Plaintiff Washington Shoe Co., a Washington corporation that has been manufacturing and selling shoes in Washington for more than 100 years, brought suit in Washington federal court against defendant A-Z Sporting Goods Inc., an Arkansas corporation that operates a single retail store in Arkansas, alleging willful copyright infringement, among other claims, based on defendant’s sale of children’s boots that allegedly infringed on plaintiff’s copyrighted boots. After allowing jurisdictional discovery on defendant’s claim that it had never sold any goods of any kind to any person or business in Washington, the district court granted defendant’s motion to dismiss for lack of personal jurisdiction, and plaintiff appealed. The Ninth Circuit reversed and remanded, finding that the Washington court had personal jurisdiction over the Arkansas corporation based on plaintiff’s allegations of willful infringement.
According to plaintiff’s complaint, Washington Shoe previously sold shoes to A-Z for a few years, during which time a Washington Shoe sales representative provided A-Z with brochures and catalogs containing plaintiff’s products and including copyright notifications. In 2009, Washington Shoe discovered that A-Z was selling two styles of children’s boots, knockoffs of Washington Shoe’s popular children’s rain boots that A-Z purchased from China, that allegedly infringed on Washington Shoe’s copyrighted styles. Washington Shoe sent A-Z a cease-and-desist letter informing A-Z that its boot designs were copyrighted and that A-Z’s boots infringed that copyright, and demanding that A-Z stop selling the infringing boots and provide Washington Shoe with an accounting of past sales. After Washington Shoe sent a second cease-and-desist letter, A-Z stopped selling the allegedly infringing boots in its store and sold its remaining inventory to an out-of-state thrift store.
On appeal, the Ninth Circuit applied the three-part due process test from the United States Supreme Court’s decision in Int’l Shoe Co. v. Washington, 326 U.S. 310 (1945) to determine whether A-Z had sufficient minimum contacts with the state of Washington to allow the Washington federal court to exercise jurisdiction. Noting only the first prong of the test – whether the defendant either purposefully availed itself of the privilege of conducting activities in Washington or purposefully directed its activities at the state – the appellate court reversed and remanded the district court’s dismissal, finding that A-Z was subject to personal jurisdiction in Washington based on plaintiff’s claim that defendant had willfully violated Washington Shoe’s copyright.
The Ninth Circuit analyzed whether A-Z (1) committed an intentional act, (2) expressly aimed at the forum state, (3) causing harm that the defendant knows is likely to be suffered in the forum state, considering each element in turn. First, the court found that the willful copyright infringement that plaintiff alleged constituted an intentional act for jurisdictional purposes because A-Z bought the infringing boots from China, not Washington Shoe, and sold them in its retail store and later (after receiving the cease-and-desist letters) to the thrift store. “We have little difficulty finding that by intentionally engaging in the actual, physical acts of purchasing and selling the allegedly infringing boots, A-Z has clearly committed an ‘intentional act’ within the meaning of the Calder test.”
Second, the court found that defendant had expressly aimed its conduct at the state of Washington. According to the court, because the harm caused by an infringement of the copyright laws is felt at least at the place where the owner holds its copyright in the case of willful infringement – in which the defendant knowingly or with reckless disregard infringes on the copyright holder’s rights – the defendant directs the harm there as well. “Particularly in the case of a willful copyright infringement, the intentional act constituting the violation may occur solely within one state while the known impact of that copyright infringement is directed at another state.” Plaintiff alleged that A-Z had an ongoing relationship with Washington Shoe through which it received catalogs with the copyrighted boots. A-Z allegedly purchased the infringing boots from China and sold them in the same Arkansas store as the Washington Shoe footwear – acts that took place in Arkansas. At least as soon as A-Z received the cease-and-desist letters, it knew of plaintiff’s copyright and yet sold the remaining boots to a thrift store. Noting that if plaintiff’s allegations were true they would likely establish willful copyright infringement based on defendant’s actual awareness of its infringing activity, the court concluded that A-Z expressly aimed its intentional infringing conduct at the copyright held by Washington Shoe in the state of Washington. “We think that A-Z’s alleged willful infringement of Washington Shoe’s copyright, and its knowledge of both the existence of the copyright and the forum of the copyright holder, is sufficient ‘individualized targeting’ to establish the ‘something more’ necessary to satisfy the express aiming requirement.”
Finally, the court found that the economic loss caused by the intentional infringement of a copyright is foreseeable – both in Arkansas where the infringing conduct took place, and in Washington, where the copyright holder has its principal place of business. Because A-Z knew that its intentional acts would have an impact on Washington Shoe, and that Washington Shoe was headquartered in Washington, “A-Z knew or should have known that the impact of its willful infringement of Washington Shoe’s copyright would cause harm likely to be suffered in the forum. As a consequence, A-Z can ‘reasonably anticipate being haled into court’ in Washington.”