A. JOE FISH, Senior District Judge.
Before the court are the defendant's motions to dismiss the plaintiff's amended complaint for lack of personal jurisdiction and failure to state a claim for relief (docket entry 24) and the plaintiff's motion to strike aspects of the defendant's supporting affidavit (docket entry 28). For the reasons discussed below, the defendant's motions are denied and the plaintiff's motion is granted.
The present dispute arises out of a manufacturing agreement (the "agreement") the parties negotiated in April and May of 2010. Plaintiff's First Amended Complaint ("Complaint") ¶ 13 (docket entry 22). Under the agreement, the defendant, Ningbo Desa Electrical Manufacturing Company, Ltd. ("Desa"), agreed to manufacture heaters for the plaintiff, Source Network Sales & Marketing, LLC ("Source"). Id. Desa "requested orders and payments for the Heaters to be sent through China Ningbo Cixi Import and Export (`Cixi')" — Desa's holding company — "and informed Source that Cixi would also handle shipping the Heaters." Appendix to Plaintiff's Response to Defendant's Motion to Dismiss ("Plaintiff's Appendix") (docket entry 27), Tab 1, Declaration of Mike Dolder ("Dolder Declaration") at App. 3, ¶ 10. Although Source was not the manufacturer of the heaters, it was still "responsible for all quality control and warranty issues." Complaint ¶ 13.
During the course of the parties' business relationship, Desa's representatives had various contacts with Texas. "In the spring of 2013, at Desa's request, representatives of Desa . . . visited Source's offices in Plano, Texas." Dolder Declaration at App. 5, ¶ 16. Of the more than 1,500,000 heaters Desa manufactured for Source, "Approximately 115,000 heaters were shipped directly to Source in Texas, and shipments were made on a weekly basis ten months out of every year, with at least 168 total shipments sent directly to Texas." Id. ¶ 15. Desa sent replacement parts to ABC Vacuum, an Austin, Texas-based company which repaired defective heaters Source had sold. Plaintiff's Appendix, Tab 3, Declaration of Ralph Baccus at App. 54-55, ¶ 4; see also Dolder Declaration at App. 7, ¶ 22. Moreover, throughout the relationship, Desa communicated with Source's representatives in Texas to handle business issues. Dolder Declaration at App. 5-6, ¶¶ 17, 20.
Frustrated by the increasing number of defective heaters Desa manufactured, Source terminated its relationship with Desa in January of 2014. Id. at App. 6-7, ¶¶ 21-24; Complaint ¶ 16. Subsequently, Source discovered that in 2011 Desa applied for and successfully registered LIFE SMART (the "mark") as a trademark in China. Complaint ¶ 18; Dolder Declaration at App. 7-8, ¶ 25; Plaintiff's Appendix, Tab 1, Exhibit A ("Cease-and-Desist Letter") at App. 12 ("Ningbo Desa has obtained registration of the LIFE SMART trademark for electric heaters. . . ."). Prior to Desa's registration of the mark in China, Source had already registered the mark in the United States for hot tubs, spas, and saunas. Complaint ¶ 8, Exhibit 1.
In 2014, Source filed an application to register the mark for additional products, including infrared heaters, in the United States. Id. ¶ 8, Exhibit 2. When the United States Patent & Trademark Office published the mark on February 25, 2014 for opposition, "Desa filed an application for a stylized mark `Life Smart' that is identical" to a logo Source developed for the mark in 2011.
Moreover, Desa sent emails to many of Source's customers, including BiMart, Home Depot, Walmart, KMS, Inc., and Lowes, Inc., claiming that Source was "infringing on Desa's trademarks" and offering to serve as an alternative supplier of Life Smart heaters. Dolder Declaration at App. 8-10, ¶¶ 29-33; Plaintiff's Appendix, Tab 1, Exhibits B, F-H. After the contractual relationship between Desa and Source ended, at least one United States company purchased heaters from Desa bearing the mark. Plaintiff's Appendix, Tab 2, Declaration of Keith Carpenter at App. 42-44, ¶¶ 2-4. Despite Desa's actions, "On July 14, 2014, Source Network also obtained a federal registration for the Mark . . . for infrared heaters and other products. . . ." Complaint ¶ 8; Exhibit 2.
Source filed its complaint with this court on March 28, 2014 asserting claims for trademark infringement, unfair competition, tortious interference, and declaratory judgment (docket entry 1). After Desa served a motion to dismiss (docket entry 14), Source filed an amended complaint which added claims for breach of contract and breach of implied warranty of merchantability (docket entry 22). Desa responded again with a motion to dismiss, contending both that Source's amended complaint fails to state claims for tortious interference and breach of contract and that the court lacks personal jurisdiction over Desa with respect to all of Source's claims (docket entry 24). Source filed a timely response (docket entry 26) and a motion to strike certain statements contained in an affidavit supporting Desa's motion (docket entry 28). Desa failed to serve a reply. The motions are now ripe for consideration.
A federal court may exercise personal jurisdiction over a nonresident defendant if "(1) the long-arm statute of the forum state creates personal jurisdiction over the defendant; and (2) the exercise of personal jurisdiction is consistent with the due process guarantees of the United States Constitution."
Due process requires the satisfaction of two elements to exercise personal jurisdiction over a nonresident defendant: (1) the nonresident must have sufficient contacts with the forum, resulting from affirmative action on his part, such that the nonresident defendant could anticipate being haled into the courts of the forum state; and (2) it must be fair and reasonable to require the nonresident to defend himself in the forum state. See Burger King Corporation v. Rudzewicz, 471 U.S. 462, 474-78 (1985); Gulf Consolidated Services, Inc. v. Corinth Pipeworks, S.A., 898 F.2d 1071, 1073 (5th Cir.), cert. denied, 498 U.S. 900 (1990). The Due Process Clause ensures that persons have a "fair warning that a particular activity may subject [them] to the jurisdiction of a foreign sovereign." Burger King, 471 U.S. at 472 (quoting Shaffer v. Heitner, 433 U.S. 186, 218 (1977) (Stevens, J., concurring)) (internal quotation marks omitted).
To establish minimum contacts with the forum, a nonresident defendant must do some act by which he "purposefully avails [him]self of the privilege of conducting activities within the forum State, thus invoking the benefits and protections of its laws." Burger King, 471 U.S. at 474-75 (quoting Hanson v. Denckla, 357 U.S. 235, 253 (1958)) (internal quotation marks omitted). The unilateral activity of one asserting a relationship with the nonresident defendant does not satisfy this requirement. Id.; Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 417 (1984). "Once a plaintiff has established minimum contacts, the burden shifts to the defendant to show the assertion of jurisdiction would be unfair." Wien Air Alaska, Inc. v. Brandt, 195 F.3d 208, 215 (5th Cir. 1999) (citation omitted). In determining whether the exercise of jurisdiction is fair and reasonable under the Due Process Clause, "courts in appropriate cases may evaluate the burden on the defendant, the forum State's interest in adjudicating the dispute, the plaintiff's interest in obtaining convenient and effective relief, the interstate judicial system's interest in obtaining the most efficient resolution of controversies and the shared interest of the several States in furthering fundamental substantive social policies." Burger King, 471 U.S. at 477 (internal quotations, alterations and citation omitted).
Two types of in personam jurisdiction may be exercised over a nonresident defendant — specific jurisdiction and general jurisdiction. Specific jurisdiction exists if the cause of action "arises from or relates to the defendant's contact with the forum state," and those contacts meet the due process standard. J.R. Stripling v. Jordan Production Company, LLC, 234 F.3d 863, 871 (5th Cir. 2000) (quoting Latshaw, 167 F.3d at 211) (internal quotation marks omitted). "In determining whether specific jurisdiction exists, the court must conduct the minimum contacts analysis separately for each cause of action." Eagle Metal Products, LLC v. Keymark Enterprises, LLC, 651 F.Supp.2d 577, 585 (N.D. Tex. 2009) (Lynn, J.) (citation omitted). With regard to a corporation, general jurisdiction may be found when the nonresident is (1) incorporated in the forum state; (2) operates its principal place of business in the forum state; or (3) possesses contacts with the forum that are "so continuous and systematic as to render them essentially at home in the forum State." Daimler AG v. Bauman, ___ U.S. ___, 134 S.Ct. 746, 754, 760 (2014) (internal quotations and citations omitted).
Under either a specific or general jurisdiction analysis, however, "the constitutional touchstone remains whether the defendant purposefully established `minimum contacts' in the forum [s]tate." Burger King, 471 U.S. at 474 (quoting International Shoe Company v. Washington, 326 U.S. 310, 316 (1945)). The "purposeful availment" requirement of the minimum contacts inquiry "ensures that a defendant will not be haled into a jurisdiction solely as a result of `random,' `fortuitous,' or `attenuated' contacts . . . or of the `unilateral activity of another party or a third person.'" Id. at 475(internal citations omitted).
In Calder v. Jones, 465 U.S. 783, 784-86 (1984), the Supreme Court concluded that personal jurisdiction existed in the California Superior Court over a reporter and editor of a Florida-based national magazine with respect to libel claims brought by an actress. An issue of the magazine, which sold approximately 600,000 copies in California, contained material that allegedly libeled the actress. Id. at 785. While researching the relevant article, the reporter called sources in California and even called the actress's residence on one occasion. Id. at 785-86. The editor, who also served as the president of the magazine, "ha[d] been to California only twice — once, on a pleasure trip, prior to the publication of the article and once after to testify in an unrelated trial." Id. at 786. However, he did "review[ ] and approve[ ] the initial evaluation of the subject of the article and edited it in its final form. He also declined to print a retraction requested by [the actress]." Id. These facts demonstrated that the defendants helped produce "an article that they knew would have a potentially devastating impact upon [the actress]. And they knew that the brunt of that injury would be felt by [the actress] in the State in which she lives and works and in which the [magazine] has its largest circulation." Id. at 789-90. Consequently, the defendants "must reasonably anticipate being haled into court there to answer for the truth of the statements made in their article." Id. at 790 (internal quotations and citations omitted). Summarizing its reasoning, the Supreme Court noted that when a party is a "primary participant[ ] in an alleged wrongdoing intentionally directed at a [state's] resident, [then] jurisdiction over them [may be] proper on that basis." Id.
Calder indicated that when the effects of an intentional tort are clearly directed at a state, those effects support the exercise of personal jurisdiction over the tortfeasor in the target state. Although Calder concerned the tort of defamation, it is clear Calder's "effects test" extends "outside the context of defamation." Wien Air Alaska, 195 F.3d at 212 (citation omitted). In Guidry v. U.S. Tobacco Company, Inc., 188 F.3d 619, 629 (5th Cir. 1999) (citation omitted), the Fifth Circuit noted that "the effects of torts committed outside the forum state that cause death or serious physical harm may also serve as minimum contacts with the forum for purposes of personal jurisdiction." The test also logically applies to "intentional business torts," including tortious interference and intentional trademark infringement or dilution. Isbell v. DM Records, Inc., No. 3:02-CV-1408-G, 2004 WL 1243153, at *10 (N.D. Tex. June 4, 2004) (Fish, Ch.J.) (compiling cases); see also Mullins v. TestAmerica, Inc., 564 F.3d 386, 402 (5th Cir. 2009) (finding the application of the effects test to a tortious interference claim "particularly persuasive"); Healix Infusion Therapy, Inc. v. Human Arc Corporation of Ohio, Civil Action No. H-08-cv-3262, 2009 WL 7326369, at *7 n.2 (S.D. Tex. July 13, 2009) ("While the Fifth Circuit has not applied the effects test to resolve jurisdiction over trademark disputes, it has recognized that Calder's reasoning is applicable to intentional torts other than defamation, the claim at issue in [the] Supreme Court's opinion."); Healix Infusion Therapy, Inc. v. Helix Health, LLC, Civil Action No. H-08-0337, 2008 WL 1883546, at *6 (S.D. Tex. Apr. 25, 2008) ("[A] defendant that `expressly aims' its trademark-diluting conduct at residents of a forum state can be said to have purposely directed its activities toward that forum, and should therefore reasonably anticipate being haled into court in that forum.") (citation omitted); Licciardello v. Lovelady, 544 F.3d 1280, 1287-88 (11th Cir. 2008) (applying the effects test to a trademark infringement claim); Panavision International, L.P. v. Toeppen, 141 F.3d 1316, 1321-22 (9th Cir. 1998) (same); Dakota Industries, Inc. v. Dakota Sportswear, Inc., 946 F.2d 1384, 1391 (8th Cir. 1991) (same). These extensions represent other instances where defendants should "reasonably anticipate being haled into court" in a forum state "because of their intentional conduct in [another state or country] calculated to cause injury to" a party residing in the forum state. Calder, 465 U.S. at 789, 791 (emphasis added).
As this court has previously noted, the "effects test" establishes the minimum contacts necessary for personal jurisdiction when (1) a defendant committed an intentional tort or business tort; "(2) the plaintiff felt the brunt of the harm in the forum, such that the forum can be said to be the focal point of the resulting harm to the plaintiff; and (3) the defendant expressly aimed his conduct at the forum, so that the forum can be said to be the focal point of the tortious activity." Triple Diamond Energy Corporation v. Venture Research Institute, Inc., Civil Action No. 3:08-CV-0050-M, 2008 WL 2620352, at *4 (N.D. Tex. July 3, 2008) (Lynn, J.) (citation omitted). By requiring that a defendant "expressly aim[ ] his conduct at the forum," id., the third element ensures that a "[f]oreseeable injury alone is not sufficient to confer specific jurisdiction, absent the direction of specific acts towards the forum." Wien Air Alaska, 195 F.3d at 212 (citation omitted). In other words, "the plaintiff cannot be the only link between the defendant and the forum. Rather, it is the defendant's conduct that must form the necessary connection with the forum State that is the basis for its jurisdiction over him." Walden v. Fiore, ___ U.S. ___, 134 S.Ct. 1115, 1122 (2014) (citation omitted). In certain cases, "[p]urposeful forum-directed activity — even if only a single substantial act — may permit the exercise of specific jurisdiction in an action arising from or related to such acts." Ham v. La Cienega Music Company, 4 F.3d 413, 415-16 (5th Cir. 1993) (citations omitted).
For example, in SGS-Thomson Micro-Electronics, Inc. v. Ferris, No. 93-9115, 1995 WL 313932, at *1 (5th Cir. May 1, 1995) (per curiam) (unpublished), cert. denied, 516 U.S. 922 (1995), the Fifth Circuit approved the district court's exercise of personal jurisdiction over a defendant who "sent a letter to [an electronics company] in 1989 alleging that [the company] was infringing [his] copyright by selling certain `IC chips.'" The Fifth Circuit endorsed the district court's reference to an opinion from the Central District of California which "held that an alien defendant's transmittal of a letter to the Plaintiff in the forum state threatening litigation for patent infringement, and thereby threatening plaintiff's activities in the forum state, was sufficient forum-related activity to satisfy due process requirements needed to support specific jurisdiction." Id. at *2 (citing Dolco Packaging Corporation v. Creative Industries, Inc., No. 86-3078 WMB (Bx), 1986 WL 84366 (C.D. Ca. Oct. 10, 1986)). By sending the cease-and-desist letter, the defendant "initiated" and "purposefully directed" conduct towards Texas that established the minimum contacts necessary for personal jurisdiction.
In reaching this conclusion, the Fifth Circuit cited Brown v. Flowers Industries, Inc., 688 F.2d 328 (5th Cir. 1982), cert. denied, 460 U.S.1023 (1983), an opinion preceding Calder but consistent with its principles. The Brown court concluded that the due process clause authorized the exercise of personal jurisdiction over an Indiana businessman whose only relevant contact with Mississippi was an allegedly defamatory telephone call he made to a corporation located in Mississippi. Id. at 333-34. In the court's words, the businessman "initiated the telephone call and allegedly committed an intentional tort. The injurious effect of the tort, if one was committed, fell in Mississippi, which the defendant could easily have foreseen." Id. at 334.
Similarly, in Athletic Training Innovations, LLC v. L.A. Gear, Inc., Civil Action No. 10-1524, 2010 WL 4103309, at *5 (E.D. La. Oct. 18, 2010), the court concluded it possessed personal jurisdiction over a shoe company with respect to a tortious interference claim because the shoe company "specifically sent a cease-anddesist letter to the Plaintiff in Louisiana . . . ." With this Louisiana contact in place, the court relied on the effects produced by additional cease-and-desist letters the shoe company sent to the plaintiff's out-of-state customers to establish jurisdiction under Calder. Id. at *3-6. These latter cease-and-desist letters "were designed to prevent Plaintiff from retaining customers," and given the shoe company's knowledge of the plaintiff's home state, "they were `purposefully directed' towards a Louisiana resident." Id. at *5.
When a nonresident defendant moves to dismiss for lack of personal jurisdiction under Federal Rule of Civil Procedure 12(b)(2), "the plaintiff bears the burden of establishing the district court's jurisdiction over the nonresident." Wilson, 20 F.3d at 648 (quoting Stuart v. Spademan, 772 F.2d 1185, 1192 (5th Cir. 1985)) (internal quotation marks omitted); see also Gardemal v. Westin Hotel Company, 186 F.3d 588, 592 (5th Cir. 1999). Once the plaintiff establishes minimum contacts between the defendant and the forum, "the burden shifts to the defendant to show the assertion of jurisdiction would be unfair." Wien Air Alaska, 195 F.3d at 215 (citation omitted); see also Eagle Metal Products, 651 F. Supp. 2d at 587 ("Since [the defendant] does not even claim the absence of fair play and substantial justice, . . . if minimum contacts exist, jurisdiction may be exercised.") "The court may determine the jurisdictional issue by receiving affidavits, interrogatories, depositions, oral testimony, or any combination of the recognized methods of discovery." Stuart, 772 F.2d at 1192.
In its consideration of the motion, the court will take the allegations of the complaint as true, except where they are controverted by opposing affidavits, and all conflicts in the facts are resolved in favor of the plaintiff. Wilson, 20 F.3d at 648; Gardemal, 186 F.3d at 592. If the court decides not to have an evidentiary hearing on the jurisdictional issue, then to defeat the motion the plaintiff is required to present a prima facie case for personal jurisdiction, rather than proving the issue by a preponderance of the evidence. King v. Hawgwild Air, LLC, Civil Action No. 3:08-CV-0153-L, 2008 WL 2620099, at *1 (N.D. Tex. June 27, 2008) (Lindsay, J.).
"In considering a motion to dismiss for failure to state a claim, a district court must limit itself to the contents of the pleadings, including attachments thereto." Collins v. Morgan Stanley Dean Witter, 224 F.3d 496, 498 (5th Cir. 2000) (citing FED. R. CIV. P. 12(b)(6)). "To survive a Rule 12(b)(6) motion to dismiss, the plaintiff must plead `enough facts to state a claim to relief that is plausible on its face.'" In re Katrina Canal Breaches Litigation, 495 F.3d 191, 205 (5th Cir. 2007) (quoting Bell Atlantic Corporation v. Twombly, 550 U.S. 544, 570 (2007)). "While a complaint attacked by a Rule 12(b)(6) motion to dismiss does not need detailed factual allegations, a plaintiff's obligation to provide the grounds of his entitlement to relief requires more than labels and conclusions, and a formulaic recitation of the elements of a cause of action will not do." Twombly, 550 U.S. at 555 (internal quotation marks, brackets, and citation omitted). "Factual allegations must be enough to raise a right to relief above the speculative level, on the assumption that all the allegations in the complaint are true (even if doubtful in fact)." In re Katrina Canal, 495 F.3d at 205 (quoting Twombly, 550 U.S. at 555) (internal quotation marks omitted). "The court accepts all well-pleaded facts as true, viewing them in the light most favorable to the plaintiff." Id. (quoting Martin K. Eby Construction Company, Inc. v. Dallas Area Rapid Transit, 369 F.3d 464, 467 (5th Cir. 2004)) (internal quotation marks omitted).
The Supreme Court has prescribed a "two-pronged approach" to determine whether a complaint fails to state a claim under Rule 12(b)(6). See Ashcroft v. Iqbal, 556 U.S. 662, 678-79 (2009). The court must "begin by identifying the pleadings that, because they are no more than conclusions, are not entitled to the assumption of truth." Id. at 679. The court should then assume the veracity of any well-pleaded allegations and "determine whether they plausibly give rise to an entitlement of relief." Id. The plausibility principle does not convert the Rule 8(a)(2) notice pleading standard to a "probability requirement," but "a sheer possibility that a defendant has acted unlawfully" will not defeat a motion to dismiss. Id. at 678. The plaintiff must "plead[ ] factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Id. "[W]here the well-pleaded facts do not permit the court to infer more than the mere possibility of misconduct, the complaint has alleged — but it has not `show[n]' — `that the pleader is entitled to relief.'" Id. at 679 (alteration in original) (quoting FED. R. CIV. P. 8(a)(2)). The court, drawing on its judicial experience and common sense, must undertake the "context-specific task" of determining whether the plaintiffs' allegations "nudge" their claims against the defendant "across the line from conceivable to plausible." See id. at 679, 683.
The Noerr-Pennington "doctrine allows individuals or businesses to petition the government, free of the threat of antitrust liability, for action that may have anticompetitive consequences. Noerr-Pennington protection is grounded on the theory that the right to petition guaranteed by the First Amendment extends to petitions for selfish, even anticompetitive ends." Greenwood Utilities Commission v. Mississippi Power Company, 751 F.2d 1484, 1497 (5th Cir. 1985). In California Motor Transport Company v. Trucking Unlimited, 404 U.S. 508, 510 (1972), the Supreme Court stressed that the Noerr-Pennington doctrine's protection of the right to petition "extends to all departments of the Government."
"Although the Noerr-Pennington doctrine initially arose in the antitrust field, [it now also] protect[s] first amendment petitioning of the government from claims brought under federal and state laws. . . ." Video International Production, Inc. v. Warner-Amex Cable Communications, Inc., 858 F.2d 1075, 1084 (5th Cir. 1988), cert. denied, 490 U.S. 1047 (1989). For example, the doctrine "can apply to trademark owners' attempts to protect their intellectual property rights." GoForIt Entertainment, LLC v. DigiMedia.com L.P., 750 F.Supp.2d 712, 742 (N.D. Tex. 2010) (Fitzwater, Ch.J.); see also Video International Production, 858 F.2d at 1084 (noting that the Noerr-Pennington doctrine extends to tortious interference claims).
With regard to petitioning the judicial branch (i.e., filing a lawsuit), the Noerr-Pennington doctrine extends to threats to litigate, such as cease-and-desist letters, even though such actions do not entail petitioning the government. Coastal States Marketing, Inc. v. Hunt, 694 F.2d 1358, 1367 (5th Cir. 1983); Select Comfort Corporation v. Sleep Better Store, LLC, 838 F.Supp.2d 889, 896-900 (D. Minn. 2012) (concluding that "the Noerr-Pennington doctrine immunizes pre-suit demand letters. . ."). The Fifth Circuit justified extending the doctrine to pre-suit activities as follows:
Coastal States Marketing, 694 F.2d at 1367; see also Select Comfort Corporation, 838 F. Supp. 2d at 896 ("Because the right to petition means more than simply the right to communicate directly with the government, protection under the doctrine necessarily includes those activities reasonably and normally attendant to effective petitioning.") (internal quotations, alteration and citation omitted).
A defendant should raise the Noerr-Pennington doctrine as an affirmative defense. Bayou Fleet, Inc. v. Alexander, 234 F.3d 852, 860 (5th Cir. 2000), cert. denied, 532 U.S. 905 (2001); Acoustic Systems, Inc. v. Wenger Corporation, 207 F.3d 287, 295 (5th Cir. 2000) ("Although the Noerr-Pennington doctrine is frequently referred to as an `antitrust immunity,' it provides only a defense to liability, not an immunity from suit.") (citations omitted). As with other affirmative defenses, when the Noerr-Pennington defense "appears on the face of the pleadings, dismissal under Rule 12(b)(6) may be appropriate." Miller v. BAC Home Loans Servicing, L.P., 726 F.3d 717, 726 (5th Cir. 2013) (internal quotations and citation omitted); Love Terminal Partners, L.P. v. City of Dallas, Texas, 527 F.Supp.2d 538, 550 (N.D. Tex. 2007) (Fitzwater, J.) (noting that a court can dismiss an action under Rule 12(b)(6) if "it is apparent from the face of plaintiffs' complaint that defendants are entitled to Noerr-Pennington immunity. . .").
From the outset, however, the Supreme Court indicated that "[t]here may be situations in which [petitioning activity] ostensibly directed toward influencing government action, is a mere sham to cover what" would be, in the absence of Noerr-Pennington immunity, an illegal activity. Eastern Railroad Presidents Conference v. Noerr Motor Freight, Inc., 365 U.S. 127, 144 (1961). Individuals engaging in such activity are abusing, rather than effectively using, their First Amendment right to petition. Consequently, the "sham" exception removes Noerr-Pennington immunity "when one party has begun litigation not to win that litigation, but rather to force its competitor to waste time and money in defending itself." Video International Production, 858 F.2d at 1082.
The parties agree that to succeed on a breach of contract claim under Texas law a plaintiff must prove "(1) the existence of a valid contract; (2) performance or tendered performance by the plaintiff; (3) breach of the contract by the defendant; and (4) damages sustained by the plaintiff as a result of the breach."
Paragraphs five and six of Zhongda Chen's declaration are inadmissible evidence.
The purchase order attached to the Chen declaration suffers from similar evidentiary flaws. See Chen Declaration, Exhibit A. According to Chen, the document reflects a sale between Cixi and Source. Chen Declaration ¶ 6. However, Chen "must produce evidence sufficient to support a finding that the item is what [he] claims it is." FED. R. EVID. 901(a). It is unclear how, as the vice president of Desa, Chen would have access to a purchase order between Source and Cixi. The failure "to include any basis whatsoever for authenticating the purchase order" makes it inadmissible. Motion to Strike at 3. Moreover, at trial, the purchase order would be inadmissible hearsay. Desa attempts to use the purchase order to prove that Cixi sold the heaters directly to Source. In other words, Desa attempts to "prove the truth of the matter[s] asserted" in the document. FED. R. EVID. 801(c)(2). Without additional information bringing the purchase order within one of the hearsay exceptions, see FED. R. EVID. 803-04, the document is inadmissible.
In the brief supporting its motion to dismiss, Desa fails to address why the exercise of personal jurisdiction with respect to any claims would be unfair and unreasonable. See Defendant's Brief at 1-12. Therefore, if minimum contacts exist with respect to a specific claim, the court can exercise jurisdiction over Desa. See Wien Air Alaska, 195 F.3d at 215.
Desa had many contacts with Texas during the life of the contract.
These contacts establish specific personal jurisdiction over Desa with respect to the breach of contract and breach of implied warranty of merchantability claims. The contacts furthered the contractual relationship between the parties and thus "relate[ ] to" the contract-based claims. J.R. Stripling, 234 F.3d at 871. Moreover, given the multitude of contacts, Desa "could anticipate being haled into court" in Texas. Burger King, 471 U.S. at 474.
Desa's conduct satisfies the three elements of Calder's "effects test" and thus establishes minimum contacts with Texas. See supra at 9-15. Source alleges that Desa committed the business torts of trademark infringement under both Texas common law and the Lanham Act, unfair competition under the Lanham Act, and tortious interference under Texas law. Complaint ¶¶ 24-30. As a Texas-based company, Source experienced all of the harm resulting from the alleged wrongful acts in Texas. Finally, as in SGS-Thomson, 1995 WL 313932, at *1-3, and Athletic Training Innovations, 2010 WL 4103309, at *3-7, Desa's email to Source containing the ceaseand-desist letter "relates to" the trademark, unfair competition, and tortious interference claims and constitutes "[p]urposeful forum-directed activity" that establishes minimum contacts to "permit the exercise of specific jurisdiction. . . ."
Source also requests a declaratory judgment that it is the "true owner of the Mark and Logo, Desa is not the owner of the Mark or Logo and does not have the right to sell goods or services under the Mark or Logo, and that Source Network has not infringed any purported rights of Desa." Complaint ¶ 33. This declaratory judgment action is an alternative remedy to address the same underlying conduct relevant to the unfair competition and trademark claims above. Thus, the contacts that established personal jurisdiction for these other claims are also sufficient for the declaratory judgment claim.
Noerr-Pennington authorizes dismissal through a Rule 12(b)(6) motion only when its applicability "appears on the face of the pleadings. . . ." Miller, 726 F.3d at 726. The complaint alleges that:
Complaint ¶ 30. If Desa knew that Source possessed the rights to the trademark and logo, then it contacted Desa's customers not to exercise valid rights, "but rather to force its competitor to waste time and money in defending itself." Video International Production, 858 F.2d at 1082. Thus, based solely on the "face of the pleadings," the "sham" exception renders Noerr-Pennington immunity inapplicable. Miller, 726 F.3d at 726.
The complaint sufficiently pleads the four elements necessary for a breach of contract claim. According to the complaint, after negotiations in 2010, the parties "entered into an agreement . . . for [Desa] to become one of Source Network's manufacturers of heaters. . . ."
For the reasons discussed above, Desa's motions to dismiss are
However, the court's discussion in Stroman indicates the case's limits as precedent. "Courts generally exercise specific jurisdiction over nonresident defendants that are engaged in commercial, profit-oriented enterprise." Id. at 485 (emphasis added). The commissioner, in contrast, was not trying "to obtain a commercial benefit by acting in a governmental capacity to enforce Arizona law." Id. "Because no such benefit accrue[d] to the Commissioner from her activities relating to Texas," the court concluded that "any jurisdiction based upon her having caused an `effect' in Texas [was] likewise misplaced." Id. Moreover, the "[i]mportant questions of federalism . . . present" in Stroman are entirely absent from the present case. Id. at 488 (noting that allowing "a federal district court in the Southern District of Texas [to exercise] personal jurisdiction over a nonresident state official would create an avenue for challenging the validity of one state's laws in courts located in another state").
