The United States Court of Appeals for the Eighth Circuit upheld a district court’s dismissal of a trademark infringement claim for lack of personal jurisdiction, finding that the trademark owner had not alleged that the alleged infringer could reasonably expect to be sued in Missouri. Brothers and Sisters in Christ, LLC c. Zazzle, Inc.Case No. 21-1917 (8th Cir. Aug. 2, 2022) (Smith, Benton, KellyNOT A WORD.)
Brothers and Sisters in Christ (BASIC) is a Missouri-based clothing company that owns the “love happens” brand. Zazzle is a California-based online retailer. BASIC sued Zazzle in Missouri district court for trademark infringement, alleging that Zazzle was using its nationally available website to advertise and sell products in Missouri. BASIC further alleged that in 2019, Zazzle sold and shipped an allegedly counterfeit “love is coming” logo t-shirt to at least one Missouri resident. The district court granted Zazzle’s motion to dismiss for lack of personal jurisdiction under the Fed. A. Civil. P.12(b)(2). BASIC appealed.
Examination of the problem de novo, the Eighth Circuit upheld the dismissal. The Court explained that because the Lanham Act does not allow for nationwide personal jurisdiction, the Court was required to apply Missouri’s Long Arm Law and the federal Due Process Clause. Because Missouri’s long-arm statute allows personal jurisdiction over defendants who engage in, among other things, the transaction of any business or the commission of a tort in the state, the Court’s inquiry focused on whether the exercise of personal jurisdiction over Zazzle fell within the due process clause. Because BASIC has not alleged that Zazzle is subject to general personal jurisdiction in Missouri (that’s to sayBASIC did not allege that Zazzle was “essentially at home” in the forum state), rather the issue was whether BASIC had pleaded facts sufficiently to support a specific claim of personal jurisdiction.
The Eighth Circuit explained that specific personal jurisdiction existed over Zazzle for the purposes of BASIC’s trademark infringement claims if Zazzle had certain minimal contacts with the forum state and BASIC’s claims arose out of or related to those contacts. . For a specific jurisdiction to apply, the underlying controversy must relate to the activities of the defendant in the forum state; unrelated activities directed at the forum state, however numerous or systematic, cannot convey specific personal competence. The Court used a five-factor test previously set out in Whaley v. Esebag to conduct its analysis: “(1) the nature and quality of [defendant’s] contacts with the forum state; (2) the quantity of these contacts; (3) the relationship between the cause of action and the contacts; (4) the forum state’s interest in providing a forum for its residents; and (5) the convenience of the parties.
The Eighth Circuit found that BASIC’s alleged conduct (Zazzle’s operation of a nationwide website that sells and ships goods to Missouri, combined with a single specific instance of an allegedly counterfeit T-shirt sold and shipped to a Missouri consumer) was insufficient to support a specific skill claim. Zazzle’s website availability and sales unrelated to use of the “love is coming” trademark could not support a specific jurisdictional claim. Regarding the single sale of t-shirts, the Court explained that “[t]The Supreme Court strongly suggested that a single sale of a product in one state is not an adequate basis for asserting jurisdiction over an out-of-state defendant. By simply alleging that a Missouri consumer accessed Zazzle’s website and purchased a shirt, BASIC failed to show that Zazzle deliberately reached out beyond its original forum or that the only contact presumed was something other than “random, isolated or fortuitous”. BASIC’s failure to allege sufficient facts to support the first three Whale could be overcome by the last two, less important factors.
Finally, the Eighth Circuit rejected BASIC’s attempt to rely on the Supreme Court’s 1984 decision Calder vs. Jones “effects criterion” for personal competence. The Court explained that the Calder was only one additional factor to be considered in assessing a defendant’s relevant contacts with the forum state, and BASIC has not adduced any facts to suggest that Zazzle “solely or expressly” targeted its allegedly tortious act against Missouri, as required by this test. Accordingly, the Court upheld the District Court’s dismissal of BASIC’s trademark infringement claims for lack of personal jurisdiction.
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