Om Records, LLC v. OM Developpement, SAS

1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 OM RECORDS, LLC, Case No. 23-cv-04506-JSW 8 Plaintiff, ORDER DEFERING RULING ON 9 v. DEFENDANTS' MOTIONS TO DISMISS FOR LACK OF PERSONAL 10 OM DEVELOPPEMENT, SAS, et al., JURISDICTION; ORDERING LIMITED JURISDICTIONAL 11 Defendants. DISCOVERY; GRANTING THE BMG DEFENDANTS’ MOTION TO DISMISS 12 FOR FAILURE TO STATE A CLAIM; DENYING THE OM DEFENDANTS’ 13 MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM; AND 14 GRANTING, IN PART, AND DENYING, IN PART, PLAINTIFF'S 15 MOTION TO FILE MATERIAL UNDER SEAL 16 Re: Dkt. Nos. 39, 40, 47 17 18 Now before the Court is a group of related motions. Defendants OM Developpement, SAS 19 and Olympique de Marseille, SASP (together, the “OM Defendants”) and BMG Rights 20 Management (France), SARL (“BMG France” and, together, the “French Defendants”) move to 21 dismiss pursuant to Federal Rule of Civil Procedure 12(b)(2) for lack of personal jurisdiction. 22 The French Defendants and BMG Rights Management (US) LLC (“BMG US,” and, together with 23 BMG France, the “BMG Defendants”) further move to dismiss the First Amended Complaint 24 (“FAC”) for forum non conveniens and failure to state a claim under Rule 12(b)(6). 25 Plaintiff Om Records, LLC (“Plaintiff”) has filed an administrative motion to seal portions 26 of its opposition to Defendants’ motions to dismiss and, as part of its opposition, seeks permission 27 to conduct jurisdictional discovery. 1 case, and it finds this matter suitable for disposition without oral argument. See N.D. Civ. L.R. 7- 2 1(b). The Court HEREBY GRANTS, IN PART, and DENIES, IN PART, the pending motions. 3 BACKGROUND 4 A. Complaint Allegations.1 5 Plaintiff has owned and operated Om Records since 1995. (Dkt. No. 10, FAC, ¶ 9.) Om 6 Records is known worldwide for its electronic, dance, and hip-hop music releases. (Id.) BMG US 7 has served as Plaintiff’s song rights administrator since 2011. (Id. ¶ 24.) 8 BMG France and Olympique de Marseille launched the “OM Records” label from 9 Marseille, France on September 24, 2020. (Id. ¶ 25.) BMG France and Olympique de Marseille 10 also created Twitter (now known as “X”) and Instagram accounts with the handle “@om_records” 11 and a Facebook account with the handle “@omrecordsfr.” (Id.) Defendants issued a press release 12 on the Olympique de Marseille website in both French and English. (Id.) Billboard magazine ran 13 an article on the “launch of OM Records.” (Id.) 14 Defendants used the name “OM Records” to sell and stream music to customers via 15 YouTube, Spotify, Deezer, iTunes Store, Apple Music, and Amazon Music. (Id. ¶ 30.) The 16 recordings and videos were available to consumers within the United States and around the world. 17 (Id. ¶¶ 30, 34.) 18 On September 25, 2020, Plaintiff reached out to BMG US regarding the launch of OM 19 Records. (Id. ¶ 26.) Plaintiff explained that the label name had “caused headaches” for Plaintiff’s 20 business. (Id.) Indeed, consumers later tagged accounts for Plaintiff’s Om Records label when 21 calling for a boycott of Defendants’ OM Records label online. (Id. ¶ 32.) 22 The next day, Olympique de Marseille registered a mark with the French trademark office 23 consisting of the words “OM Records” and a logo. (Id. ¶ 27.) In June 2023, the European Union 24 Intellectual Property Office nullified the French mark because it was registered in bad faith. (Id. 25 1 The facts in this section are drawn from the allegations in Plaintiff’s FAC, as the Court must 26 construe all well-pleaded facts as true for purposes of the motions to dismiss for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6). Lazy Y Ranch Ltd. v. Behrens, 546 F.3d 27 580, 588 (9th Cir. 2008). As explained below, additional or controverted allegations will be 1 ¶¶ 7, 38.) 2 Some or all of the Defendants also used or registered the “OM Records” mark with the 3 U.K. Intellectual Property Office. (Id. ¶ 37.) Plaintiff contested Defendants’ use of the name and 4 mark and prevailed with a finding that its rights were superior to Defendants’. (Id.) 5 Defendants filed for trademark registration with the U.S. Trademark Office of the OM 6 Records name and logo. (Id. ¶ 31.) According to an email forwarded to Plaintiff from a BMG 7 France officer to a BMG US correspondent, the OM Defendants were aware of Plaintiff’s label at 8 the time they filed for registration in the United States. (Id. ¶ 28.) Plaintiff filed an opposition to 9 the trademark registration application, and Defendants failed to respond. (Id. ¶ 40.) The U.S. 10 Trademark Office thus issued a notice of default. (Id.) 11 Based on the foregoing conduct, Plaintiff brings four claims for relief: (1) unfair 12 competition under Section 43(a) of the Lanham Act; (2) common law trademark infringement 13 under California law; (3) unfair competition under California Business and Professions Code 14 section 17200 (commonly known as California’s “Unfair Competition Law,” and, hereinafter, 15 “UCL”); and (4) intentional interference with prospective economic relations. 16 B. Jurisdictional Allegations.2 17 Plaintiff is a California limited liability company headquartered in San Francisco. (FAC ¶ 18 9.) Since 1995, Plaintiff has participated in or produced hundreds of festivals and branded live 19 events throughout the United States and Europe, included in Los Angeles, Seattle, Miami, 20 Chicago, San Francisco, New York, Ibiza, Barcelona, London, and Paris. (Id. ¶ 15.) Plaintiff’s 21 discography is distributed worldwide, and it sells “Om Records” brand merchandise on its 22 website. (Id. ¶ 17.) 23 BMG US is a Delaware limited liability company with a substantial presence in Los 24 Angeles County. (Id. ¶ 11.) BMG US does not deny that it is subject to personal jurisdiction in 25 this Court. 26 27 2 The following facts are taken from the FAC as well as affidavits and documentary evidence 1 BMG France is a French limited liability company headquartered in Paris, France, where 2 all of its executive management and employees are based. (Dkt. No. 40-1, Hindermeyer-Cayez 3 Decl., ¶ 2.) BMG France is wholly owned by a German corporation. (Id. ¶ 3.) It does not 4 conduct business in California or the United States; have an agent for service of process in the 5 United States; advertise or solicit in California or the United States; possess a bank account in 6 California or the United States; own, possess, or use real property in California or the United 7 States; or pay taxes to California or the United States. (Id. ¶¶ 6-11.) Instead, BMG France wholly 8 operates in France. (Id. ¶ 4.) 9 The BMG Defendants are owned and controlled by the same parent company. (FAC ¶ 11.) 10 According to Plaintiff, BMG US and BMG France operate as a single enterprise because they both 11 refer to themselves as “BMG” in their public-facing communications. (Id.) 12 Olympique de Marseille, SASP has been incorporated as a professional sports corporation 13 (“société anonyme sportive professionelle”) in France since 1995. (Dkt. No. 39-1, Vesval Decl., ¶ 14 2.) It is headquartered in Marseille, France, where its CEO, executive management, and all of its 15 employees operate. (Id. ¶ 3.) The entity owns and operates the professional French soccer team 16 Olympique de Marseille, which was originally founded in 1899 and is commonly known as “OM” 17 throughout Europe. (Id.) An American businessperson owns and controls the Olympique de 18 Marseille soccer team and resides “at least part-time” in Los Angeles.3 (FAC ¶ 10.) Olympique 19 de Marseille has fans around the world, including in California. (Dkt. No. 48-3, Conlon Decl., ¶ 20 3.) Olympique de Marseille President Jacques-Henri Eyraud once tweeted, sometime prior to 21 February 2, 2019, “I LOVE L.A.!” (Id. ¶ 4, Ex. 3.) 22 Olympique de Marseille also owns and operates OM Developpement, a simplified joint- 23 stock company (“société par actions simplifiée”). (Vesval Decl., ¶ 4.) OM Developpement is 24 headquartered in Marseille, where its CEO, executive management, and all of its employees 25 operate. (Id.) OM Developpement performs licensing, marketing, and sponsorship services in 26 relation to the Olympique de Marseille soccer team. (Id.) According to Plaintiff, Olympique de 27 1 Marseille and OM Developpement operate as a single enterprise. (FAC ¶ 10.) 2 Neither OM Defendant conducts business in California or the United States; has an agent 3 for service of process in California or the United States; advertises or solicits in California or the 4 United States; possesses a bank account in California or the United States; owns, possesses, or 5 uses real property in California or the United States; or pays taxes to California or the United 6 States. (Vesval Decl., ¶¶ 16-21.) 7 In the summer of 2020, BMG France and Olympique de Marseille executed an agreement 8 to launch a record label based in Marseille, France. (Dkt. No. 47-6, Term Sheet, at 1.) BMG 9 France and Olympique de Marseille named the label “OM Records.” (Id.; see also Vesval Decl., ¶ 10 2.) The terms of the agreement were written in French and English, with French prevailing in the 11 event of conflict. (Id. at 13.) The parties expressly declare their belief that “Marseille is the ideal 12 location to build a music label” and that a “BMG – OM collaboration is . . . the perfect 13 opportunity to build a music label having a strong connection with the music that is already 14 popular among OM fans.” (Id. at 1.) 15 The agreement identifies “the key development territories for Artists” as “France, Belgium, 16 Switzerland, and . . . Algeria, Morocco, Tunisia, Cameroon, Senegal, and Ivory Coast.” (Id. at 3.) 17 The parties selected French law in a choice of law clause, with Paris Courts as their forum. (Id. at 18 12.) All pages of the agreement identify BMG France’s address in Paris, France in the footer. 19 (See generally, id.) The United States is mentioned once, with the proviso that “John Loeffler, 20 current Executive Vice President, Head of New York Repertoire and Marketing for BMG shall 21 stay involved in this partnership with OM as long as he is an employee of BMG or consultant to 22 BMG.” (Id. at 13.) 23 Finally, the parties state that “BMG and OM have no desire to enter into a partnership 24 within the framework of a company. Nothing in this Term Sheet shall be construed as constituting 25 an association, a ‘de facto’ company, a joint venture or any other agent/principal relationship 26 between BMG and OM, provided that BMG and OM are independent contractors to each other 27 and neither BMG nor OM shall have authority to bind the other. . . .” (Id.) Nevertheless, the 1 Plaintiff contends that the OM Records venture began not with the written agreement, but 2 when Olympique de Marseille’s American owner approached an executive with BMG US. (FAC 3 ¶ 22.) Plaintiff does not specify where these planning conversations occurred. Neither the 4 American owner nor the BMG US executive are parties to or signatories of the partnership 5 agreement. (See generally, Term Sheet.) 6 OM Records was short-lived and largely France-oriented. All OM Records employees 7 were based in Marseille, France. (Vesval Decl., ¶ 6; Hindermeyer-Cayez Decl., ¶ 12.) The OM 8 Defendants conducted physical marketing and hosted in-person promotional events in Marseille, 9 France. (Vesval Decl., ¶ 5.) All digital marketing for the label was conducted in France, 10 primarily in French. (Id.) One music video—performed in French by a French artist—comprised 11 more than half of OM Record’s YouTube views. (See Conlon Decl., Ex. 14.) 12 However, OM Records produced two songs with Los Angeles-based Afro-French artist 13 Trackdilla. (Id., Ex. 16.) Trackdilla posted a video to Instagram of himself at BMG US’s Los 14 Angeles campus signing and celebrating the signing of his contract with OM Records.4 (Id., Ex. 15 18.) According to a screen capture of a Trackdilla Instagram post, which in turn features an 16 apparent screen capture from Apple Music, Trackdilla’s song “R U FOSURE” charted in sixteen 17 countries in 2021, peaking at number 59 on Apple Music in the United States. (Id., Ex. 22.) 18 Trackdilla and production company First Sight International promoted Trackdilla’s music videos 19 in Los Angeles, including via in-person release parties. (Id. ¶ 27, Ex. 26.) The videos, flyers, and 20 posts mentioned “OM Records,” used the French mark, or tagged @om_records. (Id.) 21 Additionally, Facebook, X, Instagram, and many of the streaming platforms used by the 22 OM Records venture are headquartered in this District. (FAC ¶ 30.) Plaintiff submits standard 23 terms and conditions for Apple Music, Instagram, X, and YouTube, which provide that disputes 24 between the user and the platforms will be resolved under California law and in this District. 25 (Conlon Decl., Ex. 13.) 26 27 4 Although Trackdilla’s video does not specify the location, the background in his Instagram video 1 Plaintiff contends that the OM Records venture caused actual confusion with at least three 2 consumers in California. First, Plaintiff provides a screen capture of a Facebook post from “Owen 3 Ingram” stating, “Damn BMG, could’ve picked a better name for a label than copy the iconic 4 dance label Om Records.” (Id., Ex. 8.) Another screen capture of Ingram’s account indicates he 5 resides in Santa Monica, California. (Id.) Second, Plaintiff provides a screen capture of a 6 comment by “Lex Pelle” to a September 2020 @om_records Instagram post tagging @omrecords 7 (Plaintiff’s handle) with the comment “???” (Id., Ex. 9.) Plaintiff also includes a screen capture 8 of Pellegrini Wine’s LinkedIn page showing that the page follows “Lex Pelle,” and a Press 9 Democrat article interviewing Alexia Pellegrini regarding a 2019 Chardonnay. (Id.) At the top of 10 the article, a photograph of a woman sniffing the Chardonnay is attributed to “Lex Pelle.” (Id.) 11 Although Plaintiff does not explain this somewhat odd collection of screen captures, it appears 12 that Plaintiff is implying that “Lex Pelle” is either Alexia Pellegrini or employed by the Pellegrini 13 family winery, which is located in Sonoma County, California. Lex Pelle’s comment, then, could 14 imply a California resident was confused by the “OM Records” name. Third, Plaintiff includes a 15 screen capture of a Tweet from “@erikgallisa” stating, “Ya how’s this possible? Different country 16 and copyright laws??” (Id., Ex. 10.) @erikgallisa is the handle for “Mood II Schwing,” whose X 17 profile page indicates he is located in “Northern California.” (Id.) 18 Finally, Plaintiff contacted Defendants after the launch of Defendants’ label to warn 19 Defendants that the label infringed Om Records’ trademark rights. (Id., Ex. 4.) Defendants 20 responded. (Id., Ex. 5.) 21 C. Procedural History 22 While the instant motions were pending, Plaintiff propounded extensive discovery 23 requests. (Dkt. No. 52-1, Ex. B; Dkt. No. 52-2, Ex. B.) Defendants moved for a protective order 24 to stay discovery, which the Court granted. (Dkt. Nos. 52, 55.) 25 ANALYSIS 26 All Defendants now move to dismiss. The OM Defendants and BMG France move under 27 Federal Rule of Civil Procedure 12(b)(2) on the basis that this Court lacks personal jurisdiction 1 notice requirement and for failure to state a claim under the Lanham Act. Defendants further 2 argue that, even if this Court has jurisdiction to resolve this action as to all Defendants, and even if 3 the FAC states a claim upon which relief could be granted, the Court should nevertheless dismiss 4 the action on forum non conveniens grounds. 5 D. Applicable Legal Standards. 6 Where a party moves to dismiss for lack of personal jurisdiction under Rule 12(b)(2), “the 7 plaintiff bears the burden of demonstrating that jurisdiction is appropriate.” Schwarzenegger v. 8 Fred Martin Motor Co., 374 F.3d 797, 800 (9th Cir. 2004). The plaintiff must produce sufficient 9 admissible evidence that, if believed, would establish personal jurisdiction. Id. Where a trial 10 court rules on personal jurisdiction “relying on affidavits and discovery materials without holding 11 an evidentiary hearing, dismissal is appropriate only if the plaintiff has not made a prima facie 12 showing of personal jurisdiction.” Am. Tel. & Tel. Co. v. Compagnie Bruxelles Lambert, 94 F.3d 13 586, 588 (9th Cir.1996) quoting (Fields v. Sedgwick Assoc. Risks, Ltd., 796 F.2d 299, 301 (9th Cir. 14 1986)). To determine whether a plaintiff has met its burden, the court takes all uncontroverted 15 allegations in the complaint as true, and “conflicts between the facts contained in the parties’ 16 affidavits must be resolved in [the plaintiff’s] favor.” Id. (quoting WNS, Inc. v. Farrow, 884 F.2d 17 200, 203 (5th Cir. 1989)). Nevertheless, “disputed allegations in the complaint that are not 18 supported with evidence or affidavits cannot establish jurisdiction.” AMA Multimedia, LLC v. 19 Wanat, 970 F.3d 1201, 1207 (9th Cir. 2020). 20 When a party moves to dismiss for failure to state a claim under Rule 12(b)(6), a district 21 court accepts as true all well-pleaded material facts and draws all reasonable inferences in favor of 22 the plaintiff. Faulkner v. ADT Servs., Inc., 706 F.3d 1017, 1019 (9th Cir. 2013). A complaint 23 must contain a “short and plain statement of the claim showing that the pleader is entitled to 24 relief.” Fed. R. Civ. P. 8(a)(2). “[D]etailed factual allegations are not required” to survive a 25 motion to dismiss if the complaint contains sufficient factual allegations to “state a claim to relief 26 that is plausible on its face.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citing Bell Atl. Corp. v. 27 Twombly, 550 U.S. 544, 570 (2007)). “Labels and conclusions[] and a formulaic recitation of the 1 insufficient to state a claim, a court should grant leave to amend unless the court determines the 2 pleading could not “possibly be cured by the allegation of other facts.” Lopez v. Smith, 203 F.3d 3 1122, 1130 (9th Cir. 2000). 4 E. Materials Outside of the Pleadings. 5 In general, a court may not consider materials outside of the pleadings in resolving a 6 motion to dismiss under Rule 12(b)(6) without converting the motion to a motion for summary 7 judgment under Rule 12(d). Khoja v. Orexigen Therapeutics, Inc., 899 F.3d 988, 998 (9th Cir. 8 2018). However, a court may exercise its discretion to take judicial notice of certain categories of 9 fact not subject to reasonable dispute under Federal Rule of Evidence 201. Id. Additionally, a 10 court may consider documents that are incorporated by reference in the pleadings. Id. 11 Where, as here, a defendant moves to dismiss on both 12(b)(2) and 12(b)(6) grounds, the 12 Court may consider materials outside the pleadings for the limited purpose of determining whether 13 it has jurisdiction over the non-resident defendants, but the Court does not consider the same 14 materials for determining whether the complaint states a claim. Stewart v. Screen Gems-EMI 15 Music, Inc., 81 F. Supp. 3d 938, 951 (N.D. Cal. 2015). 16 F. The Court Grants In Part and Denies In Part Plaintiff’s Motion to Seal. 17 Plaintiff seeks to seal portions of its opposition to the motions to dismiss and Exhibit 1 to 18 the Declaration of Brian S. Conlon in its entirety. (Dkt. No. 42.) The Court has reviewed the 19 motion and the documents, and it finds compelling reasons to seal Exhibit 1. Exhibit 1 reveals 20 certain of the Defendants’ confidential business information that could harm their competitive or 21 financial standing if disclosed. However, the portions of Exhibit 1 referenced in Plaintiff’s 22 opposition do not threaten Defendants’ competitive or financial standing. 23 The Court therefore grants Plaintiff’s motion to seal Exhibit 1, but denies the motion as to 24 the redacted portions of Plaintiff’s opposition. Plaintiff shall file an unredacted version of its 25 opposition on the public docket within seven days of this Order. 26 G. The Record Is Not Sufficiently Developed to Determine Whether the Court Has 27 Personal Jurisdiction Over the French Defendants. 1 Fourteenth Amendment’s Due Process Clause and the long arm statute of the state in which the 2 court sits to determine personal jurisdiction. Impossible Foods Inc. v. Impossible X LLC, 80 F.4th 3 1079, 1086 (9th Cir. 2023). California’s long arm statute allows courts to exercise jurisdiction “on 4 any basis not inconsistent with due process.” Id. Accordingly, the analysis under both authorities 5 is the same. Schwarzenegger, 374 F.3d at 800–01. The exercise of jurisdiction is consistent with 6 due process if it is “reasonable, in the context of our federal system of government” and “does not 7 offend traditional notions of fair play and substantial justice.” International Shoe Co. v. 8 Washington, 326 U.S. 310, 316-17 (1945). Courts recognize two primary forms of personal 9 jurisdiction: general and specific. Impossible Foods, 80 F.4th at 1086. 10 Where a defendant is subject to general jurisdiction, it may be haled into court for any 11 dispute, regardless of whether that dispute arises from the defendant’s contacts with the forum. 12 Schwarzenegger, 374 F.3d at 801. Thus, in order to comport with due process, general 13 jurisdiction extends only to defendants who are “essentially at home” in the forum. Ford Motor 14 Co. v. Montana Eighth Jud. Dist. Ct., 592 U.S. 351, 358 (2021) (quoting Goodyear Dunlop Tires 15 Operations, S.A. v. Brown, 564 U.S. 915, 919 (2011)). In the “paradigm” case, a corporation is 16 subject to general jurisdiction in “its place of incorporation and principal place of business.” Id. 17 Here, the Court does not have general jurisdiction over the French Defendants because they are 18 incorporated and headquartered in France. (Vesval Decl., ¶¶ 2, 4; Hindermeyer-Cayez Decl., ¶ 3.) 19 Specific jurisdiction attaches to “a narrower class of claims.” Ford Motor, 592 U.S. at 20 359. In order to hale a nonresident defendant into court under a specific jurisdiction theory, the 21 defendant must have sufficient “minimum contacts” with the forum to comport with due process; 22 that is, the defendant’s “suit-related conduct must create a substantial connection with the forum 23 State.” Walden v. Fiore, 571 U.S. 277, 284 (2014). In determining whether specific jurisdiction 24 applies, courts undertake a three-prong analysis: “(1) the defendant must either ‘purposefully 25 direct his activities’ toward the forum or ‘purposefully avail himself of the privileges of 26 conducting activities in the forum’; (2) the claim must be one which arises out of or relates to the 27 defendant's forum-related activities; and (3) ‘the exercise of jurisdiction must comport with fair 1 874 F.3d 1064, 1068 (9th Cir. 2017)) (quoting Dole Food Co., Inc. v. Watts, 303 F.3d 1104, 1111 2 (9th Cir. 2002)). “The plaintiff bears the burden of satisfying the first two prongs of the test.” 3 Schwarzenegger, 374 F.3d at 802. If the plaintiff meets its burden, the defendant then bears the 4 burden of showing that the exercise of jurisdiction would be unreasonable. Id. 5 The Court must analyze each non-resident defendant’s contacts with California and the 6 United States separately. Harris Rutsky & Co. Ins. Servs. v. Bell & Clements Ltd., 328 F.3d 1122, 7 1130 (9th Cir. 2003). 8 Olympique de Marseilles, SASP, OM Developpement, SAS, and BMG France contend 9 that nothing in the FAC connects their conduct to California or even the United States. Plaintiff 10 contends that the French Defendants directed their conduct at California and toward Plaintiff 11 specifically, and, further, that the French Defendants are tied to California through BMG U.S.’s 12 contacts with the forum. 13 The Court finds that Plaintiff has not made a prima facie showing of personal jurisdiction 14 over the French Defendants. However, because limited jurisdictional discovery is appropriate, the 15 Court defers ruling on the French Defendants’ 12(b)(2) motions at this time. 16 1. Plaintiff Has Not Demonstrated Purposeful Direction. 17 Where, as here, the alleged non-forum conduct sounds in tort, courts employ the 18 “purposeful direction test”—also known as the “Calder effects test”—to determine whether the 19 nonresident defendant “purposefully directed” his conduct toward the forum under the first prong 20 of the specific jurisdiction analysis. Axiom Foods, 874 F.3d at 1069. To satisfy the purposeful 21 direction test, the “defendant must have ‘(1) committed an intentional act, (2) expressly aimed at 22 the forum state, (3) causing harm that the defendant knows is likely to be suffered in the forum 23 state.’” Id. (quoting Washington Shoe Co. v. A-Z Sporting Goods Inc., 704 F.3d 668, 673 (9th Cir. 24 2012), abrogated on other grounds by Axiom Foods, 874 F.3d at 1070). 25 a. The French Defendants Committed Intentional Acts. 26 “‘Intentional act’ has a specialized meaning in the context of the Calder effects test.” 27 Schwarzenegger, 374 F.3d at 806. “Intent” refers to “an intent to perform an actual, physical act 1 “act” “denote[s] an external manifestation of the actor’s will.” Id. (quoting Restatement (Second) 2 of Torts § 2 (Am. L. Inst. 1964)); see, e.g., id. (finding the defendant committed an intentional act 3 by placing an advertisement with the plaintiff’s image in a local paper). 4 Here, Defendants BMG France and Olympique de Marseille acted intentionally by 5 physically creating the “OM Records” label and in funding, producing, distributing, and 6 advertising music and music videos. (See Term Sheet, at 1; Vesval Decl., ¶ 5); see also 7 Washington Shoe Co., 704 F.3d at 674 (intentional act prong met “by [defendant] intentionally 8 engaging in the actual, physical acts of purchasing and selling the allegedly infringing products”). 9 OM Developpement committed an intentional act by applying to register a mark with the 10 U.S. Trademark Office for the words “OM Records” and the venture’s logo. (See Vesval Decl., ¶ 11 11.) 12 The first prong of the Calder effects test is thus satisfied. 13 b. Plaintiff Fails to Show Express Aiming. 14 Plaintiff must next show that the French Defendants expressly aimed their conduct at the 15 forum. A defendant’s knowledge of the plaintiff’s forum connections is insufficient to constitute 16 “express aiming.” Walden v. Fiore, 571 U.S. at 289. Nor do the defendant’s connections with 17 third parties suffice. Axiom Foods, 874 F.3d at 1068. Instead, the express aiming requirement 18 may be met only through each of the defendants’ “own contacts” with the forum. Id. at 1069 19 (quoting Walden, 571 U.S. at 289). 20 i. Defendants’ Alleged Knowledge of Plaintiff’s Business Does Not Create Express Aiming. 21 Plaintiff asserts that this Court should find personal jurisdiction over the French 22 Defendants because the French Defendants were aware of Plaintiff’s business and residence in this 23 District. Plaintiff had a longstanding, prior relationship with BMG US, and Plaintiff contacted 24 BMG US the day after OM Records launched to complain about the “OM Records” name. The 25 following month, Plaintiff sent a cease-and-desist letter to Olympique de Marseille and BMG 26 France informing them that Plaintiff operated Om Records from San Francisco. (Conlon Decl., ¶ 27 5, Ex. 4.) Counsel for Olympique de Marseille responded to the letter, demonstrating receipt. 1 (Id., Ex. 5, at 3.) 2 Defendants’ knowledge of Plaintiff’s use of “Om Records” is “relevant to the minimum 3 contacts inquiry,” but does not, “own its own, support the exercise of personal jurisdiction.” See 4 Axiom Foods, 874 F.3d at 1069-70. In cases where “express aiming” has been found on the basis 5 of targeting the plaintiff in the forum, courts have noted particular features of the plaintiff’s forum 6 connections which the defendant sought to exploit. See, e.g., Mavrix Photo, 647 F.3d at 1229–30 7 (holding “something more” was present where defendant’s website included forum-based 8 advertisements and profited from forum-based audience); Friedman v. PopSugar, Inc., No. 9 218CV05888CASMAAX, 2018 WL 6016963, at *8 (C.D. Cal. Oct. 29, 2018) (finding express 10 aiming where defendant took advantage of plaintiff’s beachy Los Angeles aesthetic to generate 11 content linking defendant to Los Angeles’s beach and celebrity culture). 12 Here, Plaintiff does not articulate any reason why the French Defendants’ knowledge of 13 Plaintiff’s forum presence satisfies the inquiry into Defendants’—rather than Plaintiff’s—forum 14 ties. See Axiom Foods, 874 F.3d at 1069; see also Walden, 571 U.S. at 289 (holding that 15 defendant’s knowledge plaintiff would feel effect in forum could not create jurisdiction because 16 “[s]uch reasoning improperly attributes a plaintiff's forum connections to the defendant and makes 17 those connections “decisive” in the jurisdictional analysis.”). 18 Even if “individualized targeting” were sufficient to establish jurisdiction, Plaintiff has not 19 adequately shown that each of the French Defendants was aware of its existence in California. 20 BMG US, not BMG France, had a prior relationship with Plaintiff. Plaintiff sent a cease-and- 21 desist letter to BMG France and Olympique de Marseille, not to OM Developpement. It is thus 22 unclear if, when, and which of the French Defendants had knowledge of Plaintiff’s label. 23 ii. Defendants’ Use of California-based Social Media, Music, and 24 Video Channels Does Not Constitute Express Aiming. 25 Plaintiff argues that the French Defendants directed their conduct at California because 26 they used websites based in California, with California law-governed terms of service, to promote 27 the “OM Records” label. This argument overreaches. 1 YouTube, and the like are irrelevant to the specific jurisdiction inquiry in this case. Plaintiff does 2 not contend—nor could it—that this dispute arises from those terms of service. See AMA 3 Multimedia, LLC, 970 F.3d at 1212 (noting that disputes governed by agreement between 4 defendant and third party by terms of service could be subject to personal jurisdiction, but 5 existence of contract did not otherwise impact specific jurisdiction inquiry). 6 Nor does Defendants’ use of California-based streaming and social media platforms 7 demonstrate express aiming at California in promoting or using the allegedly infringing label. As 8 courts in this district have repeatedly found, “[a]ccepting such an argument would ‘subject 9 millions of persons around the globe to personal jurisdiction in California’ and ‘render the 10 expressly aimed prong of the Calder test essentially meaningless.’” St Andrews Links Ltd. v. 11 Source & Design Int'l (UK) LTD, No. 21-CV-06470-JST, 2022 WL 11902199, at *5 (N.D. Cal. 12 Oct. 20, 2022) (quoting DFSB Kollective Co. v. Bourne, 897 F. Supp. 2d 871, 883 (N.D. Cal. 13 2012); Datatech Enters. LLC v. FF Magnat Ltd., No. C 12-04500 CRB, 2012 WL 4068624, at *3 14 (N.D. Cal. Sept. 14, 2012)). 15 Plaintiff’s allegations, and the large quantity of social media screen captures Plaintiff 16 presents to the Court, do not show that the social media and streaming content by the French 17 Defendants targeted California in any relevant way. Much of the content, such as the existence of 18 Facebook groups for L.A.-based fans of the Olympique de Marseille soccer club, and a related 19 tweet from the club president that he “Loves L.A.,” has no relation to the alleged infringement. 20 Further, Plaintiff has made no showing that the OM Records-related web content “appeals to, and 21 profits from, an audience in the forum.” Mavrix Photo, 647 F.3d at 1229-30. Instead, the 22 materials before the Court show that the French Defendants produced mostly French content 23 intended to target Francophone audiences in primarily Francophone countries. While the content 24 may have been accessible in California, “not all material placed on the Internet is, solely by virtue 25 of its universal accessibility, expressly aimed at every state in which it is accessed.” Id. at 1231; 26 see St Andrews Links Ltd., 2022 WL 11902199, at *3 (holding “[t]he simple fact that Defendants' 27 websites are interactive and accessible to Californians is not enough to satisfy the express aiming iii. Defendants’ Deal with California-based Trackdilla Does Not 1 Show Express Aiming Towards the Forum. 2 Plaintiff next argues that Defendants directly targeted California “by dealing with and 3 promoting California artists in California, resulting in music charting in the U.S. market and 4 receiving a California-based award for music in California.” (Opp. at 16.) The artist in question, 5 Trackdilla, appears to have signed an agreement with OM Records at BMG US’s Los Angeles 6 office. (Conlon Decl., Ex. 18.) Trackdilla won the 2021 Hollywood and African Prestigious 7 Award for “best collaboration” and attended the ceremony in Los Angeles. (Id., Ex. 24.) 8 The OM Defendants respond that “OM Records’ singular connection with an Afro-French 9 individual who happens to live in California. . . does not constitute a ‘substantial connection’” 10 with California, but rather with an individual in the forum. (Dkt. No. 50, OM Reply, at 7 (citing 11 Walden, 571 U.S. at 286).) Moreover, the OM Defendants claim that Trackdilla’s award and 12 commercial success in the United States are irrelevant to the analysis because they do not show 13 conduct by the French Defendants. (Id.) BMG France agrees, and it adds that signing a contract 14 in Los Angeles with a third party does not relate to infringement of Plaintiff’s mark in California. 15 (Dkt. No. 51, BMG Reply, at 5 n.7.) 16 Based on the evidence currently before the Court, OM Records’ contract with Trackdilla 17 and his subsequent commercial successes do not constitute minimum contacts between the French 18 Defendants and the forum state. Contracts with third parties, even third parties known to have 19 substantial business in California, do not on their own constitute express aiming. Cf. Tangle, Inc. 20 v. Buffalo Games, LLC, No. 22-CV-07024-JSC, 2023 WL 2774452, at *4 (N.D. Cal. Apr. 3, 2023) 21 (holding California sales by third-party with which defendant had contracted did not support a 22 finding that defendant expressly aimed conduct toward California). Plaintiff does not (and could 23 not) allege that the French Defendants violated the terms of their contract with Trackdilla. Nor 24 does it provide any evidence showing that the French Defendants were directly involved in 25 Trackdilla’s promotional activities within California. 26 *** 27 None of the contacts alleged by Plaintiff satisfy the “purposeful direction” prong of the 1 their activities towards California, it does not address whether Plaintiff’s claims relate to the 2 French Defendants’ California contacts or whether the exercise of personal jurisdiction over the 3 French Defendants is reasonable in this case. 4 2. Plaintiff Has Not Shown Rule 4(k)(2) Jurisdiction Applies. 5 Plaintiff next argues that personal jurisdiction over the French Defendants is appropriate 6 under Federal Rule of Civil Procedure 4(k)(2). Rule 4(k)(2) provides for federal jurisdiction for 7 claims that arise under federal law; where the defendant has been served or waived service; “the 8 defendant is not subject to jurisdiction in any state’s courts of general jurisdiction”; and 9 “exercising jurisdiction is consistent with the United States Constitution and laws.” Fed. R. Civ. 10 Proc. 4(k)(2). Rule 4(k)(2) jurisdiction is appropriate if a nonresident defendant has extensive 11 contacts with the United States, but where those contacts “are so scattered among states that none 12 of them would have jurisdiction.” Lang Van, Inc. v. VNG Corp., 40 F.4th 1034, 1040 (9th Cir. 13 2022) (quoting ISI Int'l, Inc. v. Borden Ladner Gervais LLP, 256 F.3d 548, 551 (7th Cir. 2001)). 14 Federal longarm jurisdiction is disfavored, and Plaintiff faces a “high bar” to demonstrate 15 minimum contacts with the nation as a whole. Fumoto Giken Co. v. Mistuoka, No. 16 CV149797DMGMRWX, 2015 WL 12766167, at *4 (C.D. Cal. Apr. 16, 2015). 17 The French Defendants waived service. (Dkt. Nos. 17, 31.) As the French Defendants are 18 incorporated and headquartered in France, they are not subject to general jurisdiction in the United 19 States. Accordingly, longarm federal jurisdiction lies if exercising specific jurisdiction comports 20 with due process. In re Volkswagen “Clean Diesel” Mktg., 2017 WL 4890594, at *17 (N.D. Cal. 21 Oct. 30, 2017). This “due process analysis is identical to the analysis for the forum state except 22 the relevant forum is the United States as a whole.” Monster Cable Prod., Inc. v. Euroflex S.R.L., 23 642 F. Supp. 2d 1001, 1008 (N.D. Cal. 2009). In step one of the specific jurisdiction analysis, 24 Plaintiff must demonstrate that the French Defendants purposefully directed their conduct to the 25 United States. 26 As discussed above, the BMG France and Olympique de Marseille committed intentional 27 acts by entering into the OM Records partnership, and OM Developpement committed an 1 knowledge of Plaintiff’s existence, their use of websites and social media, and their contract with 2 Trackdilla do not provide sufficient contacts to show that the French Defendants purposefully 3 directed their conduct towards the United States. The uncontradicted affidavits provided by the 4 French Defendants and the partnership agreement giving rise to the OM Records venture show 5 that the conduct was directed towards France and Francophone countries, not towards the United 6 States. 7 Plaintiff provides five additional bases for exercising federal jurisdiction over the French 8 Defendants: (1) the role of John Loeffler, from BMG US, in the enterprise; (2) the role of Frank 9 McCourt, Olympique de Marseille’s American owner, in the enterprise; (3) the English-language 10 story run by Billboard staff announcing the launch of OM Records; (4) “English-language U.S.- 11 based recordings” produced by OM Records which charted in the United States via Apple Music; 12 and (5) OM Developpement’s trademark application for “OM RECORDS” with the U.S. 13 Trademark Office. (Opp. at 20.) These alleged contacts do not move the needle. 14 i. The Involvement of John Loeffler and Frank McCourt Does Not 15 Relate to the French Defendants. 16 Plaintiff alleges that American Mr. McCourt, owner of the Olympique de Marseille soccer 17 team, conceived of the idea for the infringing label and that Mr. Loeffler, a resident of New York, 18 participated in the project. Their alleged participation does not create minimum contacts with the 19 United States. Plaintiff does not explain how either McCourt or Loeffler’s conduct can be 20 attributed to any of the French Defendants, or even whether McCourt or Loeffler’s conduct 21 occurred within the United States. Neither individual is named as a party to this action, and 22 beyond conclusory allegations that all Defendants acted in concert and are responsible for the 23 others, neither is alleged to have acted on behalf of the French Defendants. 24 Loeffler is an officer with BMG US, a separate legal entity from BMG France. Although 25 named in the partnership agreement as being “involved,” he was not a signatory. The only other 26 evidence provided to the Court regarding Loeffler’s involvement is a statement Loeffler made to 27 the press celebrating the partnership between BMG and Olympique de Marseille. In order for 1 showing that Loeffler’s actions could be imputed to BMG US, and second that BMG US is an 2 alter ego of BMG France. See Ranza v. Nike, Inc., 793 F.3d 1059, 1071 (9th Cir. 2015) 3 (explaining that personal jurisdiction may be imputed to foreign related company if the entities are 4 “‘not really separate entities,’ such that one entity’s contacts with the forum state can be fairly 5 attributed to the other”) (quoting Doe v. Unocal Corp., 248 F.3d 915, 926 (9th Cir. 2001)). 6 Plaintiff does not attempt a prima facie showing that the BMG sister companies are alter egos of 7 each other. 8 McCourt owns the Olympique de Marseille soccer club, which is a separate legal entity 9 from OM Developpement. Like Loeffler, McCourt did not sign the partnership agreement. 10 Plaintiff makes no showing that McCourt is personally responsible for Olympique de Marseille’s 11 conduct, or that McCourt’s conduct should be imputed to Olympique de Marseille. See Uhlig v. 12 Fairn & Swanson Holdings, Inc., No. 20-CV-00887-DMS-MSB, 2020 WL 6872881, at *3 (S.D. 13 Cal. Nov. 23, 2020) (holding that “ownership and control of [nonresident defendant] alone do not 14 establish the requisite level of control for alter ego jurisdiction”). 15 At best, there is an attenuated connection between these nonparty individuals and the 16 foreign defendants, but this connection does not demonstrate that the French Defendants purposely 17 directed their activities towards the United States. 18 ii. Billboard’s Story Cannot Be Imputed to the French Defendants. 19 Plaintiff does not provide any reason why Billboard’s publication should be connected to 20 the French Defendants. Plaintiff does not, for example, contend that the French Defendants hired 21 Billboard to promote the launch of their OM Records label within the United States. Instead, 22 Plaintiff alleges that the Defendants issued a press release online in French and English to 23 announce the partnership, and that Billboard “ran an article” on the launch. (FAC ¶ 25.) Nothing 24 suggests that the French Defendants are responsible for this third-party’s reporting. 25 iii. Plaintiff Presents No Nationwide Contacts Arising from OM Record’s Relationship with Trackdilla that Differ from the 26 French Defendants’ Contacts with California. 27 The Court assumes that the “English-language U.S.-based recordings available to U.S. 1 Plaintiff’s opposition. The French Defendants’ relationship with Trackdilla does not create 2 minimum contacts with the United States for the same reason it does not create minimum contacts 3 with California: contracts with third parties do not constitute express aiming towards the forum. 4 iv. OM Developpement’s Application for Trademark Registration 5 Is Likewise Insufficient to Constitute Express Aiming. 6 Plaintiff last contends that the “OM Defendants” attempted to “usurp” its business by filing 7 to register “OM RECORDS” with the U.S. Trademark Office. OM Developpement (not 8 Olympique de Marseille) applied to register the mark. (See Vesval Decl., ¶ 11; Conlon Decl., Ex. 9 11.) OM Developpement abandoned the application after Om Records filed an opposition. 10 (Conlon Decl., Ex. 11.) 11 Plaintiff cites to two district court cases for the proposition that an application for 12 trademark registration constitutes minimum contacts between a nonresident entity and the United 13 States for jurisdiction under Rule 4(k)(2): 14 In the first, Monster Cable, an Italian corporation filed a trademark application for the 15 mark “MONSTER” “for use in connection with multi-purpose steam cleaners for domestic use.” 16 Monster Cable Prod., Inc. v. Euroflex S.R.L., 642 F. Supp. 2d 1001, 1006 (N.D. Cal. 2009). The 17 plaintiff, an American entity which also used the term “MONSTER” in connection with cleaning 18 products, brought suit for trademark infringement after unsuccessfully opposing the registration. 19 Id. The district court found that the defendant did not “purposefully direct” its activities towards 20 the United States, but, by registering a trademark, that it had “purposefully availed” itself of the 21 benefits of doing business within the United States. Id. at 1010. Because the Italian defendant 22 would be able to sue others who infringed the “MONSTER” mark, it had “invoke[d] the benefits 23 and protections of trademark law.” Id. Fairness and common sense dictated that it could be sued 24 on the same basis. 25 In the second case cited by Plaintiff, Expensify, the U.S.-based plaintiff sought declaratory 26 judgment of non-infringement, cancellation of the defendants’ trademark, and damages for false or 27 fraudulent registration. Expensify, Inc. v. Swappoint AG, No. 22-CV-05720-LB, 2023 WL 1 filed its competing mark in an attempt to interfere with the plaintiff’s program. Id. at *2. The 2 district court found that “the trademark registration is enough” to establish express aiming. Id. at 3 *7. The act of registration could not be attenuated from a declaratory suit as to its validity. Id. 4 The OM Defendants respond that Monster Cable and Expensify are outlier cases where 5 jurisdiction was appropriate because the trademark registrations themselves were at the core of the 6 disputes. The OM Defendants provide contrary cases which they contend are more persuasive. 7 For example, in Fumoto Giken Co. v. Mitsuoka, the district court found that Monster Cable’s 8 reasoning that trademark registration alone constitutes “purposeful availment” conflicts with “the 9 Ninth Circuit’s cautious application of Rule 4(k)(2).” 2015 WL 12766167, at *5. In that case, a 10 Canadian defendant owned an interactive website that promoted its allegedly infringing products, 11 had solicited business in California, and owned American trademark registrations for the allegedly 12 infringing marks. Id. at **1, 3. After finding that the website and solicitation within the United 13 States were not sufficient to establish “purposeful direction” toward the country, the court rejected 14 the idea that a trademark registration alone could transform otherwise minimal contacts into 15 substantial contacts such that Rule 4(k)(2) jurisdiction was appropriate. Id. at *5. Subsequent 16 district court decisions have followed Fumoto’s reasoning to find that trademarks or trademark 17 applications do not, without more, establish express aiming. See St. Andrews Links Ltd., 2022 WL 18 11902199, at *5 (finding denied trademark application did was too attenuated to create jurisdiction 19 over UK-based defendant); Athleta, Inc. v. Sports Grp. Denmark A/S, No. 22-CV-03192-JST, 20 2023 WL 4110097, at *3 (N.D. Cal. June 20, 2023) (holding abandoned trademark application 21 does not justify exercise of federal longarm jurisdiction over Danish defendant). 22 The Court finds the reasoning in Fumoto persuasive. OM Developpement’s abandoned 23 trademark application does not, without more, transform its conduct into express aiming towards 24 the United States, and it does not rise to the level of “extensive contacts” with the United States 25 required to create federal longarm jurisdiction. Holland Am. Line Inc. v. Wartsila N. Am., Inc., 26 485 F.3d 450, 462 (9th Cir. 2007). Unlike the defendant in Monster Cable, which both registered 27 the infringing mark and distributed products with the mark within the United States, OM 1 abandon the mark upon Plaintiff’s opposition. See Monster Cable, 642 F. Supp. 2d at 1006; 2 (Conlon Decl., Ex. 11.) This case differs from Expensify as well, because, in that case, the 3 plaintiff challenged the defendant’s successful registration as fraudulent, whereas here OM 4 Developpement did not obtain registration. See Expensify, 2023 WL 6323103, at *7. 5 Accordingly, OM Developpement’s abandoned trademark application is insufficient to 6 confer personal jurisdiction over the French Defendants under Rule 4(k)(2). 7 3. Limited Jurisdictional Discovery Is Warranted. 8 Plaintiff requests that it be given an opportunity for jurisdictional discovery. Specifically, 9 Plaintiff requests a 90-day discovery period in which to probe the OM Records’ streams and sales 10 in California, communications with California and U.S.-based personnel, and work in California 11 relating to OM Records’ agreement with Trackdilla. (Opp. at 19.) The French Defendants 12 contend that jurisdictional discovery is unwarranted because none of Plaintiff’s allegations, if true, 13 would create personal jurisdiction over the French Defendants. 14 In the Ninth Circuit, a plaintiff may be entitled to jurisdictional discovery if additional 15 facts will help clarify a controverted personal jurisdiction dispute. Boschetto v. Hansing, 539 F.3d 16 1011, 1020 (9th Cir. 2008). Although more than a hunch is required for a plaintiff to be entitled to 17 jurisdictional discovery, a prima facie showing of personal jurisdiction is not. Id.; see Harris 18 Rutsky & Co. Ins. Servs. v. Bell & Clements Ltd., 328 F.3d 1122, 1135 (9th Cir. 2003) (remanding 19 for jurisdictional discovery where plaintiff did not have record to make prima facie showing of 20 jurisdiction). 21 Here, Plaintiff conflates the actions of all French Defendants with each other and with 22 BMG US. Further inquiry into each of the French Defendants’ actions with regard to use and 23 distribution of the OM Records mark in California or the United States could yield evidence that 24 the French Defendants did target California or the United States, rather than merely France and 25 other Francophone countries. In particular, evidence that the French Defendants promoted the 26 “OM Records” brand within California in conjunction with Trackdilla could support a finding of 27 purposeful direction here. The Court finds that limited jurisdictional discovery is appropriate. 1 jurisdictional discovery and potential discovery matters that may arise to a randomly assigned 2 magistrate judge. 3 H. The Court Declines to Dismiss on the Basis of Forum Non Conveniens. 4 The French Defendants ask the Court to dismiss the action on forum non conveniens 5 grounds. When ruling on a motion to dismiss for forum non conveniens, courts must consider the 6 availability of an adequate alternative forum and whether the balance of private and public interest 7 factors favors dismissal. Lueck v. Sundstrand Corp., 236 F.3d 1137, 1142 (9th Cir. 2001) (citing 8 Piper Aircraft Co. v. Reyno, 454 U.S. 235, 254 n.22 (1981)). The French Defendants face a 9 “heavy burden of proof” in showing that an adequate alternative forum exists because Plaintiff is 10 an American citizen of this judicial district. Id. at 1143. 11 The French Defendants have not met this heavy burden. The OM Defendants point, 12 without elaboration, to the existence of “courts in the United Kingdom, France, and the European 13 Union—where the OM Defendants are amenable to service of process.” (OM Mot. at 12.)5 The 14 BMG Defendants incorporate the OM Defendants’ arguments by reference. (BMG Mot. at 4.) It 15 is not until the OM Defendants’ reply, in a footnote, that the French Defendants provide any 16 evidence or citation to judicial remedies for trademark infringement in European, French, or 17 British courts. (Dkt. No. 50, OM Reply at 5 n.19.) The Court is not required to consider 18 arguments and evidence presented for the first time on reply or in footnotes. Estate of Saunders v. 19 Comm’r, 745 F.3d 953, 962 n.8 (9th Cir. 2014). Given their heavy burden, the French 20 Defendants’ efforts were too little, too late, to establish the adequacy of an alternative forum. 21 I. The FAC States a Claim Upon Which Relief May Be Granted as to the OM 22 Defendants, But Not as to the BMG Defendants. 23 The French Defendants seek dismissal of Plaintiff’s Lanham Act claim under Rule 24 12(b)(6) because the Act does not apply to conduct outside of the United States. All Defendants 25 26 5 The OM Defendants also point to the U.K. Intellectual Property Office and the EUIPO, where Plaintiff has already challenged the French Defendants’ use of “OM Records.” (Id.) On reply, 27 they clarify that these proceedings “are evidence that this is a European controversy,” not that the 1 further argue that the FAC should be dismissed for failure to comport with Rule 8’s notice 2 pleading standard because Plaintiff engages in group pleading. 3 1. Plaintiff Alleges Domestic Use of “OM Records.” 4 The Lanham Act protects trademarks—that is, marks used in commerce which “identify 5 and distinguish goods.” Jack Daniel’s Properties, Inc. v. VIP Prods. LLC, 599 U.S. 140, 146-47 6 (2023) (quoting 3 McCarthy, Trademarks and Unfair Competition § 19:10 (5th ed. 2023)). A 7 holder of a registered trademark, or an unregistered trademark who uses the mark in commerce, 8 can bring suit to stop others from using similar marks that are “likely to cause confusion, or to 9 cause mistake, or to deceive.” 15 U.S.C. § 1125(a)(1)(A). 10 Last year, the Supreme Court ruled that the Lanham Act does not apply to extraterritorial 11 use of U.S. trademarks. Abitron Austria GmbH v. Hetronic Int'l, Inc., 600 U.S. 412, 415 (2023). 12 In that case, foreign defendants manufactured and sold infringing products “mostly” in Europe, 13 but made “some” sales directly into the United States. Id. The Court explained that the relevant 14 conduct is “use in commerce,” meaning “the bona fide use of a mark in the ordinary course of 15 trade, where the mark serves to identify and distinguish the mark user’s goods and to indicate the 16 source of the goods.” Id. at 428 (internal marks omitted). The Court then remanded the case for 17 the district court to determine the extraterritoriality of the defendants’ conduct. 18 In a concurring opinion, Justice Jackson offered additional guidance: “If a marked good is 19 in domestic commerce, and the mark is serving a source-identifying function in the way Congress 20 described, [the Lanham Act] may reach the ‘person,’ § 1127, who is ‘us[ing that m]ark as a 21 trademark.” Id. at 430 (Jackson, J. concurring) (quoting Jack Daniel’s Properties, Inc. v. VIP 22 Prods. LLC, 599 U.S. 140, 157 (2023)). A foreign defendant need not sell its products in or 23 directly into the United States to use the mark in domestic commerce, so long as the mark is sold 24 within the United States and identifies the source. Id. at 431-32. Finally, Justice Jackson 25 speculated that “in the internet age, one could imagine a mark serving its critical source- 26 identifying function in domestic commerce even absent the domestic physical presence of the 27 items whose source it identifies.” Id. at 432 n.2. 1 Plaintiff adequately alleges domestic use of the “OM Records” mark by Defendants. Plaintiff 2 alleges that Defendants made music recordings and videos with the mark “available to the U.S. 3 consuming public” and “accessible in the U.S.” for sale and streaming. (FAC ¶¶ 30, 34.) Plaintiff 4 does not take the next step of alleging that the OM Records music recordings and videos were 5 actually accessed or purchased by any domestic consumers or sold by any platforms or retailers 6 within the United States; however, the Internet platforms accessible to American consumers and 7 based in the United States are effectively a storefront for digital music and music video sales. See 8 Abitron, 600 U.S. at 432 n.2 (Jackson, J. concurring). By using the “OM Records” moniker to 9 post content accessible in the United States, Defendants placed the mark in domestic commerce. 10 To be clear, Plaintiff may not recover under the Lanham Act for any allegedly infringing 11 conduct that occurred solely outside of the United States. See Abitron, 600 U.S. at 428 (warning 12 against applying the Lanham Act to conduct in the European Union). The Lanham Act extends to 13 Defendants only insofar as they placed infringing goods in the domestic market. Plaintiff alleges 14 Defendants did so. 15 2. The FAC Adequately Alleges Likelihood of Confusion. 16 The Court finds that the FAC adequately alleges that the “OM Records” label risks 17 consumer confusion with the “Om Records” label. Although Plaintiff’s direct allegations on this 18 point are either conclusory (see FAC ¶¶ 33, 44) or in relation to foreign consumers (id. ¶ 32), and 19 although Plaintiff provides little argument to assist the Court on this point, the Court reasonably 20 infers risk of confusion from the FAC. 21 As a matter of common sense, “OM Records” and “Om Records” are nearly identical 22 names for music labels, and that near-identity is likely to result in confusion. This inference is 23 bolstered by Plaintiff’s allegation that the U.S. Trademark Office suspended Plaintiff’s “Om 24 Records” mark on the basis of potential confusion with OM Developpement’s application for an 25 “OM Records” mark. (Id. ¶ 31.) Plaintiff also alleges that the U.K. Intellectual Property Office 26 and EUIPO have found Plaintiff possesses superior rights to the name “OM RECORDS” than 27 Defendants—outcomes which suggest the marks are confusingly similar. (Id. ¶¶ 37, 38.) 1 3. Plaintiff Does Not Adequately Allege Conduct by the BMG Defendants. 2 Rule 8 requires plaintiffs suing multiple defendants to provide “the basis of [their] claim 3 against each defendant.” BSD Crown, LTD. v. Amazon.com, Inc., 684 F. Supp. 3d 993, 998 (N.D. 4 Cal. 2023) (quoting Gauvin v. Trombatore, 682 F. Supp. 1067, 1071 (N.D. Cal. 1988)). This 5 requires plaintiffs to allege both the “nature” and the “grounds” of their claims against each 6 defendant. See Twombly, 550 U.S. at 545 (holding that “a plaintiff’s obligation to provide the 7 ‘grounds’ of his ‘entitlement to relief’ requires more than labels and conclusions”). “Specific 8 identification of the parties to the activities alleged by the plaintiffs is required . . . to enable the 9 defendant to plead intelligently.” Flores v. EMC Mortg. Co., 997 F. Supp. 2d 1088, 1103 (E.D. 10 Cal. 2014) (quoting Van Dyke Ford, Inc. v. Ford Motor Co., 399 F.Supp. 277, 284 (D.Wis.1975)). 11 In order to plead a single enterprise theory, a complaint must include sufficient facts “to 12 support a plausible claim that: (1) there is such a unity of interest and ownership that the separate 13 personalities of the two corporations no longer exist; and (2) if the acts are treated as those of only 14 one of the corporations, an inequitable result will follow.” Stewart v. Screen Gems-EMI Music, 15 Inc., 81 F. Supp. 3d 938, 960 (N.D. Cal. 2015). 16 Here, the FAC groups together BMG US and BMG France as “BMG,” and Olympique de 17 Marseille and OM Developpement as “Olympique de Marseille.” (FAC ¶¶ 10-11.) The FAC 18 groups all four together as “Defendants,” and then attributes all acts by any Defendant to all. (Id. 19 ¶ 11.) Defendants are on notice of the nature of the claims against them: infringement of 20 Plaintiff’s trademarks. See, e.g., Adobe Sys. Inc. v. Blue Source Grp., Inc., 125 F. Supp. 3d 945, 21 965 (N.D. Cal. 2015) (finding lumping of defendants together permissible where “gravamen” of 22 claim was all defendants infringed trademarks). 23 As relates to the BMG Defendants, however, the grounds on which the claims rest are 24 lacking. As to BMG US, the FAC alleges the conclusion that an officer with BMG US “was 25 responsible for conceiving and launching OM Records.” (FAC ¶ 11.) This conclusion appears 26 based upon the allegation that “Olympique de Marseille’s American owner approached [the BMG 27 US executive] about a partnership between the soccer club and BMG to create a new label.” (Id. ¶ 1 BMG France. No specific role for either BMG entity is alleged. (See generally, id.) 2 The FAC instead offers the legal conclusion that BMG US and BMG France “operate as a 3 single enterprise,” and it lumps all Defendants together for all remaining allegations. (Id. ¶ 11.) 4 Yet this “single enterprise” assertion is bereft of support. The FAC notes simply that both BMG 5 Defendants share a parent company and refer to themselves as “BMG” in public-facing 6 communications. (Id.) These scant allegations do not show that BMG US and BMG France are 7 alter egos of each other such that BMG US’s conduct can be imputed to BMG France. Without 8 more, it is unclear from the face of the FAC what conduct the BMG Defendants allegedly engaged 9 in that gives rise to liability. 10 The FAC similarly lacks allegations showing that Olympique de Marseille and OM 11 Developpement operate as a single enterprise. However, The FAC alleges at least some specific 12 conduct by each of Olympique de Marseille and OM Developpement: Olympique de Marseille 13 launched and operated OM Records, (see FAC ¶¶ 1, 3, 28), and OM Developpement sought to 14 register the “OM Records” mark, (id. ¶ 10). 15 4. The Court Declines to Dismiss the State Law Claims Against the OM 16 Defendants. 17 The OM Defendants contend that Plaintiff’s state law claims “rise and fall” with the 18 Lanham Act claim. (See OM Mot. at 15.) Because the Court finds that the FAC states a claim 19 against the OM Defendants under the Lanham Act, dismissal of the state law claims is not 20 warranted. 21 CONCLUSION 22 For the foregoing reasons, the Court rules as follows: 23 • The OM Defendants’ motion to dismiss for failure to state a claim is DENIED. 24 • The BMG Defendants’ motion to dismiss for failure to state a claim is GRANTED. 25 Plaintiff may file an amended complaint within 21 days of this Order. 26 • The Defendants’ motion to dismiss on forum non conveniens grounds is DENIED. 27 • The Court REFERS the matter to a randomly assigned Magistrate Judge for jurisdictional ] e The Court DEFERS ruling on the French Defendants’ motions to dismiss for lack of 2 personal jurisdiction until Plaintiff has an opportunity to conduct jurisdictional discovery. 3 e Plaintiffs administrative motion to file under seal is GRANTED, IN PART, and DENIED, 4 IN PART, as stated above. Plaintiff shall file an unredacted version of its opposition on 5 the public docket within seven days of this Order. 6 e The trial and pretrial dates ordered by the Court in Dkt. No. 28 are VACATED. 7 e The parties shall file a joint case management statement within 90 days of this Order, or 8 upon completion of jurisdictional discovery as permitted by the Magistrate Judge, 9 whichever is earlier. 10 IT IS SO ORDERED. a | 11 Dated: June 17, 2024 f i ‘ | ff □□ ae 2 JEFPREY,S./WHITE,“ 13 United yt Distrigt Judge 3S i / Ne 14 Ce: Magistrate Referral Clerk 16 17 Oo Z 18 19 20 21 22 23 24 25 26 27 28