152 F. Supp. 3d 1027
N.D. Ohio2015Background
- Plaintiff Symbolstix owns a copyrighted library of pictogram stick-figure symbols used in speech therapy and alleges exclusive rights to reproduce, create derivative works, and distribute the Library.
- Defendant Smarty Ears, a Texas LLC, develops apps sold exclusively through Apple’s App Store that use stick-figure symbols; Smarty Ears sold apps accessible to Ohio residents and derived some revenue from Ohio sales.
- In 2011 Smarty Ears (through Barbara Fernandes) purchased a one-year non‑commercial subscription to Symbolstix’s Library; the license expired and Symbolstix alleges defendants thereafter used Library images to create Smarty Symbols and apps.
- Smarty Ears cultivated multi‑year relationships with two Columbus, Ohio speech therapists (Jenna Rayburn and Julie Vogt): providing free apps, raffles, reviews, an advisory board role, and a license to use symbols to promote Smarty Symbols.
- Procedurally, Symbolstix filed suit in the Northern District of Ohio for copyright infringement; defendants moved to dismiss for lack of personal jurisdiction (and alternatively to transfer venue). The court permitted jurisdictional discovery before ruling.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Personal jurisdiction over Fernandes | Fernandes supervised and participated in alleged infringement; she is a controlling member | Fernandes has no Ohio contacts, acted only in corporate capacity, never visited or conducted business in Ohio | Dismissed for lack of personal jurisdiction (fiduciary‑shield; no Ohio contacts) |
| Personal jurisdiction over Smarty Ears | Smarty Ears transacts business in Ohio via App Store sales, targeted Ohio through relationships with Rayburn and Vogt, and derived revenue from Ohio sales | Sales through App Store are random/fortuitous; no targeted Ohio solicitation, no Ohio offices or employees | Denied motion to dismiss; specific jurisdiction exists based on purposeful contacts with Ohio via deliberate, continuing relationships |
| General jurisdiction over Smarty Ears | N/A (plaintiff relied on specific contacts) | Smarty Ears lacks continuous and systematic contacts in Ohio (no offices, agents, bank accounts, regular travel) | No general jurisdiction (contacts not continuous/systematic) |
| Venue in Northern District of Ohio | Northern District is proper because defendant is subject to personal jurisdiction there and many witnesses reside in that district | Transfer to Texas or Southern District of Ohio requested for convenience | Venue denied to transfer; Northern District of Ohio is appropriate under copyright venue rules |
Key Cases Cited
- Int'l Shoe Co. v. Washington, 326 U.S. 310 (U.S. 1945) (establishes minimum contacts/due process test for personal jurisdiction)
- Burger King Corp. v. Rudzewicz, 471 U.S. 462 (U.S. 1985) (purposeful availment and reasonableness factors for specific jurisdiction)
- CompuServe, Inc. v. Patterson, 89 F.3d 1257 (6th Cir. 1996) (long‑arm statute interpreted to extend to constitutional due process limits)
- Serras v. First Tennessee Bank Nat. Ass'n, 875 F.2d 1212 (6th Cir. 1989) (plaintiff’s burden in prima facie jurisdiction showing on pretrial record)
- Goldstein v. Christiansen, 70 Ohio St.3d 232 (Ohio 1994) (interpretation of Ohio’s “transacting any business” for long‑arm statute)
- Milliken v. Meyer, 311 U.S. 457 (U.S. 1940) (basic due process principles referenced for jurisdictional fairness)