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Mya Saray, LLC v. Dabes

United States District Court, W.D. Virginia, Charlottesville Division

March 5, 2018

MYA SARAY, LLC, Plaintiff,



         By: 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.[1] For the following reasons, the defendant's motion will be denied in part and denied without prejudice in part.


         Mya 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.

         In the 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.

         On 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.

         In 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.


         Dabes 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.

         I. Personal Jurisdiction

         Rule 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).

         Under 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").

         The due 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).

         Since 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 ...

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