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In Washington Shoe Co. v. A-Z
Sporting Goods, Inc. (U.S. Court of Appeals – Ninth
Circuit, No. 11-35166, Dec. 17, 2012), the Ninth Circuit expanded
the exercise by Federal District Courts of personal jurisdiction
over out-of-jurisdiction defendants in federal
copyright cases. Building on the Supreme Court's seminal
decision in Int'l Shoe Co. v. Washington, 326 U.S. 310
(1945), the court explained how an Arkansas shoe retailer that had
never done business in the state of Washington could nonetheless be
subject to personal jurisdiction in that state.
Plaintiff Washington Shoe Co., a Washington
corporation, has been making and selling shoes in the state of
Washington for over 100 years. Defendant A-Z Sporting
Goods Inc., an Arkansas corporation, runs a single retail store in
Alma, Arkansas that sells goods relating to hunting, fishing, and
outdoor activities. A-Z does not sell products over
the Internet or through an interactive website. For a few years,
Washington Shoe sold shoes to A-Z and a Washington
Shoe sales representative provided A-Z with brochures
and catalogs containing Washington Shoe products and copyright
notifications. In 2009, Washington Shoe discovered that
A-Z was selling two children's
boots—knockoffs of Washington Shoe's popular
children's rain boots—that infringed on Washington
Shoe's copyrighted styles. A-Z purchased the
infringing boots from China, not from Washington Shoe.
Washington Shoe sent A-Z a
cease-and-desist letter informing A-Z that its boot
designs were copyrighted, and that A-Z's boots
were clearly knock-offs that infringed that copyright. Washington
Shoe demanded that A-Z cease selling the infringing
boots and provide Washington Shoe with an accounting of past sales.
Washington Shoe sent a second cease-and-desist letter. In response,
A-Z stopped selling the infringing boots in its store,
but sold its remaining inventory to an out-of-state thrift
Washington Shoe then filed a complaint in Federal
District Court in Washington alleging copyright infringement, trade
dress infringement, and unfair competition. A-Z moved
to dismiss for lack of personal jurisdiction. After allowing
jurisdictional discovery to test A-Z's claim that
it "never sold any goods, of any kind, to any person, business
or entity in the state of Washington[,]" District Judge Robert
Lasnik dismissed the case for lack of personal jurisdiction, but
denied A-Z's request for attorneys' fees.
Washington Shoe appealed the dismissal and A-Z
cross-appealed the denial of attorneys' fees.
Applying the due process test from the seminal
United States Supreme Court decision Int'l Shoe Co. v.
Washington, 326 U.S. 310 (1945)—yet another shoe case
involving the state of Washington—the Ninth Circuit panel
employed a three-part test to determine whether
A-Z had sufficient minimum contacts with the
state of Washington such that the maintenance of the suit would not
offend "traditional notions of fair play and substantial
justice." Int'l Shoe, 326 U.S. at 316. Focusing
on the first prong of the test—whether the defendant either
purposefully availed itself of the privilege of conducting
activities in the forum or purposefully directed its activities at
the forum—the Ninth Circuit reversed and remanded the
district court's decision, finding that A-Z was
subject to personal jurisdiction in the state of Washington even
though its only relevant contact with the state was Washington
Shoe's claim that A-Z willfully violated
Washington Shoe's copyright.
In reaching that conclusion, the Ninth Circuit
analyzed whether A-Z (1) committed an intentional act,
(2) expressly aimed at the forum state, (3) causing harm that the
defendant knows is likely to be suffered in the forum state. First,
the court concluded that the alleged copyright infringement was an
intentional act, because A-Z sold infringing boots in
its retail store and, later, after receiving the cease-and-desist
letters, to the thrift store. Second, the court found that
A-Z's conduct was expressly aimed at the state of
Washington "[b]ecause the harm caused by an infringement of
the copyright laws must be felt at least at the place where the
copyright is held" so "the impact of a willful
infringement is necessarily directed there as well." The
court reasoned that, once A-Z received the
cease-and-desist letters, A-Z's intentional acts
were expressly aimed at the copyright held by Washington Shoe.
Thus, where A-Z knew or should have known that
Washington Shoe was a Washington company, A-Z's
intentional acts were expressly aimed at the state of Washington.
Third, the court found that, since economic loss caused by the
intentional infringement of a plaintiff's copyright is
foreseeable, A-Z knew or should have known that the
impact of its willful infringement of Washington Shoe's
copyright would cause harm likely to be suffered in the state of
It remains to be seen whether this case will lead
to the more frequent exercise of personal jurisdiction over
out-of-jurisdiction copyright infringers, particularly
when there is no allegation—as there was in Washington
Shoe—that the alleged copyright infringement was willful.
Moreover, this recent Ninth Circuit decision could in theory have
an impact on the exercise of personal jurisdiction over any
out-of-state defendant who has committed an intentional tort
directed at a resident of the forum state.
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