`
`O
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`Case No. CV 15-05024 DDP (Ex)
`ORDER DENYING IN PART AND
`GRANTING IN PART DEFENDANTS’
`MOTION TO DISMISS
`[Dkt. No. 49]
`
`)))))))))))))))))))))
`
`LIONS GATE ENTERTAINMENT
`INC., a Delaware
`corporation,
`
`Plaintiff,
`
`v.
`TD AMERITRADE SERVICES
`COMPANY, INC., a Delaware
`corporation; TD AMERITRADE,
`INC., a New York
`corporation; AMERIVEST
`INVESTMENT MANAGEMENT, LLC,
`a Delaware limited liability
`company; HAVAS WORLDWIDE NEW
`YORK, INC., a Delaware
`corporation,
`
`Defendants.
`___________________________
`
`Presently before the Court is the Motion to Dismiss of
`Defendants TD Ameritrade Services Company, TD Ameritrade, Inc.,
`Amerivest Investment Management, LLC, and Havas Worldwide New York,
`Inc. (collectively, “Defendants”). (Dkt. No. 49.) After
`considering the parties’ submissions and hearing oral argument, the
`Court adopts the following Order.
`///
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`Case 2:15-cv-05024-DDP-E Document 87 Filed 03/14/16 Page 2 of 35 Page ID #:1866
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`I.
`
`BACKGROUND
`This copyright and trademark infringement case arises from
`Plaintiff Lions Gate Entertainment, Inc.’s intellectual property
`rights in the movie Dirty Dancing that Plaintiff alleges Defendants
`infringed. (First Am. Compl. (“FAC”) ¶¶ 15, 22, 32.)
`Plaintiff Lions Gate is a “global entertainment company” that
`produces, distributes, finances, licenses, and performs other
`related activities for movies and television shows. (Id. ¶¶ 15-
`16.) Dirty Dancing “is a world famous, Oscar-winning film, which
`was released in 1987 and became a massive box office hit, with
`hundreds of millions of dollars in worldwide earnings reported.”
`(Id. ¶ 17.) Many scenes and lines from the film are particularly
`well-known. (Id.) The FAC notes in particular the line “Nobody
`puts Baby in a corner,” said by Patrick Swayze to Jennifer Grey in
`the final climactic scene of the film. (Id. ¶ 21.) The line is
`followed by the final dance between the two main characters,
`culminating with Swayze lifting Grey over his head (the “dance
`lift”). (Id.)
`Lions Gate claims to own “all right, title and interest in,
`and . . . the copyright in,” the film. (Id. ¶ 22.) Lions Gate
`also claims to own common-law trademark rights in DIRTY DANCING and
`NOBODY PUTS BABY IN A CORNER, the latter mark being one associated
`with Dirty Dancing the movie and both of which are used in motion
`pictures, various items of merchandise, and other adaptations of
`the film. (Id. ¶ 18-19, 23-24.) Lions Gate also claims to have
`registered the trademark DIRTY DANCING and to have applied for
`trademark registration in NOBODY PUTS BABY IN A CORNER. (Id. ¶
`24.) The latter trademark registration is “based on actual use of
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`Case 2:15-cv-05024-DDP-E Document 87 Filed 03/14/16 Page 3 of 35 Page ID #:1867
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`the mark for certain goods and on an intent to use the mark for the
`remaining goods identified in the applications.” (Id.) Plaintiff
`claims that it has licensed the marks DIRTY DANCING and NOBODY PUTS
`BABY IN A CORNER for the “manufacturing, marketing, and sale of a
`variety of merchandise through approved licensees.” (Id. ¶ 26.)
`Further, Plaintiff claims that it “licenses elements from Dirty
`Dancing to third parties, who use Dirty Dancing to advertise,
`market, or promote their goods and services.” (Id.) Plaintiff
`claims that the trademarks have secondary meaning and are famous,
`as well as are associated with goodwill and quality, creating high
`value in the marks for Plaintiff and its licensees. (Id. ¶¶ 28-
`29.)
`
`Defendants TD Ameritrade, TD Ameritrade Services, and
`Amerivest (collectively, “TD Defendants”) are related financial
`services organizations. (Id. ¶¶ 4-8.) Havas Worldwide New York
`(“Havas New York”) is an advertising agency that was hired in 2014
`to create a national advertising campaign for the TD Defendants.
`(Id. ¶¶ 30-31.) The advertisements consisted of online videos,
`digital displays, social media, email, television, and print ads.
`(Id.) According to Plaintiff’s FAC, “[t]he Advertising Campaign
`was generally published and displayed in California and was
`directly distributed to California residents, in accordance with
`Defendants’ plans and intentions.” (Id. ¶ 31.) Further,
`“[a]pproximately 20% of TD Ameritrade’s nationwide branch offices
`are in California” and “[e]mails sent as part of the Advertising
`Campaign included in their fine print a link to TD Ameritrade’s
`online privacy statement, which includes information expressly
`directed to email recipients that reside in California.” (Id.)
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`Case 2:15-cv-05024-DDP-E Document 87 Filed 03/14/16 Page 4 of 35 Page ID #:1868
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`Plaintiff claims that the advertising campaign “intentionally
`copied the Dirty Dancing motion picture, and was intentionally
`designed to create an association with Lions Gate and its
`commercial activities by marketing TD Ameritrade’s goods and
`services with phrases” that modified the NOBODY PUTS BABY IN A
`CORNER trademark and quote from Dirty Dancing, as well as the
`signature dance lift. (Id. ¶¶ 32-34.) Essentially, the main line
`of the advertisement campaign is: “Nobody puts your old 401k in a
`corner,” with an encouragement to enroll in the TD Defendants’ IRA
`plans. (Id. ¶ 32.) The advertisements often included images to
`conjure up Dirty Dancing, such as “a still and/or moving image of a
`man lifting a piggy bank over his head after the piggy bank ran
`into the man’s arms.” (Id. ¶ 34.) Some versions of the
`advertisements invoked the song, “(I’ve Had) the Time of My Life,”
`which played during the final dance scene in the movie, with lines
`like “[b]ecause retirement should be the time of your life.” (Id.)
`Plaintiff claims that all these uses render consumer confusion
`likely to occur. (Id. ¶¶ 35-36.)
`Plaintiff claims that the advertising campaign ran from
`October 2014 to April 12, 2015, as Plaintiff contacted the TD
`Defendants about the campaign in April after Plaintiff learned of
`it. (Id. ¶¶ 37-38.) Havas New York responded to the cease and
`desist letter on behalf of itself and the TD Defendants, claiming
`that Plaintiff had no enforceable trademark rights and that
`Defendants were making a parody. (Id. ¶ 39.) Shortly after an
`exchange of letters regarding the advertising campaign, Defendants
`ceased the campaign, but still refused to pay Plaintiff for their
`alleged infringing use. (Id. ¶ 41.)
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`The parties continued communicating about settlement of
`Plaintiff’s potential claims, with Plaintiff stating in June 2015
`that if settlement discussions did not engage in earnest, it would
`file a lawsuit in the Central District of California. (Id. ¶ 42-
`44.) After the parties failed to settle, Defendants filed a
`declaratory judgment suit in the Southern District of New York.
`(Id. ¶¶ 45-47.) Plaintiff filed a motion to transfer venue in the
`New York case and also filed its own suit in the Central District
`of California. (Id. ¶ 49; see also Compl., dkt. no. 1.) On
`September 29, 2015, the New York federal court granted the motion
`to transfer; shortly thereafter, Defendants voluntarily dismissed
`their claims in the New York suit. (FAC ¶¶ 49-50.) Now,
`Defendants have filed a Motion to Dismiss for (1) lack of personal
`jurisdiction over Havas New York; and (2) Copyright Act preemption.
`II. LEGAL STANDARD
`A.
`Motion to Dismiss Under Rule 12(b)(2)
`Federal Rule of Civil Procedure 12(b)(2) provides that a court
`may dismiss a suit for lack of personal jurisdiction. The
`plaintiff has the burden of establishing that jurisdiction exists,
`but need only make “a prima facie showing of jurisdictional facts
`to withstand the motion to dismiss.” Pebble Beach Co. v. Caddy,
`453 F.3d 1151, 1154 (9th Cir. 2006). “[U]ncontroverted allegations
`in [the plaintiff’s] complaint must be taken as true, and conflicts
`between the facts contained in the parties’ affidavits must be
`resolved in [the plaintiff’s] favor.” Rio Props., Inc. v. Rio
`Int’l Interlink, 284 F.3d 1007, 1019 (9th Cir. 2002).
`///
`///
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`Case 2:15-cv-05024-DDP-E Document 87 Filed 03/14/16 Page 6 of 35 Page ID #:1870
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`Motion to Dismiss Under Rule 12(b)(6)
`B.
`A 12(b)(6) motion to dismiss for failure to state a claim upon
`which relief can be granted requires a court to determine the
`sufficiency of the plaintiff’s complaint and whether it contains a
`“short and plain statement of the claim showing that the pleader is
`entitled to relief.” See Fed. R. Civ. P. 8(a)(2). Under Rule
`12(b)(6), a court must (1) construe the complaint in the light most
`favorable to the plaintiff, and (2) accept all well-pleaded factual
`allegations as true, as well as all reasonable inferences to be
`drawn from them. See Sprewell v. Golden State Warriors, 266 F.3d
`979, 988 (9th Cir. 2001), amended on denial of reh’g, 275 F.3d 1187
`(9th Cir. 2001).
`In order to survive a 12(b)(6) motion to dismiss, the
`complaint must “contain sufficient factual matter, accepted as
`true, to ‘state a claim to relief that is plausible on its face.’”
`Ashcroft v. Iqbal, 556 U.S. 662, 663 (2009) (quoting Bell Atl.
`Corp. v. Twombly, 550 U.S. 544, 570 (2007)). However,
`“[t]hreadbare recitals of the elements of a cause of action,
`supported by mere conclusory statements, do not suffice.” Id. at
`678. Dismissal is proper if the complaint “lacks a cognizable
`legal theory or sufficient facts to support a cognizable legal
`theory.” Mendiondo v. Centinela Hosp. Med. Ctr., 521 F.3d 1097,
`1104 (9th Cir. 2008).
`A complaint does not suffice “if it tenders ‘naked
`assertion[s]’ devoid of ‘further factual enhancement.’” Iqbal, 556
`U.S. at 678 (quoting Twombly, 550 U.S. at 556). “A claim has
`facial plausibility when the plaintiff pleads factual content that
`allows the court to draw the reasonable inference that the
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`Case 2:15-cv-05024-DDP-E Document 87 Filed 03/14/16 Page 7 of 35 Page ID #:1871
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`defendant is liable for the misconduct alleged.” Id. The court
`need not accept as true “legal conclusions merely because they are
`cast in the form of factual allegations.” Warren v. Fox Family
`Worldwide, Inc., 328 F.3d 1136, 1139 (9th Cir. 2003).
`III. DISCUSSION
`Defendants make two main arguments in support of their Motion
`to Dismiss. First, Havas New York claims that it is not subject to
`personal jurisdiction in California. (Mot. Dismiss at 1, 7-15.)
`Havas New York claims there is no general jurisdiction because it
`“does not have offices, employees, or other contacts” in California
`and Plaintiff cannot impute separately incorporated sister entities
`to Havas New York in order to establish jurisdiction. (Id. at 1,
`7-10.) There is no specific jurisdiction either, Havas New York
`claims, because it “merely produced the advertisements and
`delivered them to its client, TD Ameritrade Services, outside of
`California.” (Id. at 1, 10-15.) Because Havas New York “did not
`disseminate the advertisements or have any role or authority in
`determining whether, when, or where they would air,” Havas New York
`claims it “has not purposefully directed any activity toward
`California.” (Id. at 1-2.)
`Second, all Defendants argue that four of Plaintiff’s causes
`of action are preempted by the Copyright Act: (1) False Association
`and Unfair Competition under 15 U.S.C. § 1125(a); (2) Statutory and
`Common Law Unfair Competition under Cal. Bus. & Prof. Code § 17200
`et seq.; (3) Trademark Infringement under 15 U.S.C. § 1125(a) and
`common law; and (4) Trademark Dilution under 15 U.S.C. § 1125(c)
`and Cal. Bus. & Prof. Code § 14247. (See Mot. Dismiss at 2, 15-25;
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`Case 2:15-cv-05024-DDP-E Document 87 Filed 03/14/16 Page 8 of 35 Page ID #:1872
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`FAC ¶¶ 51-81.) Plaintiff also has a cause of action for copyright
`infringement that Defendants do not contest. (FAC ¶¶ 82-91.)
`Defendants claim that the trademark and unfair competition
`claims are preempted by the Copyright Act because the “claims are
`premised on the unauthorized reproduction of elements of a creative
`work.” (Mot. Dismiss at 2.) Defendants argue that the elements
`are protected by the Copyright Act and a plaintiff cannot bring
`other claims to vindicate the same rights, much less expand
`protection beyond the scope of copyright. (Id. at 2, 17-25.)
`Plaintiff responds that there is personal jurisdiction over
`Havas New York, as strongly suggested by the New York federal court
`that heard the motion to transfer venue. (Opp’n at 1.) At the
`least, Plaintiff argues, the Court should grant jurisdictional
`discovery. (Id. at 1, 14-15.) Plaintiff claims that there is
`general jurisdiction over Havas New York because of its corporate
`relationships with related California entities and California-based
`clients. (Id. at 5-6.) There is also specific jurisdiction here,
`Plaintiff claims, because Havas New York created the advertisement
`campaign “knowing and intending it to be run in California and
`specifically directed to California consumers.” (Id. at 7
`(emphasis removed).) According to Plaintiff, because Havas New
`York purposefully directed its activities at California,
`Plaintiff’s claims arise out of those activities, and exercise of
`jurisdiction would be reasonable, this Court should find it has
`personal jurisdiction over Havas New York. (Id. at 8-14.)
`Second, Plaintiff argues it has alleged clear trademark and
`unfair competition claims that exist independently from its
`copyright claim — and that Plaintiff can enforce both of kinds of
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`Case 2:15-cv-05024-DDP-E Document 87 Filed 03/14/16 Page 9 of 35 Page ID #:1873
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`intellectual property rights. (Id. at 2, 16-25.) Plaintiff
`acknowledges that the trademark and copyright claims derive from
`one creative work, the film Dirty Dancing, but that “courts have
`consistently held that a single work may simultaneously be
`protected under copyright and trademark law.” (Id. at 2.)
`In their Reply, Defendants reiterate that there are no grounds
`for personal jurisdiction over Havas New York because: “Havas New
`York is a foreign entity, and contracted with another foreign
`entity, TD Ameritrade Services, to develop a national advertising
`campaign; that the Accused Ads were both created for and delivered
`to TD Ameritrade Services outside of California; and that TD
`Ameritrade Services distributed the Accused Ads.” (Reply at 1.)
`As for the copyright preemption issue, Defendants claim that
`Plaintiff in its Opposition and FAC have “commingle[d] the
`quote/alleged mark with the film Dirty Dancing as a whole” and that
`there is no real use of the alleged trademark outside of the
`copyrighted motion picture work. (Id. at 2.)
`A.
`Personal Jurisdiction
`District courts have the power to exercise personal
`jurisdiction to the extent authorized by the law of the state in
`which they sit. Fed. R. Civ. P. 4(k)(1)(A); Panavision Int’l, L.P.
`v. Toeppen, 141 F.3d 1316, 1320 (9th Cir. 1998). Because
`California’s long-arm statute authorizes personal jurisdiction
`coextensive with the Due Process Clause of the United States
`Constitution, see Cal. Civ. Proc. Code § 410.10, this Court may
`exercise personal jurisdiction over a nonresident defendant when
`that defendant has “at least ‘minimum contacts’ with the relevant
`forum such that the exercise of jurisdiction ‘does not offend
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`traditional notions of fair play and substantial justice.’”
`Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797, 801 (9th
`Cir. 2004) (quoting Int’l Shoe Co. v. Washington, 326 U.S. 310, 316
`(1945)). The defendant’s contacts with the forum must be of such a
`quality and nature that the defendants could reasonably expect
`“being haled into court there.” World-Wide Volkswagen Corp. v.
`Woodson, 444 U.S. 286, 297 (1980). Personal jurisdiction may be
`either general or specific. See Schwarzenegger, 374 F.3d at 801.
`1.
`General Jurisdiction
`General jurisdiction exists over a nonresident defendant when
`“the defendant . . . engage[s] in ‘continuous and systematic
`general business contacts’ that ‘approximate physical presence’ in
`the forum state.” Id. (quoting Helicopteros Nacionales de
`Colombia, S.A. v. Hall, 466 U.S. 408, 416 (1984)) (internal
`quotation omitted). The standard for general jurisdiction is
`“exacting.” Id. Where a defendant is subject to a state’s general
`jurisdiction, he “can be haled into court in that state in any
`action, even if the action is unrelated to those contacts.”
`Bancroft & Masters, Inc. v. Augusta Nat’l, Inc., 223 F.3d 1082,
`1086 (9th Cir. 2000). “Factors to be taken into consideration are
`whether the defendant makes sales, solicits or engages in business
`in the state, serves the state’s markets, designates an agent for
`service of process, holds a license, or is incorporated there.”
`Id.
`
`The Supreme Court has held that general jurisdiction can be
`exercised over corporations in the state of incorporation and its
`principal place of business, although in an “exceptional case,”
`there can be general jurisdiction in other fora. See Daimler AG v.
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`Bauman, 134 S. Ct. 746, 760-61 & n.19 (2014). The Supreme Court
`did not provide much explanation as to those exceptional cases,
`other than to say that “a corporation’s operations in a forum other
`than its formal place of incorporation or principal place of
`business may be so substantial and of such a nature as to render
`the corporation at home in that State.” Id. at 761 n.19.
`Here, Defendant Havas New York is incorporated in Delaware and
`has its principal place of business in New York — facts neither
`party contests. (Mot. Dismiss at 8; Opp’n at 5-6; FAC ¶ 9.)
`Instead, Plaintiff contends that this is an “exceptional case”
`where general jurisdiction can be found outside those paradigmatic
`categories. Plaintiff relies on CollegeSource, Inc. v. AcademyOne,
`Inc., 653 F.3d 1066, 1074 (9th Cir. 2011), which stated that it
`considered the “longevity, continuity, volume, economic impact,
`physical presence, and integration into the state’s regulatory or
`economic markets” of the defendant’s contacts with the forum state
`when determining if general jurisdiction is appropriate.
`Plaintiff claims that Havas New York has “large California-
`based clients” and clients “that have a substantial California
`presence,” such as the TD Defendants. (Opp’n at 6 & n.3 (citing
`Walters Decl. ¶¶ 18-24); see also FAC ¶ 12.) Further, Plaintiff
`argues that Havas New York has “extensive, self-proclaimed
`connections to offices throughout the world, including 8 sister
`entities in California with whom Havas has overlapping corporate
`officers.” (Opp’n at 6 & n.4 (citing Walters Decl. ¶¶ 12-17); see
`also FAC ¶¶ 10-11.) The FAC states that “Havas operates offices in
`both San Francisco, California and San Diego, California, and is
`affiliated with local offices throughout the U.S., including 8
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`offices in California, 2 of which are located in Los Angeles.”
`(FAC ¶ 11.) Plaintiff claims that Havas New York “frequently
`partners and does business with its affiliates in California” and
`holds itself out to its clients as “under one roof.” (Id.)
`Defendants argue that Plaintiff has its facts wrong.
`Defendants claim that Havas New York “does not maintain an office
`in San Francisco, San Diego, or anywhere else in California.”
`(Mot. Dismiss at 9 (citing Wynne Decl. ¶ 3).) These California
`offices instead belong to sister Havas entities. (Id. (citing
`Wynne Decl. ¶¶ 12-13.) Further, Defendants argue that Plaintiff’s
`claim about the amount of California clients is incorrect (citing
`Wynne Decl. ¶ 18), and regardless of the clients, merely having
`California clients is insufficient to find general jurisdiction.
`(Mot. Dismiss at 9 (citing CollegeSource, 653 F.3d at 1075).) The
`focus instead is on “where the business activity is performed.”
`(Id. (quoting Cypers v. Broussard Bros., Inc., No. 3:13-cv-0050,
`2013 WL 3480381, at *3 (S.D. Tex. July 9, 2013).) And Defendants
`claim that having sister entities — some of which are in California
`— cannot make general jurisdiction, particularly where there is no
`agency theory of jurisdiction or allegations of alter ego. (Mot.
`Dismiss at 9-10 (citing Daimler, 134 S. Ct. at 759; Wynne Decl. ¶¶
`12-15).)
`The Court finds that the question of general jurisdiction over
`Havas New York in California is a close one on the factual record
`developed here. On the one hand, Havas New York does extensive
`business in California, even apart from its sister entities in
`California, and the company holds itself out to the public as a
`worldwide firm with internal connections within the different
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`sister offices. On the other hand, Havas New York does not only or
`perhaps even primarily deal with clients or do business in
`California, much less have a physical presence in the state — the
`sister entities are not grounds for jurisdiction and there is no
`allegation of alter ego here.
`Looking at the Ninth Circuit’s factors from CollegeSource, it
`is unclear how long Havas New York has dealt in California. There
`does appear to be some longevity, as the firm has several large
`institutional clients here, although Havas New York may only be
`hired for a short time by some of its California clients. There is
`some uncertainty in the current record as to the volume of business
`Havas New York does in California. There is economic impact on
`both California clients and Havas New York through Havas New York’s
`California clients, but again the record is not that developed as
`to this factor. There does not appear to be any physical presence
`by Havas New York itself in California other its visits to its
`clients and meetings with its sister entities. And there are no
`facts in the record about Havas New York’s integration into the
`state’s regulatory or economic markets here in California, so the
`Court cannot consider that factor.
`Altogether, the Court could see an argument for general
`jurisdiction in this case, although the record could also benefit
`from some more development in that regard. If the Court finds
`specific jurisdiction, however, it need not rest its decision on
`this ground or order jurisdictional discovery.
`2.
`Specific Jurisdiction
`Specific jurisdiction exists where a case arises out of forum-
`related acts. Schwarzenegger, 374 F.3d at 801-02. The relevant
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`contacts with the forum are those of the defendant, not the
`plaintiff or third parties — no matter “how significant the
`plaintiff’s contacts with the forum may be.” Walden v. Fiore, 134
`S. Ct. 1115, 1122 (2014) (“[T]he plaintiff cannot be the only link
`between the defendant and the forum. Rather, it is the defendant’s
`conduct that must form the necessary connection with the forum
`State that is the basis for its jurisdiction over him.”). The
`Ninth Circuit analyzes specific jurisdiction according to a three-
`prong test:
`(1) The non-resident defendant must purposefully direct
`his activities or consummate some transaction with the
`forum or resident thereof; or perform some act by
`which he purposefully avails himself of the privilege
`of conducting activities in the forum, thereby
`invoking the benefits and protections of its laws;
`(2) the claim must be one which arises out of or relates
`to the defendant’s forum-related activities; and
`(3) the exercise of jurisdiction must comport with fair
`play and substantial justice, i.e. it must be
`reasonable.
`Schwarzenegger, 374 at 802. “If the plaintiff succeeds in
`satisfying both of the first two prongs, the burden then shifts to
`the defendant to ‘present a compelling case’ that the exercise of
`jurisdiction would not be reasonable.” Id. at 802 (citing Burger
`King Corp. v. Rudzewicz, 471 U.S. 452, 476-78 (1985)).
`a.
`First Prong: Purposeful Availment & Direction
`To satisfy the first prong of the specific jurisdiction
`inquiry, courts examine whether a defendant “either purposefully
`availed itself of the privilege of conducting activities in [the
`forum state], or purposefully directed its activities toward [the
`forum state].” Id. Different tests are applied depending on
`whether the case is based on contract or tort, with “availment”
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`generally used for contracts and “direction” generally used for
`torts. Id. “A showing that a defendant purposefully availed
`himself of the privilege of doing business in a forum state
`typically consists of evidence of the defendant’s actions in the
`forum, such as executing or performing a contract there. Id.
`“A showing that a defendant purposefully directed his conduct
`toward a forum state, by contrast, usually consists of evidence of
`the defendant’s actions outside the forum state that are directed
`at the forum, such as the distribution in the forum state of goods
`originating elsewhere”; this includes situations where activities
`are directed at residents of the forum even if there are no
`physical contacts with the forum. Id. at 803; see also World-Wide
`Volkswagen, 444 U.S. at 297-98 (“The forum State does not exceed
`its powers under the Due Process Clause if it asserts personal
`jurisdiction over a corporation that delivers its products into the
`stream of commerce with the expectation that they will be purchased
`by consumers in the forum State.”).
`This case is not one where Havas New York performed or
`executed a contract in California, or where it sought the benefits
`of the laws of California. Therefore, there are no grounds for a
`purposeful availment analysis, and the Court turns to purposeful
`direction.
`The Ninth Circuit evaluates purposeful direction using a
`three-part “effects test” taken from the Supreme Court’s decision
`in Calder v. Jones, 465 U.S. 783 (1984). See Schwarzenegger, 374
`F.3d at 803. “The effects test is satisfied if (1) the defendant
`committed an intentional act; (2) the act was expressly aimed at
`the forum state; and (3) the act caused harm that the defendant
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`knew was likely to be suffered in the forum state.” Love v.
`Associated Newspapers, Ltd., 611 F.3d 601, 609 (9th Cir. 2010)
`Here, Havas New York committed an intentional act in its
`creation of the advertising campaign. The parties dispute whether
`the act was “expressly aimed” at California. Defendants argue that
`“alleged knowledge that TD Ameritrade was going to place the
`Accused Ads nationwide is insufficient to establish that Havas New
`York expressly aimed activity towards California.” (Mot. Dismiss
`at 11.) Havas New York did not disseminate the advertisements, did
`not determine “whether and where to use the Accused Ads,” and the
`advertisements do not advertise Havas New York’s business. (Id. at
`11-12.) Defendants claim that for the Court to find jurisdiction
`despite these facts “would result in essentially national or
`worldwide jurisdiction over any creative agency that delivers its
`work to any company that operates in more than one state or
`internationally.” (Id. at 12.)
`In response, Plaintiff argues that Havas New York designed the
`allegedly infringing advertisement campaign “knowing and intending
`it to be run in California and specifically directed to California
`consumers.” (Opp’n at 7 (citing Wynne Decl. ¶ 8; Walters Decl. ¶¶
`22-24; Huerta Decl. ¶¶ 2-5).) The campaign was nationwide, but
`Plaintiffs argue that it also targeted California specifically
`because TD Ameritrade has 20% of its branch offices and many
`individual retail investors in California. (Id. at 9 & n.7 (citing
`Wynne Decl. ¶ 8; Walters Decl. ¶¶ 22-23).) The fact that Havas New
`York did not disseminate the advertisements is not controlling,
`Plaintiff argues, because this case is just like Calder v. Jones,
`465 U.S. 783 (1945).
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`In Calder, the Supreme Court held that a reporter and editor
`of a national publication — both citizens of Florida — were subject
`to suit in California because the object of their allegedly
`libelous article was in California; it did not matter that the
`reporter and editor did not circulate the publication because they
`intentionally aimed their actions at California. Id. at 789; see
`also Walden, 134 S. Ct. at 1123-24 & n.7 (discussing Calder). The
`defendants argued that they could not control their employer’s
`marketing and circulation activity, and that the fact that they
`could “foresee” the article’s circulation in California is not
`sufficient for jurisdiction. Calder, 465 U.S. at 789 (defendants
`also “liken[ed] themselves to a welder employed in Florida who
`works on a boiler which subsequently explodes in California” and
`argued that while jurisdiction over the manufacturer may be
`appropriate, it “should not be applied to the welder who has no
`control over and derives no direct benefit from his employer’s
`sales in that distant State”). The Supreme Court rejected these
`arguments, stating that the defendants were “not charged with mere
`untargeted negligence” but instead intentional tortious conduct
`expressly aimed at California:
`Petitioner South wrote and petitioner Calder edited an
`article that they knew would have a potentially devastating
`impact upon respondent. And they knew that the brunt of
`that inquiry would be felt by respondent in the State in
`which she lives and works and in which the National
`Enquirer has its largest circulation. Under the
`circumstances, petitioners must “reasonably anticipate
`being haled into court there” to answer for the truth of
`the statements made in their article.
`Id. at 789-90.
`The Court finds this case analogous to Calder. Havas New York
`knew it was using Lions Gate’s intellectual property — no party
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`disputes the iconic nature of Dirty Dancing or that Havas
`originally claimed as a defense that it was merely parodying
`Plaintiff’s film, indicating its knowledge of the original source —
`and Havas New York created an advertisement campaign that targeted
`Plaintiff’s intellectual property rights in the film. Havas New
`York also knew that the ad would be in one of the largest bases of
`population — and relevant consumer population — in the nation for a
`nationwide advertising campaign: California.
`The alleged harm was felt nationwide, consistent with the
`extent of the campaign, but the harm was also targeted toward
`California specifically as a major hub of the TD Defendants’
`business, the location of Plaintiff’s principal place of business,
`and the heart of the entertainment industry. See Rio Props., Inc.
`v. Rio Int’l Interlink, 284 F.3d 1007, 1020-21 (9th Cir. 2002)
`(where defendant targeted consumers in forum with different kinds
`of advertisements and “knowingly injured” the plaintiff in the
`forum, which was the plaintiff’s principal place of business and
`“the capital of the gambling industry”). Therefore, it does not