IP Law Daily, TRADEMARK—E.D. Cal.: Takedown notices and cease and desist letters failed to establish personal jurisdiction, (Feb 11, 2025)

By Kevin M. Finson, J.D.

Personal jurisdiction was not found because sending takedown notices to third parties and a cease-and-desist letter sent to the plaintiff in the forum state did not establish purposeful direction under controlling Ninth Circuit case law.

A seller of apparel failed to establish personal jurisdiction in California over competitor who allegedly filed false takedown notices, the U.S. District Court in Sacramento has held. A cease-and-desist letter and the takedown notices were not purposefully directed at the forum state under controlling Ninth Circuit case law (Dadbod Apparel LLC v. Hildawn Design LLC, No. 2:24-cv-00188-DJC-AC (E.D. Cal. Feb. 10, 2025)).

Dadbod Apparel, LLC (Dadbod) brought suit against Hildawn Design LLC and Hilary D. Wertin (collectively, Hildawn) alleging that Hildawn had misused its trademark registration for the mark GIRLDAD to initiate takedown actions on third-party marketplaces Amazon and Etsy, despite the fact that, according to Dadbod, its listing did not infringe that mark. The court granted Hildawn’s motion to dismiss for lack of personal jurisdiction and granted leave to amend. Dadbod filed an amended complaint, and Hildawn again moved to dismiss for lack of personal jurisdiction.

Personal jurisdiction. The court noted that it had previously found that purposeful direction, rather than purposeful availment, was the appropriate analysis for determining specific personal jurisdiction. The court found that cease and desist letters and takedown notifications were not wrongful and not aimed at the forum state, respectively. The court held that under the case law which controlled in the Ninth Circuit, albeit possibly not elsewhere, actions directed at a plaintiff whom the defendant knows resides in a particular state are not sufficient to establish the purposeful direction required for personal jurisdiction.

Finding that further amendment would be futile in light of the fact that the complaint had already been amended once to address the issue of personal jurisdiction, the court dismissed the case without leave to amend.

The Case is No. 2:24-cv-00188-DJC-AC.

Judge: Calabretta, D.

Attorneys: Joshua Adam Schaul (Garvey Adam LLP) for Dadbod Apparel LLC. Howard L. Wernow, Phv (Sand, Sebolt & Wernow Co., LPA) for Hildawn Design LLC.

Companies: Dadbod Apparel LLC; Hildawn Design LLC

Cases: Trademark CaliforniaNews