National Women's Political Caucus, Inc. v. Metropolitan Louisville Women's Political Caucus, Inc. ( 2019 )

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
NATIONAL WOMEN’S POLITICAL
CAUCUS, INC.,
Plaintiff,
Case No. 18-cv-1417 (CRC)
v.
METROPOLITAN LOUISVILLE
WOMEN’S POLITICAL CAUCUS, INC.,
Defendant.
MEMORANDUM OPINION AND ORDER
The National Women’s Political Caucus (“NWPC”) brings this trademark infringement
and unfair competition suit against Metropolitan Louisville Women’s Political Caucus
(“MLWPC”). MLWPC has moved to dismiss the case for lack of personal jurisdiction and
improper venue or, alternatively, to transfer the case to a more appropriate venue. For the
reasons that follow, the Court will deny all of MLWPC’s motions and retain jurisdiction over the
case.
I. Background
The Court here provides a brief factual overview to orient the personal jurisdiction and
venue analysis. Further details relevant to that analysis will be set forth later in the opinion.
Founded in 1971, NWPC is a multi-partisan, grassroots political organization that seeks
to increase women’s participation in politics. Compl. ¶ 6. A nonprofit corporation organized
under District of Columbia law, NWPC’s lone office and employee are located in the District.
Id. ¶ 1. In July 1971, NWPC began using in commerce the trademarks “National Women’s
Political Caucus,” “NWPC,” and an interlocking five-circle logo, intended to represent women
of different races working together toward a common purpose. Id. ¶¶ 8-11. In 2004, NWPC
began using in commerce a modernized version of the logo. Id. ¶ 12. NWPC contends that one
or the other of the two designs have been in continuous commercial use since 1971. It also
contends that it has acquired proper registration for these marks. See id. ¶¶ 18-23.
MLWPC was established in 1972 as a local chapter of NWPC. Id. ¶ 24. It is a nonprofit
corporation organized under Kentucky law and headquartered in Louisville, Kentucky. Id. ¶ 2.
NWPC says that it permitted MLWPC to use its marks so long as MLWPC remained a “local
chapter in good standing,” which requires the payment of membership dues to NWPC,
attendance at NWPC meetings, and compliance with NWPC’s bylaws, among other things. Id.
¶¶ 27-29.
In October 2016, however, NWPC “became concerned that MLWPC was violating
NWPC’s bylaws, including by endorsing male candidates for office and by failing to collect and
transmit membership dues to NWPC.” Id. ¶ 30. In December 2017, an NWPC attorney sent
MLWPC a demand letter that purported to revoke MLWPC’s permission to use any NWPC
mark. Id. ¶ 32. MLWPC refused to comply, even after NWPC repeated its demands. See id. ¶¶
33-36.
NWPC filed suit in June 2018. It brought claims for trademark infringement under 15
U.S.C. § 1114(1); trademark infringement, unfair competition, false designation of origin, and
trade name infringement under 15 U.S.C. § 1125(a); and common-law trademark infringement,
unfair competition, and unjust enrichment. MLWPC thereafter moved to dismiss the case for
lack of personal jurisdiction and improper venue or, alternatively, to transfer the case to
Kentucky, which it contends is a more appropriate venue. Those motions are now ripe for the
Court’s resolution.
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II. Legal Standards
A. Motion to Dismiss for Lack of Personal Jurisdiction
When a defendant moves to dismiss a lawsuit for lack of personal jurisdiction under
Federal Rule of Civil Procedure 12(b)(2), the “plaintiff bears the burden of making a prima facie
showing that the Court has personal jurisdiction over the defendant.” Bigelow v. Garrett, 299 F.
Supp. 3d 34, 40-41 (D.D.C. 2018) (citation omitted). To do so, the “plaintiff must provide
sufficient factual allegations, apart from mere conclusory assertions, to support the exercise of
personal jurisdiction over the defendant.” Howe v. Embassy of Italy, 68 F. Supp. 3d 26, 29
(D.D.C. 2014). In determining whether a plaintiff has met this burden, “the Court is not limited
to the four corners of the operative complaint, but rather may receive and weigh affidavits and
other relevant matter to assist in determining jurisdictional facts.” Xie v. Sklover & Co., LLC,
260 F. Supp. 3d 30, 37 (D.D.C. 2017) (internal quotations marks and citation omitted). “All
factual discrepancies, however, must be resolved in the plaintiff’s favor.” Bigelow, 299 F. Supp.
3d at 41.
B. Motion to Dismiss or Transfer for Improper Venue
Under Federal Rule of Civil Procedure 12(b)(3), a defendant may move to dismiss a suit
for improper venue. “In considering a Rule 12(b)(3) motion, the court accepts the plaintiff’s
well-pled factual allegations regarding venue as true, draws all reasonable inferences from those
allegations in the plaintiff’s favor, and resolves any factual conflicts in the plaintiff’s
favor.” Hunter v. Johanns, 517 F. Supp. 2d 340, 343 (D.D.C. 2007) (quoting Darby v. Dep’t of
Energy, 231 F. Supp. 2d 274, 276 (D.D.C. 2002)) (internal quotation marks omitted).
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III. Analysis
MLWPC moves to dismiss the case for lack of personal jurisdiction and improper venue.
The Court begins with the personal jurisdiction question.
A. Personal Jurisdiction
“There are two types of personal jurisdiction: ‘general or all-purpose jurisdiction, and
specific or case-linked jurisdiction.’” Xie, 260 F. Supp. 3d at 39 (quoting Goodyear Dunlop
Tires Operations, S.A. v. Brown, 564 U.S. 915, 919 (2011)). General jurisdiction exists where a
defendant is so “at home” in the forum state that they can be sued there for any reason, whether
related to the defendant’s activities in the forum or not. Goodyear, 546 U.S. at 919. Specific
jurisdiction, as its name implies, means that the defendant’s contacts with the state must be
tethered to the subject of the suit. Id. NWPC contends that the Court would have either form of
jurisdiction over MLWPC, though it offers a serious argument only in regard to the latter. The
Court will accordingly focus its analysis on that issue.
Determining whether the Court has personal jurisdiction over a nonresident defendant
like MLWPC turns, at first glance, on two questions: first, whether the D.C. long-arm statute
authorizes jurisdiction, see D.C. Code § 13-423, and second, whether the exercise of jurisdiction
comports with federal due process. Xie, 260 F. Supp. 3d at 39. But these two questions are
really one and the same: The D.C. long-arm statute, as most relevant here, authorizes the
exercise of jurisdiction over any defendant “transacting any business in the District of
Columbia,” D.C. Code § 13-423(a)(1), and this prong of the statute has been held to be
“coextensive with the due process clause,” Xie, 260 F. Supp. 3d at 39 (quoting Helmer v.
Doletskaya, 393 F.3d 201, 205 (D.C. Cir. 2004)).
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For the exercise of jurisdiction to be consistent with the due process clause, “it is
essential in each case that there be some act by which the defendant purposefully avails itself of
the privilege of conducting activities within the forum State, thus invoking the benefits and
protections of its laws.” Hanson v. Denckla, 357 U.S. 235, 253 (1958). “This ‘purposeful
availment’ requirement ensures that a defendant will not be haled into a jurisdiction solely as a
result of random, fortuitous, or attenuated contacts.” Burger King Corp. v. Rudzewicz, 471 U.S.
462, 475 (1985) (quotations omitted). But “where the defendant deliberately has engaged in
significant activities within a State, or has created continuing obligations between himself and
residents of the forum,” he has sought the “benefits and protections of the forum’s laws,” and it
is therefore “presumptively not unreasonable to require him to submit to the burdens of litigation
in that forum as well.” Id. at 475-76 (quotations omitted).
In addition to finding that the defendant purposefully availed itself of the forum state’s
benefits and protections, the Court must also conclude that “the assertion of personal jurisdiction
would comport with ‘fair play and substantial justice.’” Id. at 476 (quoting Int’l Shoe Co. v.
State of Wash., Office of Unemployment Comp. & Placement, 326 U.S. 310, 320 (1945)). This
inquiry requires courts to consider “relevant factors” beyond the burden on the defendant.
World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 292 (1980) (instructing courts to
consider factors like the forum state’s “interest in adjudicating the dispute,” “the plaintiff’s
interest in obtaining convenient and effective relief,” and the judiciary’s “interest in obtaining the
most efficient resolution of controversies”).
The Court will first address what turns out to be the most difficult question: whether
MLWPC’s contacts with, and activities in, the District of Columbia are sufficient to find that it
purposefully availed itself of the privilege of conducting business here. The Court will then
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consider the propriety of exercising jurisdiction—regardless of MLWPC’s contacts—in light of
the “fair play and substantial justice” factors. Finally, the Court will examine the case-specific
jurisdiction question, i.e. whether the contacts MLWPC has with the District are sufficiently
related to the subject of the suit for this Court to exercise jurisdiction over MLWPC.
Purposeful Availment. It is evident that MLWPC’s activities within the District of
Columbia are ample enough to constitute purposeful availment.
Chief among these activities is MLWPC’s decades-long practice of collecting and
sending membership dues to NWPC in D.C. See Pl’s Opp., Exs. E-F to Lent Decl. (documenting
several years’ of payments from MLWPC to NWPC). Several features of this practice are key to
the jurisdictional question. For one, MLWPC sought and received—from NWPC, while in
D.C.—permission to collect membership renewal fees. Pl’s Opp., Ex. L to Lent Decl. (1989
MLWPC meeting minutes reporting that its representative “did ask National while in
Washington if locals have the right to send out local renewal notices, which was affirmed”). For
another, it appears that both parties to the suit believed MLWPC was required to collect and
remit national member dues to NWPC in D.C. Though MLWPC now disputes that it was
obligated to collect NWPC dues from its members, exhibits submitted by NWPC tell a different
story. NWPC’s bylaws require local caucuses to “[c]ollect and forward to the national office on
a regular and timely basis . . . the national portion of any and all NWPC membership dues paid at
the state or local level.” Pl’s Opp., Ex. A to Lent Decl., at 4.1 MLWPC, at least for a time, acted
accordingly; in 1990, for instance, the bulk of an MLWPC member’s annual dues—$20 of $35—
1
The Court acknowledges that MLWPC disagrees with NWPC’s interpretation of the
bylaws, but at the motion to dismiss stage, all fact disputes must be resolved (and all permissible
inferences must be drawn) in a plaintiff’s favor.
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was set aside for NWPC. Id., Exs. J-K. to Lent Decl. Indeed, it was, at least in part, MLWPC’s
decision to stop collecting and forwarding national member dues that caused NWPC to threaten
to “de-credential” MLWPC and demand that it stop using NWPC marks. Id., Exs. CC-DD to
Lent Decl.
The record contains additional evidence of MLWPC and NWPC’s close and continuing
relationship. MLWPC’s own bylaws, for example, state that membership in the local caucus is
“open to all persons, 18 years or older, who subscribe to the principles of the National Women’s
Political Caucus,” and that the “goals of [MLWPC] shall be . . . [t]o encourage and support the
efforts of women who run for or are appointed to office, who support the goals of the National
Women’s Political Caucus.” Id., Ex. D to Lent Decl. This was more than just lip service;
internal discussions demonstrate that MLWPC took seriously its obligation to observe NWPC
protocol. See, e.g., Id., Ex. BB. to Lent Decl. (1991 MLWPC minutes reporting that NWPC’s
rule against endorsing male candidates made advocacy difficult in certain local races).2 The
bylaws also provide that if MLWPC were to dissolve, “its property [would] be distributed to the
state and or national Women’s Political Caucus.” Id., Ex. D. to Lent Decl. And finally, the very
subject of the suit—MLWPC’s allegedly infringing use of NWPC’s marks—stands as further
evidence of the parties’ ongoing relationship.
That is not all. NWPC has also provided evidence of significant interaction between
MLWPC members and NWPC. See Pl’s Opp. at 8-10. The exhibits attached to NWPC’s
opposition show that MLWPC routinely encouraged its members to attend NWPC conventions
2
As with the dues, MLWPC’s later failure to abide by the no-male-endorsement rule
played a part in NWPC’s decision to reprimand and eventually de-credential the local chapter.
Id., Exs CC-DD to Lent Decl.
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and seek leadership roles in NWPC. Id., Exs. O-R, V. They also show that MLWPC’s
leadership consistently communicated with NWPC leadership. Id., Exs O, T-V. While these
contacts are not as significant to the Court’s analysis as are the paying of dues and the agreement
to abide by NWPC’s rules—especially because they speak more to the actions of individual
MLWPC members rather than of the organization itself—they still counsel in favor of finding
personal jurisdiction.
So this is what we know: MLWPC regularly collected and sent dues to NWPC in D.C.; it
agreed to conduct itself according to NWPC’s rules and envisioned itself as furthering the goals
of NWPC, as reflected in its bylaws and through its use of NWPC’s marks; it encouraged its
members to participate in NWPC activities; and it maintained regular communication with
NWPC since its inception. Taken together, these are strong indicia that MLWPC maintained an
ongoing relationship with a D.C.-based entity, such that it purposefully availed itself of the
benefits and protections of D.C. law. It strikes the Court that these systematic and continuous
contacts with the District ought to make MLWPC amenable to a lawsuit here.
MLWPC’s efforts to challenge that intuition all come up short. As for the dues issue,
MLWPC makes three points: first, that it was not required to collect dues on behalf of NWPC;
second, that it merely gave local members the option to join the national organization; and third,
that it never paid NWPC out of its own coffers and only served as a “pass through” for its
members’ dues. See Def’s Reply at 6; Woodward Aff. ¶ 11-12. The trouble with the first two
arguments, however, is that they run counter to NWPC’s allegations and supporting exhibits—
which plausibly show that both NWPC and MLWPC, for at least some period of their
relationship, believed the local caucus was required to collect dues on behalf of the national
organization and that local members may have automatically paid national dues by joining the
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local organization. See supra 4. And, on a motion to dismiss, a plaintiff’s factual allegations
must be accepted as true unless they are “directly contradicted by an affidavit,” which here they
are not. Azamar v. Stern, 662 F. Supp. 2d 166, 171 (D.D.C. 2009) (citation omitted).
MLWPC’s third dues argument likewise fails, because it is unimportant for personal jurisdiction
purposes whether it was transmitting to D.C. the local group’s own money or that of its
individual members—what matters is that, in either case, MLWPC was in continuous contact
with the national organization in D.C.
As for MLWPC’s attempts to paint itself an independent actor, see Def’s Reply at 3, it is
true that the local organization has its own bylaws, but it is equally true that those bylaws reflect
the group’s close affiliation with NWPC. See supra 7; Pl’s Opp., Ex. D to Lent Decl. Evidence
of this relationship abounds throughout NWPC’s supporting exhibits: MLWPC understood it had
to abide by NWPC rules, the MLWPC mission statement tracks verbatim NWPC’s mission
statement, and the two organizations used the same five-circled design mark that is the subject of
this suit, compare id., Ex. A to Lent Decl. with Ex. D to Lent Decl. In light of all this,
MLWPC’s attempts to minimize its relationship with NWPC, at least at the motion to dismiss
stage, are unavailing.
The cases MLWPC cites do not alter the analysis. Hoping to lessen the import of
MLWPC’s affiliation with NWPC, it cites both Lapointe v. Van Note, No. CIV. 03-2128, 2004
WL 3609346, at *5 (D.D.C. Nov. 9, 2004) and Am. Ass’n of Cruise Passengers v. Cunard Line,
Ltd., 691 F. Supp. 379, 381 (D.D.C. 1987). But both cases involved far more attenuated contacts
than this one. In Lapointe, the court held that Earth Island Institute’s (“EII”) membership in the
media consortium Monitor—EII’s lone contact with the District of Columbia—did not provide a
basis for personal jurisdiction. 2004 WL 3609346, at *5. Missing from Lapointe, however, is
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anything like MLWPC’s solicitation, collection, and transmission of dues to a D.C.-based entity,
or the understanding that one organization would have to abide by the other’s rules and
regulations. Cunard, meanwhile, is even further afield. There, the defendant’s contacts with
D.C. “consist[ed] entirely of sporadic attendance at trade association meetings held in [D.C.]”
and limited communications with a national office in D.C. that had nothing to do with the
plaintiff. 691 F. Supp. at 381. Needless to say, there is a stark difference between membership
in a D.C. organization—replete with dues-paying obligations and conformity to rules and
regulations of a governing body—and “sporadic attendance at trade association meetings.”
In support of its argument that the collection and transmission of dues to NWPC does not
create a basis for personal jurisdiction in D.C., MLWPC urges the Court to consider COMSAT
Corp. v. Finshipyards S.A.M., 900 F. Supp. 515 (D.D.C. 1995). MLWPC cites COMSAT for
the proposition that “[p]erforming ‘administrative services’ on behalf of a Washington, D.C.
entity does not, standing alone, provide a basis for personal jurisdiction.” Def’s Reply at 7
(quoting COMSAT, 900 F. Supp. at 522). There are several problems with MLWPC’s reliance
on COMSAT. As an initial matter, even if the case did stand for the proposition MLWPC claims
it does, neither NWPC’s argument nor the Court’s conclusion is to the contrary; it is not the
transmission of dues to NWPC in D.C. standing alone that renders MLWPC subject to personal
jurisdiction in D.C., but instead all the various other contacts just described taken together.
What’s more, COMSAT is factually nowhere close to this case. There, a nonresident accounting
firm (defendant Finshipyards) acted as an intermediary between a D.C.-based
telecommunications firm (plaintiff COMSAT) and COMSAT’s customers in Zaire. COMSAT
would provide Finshipyards with invoices for its Zaire customers; Finshipyards would transmit
those invoices to the Zaire customers; those customers would provide payment to Finshipyards;
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and Finshipyards would then transfer the funds to a COMSAT bank account in New York City.
Id. The COMSAT court held that this was clearly insufficient to show “any desire of
Finshipyards to do business with COMSAT in Washington, D.C.,” id. at 523, and for good
reason: its only real “contact” with D.C. was receiving phone bills for COMSAT’s Zaire
customers “that reflected COMSAT’s Washington, D.C., address.”3 That fortuitous and
attenuated connection is nothing like MLWPC’s longstanding relationship with NWPC in the
District.
Perhaps recognizing the absence of helpful case law, MLWPC makes much of the fact
that “NWPC cites no case under which any court—much less a court in this jurisdiction—found
specific personal jurisdiction over an organization based solely on its ‘affiliation’ with or
membership in an in-state entity.” Def’s Reply at 4. But NWPC need not cite a case standing
for that proposition, because a holding in favor of NWPC does not depend on that proposition.
Far from finding personal jurisdiction based on the status of the relationship between MLWPC
and NWPC, it is the specific contours of that relationship—including MLWPC’s active efforts to
affiliate with NWPC, its collection and transmission of dues to NWPC in D.C., and the fact that
3
Here the Court must also note that MLWPC—intentionally or not—misreports the
analysis in COMSAT. MLWPC states, in relevant part, that “[t]his Court held that although the
accounting authority had ‘conduct[ed] business’ in the District of Columbia by billing for Zaire’s
communication service, this activity ‘was related to its supplying telecommunications service to
Zaire, not for the provision of any services to [the accounting authority] or receipt of services
from [the accounting authority].’” Def’s Reply at 7 (quoting COMSAT, 900 F. Supp. at 522
(alterations MLWPC’s)). But the court in fact said something very different. It said that
COMSAT—not the “accounting authority” (defendant Finshipyards)—conducted business in
D.C. by billing for Zaire’s telecommunications, but that those D.C. activities had nothing to do
with Finshipyards and thus could not provide a basis for personal jurisdiction in D.C. with
respect to Finshipyards. See COMSAT, 900 F. Supp. at 522 (“To be sure, COMSAT did
conduct business, including billing for Zaire’s telecommunications service, in the District of
Columbia.”)
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MLWPC had to conform to NWPC rules to retain its status as a local caucus—that expose
MLWPC to suit in the District.
And though no precise analog appears to exist, courts have suggested these sorts of
contacts create a basis for personal jurisdiction. In Burger King, for example, a Florida-based
franchisor sued a Michigan-based franchisee for breach of the franchise agreement and
trademark infringement. 471 U.S. at 468-69. Though the defendants resided in Michigan and
had hardly any physical ties to Florida, the Supreme Court concluded that a Florida court could
exercise personal jurisdiction over them because they had “deliberately reached out beyond
Michigan and negotiated with a Florida corporation for the purchase of a long-term franchise and
the manifold benefits that would derive from affiliation with a nationwide organization.” Id. at
479-80 (cleaned up). That affiliation “envisioned continuing and wide-reaching contacts with
Burger King in Florida,” including “long-term and exacting regulation of his business” by the
Florida headquarters and the regular payment of royalties to the same. Id. at 480. These
contacts—and the Florida choice-of-law provision in the franchise agreement—made it
“presumptively reasonable” that the nonresident defendants would be “called to account” in
Florida. Id. Many of the salient facts in Burger King are present here, including (1) a
nonresident defendant’s decision to reach out and establish a relationship with an entity in the
forum state, (2) an ongoing relationship requiring the defendant to conduct itself in accord with
the forum state entity’s specifications, and (3) payment from the defendant to the forum state
entity.
Granted, the Burger King analogy is not a perfect one. Here, there was no written
contract between the two entities, nor was MLWPC subject to “the national organization’s
exacting regulation of virtually every conceivable aspect of . . . operations.” Id. at 465 (emphasis
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added). To the contrary, MLWPC had wide latitude to chart its own course, and focused much
of its time and resources on supporting local candidates; that is the very point of local caucuses.
All the same, these distinctions are not enough to compel a different conclusion on the
personal jurisdiction question. Burger King made clear that the existence of a contract is not
dispositive in either direction. Id. at 478-79 (emphasizing that personal jurisdiction does not
“turn on mechanical tests” (citation and internal quotation marks omitted)). And even if Burger
King exercised a greater degree of control over its franchisees than NWPC did over MLWPC,
that does not mean the degree of control in Burger King must always exist to subject a local
affiliate to personal jurisdiction in a national organization’s home forum; such reasoning
confuses what was sufficient in one case with what is necessary in every other case. Courts have
had no trouble extending the principles embodied by Burger King to other types of relationships,
even when obvious factual differences obtain.4 In Hogar CREA, Inc. v. Hogar CREA Int’l of
Connecticut, Inc, to take one example, a Puerto Rican court exercised personal jurisdiction over
Massachusetts and Connecticut entities because they “voluntarily chose to affiliate with an
existing Puerto Rico organization, rather than form an independent local entity,” thereby
“creat[ing] long-term relationships with [Puerto Rico]” and “voluntarily submitt[ing] to
4
Moreover, it’s not as if every factual distinction that exists between Burger King and
this case shows that the former presented a comparatively stronger basis for personal jurisdiction.
One example pointing in the opposite direction: the franchisee-defendants in Burger King were
subject to “supervision emanating from Burger King’s district office in [Michigan],” which the
court of appeals and the dissent believed in effect severed the tie to Florida. Here, by contrast,
MLWPC cannot and does not argue that its relationship with some more local entity, for instance
the Kentucky Women’s Political Caucus, caused it to “believe that [its] working relationship
with [the national organization] began and ended in” Kentucky. See Burger King, 471 U.S. at
489 (Stevens, J., dissenting).
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regulation and oversight from entities in Puerto Rico.” 708 F. Supp. 2d 158, 172-73 (D.P.R.
2009). In so holding, the court leaned heavily on Burger King, despite acknowledging that it
was unclear whether the plaintiff and defendants entered into a contract and that the defendants
were subject to “more limited” regulations than the franchisee in Burger King. Id. at 171.
Just so here. MLWPC voluntarily chose to affiliate with NWPC, thereby creating an
ongoing relationship between the two entities. The fact MLWPC was obligated—according to
NWPC’s allegations, which the Court must take as true for the purposes of this motion—to remit
membership dues to the national organization in D.C., all while abiding by NWPC’s rules, using
NWPC’s marks, and encouraging its members to attend and participate in NWPC events,
suggests MLWPC “reach[ed] out beyond one state and create[d] continuing relationships and
obligations with citizens of another state,” namely D.C. Travelers Health Ass’n v. Com. of Va.
ex rel. State Corp. Comm’n, 339 U.S. 643, 647 (1950). That is a quintessential act of purposeful
availment. Burger King, 471 U.S. at 476 (citing Travelers for the proposition that “continuing
obligations” is indicative of purposeful availment).
Fair Play and Substantial Justice Factors. MLWPC devotes little space in its
submissions to the argument that, even if the Court were to find that MLWPC purposefully
availed itself of the privilege of conducting business in D.C., it would nevertheless be gravely
unfair to subject it to suit there. It appears MLWPC believed that the battle has likely been lost if
the fight reached this front—and they are correct. None of the factors courts typically consider
suggest exercising jurisdiction over MLWPC would offend “our traditional conception of fair
play and substantial justice.” International Shoe, 66 S. Ct. at 320; see World-Wide Volkswagen,
444 U.S. at 292 (listing considerations). The District of Columbia has a strong interest in
adjudicating the dispute, since NWPC is headquartered here, and the marks NWPC seeks to
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protect are used here. The plaintiff’s interest in obtaining speedy relief and the judiciary’s
interest in efficiently resolving the controversy either auger in favor of keeping the case in this
Court—thereby avoiding the delay caused by dismissal and starting the case from scratch
elsewhere—or break in neither direction. The Court therefore determines that subjecting
MLWPC to suit in the District of Columbia would not offend traditional notions of fair play and
substantial justice.
Relationship Between Contacts and Subject of Suit. That leaves only the question
whether NWPC’s causes of action “arise out of or relate to” MLWPC’s contacts with the forum.
Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 414 (1984). The Court
concludes that they do. While NWPC sues MLWPC for trademark infringement and unfair
competition that occurred in Kentucky, NWPC contends that “were it not for MLWPC’s
purposeful contacts with NWPC and this District, MLWPC never would have had the implied
license [to use its mark] in the first place.” Pl’s Opp. at 18 (citing Lent Decl. ¶¶ 8, 11-21).
Taking that allegation as true for the purposes of this motion, this lawsuit “arise[s] out of”
MLWPC’s contacts with NWPC in the District of Columbia. Heliocopteros, 466 U.S. at 414.
Moreover, the test for trademark infringement and unfair competition—likelihood of consumer
confusion—might well turn on the nature and closeness of the relationship between MLWPC
and NWPC. See Am. Soc’y for Testing & Materials, et al. v. Pub.Res.Org, Inc., 896 F.3d 437,
456 (D.C. Cir. 2018) (listing factors, including “similarity of the marks, the proximity of the
goods, . . . [and] the defendant’s intent in adopting the mark”). In this way, then, MLWPC’s
contacts with NWPC in D.C. also “relate to” the subject of the litigation. Heliocopteros, 466
U.S. at 414. The subject matter of the litigation and MLWPC’s contacts with the District of
Columbia are therefore sufficiently connected to support specific jurisdiction.
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B. Venue
MLWPC next moves either to dismiss the case for improper venue or to transfer it to a
more convenient forum. The Court will reject both requests.
Venue law ensures that only courts with some interest in the dispute or the parties
adjudicate the claims at issue. Under the general venue provisions for federal question cases set
forth in 28 U.S.C. § 1391(b), venue is proper in the district where (1) a defendant resides, if all
defendants reside in the same state; (2) the events giving rise to the suit occurred, or a substantial
part of property that is the subject of the suit is located; or (3) if venue would not be proper in
any district for those reasons, wherever the defendants are subject to personal jurisdiction.
Venue is plainly proper under section 1391(b)(1): MLWPC is a corporation, and a corporation is
“deemed to reside, if a defendant, in any judicial district in which such defendant is subject to the
court’s personal jurisdiction with respect to the civil action in question.” § 1391(c)(2). Because
the Court has already held that MLWPC is subject to personal jurisdiction in D.C., the District is
also an appropriate venue.
Even where venue is technically proper, however, a case may be transferred to a more
convenient forum. Under 28 U.S.C. § 1404(a), “a district court may transfer any civil action to
any other district or division where it might have been brought” if it serves “the convenience of
the parties and witnesses” and is “in the interest of justice.” The first question is could this case
have been brought in Kentucky? The answer is clearly yes, since MLWPC is at home there and
the alleged infringement took place there. The second question is should the case, for the
convenience of the parties and in the interest of justice, nevertheless be litigated in Kentucky?
The Court thinks not, but that answer warrants a bit more discussion.
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“Section 1404(a) is intended to place discretion in the district court to adjudicate motions
for transfer according to an ‘individualized, case-by-case consideration of convenience and
fairness.’” Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 29 (1988) (quoting Van Dusen v.
Barrack, 376 U.S. 612, 622 (1964)). This inquiry requires the Court to “use[] its broad discretion
to balance case-specific factors related to the public interest of justice and the private interests of
the parties and witnesses.” Aftab v. Gonzalez, 597 F. Supp. 2d 76, 80 (D.D.C. 2009).
“[P]rivate-interest factors include: (1) the plaintiff’s choice of forum; (2) the defendant’s choice
of forum; (3) whether the claim arose elsewhere; (4) the convenience of the parties; (5) the
convenience of the witnesses; and (6) the ease of access to sources of proof.” Aishat v. U.S.
Dep’t of Homeland Sec., 288 F. Supp. 3d 261, 268 (D.D.C. 2018) (quotation omitted). The
relevant “public-interest factors include: “(1) the transferee’s familiarity with the governing
laws; (2) the relative congestion of the calendars of the transferor and transferee courts; and (3)
the local interest in having local controversies decided at home.” Id. (quotation omitted). “[T]he
burden of demonstrating that an action should be transferred is on the movant.” Air Line Pilots
Ass’n v. E. Air Lines, 672 F. Supp. 525, 526 (D.D.C. 1987).
Among the private-interest factors, the plaintiff’s choice of forum generally warrants
“paramount consideration,” id., and here plaintiffs have chosen to litigate in D.C. MLWPC
asserts that NWPC’s choice of forum deserves less deference “because the balance of
convenience strongly favors Kentucky,” Def’s MTD at 16 (internal quotation marks omitted),
but it offers little support for this claim. MLWPC obviously would prefer to litigate the case in
Kentucky, but the Court is unconvinced that Kentucky would be any more convenient than D.C.,
let alone clearly so. It is likely the case will involve witnesses located in D.C., Kentucky, and
elsewhere around the country; neither forum would eliminate the need for at least some
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witnesses to travel. As for the convenience of the parties, NWPC is based in D.C., and its key
board member in the case, president Donna Lent, would prefer to litigate here. While it would
be more convenient for MLWPC to litigate in Kentucky, where all its board members reside,
transfer for this reason would simply “shift inconvenience to the plaintiffs” rather than “lead to
an overall increase in convenience for the parties.” U.S. ex rel. Westrick v. Second Chance
Body Armor, Inc., 771 F. Supp. 2d 42, 48 (D.D.C. 2011). The final convenience factor, the ease
of access to sources of proof, is also a wash; MLWPC admits that the main sources of proof will
consist of “documentary evidence that can be readily exchanged electronically,” and so this
factor favors neither venue. Def’s Opp. at 16.
To be sure, there are certain other situations where the plaintiff’s choice of forum
warrants substantially less deference, including where the venue chosen is “not plaintiff’s home
forum” and “there is an insubstantial factual nexus between the case and the plaintiff’s chosen
forum,” New Hope Power Co. v. U.S. Army Corps of Engineers, 724 F. Supp. 2d 90, 95 (D.D.C.
2010), or where a forum-selection clause applies, Revis v. Tustin Constr. Servs., LLC, 322 F.
Supp. 3d 58, 62 (D.D.C. 2018). But neither of those features is present in this case.
Not much need be said on the public-interest factors. MLWPC spends most of its single
paragraph on this issue explaining why D.C. is not the superior forum rather than explaining why
Kentucky is. But that argument supports the status quo, not transfer. MLWPC does claim that
Kentucky has a stronger “local interest” in the case since MLWPC is a “Kentucky organization,
with Kentucky-based board members, and with an entirely local focus.” Def’s Reply at 17. All
that is true, but much the same could be said for the other side: NWPC is a D.C.-based
organization, with its only office and employee in the city. The Court therefore cannot see how
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Kentucky’s interest in the parties’ trademark infringement and unfair competition dispute is any
stronger than D.C.’s.
For all these reasons, the Court will deny MLWPC’s motion to transfer the case.
IV. Conclusion
For the foregoing reasons, it is hereby
ORDERED that [8] Defendant’s Motion to Dismiss for Lack of Jurisdiction and
Improper Venue or, Alternatively, to Transfer is DENIED. It is further
ORDERED that the Defendant shall file an answer to the complaint on or before
February 11, 2019.
SO ORDERED.
CHRISTOPHER R. COOPER
United States District Judge
Date: January 14, 2019
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