975 F. Supp. 2d 993
E.D. Mo.2013Background
- N.C.C. Motorsports (Missouri corporation) owns a copyrighted design for a promotional "Big Cart"; copyright assigned to plaintiff in 2012 but registered in 1986. Plaintiff leased a Big Cart to K-VA-T Food Stores (Virginia corporation) under a contract containing a Missouri choice-of-law provision and a clause acknowledging plaintiff’s copyright. Payments under the lease were deposited in Missouri.
- K-VA-T later had a third party build a Food City Shopping Cart (FCS Cart) in Virginia, terminated the lease, and used the FCS Cart at promotional events (auto races) outside Missouri.
- Plaintiff sued in the Eastern District of Missouri for copyright infringement, alleging Defendant’s FCS Cart infringes plaintiff’s registered design and caused harm in Missouri.
- Defendant moved to dismiss for lack of personal jurisdiction, arguing (inter alia) the lease does not establish jurisdiction, the allegedly infringing acts occurred outside Missouri, and its website is passive and not directed at Missouri.
- The court treated plaintiff’s allegations as true for jurisdictional purposes, analyzed Missouri’s long-arm statute and due process (minimum contacts/Calder effects test and Internet-contact principles), and ultimately dismissed the complaint without prejudice for lack of personal jurisdiction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Missouri long-arm contract prong applies | Lease was made in Missouri; payments were deposited in Missouri | Lease was formed/executed in Virginia; choice-of-law ≠ forum consent | Contract prong not satisfied—plaintiff failed to show lease was made in Missouri |
| Whether Missouri long-arm tort prong applies (extraterritorial acts causing consequences in Missouri) | Infringement caused economic harm to Missouri copyright holder, supporting tort prong | Infringement occurred outside Missouri; harm not sufficiently connected to Missouri | Tort prong could apply in theory, but this alone is not enough without due process contacts |
| Whether defendant’s actions satisfy due process / Calder effects test | Defendant intentionally infringed and knew harm would be felt by Missouri plaintiff; website and nationwide promotion reach Missouri | Defendant didn’t expressly aim conduct at Missouri; no Missouri sales or in-state displays; website passive | Calder’s first and third factors met (intent, harm felt), but plaintiff failed to show express aiming at Missouri; specific jurisdiction not established |
| Whether defendant’s website and promotional use support specific jurisdiction (Internet contacts) | Website displays FCS Cart nationwide including to Missourians; promotional use targeted nationwide | Website is passive (no sales or interactivity); no evidence of targeting Missouri or Missouri users | Website is passive under Zippo framework; internet contacts insufficient to confer personal jurisdiction |
Key Cases Cited
- Miller v. Nippon Carbon Co., Ltd., 528 F.3d 1087 (8th Cir. 2008) (prima facie showing of jurisdiction required to defeat 12(b)(2))
- Dairy Farmers of Am. v. Bassett & Walker Int’l, Inc., 702 F.3d 472 (8th Cir. 2012) (Missouri long-arm construed to the limits of due process)
- Omni Capital Int’l, Ltd. v. Rudolf Wolff & Co., Ltd., 484 U.S. 97 (U.S. 1987) (federal-question jurisdiction does not eliminate the need to meet state personal-jurisdiction rules)
- World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286 (U.S. 1980) (minimum contacts and foreseeability principles for due process)
- Burger King Corp. v. Rudzewicz, 471 U.S. 462 (U.S. 1985) (purposeful availment and contractual contacts analysis)
- Calder v. Jones, 465 U.S. 783 (U.S. 1984) (effects test for intentional torts directed at the forum)
- Lakin v. Prudential Sec., Inc., 348 F.3d 704 (8th Cir. 2003) (specific jurisdiction and purposeful direction analysis)
- Pangaea, Inc. v. Flying Burrito, LLC, 647 F.3d 741 (8th Cir. 2011) (website accessibility alone insufficient for jurisdiction)
- Johnson v. Arden, 614 F.3d 785 (8th Cir. 2010) (Calder test applied narrowly; passive websites insufficient)
- AFTG-TG, L.L.C. v. Nuvoton Tech. Corp., 689 F.3d 1358 (8th Cir. 2012) (quantity of sales/contacts in forum relevant to jurisdiction)