United States District Court, D. Minnesota
Mayo Foundation for Medical Education and Research and Mayo Clinic, Plaintiffs,
Enterprise Management Limited, Inc. and Mary Lippitt, Defendants.
M. Moen, Esq., Anne E. Rondoni Tavernier, Esq. and Fredrikson
& Byron, counsel for plaintiffs.
Allen Godfread, Esq. and Godfread Law Firm, counsel for
S. Doty, Judge United States District Court
matter is before the court upon the motion to dismiss or
transfer by defendants. Based on a review of the file,
record, and proceedings herein, and for the following
reasons, the court grants the motion and transfers the case
to the Middle District of Florida.
declaratory judgment action arises out of the contention that
plaintiffs Mayo Clinic and Mayo Foundation for Medical
Education and Research (collectively Mayo) infringed one of
defendants' copyrighted charts. Mayo's principal
place of business is Rochester, Minnesota. Compl. ¶ 1.
Defendant Dr. Mary Lippitt, a Florida resident, is the sole
owner and employee of Enterprise Management Limited, Inc., a
Florida corporation.Id. ¶ 2. EML develops
educational materials and provides business solutions to
corporations, educational institutions, and non-profit
organizations. Lippitt Decl. ¶ 3. EML's materials
include, among other things, numerous articles and two books
authored by Lippitt, which incorporate a series of graphics,
including the work at issue. Id. ¶ 11. EML owns
the exclusive license to Lippitt's work. Id.
EML nor Lippitt own property in Minnesota, directly advertise
to Minnesota businesses or consumers, or conduct business
with any company in Minnesota. Lippitt Decl. ¶¶ 6-7.
EML sells Lippitt's works online both directly and
through third-party websites such as Amazon.com. See
Tavernier Decl. ¶¶ 3-6.
August 18, 2016, Mayo contacted EML via email requesting
permission to use one of Lippitt's charts in an internal
training program. Compl. ¶ 12. EML responded that it
would grant Mayo a five-year license to use the chart for $8,
000. Id. ¶ 13. The parties negotiated over the
next month, but were unable to reach agreement. Id.
On September 23, 2016, EML withdrew its most recent offer and
requested contact information for Mayo's legal counsel.
Id. Thereafter, and through the month of November,
counsel for Mayo communicated directly with EML. See
id. ¶¶ 16-18. In those communications, EML
accused Mayo of copyright infringement after learning that
Mayo had been using the chart for some period of time before
seeking a license. Id. ¶¶ 16-19. Although
Mayo denied that the chart was protected by the copyright
laws, it offered to resolve the dispute for $10, 000, with
the assurance that it would not use the chart going forward.
Id. ¶ 18; id. Ex. A. Several months
later, on March 15, 2017, and this time through counsel, EML
responded with a counteroffer of $125, 000. Compl.
¶¶ 22, 24; id. Ex. B, at 3. EML threatened
litigation if the matter could not be resolved and attached a
draft complaint. Compl. ¶ 23; id. Ex. B, at
March 29, 2017, Mayo commenced the instant action seeking a
declaration that it has not infringed and is not infringing
the allegedly copyrighted materials. Less than a month later,
EML filed a copyright infringement action against Mayo in the
Middle District of Florida, which is the mirror image of this
case. Enter. Mgmt. Ltd. v. Mayo Clinic, No.
8:17-cv-943 (M.D. Fla. filed Apr. 20, 2017). That action has
been stayed pending the court's determination of the
present motion. Id., ECF No. 12.
Standard of Review
survive a motion to dismiss for lack of personal
jurisdiction, a plaintiff must establish a prima facie case
that the forum state has personal jurisdiction over the
defendant. Stevens v. Redwing, 146 F.3d 538, 543
(8th Cir. 1998). In the absence of an evidentiary hearing, a
court “must look at the facts in the light most
favorable to the nonmoving party and resolve all factual
conflicts in favor of that party.” Dakota Indus.,
Inc. v. Dakota Sportswear, Inc., 946 F.2d 1384, 1387
(8th Cir. 1991). A federal court may assume jurisdiction over
a nonresident defendant “only to the extent permitted
by the long-arm statute of the forum state and by the Due
Process Clause.” Romak USA, Inc. v. Rich, 384
F.3d 979, 984 (8th Cir. 2004) (citation and internal
quotation marks omitted). Because the Minnesota long-arm
statute “confers jurisdiction to the fullest extent
permitted by the Due Process Clause, ” the court need
only consider due process requirements. Coen v.
Coen, 509 F.3d 900, 905 (8th Cir. 2007).
satisfy due process, a defendant must have “sufficient
minimum contacts” with the forum state such that
maintaining the suit “does not offend traditional
notions of fair play and substantial justice.”
Romak, 384 F.3d at 984. “Sufficient contacts
exist when [a] defendant's conduct and connection with
the forum state are such that [it] should reasonably
anticipate being haled into court” here. Coen,
509 F.3d at 905 (citation and internal quotation marks
defendant's contacts with the forum state can establish
personal jurisdiction under either general or specific
jurisdiction. A forum state has specific jurisdiction when
the cause of action “arise[s] out of” or
“relate[s] to” a defendant's activities
within that state. Burger King Corp. v. Rudzewicz,
471 U.S. 462, 472 (1985) (citation and internal quotation
marks omitted). General jurisdiction is present when,
regardless of the cause of action, a defendant has
“continuous and systematic contacts with the forum
state.” Coen, 509 F.3d at 905 (citation and
internal quotation marks omitted). Under either analysis, the
Eighth Circuit considers five factors in determining whether
personal jurisdiction exists: “(1) the nature and
quality of defendant's contacts with the forum state; (2)
quantity of contacts; (3) source and connection of the cause