Willful Copyright Infringement is Enough Contact for Personal Jurisdiction

Washington Shoe is a Washington State corporation that manufactures footwear for men, women and children.  Through one of its sales representatives, Washington Shoe had an ongoing relationship with A-Z Sporting Goods, a single retail store located in Alma, Arkansas.  A-Z is an Arkansas corporation.  A-Z does not sell products over the Internet.  Washington Shoe’s sales representative discovered that A-Z was selling infringing copies of two of Washington Shoe’s copyrighted children’s rain boot designs.  Washington Shoe’s attorney sent A-Z two cease and desist letters.  After receiving the second letter, A-Z moved the boots out of its store, but sold its remaining supply of the boots to a thrift store.

Washington Shoe sued A-Z for copyright infringement in the Western District of Washington.  The district court granted A-Z’s motion to dismiss for lack of personal jurisdiction, but denied A-Z’s request for attorneys’ fees.  Washington Shoe appealed the dismissal of its case.  A-Z cross-appealed the denial of its motion for attorneys’ fees.  The Ninth Circuit Court of Appeals reversed the order dismissing the case.  The Ninth Circuit ruled that A-Z, whose only relevant contact with Washington State was its alleged willful copyright infringement, was subject to personal jurisdiction in Washington State.

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Laches Defense Upheld, But Injunction Imposed After Long Delay by Trademark Owners

Thomas Kenneth Abraham founded Paddle Tramps in 1961.  Paddle Tramps manufactures and sells products displaying the names and symbols of fraternities and sororities and is known for its wooden paddles decorated with the Greek letters associated with fraternities and sororities.  Abraham was first contacted about obtaining a license from the Greek Organizations in 1990.  Abraham received letters from individuals representing the Greek Organizations periodically until 2007, when the Greek Organizations sued him in the Southern District of Florida for patent infringement and unfair competition.  That case was dismissed for improper venue, as Paddle Tramps is located in Lubbock, Texas. 

Abraham then brought a declaratory judgment action against the Greek Organizations in 2008.  A jury found that Abraham established his laches defense and that the Greek Organizations did not establish their unclean hands counter-defense.  The district court ruled that the Greek Organizations were not entitled to damages, due to the laches finding.  The district court judge enjoined Abraham from selling and using in advertising all of the infringing products except one.  Both parties appealed to the Fifth Circuit Court of Appeals.  The Fifth Circuit affirmed the district court’s judgment.

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