Ham v. La Cienega Music Co. ( 1993 )

  •                                   United States Court of Appeals,
                                                Fifth Circuit.
                                                No. 93-2253
                                            Summary Calendar.
                       Bill HAM d/b/a Hamstein Music Company, Plaintiff-Appellant,
                    LA CIENEGA MUSIC COMPANY, et al., Defendants-Appellees.
                                               Oct. 19, 1993.
    Appeal from the United States District Court for the Southern District of Texas.
    Before POLITZ, Chief Judge, HIGGINBOTHAM and DeMOSS, Circuit Judges.
           POLITZ, Chief Judge:
           Bill Ham appeals the dismissal for lack of personal jurisdiction of his copyright declaratory
    judgment action against Bernard Besman and Besman's company, La Cienega Music. We affirm.
           In 1948 and 1950 Besman and John Lee Hooker wrote a song entitled "Boogie Chillen" and
    a derivative work entitled "Boogie Chillen No. 2." In 1970, Hooker recorded and released a second
    derivative with the musical group Canned Heat. Besman registered the three works with the United
    States Copyright Office and, through La Cienega, holds the copyrights. In 1973 Billy Gibbons, Joe
    Hill, and Frank Beard—popularly known as the rock band ZZ Top—authored a song entitled "La
    Grange" and registered it as an unpublished work. That song appeared on ZZ Top's 1973 hit album
    "Tres Hombres." Ham, doing business as Hamstein Music Company, acquired the rights to "La
    Grange" in 1973.
           On July 8, 1991, Besman wrote Ham claiming that "La Grange" infringed the copyrights on
    "Boogie Chillen" and its derivatives. Ham denied any infringement and, alternatively, asserted various
    defenses. After an exchange of conflicting expert musicology reports, on April 27, 1992 Ham filed
    the instant declaratory judgment action.1 Besman moved to dismiss for lack of personal jurisdiction.
    In support of jurisdiction, Ham pointed to Besman's exploitation of his rights in "Boogie Chillen"
    nationwide, and the exploitation in Texas through an affiliation agreement with Broadcast Music, Inc.
    (BMI),2 the sale of recordings, and the mailing of the 1991 demand letter.               Adopting the
    recommendation of a magistrate judge, the district court granted Besman's motion; Ham timely
               On appeal Ham faults the district court's personal jurisdiction ruling. Absent any dispute as
    to the relevant facts, we review such determinations de novo.3 Plaintiffs typically carry the burden
    of proof on personal jurisdiction by making a prima facie showing. The district court usually resolves
    the jurisdictional issue without conducting a hearing.4
               A two-step analysis governs the inquiry into personal jurisdiction over nonresident
    defendants. Absent a controlling federal statute regarding service of process, we first determine
    whether the long arm statute of the forum state permits exercise of jurisdiction. We then determine
    whether such exercise comports with due process.5 Because the Texas Supreme Court has
    interpreted the Texas long arm provisions6 as conferring personal jurisdiction over nonresidents
        On June 10, 1992 Besman filed suit against Ham in federal court in California asserting an
    identical claim. After denying Ham's motion to transfer that action to Texas, that court dismissed
    the complaint for failure to state a claim upon which relief could be granted. That ruling is
    pending appeal before the Ninth Circuit Court of Appeals.
        BMI operates as a non-profit performing rights society, obtaining exclusive public
    performance rights to songs and, in turn, licensing them on a non-exclusive basis to radio stations
    and other users throughout the United States. Each use of a work from the BMI catalog
    generates a royalty, which BMI passes on to the copyright owner, net of expenses.
           E.g., Bullion v. Gillespie, 
    895 F.2d 213
     (5th Cir.1990).
       Irving v. Owens-Corning Fiberglas Corp., 
    864 F.2d 383
     (5th Cir.), cert. denied sub nom.
    Jugometal Enterprise for Import and Export of Ores and Metals v. Irving, 
    493 U.S. 823
    110 S. Ct. 83
    107 L. Ed. 2d 49
           E.g., Fed.R.Civ.P. 4(e), (f); Aviles v. Kunkle, 
    978 F.2d 201
     (5th Cir.1992).
           Tex.Civ.Prac. & Rem. Code §§ 17.041-045.
    whenever consistent with constitutional due process,7 we need now answer only the latter inquiry.
    Due process requires that (1) the defendant have established "minimum contacts" with the forum
    state; and (2) the exercise of personal jurisdiction does not offend "traditional notions of fair play and
    substantial justice."8
             A defendant has the minimum contacts required by due process where his purposeful
    activities directed at the forum state have invoked the benefits of that state's laws, so that he
    reasonably could anticipate being hauled into court there.9 Purposeful forum-directed activity—even
    if only a single substantial act—may permit the exercise of specific jurisdiction in an action arising
    from or related to such acts. 10 Ham relies heavily on our cases recognizing that placement of
    products into the stream of commerce may satisfy the minimum contacts prong of the due process
    analysis.11 We find those cases distinguishable from the case at bar.
            Clearly, through his affiliation agreement with BMI and distribution of recordings, Besman
    and La Cienega sought to exploit "Boogie Chillen" and its derivatives on the broadest possible
    geographical basis. Ham presented evidence that these efforts have borne fruit in Texas. Besman's
        E.g., Schlobohm v. Schapiro, 
    784 S.W.2d 355
    , 357 (Tex.1990); see also, e.g., Command-
    Aire Corp. v. Ontario Mechanical Sales & Serv., Inc., 
    963 F.2d 90
     (5th Cir.1992).
       Asahi Metal Indus. v. Superior Court, 
    480 U.S. 102
    107 S. Ct. 1026
    94 L. Ed. 2d 92
    Burger King Corp. v. Rudzewicz, 
    471 U.S. 462
    105 S. Ct. 2174
    85 L. Ed. 2d 528
       E.g., Burger King; World-Wide Volkswagen Corp. v. Woodson, 
    444 U.S. 286
    100 S. Ct. 559
    62 L. Ed. 2d 490
     (1980); Command-Aire.
         Burger King; Dalton v. R & W Marine, Inc., 
    897 F.2d 1359
     (5th Cir.1990). Continuous
    and systematic contacts by a defendant with the forum state will support personal jurisdiction
    even in an action not arising out of those contacts. Helicopteros Nacionales de Colombia, S.A. v.
    466 U.S. 408
    104 S. Ct. 1868
    80 L. Ed. 2d 404
     (1984) (citing Perkins v. Benguet Consol.
    Mining Co., 
    342 U.S. 437
    72 S. Ct. 413
    96 L. Ed. 485
     (1952)); Bearry v. Beech Aircraft Corp.,
    818 F.2d 390
     (5th Cir.1987). Ham does not suggest that the district court could exercise such
    general jurisdiction over Besman and La Cienega.
          E.g., Irving; Bean Dredging Corp. v. Dredge Technology Corp., 
    744 F.2d 1081
    Cir.1984); Oswalt v. Scripto, Inc., 
    616 F.2d 191
     (5th Cir.1980). In Asahi, four justices
    suggested that, without additional forum-directed conduct, the sweep of a defendant's product
    into a state by the stream of commerce could not alone constitute minimum contacts sufficient to
    support personal jurisdiction there. Asahi, 480 U.S. at 108-12, 107 S.Ct. at 1030-32 (O'Connor,
    J.) (plurality opinion). Absent rejection by a majority on the Supreme Court, we have continued
    to apply the stream of commerce analysis found in our pre-Asahi cases. Irving.
    activities connect him to Texas within the meaning of our stream of commerce cases.12 Ham,
    however, has demonstrated at best a highly attenuated relationship between the subject matter of the
    instant declaratory judgment action and distribution of music in Texas by Besman and La Cienega.
    Ham alleges no injury flowing from that distribution. Rather, resolution of this action depends solely
    upon whether "La Grange" infringed copyrights owned by Besman and La Cienega. Exploitation of
    the "Boogie Chillen" copyrights by the defendants in no way relates to the merits of that question.13
    Likewise, Besman's July 8 letter, although it forms the basis for Ham's allegations about the existence
    of a live controversy, in no way relates to the merits of the copyright question and thus does not
    support personal jurisdiction in Texas.14 We conclude that the instant action does not arise from
    contacts of Besman and La Cienega with Texas. Exercise of personal jurisdiction over them in the
    instant action would thus offend due process.15
            The judgment of the district court is AFFIRMED.
         Compare Bean (finding defendant amenable to suit in Louisiana where it manufactured
    castings in Washington and sold them as component parts to California concern which, in turn,
    sold its finished product to Louisiana manufacturer of dredging equipment which injured plaintiff;
    defendant did not (1) know purpose for which California company would use castings or that they
    would end up in Louisiana, (2) solicit work in Louisiana, (3) negotiate with Louisiana personnel
    in Washington, or (4) own property in Louisiana).
        We might reach a different result in an action asserting "Boogie Chillen" as infringing the
    copyright on another work.
         See Holt Oil & Gas Corp. v. Harvey, 
    801 F.2d 773
     (5th Cir.1986), cert. denied, 
    481 U.S. 1015
    107 S. Ct. 1892
    95 L. Ed. 2d 499
     (1987) (communication by defendant with plaintiff in
    forum state in course of contract negotiation and performance motivated by fortuity of plaintiff's
    location there does not support exercise of specific jurisdiction); Cascade Corp. v. Hiab-Foco
    619 F.2d 36
     (9th Cir.1980) (defendant did not, by sending demand letters alleging patent
    infringement to defendant in forum state, submit to personal jurisdiction there in declaratory
    judgment action).
         J. Stephen Scherer, Inc. v. Ltee, 
    845 F.2d 1033
     (Fed.Cir.1988) (unpublished opinion, text in
    WESTLAW); Publications Int'l, Ltd. v. Simon & Schuster, Inc., 
    763 F. Supp. 309
    In view of our resolution of the minimum contacts question, we need not determine whether
    exercise of personal jurisdiction here would comport with notions of fair play and substantial