Tangle, Inc. v. Buffalo Games, LLC

• Court: District Court, N.D. California
• Decided: April 3, 2023
• Docket: 3:22-cv-07024
• Status: Unknown

Opinion

1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 TANGLE, INC., Case No. 22-cv-07024-JSC

8 Plaintiff, ORDER GRANTING MOTION TO 9 v. DISMISS WITHOUT PREJUDICE

10 BUFFALO GAMES, LLC, Re: Dkt. No. 18 Defendant. 11

12 13 Tangle, Inc. (“Plaintiff”) sues Buffalo Games, LLC (“Defendant”) for (1) trademark 14 infringement under 15 U.S.C. § 1114; (2) false designation of origin under 15 U.S.C. § 1125(a); 15 (3) copyright infringement under 17 U.S.C. § 501(a); and (4) unfair competition under California 16 Business & Professions Code § 17200. (Dkt. No. 4.)1 Defendant moves to dismiss Plaintiff’s 17 Complaint for lack of personal jurisdiction and improper venue. (Dkt. No. 18.) Alternatively, 18 Defendant seeks to transfer this matter to the Western District of New York. (Id.) Having 19 reviewed the parties’ submissions, and having had the benefit of oral argument on March 16, 20 2023, the Court GRANTS Defendant’s motion to dismiss for lack of personal jurisdiction and 21 denies the venue motions. 22 COMPLAINT ALLEGATIONS 23 Plaintiff is a California toy manufacturer and distributor principally operating out of South 24 San Francisco, California. (Dkt. Nos. 4, 20-1.) Plaintiff owns a trademark for its “TANGLE” 25 products covered by U.S. Trademark Registration No. 1,779,055, which has been substantially and 26 continuously promoted since 1993. (Dkt. No. 4 at ¶¶ 6-7.) Plaintiff also owns all exclusive rights 27 1 in various copyrights for TANGLE products. Ud.) Three example TANGLE products are 2 || pictured below (Dkt. No. 4 at 5):

5 — 6 , cai Cy» 7 8 Defendant is a New York limited liability corporation that produces games and puzzles 9 || with its principal place of business in Buffalo, NY. (Dkt. No. 4 at ¥ 11.) Defendant has no 10 || physical locations, facilities, or personnel in California. (Dkt. No. 18-2 at 46.) Defendant is not 11 licensed to conduct business in California, owns no property or assets in California, and neither 12 || owes nor pays income taxes in California. (Ud. at J] 8-12.) None of Defendant’s officers, 5 13 || directors, or shareholders are domiciled in California, nor are any California citizens. Ud. at J 7.) 14 Plaintiff alleges Defendant sells its “Chuckle & Roar Sensory Fidget Box 10-pack,”— 3 15 || which includes a “Twist & Tangle” toy (the “Infringing Toy”)—at Target’s brick-and-mortar a 16 || locations in California. (Dkt. No. 4 at § 14.) Plaintiff alleges Defendant also offers the Infringing 3 17 || Toy to California consumers online through www.target.com. (/d.) Plaintiff alleges the Infringing 18 || Toy appears identical to its TANGLE toys but is constructed with “substandard, stiff material, 19 || making [it] much less flexible.” (Ud. at 2.) Defendant’s product in question, featuring the 20 || Infringing Toy, is pictured below (Dkt. No. 4 at 7-8): 21 => ——.. 0 — — zs = emsthatprovidea — □ 23 Te AR

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1 Plaintiff sent a cease-and-desist letter, demanding Defendant stop sales of the Infringing 2 Toy, recall all such products, and cancel any outstanding orders. (Dkt. No. 20-1 at 59-60.) 3 Plaintiff submits screenshots indicating—at time of filing—the Infringing Toy was available 4 online at www.target.com and in several brick-and-mortar Target retailers throughout this district. 5 (Dkt. No. 4 at 7.) 6 DISCUSSION 7 I. Personal Jurisdiction 8 Plaintiff “bears the burden” of establishing personal jurisdiction exists. In re Boon Global 9 Ltd., 923 F.3d 643, 650 (9th Cir. 2019). “Where, as here, the defendant’s motion is based on 10 written materials rather than an evidentiary hearing, ‘the plaintiff need only make a prima facie 11 showing of jurisdictional facts to withstand the motion to dismiss.’” Ranza v. Nike, Inc., 793 F.3d 12 1059, 1068 (9th Cir. 2015) (quoting CollegeSource, Inc. v. AcademyOne, Inc., 653 F.3d 1066, 13 1073 (9th Cir. 2011)). 14 The Court may consider declarations and other evidence outside the pleadings to 15 determine whether it has personal jurisdiction. See Boon Global, 923 F.3d at 650. 16 “[U]ncontroverted allegations in plaintiff’s complaint must be taken as true, and conflicts between 17 parties over statements contained in affidavits must be resolved in the plaintiff’s favor.” Id. 18 (cleaned up). However, courts “may not assume the truth of allegations in a pleading which are 19 controverted by affidavit.” Mavrix Photo, Inc. v. Brand Techs., Inc., 647 F.3d 1218, 1223 (9th Cir. 20 2011) (cleaned up). 21 When there is no applicable federal statute governing personal jurisdiction, as is the case 22 here, the law of the forum state determines personal jurisdiction. Schwarzenegger v. Fred Martin 23 Motor Co., 374 F.3d 797, 800 (9th Cir. 2004). California’s long arm statute is co-extensive with 24 federal due process requirements, and therefore the jurisdictional analyses under California law 25 and federal due process are the same. See Cal. Civ. Proc. Code § 410.10; Mavrix, 647 F.3d at 26 1223. 27 Courts recognize two forms of personal jurisdiction, general and specific, sometimes 1 of Cal., S.F. Cty., 582 U.S. 255, 262 (2017) (citing Goodyear Dunlop Tires Operations, S.A. v. 2 Brown, 564 U.S. 915, 918 (2011)). General jurisdiction over a nonresident corporation “is 3 appropriate only when the corporation’s contacts with the forum state are so constant and 4 pervasive as to render it essentially at home in the state.” Martinez v. Aero Caribbean, 764 F.3d 5 1062, 1066 (9th Cir. 2006); see Tuazon v. R.J. Reynolds Tobacco Co., 433 F.3d 1163, 1169 (9th 6 Cir. 2006) (“[T]he standard for general jurisdiction is high” and “[a] defendant must not only step 7 through the door, it must also [sit] down and [make] itself at home.”). 8 By contrast, specific jurisdiction requires a nonresident defendant’s “suit-related conduct 9 [to] create a substantial connection with the forum.” Walden v. Fiore, 571 U.S. 277, 285 (2014). 10 “Where there is no such connection, specific jurisdiction is lacking regardless of the extent of a 11 defendant’s unconnected activities in the State.” Bristol-Myers, 582 U.S. at 264; see Goodyear, 12 564 U.S. at 931 n.6 (“[E]ven regularly occurring sales of a product in a State do not justify the 13 exercise of jurisdiction over claims unrelated to those sales.”). As Plaintiff does not contend 14 general jurisdiction exists, the Court addresses only whether Plaintiff has met its burden of 15 establishing specific personal jurisdiction. 16 The Ninth Circuit applies a three-part test to determine if the exercise of specific personal 17 jurisdiction over a nonresident is appropriate: (1) the defendant must purposefully direct its 18 activities toward the forum or purposefully avail itself of the privileges of conducting activities in 19 the forum; (2) the plaintiff’s claim must arise out of or relate to those activities; and (3) the 20 assertion of personal jurisdiction must be reasonable. Schwarzenegger, 374 F.3d at 802. It is 21 Plaintiff’s burden to plead allegations that satisfy the first two prongs, whereupon the burden shifts 22 to the defendant to show why the exercise of specific personal jurisdiction would not be 23 reasonable under prong three. Id. (citing Burger King Corp. v. Rudzewicz, 471 U.S. 462, 477-78 24 (1985)). 25 A. Purposeful Direction 26 The first test requires Plaintiff establish Defendant “either purposefully availed itself of the 27 privilege of conducting activities in California, or purposefully directed its activities toward 1 California.” Id. “A purposeful availment analysis is most often used in suits sounding in 2 contract” while a purposeful direction analysis “is most often used in suits sounding in tort.” Id. 3 Plaintiff alleges copyright and trademark infringement claims, which sound in tort, so the Court 4 must decide whether Plaintiff has made a prima facie of showing of Defendant’s purposeful 5 direction at California.2 See AMA Multimedia, LLC v. Wanat, 970 F.3d 1201, 1208 (9th Cir. 6 2020). 7 Plaintiff has the burden of establishing purposeful direction following the three-part test in 8 Calder v. Jones, 465 U.S. 783, 788-89 (1984). At this stage, Plaintiff must plausibly allege (1) 9 Defendant committed an intentional act, (2) expressly aimed at the forum state, (3) causing harm 10 Defendant knows is likely to be suffered in the forum state. Id. “Failing to plead any one of these 11 elements is fatal to Plaintiff’s attempt to show personal jurisdiction.” Rupert v. Bond, 68 F. Supp. 12 3d 1142, 1163 (N.D. Cal. 2014) (citing Brayton Purcell LLP v. Recordon & Recordon, 606 F.3d 13 1124, 1128-29 (9th Cir. 2010)). 14 1. Intentional Act 15 An intentional act is “an external manifestation of the actor’s intent to perform an actual, 16 physical act in the real world.” Wash. Shoe Co. v. A-Z Sporting Goods, Inc., 704 F.3d 668, 674 17 (9th Cir. 2012). In the trademark context, this includes selling an allegedly infringing product, 18 even if such sales occur outside the forum. Wash. Shoe Co., 704 F.3d at 674; see Int’l Aero 19 Products, LLC v. Aero Advanced Paint Tech., Inc., 325 F. Supp. 3d 1078, 1084-85 (C.D. Cal. 20 2018) (finding plaintiff’s allegations that a nonresident defendant’s infringement within the forum 21 state was “knowing, willful, and deliberate” satisfied the intentionality prong). 22 Plaintiff alleges Defendant’s infringing acts were willful, deliberate, and committed with 23 prior notice and knowledge of Plaintiff’s copyrights. (Dkt. No. 4 at ¶ 51.) Plaintiff also alleges 24 Defendant knowingly and intentionally traded upon Plaintiff’s reputation and goodwill by offering 25 products in connections with the TANGLE trademark. (Id. at ¶ 61.) These factual allegations 26 2 If the exercise of jurisdiction over these claims were proper, the Court could assert “pendent 27 personal jurisdiction” over Plaintiff’s additional claim for unfair competition because it arises out 1 support an inference of Defendant’s intent to perform “an actual, physical act in the real world.” 2 Schwarzenegger, 347 F.3d at 806; see Chanel Inc. v. Yang, No. C 12–4428 PJH, 2013 WL 3 5755217, at *7 (N.D. Cal. 2013) (finding an intentional act for selling allegedly infringing 4 products on a website). Defendant does not address this prong of the Calder test. 5 The first prong of the Calder purposeful direction test is satisfied. 6 2. Express Aiming 7 The “express aiming” prong is the crux of this dispute. Plaintiff must make a prima facie 8 showing Defendant’s acts were expressly aimed at the forum state, which requires “something 9 more” than “a foreign act with foreseeable effects in the forum state.” Pakootas v. Teck Cominco 10 Metals, Ltd., 905 F.3d 565, 577 (9th Cir. 2018). An action is expressly aimed when “the 11 ‘defendant himself’ creates [contacts] with the forum State” rather than the plaintiff or persons 12 who reside there. Walden, 571 U.S. at 284-85 (quoting Burger King, 471 U.S. at 475) (emphasis 13 in original). Due process requires a defendant “be haled into court in a forum State based on his 14 own affiliation with the State, not based on the ‘random, fortuitous, or attenuated’ contacts he 15 makes by interacting with other persons affiliated with the State.” Id. at 286. 16 Plaintiff advances two theories arguing Defendant expressly aimed its conduct at 17 California: (1) Defendant “intentionally infringed [Plaintiff’s] intellectual property rights knowing 18 [Plaintiff] was located in the forum state;” and (2) Defendant distributes “a disproportionate share 19 of the Infringing Toys . . . through Target, both in physical retail stores and through online sales 20 . . . to consumers in California.” (Dkt. No. 20 at 12-13.) 21 Plaintiff’s first theory of “individualized targeting” previously satisfied the express aiming 22 prong in this Circuit. See Wash. Shoe, 704 F.3d at 678-79 (“alleged willful infringement of [a 23 plaintiff’s] copyright, and its knowledge of both the existence of the copyright and the forum of 24 the copyright holder,” established “individualized targeting”). Following the Supreme Court’s 25 holding in Walden, however, a defendant’s knowledge that the plaintiff resides in the forum state 26 “will not, on its own, support the exercise of specific jurisdiction.” Axiom Foods, Inc. v. 27 Acerchem Int'l, Inc., 874 F.3d 1064, 1070 (9th Cir. 2017) (expressly overruling Wash. Shoe); see 1 Nevada simply because he allegedly directed his conduct at plaintiffs whom he knew had Nevada 2 connections.”). In evaluating express aiming, courts must “look to the defendant’s ‘own contacts’ 3 with the forum, not to the defendant’s knowledge of a plaintiff’s connections to a forum.” Axiom 4 Foods, 874 F.3d at 1070 (quoting Walden, 571 U.S. at 287). The cases Plaintiff cites to support its 5 individualized targeting theory all rely on precedent since overruled by Walden. See Adobe Sys. 6 Inc. v. Blue Source Grp., Inc., 125 F. Supp. 3d 945, 960-61 (N.D. Cal. 2015) (“[W]here a 7 defendant knows—as opposed to being able to foresee—that an intentional act will impact another 8 state . . . the expressly aimed requirement is satisfied.” (quoting Wash. Shoe, 704 F.3d at 675-76 9 (emphasis in original)); Amini Innovation Corp. v. JS Imps., Inc., 497 F. Supp. 2d 1093, 1105 10 (C.D. Cal. 2007) (“[T]he express aiming requirement of Calder [is] satisfied when the defendant is 11 alleged to have engaged in wrongful conduct targeted at a plaintiff whom the defendant knows to 12 be a resident of the forum state.” (quoting Yahoo! Inc. v. La Ligue Contre Le Racisme Et 13 L’Antisemitisme, 379 F.3d 1120, 1124-25 (9th Cir. 2004) (cleaned up), rev’d en banc 433 F.3d 14 1199 (9th Cir. 2006) (per curiam))). Thus, Plaintiff’s “individualized targeting” theory fails. 15 In the alternative, Plaintiff alleges Defendant expressly aimed its conduct at California 16 through the physical and online activities of third-party retailer Target. Plaintiff alleges—based on 17 Target’s 2021 tax filings—that California is one of Target’s largest states by total sales. (Dkt. No 18 20-2 at ¶ 4.) According to Plaintiff, because 16% of all Target retail locations are in California, a 19 disproportionate number of Infringing Toys are sold in this district, allowing the inference 20 Defendant “acted deliberately to exploit the California market and thus expressly aimed its 21 infringing activities at California.” (Dkt. No. 20 at 13.) 22 These factual allegations are insufficient to meet the express aiming requirement. To 23 establish express aiming, a plaintiff must show “the defendant’s actions connect him to the 24 forum.” Walden, 571 U.S. at 289. Although Plaintiff’s screenshots demonstrate Defendant’s 25 products are sold in the forum state, none of Plaintiff’s screenshots establish Defendant itself sold 26 products to customers in the forum state. Instead, Plaintiff alleges a third-party retailer sells 27 Defendant’s products within the forum state. Such allegations establish only that a third-party 1 the forum. But Plaintiff provides no factual allegations supporting an inference Defendant sold to 2 Target because Target would sell to California in particular. Nor does Plaintiff cite any case 3 concluding third-party retail sales of a defendant’s products in a forum permits an inference the 4 defendant expressly aimed its conduct at that forum. To the contrary, courts considering this same 5 fact pattern have held such allegations insufficient to establish express aiming. See, e.g., Cole- 6 Parmer Instrument, Co. LLC v. Pro. Lab’ys, Inc., No. 20-CV-08493-LHK, 2021 WL 3053201, at 7 *8 (N.D. Cal. 2021) (concluding express aiming would be satisfied by direct sales to forum state 8 residents from the defendant’s website, but not by sales through a third-party); Johnson v. Blue 9 Nile, Inc., No. 20-cv-08183-LB, 2021 WL 1312771, at *3 (N.D. Cal. Apr. 8, 2021) (concluding a 10 defendant was not “expressly aiming” when it sold a product to a third party who did business in 11 the forum). Plaintiff therefore fails to allege facts establishing Defendant’s acts were expressly 12 aimed at California. 13 Because Plaintiff has failed to satisfy the second prong of the Calder purposeful direction 14 test, the Court need not reach the third prong regarding foreseeability of harm. Schwarzenegger, 15 374 F.3d at 807 (ending its application of the Calder test after finding the plaintiff had failed to 16 make out “a prima facie case that [the defendant] expressly aimed its acts at California”). 17 Accordingly, Plaintiff has not adequately demonstrated Defendant “purposefully directed its 18 activities at residents” of the forum. Id. at 802. 19 Accordingly, the Court GRANTS without prejudice Defendant’s motion to dismiss 20 Plaintiff’s Complaint pursuant to Federal Rule of Civil Procedure 12(b)(2). 21 II. Venue 22 Defendant also argues venue is not proper in this district and moves to dismiss pursuant to 23 Federal Rule of Civil Procedure 12(b)(3). If the Court determines venue is improper, it must 24 “dismiss, or if it be in the interest of justice, transfer such case to any district or division in which 25 it could have been brought.” 28 U.S.C. § 1406(a). 26 Plaintiff bears the burden of showing venue is proper. See Piedmont Label Co. v. Sun 27 Garden Packing Co., 598 F.2d 491, 496 (9th Cir. 1979). When deciding a challenge to venue, 1 Argueta v. Banco Mexicano, S.A., 87 F.3d 320, 324 (9th Cir. 1996). However, the Court must 2 “draw all reasonable inferences in favor of the non-moving party and resolve all factual conflicts 3 in favor of the non-moving party.” Murphy v. Schneider Nat’l, Inc., 362 F.3d 1133, 1138–39 (9th 4 Cir. 2004). Plaintiff contends venue is proper under (1) 28 U.S.C. § 1400(a) for its copyright 5 action, and (2) 28 U.S.C. § 1391(b) for all claims.3 (Dkt. No. 20 at 11-12.) 6 A. 28 U.S.C. § 1400(a) 7 In copyright infringement actions, venue is proper “in the district in which the 8 defendant…resides or may be found.” 28 U.S.C. § 1400(a). This provision allows venue in any 9 judicial district where, if treated as a separate state, the defendant would be subject to personal 10 jurisdiction. See Brayton Purcell, 606 F.3d at 1126. Because Plaintiff fails to establish this 11 Court’s personal jurisdiction over Defendant at this time, venue is not proper under Section 12 1400(a). 13 B. 28 U.S.C. § 1391(b) 14 Under the general statute, venue is proper in a judicial district (1) in which any defendant 15 resides, if all defendants reside in the same state; (2) in which a substantial part of the events or 16 omissions giving rise to the claim occurred; or (3) in which any defendant may be found if there is 17 no other district in which the action may be brought. 28 U.S.C. § 1391(b). As above, Plaintiff’s 18 present failure to establish personal jurisdiction over Defendant means venue may only be based 19 on the second prong. 20 The Ninth Circuit has not addressed what constitutes a substantial part of the events in the 21 context of Lanham Act and unfair competition claims. Other circuits hold venue for these claims 22 is proper “in any district where consumers are likely to be confused by the accused goods.” 23 Cottman Transmission Sys. v. Martino, 36 F.3d 291, 295 (3d Cir. 1994); see Woodke v. Dahm, 70 24 F.3d 983, 985 (8th Cir. 1995) (“The place where the alleged passing off occurred . . . provides an 25 obvious correct venue.”); Vanity Fair Mills v. T. Eaton Co., 234 F.2d 633, 639 (2d Cir. 1956) 26 3 Although not argued by Plaintiff, the Court has discretion to find “pendent venue” over the 27 copyright infringement claim because venue is proper for the Lanham Act and UCL claims under 1 (“[I]n cases involving trademark infringement and unfair competition, the wrong takes place . . . 2 where the passing off occurs, i.e., where the deceived customer buys the defendant’s product in 3 the belief that he is buying the plaintiff’s.”). California district courts are in accord. See e.g., 4 Sutter Home Winery, Inc. v. Madrona Vineyards, L.P., No. C 05–0587 MHP, 2005 WL 701599, at 5 *4 (N.D. Cal. 2005) (“[T]he fact that a substantial number of consumers of plaintiff’s wine who 6 reside in this district may be confused by defendant’s use of the ‘Mélange de Trois’ mark is 7 sufficient to establish this jurisdiction is a proper venue for the adjudication of plaintiff’s claim.”); 8 Sykes Lab., Inc. v. Kalvin, 610 F. Supp. 849, 860 n.8 (C.D. Cal. 1985) (observing trademark 9 infringement occurs in the district “where the passing off occurs, i.e., where the deceived customer 10 buys the defendant’s product in the belief that he is buying the plaintiff’s”) (citation omitted). 11 Plaintiff argues venue lies here because consumers are familiar with its nationwide 12 reputation and will be confused upon encountering the Infringing Toy in this district. Plaintiff’s 13 CEO explains the company “is the official source of TANGLE products in the United States,” 14 having “widely market[ed] and promote[ed] the TANGLE Trademark in the industry and to 15 consumers.” (Dkt. No. 20-1 at ¶ 7.) Plaintiff’s promotion efforts include “substantial print media, 16 the TANGLE Products’ website and social media sites, and point of sale materials.” (Id.) As 17 discussed, Plaintiff alleges consumers within this district can find and purchase the Infringing Toy 18 at brick-and-mortar Target locations. (Id. at ¶ 15.) Plaintiff also attaches an invoice for the sale of 19 one Infringing Toy online at www.target.com with a shipping address in this district. (Dkt. No. 4- 20 3.) Defendant does not respond to Plaintiff’s allegations that sales of the Infringing Toy 21 undermine Plaintiff’s reputation and goodwill here in California other than to state Target, not 22 itself, is in the best position to adduce evidence of these sales. 23 Drawing all reasonable inferences in Plaintiff’s favor, the Complaint supports an inference 24 of consumer confusion in this district when a potential consumer encounters both Plaintiff’s 25 nationwide marketing and the Infringing Toy on Target’s shelves. See e.g., Sutter Home, 2005 26 WL 701599, at *7 (“[I]t is certainly possible that some consumers, upon viewing or hearing the 27 two marks, would be confused by their phonetic and orthographic similarity.”); Radical Products, 1 proper, even without any sales in the district, because the defendant mailed 650 brochures 2 advertising its products to addresses in the district). 3 Therefore, venue is proper in this district for Plaintiff’s claims under Section 1391(b). 4 III. Transfer 5 Defendant alternatively moves for this suit to be transferred to the Western District of New 6 York. Provided the action might have been brought in the transferee court, a court may transfer an 7 action to another district: (1) for the convenience of the parties, (2) for the convenience of the 8 witnesses, and (3) in the interests of justice. 28 U.S.C. § 1404(a); Martinez v. BMW of N. Am., 9 LLC, No. 3:19-CV-05479-WHO, 2019 WL 6727837, at *2 (N.D. Cal. 2019). The Ninth Circuit 10 has identified the following factors courts may consider in determining whether to transfer an 11 action:

12 (1) Plaintiff’s choice of forum, (2) Convenience of the parties, (3) Convenience of the witnesses, (4) Ease of access to the evidence, (5) 13 Familiarity of each forum with the applicable law, (6) Feasibility of consolidation of other claims, (7) Any local interest in the 14 controversy, and (8) The relative court congestion and time of trial in each forum. 15 16 Jones v. GNC Franchising, Inc., 211 F.3d 495, 498 (9th Cir. 2000); see e.g., Martinez, 2019 WL 17 6727837, at *2; Barnes & Noble v. LSI Corp., 823 F. Supp. 2d 980, 993 (N.D. Cal. 2011). The 18 burden rests with the movant to show, upon application of these factors, “the balance of 19 convenience clearly favors transfer.” Martinez, 2019 WL 6727837, at *2 (citing Commodity 20 Futures Trading Comm’n v. Savage, 611 F.2d 270, 279 (9th Cir. 1979)). 21 The Western District of New York is a proper venue for Plaintiff’s claims under the 22 general venue statute, as Defendant is incorporated and maintains its principal place of business in 23 Buffalo, New York. See 28 U.S.C. § 1391(b). The question, then, is whether the convenience 24 factors and the interests of justice favor transfer heavily enough to outweigh Plaintiff’s choice of 25 forum. They do not. 26 Defendant argues the deference afforded to Plaintiff’s choice of forum should be 27 substantially diminished because “the conduct giving rise to the claims occurred in a different 1 conduct giving rise to Plaintiff’s claim is Defendant’s engagement with Target to sell the 2 Infringing Toy nationwide, which occurred in Buffalo. See, e.g., Lou v. Belzberg, 834 F.2d 730, 3 739 (9th Cir. 1987) (“If the operative facts have not occurred within the forum and the forum has 4 no interest in the parties or subject matter, [Plaintiff's] choice is entitled to only minimal 5 consideration.”). However, Plaintiff also alleges damage to its reputation and goodwill within 6 California resulting from sales of the Infringing Toy (Dkt. No. 20-1 ¶ 18), which sufficiently 7 connects its claims with the chosen forum. See Decker Coal Co. v. Commonwealth Edison Co., 8 805 F.2d 834, 843 (9th Cir. 1986) (respecting the plaintiff’s choice of forum because damage 9 witnesses resided within, even though liability witnesses resided in the defendant’s choice of 10 forum). Plaintiff’s choice of forum is therefore afforded its full weight. 11 The conveniences related to witnesses and evidence are relatively balanced between the 12 parties. Defendant conducts all its retail business online from its principal place of business in 13 Buffalo. (Dkt. No. 18-2 at ¶¶ 4, 15-16.) However, Plaintiff similarly notes sales occurred in this 14 district and consumers confused by the Infringing Toy will be located here. (Dkt. No. 4 at ¶ 3.) 15 Further, Plaintiff’s damages witnesses will be here given Plaintiff is headquartered in this district. 16 (Dkt. No. 20-1 at ¶ 4.) Thus, both forums would offer some conveniences and inconveniences to 17 each party in the resolution of these claims. 18 As for the interests of justice, there are no material differences between the forums as to 19 familiarity with the governing law, the feasibility of consolidation, and relative court congestion. 20 Despite Plaintiff’s assertion to the contrary, courts essentially apply the same standard for 21 trademark infringement, false designation of origin, and unfair competition claims, whether under 22 federal, state, or common law. See Cleary v. News Corp., 30 F.3d 1255, 1262-63 (9th Cir. 1994) 23 (“[S]tate common law claims of unfair competition and actions pursuant to California Business 24 and Professions Code § 17200 are substantially congruent to claims made under the Lanham 25 Act.”). Further, this district and the Western District of New York have an interest in this suit 26 because parties are located within both districts. 27 On balance, the Section 1404(a) factors do not weigh in favor of transfer enough to 1 Dusen, 376 U.S. 612, 645-46 (1964)) (denying transfer where the result is merely to shift the 2 inconvenience from one party to another). 3 IV. Jurisdictional Discovery 4 Plaintiff seeks to conduct limited jurisdictional discovery should the Court find it has not 5 sufficiently alleged facts to support the exercise personal jurisdiction over Defendant. 6 “[D]iscovery should ordinarily be granted where pertinent facts bearing on the question of 7 jurisdiction are controverted or where a more satisfactory showing of the facts is necessary.” Laub 8 v. Dep’t of the Interior, 342 F.3d 1080, 1093 (9th Cir. 2003) (cleaned up). “[A] mere hunch that 9 discovery might yield jurisdictionally relevant facts, or bare allegations in the face of specific 10 denials, are insufficient reasons for a court to grant jurisdictional discovery.” LNS Enters. LLC v. 11 Cont’l Motors, Inc., 22 F.4th 852, 864-65 (9th Cir. 2022) (cleaned up). A court may deny 12 jurisdictional discovery “when it is clear that further discovery would not demonstrate facts 13 sufficient to constitute a basis for jurisdiction.” American West Airlines, Inc. v. GPA Grp., Ltd., 14 877 F.2d 793, 801 (9th Cir. 1989) (cleaned up). 15 The record does not make it clear jurisdictional discovery would be futile. Further, at oral 16 argument, Defendant did not contend jurisdictional discovery is inappropriate; instead, it merely 17 argued discovery should be tailored to request only material it has direct control over. So, limited 18 jurisdictional discovery is warranted. 19 CONCLUSION 20 For the reasons explained above, the Court GRANTS Defendant’s motion to dismiss 21 Plaintiff’s Complaint for lack of personal jurisdiction without prejudice and denies the motion to 22 dismiss for improper venue, as well as the motion to transfer to the Western District of New York 23 based on convenience. As discussed at oral argument, the parties are to meet and confer regarding 24 jurisdictional discovery and, if any issues remain regarding appropriate discovery, file a joint 25 discovery letter. If necessary, the Court will set a hearing on the discovery dispute upon receipt of 26 the joint letter. 27 The Court sets a case management conference for May 11, 2023, at 1:30 p.m. via Zoom 1 This Order disposes of Docket No. 18. 2 IT IS SO ORDERED. 3 || Dated: April 3, 2023 4 ne JA@QUELINE SCOTT COR 5 United States District Judge 6 7 8 9 10 11 12

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