Kindig It Design, Inc. v. Creative Controls, Inc.
157 F. Supp. 3d 1167
D. Utah2016Background
- Kindig-It Design sues Creative Controls, Inc. (MI) and others alleging copyright and patent infringement and related claims.
- Creative Controls is a Michigan corporation with no Utah presence, no registered Utah status, and no Utah property, employees, or bank accounts.
- The court analyzes personal jurisdiction, venue, and Rule 12(b)(6) motions; hearing held Sept. 24, 2015 with supplemental briefs filed Oct. 12, 2015.
- Alleged Utah contacts: an interactive website, a donated parking brake sent to Utah, a single Utah sale arranged by Kindig, and copying of photographs from Kindig’s Utah site.
- Zippo sliding-scale framework found unpersuasive; Federal Circuit law governs patent claims, Tenth Circuit law governs non-patent claims; no general jurisdiction exists.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the court has specific jurisdiction over Creative Controls for patent claims | Kindig asserts purposeful online presence targets Utah for patent products. | Creative Controls did not offer to sell to Utah residents nor target Utah; minimal contacts. | Lacks specific jurisdiction for patent claims. |
| Whether the court has specific jurisdiction over non-patent claims arising from copying photographs | Website copying photographs creates Utah-related contacts supporting jurisdiction. | No sufficient Utah-directed activity; copying alone does not establish jurisdiction absent targeted acts. | Court has specific jurisdiction for Copyright-Related Claims. |
| Whether pendent personal jurisdiction applies to other claims | If some claims have jurisdiction, others related should too via pendent jurisdiction. | Pendent jurisdiction requires related nucleus of operative fact; claims here are unrelated. | No pendent personal jurisdiction. |
| Whether venue is proper and transfer is warranted | Venue should align with where jurisdiction exists for Copyright-Related Claims. | Utah is improper due to lack of jurisdiction over patent claims and transfer concerns. | Venue proper for Copyright-Related Claims; no transfer required. |
| Whether Kindig stated a claim under Rule 12(b)(6) for the Copyright-Related Claims | Photographs on Creative Controls’ site infringe copyrights and related conduct is actionable. | Disputes over identification and validity of copyrights; some claims may be preempted. | Kindig pleaded copyright infringement, false advertising, and related claims; fraud claim rejected; others remained viable. |
Key Cases Cited
- Avocent Huntsville Corp. v. Aten Int'l Co., 552 F.3d 1324 (Fed. Cir. 2008) (test for specific personal jurisdiction on patent claims)
- 3D Sys., Inc. v. Aarotech Labs., Inc., 160 F.3d 1373 (Fed. Cir. 1998) (controls choice of law for due-process analysis in patent context)
- Shrader v. Biddinger, 633 F.3d 1235 (10th Cir. 2011) (long-arm jurisdictional analysis and burden on plaintiff)
- World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286 (U.S. 1980) (due process limits on jurisdiction based on forum contacts)
- Asahi Metal Indus. Co. v. Super. Ct. of Cal., 480 U.S. 102 (U.S. 1987) (purposeful availment and stream of commerce considerations)
- Rotec Indus., Inc. v. Mitsubishi Corp., 215 F.3d 1246 (Fed. Cir. 2000) (definition of offer to sell in patent contexts)
- MEMC Elec. Materials, Inc. v. Mitsubishi Materials Silicon Corp., 420 F.3d 1369 (Fed. Cir. 2005) (broad interpretation of 'offer to sell' under patent law)
- ESAB Grp., Inc. v. Centricut, LLC, 34 F. Supp. 2d 323 (D.S.C. 1999) (illustrative discussions of offers to sell in patent context)