Brothers and Sisters in Christ v. Zazzle, Inc.

United States Court of Appeals
For the Eighth Circuit
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No. 21-1917
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Brothers and Sisters in Christ, LLC
Plaintiff - Appellant
v.
Zazzle, Inc.
Defendant - Appellee
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Appeal from United States District Court
for the Eastern District of Missouri - St. Louis
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Submitted: February 16, 2022
Filed: August 2, 2022
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Before SMITH, Chief Judge, BENTON and KELLY, Circuit Judges.
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KELLY, Circuit Judge.
Brothers and Sisters in Christ, LLC (BASIC) alleges that Zazzle, Inc. sold a
t-shirt that infringed on BASIC’s federal trademark. The district court 1 granted
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The Honorable Nannette A. Baker, United States Magistrate Judge for the
Eastern District of Missouri. The parties consented to the jurisdiction of the
Magistrate Judge. See 28 U.S.C. § 636(c)(1).
Zazzle’s motion to dismiss for lack of personal jurisdiction, and having jurisdiction
under 28 U.S.C. § 1291, we affirm.
I.
BASIC is a limited liability company, based in Missouri, that sells clothing
and owns the trademark “love happens.” Zazzle is a California corporation that has
its principal place of business in California. BASIC alleges that in 2019 Zazzle sold
a shirt with a “love happens” logo to at least one Missouri resident and shipped the
shirt to that resident in Missouri. BASIC also alleges that Zazzle “uses a webpage,
available to those in Missouri and elsewhere, to advertise its goods, including the
trademark infringing goods, and to sell and carry out the transaction for trademark
infringing goods.” BASIC asserts five claims in its complaint: Federal Trademark
Infringement, Federal Unfair Competition, Unfair and Deceptive Trade Practices,
Common Law Trademark Infringement and Unfair Competition, and Dilution and
Injury to Business Reputation.
On April 16, 2020, Zazzle filed a motion to dismiss pursuant to Federal Rule
of Civil Procedure 12(b)(2), asserting that the facts alleged in the complaint, even if
assumed to be true, are not enough to establish that Zazzle is subject to personal
jurisdiction in Missouri. Zazzle also provided undisputed evidence that the single
identified purchase of a “love happens” t-shirt by a Missouri resident was made by
someone affiliated with BASIC. On April 12, 2021, the district court granted
Zazzle’s motion and dismissed the case for lack of personal jurisdiction.
II.
We review de novo a district court’s order dismissing a case for lack of
personal jurisdiction. Kaliannan v. Liang, 2 F.4th 727, 733 (8th Cir. 2021). BASIC
“bear[s] the burden of establishing a prima facie showing of jurisdiction, and we
view the facts in the light most favorable to [BASIC].” Id. (cleaned up) (quoting
Whaley v. Esebag, 946 F.3d 447, 451 (8th Cir. 2020)). A prima facie showing “is
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accomplished by pleading sufficient facts ‘to support a reasonable inference that the
defendant can be subjected to jurisdiction within the state.’” K-V Pharm. Co. v. J.
Uriach & CIA, S.A., 648 F.3d 588, 591–92 (8th Cir. 2011) (cleaned up) (quoting
Dever v. Hentzen Coatings, Inc., 380 F.3d 1070, 1072 (8th Cir. 2004)). “The
evidentiary showing required at the prima facie stage is minimal.” Willnerd v. First
Nat’l Neb., Inc., 558 F.3d 770, 778 (8th Cir. 2009) (quotation omitted). “Just like
the district court, we may look beyond the pleadings to determine whether personal
jurisdiction exists, including reviewing affidavits and other exhibits.” Pederson v.
Frost, 951 F.3d 977, 979 (8th Cir. 2020).
Where the applicable federal statute, here the Lanham Act, does not authorize
nationwide personal jurisdiction, see Advanced Tactical Ordnance Sys., LLC v. Real
Action Paintball, Inc., 751 F.3d 796, 800 (7th Cir. 2014), the existence of personal
jurisdiction depends on the long-arm statute of the forum state and the federal Due
Process Clause. Kaliannan, 2 F.4th at 733 (“Federal courts apply the long-arm
statute of the forum state to determine the existence of personal jurisdiction over the
parties.” (quoting Whaley, 946 F.3d at 451)); Fed. R. Civ. P. 4(k)(1)(A). Missouri’s
long-arm statute authorizes personal jurisdiction over defendants who engage in
certain acts, including “[t]he transaction of any business” within the state and “[t]he
commission of a tortious act” within the state. Mo. Rev. Stat. § 506.500. The district
court found that BASIC had sufficiently alleged that Zazzle engaged in both sorts of
acts, and we agree.
We thus turn to whether exercising jurisdiction over Zazzle comports with the
Due Process Clause. “Critical to due process analysis is that the defendant’s conduct
and connection with the forum state are such that he should reasonably anticipate
being haled into court there.” Kaliannan, 2 F.4th at 733 (cleaned up) (quoting Burger
King Corp. v. Rudzewicz, 471 U.S. 462, 474 (1985)). The relevant conduct and
connections for the due process analysis depend on whether personal jurisdiction is
alleged to be general or specific. See Ford Motor Co. v. Mont. Eighth Jud. Dist. Ct.,
141 S. Ct. 1017, 1024 (2021). General jurisdiction exists where a defendant is
“essentially at home” in the forum state, whereas specific jurisdiction “covers
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defendants less intimately connected with a State, but only as to a narrower class of
claims,” namely those that “‘arise out of or relate to the defendant’s contacts’ with
the forum.” Id. at 1024–25 (quoting Bristol-Myers Squibb Co. v. Super. Ct. of Cal.,
S.F. Cnty., 137 S. Ct. 1773, 1780 (2017)). Here, BASIC alleges only that Zazzle is
subject to specific jurisdiction in Missouri, and thus “we must decide whether
[Zazzle] has certain minimum contacts with the forum state and whether [BASIC’s]
claims ‘arise out of or relate to [Zazzle’s] contacts.’” Kaliannan, 2 F.4th at 733
(quoting Ford Motor, 141 S. Ct. at 1025). Our inquiry must consider Zazzle’s
“contacts with [Missouri] itself, not [Zazzle’s] contacts with persons who reside
there.” Walden v. Fiore, 571 U.S. 277, 285 (2014).
In determining whether specific jurisdiction exists, we consider the totality of
the circumstances, Kaliannan, 2 F.4th at 733, using five factors to guide our analysis:
“(1) the nature and quality of [defendant’s] contacts with the forum state; (2) the
quantity of such contacts; (3) the relation of the cause of action to the contacts; (4)
the interest of the forum state in providing a forum for its residents; and (5)
convenience of the parties.” Whaley, 946 F.3d at 452 (quotation omitted). The first
three factors are of “primary importance” and the “fourth and fifth factors carry less
weight.” Id. (quotation omitted).
A.
We begin by identifying the contacts Zazzle has with Missouri. BASIC
alleges that Zazzle sold an infringing t-shirt to a Missouri consumer and that Zazzle
“uses a webpage, available to those in Missouri and elsewhere, to advertise its goods,
including the trademark infringing goods, and to sell and carry out the transaction
for trademark infringing goods.” Zazzle concedes that its website “sells and ships
lots of goods” into the state. BASIC argues that these activities, taken together, are
enough to confer jurisdiction. In other words, BASIC asks us to consider all of
Zazzle’s contacts with Missouri, even those unrelated to the instant trademark-
infringement claim.
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However, in assessing specific jurisdiction, we look only to Zazzle’s contacts
with Missouri related to BASIC’s claims. See Advanced Tactical, 751 F.3d at 801–
02 (“Specific jurisdiction must rest on the litigation-specific conduct of the
defendant in the proposed forum state” (emphasis in original)). For there to be
specific jurisdiction, “there must be ‘an affiliation between the forum and the
underlying controversy,’” and where that connection is absent, “specific jurisdiction
is lacking regardless of the extent of a defendant’s unconnected activities in the
State.” Bristol-Myers, 137 S. Ct. at 1780–81 (quoting Goodyear Dunlop Tires
Operations, S.A. v. Brown, 564 U.S. 915, 919 (2011)).2 In other words, “even
regularly occurring sales of a product in a State do not justify the exercise of
jurisdiction over a claim unrelated to those sales.” Goodyear, 564 U.S. at 931, n.6.
Aside from the single t-shirt sale, BASIC fails to allege a connection between
Zazzle’s other contacts with Missouri and the underlying suit. BASIC does not
allege that Zazzle’s other activities in Missouri involved trademark infringement or
that Zazzle sold additional trademark-infringing goods into the state. In fact, in its
briefing, BASIC specifically asserts that Zazzle’s actions of “selling and sending the
trademark infringing shirt into Missouri . . . form the basis of BASIC’s trademark
infringement lawsuit.” 3
2
Although Bristol-Myers involved state court jurisdiction under the
Fourteenth Amendment and did not resolve whether the Fifth Amendment imposes
the same restrictions on the exercise of personal jurisdiction by a federal court, see
137 S. Ct. at 1783–84, neither party offers any reason why Bristol-Myers is
inapplicable here.
3
We have suggested that the operation of an interactive website could factor
into the specific jurisdiction analysis. See Lakin v. Prudential Sec., Inc., 348 F.3d
704, 710–11 (8th Cir. 2003); Johnson v. Arden, 614 F.3d 785, 797 (8th Cir. 2010)
(“[W]hether specific personal jurisdiction could be conferred on the basis of an
interactive website depends not just on the nature of the website but also on evidence
that individuals in the forum state accessed the website in doing business with the
defendant.”). Although BASIC alleges that Zazzle uses a website to sell its goods,
BASIC does not dispute that its affiliate purchased the allegedly infringing t-shirt,
and it does not allege that other Missouri consumers viewed or purchased any other
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What this leaves us with, then, is a single suit-related contact with Missouri.
The Supreme Court “has strongly suggested that a single sale of a product in a State
does not constitute an adequate basis for asserting jurisdiction over an out-of-state
defendant.” J. McIntyre Mach., Ltd. v. Nicastro, 564 U.S. 873, 888 (2011) (Breyer,
J., concurring) (citing Asahi Metal Indus. Co. v. Super. Ct. of Cal., Solano Cnty.,
480 U.S. 102, 111, 112 (1987) (plurality opinion); id. at 117 (Brennan, J., concurring
in part and concurring in judgment); id. at 122 (Stevens, J., concurring in part and
concurring in judgment)).
Moreover, the Supreme Court has emphasized that, for specific jurisdiction to
exist, the defendant “must take some act by which it purposefully avails itself of the
privilege of conducting activities within the forum State,” Ford Motor, 141 S. Ct. at
1024–25 (cleaned up and quotation omitted), such as directing its activities at the
forum or targeting forum residents, see Myers v. Casino Queen, Inc., 689 F.3d 904,
913 (8th Cir. 2012) (“[Defendant] purposely directed its activities at Missouri and
actively solicited and targeted Missouri residents like [plaintiff], seeking to have
them patronize [defendant’s] facility.”). BASIC has not alleged that Zazzle took
such purposeful, targeted action towards Missouri or Missouri consumers. All
BASIC alleges is that a Missouri consumer accessed Zazzle’s nationally available
website and purchased a shirt. BASIC has thus failed to “show that [Zazzle]
deliberately ‘reached out beyond’ its home,” Ford Motor, 141 S. Ct. at 1025 (quoting
Walden, 571 U.S. at 285), or that the single alleged contact was anything more than
“random, isolated, or fortuitous,” id. (quoting Keeton v. Hustler Mag., Inc., 465 U.S.
770, 774 (1984)); see also Walden, 571 U.S. at 291 (“[T]he mere fact that
[defendant’s] conduct affected plaintiffs with connections to the forum State does
not suffice to authorize jurisdiction”).
infringing goods. Thus, like the plaintiff in Johnson, BASIC has failed to meet its
burden of showing that Zazzle’s operation of an interactive website is sufficient to
create specific jurisdiction.
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Given the bare-bones nature of BASIC’s allegations, the first three factors of
our test—the nature and quality of Zazzle’s contacts with Missouri, the quantity of
such contacts, and the relation of BASIC’s claims to those contacts—weigh against
finding personal jurisdiction. The remaining two factors—Missouri’s interest in
providing a forum for its residents and the parties’ convenience—do not tip the
balance in BASIC’s favor. Although Missouri has an interest in this litigation
because the allegedly injured plaintiff is a Missouri company, the convenience of
the parties is neutral, as Zazzle would be inconvenienced by litigation in Missouri
and BASIC would likely be inconvenienced in an alternate forum.
B.
BASIC also argues that Missouri properly has personal jurisdiction over
Zazzle under the “effects test” set forth in Calder v. Jones, 465 U.S. 783 (1984).
This test “allows the assertion of personal jurisdiction over non-resident defendants
whose acts are performed for the very purpose of having their consequences felt in
the forum state.” Johnson v. Arden, 614 F.3d 785, 796 (8th Cir. 2010) (quoting
Dakota Indus., Inc. v. Dakota Sportswear, Inc., 946 F.2d 1384, 1390–91 (8th Cir.
1991)). More specifically, the “effects test” provides that
a defendant’s tortious acts can serve as a source of personal jurisdiction
only where the plaintiff makes a prima facie showing that the
defendant’s acts (1) were intentional, (2) were uniquely or expressly
aimed at the forum state, and (3) caused harm, the brunt of which was
suffered—and which the defendant knew was likely to be suffered—
[in the forum state].
Id. (quoting Lindgren v. GDT, LLC, 312 F. Supp. 2d 1125, 1132 (S.D. Iowa 2004)).
We “use[] the Calder test merely as an additional factor to consider when evaluating
a defendant’s relevant contacts with the forum state,” and we construe the test
narrowly, meaning that “absent additional contacts, mere effects in the forum state
are insufficient to confer personal jurisdiction.” Id. at 796–97.
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We agree with the district court that the Calder test does not alter the
assessment of Zazzle’s contacts with Missouri. Assuming Zazzle’s actions caused
harm to BASIC in Missouri that Zazzle could have anticipated, “mere injury to a
forum resident is not a sufficient connection to the forum.” Walden, 571 U.S. at
290. “The proper question is not where the plaintiff experienced a particular injury
or effect but whether the defendant’s conduct connects him to the forum in a
meaningful way.” Id. BASIC has not pleaded facts suggesting that Zazzle “uniquely
or expressly” aimed its allegedly tortious act—the offering for sale and selling of
infringing goods—at Missouri. Zazzle’s website is nationally accessible, and
nowhere does BASIC allege that Zazzle specifically targeted Missouri consumers or
the Missouri market. See Johnson, 614 F.3d at 798 (explaining that website was not
“uniquely or expressly aimed at Missouri,” and so “Calder provides no support for
[plaintiffs’] Lanham Act claim”); Walden, 571 U.S. at 287–88 (emphasizing that
Calder involved a libel claim, where “the reputational injury caused by the
defendants’ story would not have occurred but for the fact that the defendants wrote
an article for publication in California that was read by a large number of California
citizens”).
III.
In sum, we conclude that BASIC has failed to allege that Zazzle could
reasonably anticipate being haled into court in Missouri, and we thus affirm the
district court’s dismissal of BASIC’s claims.
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