AMB Media, LLC v. OneMB, LLC

CourtCourt of Appeals for the Sixth Circuit
DecidedMay 8, 2024
Docket23-5607
StatusUnpublished

This text of AMB Media, LLC v. OneMB, LLC (AMB Media, LLC v. OneMB, LLC) is published on Counsel Stack Legal Research, covering Court of Appeals for the Sixth Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
AMB Media, LLC v. OneMB, LLC, (6th Cir. 2024).

Opinion

NOT RECOMMENDED FOR PUBLICATION File Name: 24a0206n.06

No. 23-5607

UNITED STATES COURT OF APPEALS FOR THE SIXTH CIRCUIT FILED May 08, 2024 AMB MEDIA, LLC, ) KELLY L. STEPHENS, Clerk ) Plaintiff-Appellant, ) ) ON APPEAL FROM THE UNITED v. ) STATES DISTRICT COURT FOR ) THE EASTERN DISTRICT OF ONEMB, LLC; RED MOUNTAIN ) TENNESSEE MEDIA GROUP, LLC; JOHN DOES 1– ) 10, ) OPINION Defendants-Appellees. )

Before: BATCHELDER, STRANCH, and DAVIS, Circuit Judges.

STRANCH, J., delivered the opinion of the court in which DAVIS, J., joined. BATCHELDER, J. (pp. 14–20), delivered a separate dissenting opinion.

JANE B. STRANCH, Circuit Judge. This appeal involves the jurisdiction of

Tennessee’s courts to hear trademark litigation brought against out-of-state Defendants. Plaintiff

AMB Media is a Tennessee-based limited liability corporation (LLC) in the business of digitizing

physical media. It accuses Defendants—several Arizona LLCs and anonymous individuals in the

same business—of infringing on its trademarks. Before reaching the merits of AMB’s trademark

claims, however, the district court dismissed the case for lack of jurisdiction. It held that

Defendants had not purposefully availed themselves of Tennessee as a forum and were not subject

to suit there. But Defendants hold themselves out publicly as welcoming Tennessee sales and

conduct a regular course of business in the state. Because that constitutes purposeful availment, No. 23-5607, AMB Media, LLC v. OneMB, LLC, et al.

and because other jurisdictional prerequisites are adequately satisfied at this stage of the litigation,

we REVERSE the district court’s decision and REMAND for further proceedings.

I. BACKGROUND

A. Factual Background

Since 2014, AMB Media—a Tennessee LLC—has provided a service called

“LEGACYBOX” for customers to digitally preserve their home movies, photos, and other media.

It involves a multi-step process: First, AMB sends to a customer a LEGACYBOX kit containing

a prepaid shipping label, a box to fill with physical media, and barcodes to track sent items. Then,

the customer fills the box and returns it to AMB, which digitizes the media. AMB then ships the

box, now containing the physical media and a digital copy of some kind, back to the customer.

AMB owns federal trademarks on the terms “Legacybox” and “LEGACYBOX” in connection

with its offered goods and services.

Defendants are Arizona-based LLCs that offer a similar service. Like AMB’s service,

customers use Defendants’ products by sending in physical media for Defendants to digitize and

return. Defendants sell their products through a website, which contains reviews from Tennessee

customers. Between January 2020 and October 2022, Defendant OneMB—an LLC doing business

as “digmypics MemoryBox”—acquired fifty-nine customers in Tennessee, and grossed $16,862

in revenue from those customers. That represents less than one percent of OneMB’s business over

that timeframe.

B. Procedural History

In November 2020, OneMB filed a trademark application for the use of the phrase

“DIGMYPICS MEMORYBOX” in connection with Defendants’ digitizing services. AMB has

opposed the application before the United States Patent and Trademark Office. It alleges that

-2- No. 23-5607, AMB Media, LLC v. OneMB, LLC, et al.

Defendants’ proposed “MEMORYBOX” trademark infringes upon AMB’s “LEGACYBOX”

mark due to the marks’ similarity, the analogous services offered by both companies, and the

customer confusion that is likely to result.

In August 2022, AMB filed this case in the Eastern District of Tennessee.1 AMB’s active

complaint alleges that Defendants’ conduct violates the Lanham Act, common law trademark and

unfair competition law, and the Tennessee Consumer Protection Act. In December 2022,

Defendants moved to dismiss on several grounds, including—as relevant here—purported lack of

personal jurisdiction under Federal Rule of Civil Procedure 12(b)(2). In June 2023, the district

court granted Defendants’ Rule 12(b)(2) motion, finding that because Defendants had not

purposefully availed themselves of Tennessee as a forum, they were not subject to suit in the state.

AMB timely appealed.

II. STANDARD OF REVIEW

We review dismissals for lack of personal jurisdiction de novo. Parker v. Winwood, 938

F.3d 833, 839 (6th Cir. 2019). Plaintiffs bear the burden of establishing jurisdiction. MAG IAS

Holdings, Inc. v. Schmückle, 854 F.3d 894, 899 (6th Cir. 2017). But “where, as here, the district

court rules without conducting an evidentiary hearing,” the jurisdictional “burden is ‘relatively

slight’”—the plaintiff need only make a “prima facie showing that personal jurisdiction exists.”

Id. (quoting Air Prods. & Controls, Inc. v. Safetech Int’l, Inc., 503 F.3d 544, 549 (6th Cir. 2007)).

In that context, “we consider pleadings and affidavits ‘in a light most favorable to the plaintiff[]’

and do not weigh ‘the controverting assertions of the party seeking dismissal.’” Id. (quoting

Theunissen v. Matthews, 935 F.2d 1454, 1459 (6th Cir. 1991)).

1 The Patent Office has suspended its proceedings during the pendency of this litigation.

-3- No. 23-5607, AMB Media, LLC v. OneMB, LLC, et al.

III. ANALYSIS

A court may exercise its power only over defendants subject to personal jurisdiction in the

court’s state. Typically, assessing personal jurisdiction is a two-step process: A defendant must

be both “amenable to service of process under the forum state’s long-arm statute” and “the exercise

of personal jurisdiction [must] not deny the defendant due process.” Bridgeport Music, Inc. v. Still

N the Water Publ’g, 327 F.3d 472, 477 (6th Cir. 2003) (quoting Bird v. Parsons, 289 F.3d 865,

871 (6th Cir. 2002)) (brackets omitted). Because Tennessee’s long-arm statute extends to the

fullest extent permitted by the United States Constitution, however, we need “address only whether

exercising personal jurisdiction over Appellees is consistent with federal due process

requirements.” Id.; see Tenn. Code Ann. § 20-2-255; Gordon v. Greenview Hosp., Inc., 300

S.W.3d 635, 646 (Tenn. 2009). And though there are two forms of personal jurisdiction—general

and specific, see Ford Motor Co. v. Mont. Eighth Jud. Dist. Ct., 592 U.S. 351, 358 (2021)—our

task here is additionally narrowed by the parties’ agreement that Defendants are not subject to

general jurisdiction in Tennessee.

That leaves specific jurisdiction. For a court to exercise specific jurisdiction, a defendant

must have had “such ‘contacts’ with the forum State that ‘the maintenance of the suit’ is

‘reasonable, in the context of our federal system of government,’ and ‘does not offend traditional

notions of fair play and substantial justice.’” Id.

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AMB Media, LLC v. OneMB, LLC, Counsel Stack Legal Research, https://law.counselstack.com/opinion/amb-media-llc-v-onemb-llc-ca6-2024.