United States District Court, W.D. Virginia, Charlottesville Division
GLEN E. CONRAD, SENIOR UNITED STATES DISTRICT JUDGE.
Hon. Glen E. Conrad Senior United States District Judge Mya
Saray, LLC ("Mya Saray") filed this action against
Ibrahim Dabes, a resident of Germany, asserting federal
claims under the Lanham Act, the Patent Act, and the
Copyright Act, and a related claim under Virginia law. The
defendant has moved to dismiss the case for lack of personal
jurisdiction and improper venue or, in the alternative, to
transfer the case to the Central District of California. The
motion has been fully briefed and is ripe for
decision. For the following reasons, the
defendant's motion will be denied in part and denied
without prejudice in part.
Saray is a limited liability company based in Sterling,
Virginia that manufactures and distributes tobacco products,
including hookahs and hookah accessories. Mya Saray sells the
hookah products nationally under several registered
trademarks, including the "MYA" mark. Compl. ¶
5, Dkt. No. 1. The company also owns a number of
hookah-related patents, as well as a federally registered
copyright for certain product packaging.
instant action, Mya Saray claims that Ibrahim Dabes makes,
sells, offers for sale, and exports products that infringe
its trademarks, patents, and copyright. Dabes is a resident
of Germany. He is the majority owner of Dabes Egyptian
Imports, a family business based in Augsburg, Germany that
makes and sells hookah products. Mya Saray alleges that some
of Dabes' products, including those branded with the name
"AMY, " "infringe Mya Saray's intellectual
property" and "were knowingly created (and ordered
to be created) by [d]efendant for the purpose of knowingly
infringing Mya Saray's intellectual property
rights." Compl. ¶ 18. Mya Saray further alleges
that Dabes has exported the products at issue to the United
States through two national distributors, who have
distributed them to retail stores throughout the United
States, "including the Commonwealth of Virginia."
Id. ¶ 17. According to the complaint,
"[m]ultiple retail stores, and other establishments, in
the Commonwealth of Virginia sell, offer to sell, and use . .
. Dabes Tobacco Products, including AMY Tobacco
Products." Id. ¶20.
December 4, 2017, Dabes moved to dismiss the case for lack of
personal jurisdiction and improper venue or, in the
alternative, to transfer venue. Dabes submitted a declaration
in support of the motion. According to the declaration, Dabes
has never traveled to Virginia. Nor has he ever owned,
leased, or operated any property in Virginia. The declaration
indicates that Dabes Egyptian Imports is not licensed to do
business in Virginia, and has no employees, agents, or
representatives in Virginia. Although Dabes acknowledges that
AMY products are available for sale in the United States, he
maintains that his business has not directly sold products in
Virginia or targeted any of its products for sale in this
particular state. Dabes indicates that his business
"sells its products through third-party wholesalers,
retail distributors, and the like." Dabes Decl. ¶
12, Dkt. No. 29. Dabes reports that "[t]wo of these
entities are located in California" and none are located
in Virginia. Id. For these reasons, Dabes argues
that he lacks sufficient contacts with the Commonwealth of
Virginia to allow this court to exercise personal
jurisdiction over him.
response to the pending motion, Mya Saray submitted a
declaration from Mahmoud Badawi, the president of Mya Saray.
The declaration indicates that Badawi was first introduced to
Dabes in January of 2009, when Dabes contacted him in
Virginia and inquired about distributing Mya Saray's
hookahs in Europe. After receiving negative feedback from
several of its European distributors regarding Dabes'
business practices, Mya Saray "declined Dabes'
request to distribute Mya Saray products." Badawi Decl.
¶ 12, Dkt. No. 31-1. At some point thereafter, Mya Saray
received reports from its distributors regarding a new brand
of AMY hookahs that were styled similar to plaintiffs MYA
hookahs. Id. ¶ 13. According to Badawi, AMY
hookah products are offered for sale in the Commonwealth of
Virginia, and have been sold at retail stores in Falls
Church, Fairfax, and Richmond. See id. ¶ 11.
has moved to dismiss the case for lack of personal
jurisdiction and improper venue under Rule 12(b)(2) and (3)
of the Federal Rules of Civil Procedure. In the alternative,
Dabes has requested that the court transfer the case to the
Central District of California, pursuant to 28 U.S.C. §
1404(a). The court will address each argument in turn.
12(b)(2) of the Federal Rules of Civil Procedure authorizes
dismissal for lack of personal jurisdiction. While neither
party addresses it in its briefing on the motion, the law of
the United States Court of Appeals for the Federal Circuit
governs the due process analysis applicable to the plaintiffs
claims of patent infringement. See Autogenomics Inc. v.
Oxford Gene Tech. Ltd., 566 F.3d 1012, 1016
(Fed. Cir. 2009). However, for any non-patent claims that are
not intimately linked to patent law, the court must review
the issue of personal jurisdiction under the law of the
regional circuit, in this case the Fourth Circuit. See
Silent Drive, Inc. v. Strong Indus., Inc., 326 F.3d
1194, 1201 (Fed. Cir. 2003); Elecs. for Imaging. Inc. v.
Coyle, 340 F.3d 1344, 1348 (Fed. Cir. 2003).
Federal Circuit and Fourth Circuit precedent, a federal
district court may exercise personal jurisdiction over a
nonresident defendant only if: (1) the forum state's
long-arm statute confers jurisdiction over the defendant; and
(2) the exercise of jurisdiction comports with constitutional
due process requirements. See Autogenomics Inc., 566
F.3d at 1016 (citing Burger King Corp. v. Rudzewicz,
471 U.S. 462, 471-76 (1985)); see also Carefirst of Md..
Inc. v. Carefirst Pregnancy Ctrs., Inc., 334 F.3d 390,
396 (4th Cir. 2003). With regard to the first requirement,
both circuits have recognized that "Virginia's
long-arm statute extends personal jurisdiction to the extent
permitted by the Due Process Clause." Young v. New
Haven Advocate, 315 F.3d 256, 261 (4th Cir. 2002);
see also Touchcom, Inc. v. Bereskin & Parr, 574
F.3d 1403, 1411 (Fed. Cir. 2009). Consequently, the statutory
and constitutional inquiries coalesce into the single
question of whether due process is satisfied by the
court's exercise of personal jurisdiction over the
nonresident defendant. Touchcom, 574 F.3d at 1411;
see also Stover v. O'Connell Assocs., Inc., 84
F.3d 132, 135-36 (4th Cir. 1996) (explaining that "the
statutory inquiry necessarily merges with the constitutional
inquiry, and the two inquiries essentially become one").
process prong of the personal jurisdiction analysis
necessitates an inquiry into whether the defendant maintains
sufficient "minimum contacts" with the forum state.
In the "canonical" case of International Shoe
Co. v. Washington, 326 U.S. 310 (1945), the Supreme
Court held that a court may exercise jurisdiction over a
nonresident defendant only "if the defendant has
'certain minimum contacts with [the forum state] such
that the maintenance of the suit does hot offend traditional
notions of fair play and substantial justice.'"
Goodyear Dunlop Tires Operations, S.A. v. Brown, 564
U.S. 915, 923 (2011) (quoting Int'l Shoe Co.,
326 U.S. at 316). This requirement "gives a degree of
predictability to the legal system that allows potential
defendants to structure their primary conduct with some
minimum assurance as to where the conduct will and will not
render them liable to suit." World-Wide Volkswagen
Corp. v. Woodson, 444 U.S. 286, 297 (1980).
International Shoe was decided, courts have
distinguished between "general or all-purpose
jurisdiction" and "specific or case-linked
jurisdiction." Goodyear, 564 U.S. at 919
(citing Helicopteros Nacionales de Colombia, S.A. v.
Hall, 466 U.S. 408, 414 (1984)). As the Supreme Court
explained in Goodyear, "[a] court may assert
general jurisdiction over foreign (sister-state or
foreign-country) [defendants] to hear any and all claims
against them when their affiliations with [forum] State are
so 'continuous and systematic' as to render them
essentially at home in the forum State." Id.
Specific jurisdiction, on the other hand, depends on an
"activity or an occurrence that takes place in the forum
State" and is "confined to adjudication of issues
deriving from, or connected with, the very controversy that
establishes jurisdiction." Id. In this case,
there is no suggestion that the defendant's contacts with