Namu Inc. v. Namu Haight LLC, 3:16-cv-00453

Background

Plaintiff Namu, Inc. (Portland) operates three Korean BBQ food carts using the name "Namu" and the domain namufoodcart.com; Defendants David Lee and Namu Haight LLC operate restaurants/food stand in San Francisco under "Namu"/"Namu Gaji" and own federal trademark registrations.
Defendants sent a January 2016 cease-and-desist letter asserting trademark rights and demanding Plaintiff stop using "namu" and transfer the URL.
Plaintiff responded disputing Defendants' rights and continued using the mark in Portland. Plaintiff then filed this declaratory-judgment action in March 2016 seeking a declaration of no infringement and invalidity of Defendants' mark and an Oregon UDAP claim.
Parties continued settlement discussions; in July 2016 Defendants (David Lee and related entities) executed a broad Covenant Not To Sue covering Plaintiff's current, past, and reasonably geographically proximate use of "namu" in Portland and the namufoodcart.com domain.
Plaintiff refused to dismiss despite the Covenant; Defendants moved to dismiss for lack of subject-matter jurisdiction (mootness) and lack of personal jurisdiction. The magistrate judge recommends granting the motion on both grounds.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether the case is moot given Defendants' Covenant Not To Sue	Covenant is not geographically broad enough to moot the dispute; may not cover future expansion	Covenant unconditionally and irrevocably bars claims related to Plaintiff's current/previous use in Portland and reasonable local expansion, so no live controversy remains	Moot: Covenant eliminates an actual controversy as to Plaintiff's Portland use; subject-matter jurisdiction lacking
Whether Oregon courts have specific personal jurisdiction over Defendants	Cease-and-desist letter and negotiations were directed at Plaintiff in Oregon and caused immediate harm (rebranding costs, domain changes, lost revenue), so jurisdiction exists	Single cease-and-desist letter and limited negotiations do not constitute purposeful availment or purposeful direction to Oregon	Personal jurisdiction lacking: cease-and-desist letter alone (and limited follow-up) insufficient to establish specific jurisdiction

Key Cases Cited

St. Clair v. City of Chico, 880 F.2d 199 (9th Cir. 1989) (courts may consider affidavits/evidence on 12(b)(1) attacks on jurisdiction)
Kokkonen v. Guardian Life Ins. Co. of Am., 511 U.S. 375 (1994) (party asserting jurisdiction bears burden)
Rhoades v. Avon Prods., Inc., 504 F.3d 1151 (9th Cir. 2007) (court accepts plaintiff's factual version at jurisdictional stage absent contrary evidence)
Timbisha Shoshone Tribe v. U.S. Dep't of Interior, 824 F.3d 807 (9th Cir. 2016) ( declaratory-judgment mootness requires substantial controversy of sufficient immediacy and reality)
Already, LLC v. Nike, Inc., 133 S. Ct. 721 (2013) (voluntary cessation/covenant to sue standard: defendant must show wrongful behavior is unlikely to recur)
Friends of the Earth, Inc. v. Laidlaw Envtl. Servs., 528 U.S. 167 (2000) (defendant bears heavy burden to show that unlawful behavior cannot reasonably be expected to recur)
Calder v. Jones, 465 U.S. 783 (1984) ("effects" test for purposeful direction: intentional act expressly aimed at forum causing foreseeable forum harm)
Yahoo! Inc. v. La Ligue Contre Le Racisme Et L'Antisemitisme, 433 F.3d 1199 (9th Cir. 2006) (discussing Calder effects test)
Boschetto v. Hansing, 539 F.3d 1011 (9th Cir. 2008) (plaintiff must make prima facie showing of jurisdictional facts when court relies on written materials)
Burger King Corp. v. Rudzewicz, 471 U.S. 462 (1985) (reasonableness factors and burden-shifting in specific jurisdiction analysis)
Gator.com Corp. v. L.L. Bean, Inc., 398 F.3d 1125 (9th Cir. 2005) (declaratory-judgment standing requires substantial controversy of sufficient immediacy and reality)