80 F.4th 1079
9th Cir.2023Background
- Impossible Foods (Delaware; HQ Redwood City, CA) sued Impossible X (Texas LLC run by Joel Runyon) in California for a declaratory judgment that Impossible Foods’ use of the mark IMPOSSIBLE for food/recipes does not infringe.
- Runyon began using IMPOSSIBLE on a personal blog in 2010, formed an LLC, and ran Impossible X largely as a one‑person, online business; he operated from San Diego as a de facto headquarters from 2014–2016 and promoted the brand there extensively.
- Impossible X sent a cease‑and‑desist letter and filed a TTAB opposition against Impossible Foods in late 2020; Impossible Foods then filed this declaratory judgment action in California in April 2021.
- The district court found purposeful direction but dismissed for lack of personal jurisdiction, reasoning the dispute arose after Runyon left California.
- The Ninth Circuit reversed: it held Impossible X is subject to specific personal jurisdiction in California because its trademark building/use in California is sufficiently related to the declaratory‑judgment dispute; the court remanded for merits.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Impossible X purposefully directed or availed itself of California | Brand‑building, sales, and promotion from San Diego (2014–2016) and continued CA contacts constitute purposeful direction/availment | Runyon relocated and Impossible X is now Texas; historical/occasional CA contacts insufficient and company disavows CA ties | Yes. Court finds Impossible X purposefully directed/availed itself of CA through multi‑year HQ, promotion, and continued contacts |
| Whether the declaratory judgment “arises out of or relates to” Impossible X’s CA contacts | The dispute over priority/use of the IMPOSSIBLE mark turns on Impossible X’s use in CA; brand‑building is directly relevant to rights at issue | The relevant contacts are only enforcement acts; plaintiff’s suit arose from enforcement after Runyon left CA, so prior CA activity is irrelevant | Yes. Court rejects an enforcement‑only rule and holds trademark use/brand building in CA relates to the dispute |
| Whether Federal Circuit precedent (patent enforcement‑only rule) governs trademark DJ jurisdiction | Trademark rights depend on use, so patent rules shouldn’t be transplanted; Ford allows non‑causal ‘‘relate to’’ contacts | Advocate adoption of the patent line (Avocent/Accession): DJ jurisdiction should arise only from enforcement actions | No. Court declines to import the patent enforcement‑only rule—distinguishes trademarks (use‑based) and relies on Ford’s broader «arise/relate» formulation |
| Whether exercising jurisdiction would be reasonable (fair play & substantial justice) | California has a strong interest; burden on defendant is not compelling (Runyon traveled to CA repeatedly) | Forum would be burdensome and interfere with defendant’s sovereign interests | Yes. Court holds Impossible X failed to make a “compelling case” against reasonableness; factors favor CA or are neutral |
Key Cases Cited
- Ford Motor Co. v. Montana Eighth Judicial Dist. Ct., 141 S. Ct. 1017 (2021) (clarifies "arise out of or relate to" can be satisfied without strict causation when forum contacts affiliate with the controversy)
- Walden v. Fiore, 571 U.S. 277 (2014) (minimum‑contacts inquiry focuses on defendant’s contacts with the forum state itself)
- Int’l Shoe Co. v. Washington, 326 U.S. 310 (1945) (foundation of minimum‑contacts due‑process test)
- Daimler AG v. Bauman, 571 U.S. 117 (2014) (general jurisdiction proper only where defendant is essentially at home)
- Axiom Foods, Inc. v. Acerchem Int’l, Inc., 874 F.3d 1064 (9th Cir. 2017) (three‑part test for specific jurisdiction under Ninth Circuit precedent)
- Ayla, LLC v. Alya Skin Pty. Ltd., 11 F.4th 972 (9th Cir. 2021) (plaintiff bears burden on purposeful‑direction and relatedness prongs)
- Yahoo! Inc. v. La Ligue Contre Le Racisme Et L’Antisemitisme, 433 F.3d 1199 (9th Cir. 2006) (cease‑and‑desist letters generally insufficient alone for jurisdiction; enforcement plus effects can support jurisdiction)
- Avocent Huntsville Corp. v. Aten Int’l Co., 552 F.3d 1324 (Fed. Cir. 2008) (patent DJ cases often focus on patentee’s enforcement activities for jurisdictional relatedness)
- Radio Sys. Corp. v. Accession, Inc., 638 F.3d 785 (Fed. Cir. 2011) (patent DJ decision limiting relevant contacts to enforcement‑related acts)
- AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (trademark‑infringement likelihood‑of‑confusion factors emphasizing use and consumer perceptions)