FitTrack, Inc. v. Hyperzoo Technology Ltd.

• Court: District Court, S.D. California
• Decided: March 29, 2023
• Docket: 3:23-cv-00536
• Status: Unknown

Opinion

1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 FITTRACK INC., a Canadian Case No.: 23-CV-536 TWR (NLS) Corporation, 12 ORDER: Plaintiff, 13 (1) GRANTING IN PART AND v. DENYING IN PART PLAINTIFF’S 14 EX PARTE MOTION FOR HYPERZOO TECHNOLOGY LTD., a 15 TEMPORARY RESTRAINING UK entity; SHENZHEN DINGKA ORDER, ASSET RESTRAINING 16 TECHNOLOGY, LTD., a Chinese entity; ORDER, EXPEDITED DISCOVERY KENNETH and TERESA BRANCH, 17 ORDER, AND SERVICE OF individuals residing in Virginia; PROCESS BY EMAIL AND 18 GOLDEN TULIP, LLC, a Wyoming PUBLICATION; limited liability company; and DOES 19 1–25, (2) SETTING HEARING AND 20 Defendants. BRIEFING SCHEDULE ON 21 MOTION FOR PRELIMINARY INJUNCTION; 22

23 (3) ORDERING PLAINTIFF TO SHOW CAUSE WHY VENUE IS 24 PROPER 25 (ECF No. 6) 26

27 Presently before the Court is Plaintiff’s Ex Parte Motion for Entry of (1) Temporary 28 Restraining Order, (2) Asset Restraining Order, (3) Expedited Discovery Order, and (4) 1 Service of Process by Email and Publication. (ECF No. 6, “Mot.) For the reasons set forth 2 below, the Court DENIES Plaintiff’s Motion for a Temporary Restraining Order and Asset 3 Restraining Order, DENIES the Motion for an Expedited Discovery Order, and GRANTS 4 IN PART and DENIES IN PART WITHOUT PREJUDICE Plaintiff’s Motion for 5 Service of Process by Email and Publication. 6 BACKGROUND 7 Plaintiff FitTrack, Inc. initiated this action on March 27, 2023, (see ECF No. 1, 8 “Compl.”), and filed the instant Motion the next day, (see Mot.). Plaintiff is a Canadian 9 corporation that “manufactures, markets, and sells a high-end scale called the FitTrack 10 Dara Smart DMI Digital Scale (the ‘Dara’).” (Compl. at 1, 4.) Plaintiff registered the 11 “FitTrack” trademark with the United States Patent and Trademark Office on December 12 10, 2019. (See id. at 4, 5.) Since then, Plaintiff has used its “FitTrack” trademark to market 13 the Dara scale, spending over $14,550,000 on advertising and selling over 1.7 million units. 14 (Id. at 5.) 15 Plaintiff only sells the Dara scale through its website and Amazon webstore and does 16 not sell the product to any third-party distributors or re-sellers. (Id.) In conjunction with 17 the Dara scale, Plaintiff developed a mobile application that uses Bluetooth technology to 18 connect to the scale and provide users with body composition metrics. (See id. at 4.) “The 19 [Plaintiff’s] software will not allow the application to connect with a scale bearing an 20 unrecognizable serial number.” (Id.) This means users who purchase counterfeit Dara 21 scales are unable to access Plaintiff’s mobile application service. (Id.) 22 Defendants each own and operate different Amazon webstores. (Id. at 1–2.) 23 Through these webstores, Defendants allegedly target and sell products to consumers in 24 the United States, including the State of California and the Southern District of California. 25 (Id. at 2.) On information and belief, Plaintiff claims: (1) Defendant Hyperzoo Technology 26 Ltd. is an entity organized under the laws of the United Kingdom, (id. at 1); (2) Defendant 27 ShenZhen DingKa Technology Co., Ltd. is an entity organized under the laws of China, 28 (id. at 2); (3) Defendants Kenneth and Teresa Branch are individuals residing in Virginia, 1 (id.); and (4) Defendant Golden Tulip LLC is a Wyoming limited liability company, (id.). 2 Plaintiff’s Complaint also includes twenty-five Doe Defendants who operate Amazon 3 webstores and other e-commerce platforms. (Id.) 4 Plaintiff alleges these Defendants are an “interrelated group of counterfeiters 5 working in active concert to knowingly and willfully manufacture, import, distribute, offer 6 for sale, and sell counterfeit products that infringe on Plaintiff’s intellectual property 7 rights.” (Id. at 3.) Plaintiff claims that Defendants traffic in counterfeits of Plaintiff’s Dara 8 scale and unfairly use Plaintiff’s “FitTrack” trademark in connection with the marketing, 9 promotion, and sale of these counterfeit products. (Id. at 2.) 10 According to Plaintiff, Defendants’ actions have injured consumer perceptions of 11 Plaintiff’s brand quality and reputation, “causing the brand to suffer damage to its goodwill 12 and lost sales.” (Id. at 9.) Plaintiff claims “Amazon customers do not realize they have 13 purchased a counterfeit scale which cannot connect to Plaintiff’s mobile application. As a 14 result, Amazon customers attribute the issue towards the FitTrack brand as opposed to the 15 sellers offering counterfeit products.” (Id.) “In addition to selling counterfeit products,” 16 Plaintiff argues, Defendants “do not comply with Plaintiff’s customer service requirements 17 or quality controls.” (Id. at 11.) Plaintiff claims Defendants’ actions not only cause 18 “significant monetary harm” but also “irreparable harm to [Plaintiff’s] reputation, 19 goodwill, business and customer relationships, intellectual property rights, and brand 20 integrity.” (Id. at 12.) 21 As a result, Plaintiff brings six causes of action: (1) trademark infringement under 22 15 U.S.C. §§ 1114 and 1125(a); (2) trademark dilution under 15 U.S.C. § 1125(c); (3) 23 unfair competition and false advertising under 15 U.S.C. § 1125(a); (4) unfair competition 24 and false advertising under California Business and Professions Code §§ 17200 and 17500, 25 et. seq.; (5) contributory trademark infringement under federal law and California common 26 law; and (6) vicarious trademark infringement under federal law and California common 27 law. (See generally id.) Plaintiff has also filed the instant Ex Parte Motion. (See Mot.) 28 / / / 1 PLAINTIFF’S MOTION 2 Plaintiff’s Ex Parte Motions seeks (1) a temporary restraining order, (2) asset 3 restraining order, (3) expedited discovery, and (4) leave to effect service by email and 4 publication. (See generally Mot.) The Court addresses each issue in turn. 5 I. Temporary Restraining Order and Asset Restraining Order 6 First, Plaintiff seeks a temporary restraining order and an order preventing the 7 fraudulent transfer of assets. (See Mot. at 4–8.) Specifically, “Plaintiff requests an order 8 requiring the Defendants to immediately cease all infringement of Plaintiff’s trademark, 9 including on or in connection with the sale of counterfeit/infringing products on or in 10 connection with all of Defendants’ websites, webstores, or listings.” (Id. at 7.) To obtain 11 a temporary restraining order, plaintiffs “must establish that (1) they are likely to succeed 12 on the merits; (2) they are likely to suffer irreparable harm in the absence of preliminary 13 relief; (3) the balance of equities tips in their favor; and (4) a preliminary injunction is in 14 the public interest.” Sierra Forest Legacy v. Rey, 577 F.3d 1015, 1021 (9th Cir. 2009); see 15 also Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 20 (2008) (first citing Munaf v. 16 Geren, 553 U.S. 674, 689–90 (2008); and then citing Amoco Production Co. v. Gambell, 17 480 U.S. 531, 542 (1987); Weinberger v. Romero–Barcelo, 456 U.S. 305, 311–12 (1982)). 18 Additionally, “[t]he court may issue a temporary restraining order without written 19 or oral notice to the adverse party or its attorneys,”—meaning, ex parte—“only if . . . the 20 movant’s attorney certifies in writing any efforts made to give notice and the reasons why 21 it should not be required.” Fed. R. Civ. P. 65(b)(1)(B). “The stringent restrictions imposed 22 . . . by Rule 65 on the availability of ex parte temporary restraining orders reflect the fact 23 that our entire jurisprudence runs counter to the notion of court action taken before 24 reasonable notice and an opportunity to be heard has been granted [to] both sides of a 25 dispute.” Granny Goose Foods, Inc. v. Brotherhood of Teamsters & Auto Truck Drivers 26 Local No. 70 of Alameda Cnty., 415 U.S. 423, 438–39 (1974) (footnote omitted). 27 Consistent with the Supreme Court’s concern, the Ninth Circuit has recognized 28 “very few circumstances” which justify the issuance of a temporary restraining order ex 1 parte. Reno Air Racing Ass’n v. McCord, 452 F.3d 1226, 1131 (9th Cir. 2006). To justify 2 an ex parte order, the movant must demonstrate that notice to the adverse party (1) would 3 be impossible “because the identity of the adverse party is unknown or because a known 4 party cannot be located in time for a hearing” or (2) would “render fruitless further 5 prosecution of the action” because the adverse party would likely destroy evidence. Id. 6 (citation omitted); see also Rovio Ent. Ltd. v. Royal Plush Toys, Inc., 907 F. Supp. 2d 1086, 7 1094 (N.D. Cal. 2012). In trademark infringement actions with identifiable defendants, an 8 ex parte order is only justified if the plaintiff demonstrates “that defendants would have 9 disregarded a direct court order and disposed of the [infringing] goods within the time it 10 would take for a hearing” and supports “such assertions by showing that the adverse party 11 has a history of disposing of evidence or violating court orders or that persons similar to 12 the adverse party have such a history.” Id. (first citing First Tech. Safety Sys., Inc. v. 13 Depinet, 11 F.3d 641, 650 (6th Cir. 1993); and then citing In re Vuitton et Fils S.A., 606 14 F.2d 1, 4–5 (2d Cir. 1979)); see also Rovio, 907 F. Supp. 2d at 1094. 15 In accordance with Federal Rule of Civil Procedure 65(b), this District’s Civil Local 16 Rules require all ex parte motions to be accompanied by an “affidavit or declaration” 17 certifying that notice has been provided to the opposing party or explaining why such 18 notice could not or should not be provided. S.D. Cal. Civ. L.R. 83.3(g)(2). Here, Plaintiff 19 has not submitted an affidavit or declaration that “certifie[s] in writing any efforts made to 20 give notice” and “reasons why [notice] should not be required.” Fed. R. Civ. P. 21 65(b)(1)(B). 22 Furthermore, the Motion itself does not describe any attempts to provide notice or 23 any reasons why notice would render this action fruitless. (See generally Mot.) The closest 24 the Motion comes to addressing these issues is Plaintiff’s claim stating: 25 Defendants employ certain tactics to conceal their identities. These efforts make it virtually impossible for Plaintiff to learn Defendants’ true identities. 26 These kinds of Defendants, namely those that fence counterfeit goods online, 27 use judicial notice to abscond with their ill-gotten profits beyond the effective reach of rights owners seeking to enforce their rights. 28 1 (Mot. at 4; accord id. at 9 (“Plaintiff is currently unaware of both the true identities and 2 locations of the Defendants.”).) Despite these conclusory statements, the Complaint 3 indicates that Plaintiff has been able to discern several of the Defendants’ individual and 4 corporate identities. (See Compl. at 1–2.) Plaintiff has not presented any evidence that 5 Defendants’ known identities are false or that these Defendants cannot be located. (See 6 generally Mot.) In fact, Plaintiff asserts that “providing notice via e-mail is reasonably 7 calculated under all circumstances to apprise Defendants of the pendency of the action and 8 afford them the opportunity to present their objections.” (Mot. at 9.) Therefore, notice to 9 the named Defendants is not impossible. 10 Additionally, Plaintiff’s sweeping assertion that those who sell counterfeit goods 11 online are the kind of defendants who abscond does not bring this action into the “very 12 narrow band of cases in which ex parte orders are proper.” Reno Air Racing Ass’n, 452 13 F.3d at 1131. As the Ninth Circuit put it, “[w]ere a single conclusory statement . . . about 14 infringers sufficient to meet the dictates of Rule 65, then ex parte orders without notice 15 would be the norm and this practice would essentially gut Rule 65’s notice requirements.” 16 Id. In sum, Plaintiff has failed to demonstrate why notice would render this action fruitless. 17 Accordingly, the Court DENIES WITHOUT PREJUDICE the Ex Parte Motion for a 18 Temporary Restraining Order and Asset Restraining Order. 19 II. Hearing and Briefing Schedule on Motion for Preliminary Injunction 20 Because Plaintiff’s failure to comply with the ex parte motion requirements of Rule 21 65 precludes a finding in its favor at this time, the Court declines to consider whether 22 (1) Plaintiff is likely to succeed on the merits, (2) Plaintiff is likely to suffer irreparable 23 harm in the absence of preliminary relief, (3) equity favors Plaintiff, and (4) a preliminary 24 injunction is in the public interest. See Winter, 555 U.S. at 20. The Court will, however, 25 consider Plaintiff’s Motion on the merits after Defendants have been provided proper 26 notice and an opportunity to respond. The same four-part Winter test applies to both 27 temporary restraining orders and preliminary injunctions. See Stuhlbarg Int’l Sales Co. v. 28 John D. Brushy & Co., 240 F.3d 832, 839 n.7 (9th Cir. 2001). Accordingly, the Court will 1 take Plaintiff’s Motion for a Temporary Restraining Order and Asset Restraining Order 2 under consideration as a Motion for Preliminary Injunction. 3 In light of the time-sensitive nature of preliminary injunctive relief, the Court 4 expedites the standard briefing schedule set forth in Section III.B.2 of the undersigned’s 5 Standing Order for Civil Cases and sets the following briefing schedule. The Court SETS 6 Plaintiff’s Motion for Preliminary Injunctive Relief (ECF No. 6) for a hearing on Thursday, 7 April 27, 2023, at 2:00 p.m. in Courtroom 3A. Plaintiff MAY FILE any supplemental 8 briefing in support of its Motion on or before April 6, 2023. Defendants MAY FILE any 9 opposition to the Motion on or before April 20, 2023,1 and Plaintiff MAY FILE an optional 10 reply on or before April 25, 2023. As noted in Section III.A.2 of the undersigned’s 11 Standing Order for Civil Cases, so long as they receive notice and the opportunity to 12 respond, “[a]n opposing party’s failure timely to file an opposition to any motion may be 13 construed as consent to the granting of the motion pursuant to Civil Local Rule 14 7.1(f)(3)(c).” 15 III. Expedited Discovery 16 Next, Plaintiff seeks “an ex parte Order allowing expedited discovery to discover 17 bank and payment system accounts Defendants use for their infringing sales operations.” 18 (Mot. at 8.) Plaintiff claims that without the ability “to discover Defendants’ bank and 19 payment system accounts, any asset restraint [order] would be of limited value because 20 Plaintiff would not know the entities upon whom to serve the order.” (Id.) Because the 21 Court has denied Plaintiff’s request for a Temporary Restraining Order and Asset 22 Restraining Order, the Court also DENIES WITHOUT PREJUDICE the request for 23 expedited discovery. 24 25 26 27 1 The Court will consider any opposition to the Motion for a Preliminary Injunction without prejudice to Defendants’ ability to assert Defenses under Federal Rule of Civil Procedure 12(b) following proper 28 1 Under Federal Rule of Civil Procedure 26, absent a court order, discovery is 2 generally not permitted until the parties have conferred pursuant to Rule 26(f). Fed. R. 3 Civ. P. 26(d)(1). Still, the Court may grant a request for expedited discovery upon a 4 showing of good cause. See Semitool, Inc. v. Tokyo Electron Am., Inc., 208 F.R.D. 273, 5 275–76 (N.D. Cal. 2002) (applying “the conventional standard of good cause in evaluating 6 Plaintiff’s request for expedited discovery”). An order permitting early discovery is only 7 appropriate “where the need for expedited discovery, in consideration of the administration 8 of justice, outweighs the prejudice to the responding party.” Id. at 276. In determining 9 whether good cause exists to justify this discovery, courts look at the following factors: 10 “(1) whether a preliminary injunction is pending; (2) the breadth of the discovery requests; 11 (3) the purpose for requesting the expedited discovery; (4) the burden on the [party 12 opposing expedited discovery] to comply with the requests; and (5) how far in advance of 13 the typical discovery process the request was made.” NobelBiz, Inc. v. Wesson, No. 14 14CV0832-W (JLB), 2014 WL 1588715, at *1 (S.D. Cal. Apr. 18, 2014) (citing Apple Inc. 15 v. Samsung Elecs. Co., No. 11cv1846-LHK, 2011 WL 1938154, at *1 (N.D. Cal. 2011)). 16 Here, these factors do not weigh in favor of expedited discovery of “Defendants’ 17 bank and payment account systems” at this time. The Courts denial of the Temporary 18 Restraining Order and Asset Restraining Order also eliminates the primary purpose for 19 which Plaintiff seeks expedited discovery, namely, to identify Defendants’ financial 20 accounts so that Plaintiff may effectuate the asset restraint. (See id.) Furthermore, the 21 discovery Plaintiff seeks is very broad. Plaintiff seeks Defendants’ financial and bank 22 account information without limitation to only financial records associated with the 23 allegedly infringing products and without regard to what other businesses Defendants may 24 be properly engaged in. Thus, Plaintiff has not demonstrated that the discovery sought is 25 tailored and proportional, especially given the early stage of this action. In light of the 26 foregoing, Plaintiff has failed to show good cause, and the Court DENIES WITHOUT 27 PREJUDICE Plaintiff’s Ex Parte Motion for Expedited Discovery. 28 / / / 1 IV. Service of Process by Email and Publication 2 Finally, Plaintiff seeks permission to effect service of process by “electronically 3 sending the Complaint, this Order, and other relevant documents via Defendants’ Webstore 4 registration emails, any known or discovered e-mail related to the webstore[s] listed in the 5 Complaint, and by publishing documents on a publicly available website.” (Mot. at 9.) 6 Plaintiff argues that this alternative method of service is “appropriate and necessary” 7 because Defendants, on information and belief, “(1) have not provided names and physical 8 addresses in the public contact information to their respective Webstores; and (2) rely 9 primarily on electronic communications to communicate with customers, demonstrating 10 the reliability of this method of communication by which Defendant[s] may be apprised of 11 the pendency of this action.” (Id.) 12 Plaintiff has identified five named Defendants: Hyperzoo Technology Ltd.; 13 ShenZhen DingKa Technology Co., Ltd.; Kenneth Branch; Teresa Branch; and Golden 14 Tulip LLC. (See Compl. at 1–2.) Two of the Defendants are individuals residing within 15 the United States, one is a company within the United States, and two are foreign 16 companies. (See id.) Federal Rules of Civil Procedure 4(e) and 4(h)(1) govern service of 17 individuals and companies within the United States. Both can be served according to state 18 law or by: 19 (A) delivering a copy of the summons and of the complaint to the individual personally; 20 (B) leaving a copy of each at the individual’s dwelling or usual place of abode 21 with someone of suitable age and discretion who resides there; or (C) delivering a copy of each to an agent authorized by appointment or by law 22 to receive service of process. 23 Fed. R. Civ. P. 4(e)(1). Alternatively, a U.S. based company can be served by delivering 24 a copy of the summons and complaint to an officer or agent designated by law to receive 25 service and mailing a copy to the defendant. See Fed. R. Civ. P. 4(h)(1)(B). 26 Federal Rules of Civil Procedure 4(f) and 4(h)(2) govern service of foreign 27 companies. Under those rules, service may be effected: (1) by a method prescribed in an 28 international agreement; (2) if none applies, by a method “reasonably calculated to give 1 notice,” namely, (a) a method prescribed by foreign law, (b) a method directed by foreign 2 authority, or (c) mail from the clerk of court requiring a signed receipt; or alternatively, (3) 3 “by other means not prohibited by international agreement, as the court orders.” See Fed. 4 R. Civ. P. 4(f). It is under this final prong of Rule 4(f) that Plaintiff seeks permission to 5 serve all Defendants—not just those in foreign jurisdictions—using email and publication 6 on a public website. (See Mot. at 9–10.) 7 Although Rule 4(f) does not apply to defendants within the United States, Rule 4(e) 8 permits service upon U.S. residents in accordance with California law. See Fed. R. Civ. P. 9 4(e)(1). California provides for substitute service by publication, Cal. Code Civ. Proc. § 10 415.50, or “a manner which is reasonably calculated to give actual notice to the party to be 11 served,” Cal. Code Civ. Proc. § 413.30. The Due Process Clause of the Constitution also 12 requires that service be “reasonably calculated, under all circumstances, to apprise 13 interested parties of the pendency of the action and afford them an opportunity to present 14 their objections.” Rio Props., Inc. v. Rio Int’l Interlink, 284 F.3d 1007, 1016–17 (9th Cir. 15 2002) (quoting Mullane v. Cent. Hanover Bank & Trust Co., 339 U.S. 306, 314 (1950)). 16 It is within the sound discretion of the district court to determine “when the 17 particularities and necessities of a given case require alternate service of process under 18 Rule 4(f)(3)” or state law. See Rio Props., Inc., 284 F. 3d at 1116. In Rio, for example, 19 the Court found service by email proper after the plaintiff unsuccessfully attempted to serve 20 a foreign defendant at its claimed U.S. address, through its attorney for the matter, and then 21 in its home country by hiring a private investigator. See id.; see also Aevoe Corp. v. Pace, 22 No. C11-3215MEJ, 2011 WL 3904133, at *2 (N.D. Cal. Sept. 6, 2011) (requiring 23 “reasonable and diligent attempts to serve [defendant] by both personal and substitute 24 service” before allowing service by email and publication). Here, by contrast, Plaintiff has 25 not presented any evidence that it attempted to locate and serve Defendants by traditional 26 means and was unable to do so. (See generally Mot.) The Court acknowledges, however, 27 that the time-sensitive nature of Plaintiff’s request for a preliminary injunction renders it 28 / / / 1 challenging to use traditional means of service to provide Defendants with timely notice of 2 Plaintiff’s Motion before the hearing date. 3 Accordingly, the Court GRANTS IN PART and DENIES IN PART WITHOUT 4 PREJUDICE Plaintiff’s Motion to electronically serve Defendants via email and website 5 publication. At this time, the Court DENIES WITHOUT PREJUDICE Plaintiff’s 6 request to electronically serve the Complaint and Summons. Plaintiff SHALL SERVE 7 the Complaint and Summons as prescribed by Rule 4. If after a good faith effort Plaintiff 8 remains unable to locate certain Defendants’ physical addresses and effect service by 9 traditional means, Plaintiff may refile its motion to serve those Defendants by an alternative 10 method. Nonetheless, given the unusual procedural posture of this case, the Court 11 GRANTS Plaintiff’s request to electronically serve filings related to this Motion and 12 Order. Plaintiff SHALL SERVE (1) its Motion (ECF No. 6); (2) this Order; and (3) any 13 supplemental briefing on the Motion upon Defendants via email and website publication.2 14 Plaintiff SHALL FILE PROOF OF SERVICE of these materials on or before April 10, 15 2023, and its reply brief, if any, on or before April 27, 2023. 16 ORDER TO SHOW CAUSE 17 Finally, the Court addresses the issue of venue. Improper venue may be raised by a 18 court sua sponte where a responsive pleading has not yet been filed and the time for doing 19 so has not run. See Costlow v. Weeks, 790 F.2d 1486, 1488 (9th Cir. 1986). “The district 20 court of a district in which . . . venue [is] in the wrong division or district shall dismiss, or 21 if it be in the interests of justice, transfer such case to any district or division in which it 22 could have been brought.” 28 U.S.C. § 1406(a). Relevantly, under 28 U.S.C. § 1391 a 23 civil action may be brought in: 24 (2) a judicial district in which a substantial part of the events or omissions giving rise to the claim occurred, or a substantial part of property that is the 25 subject of the action is situated; or 26

27 2 Additionally, Plaintiff must email Defendants a courtesy copy of the Complaint; however, this is not a 28 1 (3) if there is no district in which an action may otherwise be brought as provided in this section, any judicial district in which any defendant is subject 2 to the court’s personal jurisdiction with respect to such action. 3 28 U.S.C. 1391(b)(2) & (3). 4 Under 28 U.S.C. 1391(b)(2), venue is only proper in this District Court if a 5 substantial part of the events giving rise to the claim occurred here or a substantial part of 6 the counterfeit property is located here. See 28 U.S.C. 1391(b)(2). Here, Plaintiff is a 7 Canadian Corporation. (See Compl. at 1.) Defendant Hyperzoo Technology Ltd. is a 8 United Kingdom company, ShenZhen DingKa Technology Co., Ltd. is a Chinese 9 company, Kenneth Branch and Teresa Branch are Virginia residents, and Golden Tulip 10 LLC is a Wyoming company. (See id. at 1–2.) Thus, the Parties’ connection to the 11 Southern District of California is not immediately apparent. 12 Still, Plaintiff alleges that venue is proper in this District because “the causes of 13 action asserted in this Complaint arise out of Defendants’ contacts with this judicial 14 district” and “Defendants have caused tortious injury to Plaintiff in this judicial district.” 15 (Compl. at 3.) Plaintiff’s assertions mirror the venue requirements of 28 U.S.C. 1391(b)(2). 16 Yet, it is not apparent from the face of the Complaint how a substantial portion of the 17 alleged wrongdoing or harm occurred in the Southern District of California. Defendants 18 are e-commerce retailers who allegedly “sell counterfeit products to consumers within the 19 United States,” not just in California or the Southern District of California. (Compl. at 2.) 20 If there is no district in which a substantial part of the claims occurred or a substantial 21 part of the counterfeit property is located, venue will be proper in any district in which any 22 defendant is subject to the court’s personal jurisdiction. See 28 U.S.C. 1391(b)(3). Plaintiff 23 alleges that venue is proper in this District because “Defendants have extensive contacts 24 with, and conduct business within, the State of California and this judicial district” and 25 “Defendants have caused Plaintiff’s products to be advertised, promoted, and sold in this 26 judicial district.” (Compl. at 3.) These assertions mirror the venue requirements of 27 28 U.S.C. 1391(b)(3), which requires specific personal jurisdiction where general personal 28 jurisdiction over the defendants is unavailable. 1 Yet, specific personal jurisdiction requires “certain minimum contacts . . . such that 2 the maintenance of the suit does not offend ‘traditional notions of fair play and substantial 3 justice.’” Walden, 571 U.S. at 283 (quoting Int’l Shoe Co. v. Washington, 326 U.S. 310, 4 316 (1945)). The Ninth Circuit applies a three-part test to assess whether a non-resident 5 defendant has sufficient contacts to be subject to a state’s personal jurisdiction: 6 (1) The non-resident defendant must purposefully direct his activities or consummate some transaction with the forum or resident thereof; or 7 perform some act by which he purposefully avails himself of the 8 privilege of conducting activities in the forum, thereby invoking the benefits and protections of its laws; 9 (2) the claim must be one which arises out of or relates to the defendant’s 10 forum-related activities; and (3) the exercise of jurisdiction must comport with fair play and substantial 11 justice, i.e. it must be reasonable. 12 Morrill v. Scott Fin. Corp., 873 F.3d 1136, 1142 (9th Cir. 2017) (quoting Schwarzenegger 13 v. Fred Martin Motor Co., 374 F.3d 797, 802 (9th Cir. 2004)). 14 “The plaintiff bears the burden of satisfying the first two prongs of the test. If the 15 plaintiff fails to satisfy either of these prongs, personal jurisdiction is not established in the 16 forum state.” Id. (quoting Schwarzenegger, 374 F.3d at 802). “If the plaintiff succeeds in 17 satisfying both of the first two prongs, the burden then shifts to the defendant to ‘present a 18 compelling case’ that the exercise of jurisdiction would not be reasonable.” Id. (quoting 19 Schwarzenegger, 374 F.3d at 802). Under the first prong of the Ninth Circuit’s test, courts 20 are to “apply the purposeful availment test when the underlying claims arise from a 21 contract, and the purposeful direction test when they arise from alleged tortious conduct.” 22 Id. (citing Schwarzenegger, 374 F.3d at 802). “The latter test applies here given the nature 23 of the underlying claims.” Id. “Purposeful direction ‘requires that the defendant . . . have 24 (1) committed an intentional act, (2) expressly aimed at the forum state, (3) causing harm 25 that the defendant knows is likely to be suffered in the forum state.’” Id. (quoting 26 Schwarzenegger, 374 F.3d at 803). 27 Here, the Complaint fails to explain how Defendants purposefully directed 28 advertising or sales toward California or the Southern District of California or how 1 Plaintiffs’ claims arise out of Defendants’ contacts with this forum. Accordingly, the Court 2 ORDERS Plaintiff TO SHOW CAUSE within fourteen (14) days of the electronic 3 docketing of this Order why this action should not be dismissed or transferred for improper 4 venue. Defendants MAY, but are not required to, FILE a response within twenty-one (21) 5 days of the electronic docketing of this Order. 6 CONCLUSION 7 For the reasons set forth above, the Court: 8 (1) DENIES WITHOUT PREJUDICE Plaintiff’s Motion for a Temporary 9 Restraining Order and Asset Restraining Order; 10 (2) SETS Plaintiff’s Motion for a Temporary Restraining Order and Asset 11 Restraining Order for a hearing on Thursday, April 27, 2023, at 2:00 p.m. in 12 Courtroom 3A; 13 (3) DENIES WITHOUT PREJUDCE Plaintiff’s Motion for Expedited 14 Discovery; 15 (4) DENIES WITHOUT PREJUDICE Plaintiff’s Motion to Electronically 16 Serve the Complaint and Summons; 17 (5) GRANTS Plaintiff’s Motion to Electronically Serve its Motion, this Order, 18 and any further briefing related to this Motion; and 19 (6) ORDERS PLAINTIFF TO SHOW CAUSE within fourteen (14) days of 20 the electronic docketing of this Order why this Action should not be dismissed 21 for improper venue. Defendants MAY FILE a response within twenty-one 22 (21) days of the electronic docketing of this Order. 23 It is further ORDERED that: 24 (7) Plaintiff MAY FILE any supplemental briefing in support of its Motion on 25 or before April 6, 2023; 26 (8) Plaintiff SHALL SERVE (1) its Motion (ECF No. 6); (2) this Order; and (3) 27 any supplemental briefing upon Defendants via email and website publication 28 on or before April 6, 2023. Plaintiff SHALL FILE PROOF OF SERVICE of (1) its Motion (ECF No. 6); (2) this Order; and (3) its supplemental briefing, 2 if any, on or before April 10, 2023; 3 (9) Defendants MAY FILE any opposition to the Motion on or before April 20, 4 2023; and 5 (10) Plaintiff MAY FILE an optional reply on or before April 25, 2023. Plaintiff 6 SHALL FILE PROOF OF SERVICE of its reply brief, if any, on or before 7 April 27, 2023. 8 IT IS SO ORDERED. 9 || Dated: March 29, 2023 —— [59 (OQ bre 11 Honorable Todd W. Robinson D United States District Judge 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28