# AMB Media, LLC v. OneMB

> District Court, E.D. Tennessee · June 1, 2023

URL: https://www.frixlaw.com/law-library/cases/10435426

## Case

- **Court:** District Court, E.D. Tennessee
- **Decided:** June 1, 2023
- **Opinion:** 100trialcourt
- **Cited by:** 0 later opinions in the Frix Law Library

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## Opinion text

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TENNESSEE
CHATTANOOGA DIVISION

AMB MEDIA, LLC, )
)

) 1:22-CV-00210-DCLC-SKL
Plaintiff,
)

)
v.
)

)
ONEMB, LLC, et al.,
)
)
Defendants )
)

MEMORANDUM OPINION AND ORDER
This matter is before the Court on Defendants’ OneMB, LLC, and Red Mountain Media
Group, LLC, Motion to Dismiss [Doc. 46]. Plaintiff AMB Media, LLC responded [Doc. 52], and
Defendants replied [Doc. 54]. This matter is now ripe for resolution. For the reasons that follow,
Defendants’ Motion to Dismiss [Doc. 46] is GRANTED.
I. BACKGROUND
Plaintiff is a Tennessee limited liability company that provides “a safe and easy way for
people to digitally preserve home movies, photos, and other physical media.” [Doc. 37, ¶¶ 23,
29]. Specifically, Plaintiff sells a kit that provides consumers with the tools necessary to send
Plaintiff their physical media, which Plaintiff then converts into a digital format [Id., ¶ 2].
Defendants are Arizona limited liability companies which compete with Plaintiff in digitizing
physical media [Docs. 37, ¶¶ 24, 26-27, 42; 48, pgs. 2-3, ¶¶ 3-4].
Since April 2014, Plaintiff has marketed its service with the trademark “LEGACYBOX.”
[Doc. 37, ¶ 29]. Defendants market their similar service using the name “MEMORYBOX.”
[Docs. 37, ¶¶ 42; 48, pg. 3, ¶ 5]. According to Plaintiff, Defendants use the term “LEGACYBOX”
and other terms similar to it in their online advertising for their products [Doc. 37, ¶ 47].
Defendants offer a similar service to Plaintiffs using a similar brand name at a similar price [Id.,
¶¶ 49-54].
Defendants sold their kits to 59 customers in Tennessee between January 1, 2020, and
October 28, 2022, totaling $16,862 in revenue from those Tennessee customers [Id., ¶ 8].
Defendants offer their services through their website, www.memorybox.digmypics.com [Id., ¶ 9].
Customers can purchase different types of products from Defendants through the website, and

Defendants’ website allegedly features reviews from some of the Tennessee customers who
purchased Defendants’ kits [Id., ¶¶ 10-11]. Customers also can track their orders on Defendants’
website by providing their order number and zip code [Id., ¶ 17]. Additionally, customers must
accept Defendants’ Terms and Conditions, including an indemnity clause, when using their
website [Id., ¶ 19]. In support of its First Amended Complaint, Plaintiff includes screenshots of
Defendants’ website [Docs. 37, ¶¶ 14, 18, 20, 45, 53; 37-5, pg. 1; 37-6, pgs. 1-17]. Those
screenshots show Defendants’ website and the services they offer through their website, but the
website does not contain any indication that it markets products specifically to Tennessee or
Tennessee consumers. Further, Plaintiff does not show any of the Tennessee reviews purportedly
featured on Defendants’ website.

Plaintiff states that the nature of Defendants’ services “involve multiple interactions
between customers in Tennessee and Defendants[.]” [Doc. 37, ¶ 12]. Plaintiff explains that
customers in Tennessee will send physical media to Defendants and that Defendants will return
that media and digital files to the customer in Tennessee [Id.]. Plaintiff further asserts that
Defendants primarily rely on email to communicate with customers about their orders [Id., ¶ 15].
Plaintiff contends that Defendants’ actions in Tennessee were purposeful because: (1)
Defendants sold their services to customers in Tennessee; (2) Defendants communicated with
those customers; (3) Defendants solicited and facilitated shipment of Tennessee customers’
physical media; (4) Defendants made numerous shipments to Tennessee customers to fulfill their
orders; and (5) Defendants require Tennessee customers to accept their Terms and Conditions by
using their website [Id., ¶ 22].
In November 2020, Defendant OneMB applied for a trademark for “DIGMYPICS
MEMORYBOX.” [Id., ¶ 43]. Plaintiff opposed Defendant OneMB’s trademark application
before the United States Patent and Trademark Office Trial and Appeal Board (“the Board”) [Id.,

¶ 56]. Plaintiff subsequently filed the instant lawsuit in August 2022, and the Board suspended
the administrative proceedings surrounding Defendant OneMB’s trademark application because
Plaintiff filed suit [Docs. 1, pgs. 1-18; 37, ¶ 56].
In its First Amended Complaint, Plaintiff contends that Defendants use of
“MEMORYBOX” will cause consumer confusion and infringe on its trademark for
“LEGACYBOX.” [Doc. 37, ¶ 48]. Plaintiff alleges claims for trademark infringement in violation
of federal law, unfair competition and false designation of origin under federal law, common law
trademark infringement and unfair competition, and violation of Tennessee’s Consumer Protection
Act (“TCPA”) [Id., ¶¶ 61-83]. Plaintiff seeks declaratory, injunctive, and monetary relief [Id., pgs.
21-25]. Defendants now move to dismiss Plaintiff’s First Amended Complaint for lack of personal

jurisdiction, among other reasons [Doc. 46].
II. LEGAL STANDARD
Federal Rule of Civil Procedure 8(a)(2) requires the complaint to contain a “short plain
statement of the claim showing that the pleader is entitled to relief.” Fed. R. Civ. P. 8(a)(2). Rule
12(b)(2) allows a defendant to move for dismissal based on a lack of personal jurisdiction. Fed.
R. Civ. P. 12(b)(2). When a defendant files such a motion, the plaintiff must show that the Court
can exercise personal jurisdiction. Estate of Thomson v. Toyota Motor Corp. Worldwide, 545 F.3d
357, 360 (6th Cir. 2008).
When deciding a motion to dismiss for lack of personal jurisdiction, the Court may: (1)
rule on the motion on the basis of the affidavits submitted by the parties; (2) permit discovery in
aid of the motion; or (3) conduct an evidentiary hearing on the merits of the motion. See Dean v.
Motel 6 Operating LP, 134 F.3d 1269, 1272 (6th Cir. 1998). Regardless of which path the Court
chooses, plaintiff has the burden of proof to show jurisdiction is proper. Bird v. Parsons, 289 F.3d

865, 871 (6th Cir. 2002). Additionally, when both sides submit competing affidavits but no party
requests an opportunity for discovery on the jurisdictional issue or an evidentiary hearing, the
Court may decide the jurisdictional issue based on the affidavits presented. Theunissen v.
Matthews, 935 F.2d 1454, 1458 (6th Cir. 1991).
A plaintiff’s burden is “relatively slight” when establishing personal jurisdiction based on
written submissions and affidavits. Estate of Thomson, 545 F.3d at 360 (internal quotation marks
omitted). Viewing the facts in favor of the plaintiff, “the plaintiff must make only a prima facie
showing that personal jurisdiction exists.” Id. at 360–61. To determine whether the plaintiff has
made such a showing, the Court considers the pleadings and any affidavits submitted by the parties
in the light most favorable to the plaintiff. Any conflicts between facts contained in the parties’

affidavits must be resolved in the plaintiff's favor. Neogen Corp. v. Neo Gen Screening, Inc., 282
F.3d 883, 887 (6th Cir. 2002). Dismissal under Rule 12(b)(2) is appropriate only if the specific
facts alleged by the plaintiff, taken as a whole, fail to state a prima facie case for personal
jurisdiction. Bridgeport Music, Inc. v. Still N The Water Pub., 327 F.3d 472, 478 (6th Cir. 2003).
III. ANALYSIS
Defendants assert that Plaintiff’s First Amended Complaint should be dismissed because
the Court lacks personal jurisdiction over them, and an exercise of personal jurisdiction would
violate their federal due process rights [Doc. 47, pg. 14]. The long-arm statute of the state in which
a federal court sits determines a federal court’s personal jurisdiction. Fed. R. Civ. P. 4(k)(1)(A);
Daimler AG v. Bauman, 571 U.S. 117, 125 (2014). Tennessee’s long-arm statute gives jurisdiction
“[o]n any basis not inconsistent with the constitution of this state or of the United States.” Tenn.
Code Ann. § 20–2–225. The Tennessee Supreme Court has ruled that this statute permits the
exercise of jurisdiction to the full extent permissible under the United States Constitution. Gordon
v. Greenview Hosp., Inc., 300 S.W.3d 635, 646 (Tenn. 2009). Therefore, the Court need only

determine if exercising jurisdiction over Defendants would violate federal due process under the
United States Constitution. See Bridgeport Music Inc., 327 F.3d at 477; see also Daimler AG, 571
U.S. at 125.
A court's exercise of jurisdiction does not violate federal due process when a defendant has
“certain minimum contacts with the [forum] State such that the maintenance of the suit does not
offend traditional notions of fair play and substantial justice.” Id. at 126 (internal quotations
omitted). The tenet of “fair play and substantial justice” has led to two types of personal
jurisdiction: general and specific. Id. at 127. A court can exercise general personal jurisdiction
over a defendant “when a defendant’s contacts with the forum state are of such a continuous and
systematic nature that the state may exercise personal jurisdiction over the defendant even if the

action is unrelated to the defendant’s contacts with the state.” Intera Corp. v. Henderson, 428 F.3d
605, 615 (6th Cir. 2005) (internal quotation marks omitted).
Here, Defendants do not have “continuous and systematic” contacts with Tennessee that
would render them subject to an exercise of general personal jurisdiction, and Plaintiff does not
dispute Defendants’ motion as to that issue. Moreover, Defendants are formed under the laws of
Arizona, have their principal places of business in Arizona, and do not conduct any substantial
amount of activity in Tennessee to fall under the general jurisdiction of Tennessee courts. Thus,
the Court will turn to whether Defendants are subject to specific personal jurisdiction in Tennessee.
Defendants argue that Plaintiff failed to make a prima facie showing of specific personal
jurisdiction as to them [Doc. 47, pg. 16], and Plaintiff responds that the First Amended Complaint
contains sufficient factual allegations to establish specific jurisdiction [Doc. 52, pg. 6].1 Unlike
general jurisdiction, specific jurisdiction focuses on the connection “between the forum and the
underlying controversy.” Power Investments, LLC v. SL EC, LLC, 927 F.3d 914, 917–18 (6th Cir.

2019) (quoting Goodyear, 564 U.S. at 919). A defendant’s contacts with the forum state, not the
plaintiff’s contacts, build that connection. Walden v. Fiore, 571 U.S. 277, 285 (2014). A defendant
must have directed some action to the forum state, “[b]ut a defendant’s relationship with a plaintiff
or third party, standing alone, is an insufficient basis for jurisdiction.” Id. at 286.
Specific personal jurisdiction applies to defendants “less intimately connected” with a
state. Ford Motor Co. v. Mont. Eighth Judicial District Court, 141 S. Ct. 1017, 1024–25 (2021)
(internal citations and quotation marks omitted). The contacts needed for specific jurisdiction go
by the name “purposeful availment” because the defendant is not “at home,” and the forum state
may exercise jurisdiction in certain cases only. Id. The plaintiff's claims must arise out of—or
relate to—the defendant’s contacts with the forum. Id. The Sixth Circuit uses three criteria for

analyzing whether a Defendant is subject to a forum’s exercise of specific jurisdiction: (1) the
defendant must purposefully avail itself of the privilege of acting in the forum state or causing a
consequence in the forum state; (2) the cause of action must arise from the defendant’s activities
in the forum state; and (3) the acts of the defendant, or consequences caused by the defendant,

1 Plaintiff also propounds an “alter-ego theory” of personal jurisdiction [Doc. 52, pg. 7]. But
that theory is not applicable in this matter because Plaintiff treats Defendants identically in its
jurisdictional allegations, and Defendants admit that they can be treated the same for purposes of
the Court’s jurisdictional analysis [Docs. 37, ¶¶ 5-22; 48, pg. 2, ¶ 2; 54, pg. 5].
must have a substantial enough connection with the forum state to make the exercise of jurisdiction
over the defendant reasonable. Intera Corp., 428 F.3d at 615 (quoting S. Mach. Co. v. Mohasco
Indus., Inc., 401 F.2d 374, 381 (6th Cir. 1968)). The Court lacks specific personal jurisdiction
over the defendant if any one of the three criteria are not met. LAK, Inc. v. Deer Creek Enter., 885
F.2d 1293, 1303 (6th Cir. 1989).
Defendants argue that they have not purposefully availed themselves of the privileges of
acting in Tennessee [Doc. 47, pg. 16], and Plaintiff contends it has alleged facts sufficient to show

otherwise [Doc. 52, pg. 8]. Purposeful availment “is present where the defendant’s contacts with
the forum state proximately result from actions by the defendant himself that create a substantial
connection with the forum[.]” Beydoun v. Wataniya Restaurants Holdings, Q.S.C., 768 F.3d 499,
505–06 (6th Cir. 2014) (quoting Neogen Corp., 282 F.3d at 889) (emphasis in original)). The
Court must focus on whether “the defendant has engaged in some overt actions connecting the
defendant with the forum state.” Id. (citing Fortis Corporate Ins. v. Viken Ship Mgmt., 450 F.3d
214, 218 (6th Cir. 2008)). In other words, purposeful availment can be understood as a “deliberate
effort by the defendant to direct its activities toward, and to make contact with, the forum.” Capital
Confirmation, Inc. v. Auditconfirmations, LLC, No. 3:09-0412, 2009 WL 2823613, at *5 (M.D.
Tenn. Aug. 28, 2009) (citing Bridgeport Music, 327 F.3d at 478).

According to Defendants, Plaintiff relies solely on Defendants’ maintenance of a website
to support exercise of specific jurisdiction over them [Doc. 47, pg. 16]. Defendants note that they
do not provide customers with personalized credentials, such as a password or login information,
for using their website or for downloading the digitized media they create for their customers [Id.,
pg. 17]. Plaintiff responds that Defendants operate an interactive website that provides customers
the ability to download their digitized media from that website [Doc. 52, pg. 10]. Additionally,
Plaintiff notes Defendants’ website includes an online shopping cart to allow customers to
purchase products and provide mailing and payment information [Id.]. Plaintiff contends that
Defendants directly market to Tennessee customers by including reviews from Tennessee
customers on their website [Id.]. Defendants reply that their operation of a generally accessible
commercial website is insufficient to meet the purposeful-availment requirement [Doc. 54, pg. 8].
The operation of a website constitutes the purposeful availment of the privilege of acting
in a forum state “if the website is interactive to a degree that reveals specifically intended
interaction with residents of the state.” Neogen Corp., 282 F.3d at 890. “There are generally three

levels of interactivity of websites, including: (1) passive sites that only offer information for the
user to access; (2) active sites that clearly transact business and/or form contracts; and (3) hybrid
or interactive sites that allow users to ‘exchange information with the host computer.’” See, Inc.
v. Imago Eyewear Pty., Ltd., 167 F. App’x 518, 522 (6th Cir. 2006) (quoting Zippo Mfg. Co. v.
Zippo Dot Com, 952 F.Supp. 1119, 1124 (W.D. Pa. 1997)).
But simply maintaining a website available to residents in the forum state is not purposeful
availment. Neogen Corp., 282 F.3d at 890. Similarly, a defendant’s operation of a website with
a commercial function does not, without more, constitute purposeful availment. Bird, 289 F.3d at
874–75. A plaintiff must show that a defendant “directly target[ed] its web site to the state,
knowingly interact[ed] with residents of the forum state via its web site, or through sufficient other

related contacts.” Roberts v. Paulin, No. 07-CV-13207, 2007 WL 3203969, at *6 (E.D. Mich.
Oct. 31, 2007) (quoting Toys “R” Us, Inc. v. Step Two, S.A., 318 F.3d 446, 454 (3d Cir. 2003)).
Here, Plaintiff emphasizes several aspects of Defendants website, such as allowing
customers to purchase kits from Defendants, displaying reviews from Tennessee customers, and
tracking customer orders by order number and customer zip code [Doc. 37, ¶¶ 10-11, 17-18].
Those features undoubtedly qualify Defendants’ website as a commercial and interactive website.
See, Inc., 167 F. App’x at 522. But—in 2023—those features are also commonplace among the
vast majority of websites for businesses of all sorts. Thus, the maintenance of Defendants’ website
alone does not show that Defendants directed their activity toward Tennessee, even though
Defendants’ website qualifies as a commercial and interactive website. Consumers from across
the country can access Defendants’ website and place orders for their digitizing kits. Indeed, the
national reach of Defendants’ website and its alleged use of an infringing mark is what Plaintiffs
wish to stop by filing this suit.
Plaintiff also argues that Defendants require Tennessee customers to accept their Terms

and Conditions when using their website, which shows Defendants directed their actions to
Tennessee [Doc. 52, pg. 12]. Defendants contend that they do not enter into a contract with
Tennessee customers who accept their Terms and Conditions because there was no consideration
between the customers and Defendants [Doc. 47, pg. 21]. Tennessee customers merely agreeing
to abide by Defendants’ Terms and Conditions for access to their website does not establish
purposeful availment. The Sixth Circuit has held that “the mere existence” of a contract between
a defendant and a resident of a forum state is insufficient to show purposeful availment by a
defendant. Calphalon Corp. v. Rowlette, 228 F.3d 718, 722 (6th Cir. 2000). The Court must look
to “prior negotiations and contemplated future consequences, along with the terms of the contract
and parties’ actual course of dealing” before finding the presence of a contract as evidence of

purposeful availment. Id. (quoting Burger King, 471 U.S. at 479). Here, Plaintiff’s bare allegation
that Tennessee customers accepted Defendants’ Terms and Conditions for access to their website
is not sufficient to find Defendants purposefully availed themselves of the privilege of transacting
business in Tennessee [Doc. 37, ¶ 19].
Plaintiff also asserts that between January 1, 2020, and October 28, 2022, 59 customers in
Tennessee purchased digitizing kits from Defendants, which totaled $16,862 in revenue [Doc. 52,
pg. 9]. Plaintiff notes that Defendants’ business requires it to send customers a kit that includes
instructions for how to ship physical media, have repeated contact with customers to facilitate
transfer of physical media, communicate regarding the digitizing process, potentially host digitized
media online, and send customer’s physical media back to them after digitization is complete [Id.].
Defendants argue that they have not entered into any third-party contracts to make their services
more accessible to Tennessee consumers or to target Tennessee consumers specifically [Doc. 47,
pg. 17]. Defendants also contend they have not taken any deliberate steps to establish a substantial
connection with Tennessee [Id., pg. 20].

Purposeful availment does not rely on a “percentage of business” analysis “but rather on
whether the absolute amount of business conducted by [Defendants] . . . represents something
more than ‘random, fortuitous, or attenuated contacts’ with the state.” Neogen Corp., 282 F.3d at
891–92 (quoting Burger King, 471 U.S. at 475)). Plaintiff does not allege that Defendants actively
solicited business from those 59 Tennessee customers over the two-and-a-half year period Plaintiff
notes or that Defendants attempted to engage in further business with those customers. Plaintiff
only cites Defendants’ Tennessee customer statistics as evidence that it directed its activities
toward those Tennessee customers [Doc. 37, ¶ 8]. Without further allegations about the role
Defendants played in pursuing those customers, the Court cannot find that those transactions
represent more than “random, fortuitous, or attenuated contacts” with Tennessee.2

Additionally, Plaintiff’s assertion that Defendants’ services “involve multiple interactions
between customers in Tennessee and Defendants” could describe any other retailer selling goods
through a generally accessible, commercial website [Doc. 37, ¶ 12]. To be sure, Defendants

2 Although the Court does not focus on the percentage of business that the Tennessee
customers represent for Defendants, Defendants’ assertion that those 59 customers represent less
than one percent of their total revenue is telling [Doc. 47, pg. 9; 48, pgs. 2-3, ¶¶ 11-14]. That
figure highlights that Defendants’ Tennessee contacts are better categorized as “random,
fortuitous, or attenuated[.]” Neogen Corp., 282 F.3d at 891–92 (quoting Burger King, 471 U.S. at
475)).
directed activity toward the Tennessee customers, once those Tennessee customers placed orders
for digitizing kits on Defendants’ website. But purposeful availment requires that “defendant’s
contacts with the forum state proximately result from actions by the defendant himself that create
a substantial connection with the forum[.]” Beydoun, 768 F.3d at 505–06. Defendants only
interacted with those Tennessee customers because those customers ordered digitizing kits from
Defendants in the first instance. Plaintiff does not allege that the Tennessee customers visited
Defendants’ website because Defendants solicited their business through advertisement or direct

targeting from their website. And the screenshots of Defendants’ website that Plaintiff includes in
its First Amended Complaint and Response do not show that Defendants’ website was directed at
Tennessee consumers in any way. Those screenshots show a website that appears to be accessible
to anyone in any forum [Doc. 37, ¶¶ 14, 18, 20, 45, 53; 37-5, pg. 1; 37-6, pgs. 1-17].
Indeed, a number of courts in this Circuit have found that “isolated sales to a forum, through
an interactive website or otherwise, will not satisfy the purposeful availment requirement.” Oaks
v. Largo Bioscience, Inc., No. 3:21-CV-00541, 2022 WL 765506, at *7 (M.D. Tenn. Mar. 11,
2022) (collecting cases). As one court aptly stated, “the crucial distinction appears to be who
reached out to whom.” Advanced Solutions Life Sciences, LLC v. BioBots, Inc., No. 3:16-CV-
00709, 2017 WL 2114969, at *6 (W.D. Ky. May 15, 2017). Plaintiff here describes a routine

commercial interaction that could apply to many different websites on a daily basis, and Plaintiff
fails to allege that Defendants initiated the interactions they had with Tennessee consumers.
Without more, Plaintiff cannot show that Defendants directed their activities to Tennessee based
on their sporadic sales to Tennessee customers alone.
Even taking Plaintiff’s allegations together, they still do not show purposeful availment by
Defendants. Defendants’ website coupled with their sporadic sales to Tennessee customers over
the past two-and-a-half years do not show that they directed their activities toward Tennessee.
Instead, Plaintiff’s allegations show that Tennessee consumers came upon Defendants’ website,
bought their product, and Defendants fulfilled those consumers’ purchases.
Accordingly, Plaintiff fails to allege facts necessary to show that Defendants purposefully
availed themselves of the privilege of acting in Tennessee. Because Plaintiff cannot show that
Defendants’ purposefully availed themselves of acting in Tennessee, the Court need not address
the remaining criteria for whether Defendants are subject to specific personal jurisdiction in
Tennessee. LAK, Inc., 885 F.2d at 1303. Moreover, the Court does not address Defendants’

remaining arguments in their motion to dismiss.
IV. CONCLUSION
For the reasons stated, Defendants’ Motion to Dismiss [Doc. 46] is GRANTED.
Defendants’ Motion to Strike [Doc. 49] is DENIED AS MOOT.
SO ORDERED:
s/ Clifton L. Corker
United States District Judge

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/10435426. Public record. Not legal advice.