Trax Records, LTD v. Sherman

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF LOUISIANA

TRAX RECORDS, LTD. ET AL. CIVIL ACTION

VERSUS NO: 23-308

SANDYEE SHERMAN SECTION “H”

ORDER AND REASONS

Before the Court is Defendant Irene Mayzels Barnes’s Motion to Dismiss

(Doc. 9). For the following reasons, this Motion is GRANTED.

BACKGROUND

This case arises out of a trademark dispute. Plaintiffs Trax Records,

LTD, Rachael Cain, and Phuture Trax Inc. allege that Defendant Irene

Mayzels Barnes1 infringed upon Plaintiffs’ trademarks, in violation of the

Lanham Act. There are two trademarks at issue. Plaintiff Trax Records, Ltd.

is a Louisiana corporation with its principal place of business in Louisiana

which controls and administers the trademark TRAX RECORDS (“Trax

Records Trademark”).2 Plaintiff Phuture Trax Inc. controls and administers

1 Irene Mayzels Barnes was sued as Sandyee Sherman. For the purposes of this motion, the

Court will refer to Defendant Irene Mayzels Barnes.

2 Doc. 1 at 3. The Trax Records Trademark has United States Patent and Trademark Office

Registration Numbers 3466156 and 466459.

the trademark PHUTURE TRAX (“Phuture Trax Trademark”).3 Plaintiffs

allege that Rachael Cain is the sole owner of both trademarks.

Plaintiffs Complaint alleges Defendant infringed the trademarks on

three specific and distinct occasions. First, in September 2022, by emailing a

press release displaying the TRAX RECORDS trademark. Then, in October

2022, Defendant allegedly infringed the Trax Records Trademark and the

Phuture Trax Trademark when it used the phrase “TRAX 2 the PHUTURE”

commercially to advertise a House Music festival in Amsterdam. And finally,

Plaintiffs allege Defendant infringed the Trax Records Trademark by using the

phrase “TRAX RECORDS” on its website. Following this conduct, Plaintiffs

sent a cease-and-desist letter, to which Defendant did not respond. Plaintiffs

filed this lawsuit on January 24, 2023.

Now before the Court is Defendant’s Motion to Dismiss arguing for lack

of personal jurisdiction. Plaintiff has not opposed.

LEGAL STANDARD

When a non-resident defendant challenges the court’s personal

jurisdiction, “the party seeking to invoke the power of the court bears the

burden of proving that jurisdiction exists.”4 When a court rules on a motion to

dismiss for lack of personal jurisdiction without holding an evidentiary

hearing, as in this case, the plaintiff need only make a prima facie showing of

personal jurisdiction.5 “The allegations of the complaint, except insofar as

controverted by opposing affidavits, must be taken as true, and all conflicts in

3 Id. The Phuture Trax Trademark has United States Patent and Trademark Office

Registration Number 97669690 (formerly Registration Number 3590325).

4 Luv N’care, Ltd. v. Insta–Mix, Inc., 438 F.3d 465, 469 (5th Cir. 2006) (citing Wyatt v.

Kaplan, 686 F.2d 276, 280 (5th Cir. 1982)).

5 Guidry v. U.S. Tobacco, Co., Inc., 188 F.3d 619, 625 (5th Cir. 1999).

the facts must be resolved in favor of the plaintiff[] for purposes of determining

whether a prima facie case for personal jurisdiction has been established.”6 “In

determining whether personal jurisdiction exists, the trial court is not

restricted to a review of the plaintiff’s pleadings.”7 The court may consider

matters outside the complaint, including affidavits, interrogatories,

depositions, or any combination of the recognized methods of discovery.8

Jurisdiction over a non-resident defendant is proper when (1) the

defendant is amenable to service of process under the long-arm statute of the

forum state and (2) the exercise of personal jurisdiction is consistent with the

Due Process Clause of the Fourteenth Amendment.9 In the instant case, “these

two inquiries merge into one because Louisiana’s long-arm statute permits

service of process coterminous with the scope of the due process clause.”10

“The Due Process Clause of the Fourteenth Amendment protects a

corporation, as it does an individual, against being made subject to the binding

judgments of a forum with which it has established no meaningful ‘contacts,

ties, or relations.’”11 A court may exercise personal jurisdiction over a non-

resident defendant when (1) the defendant has purposefully availed itself of

the benefits and protections of the forum state by establishing “minimum

contacts” with the forum state and (2) exercising personal jurisdiction over the

defendant does not offend “traditional notions of fair play and substantial

justice.”12

6 Thompson v. Chrysler Motors Corp., 755 F.2d 1162, 1165 (5th Cir. 1985) (citing DeMelo v.

Toche Marine, Inc., 711 F.2d 1260, 1270 (5th Cir. 1983)).

7 Jobe v. ATR Mktg., Inc., 87 F.3d 751, 753 (5th Cir. 1996).

8 Id. (citing Colwell Realty Invs. v. Triple T. Inns of Ariz., 785 F.2d 1330 (5th Cir. 1986)).

9 Dalton v. R&W Marine, Inc., 897 F.2d 1359, 1361 (5th Cir. 1990).

10 Pervasive Software Inc. v. Lexware GMBH & Co. KG, 688 F.3d 214, 220 (5th Cir. 2012)

(quoting Int’l Shoe Co. v. Wash., 326 U.S. 310, 319 (1945)).

11 Pervasive Software Inc., 688 F.3d at 220 (quoting Int’l Shoe, 326 U.S. at 319).

12 Latshaw v. Johnston, 167 F.3d 208, 211 (5th Cir. 1999) (quoting Int’l Shoe, 326 U.S. at

316).

“Minimum contacts” can be established through specific jurisdiction or

general jurisdiction.13 Specific personal jurisdiction exists (1) when a

defendant has purposely directed its activities toward or availed itself of the

privileges of conducting its activities in the forum state; (2) the controversy

arises out of or is related to those activities; and (3) the exercise of jurisdiction

is fair, just, and reasonable.14 General personal jurisdiction exists when the

defendant has engaged in continuous and systematic activities in the forum

state, regardless of whether such activity is related to the plaintiff’s cause of

action.15

LAW AND ANALYSIS

Defendant argues that this Court lacks personal jurisdiction. Plaintiffs

have not filed an opposition to this Motion. Though Plaintiffs have not filed an

opposition, the Court may not simply grant the motion as unopposed. The

Fifth Circuit approaches the automatic grant of dispositive motions with

considerable aversion.16 Accordingly, this Court has considered the merits of

Defendant’s motion.

At the outset, the Court notes that general jurisdiction can be exercised

over an individual where they are domiciled.17 Defendant is a domiciled in

Illinois and submitted an affidavit supporting this fact.18 As such, it is

13 Alpine View Co. Ltd. v. Atlas Copco AB, 205 F.3d 208, 215 (5th Cir. 2000).

14 Burger King Corp. v. Rudzewicz, 471 U.S. 462, 472 (1985).

15 Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 415 (1984).

16 See, e.g., Servicios Azucareros de Venezuela, C.A. v. John Deere Thibodeaux, Inc., 702 F.3d

794, 806 (5th Cir. 2012); Johnson v. Pettiford, 442 F.3d 917, 918 (5th Cir. 2006) (per curiam);

John v. State of Louisiana (Bd. of Trs. for State Colls. and Univs.), 757 F.2d 698, 709 (5th

Cir. 1985).

17 Goodyear Dunlop Tires Operations, S.A. v. Brown, 564 U.S. 915, 922 (2011).

18 Doc. 9-2.

apparent that the Court may not exercise general jurisdiction over Defendant

and the Court will focus on whether it has specific jurisdiction over Defendant.

The relationship required for specific jurisdiction “must arise out of

contacts that the ‘defendant himself’ creates with the forum State.”19 Further,

the “‘minimum contacts’ analysis looks to the defendant’s contacts with the

forum State itself, not the defendant’s contacts with persons who reside

there.20 Taking Plaintiffs’ allegations as true, and resolving all factual disputes

in their favor, this Court finds that it may not exercise specific jurisdiction over

Defendant. Defendant’s alleged contacts with this state are insufficient to show

that she targeted or availed herself of the privileges and benefits of the forum

state. Specifically, Plaintiffs allege as follows:

(1) On September 6, 2022, Defendant, through her promoter Greg

Roselli, issued a press release displaying the Trax Records

Trademark;21

(2) Defendant infringed the Trax Records Trademark and the Phuture

Trax Trademark commercially in October 2022 by advertising a

House Music festival in Amsterdam, and promoting a Trax Records

artist on a House music panel;22

(3) Defendant’s promoter has used and continues to use the trademark

on Rights, Inc.’s website to promote Defendant’s services.

The Court will first address whether the press release constitutes

purposeful availment or targeting of the forum state. Defendant submitted

Greg Roselli’s affidavit which states that this press release was emailed to

19 Walden v. Fiore, 134 S. Ct. 1115, 1122 (2014) (quoting Burger King Corp., 471 U.S. at 475).

20 Id.

21 Doc. 1 at 4; Doc. 1-4.

22 Doc. 1 at 5.

various newspapers, none of which ultimately published the press release.23

None of the individuals or the publications Roselli emailed are Louisiana

citizens, and he attests that he was the only one to disseminate the press

release.24 Furthermore, the content of the press release does not discuss or

target Louisiana. This allegation has no connection to Louisiana and does not

support a finding that Defendant purposefully availed herself of or targeted

the forum state.

Plaintiffs’ other allegations are that Defendant infringed the trademarks

with content published on websites—the Amsterdam Dance Event website

(“the ADE Website”), and the Rights Inc., Ltd. website (“the Rights Inc.

Website”). Defendant argues that neither website is sufficient to establish

specific jurisdiction.

The Fifth Circuit has stated that “[m]erely running a website that is

accessible in all 50 states, but that does not specifically target the forum state,

is not enough to create the ‘minimum contacts’ necessary to establish personal

jurisdiction in the forum state under International Shoe Co. v. Washington.”25

In Mink v. AAAA Development LLC, the Fifth Circuit adopted the Zippo test

that looks to the “‘nature and quality of commercial activity that an entity

conducts over the Internet.’”26 The Zippo test fundamentally seeks to asses

whether the defendant has targeted the forum state.27 “Under Zippo, a

defendant has purposefully availed itself of the benefits and protections of the

forum state if it ‘enters into contracts with residents of [the] foreign jurisdiction

23 Doc. 9-3. Greg Roselli is the Managing Director of Rights Inc., Ltd., a rights management

company that helps artists and music companies internationally. He is also Irene Mayzel

Barnes’s business manager.

24 Id.

25 Admar Int’l, Inc. v. Eastrock, L.L.C., 18 F.4th 783, 785 (5th Cir. 2021).

26 Mink v. AAAA Development LLC, 190 F.3d 333, 336 (5th Cir. 1999) (quoting Zippo Mfg.

Co. v. Zippo Dot Com, Inc., 952 F. Supp. 1119, 1124 (W.D. Pa. Jan. 16, 1997)).

27 Admar Int’l., 19 F. 4th at 785.

that involve the knowing and repeated transmission of computer files over the

Internet.’”28 A defendant, however, does not avail themself of the benefits and

protections of the forum state “by posting information on a passive website.”29

Under this framework, the Court will analyze each website individually.

i. The ADE Website

Defendant concedes that the ADE Website is not passive, as “viewers can

RSVP to the event(s), create an account, and make purchases.”30 However,

Defendant argues that despite its interactivity, she did not purposefully target

any Louisiana residents, and thus, she did not purposefully avail herself of the

privileges of doing business in Louisiana.

The Court agrees that the ADE Website is not passive, as it allows users

to RSVP, create accounts, and make purchases. There is no evidence, however,

that the ADE website targeted Louisiana, or that Defendant entered into

contracts with Louisiana residents.31 As such, the ADE website falls in the

middle of the Zippo spectrum, and the Court must assess the level of

interactivity to the extent “it reflects . . . purposeful targeting of the residents

of the forum state.”32

The Court finds that the ADE Website bears substantial similarities to

the website in Admar International, Inc. v. Eastrock, L.L.C. In Admar

International, the Fifth Circuit held that while the website was interactive,

there was no evidence that the website targeted Louisiana residents, that any

28 Id. at 786 (quoting Zippo Mfg. Co., 952 F. Supp. at 1124).

29 Id.

30 Doc. 9-1 at 17.

31 Admar Int’l., 18 F.4th at 787 (“Missing here is any evidence that Eastrock’s website

specifically targets Louisiana.”).

32 Id. (quoting Pervasive Software Inc., 688 F.2d at 228). In Admar, the Fifth Circuit held

that a website which allowed customers to create accounts, review products, and receive

purchases was more than passive. The court stated that because there was no evidence the

defendant had engaged in business transactions or entered into contracts with residents of

the forum state, the website fell in the middle of the Zippo spectrum. Id.

single product had been sold to a Louisiana resident, or that there was any

advertising which solicited business in Louisiana.33 In so stating, the court

held that it could not exercise personal jurisdiction over the defendant only

based upon a website which was accessible in the forum state.34 The ADE

Website, similarly, does not target Louisiana. Although Louisiana residents

can interact with the ADE Website, there is no evidence that any Louisiana

Resident RSVP’d to the Amsterdam Dance Event, created an account, or

purchased a product. Furthermore, the ADE Website was advertising an event

which occurred in Amsterdam, thousands of miles from Louisiana, and does

not target the state of Louisiana, or even the United States, in any way. The

Court finds that the ADE website does not constitute the type of purposeful

availment necessary to exercise personal jurisdiction under established

principles of due process.

ii. The Rights Inc. Website

Defendant argues that the Rights Inc. Website is passive under the

Zippo analysis, foreclosing a finding that she purposefully availed herself of

the forum state’s benefits or targeted Louisiana. The Court agrees that the

Rights Inc. Website is passive under Zippo. The full extent of interaction with

users is a listing of contact information, which includes an email address and

a physical address.35 The website lists the services which Rights Inc. offers but

does not allow online ordering or the exchanging of information with users.36

33 Id. (“That ends this case.”).

34 Id. at 788 (“Merely running a website that is accessible in the forum state does not

constitute the purposeful availment required to establish personal jurisdiction under

longstanding principles of due process.”).

35 Wildlife Outfitters, LLC v. Buckshot Prod., LLC, No. CV 11-119, 2011 WL 13214363, at *4

(M.D. La. Nov. 14, 2011) (stating that the website was passive where the extent of interaction

with users was contact information and suggested shipping terms, pricing figures, and

product descriptions).

36 Mink v. AAAA Dev. LLC, 190 F.3d 333, 337 (5th Cir. 1999) (“the presence of an electronic

mail access, a printable order form, and a toll-free phone number on a website, without more,

The Rights Inc. Website is an insufficient to give rise to personal specific

jurisdiction.

Plaintiff provides no other allegations of minimum contacts with the

state of Louisiana, only the blanket statement that there is personal

jurisdiction over Defendant “because . . . Defendant is engaged in tortious

conduct within this State and District, including by using Plaintiffs’ trademark

throughout the world and within the United States and in this State.”37 This

is insufficient to establish specific jurisdiction over Defendant. Based upon the

evidence submitted, the Court holds that Defendant did not have minimum

contacts with Louisiana, as she did not direct any activities at the state of

Louisiana or avail herself of any benefits of doing business in Louisiana. The

Court, thus, does not need to address whether the cause of action arises out of

Defendant’s contacts with the state, or whether the exercise of jurisdiction

would offend “traditional notions of fair play and substantial justice.”38

CONCLUSION

Based on the foregoing, Defendant’s Motion to Dismiss is GRANTED.

Plaintiffs’ claims against Defendant are DISMISSED WITHOUT

PREJUDICE.

is insufficient to establish personal jurisdiction. Absent a defendant doing business over the

Internet or sufficient interactivity with residents of the forum state, we cannot conclude that

personal jurisdiction is appropriate”).

37 Doc. 1 at 2.

38 Int’l Shoe, 326 U.S. at 316.

New Urieans, LOuISslana tnis otn day Ah

JANE TRICHE MILAZZO

UNITED STATES DISTRICT JUDGE

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