October 2009 E.D. Va. IP litigation opinion roundup, part 1
Recent decisions in IP cases in the U.S. District Court for the Eastern District of Virginia have not been groundbreaking, but they are good reminders of some of the nuts and bolts of IP litigation. This post covers two opinions regarding whether the Court is an appropriate forum.
In Proprietors of Strata Plan No. 36 v. Coral Gardens Resort Mgmt., Ltd., et als., case no. 1:09-cv-550, 2009 U.S. Dist. LEXIS 97704 (E.D. Va. Oct. 16, 2009), District Judge Anthony J. Trenga vacated a default judgment and dismissed a trademark infringement suit for lack of personal jurisdiction. Plaintiff Strata is a Turks and Caicos corporation with its principal place of business in Turks and Caicos.
To demonstrate jurisdiction, Strata alleged that the defendants (1) registered the domain name "coralgardens.com" with Network Solutions, located in Herndon, Virginia, in 1998; (2) “advertise on the coralgardens.com website, which provides a toll-free number to call from the United States and Canada ‘inviting and accepting business from the United States, including the Commonwealth of Virginia’”; (3) “have contracted to sell units at Coral Gardens in Virginia, have contracted to lease units at Coral Gardens in Virginia and have, this year, offered to contract with a Virginia resident, Mike Revell, to lease his unit at Coral Gardens”; (4) “met with Virginia residents Mike Revell and his wife in Prince William County, Virginia and agreed to sell units at Coral Gardens and lease units at Coral Gardens while in Virginia”; and (5) sent Virginia resident Mike Revell an email from an email address with the coralgardens.com domain name, soliciting rental business.
The Court held that the website was not sufficiently interactive to support personal jurisdiction. It noted the absence of “allegations that Defendants maintain offices in Virginia, own property in Virginia, or conduct regular business in the Commonwealth,” and held that the allegations regarding Revell, “based on the affidavit of one customer, are too vague to establish a prima facie case of general jurisdiction.” The Court also found no specific jurisdiction, given that “Defendants' alleged contacts with Virginia did not directly involve Strata, are not alleged to have involved continuous ‘correspondence and collaboration’ with the Commonwealth over an extended period of time, and did not directly lead to the present dispute.” In addition, the final e-mail relied upon by Strata came after the filing of the case, thereby not qualifying for use in showing personal jurisdiction.
The Court found no jurisdiction under Fed. R. Civ. P. 4(k)(2) because Strata “has alleged no additional facts relating to the Defendants' aggregate contacts with the United States beyond those that it alleged in connection with its claims relating to Defendants' contacts with Virginia.”
And the Court declined to allow jurisdictional discovery because Strata presented “nothing other than speculation to justify jurisdictional discovery, even though Strata has dealt extensively with at least some of the Defendants for years.”
In WiAV Solutions LLC v. Motorola, Inc., case no. 3:09-cv-447, 2009 U.S. Dist. LEXIS 96994 (E.D. Va. Oct. 20, 2009), Senior District Judge Robert E. Payne denied a motion by Defendants Motorola, Nokia Inc., Click for Enhanced Coverage Linking Searches Palm, Sharp Electronics, Sony USA, and UTStarcom to Transfer Venue to the U.S. District Court for the Southern District of California pursuant to 28 U.S.C. § 1404(a).
Although venue would have been proper in the S.D. Cal., the Court ruled that the balancing of § 1404(a) factors favored retention of the case. The Court gave deference to WiAV’s choice of forum because WiAV is incorporated in Virginia and maintains its principal place of business in Vienna, Virginia, within the Eastern District. (The Court did not address why the case was in the Richmond Division, given that Vienna is in the Alexandria Division.)
The Court found no greater convenience in the Southern District of California, noting that Defendants were not headquartered in either district, that party witnesses would have to travel to either district (with some witnesses being closer to each), and that the few identified non-party witnesses could travel to either forum and were not generally located in either forum. And the Court found nothing in the record suggesting that the interests of justice weighed in favor of transfer.
These two cases are good reminders that IP litigants, like any other litigants, need to pay attention to whether the court in which an action is filed is an appropriate forum. Another common thread is that the jurisdictional and venue inquiries in these cases require litigants to come forward with evidence very early in the case. And finally, both opinions went against the party that had the burden (to show jurisdiction and to show that the venue factors weigh in favor of transfer, respectively).
