United States District Court, M.D. Pennsylvania
H. RAMBO UNITED STATES DISTRICT JUDGE.
the court is the motion to dismiss for lack of personal
jurisdiction and improper venue, or, alternatively, to
transfer based on 28 U.S.C. § 1404(a) (Doc. 9), filed by
Defendant Universal Sewing Supply, Inc.
(“Defendant” or “Universal”). Having
considered the motion, Plaintiff's response (Doc. 11),
and Defendant's reply (Doc. 13), the court will deny the
motion without prejudice, granting Plaintiff leave to conduct
limited jurisdictional discovery.
a copyright infringement dispute. For the purposes of this
memorandum, the court shall construe all facts in favor of
Plaintiff and view the documentary evidence and
declaration submitted in the light most favorable to
Karen Kay Buckley (“Plaintiff”) is a quilt
designer who designed multiple different types of quilting
scissors. In December of 2016, Plaintiff began negotiating,
by email and phone, a distributor deal with Universal,
whereby it would purchase and re-sell Plaintiff's
scissors under certain limitations, including a restriction
on selling scissors through websites such as Amazon. On March
30, 2017, Defendant issued a purchase order requesting 7, 920
pairs of scissors for a price of $64, 407.60. In response,
Plaintiff accepted the purchase order and shipped the
requested products from Pennsylvania to Missouri on April 11,
2017. On August 24, 2017, Universal issued an additional
purchase order that Plaintiff again filled by shipping the
scissors from Pennsylvania. Universal paid for these
purchases by mailing checks to Plaintiff at her Pennsylvania
point in 2017, Plaintiff began receiving complaints from
other distributors of a competitor selling her scissors on
Amazon for cheaper prices. Plaintiff came to believe
Universal was the party doing so. Thus, in response to
Defendant's next purchase order, Plaintiff informed
Defendant she would no longer sell to them due to their
breaching of the agreement by selling through Amazon.
Defendant never responded.
to the complaint, Defendant then began selling a set of
copycat scissors with virtually identical packaging and
design, encroaching on Plaintiff's intellectual property
rights. On May 9, 2019, Plaintiff thus brought suit against
Defendant for copyright infringement and Lanham Act
violations, alleging trade dress infringement and unfair
competition. (See generally, Doc. 1.)
9, 2019, Defendant moved to dismiss the case for lack of
personal jurisdiction and improper venue; or, alternatively,
to transfer the case to the Eastern District of Missouri.
(See generally, Docs. 9-10.) On July 23, 2019,
Plaintiff filed a response. (Docs. 11-12.) And on August 5,
2019, Defendant filed a reply with eight new exhibits. (Doc.
13.) This motion is thus ripe for review.
Standard of review
reviewing a 12(b)(2) motion to dismiss for lack of
jurisdiction, the court must take as true the facts alleged
by the plaintiff. Metcalfe v. Renaissance Marine,
Inc., 566 F.3d 324, 330 (3d Cir. 2009) (citing
O'Connor v. Sandy Lane Hotel Co., 496 F.3d 312,
316 (3d Cir. 2007)). At that point, “the plaintiffs
need only establish a prima facie case of personal
jurisdiction.” Id. (internal quotations and
brackets omitted). “The plaintiff meets this burden and
presents a prima facie case for the exercise of personal
jurisdiction by establishing with reasonable particularity
sufficient contacts between the defendant and the forum
state.” Mellon Bank (East) PSFS, Nat. Ass'n v.
Farino, 960 F.2d 1217, 1223 (3d Cir. 1992).
a defendant provides affidavits to support a Rule 12(b)(2)
motion, the plaintiff may not simply rest on the allegations
of the complaint.” 4A Charles Alan Wright & Arthur
R. Miller, Procedural Aspects of Personal
Jurisdiction, Fed. Prac. & Proc. § 1067.6 (4th
ed. 2019) (“Wright & Miller”). Instead, the
plaintiff must carry its burden by presenting admissible
evidence. Estate of Thompson v. Phillips, 741
Fed.Appx. 94, 96 (3d Cir. 2018). The court may evaluate the
motion on the papers and documentary evidence alone, in which
case the plaintiff “need only establish a prima facie
case of personal jurisdiction and they are entitled to have .
. . all factual disputes drawn in their favor.”
Id. (internal quotations and brackets omitted);
Metcalfe, 566 F.3d at 331 (reversing district court
for failing to construe disputed facts in the plaintiff's
favor). The plaintiff carries this “prima facie”
burden if its evidence makes its personal jurisdiction theory
“seem to be true on first examination, even though it
may later be proved to be untrue.” Black's Law
Dictionary 1441 (11th ed. 2019). But the plaintiff ultimately
bears the burden of proving “by a preponderance of the
evidence, facts sufficient to establish personal
jurisdiction.” Carteret Sav. Bank, FA v.
Shushan, 954 F.2d 141, 146 (3d Cir. 1992). Thus,
“[i]f the existence of jurisdiction turns on disputed
factual questions the court may resolve the challenge on the
basis of a separate evidentiary hearing, or may defer ruling
pending receipt at trial of evidence relevant to the
jurisdictional question.” Combs v. Bakker, 886
F.2d 673, 676 (4th Cir. 1989); accord Metcalfe, 566
F.3d at 336 (explaining the personal jurisdiction process
similarly). The choice of how the court resolves a factual
dispute is ultimately a “discretionary” one.
Wright & Miller, supra, at § 1067.6.
in the Third Circuit “ordinarily allow” limited
jurisdictional discovery, as long as the plaintiff's
personal jurisdiction claim “is not clearly
frivolous.” Metcalfe, 566 F.3d at 336;
accord Shuker v. Smith & Nephew, PLC, 885 F.3d
760, 781 n.20 (3d Cir. 2018) (jurisdictional discovery must
be limited). “Furthermore, we have found jurisdictional
discovery particularly appropriate where the defendant is a
corporation.” Metcalfe, 566 F.3d at 336.
Having laid out the process for evaluating a motion to
dismiss under Rule 12(b)(2), the court now turns to the
substance of personal jurisdiction.
District Court typically exercises personal jurisdiction
according to the law of the state where it sits, in this case
Pennsylvania.” Cruickshank-Wallace v. CNA Fin.
Corp., 769 Fed.Appx. 77, 79 (3d Cir. 2019) (citing
Fed.R.Civ.P. 4(k)(1)(A)). Pennsylvania's long-arm statute
establishes a scope of personal jurisdiction coextensive with
constitutional boundaries. See Id. at 79 (citing 42
Pa. Cons. Stat. Ann. § 5322(b)). The court will thus
confine its analysis to the constitutional requirements. The
due process clause of the United States Constitution permits
the exercise of two types of personal jurisdiction: specific
and general. O'Connor v. Sandy Lane Hotel Co.,
496 F.3d 312, 317 (3d Cir. 2007). “For a corporation,
general jurisdiction is the state(s) where the
corporation's ‘affiliations with the State are so
continuous and systematic as to render it essentially at home
in the forum State.'” Gress v. Freedom Mortg.
Corp., 386 F.Supp.3d 455, 463 (M.D. Pa. 2019) (quoting
Daimler AG v. Bauman, 571 U.S. 117, 139 (2014))
(internal brackets omitted). “[A] court with general
jurisdiction may hear any claim against that
defendant.” Bristol-Myers Squibb Co. v. Superior
Ct. of Ca., S.F. Cty., 137 S.Ct. 1773, 1780 (2017)
(emphasis in original).
Third Circuit has laid out a three-part test for determining
whether the court has specific jurisdiction: “First,
the defendant must have purposefully directed its activities
at the forum. Second, the litigation must arise out of or
relate to at least one of those activities. And third, if the
prior two requirements are met, a court may consider whether
the exercise of jurisdiction otherwise comports with fair
play and substantial justice.” O'Connor,
496 F.3d at 317 (internal citations, quotations, and brackets
omitted). While a majority opinion of the United States
Supreme Court has never resolved whether the
stream-of-commerce theory of personal jurisdiction is valid,
the Third Circuit has rejected it. See Shuker, 885
F.3d at 780 (citing J. McIntyre Mach., Ltd. v.
Nicastro, 564 U.S. 873, 877-85 (2011); Asahi Metal
Indus. Co. v. Superior Ct., 480 U.S. 102, 108-13
(1987)). Thus, in the Third Circuit, a vendor indirectly
“inject[ing] its goods into the forum state” or
engaging in “efforts to exploit a national market that
necessarily include Pennsylvania are insufficient” to
satisfy personal jurisdiction. Id. (internal
quotations omitted). Instead, “what is necessary is a
deliberate targeting of the forum, ” such as an effort
“to sell products . . . in Pennsylvania
specifically.” Id. (internal quotations
omitted). Physical entry into the forum, ...