Brothers and Sisters in Christ, LLC v. Zazzle, Inc.

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF MISSOURI

EASTERN DIVISION

BROTHERS AND SISTERS IN CHRIST, LLC, )

)

Plaintiff, )

)

v. ) Case No. 4:20-CV-280-NAB

)

ZAZZLE, INC., )

)

Defendant. )

MEMORANDUM AND ORDER1

This matter is before the court on Defendant Zazzle, Inc.’s Motion to Dismiss for Lack of

Personal Jurisdiction [Doc. 8.] Plaintiff Brothers and Sisters in Christ, LLC (“BASIC”) filed a

Memorandum in Opposition. [Doc. 14.] Defendant filed a Reply Memorandum. [Doc. 18.] For the

following reasons, the court will GRANT Defendant’s motion.

I. Background

Plaintiff BASIC brought this action on February 19, 2020 asserting claims under the

Lanham Act, 15 U.S.C. §§ 1051 et seq. for trademark infringement and dilution, unfair

competition, and unfair business practices, and under “the anti-dilution laws of several states; the

fair business practices and unfair and deceptive trade practices acts of several states; and the

common law.” [Doc. 1 ¶¶ 6, 19.] Plaintiff states that it is the owner and user of the trademark “love

happens” for use with clothing, has used and advertised its trademark in the clothing industry for

years, that competitors, customers, and potential customers know and associate the trademark with

BASIC, and that as a result of Plaintiff’s use and promotion of the mark, Plaintiff has built up and

1 The parties have consented to the jurisdiction of the undersigned United States Magistrate Judge

pursuant to 28 U.S.C. § 636(c). [Doc. 22.]

owns valuable goodwill that is symbolized by the mark. Id. ¶¶ 5, 20-24. Plaintiff alleges that

Defendant knew of its trademark, intentionally misled customers and potential customers by using

its webpage to advertise and sell trademark infringing clothing that utilized Plaintiff’s mark, and

sold at least one trademark infringing shirt to a resident of Missouri. Id. ¶¶ 8-11, 15, 25-26. Plaintiff

alleges that, as a result of Defendant’s actions, customers and potential customers are likely to

mistakenly attribute Defendant’s business and products with its own, that the public and customers

are likely to be confused or deceived, and that Plaintiff’s brand has been irreparably damaged. Id.

¶¶ 15-18, 27. Plaintiff seeks injunctive relief, monetary damages, Defendant’s profits from

trademark infringing sales, punitive damages, and attorneys’ fees and costs. Id. ¶ 19.

II. Standard of Review

“To survive a motion to dismiss for lack of personal jurisdiction, a plaintiff must make a

prima facie showing that personal jurisdiction exists, which is accomplished by pleading sufficient

facts ‘to support a reasonable inference that the defendant can be subjected to jurisdiction within

the state.’” K-V Pharm. Co. v. J. Uriach & CIA, S.A., 648 F.3d 588, 591–92 (8th Cir. 2011)

(quoting Dever v. Hentzen Coatings, Inc., 380 F.3d 1070, 1072 (8th Cir. 2004)). “Although the

evidentiary showing required at the prima facie stage is minimal, the showing must be tested, not

by the pleadings alone, but by the affidavits and exhibits supporting or opposing the motion.” Id.

(internal citations and quotations omitted). The evidence must be viewed in the light most

favorable to the plaintiff and all factual conflicts are resolved in its favor in deciding whether the

plaintiff made the requisite showing. Id. (citing Digi–Tel Holdings, Inc. v. Proteq Telecomms.

(DTE), Ltd., 89 F.3d 519, 522 (8th Cir. 1996)). “If jurisdiction is controverted, the plaintiff has the

burden of proving facts supporting personal jurisdiction.” Coen v. Coen, 509 F.3d 900, 904 (8th

Cir. 2007) (citing Dever, 380 F.3d at 1072).

In this case, federal subject matter jurisdiction is predicated upon a federal statute. “Where

a federal court’s subject matter jurisdiction over a case arises from the existence of a federal

question, the court may exercise personal jurisdiction over a defendant if the plaintiff has properly

served the defendant with process under the forum’s long arm statute and if the defendant has

sufficient contacts with the forum state to satisfy procedural due process.” Enter. Rent-A-Car Co.,

v. U-Haul Int’l, 327 F. Supp. 2d 1032, 1036 (E.D. Mo. 2004) (citing Omni Cap. Int’l, Ltd. v. Rudolf

Wolff & Co., 484 U.S. 97, 104-05 (1987)).

“In adopting the long-arm statute, the Missouri legislature ‘intended to provide for

jurisdiction, within the specific categories enumerated in the statutes [e.g. transacting business or

making a contract within the state,] to the full extent permitted by the due process clause.’” K-V

Pharm. Co., 648 F.3d at 592 (quoting State ex rel. Metal Serv. Ctr. of Ga., Inc. v. Gaertner, 677

S.W.2d 325, 327 (Mo. 1984) (en banc)). See also Dairy Farmers of Am. v. Bassett & Walker Int’l,

Inc., 702 F.3d 472, 475 (8th Cir. 2012) (collecting cases). Because the Missouri long-arm statute

is not coextensive with the limits of due process, the analysis of each should be conducted

separately. See Viasystems, Inc. v. EBM-Papst St. Georgen GmbH & Co., 646 F.3d 589, 593 n.2

(8th Cir. 2011); see also Andra v. Left Gate Prop. Holding, Inc., 453 S.W.3d 216, 225 (Mo. 2015)

(en banc) (describing a two-prong test for personal jurisdiction which analyzes the Missouri long-

arm statute before considering the defendant had sufficient minimum contacts with the state to

satisfy due process). As such, the court examines whether the suit arises out of an activity

enumerated by the Missouri long-arm statute before examining whether the Defendant has

sufficient minimum contacts with Missouri to due process requirements. Dairy Farmers of Am.,

702 F.3d at 475-76.

III. Discussion

Defendant argues that none of the alleged facts of Plaintiff’s complaint are sufficient to

establish that it can be subjected to jurisdiction within Missouri. [Doc. 8.] More specifically,

Defendant asserts that the court cannot exercise general jurisdiction over it because Missouri is

neither its place of incorporation nor its principal place of business, and that the court cannot

exercise specific jurisdiction based on Plaintiff’s allegations because Plaintiff’s residence or

principal place of business, Plaintiff’s counsel’s residence, its use of an interactive website to sell

goods —without more—, and a single sale of an allegedly trademark-infringing product to a person

affiliated with the Plaintiff are insufficient to establish minimum contacts with Missouri. [Doc. 9

at 7-9.] Defendant argues that specific jurisdiction must be based on contacts that the Defendant

itself creates within the forum state, rather than contacts created by the Plaintiff or a third party.

Id. at 9. While Defendant acknowledges that an internet purchase and delivery to a forum state

may be sufficient to establish specific jurisdiction under certain circumstances, it contends that

such circumstances are not found when a Plaintiff orchestrates an online purchase for the purpose

of creating jurisdiction, or where the purchases was a mere result of a unilateral act by a third party.

Id.

Plaintiff filed several exhibits together with its complaint, which show that an allegedly

trademark-infringing t-shirt [Doc. 1-2] was ordered from Defendant in November 2019 [Doc. 1-

4] and shipped to Clayton, Missouri [Doc. 1-1]. In response to Defendant’s motion to dismiss,

Plaintiff argues that federal law does not preclude this court from exercising specific jurisdiction

over Defendant on the basis of an infringing sale made to a person associated with a Plaintiff.

Plaintiff asserts that this court may exercise specific jurisdiction over Defendant based on the

following circumstances: (1) Defendant operates an interactive website which sells goods into

Missouri; (2) Defendant’s website offered trademark infringing goods into Missouri; (3)

Defendant actually sold trademark infringing goods into Missouri; (4) the State of Missouri has an

interest in protecting its local businesses from predatory practices carried out by foreign businesses

using the internet; and that (5) “with electronic filing, this District Court is not inconvenient to

Defendant.” [Doc. 14 at 8-10.]

Plaintiff asserts that Defendant admits that it “operat[es] an interactive website,” “has sold

other goods into Missouri,” “admits the infringing good was purchased from Defendant’s website”

and “offered the infringing good for sale into Missouri.” [Doc. 14 at 4.] Plaintiff argues that such

admissions support the exercise of personal jurisdiction by this court because “[o]ffering or selling

an infringing good is considered a tort” and that “[m]erely offering to sell an infringing good to

[a] Missourian constitutes the commission of a tort in Missouri and satisfies the Missouri Long

Arm Statute.” Id. at 5. Plaintiff further asserts that Defendant’s argument is not supported by law

because the cases cited by Defendant have either been overturned or are factually distinguishable

from the instant case. Specifically, Plaintiff stresses that Defendant Zazzle has a “fully interactive

website . . . which allows full internet commerce and sales to be made” “in Missouri and

elsewhere,” and that the cases supporting Defendant’s argument are based on collateral estoppel.

Id. at 7. Plaintiff argues that because Defendant operates an interactive website from which it sells

goods into Missouri, and from which it both offered and sold a trademark infringing good, and

because trademark is tortious in nature, that Defendant has “strong and extensive contacts with

Missouri.” Id. at 8-9. Plaintiff also argues that its status as a “small Missouri LLC” and the

availability and convenience of electronic filing should weigh on the court’s assessment of whether

it would be proper to exercise personal jurisdiction over Defendant in the instant action. Plaintiff

requests leave to conduct limited jurisdictional discovery regarding the operation of Defendant’s

website and Defendant’s sales into Missouri, and requests that the court transfer this case to “a

California District Court with personal jurisdiction” in the event that this court is unable to exercise

personal jurisdiction over Defendant. [Doc. 1 at 1.]

In its reply, Defendant reiterates that the residence of Plaintiff or that of Plaintiff’s counsel

do not give rise to personal jurisdiction and that the law does not support an application of specific

personal jurisdiction as expansive as set forth in Plaintiff’s argument. [Doc. 18 at 3.] Defendant

likewise contends that the operation of its website and sales of other goods into Missouri are

irrelevant to establishing specific personal jurisdiction because it “cannot be said to have

purposefully directed its activities into every state from which the website may be accessed[,]” and

to exercise jurisdiction under those circumstances “would offend traditional notions of fair play

and substantial justice.” Id. at 3-4. Defendant further avers that the single sale of an allegedly

trademark infringing good is insufficient as a basis for specific personal jurisdiction where the

transaction in question was made by Plaintiff or Plaintiff’s affiliate because the purchaser could

not have been confused about the item’s source and therefore the transaction could not be said to

relate to a claim of trademark infringement. Id. at 7. Defendant asserts that there is no factual basis

for the court to find that the sale is a genuine forum contact that relates to Plaintiff’s claims because

Plaintiff has not alleged that the sale was the result of confusion by the buyer nor presented any

evidence supporting the same. Id. at 8. To permit Plaintiff to bring the infringing good into the

forum of its choosing in order to hale Defendant into a distant forum, Defendant asserts, would

subvert traditional notions of fair play and substantial justice. Id.

A. Missouri’s Long-Arm Statute

The court examines whether Defendant’s conduct satisfies the Missouri long-arm statute

before evaluating whether Defendant has sufficient minimum contacts with Missouri comporting

with due process. See Bryant v. Smith Interior Design Grp., Inc., 310 S.W.3d 227, 231 (Mo. 2010)

(en banc) (citing Conway v. Royalite Plastics, Ltd., 12 S.W.3d 314, 318 (Mo. 2000) (en banc) (per

curiam)). “The reach of Missouri’s long arm statute is a question of Missouri law. Accordingly,

the Court must accept the interpretation given the statute by the Missouri Supreme Court.” Arnold

v. AT&T, Inc., 874 F. Supp. 2d 825, 830 (E.D. Mo. 2012) (citing Scullin Steel Co. v. Nat’l Ry.

Utilization Corp., 676 F.2d 309, 311 (8th Cir. 1982)). In relevant part, Missouri’s long-arm statute

authorizes jurisdiction over:

1. Any person or firm, whether or not a citizen or resident of this state, or any

corporation, who in person or through an agent does any of the acts enumerated

in this section, thereby submits such person, firm, or corporation, and, if an

individual, his personal representative, to the jurisdiction of the courts of this

state as to any cause of action arising from the doing of any such acts:

(1) The transaction of any business within this state;

. . .

(3) The commission of any tortious act within this state;

. . .

Mo. Rev. Stat. § 506.500. To show that an action arose out of activity covered by Missouri’s long-

arm statute, “a plaintiff must make a prima facie showing of the validity of its claim. A plaintiff

need not prove all of the elements that form the basis of the defendant’s liability, but must show

that acts contemplated by the statute took place.” Conway, 12 S.W.3d at 318 (internal citations

omitted).

Plaintiff asserts that this court may exercise personal jurisdiction over Defendant under the

Missouri long-arm statute and the due process clause because “Defendant has committed torts or

trademark infringement in the State of Missouri, . . . has sent trademark infringing goods into the

State of Missouri, . . . and . . . regularly transacts and conducts business within Missouri.” [Doc. 1

¶ 7.] Plaintiff has not put forth any arguments specific to the Missouri long-arm statute, but the

court interprets Plaintiff’s claims to allege that the exercise of jurisdiction is proper under the long-

arm statute under provisions (1) and (3) as examined below.

i. Transaction of Business

The Missouri long-arm statute authorizes the exercise of personal jurisdiction over an

entity that transacts business in Missouri when the cause of action arises from such transaction.

Mo. Rev. Stat. § 506.500.1(1). This provision is to be construed broadly, and a single transaction

may serve as the basis for the exercise of personal jurisdiction over a nonresident defendant. See

Capitol Indem. Corp. v. Citizens Nat’l Bank of Fort Scott, 8 S.W.3d 893, 903-04 (Mo. Ct. App.

2000) (citing Gaertner, 677 S.W.2d at 327).

Plaintiff has alleged that Defendant made at least one transaction between the Defendant

an individual in Clayton, Missouri, for the purchase of an allegedly trademark-infringing t-shirt.

[Doc. 1 ¶ 12.] Plaintiff also provided a photographs of the package sent by Defendant and received

in Missouri [Doc. 1-1] and of the allegedly trademark-infringing product [Doc. 1-2], a screen

capture of Defendant’s website displaying the product for sale [Doc. 1-3], and a copy of the

transaction receipt [Doc. 1-4.] Defendant does not dispute that this transaction occurred and has

not put forth any argument that its conduct falls outside the reach of the long-arm statute. Viewed

in the light most favorable to Plaintiff, and construing “the transaction of business” broadly, this

court finds that Defendant’s sale of a t-shirt to an individual in Missouri is considered the

transaction of business in Missouri for the purpose of meeting the requirement of the long-arm

statute.

ii. Commission of a Tortious Act Within the State

The Missouri long-arm statute authorizes the exercise of personal jurisdiction over a

defendant who commits a tort within the state. Mo. Rev. Stat. § 506.500.1(3). “A single tortious

act is sufficient to support personal jurisdiction.” State ex rel. William Ranni Assocs., Inc. v.

Hartenbach, 742 S.W.2d 134, 139 (Mo. 1980) (en banc) (citing State ex rel. Caine v. Richardson,

600 S.W.2d 82, 85 (Mo. App. 1980)). This provision of the long-arm statute is also broadly

construed. See Bryant, 310 S.W.3d at 232. If the tortious act is committed outside Missouri, the

long-arm statute will apply so long as the act “produces actionable consequences” in Missouri.

Noble v. Shawnee Gun Shop Inc., 316 S.W.3d 364, 371 (Mo. Ct. App. 2010) (citing Capitol Indem.

Corp., 8 S.W.3d at 903). “A party relying on a defendant’s commission of a tort within [Missouri]

to invoke long arm jurisdiction must make a prima facie showing of the validity of his claim.”

William Ranni Assocs., Inc., 742 S.W.2d at 139 (citing State ex rel. Deere and Co. v. Pinnell, 454

S.W.2d 889, 892 (Mo. 1970) (en banc)). To establish a prima facie tort case, Plaintiff must allege

facts from which the elements of a tort claim are satisfied. See Dakota Indus. v. Dakota Sportswear,

Inc., 946 F.2d 1384, 1389, 1391 (8th Cir. 1991).

"This court has held that infringing upon a trademark is grounds for personal jurisdiction

under 'the commission of a tortious act' provision of Missouri's long-arm statute." Uncle Sam's

Safari Outfitters, Inc. v. Uncle Sam's Army Navy Outfitters-Manhattan, Inc., 96 F. Supp. 2d 919,

921 (E.D. Mo. 2000) (citing Maritz v. Cybergold, Inc., 947 F. Supp. 1328, 1331 (E.D. Mo. 1996)).

The Lanham Act provides that:

(1) Any person who shall, without the consent of the registrant—

(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation

of a registered mark in connection with the sale, offering for sale,

distribution, or advertising of any goods or services on or in connection with

which such use is likely to cause confusion, or to cause mistake, or to

deceive; or

(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and

apply such reproduction, counterfeit, copy, or colorable imitation to labels,

signs, prints, packages, wrappers, receptacles or advertisements intended to

be used in commerce upon or in connection with the sale, offering for sale,

distribution, or advertising of goods or services on or in connection with

which such use is likely to cause confusion, or to cause mistake, or to

deceive,

shall be liable in a civil action by the registrant for the remedies hereinafter

provided. Under subsection (b) hereof, the registrant shall not be entitled to

recover profits or damages unless the acts have been committed with knowledge

that such imitation is intended to be used to cause confusion, or to cause

mistake, or to deceive.

15 U.S.C. § 1114.

In the instant case, Plaintiff alleges that, by using its website to advertise and sell clothing

that infringed on Plaintiff’s trademark, Defendant committed an intentional tort with actionable

consequences in Missouri that fall within the purview of the long-arm statute. Plaintiff’s exhibits

show that an allegedly trademark-infringing shirt was ordered on Defendant’s website and

delivered to a recipient in Missouri. Defendant does not deny that the allegedly infringing goods

were listed and sold on its website, but states that only one sale occurred and that the goods were

removed from advertising and sale upon notice by Plaintiff. Viewing the facts in the light most

favorable to Plaintiff for the purpose of this analysis, the court finds that Plaintiff has made the

requisite prima facie showing that Defendant committed a tortious act with actionable

consequences which falls under scope of the Missouri long-arm statute.

B. Due Process

Next, the court turns to an analysis of Defendant’s contacts with Missouri. The exercise of

jurisdiction over an out-of-state defendant meets the requirements of due process where there the

defendant has “certain minimum contacts with it such that the maintenance of the suit does not

offend ‘traditional notions of fair play and substantial justice.’” Int’l Shoe Co. v. Washington, 326

U.S. 310, 316 (quoting Milliken v. Meyer, 311 U.S. 457, 463 (1940)). Minimum contacts are

evaluated under two theories: general jurisdiction for a defendant with “continuous and

systematic” contacts with the forum state, and specific jurisdiction for other defendants. See Dever,

380 F.3d at 1073. Under either theory, there must be “’some act by which the defendant purposely

avails itself of the privilege of conducting activities within the forum State, thus invoking the

benefits and protections of its laws.’” Id. quoting (Hanson v. Denckla, 357 U.S. 235, 253 (1958)).

“Due process requires that a defendant be haled into court in a forum State based on his own

affiliation with the State, not based on the “random, fortuitous, or attenuated’ contacts he makes

by interacting with other persons affiliated with the State.” Walden v. Fiore, 134 S. Ct. 1115, 1123

(2014) (quoting Burger King Corp. v. Rudzewicz, 471 U.S. 462, 475 (1985)). “The proper question

is not where plaintiff experienced a particular injury or effect but whether the defendant’s conduct

connects him to the forum in a meaningful way.” Id. at 1125.

The Eighth Circuit employs a five-factor test to analyze minimum contacts which

considers: “(1) the nature and quality of contacts with the forum state; (2) the quantity of such

contacts; (3) the relation of cause of action to the contacts; (4) the interest of the forum state in

providing a forum for its residents; and (5) convenience of the parties.” Burlington Indus., Inc. v.

Maples Indus., Inc., 97 F.3d 1100, 1102 (8th Cir. 1996) (citing Land-O-Nod Co. v. Bassett

Furniture Indus., 708 F.2d 1338, 1340 (8th Cir. 1983)). The court gives “primary importance” to

the first three factors. Id. The primary factors relate to the Defendant’s contacts with the forum

state. Lakin v. Prudential Sec., 348 F.3d 704, 712 (8th Cir. 2003)). The secondary factors relate to

the court’s consideration of traditional notions of fair play and substantial justice in its

reasonableness analysis. Id. at n.11.

i. General Jurisdiction

“The paradigm all-purpose forums for general jurisdiction are a corporation’s place of

incorporation and principal place of business.” Daimler AG v. Bauman, 571 U.S. 117, 118 (2014)

(citing Goodyear Dunlop Tires Operations, S.A. v. Brown, 564 U.S. 915, 924 (2011)). A

corporation can also be subject to general jurisdiction in a forum where its “affiliations with the

State are so ‘continuous and systematic’ as to render them essentially at home in the forum State.

Goodyear, 564 U.S. at 919 (citing Int’l Shoe, 326 U.S. at 317).

Plaintiff states that Defendant “is a California corporation with its principal place of

business in California” and neither alleges facts supporting general jurisdiction nor explicitly

argues that this court may exercise general jurisdiction over Defendant. [Doc. 1 at ¶ 3.] Defendant

operates a website, zazzle.com, which is accessible in any internet-connected location, and while

Plaintiff argues that Defendant has “strong and extensive” contacts with Missouri, its arguments

regarding Defendant’s contacts with the States do not show that they are continuous or systematic

in nature and fail to provide a basis for general jurisdiction. Those same arguments are discussed

with respect to specific personal jurisdiction below.

ii. Specific Jurisdiction

The exercise of specific jurisdiction “is warranted when the defendant purposely directs its

activities at the forum state and the litigation ‘result[s] from injuries . . . relating to [the defendant’s

activities [in the forum state.]’” Myers v Casino Queen, Inc., 689 F.3d 904, 912-13 (8th Cir. 2012)

(quoting Steinbuch v. Cutler, 518 F.3d 580, 586 (8th Cir. 2008)). The court must also consider the

totality of circumstances in its analysis of specific jurisdiction. See id. at 913. When evaluating

minimum contacts under a theory of specific personal jurisdiction, the Eighth Circuit applies the

test articulated in Zippo Mfg. Co. v. Zippo Dot Com, Inc., 952 F. Supp. 1119 (W.D. Pa. 1997) to

examine the sufficiency of internet contacts. Johnson v. Arden, 614 F.3d 785, 796 (8th Cir. 2010)

(citing Lakin, 348 F.3d at 707). “[U]nder Zippo, whether specific personal jurisdiction could be

conferred on the basis of an interactive website depends not on just the nature of the website but

also on the evidence that individuals in the forum state accessed the website in doing business with

the defendant.” Id. at 797 (citing Zippo, 952 F. Supp. 1125-26). The “sliding scale” approach of

Zippo deems the exercise of jurisdiction appropriate in the case of highly interactive websites

where the Defendant enters into contracts with residents of a foreign jurisdiction that involve the

knowing and repeated transmission of computer files over the internet, and inappropriate in the

case of passive website which merely makes information available to interested viewers. Zippo,

952 F. Supp. at 1124. The exercise of jurisdiction for cases in the middle of the scale is “determined

by examining the level of interactivity and commercial nature of the exchange of information that

occurs on the Web site.” Id.

When an intentional tort is alleged, the court must also consider the “effects test” set forth

in Calder v. Jones, 465 U.S. 783 (1984). See Dakota Indus., 946 F.2d at 1391 (citing Haisten v.

Grass Valley Med. Reimbursement Fund, Ltd., 784 F.2d 1392, 1397 (9th Cir. 1986) (“within the

rubric of ‘purposeful availment’ the Court has allowed the exercise of jurisdiction over a defendant

whose only ‘contact’ with the forum state is the ‘purposeful direction’ of a foreign act having effect

in the forum state.”)). The Calder test provides that a defendant’s tortious act(s) can serve as a

basis for personal jurisdiction if the Plaintiff can make a prima facie case that the Defendant’s acts

“(1) were intentional; (2) were uniquely or expressly aimed at the forum state; and (3) caused

harm, the brunt of which was suffered—and which the defendant knew was likely to be suffered—

in the forum state.” Johnson, 614 F.3d at 796 (internal citation omitted). However, the Calder test

is not determinative and is merely an additional factor to consider in the minimum contacts

analysis; absent additional contacts, “mere effects in the forum state are insufficient to confer

personal jurisdiction.” Id. (citing Hicklin Eng’g, Inc. v. Aidco, Inc., 959 F.2d 738, 739 (8th Cir.

1992) (per curiam)).

Plaintiff argues that due process is satisfied because Defendant has strong and extensive

contacts with Missouri. In support of its argument, Plaintiff alleges that Defendant uses a website,

available to individuals in Missouri and elsewhere, to sell its goods and that it advertised its goods

in Missouri as a result of that availability. [Doc. 1 ¶¶ 11-12.] Plaintiff also argues that both the

offering and actual sale of allegedly trademark infringing goods satisfies the minimum contacts

necessary for this court to exercise personal jurisdiction over Defendant, [Doc. 14 at 4-6.], and

filed exhibits which show that a t-shirt displaying the contested mark was purchased and received

by an individual in Missouri [Docs. 1-1, 1-2, 1-3, 1-4]. Plaintiff alleges that Defendant knew of

its mark, intentionally misled customers and potential customers by using its mark, and attempted

to trade on the goodwill of Plaintiff. [Doc. 1 ¶¶ 11-12, 16, 26, 28.] As a result of Defendant’s sale

and advertisement of the alleged infringing goods, Plaintiff asserts that it suffered irreparable

damage to its brand because customers and potential customers may have mistaken Defendant’s

business and products with that of Plaintiff’s. Id. at ¶¶ 16-18, 26-27.

Defendant acknowledges that it owns the website zazzle.com, which allows third-party

users to create, buy, and sell customized merchandise online through Defendant’s e-commerce

services. [Doc. 9 at 2.] Zazzle.com is equally accessible to individuals in Missouri and elsewhere.

[Doc. 8-1 at 1.] Defendant provides information about intellectual property and guidelines to its

users aimed at preventing infringing material from being uploaded, and users of its website must

warrant that they are the creators and owners, or have the lawful right to use content that they

upload to Defendant’s website. Id. ¶¶ 4-5. Jennifer McNulty-Squiers, director of customer care for

Defendant, testified by declaration that Zazzle received a cease and desist letter from Plaintiff in

July 2019, notifying it of the products that allegedly infringed on BASIC’s trademark, that Zazzle

removed 28 allegedly infringing products from its website, and deactivated seller stores that

offered those products. [Doc. 8-1 ¶ 6.] McNulty-Squiers also testified that upon review of

Defendant’s records, only one sale of an allegedly infringing product had occurred on November

28, 2019; the same sale which Plaintiff relies on to support its argument that Defendant should be

subject to this court’s jurisdiction. Id. ¶ 7. Jamie Otto, Defendant’s counsel of record, submitted a

declaration stating that Plaintiff’s counsel informed him that the sole purchase at issue was made

by Plaintiff’s mother. [Doc. 8-2 at 3.]

a. The Nature and Quality of Contacts

Plaintiff alleges that Defendant sells goods into Missouri from its website. [Docs. 1 ¶ 12,

14 at 8.] However, the mere fact that Defendant’s website is accessible in Missouri and that it may

advertise and sell its products to residents of Missouri is, alone, insufficient to support a finding

of specific jurisdiction. Plaintiff’s reliance on Maritz, Inc. v. Cybergold, Inc., 947 F. Sup. 12328

(E.D. Mo. 1996) is misplaced. As Defendant contends, Maritz was decided before the Eight Circuit

explicitly adopted the Zippo test when evaluating the sufficiency of internet contacts for personal

jurisdiction. On the sliding scale of the Zippo test, Defendant’s website is closer to a more-

interactive site because it allows direct purchases to be made. However, specific jurisdiction is

only “permissible if a defendant purposely directs its activities at residents of the forum state ‘and

the litigation results from alleged injuries that arise out of or relate to those activities.’” Myers, 689

F.3d at 912 (quoting Burger King, 471 U.S. at 472). Even accepting Plaintiff’s allegations as true,

the availability of Defendant’s website in Missouri alone does not show that Defendant targeted

Missouri residents in any way and the record does not reflect that the Defendant purposely directed

its activities at Missouri. Cf. id. at 908 (noting that Casino Queen was physically located in a

metropolitan area which included Missouri and that it actively pursued marketing campaigns

directed at Missouri residents through, among other methods, direct mailing in Missouri and

through print, radio, and television media in Missouri). Plaintiff has not made more than bare

allegations that Defendant has contacts with Missouri through online sales and has not alleged that

Defendant purposefully directed its activities at Missouri.

Plaintiff has shown that Defendant made an allegedly trademark infringing good available

for purchase on its website and actually shipped one such good into Missouri. However, Defendant

alleges that purchase—the only contact with Missouri that Plaintiff has shown supported by

evidence—was made by someone affiliated to Plaintiff [Doc. 8-2]. To be used as the basis for

personal jurisdiction, “any sale into the forum must be such that it signals the defendant

purposefully availed him-or-herself to the privilege of doing business of the forum and was not

merely the result of a unilateral act of a third-party.” Regenexx v. Regenex Health LLC, 446 F.

Supp. 3d 469, 481 (S.D. Iowa 2020) (citing Burger King, 471 U.S. at 475)). “Although an internet

purchase of goods and delivery of the product to the forum state may establish personal jurisdiction

over the defendant, ‘plaintiffs are not permitted to “manufacture” personal jurisdiction over

defendants by orchestrating an in-state web-based purchase of their goods.’” Warren v. Cardoza

Publ. Co., 2017 U.S. Dist. LEXIS 16128, at *16-17 (E.D. Mo. Feb. 6, 2017) (quoting Krepps v.

Reiner, 588 F. Supp. 2d 471, 479 (S.D.N.Y. 2008)). As in Warren, this court declines to make a

determination regarding whether Plaintiff played a role in the web purchase, but looks to Plaintiff

to meet its burden to demonstrate that personal jurisdiction exists in this case. Id. at *17.

Plaintiff’s Response to Defendant’s Motion to Dismiss did not address Defendant’s

testimony that Plaintiff’s affiliate purchased the allegedly infringing good from Defendant’s

website in order to manufacture personal jurisdiction, and Plaintiff has not put forth any further

evidence regarding Defendant’s other contacts with Missouri. Plaintiff has not met its burden to

show facts proving jurisdiction based on the nature of Defendant’s contacts with Missouri, and

this factor strongly favors Defendant.

b. The Quantity of Contacts

Courts in Missouri and in the Eighth Circuit have consistently held that, without more, an

extraterritorial act with consequences in Missouri is insufficient to support the exercise of personal

jurisdiction over a non-resident defendant without violating due process. Peabody Holding Co. v.

Costain Grp. PLC, 808 F. Supp. 1425, 1438 (E.D. Mo. 1992) (collecting cases). In cases where

the court found personal jurisdiction based on “one or only a very few sales by the defendant to

customers in the forum state, jurisdiction was not based on contact manufactured by the plaintiff

or anyone affiliated with the plaintiff, and the circumstances showed more than the single sale as

the basis for the exercise of personal jurisdiction.” Foreign Candy Co. v. Tropical Paradise, Inc.,

950 F. Supp. 2d 1017, 1032 n.5 (N.D. Iowa 2013). As discussed above, while Plaintiff has shown

that a single sale from Defendant’s website was shipped to Missouri, Plaintiff has not refuted

Defendant’s claim that Plaintiff’s manufactured that contact through its affiliate. Moreover,

Plaintiff has made only bare allegations that Defendant has had other contacts with Missouri

through its website and has not specifically alleged that Defendant purposefully directed its

activities through any other method such as undertaking marketing campaigns specifically

targeting Missouri residents.

Viewing the facts in the light most favorable to Plaintiff, Plaintiff has only shown that a

single contact occurred between Defendant and the state of Missouri. That contact alone does not

support subjecting Defendant to jurisdiction in this forum, and Plaintiff has not alleged or proved

other supporting circumstances. Therefore, the second factor also weighs in favor of Defendant

and against the exercise of personal jurisdiction over Defendant in this forum.

c. The Relationship of the Contacts with the Cause of Action

The court must consider the relationship of the Defendant’s contacts with the forum state

with the cause of action for the purpose of distinguishing between specific and general jurisdiction

and examining whether totality of circumstances supports the exercise of personal jurisdiction over

Defendant. Myers, 689 F.3d at 911-914. As in Myers, Plaintiff does not assert that Defendant

should be subject to general jurisdiction, so this court’s inquiry is limited to that of specific

personal jurisdiction. The exercise of specific jurisdiction over a defendant is consistent with

traditional notions of fair play and substantial justice where the defendant purposely directs its

activities at the forum state by actively soliciting and targeting residents of the forum state, among

other things. See id. at 913. Defendant argues that, as a print-on-demand business, Plaintiff

“induced Zazzle to manufacture and ship a good that would not otherwise have existed” and that

“it would defy basic principles of equity and fairness to permit such a plaintiff to assert claims

based on any resulting infringement.” [Doc. 14 at 9.] Simply stated, Plaintiff alleges that Defendant

sold a product which infringes upon its good, and that contact is the basis for its cause of action.

Despite the contact’s relevance to Plaintiff’s cause of action, it is not a pertinent contact made by

Defendant.

With respect to Plaintiff’s allegation that Defendant generally advertises and sells goods to

residents of Missouri, Plaintiff has not argued that those contacts are related to its cause of action.

With respect to the remaining contact, Defendant’s sale of an allegedly infringing good to a

resident of Missouri, Plaintiff’s silence in response to Defendant’s testimony regarding the

origination of that sale is insufficient to meet its burden to show that the third factor weighs in

favor of the exercise of personal jurisdiction over Defendant in this forum.

d. Interest and Convenience of the Forum

The interest of the forum state and convenience of the forum to the parties relates to the

court’s analysis of reasonableness and its further consideration of the traditional notions of fair

play and substantial justice. Lakin, 348 F.3d at 712 n.11. The fourth factor weighs slightly in favor

of exercising jurisdiction over defendant. K-V Pharm., 648 F.3d at 595 (“Missouri obviously has

an interest in providing a forum for resident corporations.”). The fifth factor is neutral because a

trial in this forum is likely to be just as inconvenient for Defendant as a trial in an alternate forum

would be for Plaintiff. See id. Given the primary importance of the first three factors, the slight

weight of the fourth factor and the neutral weight of the fifth factors are insufficient to counter this

court’s assessment that there are insufficient minimum contacts to exercise personal jurisdiction

over Defendant without violating due process.

e. Effects in this Forum

The court also considers the Calder effects-test as an additional factor in its minimum

contacts analysis when an intentional tort is alleged. An assessment supporting the exercise of

personal jurisdiction under the effects test would show that Defendant’s allegedly tortious act was

(1) intentional; (2) uniquely or expressly aimed at the forum state; and (3) caused harm, the brunt

of which was suffered—and which the defendant knew was likely to be suffered—in the forum

state.” Johnson, 614 F.3d at 796. However, the Eighth Circuit construes the effects test narrowly,

and has held that “absent additional contacts, mere effects in the forum state are insufficient to

confer personal jurisdiction. Id. at 797. As such, the Calder factor do not alter this court’s

assessment. For the reasons discussed above, additional contacts are absent, and the court must

conclude that it cannot exercise personal jurisdiction over Defendant.

C. Alternate Relief

Plaintiff’s opposition to Defendant’s Motion to Dismiss requests leave to conduct limited

jurisdictional discovery regarding Defendant’s contacts with Missouri and requests that, if

Defendant’s motion is granted, this matter be transferred to an unspecified district court in

California “with personal jurisdiction.”

i. Leave to Conduct Jurisdictional Discovery

“A court may grant discovery on the issue of personal jurisdiction when jurisdictional facts

are unclear from the record and a party demonstrates that it can supplement its jurisdictional

allegations through discovery.” Stockell Healthcare Sys. v. CSS Healthcare Techs., Inc., 2016 U.S.

Dist. LEXIS 90535, at *5 (E.D. Mo. July 13, 2016) (citing Lakin, 348 F.3d at 710; NorthPole US,

LLC v. Price, 2006 U.S. Dist. LEXIS 35377, at *13 (E.D. Mo. May 31, 2006)). “However, when

a plaintiff offers only speculation or conclusory allegations about contacts with a forum state, a

court is within its discretion in denying jurisdictional discovery.” Id. (quoting Viasystems, Inc.,

646 F.3d at 598) (internal quotations omitted). A court abuses its discretion by dismissing an action

without permitting the plaintiff to take some jurisdictional discovery “where the plaintiff offers

‘documentary evidence’ in support of allegations of personal jurisdiction.” Foreign Candy Co.,

950 F. Supp. 2d at 1036 (citing Steinbuch, 518 F.3d at 589).

Plaintiff requests leave to conduct jurisdictional discovery regarding facts about

Defendant’s sales to and into Missouri, including how many items, customers, and dollar amounts

were involved, how much Defendant made in sales into Missouri in the last five years, whether

the website was operated by Defendant, whether Defendant controlled sales from the website, and

how payments made on the website were received by Defendant. [Doc. 14 at 1-2.]

Plaintiff has not articulated how its requested discovery would supplement its jurisdictional

allegations. As discussed in the preceding sections above, Plaintiff has offered only bare assertions

regarding Defendant’s other contacts with Missouri which are not supported by documentary

evidence. Furthermore, the discovery sought by Plaintiff would not cure other jurisdictional

defects discussed by this court by showing, for instance, that Defendant’s activities were

purposefully directed at Missouri, or explaining how Defendant’s other contacts in Missouri relate

to the instant claim. Plaintiff has failed to show that its jurisdictional allegations would be

supplemented through discovery. Therefore, Plaintiff’s request to conduct additional discovery is

denied.

ii. Transfer of Venue

Having determined that this court cannot exercise personal jurisdiction over Defendant,

this court considers whether transfer would be appropriate. The court may transfer this action under

28 U.S.C. § 1631 “if the interests of justice warrant it and the court to which the case is transferred

would have jurisdiction.” Gunn v. United States Dep’t of Agric., 118 F.3d 1233, 1240 (8th Cir.

1997). For instance, courts have granted transfers to prevent a claim from being time-barred by a

statute of limitations. Id. Where dismissal, rather than transfer, will not threaten a plaintiff’s ability

to pursue its claims, dismissal is appropriate. Regenexx, 446 F. Supp. 3d at 483.

Defendant asserts that there are no circumstances, including a potential statute of

limitations issue, that would prevent Plaintiff from refiling its claim an in appropriate forum, and

Plaintiff has not put forth any argument that dismissal, rather than transfer, would prejudice

Plaintiff or that its claims may be potentially time-barred. In line with the Eighth Circuit’s

reasoning in Gunn, in finding no interests of justice that require transfer of this case, and no threat

to Plaintiff’s ability to pursue its claims in the proper venue, this court declines to transfer this

action to another court under 28 U.S.C. § 1631.

IV. Conclusion

Accordingly,

IT IS HEREBY ORDERED that Defendant Zazzle’s Motion to Dismiss for Lack of

Personal Jurisdiction is GRANTED. [Doc. 8.]

IT IS FURTHER ORDERED that this action is DISMISSED for lack of personal

jurisdiction.

A separate Judgment will accompany this Memorandum and Order.

Te LA (Sl__

NANNETTE A. BAKER

UNITED STATES MAGISTRATE JUDGE

Dated this 12" day of April, 2021.

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