Patent poetry: a t-shirt and shorts: a brand story | AEON Law
Is one sale enough?
Circuit Courts Vary
Where can you sue for trademark infringement?
Two recent cases involving leisurewear show that it depends on the circuit you are in.
The first case is Brothers and Sisters in Christ, LLC c. Zazzle, Inc..
Brothers and Sisters in Christ, LLC (BASIC) alleged that Zazzle sold a t-shirt that infringed BASIC’s federal trademark for the phrase “love is coming”. The district court granted Zazzle’s motion to dismiss for lack of personal jurisdiction, and on 8e Route confirmed.
BASIC, a Missouri company, alleged that in 2019, Zazzle sold a shirt with a “love happens” logo to at least one Missouri resident and shipped the shirt to that Missouri resident. BASIC also alleged that Zazzle “uses a webpage, accessible to people in Missouri and elsewhere, to advertise its products, including trademark-infringing products, and to sell and transact for the products. infringing the trademark”.
Zazzle filed a motion to dismiss asserting that the facts did not establish that Zazzle was subject to the personal jurisdiction of Missouri. Zazzle has also provided undisputed evidence that the single identified purchase of a “love is coming” t-shirt by a Missouri resident was made by someone affiliated with BASIC.
The Circuit Court considered whether the exercise of jurisdiction over Zazzle would be appropriate under the Due Process Clause of the United States Constitution:
It is essential to the due process analysis that the defendant’s conduct and ties to the forum state are such that he should reasonably expect to be dragged there before the court….
General jurisdiction exists where a defendant is “essentially at home” in the forum state, while specific jurisdiction “covers defendants less intimately connected with a state, but only with respect to a narrower category of claims” , namely those which “originate from or relate to the defendant’s contacts with the forum.
In determining whether specific jurisdiction exists, a court must consider five factors:
1. the nature and quality of [defendant’s] contacts with the forum state;
2. the amount of such contacts;
3. the relationship between the cause of action and the contacts;
4. the interest of the forum state in providing a forum for its residents; and
5. convenience of the parties.
The first three factors are “of primary importance” and the “fourth and fifth factors are of lesser weight”.
Zazzle admitted to selling numerous goods to consumers in Missouri, and BASIC claimed that was enough to warrant jurisdiction.
However, as the court noted, “specific jurisdiction must rest on the litigation-specific defendant’s conduct in the proposed forum state” – i.e. the sale of the specific t-shirt at issue.
“What that leaves us then,” the court said, “is a single lawsuit-related contact with Missouri. The Supreme Court “strongly suggested that a single sale of a product in one state does not constitute a adequate basis for asserting jurisdiction over an out-of-state defendant”.
On the other hand, in NBA Properties, Inc. vs. HANWJH the 7the Circuit held that the sale of a single pair of shorts in Illinois was sufficient to establish personal jurisdiction.
The NBA sued HANWJH, a China-based online retailer, for allegedly infringing NBA trademarks by selling counterfeit products through its online stores.
HANWJH requested that the complaint be dismissed for lack of personal jurisdiction. The district court denied the motion and the circuit court upheld.
An NBA investigator accessed HANWJH’s online Amazon store and purchased shorts, pointing to a shipping address in Illinois. The NBA alleged no contact between HANWJH and Illinois other than the one-time sale to its investigator and the accessibility of HANWJH’s online store from Illinois.
This time, the district court cited a three-part standard of competence:
First, the defendant must have minimal contact with the forum state. In determining whether the defendant has such contacts, the court must consider whether the defendant should reasonably expect to be sued in the forum state for deliberately availing itself of the privilege of conducting activities. Second, the plaintiff’s claims must result from the defendant’s contacts with the forum. Third and finally, the continuation of the prosecution must not undermine traditional notions of fair play and substantive justice.
The district court found that these conditions were met with respect to HANWJH:
specific personal competence on an online retailer is not established simply because the retailer’s website is available in the forum, but rather it is necessary that the retailer`s[and] ready and willing to do business with” forum residents, and then “knowingly…do business with” those residents.
This test was satisfied, according to the district court, by the fact that HANWJH “admits[ted] that he both offered to ship and actually shipped products to Illinois.