Civil Practice – Personal Jurisdiction – Intellectual Property – Trademark Infringement – Restaurant Website

Firebirds International, LLC v. Firebird Restaurant Group, LLC (Lawyers Weekly No. 004-021-17, 14 pp.) (Robert Conrad Jr., J.) 3:16-cv-00774; W.D.N.C.

Holding: Non-party El Fenix is a subsidiary of the Texas defendants, and defendants allegedly infringe plaintiff’s various “Firebirds” trademarks. Even assuming the El Fenix website belongs to defendants, since the website sells only El Fenix products, it cannot form the basis for this court to exercise personal jurisdiction over defendants.

The court grants defendants’ motion to dismiss for lack of personal jurisdiction.

The legal clauses of the El Fenix website identify the owner of the site as “Firebird,” but those clauses prove nothing more than that El Fenix is a subsidiary of defendants which sells products under its own name online. A parent-subsidiary relationship does not by itself support jurisdiction. The sale of items under the El Fenix name does not infringe plaintiff’s Firebird mark; therefore, the minimal contacts established by the El Fenix website – if any – do not form the basis of plaintiff’s claim.

Even if the El Fenix website formed the basis of plaintiff’s claim, the El Fenix website is insufficient to establish the required minimum contacts in North Carolina to justify exercising specific jurisdiction over defendants.

Minimum contacts are not fulfilled when a website focuses its activities generally on customers located throughout the United States and Canada without focusing on and targeting the forum state specifically. Rather, a defendant must focus its sights on North Carolina residents specifically, showing a “manifest intent” to engage in business within the state.

Even if trademark infringement is considered an intentional tort and even if the court were to assume that plaintiff felt the brunt of the harm in North Carolina from defendants’ alleged trademark infringement, the El Fenix website does not expressly target North Carolina. Therefore, plaintiffs cannot satisfy the “Effects Test” from Calder v. Jones, 465 U.S. 783 (1984).

Motion granted.