The opinion
UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF LOUISIANA
MONROE DIVISION
LOUISIANA TECH UNIVERSITY CIVIL ACTION NO. 21-3539
FOUNDATION, INC.
VERSUS JUDGE S. MAURICE HICKS, JR.
BEL-MAC ROOFING, INC. MAGISTRATE JUDGE MCCLUSKY
MEMORANDUM RULING
Before the Court is Defendant Bel-Mac Roofing, Inc.’s (“Bel-Mac” or “Defendant”)
Motion to Dismiss pursuant to Federal Rule of Civil Procedure 12(b)(2) and 12(b)(3), or
in the alternative, to transfer venue pursuant to 28 U.S.C. § 1404(a). See Record
Document 16. Plaintiff Louisiana Tech University Foundation, Inc. (“LTF” or “Plaintiff”)
opposes the motion. See Record Document 20. For the reasons set forth below, the
motion is hereby GRANTED IN PART AND DENIED IN PART. Additionally, LTF’s
request to conduct limited jurisdictional discovery is GRANTED.
FACTUAL & PROCEDURAL BACKGROUND
LTF is a 501(c)(3) non-profit organization incorporated under the laws of Louisiana
and has its principal place of business in Ruston, Louisiana. See Record Document 1.
Bel-Mac is a commercial and residential roofing company incorporated under the laws of
Florida with its principal place of business in Florida. See Record Document 16-2. Though
Bel-Mac is licensed to do business in Louisiana and has a registered agent in the state,
Bel-Mac has not conducted business in Louisiana since 2001. See Record Document 16-
3.
Plaintiff filed suit in this Court seeking injunctive and monetary relief for Bel-Mac’s
alleged unauthorized use of the trademarked and copyrighted “Tech Bulldog Mark.”
Record Document 1 at ¶ 1. The complaint includes claims for intentional infringement of
LTF’s copyright, infringement of LTF’s federal-registered trademark, and related claims
of unfair trade practices, trademark infringement, trademark dilution, and continuing torts
under the Lanham Act and laws of the State of Louisiana. See id.
LAW AND ANALYSIS
I. Legal Standards
a. Federal Rule of Civil Procedure 12(b)(2)
A motion pursuant to Federal Rule of Civil Procedure 12(b)(2) allows a party to
move to dismiss a claim for lack of personal jurisdiction. “Where a defendant challenges
personal jurisdiction, the party seeking to invoke the power of the court bears the burden
of proving that jurisdiction exists.” Luv N’ Care, Ltd. v. Insta-Mix, Inc., 438 F.3d 465, 469
(5th Cir. 2006) (citations omitted). At this stage in the litigation, the plaintiff need only
make a prima facie case for personal jurisdiction. See Walk Haydel & Assoc., Inc. v.
Coastal Power Prod. Co., 517 F.3d 235, 241 (5th Cir. 2008).
In consideration of the motion, the court may consider: “affidavits, interrogatories,
depositions, oral testimony, or any combination of the recognized methods of discovery.”
Stuart v. Spademan, 772 F.2d 1185, 1192 (5th Cir. 1985). However, the court “should not
act as a factfinder and must construe all disputed facts in the plaintiff’s favor.” Walk Haydel
& Assoc., Inc., 517 F.3d at 241. Further, “conflicts between the facts contained in the
parties’ affidavits must be resolved in the plaintiff’s favor for purposes of determining
whether a prima facie case for personal jurisdiction exists.” Bullion v. Gillespie, 895 F.2d
213, 217 (5th Cir. 1990) (internal citations omitted).
“In the course of making necessary findings of jurisdictional fact, the Court has
broad discretion to permit a party to conduct jurisdictional discovery.” Next Technologies,
Inc. v. ThermoGenisis, LLC, 121 F. Supp. 3d 671, 676 (W.D. Tex. 2015) (citing Wyatt v.
Kaplan, 686 F.2d 276, 283 (5th Cir. 1982)). Discovery on matters of personal jurisdiction
need only be permitted when the motion to dismiss raises issues of fact, and jurisdictional
discovery should not be permitted if it would serve no purpose. See Kelly v. Syria Shell
Petroleum Dev. B.V., 213 F.3d 841, 855 (5th Cir. 2000); see also Wyatt v. Kaplan, 686
F.2d at 284. “To obtain jurisdictional discovery, a plaintiff must ‘specify what facts it
believes discovery would uncover and how those facts would support jurisdiction.’”
Libersat v. Sundance Energy, Inc., 437 F. Supp. 3d 557 (W.D. La. 2020) (quoting
Evergreen Media Holdings, LLC v. Safran Co., 68 F. Supp. 3d 664, 672 (S.D. Tex. 2014)).
b. Personal Jurisdiction
“A federal court may exercise personal jurisdiction over a nonresident defendant if
(1) the forum state's long-arm statute confers personal jurisdiction over that defendant;
and (2) the exercise of personal jurisdiction comports with the Due Process Clause of the
Fourteenth Amendment.” McFadin v. Gerber, 587 F.3d 753, 759 (5th Cir. 2009). The
Louisiana long-arm statute authorizes personal jurisdiction to the limits of constitutional
due process. See La. Rev. Stat. § 13:3201(b); see also A & L Energy, Inc. v. Pegasus
Grp., 200-3255, p. 4 (La. 6/29/01); 791 So.2d 1266, 1270. Thus, the Court need only
consider whether the exercise of personal jurisdiction over Defendants comports with the
Due Process Clause.
To satisfy the requirements of due process the plaintiff must show: (1) the
defendant has purposefully availed itself of the benefits and protections of the forum state
by establishing “minimum contacts” with that state; and (2) the exercise of personal
jurisdiction does not offend “traditional notions of fair play and substantial justice.”
McFadin, 587 F.3d at 759 (internal citations omitted). The “minimum contacts” prong can
be further subdivided into general or specific personal jurisdiction. Choice Healthcare,
Inc. v. Kaiser Found. Health Plan of Colorado, 615 F.3d 364, 368 (5th Cir. 2010).
General jurisdiction exists where the defendant’s “affiliations with the State are so
‘continuous and systematic’ as to render them essentially at home in the forum state.”
Goodyear Dunlop Tires Operations, S.A. v. Brown, 564 U.S. 915, 919, 131 S.Ct. 2846,
2851 (2011). General jurisdiction is extremely difficult to establish and requires proof of
“extensive contacts between a defendant and a forum.” Johnson v. Multidata Sys. Intern.
Corp., 523 F.3d 602, 609 (5th Cir. 2008). The paradigm forums where a corporate
defendant is considered “at home” are the corporation’s state of incorporation and its
principal place of business. Daimler AG v. Bauman, 571 U.S. 117, 137, 134 S.Ct. 746,
760 (2014).
Specific jurisdiction, on the other hand, can be established when the defendant’s
contacts are less extensive. Specific jurisdiction can exist over a nonresident defendant
“whose contacts with the forum state are singular or sporadic if the cause of action
asserted arises out of or is related to those contacts.” Int’l Energy Ventures Mgmt., LLC,
United Energy Grp., Ltd., 818 F.3d 193, 212 (5th Cir. 2016) (emphasis in original). This
inquiry “focuses on the relationship among the defendant, the forum, and the litigation.”
Walden v. Fiore, 571 U.S. 277, 284, 134 S.Ct. 1115, 1121 (2014).
Even if minimum contacts exist, the exercise of personal jurisdiction over a non-
resident defendant must not offend “traditional notions of fair play and substantial justice.”
Int’l Shoe Co. v. State of Washington, 326 U.S. 310, 316, 66 S.Ct. 154, 158 (1945). To
determine this fundamental fairness issue, courts must consider: “(1) the defendant’s
burden; (2) the forum state’s interests; (3) the plaintiff’s interest in convenient and
effective relief; (4) the judicial system’s interest in efficient resolution of controversies; and
(5) the state’s shared interest in furthering fundamental social policies.” Ruston Gas
Turbines, Inc. v. Donaldson Co., Inc., 9 F.3d 415, 421 (5th Cir. 1993).
II. Analysis
a. General Personal Jurisdiction
The Court rejects the notion that Bel-Mac may be subject to general personal
jurisdiction in Louisiana. The uncontradicted evidence submitted by Bel-Mac in
conjunction with its motion precludes a finding of general personal jurisdiction. Plaintiffs
presented no evidence demonstrating Bel-Mac’s ties with Louisiana are substantial,
continual, or systematic, such that Bel-Mac would be considered “at home” in this forum.
See Goodyear Dunlop Tires Operations, S.A., 564 U.S. at 919. Bel-Mac’s place of
incorporation and principal place of business are one and the same: Florida. See Record
Document 16-2 at 7-8. In addition, LTF made no attempt to argue that special
circumstances exist here to warrant the exercise of general jurisdiction. As such, this
Court declines to exercise general personal jurisdiction over Bel-Mac. Accordingly, Bel-
Mac’s motion to dismiss for lack of personal jurisdiction is GRANTED as to the exercise
of general personal jurisdiction.
b. Specific Personal Jurisdiction
Bel-Mac argues it should not be subject to specific personal jurisdiction here
because it lacks sufficient minimum contacts with Louisiana. See Record Document 16-
2 at 4. Specifically, Bel-Mac argues that it has not purposefully directed any activities at
the forum such that it would be reasonable to hale Bel-Mac into court in Louisiana. See
id. Bel-Mac asserts it does not target Louisiana through advertising, does not advertise
on Louisiana billboards, has not performed any work in Louisiana since 2001, does not
drive vehicles in Louisiana, and does not sell branded goods in Louisiana. See id. at 6.
Since Bel-Mac asserts that the exercise of personal jurisdiction fails on the first element—
purposeful availment—it asserts no arguments relating to whether the suit arises out of
Bel-Mac’s contacts with the forum or whether the exercise of personal jurisdiction would
be fair and reasonable. See id.
LTF counters this argument by asserting that Bel-Mac targeted the forum by
directing intentionally tortious activity to the forum. See Record Document 20 at 11. LTF
asserts that Bel-Mac copied, transmitted, and publicly displayed the copyrighted and
trademarked logo on advertisements and products both directed at Louisiana and
throughout the Southeast, which caused harm in the forum. See id. at 12. Further, LTF
argues that since copyright infringement sounds in tort (citing Realsongs v. Gulf
Broadcasting Corp., 824 F. Supp. 89, 91 (M.D. La. 1993)), the Court should apply the
Calder Effects Test, and thus the Court should find Bel-Mac has sufficient minimum
contacts with the forum. See Record Document 20 at 11-12. Alternatively, LTF requests
this Court allow limited jurisdictional discovery to determine whether Bel-Mac initiated
contacts with Louisiana. See id. at 18.
In its request for jurisdictional discovery, LTF cited facts such as whether Bel-Mac
has entered into contracts with Louisiana companies or contractors; directed
advertisements at Louisiana that are not readily available to LTF; and information on the
creation of the alleged infringing logo to determine how the logo was accessed. See id. If
allowed to conduct limited discovery, such facts would determine whether Bel-Mac has
minimum contacts with the forum such that the exercise of specific personal jurisdiction
would be proper. The Court, exercising its broad discretion on the matter, finds that LTF
has satisfactorily specified what facts it believes discovery would uncover and how those
facts would support specific personal jurisdiction.
In Next Technologies, Inc. v. ThermoGenisis, LLC, a case similar to the case
before the Court, the district court determined limited jurisdictional discovery was
warranted to determine whether the court could exercise personal jurisdiction over the
defendants. 121 F. Supp. at 676. The plaintiff filed suit alleging false advertising claims
under the Lanham Act, copyright infringement, and various state law claims including,
inter alia, defamatory statements posted on the defendants’ website. Id. at 674. The court
determined that the plaintiff’s allegations in the complaint established “purposeful conduct
directed at soliciting business from [the forum]” such that jurisdictional discovery was
warranted. Id. at 677. The court rejected the argument that the defendants’ website was
merely passive and accessible from anywhere, instead finding the website to be
“interactive” on the sliding scale test as articulated in Zippo Manufacturing Co. v. Zippo
Dot Com, Inc., 952 F. Supp. 1119 (W.D. Pa. 1997), and adopted by the Fifth Circuit in
Mink v. AAAA Dev. LLC, 190 F.3d 333, 336 (5th Cir. 1999). Next Technologies, Inc., 121
F. Supp. at 676 and 677. The court also noted that the factual allegations suggest the
website has the type of interactive contacts that would support specific personal
jurisdiction if sufficient evidence exists that the interactions were directed at the forum.
See id. at 677.
Similar to the plaintiff in Next Technologies, Inc., LTF has raised issues as to
whether Bel-Mac targeted the forum through its online activities. In support of its
argument, LTF cited Bel-Mac’s website, which mentions Louisiana; an Instagram post;
and the fact that Bel-Mac is licensed to conduct business in Louisiana and maintains an
office in the state. See Record Document 20 at 7, 9. Bel-Mac disputed these facts in a
declaration from the company’s Owner and President, William Bell. See Record
Document 16-3 at 1. This declaration, combined with the complaint and LTF’s
Memorandum in Opposition to Bel-Mac’s Motion to Dismiss, reveal issues of fact related
to Bel-Mac’s minimum contacts with this forum and whether Bel-Mac has purposefully
availed itself of the privileges of conducting business in Louisiana. These factual
allegations support limited jurisdictional discovery to show to what extent Bel-Mac’s online
activities are “directed” at the forum state.
The Court will exercise its broad discretion here to allow limited jurisdictional
discovery because the motion to dismiss raises issues of fact. LTF has specified what
facts it believes discovery would uncover and how those facts would support the exercise
of personal jurisdiction. However, discovery shall be limited to Bel-Mac’s specific contacts
with the forum and whether Bel-Mac targeted the forum through advertisements or other
online activity. In addition, discovery may relate to the interactivity of Bel-Mac’s website
and other interactions with the forum online. Accordingly, Bel-Mac’s motion to dismiss
for lack personal jurisdiction, as it relates to the exercise of specific personal jurisdiction,
is DENIED WITHOUT PREJUDICE such that LTF may conduct limited jurisdictional
discovery.
c. Motion to Transfer Venue
Bel-Mac urges this Court to transfer the case to the Northern District of Florida if
the Court finds that venue is proper here. See Record Document 16 at 10. The parties do
not dispute that for copyright cases venue is proper under 28 U.S.C. § 1400(a) in any
district in which Bel-Mac is subject to personal jurisdiction. The Court has not made a
finding as to whether Bel-Mac is subject to specific personal jurisdiction in Louisiana.
Accordingly, this motion is premature and is DENIED WITHOUT PREJUDICE.
CONCLUSION
Based on the foregoing reasons, Bel-Mac’s Motion to Dismiss, or in the alternative,
to Transfer Venue (Record Document 16) is GRANTED IN PART AND DENIED IN
PART. The motion is GRANTED as to the exercise of general personal jurisdiction. The
motion is DENIED WITHOUT PREJUDICE as to the exercise of specific personal
jurisdiction and transfer of venue. Bel-Mac may re-urge its arguments after the parties
have conducted limited jurisdictional discovery as to the exercise of specific personal
jurisdiction.
An order consistent with the terms of the instant Memorandum Ruling shall issue
herewith.
THUS DONE AND SIGNED, in Shreveport, Louisiana, this the 15th day of
September, 2022.
on [pele /
S. MAURICE HICKS, JR., CHIEF JUD
UNITED STATES DISTRICT COURT