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Supreme Court Asked to Clarify Activities that Give Rise to Specific Personal Jurisdiction

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In Impossible X LLC v. Impossible Foods Inc., Impossible Foods recently filed an opposition to Impossible X’s petition for certiorari, which asks the Supreme Court to decide (1) whether some disputes should require so-called “rough causality” before finding specific personal jurisdiction and (2) in declaratory noninfringement actions, whether activities other than rights-enforcement efforts are relevant to determining specific personal jurisdiction.

In April 2021, Impossible Foods Inc. sought a declaratory judgement of trademark noninfringement in the United States District Court for the Northern District of California after Impossible X LLC sent a cease-and-desist letter, instituted an opposition at the USPTO’s Trademark Trial and Appeal Board, and declined a settlement proposal. The district court dismissed the action for lack of personal jurisdiction because it did not arise out of or relate to Impossible X’s contacts with California. The district court reasoned that by the time there was a live trademark dispute between the parties, Impossible X had left California. Impossible Foods appealed to the Ninth Circuit Court of Appeals, which reversed the district court’s decision and held that specific jurisdiction over Impossible X was proper because its trademark-building activities in California formed the basis of the contested trademark rights. Impossible X then filed its cert petition.

Impossible X’s first question asks the Court to consider whether its relatedness prong under previous caselaw, that the suit must “arise out of or relate to the defendant’s contacts with the forum,” requires at least some causal link between a non-resident defendant’s forum contacts and a plaintiff’s claim. Impossible X argues in the petition that without a rough-causation standard, the relatedness requirement lacks an objective test and “unmoors specific jurisdiction from the Constitution’s original understanding, which requires presence through the International Shoe minimum-contacts proxy.” Both Impossible Foods’ opposition brief and the Ninth Circuit’s reversal, however, point to the Court’s previous statement that “some relationships will support jurisdiction without a causal showing.” Although Impossible X argues the lower courts are “hopelessly divided” regarding whether there must be a causal relationship between the contacts and the harm, Impossible Foods responds that no such split exists, relatedness is a standalone means for establishing personal jurisdiction, and courts have properly used guardrails when finding relatedness so as not to assert “unprincipled” specific personal jurisdiction.

In opposition to the petition for cert, Impossible Foods argues that brand-building activities in California are what formed the basis of Impossible X’s trademark assertions and Impossible Foods’s request for declaratory relief, thus conferring specific personal jurisdiction over Impossible X. Impossible Foods explained that those activities included Impossible X’s founder and sole employee’s rental of office space in San Diego from 2014–16, which he described as his “home base,” and that his social media presence frequently tagged San Diego and identified San Diego as the company’s headquarters until after inception of the litigation. In addition, after leaving San Diego to travel and run the business remotely, Impossible X’s founder made multiple returns to California while performing Impossible X-related work, among other activities. Impossible X’s petition for certiorari, on the other hand, described these activities as “aged[,] attenuated” and insufficient to support specific personal jurisdiction due to a lack of causation and presence.

Impossible X’s second question asks the Court whether activities other than rights-enforcement activities should be considered when evaluating the relatedness prong for a declaratory judgment action. Impossible X relies on the Federal Circuit Court of Appeal’s decision in Avocent Huntsville Corp. v. Aten International Co., which held that only enforcement activities can be “related” to a plaintiff’s claim for declaratory judgment of noninfringement and give rise to specific personal jurisdiction. Impossible Foods responded that Avocent concerned a declaratory-judgment action in a utility-patent dispute and is inapplicable—that to apply this proposition in the trademark context would improperly conflate patent and trademark law because enforcement of patent rights is not dependent on where the patentee practices its patent whereas geography and brand-building are critical to asserting trademark rights.

The Court’s docket reflects that on May 16, 2024 the Justices will discuss whether to accept the case.