Opinion
No. C-04-2219 EDL.
August 30, 2004
ORDER GRANTING MOTION TO DISMISS AND GRANTING LEAVE TO FILE AMENDED COMPLAINT AND TO CONDUCT WRITTEN DISCOVERY RELATING TO VENUE
I. INTRODUCTION
Plaintiff Gail Goodwin ("Plaintiff") owns the copyright in a number of photographs. Complaint ¶ 7. Plaintiff resides and works in San Anselmo, California. Complaint ¶ 2. Defendant Best Plan International, Limited ("Defendant") has its principal place of business in Los Angeles, California. Complaint ¶ 3. Plaintiff alleges that Defendant is copying and distributing her photographs on products, including purses. Complaint ¶ 8. Plaintiff further asserts that Defendant is aware that it is infringing her copyrights and knows that she lives and works in the Northern District of California. Complaint ¶ 4. Finally, Plaintiff asserts that Defendant purposefully availed itself of the privilege of conducting activities in the State of California, and her claim arises out of those activities. Id.
Plaintiff also asserts, through the declaration of her counsel Charles Chalmers, that a retailer selling the allegedly infringing purses within the Northern District of California obtained the purses from a third party, who in turn obtained the purses from Defendant. Chalmers Decl. ¶ 9. Mr. Chalmers further states that Defendant acknowledged in a letter that it was the source of the handbags about which Plaintiff was complaining. Chalmers Decl. ¶ 2.
Defendant, through the declaration of Business Manager Milee Park, states that: 1) Defendant's sole place of business is in Los Angeles; 2) none of its customers who purchased the allegedly infringing purses were businesses in "Central or Northern California"; and 3) Defendant does not have any "regular customers in Central or Northern California" and has never directed advertising to markets in Central or Northern California. Park Decl. ¶¶ 1-5
Defendant moves to dismiss for failure to state a claim, lack of jurisdiction, and improper venue. For the following reasons, the Court Grants Defendant's Motion to Dismiss under Federal Rules of Civil Procedure 12(b)(1) and 12(b)(6) and Denies without Prejudice Defendant's Motion to Dimiss under Rule 12(b)(3).
II. DISCUSSION
A. Subject Matter Jurisdiction
Defendant moves to dismiss for lack of subject matter jurisdiction and failure to state a claim upon which relief can be granted, asserting that Plaintiff did not allege registration of the copyrights claimed. "[N]o action for infringement of the copyright in any work shall be instituted until registration of the copyright claim has been made in accordance with [the copyright laws]." 17 U.S.C. § 411(a); Jefferson Airplane v. Berkeley Systems, Inc., 886 F. Supp.713, 715 (N.D. Cal. 1994) ("Such registration is a jurisdictional prerequisite to a suit for infringement.")
Plaintiff has not specifically alleged registration of her copyrights. Plaintiff seeks leave to amend to set forth the copyright registrations that have been issued for the photographs found on Defendant's purses. See Chalmers Decl. ¶ 2. Defendant opposes leave to amend on the ground that this court lacks jurisdiction. A trial court, however, has jurisdiction to determine its own jurisdiction. United States v. United Mine Workers, 330 U.S. 258, 292 n. 57 (1947). Accordingly, Defendant's Motion to Dismiss under Rules 12(b)(1) and 12(b)(6) is Granted and Plaintiff is given leave to file, on or before September 7, 2004, an Amended Complaint alleging Registration of the Copyrights.
B. Venue
Defendant also moves to dismiss under Rule 12(b)(3) on the ground that venue is not proper in the Northern District of California.
1. Legal Standard
Under federal law, copyright infringement suits may be brought "in the district in which the defendant or his agent resides or may be found." 28 U.S.C. § 1400.
In a State which has more than one judicial district and in which a defendant that is a corporation is subject to personal jurisdiction at the time an action is commenced, such corporation shall be deemed to reside in any district in that State within which its contacts would be sufficient to subject it to personal jurisdiction if that district were a separate State. . . .28 U.S.C. § 1391(c). Thus, whether venue is proper depends upon whether Defendant is subject to personal jurisdiction in the Northern District of California.
Personal jurisdiction is determined by the applicable state personal jurisdictional statute and constitutional principles of due process. Data Disc, Inc. v. Systems Tech. Assocs., Inc., 557 F.2d 1280, 1286 (9th Cir. 1977). California's statute provides for jurisdiction "on any basis not inconsistent with the Constitution of this state or of the United States." Cal. Civil Code § 410.10. Due process requires the nonresident defendant to have sufficient "minimum contacts" with the state to satisfy traditional notions of fair play and substantial justice. See, e.g., International Shoe Co. v. Washington, 326 U.S. 310, 316 (1945).
California law recognizes two ways that constitutionally sufficient minimum contacts can be shown. Farris, 182 Cal. App. 3d at 987. First, if the nonresident's activities are "extensive or wide-ranging" or "substantial . . . continuous or systematic," a court may exercise general jurisdiction with respect to any cause of action asserted against a nonresident. Farris v. Capt. J.B. Fronapfel Co., 182 Cal. App. 3d 982, 987 (1986) (citations omitted). Second, in the absence of pervasive contacts, a court may exercise specific jurisdiction when the cause of action arises out of the nonresident's activities within or affecting the forum state. Farris, 182 Cal. App. 3d at 987.
2. Burden of Proof
The plaintiff bears the burden of establishing that venue is in the proper forum. R. Griggs Group Ltd. v. Consolidated Shoe, Inc., 1999 WL 226211 (N.D.Cal. Apr 09, 1999); see also Schwarzer, Tashima Wagstaffe, Federal Civil Procedure Before Trial 9:135-36. If the court does not conduct an evidentiary hearing, Plaintiff need only make a prima facie showing of jurisdiction.Amoco Eqypt Oil Co. v. Leonis Navigation Co, Inc., 1 F.3d 848, 850 (9th Cir. 1993). In determining whether the plaintiff has presented a prima facie case, the court must assume the truth of "well pled" allegations in the complaint that are not contradicted. Nicosia v. De Rooy, 72 F. Supp.2d 1093, 1097 (N.D. Cal. 1999). The court need not, however, assume the truth of conclusory allegations. Id. Once the defendant has contradicted allegations contained in the complaint, plaintiff may not rest on the pleadings, and must present admissible evidence to support the court's exercise of personal jurisdiction. Data Disk, Inc. v. Systems Tech. Assocs., Inc., 557 F.2d 1280, 1284 (9th Cir. 1977). However, the court is required to resolve disputed facts in the light most favorable to the plaintiff. Id.; see also Murphy v. Schneider National, Inc., 362 F.3d 1133, 1140 (9th Cir. 2004).
3. General Jurisdiction
Plaintiff argues that this Court has general jurisdiction over Defendant because Defendant does business in this district. General jurisdiction does not exist absent a showing of pervasive contacts. See, e.g., Amoco Egypt Oil Co. v. Leonis Nav. Co., 1 F.3d 848, 851 n. 3 (9th Cir. 1993) (noting courts have "regularly declined to find general jurisdiction even where the contacts were quite extensive"); Gator.com Corp v. L.L. Bean, Inc., 341 F.3d 1072, 1075-77 (9th Cir. 2003) (General jurisdiction requires an "approximation of physical presence."). Accordingly, merely "doing business" is insufficient to establish general jurisdiction over Defendant.
4. Specific Jurisdiction
A three-part test is used to determine whether specific jurisdiction may be applied to a particular defendant:
(1) The nonresident defendant must do some act or consummate some transaction with the forum or perform some act by which he purposefully avails himself of the privilege of conducting activities in the forum, thereby invoking the benefits and protections of its laws. (2) The claim must be one which arises out of or results from the defendant's forum-related activities. (3) Exercise of jurisdiction must be reasonable.Data Disc, Inc. v. Systems Technology Associates, Inc., 557 F.2d 1280, 1286 (9th Cir. 1977). Additionally, purposeful availment is not shown by "random, fortuitous, or attenuated contacts, or the unilateral activity of another party or a third person." Burger King v. Rudzewicz, 471 U.S. 462, 475 (1985) (citations omitted).
As to the first question of purposeful availment, Defendant declares that it does not have any "regular" customers in Northern or Central California. Defendant, however, does not deny that it has customers in the Northern District of California. Accordingly, Defendant may have availed itself of the privilege of conducting business in this District.
As to the second question of whether the claim arises out of the district-related business, Defendant asserts that "None of the customers who purchased the allegedly infringing handbags from BPI were businesses located in Central or Northern California." (Park Decl. ¶ 4.) Although Plaintiff asserts that handbags were purchased in the district, she does not allege that Defendant sold them in the district. Thus, Plaintiff has not met her burden of proof on this issue. Accordingly, the court need not address the third question, whether jurisdiction would be reasonable. However, the Court notes that jurisdiction which is otherwise valid is presumptively reasonable and a compelling showing is necessary to rebut this presumption. Ballard v. Savage, 65 F.3d 1495, 1500 (9th Cir. 1995) (citing Burger King v. Rudzewicz, 471 U.S. 462, 477 (1985).)
C. Discovery
Plaintiff seeks to conduct discovery bearing on the question of venue. Discovery relevant to Defendant's contacts with the Northern District of California is warranted to resolve the issue of whether venue is proper in this District. In order to limit the burden on Defendant, at this point Plaintiff is given leave to conduct only written discovery on issues related to venue. The parties may, however, agree to wider discovery or address the matter to the Court at the Case Management Conference.
III. CONCLUSION
For the foregoing reasons, It Is Hereby Ordered that:
1. Defendant's Motion to Dismiss under Rules 12(b)(1) and 12(b)(6) is Granted with leave to amend;
2. Plaintiff is Granted leave to file, on or before September 7, 2004, an Amended Complaint to allege copyright registration;
3. Plaintiff is Granted leave to propound written discovery regarding Defendant's contacts with this District.
IT IS SO ORDERED.