NATHANIEL M. GORTON, District Judge.
This breach of contract action is brought by plaintiff Rhode Island Novelty, Inc. ("RIN") against defendant Imperial Toy, LLC ("Imperial"). RIN alleges that after signing a license agreement that granted it the exclusive right to sell products covered by Imperial's patent, Imperial subsequently breached that agreement by permitting multiple third-parties also to sell covered products. Pending before the Court is defendant's motion to dismiss for lack of personal jurisdiction or, in the alternative, to transfer the case to the United States District Court for the Central District of California. For the reasons that follow, the motion will be denied.
Imperial is a California corporation with a principal place of business in Los Angeles, California. Imperial designs, manufactures and sells a variety of children's novelty toys both domestically and internationally. It holds U.S. Patent No. 5,498,191 ("the `191 Patent") on a bubble-producing toy gun.
RIN is an importer and wholesaler of,
In July, 2012, Imperial's then-general counsel, Stefanie Schaeffer ("Schaeffer"), sent a cease and desist letter to RIN claiming that RIN's sale of its various "Bubble Blaster" products infringed the `191 Patent. The letter was sent to the address of RIN's then-corporate headquarters in Rhode Island. During the following months, Schaeffer and RIN's President, Bogdan Nowak ("Nowak"), engaged in discussions related to RIN's alleged infringement. The negotiations were conducted by both e-mail and telephone; neither party ever travelled to meet the other. During the negotiations, Nowak's email signature included a phone number with a Rhode Island area code.
In late November, 2012, the parties signed and executed a two-page document entitled "Term Sheet to Settle Patent Claims Against Rhode Island Novelty" ("the License Agreement"). The License Agreement was signed by Nowak on November 24, 2012, at RIN's new headquarters in Massachusetts and on November 26, 2012, by Schaeffer in California.
The License Agreement states that, for a period of five years, Imperial will license its rights under the `191 Patent to RIN. The license grants RIN the right
The License Agreement also states that RIN will "be granted exclusivity" in the aforementioned markets in return for a 7% royalty fee on all gross sales on products that utilize the patent rights. It does not include clauses for either choice-of-law or forum selection.
RIN provided quarterly accounting reports and remitted appropriate royalties for sales on covered products through September, 2013. Each of the four quarterly accounting statements sent to Imperial included both a Massachusetts mailing address and Massachusetts phone and fax numbers.
In late 2013, RIN discovered that Imperial purportedly violated the exclusivity provision of the License Agreement by knowingly permitting five different entities to make, at a minimum, internet sales of products that encompassed the `191 Patent. RIN contends that Imperial's failure to take affirmative steps to prevent those companies from infringing the `191 Patent necessarily puts it in breach of the License Agreement. Furthermore, RIN contends that Imperial committed a "direct and knowing breach" of the License Agreement when it granted a similar, competing license to LightUpToys.com, Inc. ("LightUpToys") as part of an agreement to settle litigation between Imperial and LightUpToys in California.
As a result, RIN has declined to submit quarterly accounting statements or to remit any royalties to Imperial since October, 2013. The parties had extensive discussions about their disagreement until the filing of the instant suit. RIN asserts that Imperial is in breach of the license while Imperial responds that RIN wrongfully has engaged in self-help and withheld royalty payments.
On September 5, 2014, RIN filed its complaint in this Court invoking diversity jurisdiction under 28 U.S.C. § 1331. RIN's complaint asserts a single claim for breach of the License Agreement.
On October 29, 2014, the same day it was served with process in this case, Imperial filed suit against RIN in the Superior Court of California, County of Los Angeles. Imperial asserts a single count for breach of contract, alleging that RIN violated the License Agreement by its failure to submit quarterly accounting reports and royalty payments. On November 26, 2014, RIN timely removed Imperial's California suit to the United States District Court for the Central District of California. Shortly thereafter, RIN filed a motion to dismiss the California case for improper venue or, in the alternative, to transfer the case to this District.
On December 15, 2014, Imperial filed a motion to dismiss this action for lack of personal jurisdiction under Fed. R. Civ. P. 12(b)(2) or, in the alternative, to transfer the case to the Central District of California pursuant to 28 U.S.C. § 1404(a).
In order to hear cases and issue judgments a district court must have personal jurisdiction over the parties.
To establish personal jurisdiction, a plaintiff must show that jurisdiction is 1) statutorily authorized and 2) consistent with the Due Process Clause of the United States Constitution.
The Due Process Clause requires minimum contacts between a nonresident defendant and the forum state such that the exercise of personal jurisdiction over that defendant accords with "traditional notions of fair play and substantial justice."
There are two forms of personal jurisdiction: general and specific.
The First Circuit employs a tripartite analysis to determine whether specific jurisdiction is appropriate. The Court inquires whether 1) the claims arise out of or are related to the defendant's in-state activities, 2) the defendant has purposefully availed themselves of the laws of the forum state and 3) the exercise of jurisdiction is reasonable under the circumstances.
The relatedness test is a "flexible, relaxed" standard that focuses on the nexus between the plaintiff's claim and the defendant's contacts with the forum state.
Imperial contends that RIN has failed to establish the required connection between its claim and Imperial's contacts with Massachusetts. It avers that the "focal point" of plaintiff's claim is the allegation that Imperial breached the License Agreement by granting a subsequent licensing agreement to LightUpToys, an Indiana company, in order to settle a California case. Imperial's argument, however, misses the mark. The focus is not merely on the physical location of Imperial's settlement with LightUpToys but rather how that settlement relates to Imperial's contacts with Massachusetts.
Here, RIN alleges a breach of the License Agreement that establishes RIN's exclusive rights to sell products which utilize Imperial's `191 Patent during a five-year term. The license contemplates a long-term business relationship which calls for RIN to sell covered products, submit quarterly accounting reports and remit royalties to Imperial, all from its place of business in Massachusetts. Imperial subsequently received four quarterly statements and more than $90,000 in royalties from RIN before it became aware of Imperial's alleged breach. All of the accounting statements were sent from Massachusetts and explicitly included RIN's Massachusetts contact information.
As Imperial notes, it first contacted RIN and subsequently conducted the bulk of negotiations with RIN while RIN's principal place of business was in Rhode Island. Nevertheless, at the time the contract was executed in late November, 2012, RIN had completed its move to Massachusetts and, therefore, Imperial signed the License Agreement with a Massachusetts-based company.
Accordingly, both the origination of the contract and RIN's claim of alleged injury arise from, and are related to, Imperial's contacts with Massachusetts. See id. at 50. Thus, plaintiff has satisfied the relatedness prong of the jurisdictional analysis.
The second issue for determining specific jurisdiction is whether the defendant "purposefully avail[ed] itself of the privilege of conducting activities within the forum State".
The Court should analyze whether the defendant chose deliberately to engage in significant activities within the forum, or "has created continuing obligations between himself and residents of the forum".
Imperial contests the notion that it purposefully availed itself of Massachusetts laws and resources. It asserts that originally it contacted RIN at its Rhode Island address and negotiated a license with what it presumed to be a Rhode Island company. Moreover, it points out that its representatives never met RIN in Massachusetts and that it would therefore be unreasonable to permit RIN's subsequent move to Massachusetts to serve as the basis for subjecting it to personal jurisdiction within the Commonwealth.
The Court disagrees. Regardless of the initial pre-contract negotiations, RIN had transformed into a Massachusetts company by the time the License Agreement was executed by both parties. Thereafter, Imperial had a contractual relationship with a Massachusetts entity. The fact that Imperial's representatives never came to Massachusetts is not dispositive.
Furthermore, Imperial expressed no concern about RIN's domicile before entering into the License Agreement. If Imperial was genuinely apprehensive about being subjected to suit in RIN's forum, it could have included a forum selection clause in the license but there is no evidence that subject even arose.
Ultimately, Imperial made a conscious decision to create a long-term contractual relationship with a company that would retain the exclusive right to sell products that encompassed claims of its patent from RIN's home forum. Imperial fully expected to benefit from those sales through the remittance of royalties regardless of their source.
Accordingly, the Court finds that RIN has established that Imperial purposefully availed itself of the privileges and obligations of conducting business in Massachusetts.
Finally, the reasonableness inquiry operates on a sliding scale with the first two factors of the jurisdictional analysis, such that a stronger showing of relatedness and purposeful availment serves to ease the plaintiff's burden of establishing reasonableness.
Here, the gestalt factors point toward the conclusion that exercising jurisdiction in Massachusetts would be reasonable. First, the Court recognizes that it would be somewhat inconvenient for Imperial to appear in Massachusetts given that the company is located in California. However, Imperial has not shown that litigating in Massachusetts is "onerous in a special, unusual, or other constitutionally significant way."
The second factor also supports a finding of reasonableness because Massachusetts has a strong interest in providing its citizens with a convenient forum in which to assert their claims.
In sum, the exercise of jurisdiction in Massachusetts over Imperial is reasonable and does not offend "traditional notions of fair play and substantial justice". Thus, the Court will deny defendant's motion to dismiss for lack of personal jurisdiction.
Notwithstanding the fact that it has personal jurisdiction, this Court may transfer a civil action "[f]or the convenience of parties and witnesses, in the interest of justice" pursuant to 28 U.S.C. § 1404(a).
While the decision to transfer a case under § 1404 lies solely within the sound discretion of the trial court, there is a presumption in favor of the plaintiff's choice of forum.
Moreover, in the face of concurrent litigation, courts typically follow the "first-to-file" rule which holds that the "first filed action is generally preferred in a choice-of-venue decision."
Here, RIN filed its complaint on September 5, 2014. Almost two months later, and presumably only because it had been served earlier that same day, Imperial filed its own lawsuit against RIN in California state court. Imperial contends that RIN was deceptive in feigning to negotiate a resolution in order to delay Imperial from filing its own suit first. Imperial further argues that RIN's complaint is, in effect, a declaratory judgment action that should not be entitled to the benefits of the first-to-file rule.
Notably, the first-to-file rule would apply even if RIN's complaint were a declaratory judgment, which it is not.
Furthermore, the other factors of convenience do not warrant a transfer of the case. In particular, Imperial stresses that most of the witnesses in this case will be more inconvenienced by a trial in Massachusetts than by a trial in California. Courts in this district, however, have held that a venue transfer is inappropriate when it has the effect of merely shifting the inconvenience from one party to another.
The Court therefore concludes that a transfer of the pending action to the United States District Court for the Central District of California is unwarranted. That is true not only in light of the first-to-file rule but also because of the strong presumption in favor of plaintiff's choice of forum.
For the foregoing reasons, defendant Imperial Toy, LLC's motion to dismiss for lack of personal jurisdiction or, in the alternative, to transfer the case to the United States District Court for the Central District of California (Docket No. 7) is