LAUREL BEELER, Magistrate Judge.
Plaintiff Anne-Stephanie Le Roy-Garcia, a visual artist who lives and works in Spain, filed this copyright and trademark infringement case against eight entities and four individuals affiliated with some of the entities. Complaint, ECF No. 1.
The defendants move to dismiss or transfer the case for improper venue or alternatively for transfer for forum non conveniens. Motion, ECF No. 10; Joinder (Neiman Marcus and Zulily), ECF No. 21; Joinder (Ideeli), ECF No. 24; Joinder (HauteLook), ECF No. 30. Upon consideration of the briefs submitted, the arguments of counsel at the August 1, 2013 hearing, and the record in this action, the court
According to the complaint, Plaintiff "is a prominent visual artist who was born and now lives and creates her works in Almeria, Spain." Complaint, ECF No. 1 ¶ 2.
Defendant Brave Arts is a California limited liability company and is located in the Central District of California. Id. ¶ 3. Brave Arts regularly does business with customers located in the Northern District of California. Id. Defendants Gabriel Guez and Yvette Guez are individuals who reside in the Central District of California and are owners of Brave Arts. Id. ¶¶ 4-5; Gabriel Guez Declaration, ECF No. 10-2 ¶ 2; see also Motion, ECF No. 10 at 8 (stating that Gabriel Guez and Yvette Guez reside in Los Angeles County); but see Jean Pierre Guez Declaration, ECF No. 10-3 ¶¶ 2 (stating that Yvette Guez is his ex-wife and that she has never resided in the United States).
Defendant IBG is a California corporation and is located in the Central District of California. Complaint, ECF No. 1 ¶ 7. IBG regularly does business with customers located in the Northern District of California. Id. Defendant Jean Pierre Guez is an individual who resides in the Central District of California and is an owner of IBG. Id. ¶ 8; Jean Piere Guez Declaration, ECF No. 10-3 ¶ 1. Defendant My Tribe is a business entity that operates as a subsidiary of IBG and is located in the Central District of California. Complaint, ECF No. 1 ¶ 9. My Tribe regularly does business with customers located in the Northern District of California. Id. Defendant Jonathan Guez is an individual who resides in the Central District of California and exercises management and control over the business activities of My Tribe. Id. ¶ 10; Jean Pierre Guez Declaration, ECF No. 10-3 ¶ 4 (stating that Jonathan Guez resides in Los Angeles County). IBG, Jean Pierre Guez, My Tribe, and Jonathan Guez collectively will be referred to as the "IBG Defendants."
Defendant California Apparel is a California corporation and is located in the Central District of California. Complaint, ECF No. 1 ¶ 12. California Apparel regularly does business with customers located in the Northern District of California. Id.
Defendant Ideeli is a Delaware corporation and is located in the Southern District of New York. Id. ¶ 14. Defendant Neiman Marcus is a Delaware corporation and is located in the Northern District of Texas. Id. ¶ 15. Defendant HauteLook is a Delaware corporation and is located in the Central District of California. Id. ¶ 16. Defendant Zulily is a Delaware corporation and is located in the Western District of Washington. Id. ¶ 17. Ideeli, Neiman Marcus, HauteLook, and Zulily regularly do business with customers located in the Northern District of California. Id. ¶¶ 14-17. Ideeli, Neiman Marcus, HauteLook, and Zulily collectively will be referred to as the "Retail Defendants."
Plaintiff creates works in various media, including original paintings, drawings, and prints. Id. ¶ 23. She has developed a unique artistic style which she calls "L'art Nouveau Andaluz." Id. ¶ 24. Since at least as early as 1998, she adopted and has continuously used the artist's name "ALMERIANE" as her pseudonym and designation of source for her artworks (the "ALMERIANE Mark"). Id. She signs her works using ALMERIANE in a stylized form comprising a reproduction of her handwritten signature (the "ALMERIANE Stylized Mark"). Id., Exh. 1. Her artworks have been exhibited and sold worldwide, including in the United States, under the ALMERIANE pseudonym, word mark, and ALMERIANE Stylized Mark since at least as early as 1998. Id. The ALMERIANE Mark and the ALMERIANE Sty¥zed Mark collectively will be referred to as the "ALMERIANE Marks." Id.
Plaintiff is the sole owner of all rights, including copyrights, in her L'Art Nouveau Andaluz works and of all rights, including trade name and trademark rights, in the ALMERIANE Marks. Id. ¶ 26. In or about April 2011, Defendant Gabriel Guez, who represented to Plaintiff that he was experienced and successful in the business of the sourcing, manufacture, design, sale and distribution of garments and that he routinely sourced artwork for such purposes, approached Plaintiff about a licensing deal. Id. ¶ 27. Plaintiff and Gabriel Guez entered into a business relationship and executed three documents: (1) a "Manager & Representation Agreement"; (2) a "Trademark Authorization Consent"; and (3) a "Copyright/Worldwide Master License Agreement." Id. ¶¶ 28, 31, Exh. 3 (the three agreements). Under these agreements, "[Gabriel] Guez, individually, was granted, for an initial term of 7 years, a non-exclusive license to sell Plaintiff's original artwork for a 10% commission payable to [Gabriel] Guez, and an exclusive license as Plaintiff's `Worldwide Master Licensee' to create and market prints and merchandise featuring Plaintiffs `L' Art Nouveau Andaluz' paintings under the ALMERIANE Marks (the `Licensed Products'), for payment on a quarterly basis off 8% royalty to Plaintiff, and to sublicense manufacturing and distribution of the Licensed Products, for payment of a 6% royalty to Plaintiff, subject to certain terms and conditions." Id. ¶ 32. "Those explicit conditions, inter alia, required [Gabriel] Guez to obtain Plaintiff's prior written approval before assigning any of his rights to another party; to obtain Plaintiff's pre-approval prior to marketing each Licensed Product and promotional materials therefor; to disclose to Plaintiff all sublicenses; and to account for and timely pay all commissions and royalties due to Plaintiff." Id. The agreements "also authorized [Gabiel] Guez, individually, to use and register, as Plaintiffs agent and on Plaintiff's behalf, the ALMERIANE mark in connection with the Licensed Products." Id. The agreements explicitly provide for termination immediately by Plaintiff upon [Gabriel] Guez's breach of the limitations on transfer of his rights, and upon sixty days' notice upon [Gabriel] Guez's breach of his pre-approval and payment obligations; that upon termination all rights revert to Plaintiff; and the prevailing party in any actions to enforce the provisions of the [a]greement[s] shall recover attorneys' fees." Id. ¶ 33.
Plaintiff alleges that soon after the agreements were executed, if not before, the Brave Arts Defendants and the IBG Defendants began arranging for the manufacture of Licensed Products, organizing promotional events including participation in trade shows, taking orders, and distributing Licensed Products to wholesale and retail customers across the United States, including at least the following retailers within the Northern District of California: Emily Lee in San Francisco, California; Channel 910 in San Francisco, California; New Threads in Corte Madera, California; Daisy in St. Helena, California; Forget Me Not in Aptos, California; Safari in Mendocino, California and other online vendors. Id. ¶ 34.
Plaintiff provided Gabriel Guez with hundreds of high definition images of her artwork for use on Licensed Products. Id. ¶ 35. The Brave Arts Defendants had access to these images. Id.
Plaintiff alleges that, in late 2011, the Brave Arts Defendants (including Gabriel Guez) and the IBG Defendants then began violating the agreements by:
Id. ¶¶ 37-56.
In late May 2012, Plaintiff told Gabriel Guez that she wanted to terminate the agreements. Id. ¶ 47. In early June 2012, Gabriel Guez asserted that Plaintiff was entitled to unilaterally terminate the agreements and that the agreements still were in force. Id. ¶ 48, Exh. 6. Plaintiff retained counsel, who sent Gabriel Guez a letter that formally notified him that Plaintiff intended to terminate the agreements because of the above-described breaches and provided him with an opportunity to cure. Id. ¶ 55.
On August 31, 2012, the Brave Arts Defendants responded to Plaintiff's counsel's letter by filing a lawsuit against Plaintiff in Los Angeles County Superior Court. Id. ¶ 57, Exh. 10 (State Court Complaint). This action apparently is for breach of contract and related claims. See Motion, ECF No. 10 at 3-4; Gabriel Guez Declaration, ECF No. 10-2 ¶ 17. To date, the Brave Arts Defendants have not served Plaintiff with the State Court Complaint and summons. Rhodes Declaration, ECF No. 17-1 ¶¶ 2-3.
On March 15, 2013, Plaintiff filed the instant copyright and trademark infringement case against Defendants. Complaint, ECF No. 1. She brings claims for (1) copyright infringement in violation of 17 U.S.C. § 101 et seq., (2) trademark infringement, false designation of origin, and unfair competition in violation of 15 U.S.C. § 1125, (3) common law trademark infringement, (4) unfair and fraudulent business practices in violation of the California's Unfair Competition Law ("UCL"), Cal. Bus. & Prof. Code § 17200 et seq., (5) fraud and deceit, (6) conversion, and (7) filing a false federal trademark application in violation of 15 U.S.C. §§ 1119 and 1125. See generally Complaint, ECF No. 1. Aside from being based on the above-described allegations, Plaintiff also alleges that, even after she terminated the agreements, the Brave Arts Defendants, the IBG Defendants, and California Apparel "have continued, without Plaintiff's authorization or consent, to develop, manufacture, display, promote, distribute and sell products bearing Plaintiff's artwork and/or the ALMERIANE Marks (the "ALMERIANE Products"), and/or have distributed ALMERIANE Products to retailers including . . . [the Retail Defendants], who have sold the ALMERIANE Products to the public." Id. ¶ 64. She further alleges that "[s]ales of ALMERIANE Products by Defendants have continued at severely discounted prices," and that "Defendants continue to use the and likeness of Plaintiff to promote sales of the ALMERIANE Products." Id. ¶ 65, Exh. 13.
Defendants move to dismiss Plaintiff's case for improper venue under 28 U.S.C. § 1406(a) or, alternatively, to transfer it to the United States District Court for the Central District of California for the convenience of the parties under 28 U.S.C. § 1404(a). Motion, ECF No. 10; Joinder (Neiman Marcus and Zulily), ECF No. 21; Joinder (Ideeli), ECF No. 24; Joinder (HauteLook), ECF No. 30.
A party may challenge venue in district court under two statutes: 28 U.S.C. § 1406(a) for improper venue, and 28 U.S.C. § 1404(a) for the convenience of parties and witnesses and in the interest of justice.
Under Federal Rule of Civil Procedure 12(b)(3), a defendant may move to dismiss a case for improper venue. If venue is improper, the court may either dismiss the case without prejudice, or, if it is in the "interest of justice," may transfer the case "to any district or division in which it could have been brought." 28 U.S.C. § 1406(a); In re Hall, Bayoutree Assoc., Ltd., 939 F.2d 802, 804 (9th Cir. 1991) (if a court decides to dismiss a case for improper venue, dismissal must be without prejudice). Ordinarily, the interest of justice requires transferring the case to the proper venue rather than dismissing the case. See Baeta v. Sonchik, 273 F.3d 1261, 1264-65 (9th Cir. 2001) (quotations and citations omitted). After a defendant challenges the venue, it is the plaintiff's burden to show that venue is proper. See Piedmont Label Co. v. Sun Garden Packing Co., 598 F.2d 491, 496 (9th Cir. 1979). In the context of a motion under Rule 12(b)(3), the court need not accept as true all allegations in the complaint, but may consider facts outside the pleadings. See Murphy v. Schneider Nat'l, Inc., 362 F.3d 1133, 1137 (9th Cir. 2004) (citations omitted). However, the court "is obligated to draw all reasonable inferences in favor of the non-moving party and resolve all factual conflicts in favor of the non-moving party." Id. at 1138.
28 U.S.C. § 1404(a) states: "For the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought." Although Congress drafted § 1404(a) in accordance with the doctrine of forum non conveniens, it was intended to be a revision rather than a codification of the common law. Piper Aircraft v. Reyno, 454 U.S. 235, 253 (1981); Norwood v. Kirkpatrick, 349 U.S. 29, 32 (1955). Thus, a § 1404(a) transfer is available "upon a lesser showing of inconvenience" than that required for a forum non conveniens dismissal. Norwood, 349 U.S. at 32.
The burden is upon the moving party to show that transfer is appropriate. Commodity Futures Trading Commission v. Savage, 611 F.2d 270, 279 (9th Cir. 1979); see also Los Angeles Memorial Coliseum Comm. v. National Football League, 89 F.R.D. 497, 499 (C.D. Cal. 1981) aff'd, 726 F.2d 1381, 1399 (9th Cir. 1984). Nonetheless, the district court has broad discretion "to adjudicate motions for transfer according to an `individualized, case-by-case consideration of convenience and fairness.'" Jones v. GNC Franchising, Inc., 211 F.3d 495, 498 (9th Cir. 2000) (quoting Stewart Org. v. Ricoh Corp., 487 U.S. 22, 30 (1988)); see Westinghouse Elec. Corp. v. Weigel, 426 F.2d 1356, 1358 (9th Cir. 1970).
An action may be transferred to another court if: (1) that court is one where the action might have been brought; (2) the transfer serves the convenience of the parties; and (3) the transfer will promote the interests of justice. E & J Gallo Winery v. F. & P. S.p.A., 899 F.Supp. 465, 466 (E.D. Cal. 1994) (citing 28 U.S.C. § 1404(a)). The Ninth Circuit has identified numerous additional factors a court may consider in determining whether a change of venue should be granted under § 1404(a):
Jones v. GNC Franchising Inc., 211 F.3d at 498-99. Courts may also consider, "the administrative difficulties flowing from court congestion and [the] local interest in having localized controversies decided at home." Decker Coal Co. v. Commonwealth Edison Co., 805 F.2d 834, 843 (9th Cir. 1986).
Generally, the court affords the plaintiff's choice of forum great weight. Lou v. Belzberg, 834 F.2d 730, 739 (9th Cir. 1987) cert. denied, 485 U.S. 993 (1988). But when judging the weight to be given to plaintiff's choice of forum, consideration must be given to the respective parties' contact with the chosen forum. Id. "If the operative facts have not occurred within the forum and the forum has no interest in the parties or subject matter," the plaintiff's choice "is entitled only minimal consideration." Id. Moreover, when a plaintiff brings a derivative suit or represents a class, the named plaintiff's choice of forum is given less weight. Id.
It is Plaintiff's burden to show that venue is proper. Piedmont Label Co. v. Sun Garden Packing Co., 598 F.2d at 496; Activision Pub. Inc. v. Activision TV Inc., No. 2:12-CV-8964-SVW-JEM, 2013 WL 1003546, at *2 (C.D. Cal. Feb. 25, 2013) (citation omitted). "When there are multiple parties and/or multiple claims in an action, the plaintiff must establish that venue is proper
In her complaint, Plaintiff alleged that venue in the Northern District of California is proper under 28 U.S.C. §§ 1391(b), 1392, and 1400(a). Complaint, ECF No. 1 ¶ 21. In her opposition, though, she acknowledges that 28 U.S.C. § 1391(b)(1) and (b)(3) do not apply here and 28 U.S.C. § 1392 has been repealed. Opposition, ECF No. 17 at 16 n.3; see also id. at 9-17 (arguing only that venue is proper under 28 U.S.C. §§ 1391(b)(2) and 1400(a)). Accordingly, Plaintiff must show that venue is proper under 28 U.S.C. §§ 1391(b)(2) and 1400(a). Because Plaintiff's copyright claim is subject to a specific venue statute (28 U.S.C. § 1400(a)), while her other claims are subject to the general venue statute (28 U.S.C. § 1391(b)), the court examines whether this venue is proper for Plaintiff's copyright claim first.
Venue for claims asserted under the Copyright Act, such as Plaintiff's first claim for copyright infringement, are governed by a specific venue statute, 28 U.S.C. § 1400(a), which provides, "Civil actions, suits, or proceedings arising under any Act of Congress relating to copyrights . . . may be instituted in the district in which the defendant or his agent resides or may be found." See Brackett v. Hilton Hotels, Inc., 619 F.Supp.2d 810, 815 (N.D. Cal. 2008) (Alsup, J.) (applying 28 U.S.C. § 1400(a) to determine whether the Northern District of California was a proper venue for plaintiff's copyright claim); Goldberg v. Cameron, 482 F.Supp. 1136, 1143 (N.D. Cal. 2007) (Whyte, J.) ("The venue of suits for infringement of copyright is not determined by the general provision governing suits in the federal district courts, rather by the venue provision of the Copyright Act.") (citing 28 U.S.C. § 1400(a); Lumiere v. Mae Edna Wilder, Inc., 261 U.S. 174, 176 (1923)).
The court first considers the Individual Defendants. It is well established that an individual defendant "resides" for venue purposes in the district of his residence or legal domicile. See 17 Moore's Federal Practice 3d 110.03 (2013) (for purposes of all venue statutes, a natural person is deemed to reside in the judicial district in which that person is domiciled) (citations omitted). And the Ninth Circuit also has interpreted 28 U.S.C. § 1400(a) "to allow venue `in any judicial district in which the defendant would be amenable to personal jurisdiction if the district were a separate state.'" Brayton Purcell LLP v. Recordon & Recordon, 606 F.3d 1124, 1128 (9th Cir. 2010) (quoting Columbia Pictures Television v. Krypton Broad. of Birmingham, Inc., 106 F.3d 284, 289 (9th Cir. 1997) (overruled on other grounds)). It is undisputed that the Individual Defendants do not "reside" in the Northern District of California, so Plaintiff must show that they are subject to personal jurisdiction in it. See Brackett, 619 F. Supp. 2d at 815 (analyzing defendants' contacts with the Northern District of California).
Where there is no applicable federal statute governing personal jurisdiction, the district court applies the law of the state in which the district court sits. See Fed. R. Civ. Pro. 4(k)(1)(A); Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316, 1320 (9th Cir. 1998). Because California's long-arm jurisdictional statute is coextensive with federal due process requirements, the jurisdictional analyses under state law and federal due process are the same. Panavision, 141 F.3d at 1320; Cal. Code Civ. P. § 410.10 ("A court of this state may exercise jurisdiction on any basis not inconsistent with the Constitution of this state or of the United States"). A court may exercise personal jurisdiction over a defendant consistent with due process only if he or she has "certain minimum contacts" with the relevant forum "such that the maintenance of the suit does not offend `traditional notions of fair play and substantial justice.'" International Shoe Co. v. Washington, 326 U.S. 310, 316 (1945). Again, for venue purposes, the relevant forum is the Northern District of California. See Brayton Purcell, 606 F.3d at 1128.
"Unless a defendant's contacts with a forum are so substantial, continuous, and systematic that the defendant can be deemed to be `present' in that forum for all purposes, a forum may exercise only `specific' jurisdiction—that is, jurisdiction based on the relationship between the defendant's forum contacts and the plaintiff's claim." Yahoo! Inc. v. La Ligue Contre Le Racisme Et L'Antisemitisme, 433 F.3d 1199, 1205 (9th Cir. 2006). Here, Plaintiff argues that "Defendants are clearly subject to specific jurisdiction in the Northern District of California" and notes that the existence of "[g]eneral jurisdiction also seems likely," but showing it "may require additional discovery."
The Ninth Circuit analyzes specific jurisdiction according to a three-prong test: (1) the nonresident defendant must purposefully direct his activities at the forum state or purposefully avail himself of the benefits and protections of the laws of the forum state, (2) the claim must be one which arises out of or relates to the defendant's forum-related activities, and (3) the exercise of personal jurisdiction must be reasonable. Yahoo!, 433 F.3d at 1205-1206 (citing Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797, 802 (9th Cir. 2004)). Plaintiff bears the burden of satisfying the first two prongs. Mavrix Photo v. Brand Techs., 647 F.3d 1218, 1228 (9th Cir. 2011). If Plaintiff succeeds, the burden shifts to Defendants to present a "`compelling case' that the exercise of jurisdiction would not be reasonable." Id. (citing Burger King Corp. v. Rudzewicz, 471 U.S. 462, 476-78 (1985)).
"The first prong is satisfied by either purposeful availment or purposeful direction." Brayton Purcell, 606 F.3d at 1128. "A purposeful direction analysis . . . is most often used in suits sounding in tort." Id. Plaintiff's copyright claim sounds in tort, so the court applies the purposeful direction analysis here. See PokitDok, Inc. v. Martin, No. C 12-3947 SI, 2012 WL 5425615, at *3 (N.D. Cal. Nov. 6, 2012) (Illston, J.) (applying purposeful direction analysis to copyright claim); Lang v. Morris, 823 F.Supp.2d 966, 969 (N.D. Cal. 2011) (Chen, J.) (same).
The Ninth Circuit evaluates purposeful direction using the tripartite "effects" test set forth in the Supreme Court's decision in Calder v. Jones, 465 U.S. 783 (1984). See Schwarzenegger, 374 F.3d at 803. Under this test, "the defendant allegedly must have (1) committed an intentional act, (2) expressly aimed at the forum state, (3) causing harm that the defendant knows is likely to be suffered in the forum state." Yahoo!, 433 F.3d at 1206 (internal quotation marks omitted).
In her opposition, Plaintiff argues that "Defendants" have purposefully directed their activities at the Northern District of California because they "have admitted that they extensively advertise their products, including allegedly unauthorized ALMERIANE products, at national trade shows for sales to retailers across the country, and moreover, that such solicitations have resulted in actual sales of ALMERIANE products to customers in the Northern District [of California]." Opposition, ECF No. 17 at 11. By "Defendants" it appears Plaintiff means Brave Arts, IBG, My Tribe, and California Apparel, because, at the beginning of her discussion of specific jurisdiction, she states simply and without citation to legal authority: "The analysis applies equally to the individual Defendants, who are all shareholders and/or officers of the corporate Defendants and are presumed to have directed and controlled their activities." Id. at n.2.
But contrary to Plaintiff's statement, the analysis does not simply "apply" to the Individual Defendants because they are associated with Brave Arts, IBG, My Tribe, and/or California Apparel. "Under the fiduciary shield doctrine, a person's mere association with a corporation that causes injury in the forum state is not sufficient in itself to permit that forum to assert jurisdiction over the person." Davis v. Metro. Prod., Inc., 885 F.2d 515, 520 (9th Cir. 1989) (citing Weller v. Cromwell Oil Co., 504 F.2d 927 (6th Cir. 1974), and United States v. Montreal Trust Co., 358 F.2d 239 (2d Cir. 1966)). Despite the continued citation of this doctrine by numerous courts, it appears that the doctrine—in its stated form at least—appears to have been rejected by the United Supreme Court's decisions in Calder v. Jones and Keeton v. Hustler Magazine, Inc. regarding the specific personal jurisdiction analysis. See Calder v. Jones, 465 U.S. 783, 789-90 (1984) ("Petitioners are correct that their contacts with California are not to be judged according to their employer's activities there. On the other hand, their status as employees does not somehow insulate them from jurisdiction. Each defendant's contacts with the forum State must be assessed individually."); Keeton v. Hustler Magazine, Inc., 465 U.S. 770, 781, n.13 (1984) ("[W]e today reject the suggestion that employees who act in their official capacity are somehow shielded from suit in their individual capacity"); see also Kukui Gardens Corp. v. Holco Capital Group, Inc., 664 F.Supp.2d 1103, 1110 (D. Haw. 2008) (questioning the continuing viability of the fiduciary shield doctrine).
Cases where specific personal jurisdiction was found to exist over individual corporate officer defendants typically have involved situations where the individual defendant was the "guiding spirit" behind the wrongful conduct . . . or the "central figure" in the challenged corporate activity. See Allstar Mktg. Group, LLC v. Your Store Online, LLC, 666 F.Supp.2d 1109, 1120 (C.D. Cal. 2009) (collecting cases); Matsunoki Group, Inc. v. Timberwork Oregon, Inc., No. C 08-04078 CW, 2009 WL 1033818, at *3-4 (N.D. Cal. Apr. 16, 2009) (Wilken, J.) (same).
Here, Plaintiff's allegations about the Individual Defendants' personal contacts with the Northern District of California are lacking, and her allegations about the conduct of the "Brave Arts Defendants" and the "IBG Defendants" are too vague and conclusory, to suggest that each of the Individual Defendants has a degree of participation or control sufficient to exercise specific jurisdiction over them. For example, aside from alleging that Yvette Guez is an owner of Brave Arts, Complaint, ECF No. 1 ¶¶ 5, 50, Plaintiff does not allege that Yvette Guez did anything at all, see generally id., and Plaintiff's allegations that the undifferentiated "Brave Arts Defendants" and "IBG Defendants" solicited and took orders from customers in the Northern District of California does nothing to show that she was a "central figure" or "primary participant" in the alleged infringing conduct. The same is true for Jean Pierre Guez and Jonathan Guez. Aside from alleging that Jean Pierre is an "owner" of IBG and that Jonathan Guez broadly "exercises management and control" over My Tribe, id. ¶¶ 8, 10, Plaintiff alleges nothing to show that either of them directly participated in the alleged infringing conduct, see generally id. The issue is closer with Gabriel Guez, but even those allegations do not suffice. While it is undisputed that Gabriel Guez personally entered into the agreements with Plaintiff that led to his becoming the Worldwide Master Licensee (by which he could create and market prints and merchandise featuring Plaintiff's artwork), see Complaint, ECF No. 1 ¶¶ 27-32, the record also shows that he then formed Brave Arts for the purpose of conducting the business involving the ALMERIANE Mark and products, see Gabriel Guez Declaration, ECF No. 10-2 ¶ 9, and that suggests that it is Brave Arts (or other entities that Brave Arts may have contracted with) that solicited and took orders from customers in the Northern District of California that Plaintiff alleges. Plaintiff alleges that he is an owner of Brave Arts, but this is not enough on it own, and Plaintiff's other allegations do not show that he personally participated in the soliciting and taking of orders of customers in the Northern District of California.
To the contrary, the record shows that Brave Arts, IBG, and My Tribe employed several sales agents to solicit and complete sales to customers, thus undercutting the suggestion that, as owners of these entities, the Individual Defendants were the ones who did these acts. Plaintiff submitted the Declaration of Teri Shearer, who states that she was a sales agent for IBG and, at "IBG's direction," solicited orders from customers in the Northern District of California. Shearer Declaration, ECF No. 17-2 ¶¶ 3-6. She states in pertinent part:
Id. ¶ 6. She states that Brave Arts and My Tribe, too, employed sales agents for this same purpose. Id. ¶ 3. While Ms. Shearer's declaration, which does not mention any of the Individual Defendants (except for one immaterial mention of Jean Pierre Guez near the end), surely helps show that Brave Arts, IBG, and My Tribe solicited and made sales from customers in the Northern District of California, it does not show that the Individual Defendants did so.
Numerous courts have found specific personal jurisdiction lacking where a plaintiff's allegations about individual defendants are so limited. See Marsh v. Zaazoon Solutions, LLC, No. C-11-05226 YGR, 2012 WL 92226, at *9 (N.D. Cal. Mar. 20, 2012) (ruling that plaintiffs did not meet their burden to show specific personal jurisdiction over individual defendants where plaintiffs' second amended complaint was "devoid of any allegations of a specific act" and instead contained only allegations that the individual defendants were principals and members of the companies that operated the scam at issue and that the individual defendants actively participated in the misconduct); Clerkin v. MyLife.com, Inc., No. C 11-00527 CW, 2011 WL 3607496, at *1-2, 4 (N.D. Cal. Aug. 16, 2011) (ruling that plaintiffs did not meet their burden to show specific personal jurisdiction over an individual defendant who was the corporate defendant's "Vice President of Emerging Business" where plaintiffs' only allegations about him were that he "conspired with" others "to perpetuate" a fraudulent scheme and "personally performed acts" in support of a fraudulent scheme because those allegations "[did] not afford any insight into how [he] controlled or directly participated in the alleged fraudulent scheme"); Just Film, Inc. v. Merchant Servs., Inc., No. C 10-1993 CW, 2010 WL 4923146, at *6 (N.D. Cal. Nov. 29, 2010) (ruling that plaintiffs did not meet their burden to show specific personal jurisdiction over certain individual defendants where plaintiffs alleged only that those individual defendants directed and controlled the entities alleged to have engaged in the wrongful conduct and did not allege how those individual defendants directed or controlled those entities). And in the cases where courts have found that specific personal jurisdiction exists over individual defendants who are employees of entity defendants, those plaintiffs usually alleged that the individual defendants did specific acts in furtherance of the specific wrongful conduct at issue. See, e.g., Enriquez v. Interstate Group, LLC, No. 11-CV-05155 YGR, 2012 WL 3800801, at *4 & n.3 (N.D. Cal. Aug. 31, 2012) (court ruled that plaintiffs had met their burden to show specific personal jurisdiction over an individual defendant who was the chief operating officer of the entity defendant accused of violating federal employment law and who was alleged to have promulgated both the policy decision to misclassify store managers as "exempt" employees and to deny overtime compensation to sales associates, and to have personally fired one plaintiff); Holliday v. Lifestyle Life, Inc., No. C 09-4995 RS, 2010 WL 3910143, at *1, 4 & n.5 (N.D. Cal. Oct. 5, 2010) (court ruled that plaintiffs had met their burden to show specific personal jurisdiction over individual corporate officer defendants where plaintiffs alleged that the individual defendants controlled, or at least were involved in, the creation of the corporate employment policy that denied overtime compensation to all non-exempt schedulers in violation of federal employment law); Blinglet, Inc. v. Amber Alert Safety Centers, Inc., No. C 09-05156 SI, 2010 WL 532388, at *1 (N.D. Cal. Feb. 6, 2010) (court ruled in a breach of contract action that plaintiff had met its burden to show specific personal jurisdiction over an individual defendant who allegedly signed the letter of intent setting forth the terms of the agreement that specified the ownership of copyrighted software developed by both plaintiff and the corporate defendant, represented to investors that the corporate defendant developed the software alone, and took concrete steps to prevent plaintiff from capturing the portion of revenues to which it was contractually entitled).
On this record, the court finds that the Individual Defendants did not purposefully direct activities at the Northern District of California. Plaintiffs did not meet their burden to show that the first prong of the applicable test for specific personal jurisdiction—purposeful direction—over the Individual Defendants was met. Therefore, specific personal jurisdiction does not exist over them.
The answer is different with respect to the Brave Arts, IBG, My Tribe, California Apparel, and the Retail Defendants (collectively, the "Entity Defendants"). Once again, to determine whether venue is proper, the court must determine whether the Entity Defendants would be subject to personal jurisdiction in the Norther District of California. As described above, for specific jurisdiction to exist, (1) the nonresident defendant must purposefully direct his activities at the forum state or purposefully avail himself of the benefits and protections of the laws of the forum state, (2) the claim must be one which arises out of or relates to the defendant's forum-related activities, and (3) the exercise of personal jurisdiction must be reasonable. Yahoo!, 433 F.3d at 1205-1206 (citing Schwarzenegger, 374 F.3d at 802).
Here, the first prong—purposeful direction—is met because the record supports finding that each of the entity Defendants (1) committed an intentional act, (2) expressly aimed at the forum state, (3) causing harm that the defendant knew was likely to be suffered in the Northern District of California. Plaintiff alleges that Brave Arts, IBG, and My Tribe solicited and made sales from customers in the Northern District of California, Complaint, ECF No. 1 ¶¶ 3, 7, 9, 34, and Ms. Shearer's declaration supports this allegation. She describes how she, a sales agent, was directed by IBG to do exactly that, and she further states that Brave Arts and My Tribe employed sales agents for the same purpose. Shearer Declaration, ECF No. 17-2 ¶¶ 3-6. Plaintiff also alleges that California Apparel has, without her authorization or consent, developed, manufactured, displayed, promoted, distributed, and sold products bearing her artwork to the Retail Defendants, who then offered the products for sale in the Northern District of California via their websites. Complaint, ECF No. 1 ¶ 64, Exh. 13. Plaintiff's allegation in this regard is unchallenged. See generally Motion, ECF No. 17; Reply, ECF No. 20; see also Mavrix Photo, 647 F.3d at 1230 (defendant's infringing website "expressly aimed" at California because the defendant "exploit[ed] . . . the California market for its own commercial gain" by selling space on its website for advertisements targeting Californians with the knowledge that its website garnered a substantial viewership in California). Instead, Brave Arts, IBG, My Tribe, and California Apparel argue that their sales to customers in the Northern District of California are too minimal to support personal jurisdiction. Opposition, ECF No. 10 at 9-10. But as Plaintiff points out, even a showing of a "modest amount of sales" of an infringing product is enough to support venue. See Allstar, 666 F. Supp. 2d at 1130 (citing Sutter Home Winery, Inc. v. Madrona Vineyards, L.P., No. C 05-0587 MHP, 2005 WL 701599, at *4 & n.2 (N.D. Cal. Mar. 23, 2005) (Patel, J.))
The second prong also is satisfied. "The second requirement for specific, personal jurisdiction is that the claim asserted in the litigation arises out of the defendant's forum related activities." Panavision, 141 F.3d at 1322. This element is met if Plaintiff would not have been injured "but for" Defendants' alleged intentional acts relating to the Northern District of California. See id. Here, Plaintiff's copyright claim arises out of the Entity Defendants' solicitation and sale of products featuring her artwork to customers in this District. "But for" their doing so, Plaintiff's copyrights in her artwork would not have been violated.
Having satisfied her burden on the first and second prongs of the test, the burden shifts to the Entity Defendants to present a "compelling case" that the exercise of specific personal jurisdiction would be unreasonable. "For jurisdiction to be reasonable, it must comport with fair play and substantial justice." Panavision, 141 F.3d at 1322 (internal quotation marks omitted). When considering this question, courts consider seven factors: (1) the extent of the defendant's purposeful interjection into the forum state, (2) the burden on the defendant in defending in the forum, (3) the extent of the conflict with the sovereignty of the defendant's state, (4) the forum state's interest in adjudicating the dispute, (5) the most efficient judicial resolution of the controversy, (6) the importance of the forum to the plaintiff's interest in convenient and effective relief, and (7) the existence of an alternative forum. Id. at 1323.
The Entity Defendants fail to meet their burden. In fact, even though Plaintiff explicitly addressed these factor in her opposition, see Opposition, ECF No. 17 at 12-15, the Entity Defendants failed to mention any of them in the motion or reply, see generally Motion, ECF No. 10; Reply, ECF No. 20. In light of their failure to do so, the court need not address these factors.
Accordingly, Plaintiff met her burden to show that the Northern District of California is a proper venue for her copyright infringement claim against the Entity Defendants.
Plaintiff also brings two claims for violation of the Lanham Act: her second claim is against all defendants for trademark infringement, false designation of origin, and unfair competition in violation of 15 U.S.C. § 1125; and her seventh claim against the Brave Arts defendants is for filing a false federal trademark application in violation of 15 U.S.C. §§ 1119 and 1125. Complaint, ECF No. 1 ¶¶ 79-85, 112-117.
"Venue over trademark claims is governed by the general venue statute, 28 U.S.C. § 1391." Allstar, 666 F. Supp. 2d at 1128 (citing Golden Scorpio Corp. v. Steel Horse Bar & Grill, 596 F.Supp.2d 1282, 1286 n.3 (D. Ariz. 2009) ("Because the Lanham Act has no special venue provision, the general venue statute applies.")). 28 U.S.C. § 1391(b) sets forth three bases for proper venue, and Plaintiff acknowledges that 28 U.S.C. § 1391(b)(1) and (b)(3) do not apply here, so the court looks only to 28 U.S.C. § 1391(b)(2). That provision provides that "[a] civil action may be brought in . . . a judicial district in which a substantial part of the events or omissions giving rise to the claim occurred, or a substantial part of property that is the subject of the action is situated." 28 U.S.C. § 1391(b)(2). "In a trademark suit brought under the Lanham Act, a substantial part of the events giving rise to the claims occur in any district where consumers are likely to be confused by the accused goods, whether that occurs solely in one district or in many." Allstar, 666 F. Supp. 2d at 1128 (internal quotation marks and citations omitted); see also Adobe, 2011 WL 566812, at * 7. A plaintiff "only need show `that a substantial number of consumers of [a] plaintiff's [trademarked products] who reside in this district may be confused by [the] defendant's use of the [allegedly infringing] mark.'" Id. (quoting Sutter Home Winery, 2005 WL 701599, at *4 n.2).
Here, Plaintiff argues that the solicitation of customers in the Northern District of California and sales to of the accused products them satisfy this standard. Opposition, ECF No. 17 at 16-17. She specifically points to sales made to "at least six retailers in the Northern District of California: Emily Lee and Channel 910 in San Francisco, New Threads in Corte Madera, Daisy in St. Helena, Forget Me Not in Aptos, and Safari in Mendocino." Shearer Declaration, ECF No. 17-2 ¶ 6; see also Complaint, ECF No. 1 ¶ 34. Defendants do not appear to contest that these sales occurred
Plaintiff also brings under California law. Her third and fourth claims, which she brings against all Defendants, are for common law trademark infringement and for unfair and fraudulent business practices in violation of the UCL, respectively; her fifth, which she brings against the Brave Arts Defendants and the IBG Defendants, is for fraud and deceit; and her sixth claim, which she brings against the Brave Arts Defendants, is for conversion. Complaint, ECF No. 1 ¶¶ 86-111. These claims all arise out of the same transaction and occurrence that gives rise to her trademark and copyright claims. Because of this close relationship among the claims, venue is proper under the doctrine of "pendent venue."
Although the court finds that the Northern District of California is a proper venue for Plaintiff's trademark and state law claims against Defendants, it nevertheless finds that this district is an improper venue over Plaintiff's copyright infringement claim against the Individual Defendants.
Here, it is uncontested that the Central District of California is a proper venue for this action in its entirety. See Opposition, ECF No. 17 at 17 ("Defendants admit that the Central District [of California] is a viable alternate venue for this case."); Reply, ECF No. 20 at 7 (requesting that the court "dismiss or transfer this action to the Central District of California, the proper venue under 28 U.S.C. §§ 1391(b) [and] 1400(a)"). "Normally transfer will be in the interest of justice because normally dismissal of an action that could be brought elsewhere is `time-consuming and justice-defeating.'" Miller v. Hambrick, 905 F.2d 259, 262 (9th Cir. 1990) (quoting Goldlawr, Inc. v. Heiman, 369 U.S. 463, 467 (1962) (transfer under the venue statute 28 U.S.C. § 1406)); see also Schwarzer, Tashima & Wagstaffe, CAL. PRAC. GUIDE: FED. CIV. PRO. BEFORE TRIAL § 4:577 (The Rutter Group 2013) ("Normally, if there is another district or division in which the action could have been brought, transfer is preferred to the harsh remedy of dismissal. Transfer avoids any statute of limitations problems and the necessity of filing and serving a new action.") (citing Minnette v. Time Warner, 997 F.2d 1023, 1026-27 (2d Cir. 1993)). Because the Central District of California is a proper venue for this action in its entirety, the court transfers the action to that district.
Although the court rules that venue is improper and the action must be transferred for that reason, it also rules that the action must be transferred for the convenience of the parties and in the interests of justice.
As stated above, it is Defendants' burden to show that transfer is appropriate. Commodity Futures Trading Commission, 611 F.2d at 279. They have. First, the parties agree that this action could have been brought in the Central District of California. See Opposition, ECF No. 17 at 17; Reply, ECF No. 20 at 7.
Second, transfer serves the convenience of the parties. On one side, there is Plaintiff, who resides in Spain and who does not argue that it is more difficult (whether financially or otherwise) for her to litigate in Los Angeles than in San Francisco. She suggests that she will face increased litigation costs should be forced to litigate in the Central District of California because her attorneys are based in the Northern District of California, but she provides no authority implying or holding that this is a relevant consideration here.
Third, transfer will promote the interests of justice. Indeed, the factors specifically identified by the Ninth Circuit support transferring this action to the Central District of California. See Jones, 211 F.3d at 498-99. As for the factors bearing upon the relationship between Plaintiff's action and the Central District: the parties negotiated and executed the agreements that pertain to this action in Spain and Los Angeles; the parties have just as many, if not more, contacts with the Central District as they do with this District; Defendants' sold the allegedly infringing goods in both Districts, and so there are contacts relating to Plaintiff's claims in both places; Defendants have identified several non-party witnesses who reside in the Los Angeles area and may be subject to subpoena there; and much of the relevant proof will be found where Defendants are located. The factors relating to the courts also favor transfer: judges in the Central District is as familiar with the governing law as judges in this District are; Plaintiff's choice of forum is given less weight where, as here, she commenced an action in a forum in which she does not reside, see Piper Aircraft, 454 U.S. at 255-56; and the costs of litigation should be similar given the availability of technology that makes it easier to do things remotely, see CollegeSource, Inc. v. AcademyOne, Inc., 653 F.3d 106, 1080 (9th Cir. 2011) ("With the advances in transportation and telecommunications and the increasing interstate practice of law, any burden of litigation in a forum other than one's residence is substantially less than in days past.") (internal citations, quotation marks, and alterations omitted). The court also notes that, although Plaintiff has not yet been served yet, the Brave Arts Defendants' action against her already has been instituted in Los Angeles.
Accordingly, the court finds that, even if venue in this District was proper, transfer to the Central District of California would be appropriate under 28 U.S.C. § 1404(a).
Based on the foregoing, the court
