers in the United States. 17 Nothing here suggests that Defendants directly profited from these hits or possessed knowledge of 18 this user base. 19 The fact that Defendants filed a trademark application many years ago, which was denied, 20 also does not establish express aiming. See Allergan, Inc. v. Dermavita Ltd. P’ship, Dima Corp. 21 S.A., No. SACV 17-00619-CJC (DFMx), 2018 WL 1406913 , at *4 (C.D. Cal. Jan. 3, 2018) 22 (finding defendant’s “filing of trademark applications and petitions to cancel [plaintiff’s] 23 trademarks” insufficient to establish jurisdiction under Rule 4(k)(2)); Fumoto Giken Co. v. 24 Mistuoka, No. CV 14-9797 DMG (MRWx), 2015 WL 12766167 , at *5 (C.D. Cal. Apr. 16, 2015) 25 (“[T]his Court is not persuaded that the mere registration of a trademark with the PTO, without 26 more, amounts to the type of minimum contacts which would justify haling a foreign defendant 27 into federal court.”). And the fact that Defendants used the image of President Obama, an 1 express aiming at the United States. See Pebble Beach Co. v. Caddy, 453 F.3d 1151, 1159 (9th 2 || Cir. 2006) (“The fact that the name ‘Pebble Beach’ is a famous mark known world-wide is of little 3 || practical consequence when deciding whether action is directed at a particular forum via the world 4 || wide web”). 5 Taken together, Defendants’ limited interactions with the United States “can only be 6 described as scant, fleeting, and attenuated.” Holland, 485 F.3d at 462 . The Court finds that St 7 || Andrews has failed to establish that Defendants expressly aimed their conduct at the United States 8 || under Rule 4(k)(2). 9 CONCLUSION 10 For the foregoing reasons, the Court grants Defendants’ motion to dismiss for lack of 11 personal jurisdiction. Given that Plaintiff had the opportunity to conduct jurisdictional discovery, 12 ECF No. 24, and Plaintiff has nonetheless failed to establish jurisdiction, the Court concludes that 13 leave to amend would be futile. See Rongxiang Xu v. Nobel Assembly at Karolinska Institutet, No. 14 || SACV 13-320-JLS ANX, 2013 WL 9760036 , at *8 (C.D. Cal. Nov. 20, 2013). Dismissal is 3 15 || therefore with prejudice. 16 The Clerk shall enter judgment and close the file. i 17 IT IS SO ORDERED. . 18 |] Dated: October 20, 2022 20 United States District Judge