Personal Jurisdiction Over Foreign Defendant Where Trademark Owner Advertised Its ND Cal Presence, d.light design, Inc. v. Boxin Solar Co., Case No. 13-5988 (Judge Chen)
Suing a foreign defendant in the district can be a tricky thing. Personal jurisdiction is obviously a prerequisite to obtaining any relief on an IP claim. Recent orders by Judge Chen in the d.light case suggest that a trademark plaintiff may have a better chance if it makes clear to the world that it is located in ND Cal and that it owns the trademarked goods and services at issue.
Plaintiff d.light design develops and sells solar light and power products, which were allegedly copied by a number of China-based defendants. d.light brought claims for infringement of design patents, trade dress, and trademark, and for unfair competition. Before granting d.light's request for a temporary restraining order (TRO), Judge Chen ordered supplemental briefing on the issue of personal jurisdiction.
Judge Chen ultimately adopted the latter of d.light's two theories that defendants had targeted the forum state of California. Judge Chen found that the court had personal jurisdiction based on evidence that the defendants willfully copied d.light's designs and knew or should have known that d.light was located in California. d.light's evidence of copying included a side-by-side comparison of designs, as well as communications from defendants to a private investigator in which they showed knowledge of the d.light products and some even claimed association with d.light or used the d.light name in advertising. As to knowledge, Judge Chen noted the "publicly available and easily accessible website for [d.light] describing company as a 'San Francisco based for-profit social enterprise.'" A footnote, however, suggests that the outcome may have been different had d.light asserted only patent infringement, since there was no evidence that defendants were aware of the existence of d.light's patents. In future cases, that might be remedied by evidence of patent marking.
Judge Chen rejected d.light's alternative theory that personal jurisdiction existed because defendants maintained websites accessible to consumers in California and were willing and able to sell infringing products to Californians (including to d.light's investigator). Judge Chen found these contacts too general to support personal jurisdiction, particularly because there was no evidence of any significant volume of sales to California. Judge Chen distinguished Judge Breyer's earlier ND Cal opinion in Quigley v. Guevera IP Pty Ltd., No. 2010-cv-03569 (N.D. Cal., Dec. 20, 2010) because the defendant in Quigley took a number of California-specific steps, such as establishing a California privacy policy and marketing its services using a girl from California in an example of its services.
The TRO was limited to enjoining defendants from selling the allegedly infringing products in the United States. Judge Chen found that d.light had not sufficiently addressed issues relevant to d.light's other requested relief, including an order to third parties to disable defendants' websites, a freeze on defendants' assets, and expedited discovery.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.