NBA Properties, Incorporated v. HANWJH
46 F.4th 614
| 7th Cir. | 2022Background
- NBA Properties sued HANWJH (a China-based Amazon seller) under the Lanham Act for selling counterfeit NBA-branded shorts via Amazon.
- An NBA investigator purchased one pair from HANWJH’s Amazon store and had it shipped to an Illinois address; plaintiffs allege 205 infringing listings.
- HANWJH asserted it had no other contacts with Illinois (no offices, employees, bank accounts, or other sales) and moved to dismiss for lack of personal jurisdiction.
- The district court denied the motion, entered default after HANWJH failed to answer, and later entered final judgment; HANWJH appealed.
- The Seventh Circuit affirmed, holding that HANWJH purposefully directed commercial activity at Illinois by offering and shipping goods there and that exercising specific jurisdiction comported with due process.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Illinois courts have specific personal jurisdiction over HANWJH | HANWJH purposefully directed activities at Illinois by listing products on Amazon, offering to ship to Illinois, and shipping an infringing product there | Single purchase by plaintiff’s agent cannot create jurisdiction; website accessibility alone is insufficient; exercising jurisdiction would offend fair play | Held: Specific jurisdiction exists — HANWJH purposefully directed sales to Illinois by structuring its online store to ship there and by shipping the product to Illinois |
| Whether the suit "arises out of or relates to" HANWJH’s forum contacts | The Lanham Act claims (likelihood of confusion) are related to the listing and sale of the infringing product shipped to Illinois | The purchase was plaintiff-initiated and therefore unrelated to alleged consumer confusion in Illinois | Held: Relatedness satisfied — listing and sale to Illinois are sufficiently connected to trademark claims (likelihood of confusion) |
| Whether asserting jurisdiction would offend fair play and substantial justice | Illinois has an interest in protecting its consumers and NBA has interest in protecting its marks in Illinois; burden on HANWJH is not compelling | HANWJH is a foreign defendant with only a single documented Illinois sale; defending in Illinois is burdensome and inefficient | Held: Traditional notions of fair play are not offended — HANWJH structured its business to serve Illinois consumers, and no compelling hardship shown |
Key Cases Cited
- Curry v. Revolution Laboratories, LLC, 949 F.3d 385 (7th Cir. 2020) (online offers, confirmations, and shipments can establish specific jurisdiction)
- Illinois v. Hemi Group LLC, 622 F.3d 754 (7th Cir. 2010) (online retailer that elected to sell to 49 states and shipped to Illinois was subject to jurisdiction)
- uBID, Inc. v. GoDaddy Grp., Inc., 623 F.3d 421 (7th Cir. 2010) (deliberate exploitation of forum market via website supports jurisdiction)
- Matlin v. Spin Master Corp., 921 F.3d 701 (7th Cir. 2019) (single plaintiff-generated post-filing purchase insufficient where contact unrelated to suit)
- Burger King Corp. v. Rudzewicz, 471 U.S. 462 (1985) (framework for purposeful availment and fair play/substantial justice)
- Int’l Shoe Co. v. Washington, 326 U.S. 310 (1945) (minimum contacts due process foundation)
- Walden v. Fiore, 571 U.S. 277 (2014) (focus on defendant’s forum contacts, not plaintiff’s)
- Ford Motor Co. v. Montana Eighth Judicial District Court, 141 S. Ct. 1017 (2021) ("arise out of or relate to" allows relatedness without strict causal showing)