N.C.C. Motorsports, Inc. v. K-VA-T Food Stores, Inc.

975 F. Supp. 2d 993, 2013 WL 5436635, 2013 U.S. Dist. LEXIS 139156
CourtDistrict Court, E.D. Missouri
DecidedSeptember 27, 2013
DocketCase No. 4:12CV01505AGF
StatusPublished
Cited by3 cases

This text of 975 F. Supp. 2d 993 (N.C.C. Motorsports, Inc. v. K-VA-T Food Stores, Inc.) is published on Counsel Stack Legal Research, covering District Court, E.D. Missouri primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
N.C.C. Motorsports, Inc. v. K-VA-T Food Stores, Inc., 975 F. Supp. 2d 993, 2013 WL 5436635, 2013 U.S. Dist. LEXIS 139156 (E.D. Mo. 2013).

Opinion

MEMORANDUM AND ORDER

AUDREY G. FLEISSIG, District Judge.

This is an action for copyright infringement brought pursuant to the Copyright Act, 17 U.S.C. § 502 et seq. Now before the Court is Defendant K-VA-T Food Stores, Inc.’s motion to dismiss Plaintiff N.C.C. Motorsports, Inc.’s complaint for lack of personal jurisdiction pursuant to Federal Rule of Civil Procedure 12(b)(2) and 28 U.S.C. § 1391(c). For the reasons set forth below, the motion will be granted.

1. BACKGROUND

For purposes of this motion, the complaint and attachments thereto establish the following:

Plaintiff, a Missouri corporation, owns a copyright on a design for a shopping cart vehicle (the “Registered Design”). Robert H. Unnerstall, Sr. obtained a Certificate of Registration VA 291-601 for the Registered Design on July 16, 1986, and assigned the copyright in the Registered Design to Plaintiff on July 22, 2012.

On October 1, 1993, Plaintiff leased a shopping cart vehicle (the “Big Cart”) based upon the Registered Design to Defendant, a Virginia corporation headquartered in Abingdon, Virginia, that operates a chain of grocery stores in Kentucky, Tennessee, and Virginia. Defendant used the Big Cart to advertise at promotional events such as auto races.

The parties’ lease contained a choice of law provision, stating “[tjhis lease shall be construed and interpreted under the laws of the State of Missouri.” Doc. No. 1-4 at 2. In addition, Paragraph 16 of the lease stated: “[Defendant] specifically acknowledges that [Plaintiff] has a copyright covering ‘Big Cart’ and [Defendant] specifically agrees not to infringe on [Plaintiffs] copyright.” Id. at 6. Paragraph 11 of the lease further provided that “[Defendant] shall not use or operate or permit the use or operation of ‘Big Cart’ in the [Plaintiffs] market area.” Id. at 5. Under the lease Defendant made monthly payments to Plaintiff, and Plaintiff deposited the [996]*996payments in a Missouri bank. Plaintiff contends that the lease was executed in Missouri, but Defendant asserts it signed and executed the lease in Virginia.

On November 16, 2010, Defendant hired a third party to design and build a Food City Shopping Cart (the “FCS Cart”) in Abingdon, Virginia. The FCS Cart was completed on February 21, 2011, and on March 28, 2011, Defendant unilaterally terminated its lease on the Big Cart. Defendant used the FCS Cart as it had used the Big Cart for promotional purposes at auto races, as shown in photo galleries on its websites, http://www.foodcityracing.com and http://www.foodcity.com/community/ racing. These sites are accessible to Missouri citizens through use of the Internet. In addition, the record indicates that the sites are informational and promotional but not interactive. It is undisputed that Defendant generally makes no sales through these sites and has not sold to Missouri residents by way of these sites. Nor is there any indication that the sites link to either another of Defendant’s sites or to a third party site for purposes of making sales. Defendant does not operate or own stores in Missouri, nor has it displayed the Big Cart or the FCS Cart in Missouri.

Following the termination of the lease, Plaintiff brought suit against Defendant in this Court alleging infringement of Plaintiffs assigned copyright in the Big Cart. Defendant challenges this Court’s exercise of personal jurisdiction.

II. ARGUMENTS OF THE PARTIES

Plaintiff alleges a single count of copyright infringement with respect to its Registered Design for the Big Cart. Specifically, Plaintiff alleges that Defendant’s FCS Cart infringes the Big Cart copyright, that Defendant’s access to the Big Cart under the lease gave rise to the alleged infringement, and that Defendant’s infringing conduct harmed Plaintiff in Missouri. Plaintiff further alleges that the lease is a contract made in Missouri involving payments to a Missouri corporation deposited in a Missouri bank, and that it explicitly required that Defendant not infringe Plaintiffs copyright. Finally, Plaintiff alleges that the choice of law provision in the lease mandating the application of Missouri law permits this Court to exercise personal jurisdiction over Defendant.

In support of its motion to dismiss for lack of personal jurisdiction Defendant asserts that the lease is irrelevant because Plaintiffs claim is for copyright infringement rather than breach of the unilaterally terminated lease. Defendant also notes that the lease contained a choice of law provision mandating application of Missouri law, but did not contain a forum selection clause requiring suit in Missouri. Further, because the lease prohibited Defendant from using the Big Cart in Missouri, Defendant asserts that its only contacts with Missouri were its payments to Plaintiff under the lease. Defendant also asserts that because the allegedly infringing actions occurred outside Missouri, it lacks sufficient minimum contacts to be haled into a Missouri court. Additionally, Defendant also argues that Plaintiff cannot support its contention that the harm flowing from the alleged infringement occurred in Missouri or that Defendant specifically targeted its actions toward Missouri.1

[997]*997In response, Plaintiff asserts that the harm due to the copyright infringement is felt by the copyright holder in its home state, and therefore, that Defendant’s infringement of its copyright on the Registered Design gave rise to harm in Missouri. Plaintiff also contends that the lease is relevant to the jurisdictional question because it is a Missouri contract made with a Missouri corporation and the lease payments were deposited in a Missouri bank. Although the lease has expired, Plaintiff notes that the allegedly infringing FCS Cart was built while the lease was in effect. With respect to other minimum contacts, Plaintiff asserts that Defendant’s display of the FCS Cart at auto races in places other than Missouri and Defendant’s website displaying images of the FCS Cart are promotional activities directed at a nationwide audience, including Missourians.

III. APPLICABLE LAW

To defeat a motion to dismiss for lack of personal jurisdiction, “the nonmoving party need[ ] only make a prima facie showing of jurisdiction.” Miller v. Nippon Carbon Co., Ltd., 528 F.3d 1087, 1090 (8th Cir.2008). This requires “a plaintiff [to] state sufficient facts in the complaint to support a reasonable inference that the defendant can be subjected to jurisdiction within the state.” Dairy Farmers of Am. v. Bassett & Walker Int’l, Inc., 702 F.3d 472, 474 (8th Cir.2012) (internal quotation omitted). The plaintiff has the burden of proving facts supporting personal jurisdiction. Viasystems, Inc. v. EBM-Papst St. Georgen GmbH & Co. KG, 646 F.3d 589, 592 (8th Cir.2011).

Free access — add to your briefcase to read the full text and ask questions with AI

Related

Cite This Page — Counsel Stack

Bluebook (online)
975 F. Supp. 2d 993, 2013 WL 5436635, 2013 U.S. Dist. LEXIS 139156, Counsel Stack Legal Research, https://law.counselstack.com/opinion/ncc-motorsports-inc-v-k-va-t-food-stores-inc-moed-2013.