United States District Court, N.D. Texas, Dallas Division
MEMORANDUM OPINION AND ORDER
A. FITZWATER, UNITED STATES DISTRICT JUDGE.
suit for trademark infringement and related claims, defendant
moves to dismiss for lack of personal jurisdiction, or,
alternatively, to transfer the case to the Central District
of California. This case presents a wrinkle in that the court
has already determined in the default-judgment context that
plaintiff has established that the court has
personal jurisdiction based on defendant's operation of
its website. But in the present, non-default-judgment
context, and for the reasons that follow, the court holds
that it lacks personal jurisdiction and grants
defendant's alternative motion to transfer this case to
the Central District of California, Western Division,
pursuant to 28 U.S.C. § 1406(a).
dispute stems from the use of the name “Million Word
Challenge.” Plaintiff Springboards to Education, Inc.
(“Springboards”) designs, markets, and sells
reading and related educational products under the
Springboard brand and its associated federally-registered
trademarks, including the trademarks “Millionaire
Reader, ” “Million Dollar Reader, ”
“Millionaire's Reading Club, ” and
“Read A Million Words.” Defendant Families In
Schools (“FIS”) is a California nonprofit
organization whose mission is to involve parents and
communities in their children's education, targeting
low-income communities and communities of color through
programs such as, inter alia, the “Million
Word Challenge, ” which it maintains is a public
awareness campaign “developed in 2002 in response to a
lack of access to bookstores and libraries in Los
Angeles' low-income communities.” D. Br. 4. FIS
contends that, although some of its workshops and programs
are offered outside California, the Million Word Challenge
was designed for implementation solely in the Los Angeles
County schools, and that only a single participant-Andre
Agassi College Preparatory Academy in Las Vegas, Nevada-has
come from outside the state of California.
lawsuit, Springboards sues FIS for trademark counterfeiting,
under 15 U.S.C. § 1114; trademark infringement, under 15
U.S.C. § 1114; false designations of origin false
descriptions, under 15 U.S.C. § 1125(a); trademark
dilution, under 15 U.S.C. § 1125(e); violation of the
Texas anti-dilution statute, Tex. Bus. & Com. Code Ann.
§ 16.103; common law trademark infringement; and common
law unfair competition. Springboards alleges, inter
alia, that “[t]his Court has personal jurisdiction
over Defendant by way of the Texas long-arm statute because
Defendant transacts a sufficient amount of business in Texas
throughout the use of its interactive website and promotional
materials.” Compl. ¶ 10.
served FIS with process in October 2016. After FIS failed to
answer or otherwise respond to Springboards' complaint,
Springboards requested entry of a default and moved for a
default judgment. In April 2017 the court held a hearing on
Springboards' motion. FIS did not appear. During the
hearing, Springboards' counsel presented evidence on the
issue of personal jurisdiction,  and the court held, in
plaintiff has proved specific in personam jurisdiction by a
preponderance of the evidence based upon the witness's
testimony that establishes the presence of the interactive
website in Texas and that itself contains infringing
material. . . . The Fifth Circuit when analyzing in personam
jurisdiction based on a website uses a sliding scale that
originated in the Zippo case . . . and the nature of
this website is sufficient to establish specific
jurisdiction, and that is supported by the evidence of the
way the website works in relation to a person known to be in
Texas and the content of the website which contains
Tr. 38. Based on these findings and conclusions, the court
entered a default judgment against FIS.
FIS filed, inter alia, a motion to vacate default
judgment. After conducting a hearing on the motion, the court
entered an order stating that it would set aside the default
judgment on the condition that FIS first pay to Springboards
its reasonable attorney's fees and costs incurred in
obtaining the default judgment and opposing FIS's
post-judgment motions. The court also stated that,
“[a]fter the default judgment is set aside, FIS will be
permitted to file a timely responsive pleading. The
responsive pleading may challenge the court's exercise of
personal jurisdiction over FIS, and Springboards'
response may assert that FIS has waived its challenge to the
court's exercise of personal jurisdiction.” July 6,
2017 Am. Order at 2. The court later entered an order
recognizing that FIS had satisfied the court-imposed
condition for setting aside and vacating the default
moves to dismiss this action under Fed.R.Civ.P. 12(b)(2) on
the ground that the reach of the “Million Word
Challenge” is intended to go no farther than Los
Angeles County, California, and that Springboards cannot make
a prima facie showing that FIS purposefully directed its
activities at residents of Texas or that this lawsuit is the
result of alleged injuries that arose out of, or are related
to, the use of the “Million Word Challenge, ” as
directed to the state of Texas. FIS moves in the alternative
to transfer this lawsuit to the United States District Court
for the Central District of California.
court must first determine whether it can exercise personal
jurisdiction over FIS.
Lanham Act does not authorize nationwide service of process.
See, e.g., Tempur-Pedic Int'l, Inc. v. Go Satellite
Inc., 758 F.Supp.2d 366, 371 (N.D. Tex. 2010)
(Fitzwater, C.J.). Accordingly, absent a controlling federal
statute regarding service of process, the determination
whether a federal district court has in personam
jurisdiction over a nonresident defendant is bipartite.
See Ham v. La Cienega Music Co., 4 F.3d 413, 415
(5th Cir. 1993). The court first decides whether the long-arm
statute of the state in which it sits confers personal
jurisdiction over the defendant. If it does, the court next
resolves whether the exercise of personal jurisdiction is
consistent with due process under the United States
Constitution. See Mink v. AAAA Dev. LLC, 190 F.3d
333, 335 (5th Cir. 1999).
the Texas long-arm statute extends to the limits of due
process, the court need only consider whether exercising
jurisdiction over FIS would be consistent with the Due
Process Clause of the Fourteenth Amendment. See id.;
see also Alpine View Co. v. Atlas Copco AB,
205 F.3d 208, 214 (5th Cir. 2000).
The Due Process Clause of the Fourteenth Amendment permits
the exercise of personal jurisdiction over a nonresident
defendant when (1) that defendant has purposefully availed
himself of the benefits and protections of the forum state by
establishing “minimum contacts” with the forum
state; and (2) the exercise of jurisdiction over that
defendant does not offend “traditional notions of fair
play and substantial justice.” To comport with due
process, the defendant's conduct in connection with the
forum state must be such that he “should reasonably
anticipate being haled into court” in the forum state.
Latshaw v. Johnston, 167 F.3d 208, 211 (5th Cir.
1999) (footnotes omitted) (citing World-Wide Volkswagen
Corp. v. Woodson, 444 U.S. 286, 297
defendant's contacts with the forum may support either
specific or general jurisdiction over the defendant.
Mink, 190 F.3d at 336. For the court to properly
exercise specific personal jurisdiction, the defendant must
have “purposefully directed” its activities at
residents of the forum, and the litigation must result from
alleged injuries that “arise out of or relate to”
the defendant's activities directed at the forum.
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