throbber
Case 2:15-cv-05024-DDP-E Document 87 Filed 03/14/16 Page 1 of 35 Page ID #:1865
`
`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.
`///
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`

`
`Case 2:15-cv-05024-DDP-E Document 87 Filed 03/14/16 Page 2 of 35 Page ID #:1866
`
`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
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`2
`
`

`
`Case 2:15-cv-05024-DDP-E Document 87 Filed 03/14/16 Page 3 of 35 Page ID #:1867
`
`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.)
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`3
`
`

`
`Case 2:15-cv-05024-DDP-E Document 87 Filed 03/14/16 Page 4 of 35 Page ID #:1868
`
`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.)
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`4
`
`

`
`Case 2:15-cv-05024-DDP-E Document 87 Filed 03/14/16 Page 5 of 35 Page ID #:1869
`
`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).
`///
`///
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`5
`
`

`
`Case 2:15-cv-05024-DDP-E Document 87 Filed 03/14/16 Page 6 of 35 Page ID #:1870
`
`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
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`6
`
`

`
`Case 2:15-cv-05024-DDP-E Document 87 Filed 03/14/16 Page 7 of 35 Page ID #:1871
`
`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;
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`7
`
`

`
`Case 2:15-cv-05024-DDP-E Document 87 Filed 03/14/16 Page 8 of 35 Page ID #:1872
`
`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
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`8
`
`

`
`Case 2:15-cv-05024-DDP-E Document 87 Filed 03/14/16 Page 9 of 35 Page ID #:1873
`
`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
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`9
`
`

`
`Case 2:15-cv-05024-DDP-E Document 87 Filed 03/14/16 Page 10 of 35 Page ID #:1874
`
`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.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`10
`
`

`
`Case 2:15-cv-05024-DDP-E Document 87 Filed 03/14/16 Page 11 of 35 Page ID #:1875
`
`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
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`11
`
`

`
`Case 2:15-cv-05024-DDP-E Document 87 Filed 03/14/16 Page 12 of 35 Page ID #:1876
`
`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
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`12
`
`

`
`Case 2:15-cv-05024-DDP-E Document 87 Filed 03/14/16 Page 13 of 35 Page ID #:1877
`
`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
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`13
`
`

`
`Case 2:15-cv-05024-DDP-E Document 87 Filed 03/14/16 Page 14 of 35 Page ID #:1878
`
`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”
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`14
`
`

`
`Case 2:15-cv-05024-DDP-E Document 87 Filed 03/14/16 Page 15 of 35 Page ID #:1879
`
`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
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`15
`
`

`
`Case 2:15-cv-05024-DDP-E Document 87 Filed 03/14/16 Page 16 of 35 Page ID #:1880
`
`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).
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`16
`
`

`
`Case 2:15-cv-05024-DDP-E Document 87 Filed 03/14/16 Page 17 of 35 Page ID #:1881
`
`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
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`17
`
`

`
`Case 2:15-cv-05024-DDP-E Document 87 Filed 03/14/16 Page 18 of 35 Page ID #:1882
`
`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

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket