United States District Court, D. Utah, Central Division
MEMORANDUM DECISION AND ORDER
SAM SENIOR JUDGE.
The Blueberry Hill LLC, (“Blueberry Hill”) is a
Utah limited liability company that sells infant wear,
including whimsical deer and fox outfits. Blueberry Hill
contends that in December 2016, Shalom International Corp.
(“Shalom”) solicited its products online and
shortly thereafter Blueberry Hill discovered that Shalom was
producing “knock-off” products which Blueberry
Hill purchased at a retail store in Sandy, Utah. Blueberry
Hill alleges in its Complaint that Shalom, a New Jersey
corporation, sells infant ware that infringes on its
copyright and trade dress rights, and violates Utah law
regarding unfair competition and deceptive trade practices.
moves to dismiss the case for lack of personal jurisdiction
pursuant to Federal Rule of Civil Procedure 12(b)(2) and (3)
and/or 28 U.S.C. § 1406(a), or in the alternative to
transfer the case to the District of New Jersey.
Hill asserts that “Shalom waived its ability to
challenge jurisdiction and venue through a Rule 12(b) motion
when it filed its answer almost a month before filing its
Motion.” Mem. Opp'n at 4. The Court disagrees.
Rules of Civil Procedure 12(b)(2), (3) and 12(h)(1) provide
that “... a party may assert the following defenses by
motion: ... (2) lack of personal jurisdiction; (3) improper
venue” which are waived “by failing to either:
(i) make it by motion under this rule; or (ii) include it in
a responsive pleading ....” Shalom preserved those
defenses by asserting them in its Answer. See Stjernholm
v. Peterson, 83 F.3d 347, 349, (10th Cir.),
cert. denied, 519 U.S. 930 (1996) (“A party
waives the right to challenge venue if he fails to raise that
defense either in his responsive pleading or in a motion to
dismiss under Fed.R.Civ.P. 12(b)(3). Fed.R.Civ.P.
12(h)(1).”); OSG Inc. v. Schlittler, No.
2:11-cv-871-TC, 2012 WL 1493944, at *2 (D. Utah April 27,
2012). (granting a Rule 12(b)(2) motion even though it was
filed after the answer, because “[b]y raising its
personal jurisdiction defense for the first time in its
Answer, [defendant] preserved the defense”); Fabara
v. GoFit, LLC, 308 F.R.D. 380, at 393-94 (D.N.M. 2015)
(citations omitted) (although “a defendant may
implicitly waive the defense by waiting a significant period
after filing the answer to submit a rule 12(b)(2) motion ....
courts have held that waiting two to seven months after
filing the answer to submit a rule 12(b)(2) motion is
insufficient to constitute waiver”).
Standard of Review
bears the burden of establishing personal jurisdiction over a
defendant. Shrader v. Biddinger, 633 F.3d 1235, 1239
(10th Cir. 2011). When responding to a Rule
12(b)(2) motion filed prior to an evidentiary hearing as is
the case here, a plaintiff need only make a prima facie
showing of personal jurisdiction by demonstrating with
affidavits or other written materials facts which support
jurisdiction. Dudnikov v. Chalk & Vermilion Fine
Arts, Inc., 514 F.3d 1063, 1070 (10th Cir.
2008). Allegations in the complaint are taken as true if they
are plausible, nonconclusory, non speculative and to the
extent they are not controverted by submitted affidavits.
Id. at 1070. When a defendant submits evidence to
support a challenge to personal jurisdiction, the plaintiff
has a duty to come forward with evidence supporting the
jurisdictional allegations of the complaint. Pytlik v.
Professional Resources, Ltd., 887 F.2d 1371, 1376
(10th Cir. 1989). Factual disputes in the
affidavits are resolved in plaintiff's favor, and
“the plaintiff's prima facie showing is sufficient
notwithstanding the contrary presentation by the moving
party.” Wennz v. Memery Crystal, 55 F.3d 1503,
1505 (10th Cir. 1995) (internal quotation marks
and citation omitted).
of whether a federal court has personal jurisdiction over a
nonresident defendant involves two questions. “First we
ask whether any applicable statute authorizes the service of
process on defendants. Second, we examine whether the
exercise of such statutory jurisdiction comports with
constitutional due process demands.” Dudnikov,
514 F.3d at 1070.
Hill claims federal question jurisdiction under both the
Copyright Act, 17 U.S.C. § 501, and the Lanham Act's
trademark law, 15 U.S.C. § 1125(a). Neither the
Copyright Act, nor the Lanham Act provide for nationwide
service of process. See Capitol Federal Sav. Bank v.
Eastern Bank Corp., 493 F.Supp.2d 1150, 1158 (D. Kan.
2007) (Lanham Act); Dudniko ...