United States District Court, N.D. Indiana, Fort Wayne Division
OPINION AND ORDER
R. CHERRY JUDGE
matter is before the Court on Defendants' Motion to
Dismiss for Lack of Personal Jurisdiction; Alternative Motion
to Transfer Pursuant to 28 U.S.C. § 1404(a) [DE 17],
filed by Defendants Mabel Larsen, Creative Scrap Designs, and
Mai Larsen Designs on January 2, 2018.
October 24, 2017, Plaintiff Want2Scrap, LLC
(“Want2Scrap”) filed a Complaint in this Court
against Defendants Mabel Larsen, Creative Scrap Designs, and
Mai Larsen Designs, seeking a declaratory judgment of
non-infringement of copyright under the Copyright Act
pursuant to 28 U.S.C. §§ 2201 and 2202. Want2Scrap
also asserts claims of breach of contract, copyright
infringement, tortious interference with business relations,
unfair competition, inducing copyright infringement, and
defamation. Want2Scrap attached to the Complaint as exhibits
a Copyright License Agreement, a Nondisclosure Agreement, an
August 22, 2017 cease-and-desist letter from counsel for
Mabel Larsen to Want2Scrap, and a September 5, 2017 response
letter from counsel for Want2Scrap to counsel for Larsen.
(ECF 1, Exs. A-D).
January 2, 2018, Defendant Mabel Larsen filed the instant
Motion to Dismiss, attaching in support her own affidavit
with exhibits and an affidavit of Susan Brown. (ECF 17, Exs.
A, B). Larsen represents that she is a sole proprietor using
the trade names Creative Scrap Designs and Mai Larsen
Designs. Thus, the Court treats Larsen as the sole defendant
for purposes of this motion.
filed a response to the instant Motion to Dismiss or Transfer
Venue on January 16, 2018, attaching as exhibits the
affidavit of Michele Parrish with exhibits and an
“Affidavit of Due Diligence” by Ben Davalia, Jr.
(ECF 21, Exs. A, B).
filed a reply in support of the instant motion on January 23,
12(B)(2) LEGAL STANDARD
Rule of Civil Procedure 12(b)(2) allows a defendant to move
for dismissal for lack of personal jurisdiction. Fed.R.Civ.P.
12(b)(2). The plaintiff bears the burden of establishing the
existence of personal jurisdiction when challenged by a
defendant. Jennings v. AC Hydraulic A/S, 383 F.3d
546, 548 (7th Cir. 2004). When the Court rules on a
defendant's motion to dismiss based on the written
materials submitted without holding an evidentiary hearing,
the plaintiff “need only make out a prima facie case of
personal jurisdiction.” N. Grain Mktg., LLC v.
Greving, 743 F.3d 487, 491 (7th Cir. 2014) (internal
quotation marks omitted) (quoting Purdue Research Found.
v. Sanofi-Synthelabo, S.A., 338 F.3d 773, 782 (7th Cir.
2003) (quoting Hyatt Int'l Corp. v. Coco, 302
F.3d 707, 713 (7th Cir. 2002))). The Court may consider the
affidavits of both parties. Felland v. Clifton, 682
F.3d 665, 672 (7th Cir. 2012). And, when a defendant
challenges an allegation in the complaint by affidavit, the
plaintiff must go beyond the pleadings and submit affirmative
evidence supporting the exercise of jurisdiction. Purdue
Research Found., 338 F.3d at 783. All factual disputes
are resolved in the plaintiff's favor. N. Grain
Mktg., 743 F.3d at 491.
following facts are taken from the Complaint, Mabel
Larsen's Affidavit, and Michele Parrish's Affidavit
and are construed in accordance with the Rule 12(b)(2)
standard set out above.
Want2Scrap LLC, which designs, manufactures, and imports
product for the craft industry, is a limited liability
company with its principal place of business in Churubusco,
Indiana. (ECF 1, ¶ 2); (ECF 21-1, ¶ 2). Michele
Parrish, the owner of Want2Scrap LLC, resides in Churubusco,
Indiana. (ECF 21-1, ¶ 2). Defendant Mabel Larsen is a
resident of New Braunfels, Texas. (ECF 1, ¶ 3).
2013, Larsen was contacted by Allie Gower, who identified
herself as the Social Media Coordinator for Want2Scrap. (ECF
17-1, ¶ 4). Gower asked Larsen to appear as a guest
designer for a promotional video. Id. Later in 2013,
Larsen met Parrish at a trade show in Salt Lake City, Utah.
Id. Also in 2013, Larsen was contacted by Robert
Prince, who asked Larsen to be part of Want2Scrap's
design team. Id. Larsen attempted to create designs
for Want2Scrap but was attacked on social media by another
Want2Scrap designer, which caused Larsen to cease further
contact with Parrish and Want2Scrap. Id.
2014, Larsen purchased chipboard album materials online from
Want2Scrap at wholesale for Larsen's resale. (ECF 17-1,
¶ 5). Larsen had no further contact with Want2Scrap
until November 2016, when Larsen contacted Want2Scrap to ask
for the donation of a gift certificate in connection with a
holiday promotion put together by Larsen and fifteen other
crafters on YouTube. Id. Want2Scrap contributed a
gift certificate and received promotional credit in the
2016, Parrish and Larsen had a few phone conversations about
the possibility of Larsen promoting Want2Scrap products on
various social media platforms. (ECF 21-1, ¶ 3). In
November 2016, Larsen contacted Parrish via Parrish's
personal Facebook account regarding the opportunity to
promote Want2Scrap products. Id.; (ECF 21-2, p. 1).
December 2016, Parrish and Larsen entered into an oral
agreement that Parrish would pay Larsen $350.00 per month for
the development of a social media presence and YouTube
exposure for Want2Scrap. (ECF 17-1, ¶ 9); (ECF 21-1,
¶ 6). The same month, Larsen began promoting Want2Scrap
on the Want2Scrap Facebook page, the Want2Scrap Twitter
account, and the Want2Scrap Create & Share group on
Facebook. (ECF 21-1, ¶ 4). With Parrish's approval,
Larsen created the Want2Scrap Create & Share group and a
new Want2Scrap YouTube channel. Id.
December 2016, Larsen also began submitting her own product
designs to Want2Scrap. (ECF 21-1, ¶ 5). On January 24,
2017, Robert Prince, who was identified to Larsen as an
administrative assistant to Parrish, emailed two documents to
Larsen-a Copyright License Agreement and a Nondisclosure
Agreement. (ECF 17-1, ¶ 7); (ECF 21-1, ¶ 5; 21-2,
A-4). Prince's personal mailing address was in Missouri.
(ECF 17-1, ¶ 7). Prince's January 24, 2017 email was
from a “want2scrap.com” email address, and his
signature block in the email included the Want2Scrap LLC
business name and mailing address in Churubusco, Indiana.
(ECF 21-1, ¶ 5; 21-2, A-4). Prince insisted that the
signed signature pages of the two documents be
“returned to Want2Scrap.” (ECF 17-1, ¶ 7).
Larsen emailed the documents back to Prince on January 31,
2017. (ECF 211, ¶ 5; 21-2, A-5). Larsen also sent the
signed originals by mail, although the parties do not specify
the mailing address. (ECF 17-1, ¶ 7); (ECF 21-1, ¶
5; 21-2, A-5).
Copyright License Agreement provides that Want2Scrap was
granted an exclusive, transferable license in artwork
(“Works”) submitted by Larsen in the course of
Want2Scrap's business. See (ECF 1, Ex. A). The
Nondisclosure Agreement governs the protection of proprietary
information disclosed by either Want2Scrap or Larsen. (ECF 1,
Copyright License Agreement provides that it “shall
commence as of the Effective Date” and the
“Effective Date” is defined as “the first
date on which it has been duly executed by all of the
signatories identified below.” (ECF 1, Ex. A,
¶¶ 3, 6). The signatories on the Copyright License
Agreement are preprinted as “Mai Larsen” for
“Mai Larsen Designs” and “Michele
Parrish” for “Want2Scrap, LLC.” (ECF 1, Ex.
A, p. 4).
the Copyright License Agreement and the Nondisclosure
Agreement were signed by Larsen on January 30, 2017. However,
neither agreement was signed by Michele Parrish or anyone
else on behalf of Want2Scrap. (ECF 1, Exs. A, B).
Copyright License Agreement does not contain a forum
selection clause. (ECF 1, Ex. A). The Nondisclosure Agreement
contains the following forum selection clause:
This Agreement, including all matters of construction,
validity, and performance, shall be governed by and construed
and enforced in accordance with the laws of the State of
Indiana without regards to its conflict of law rules. The
parties here to agree that the exclusive jurisdiction and
venue for any action brought between the Parties under
this agreement shall be the state and federal courts
sitting in Indiana, and each of the parties hereby agrees and
submits itself to the exclusive jurisdiction and venue of
such courts for such purpose.
(ECF 1-4, ¶ 7) (emphasis added).
six-month period from December 8, 2016, to May 21, 2017,
Larsen submitted approximately 156 Works to Want2Scrap, with
49 of the Works submitted prior to January 30, 2017.
Regarding compensation for the designs, Parrish told Larsen
that Parrish would pay Larsen $5.00 for every kit that she
sold, in addition to the $350.00 per month for the social
media presence. Id. This totaled $50.00 to $100.00
more per month for kits that Larsen designed. Id.
Larsen declined the extra payments, but Parrish paid the
extra money to Larsen anyway. Id.
states that Larsen submitted all, or a substantial majority,
of her designs by email to Parrish, who lives in Churubusco,
Indiana. (ECF 21-1, ¶ 7). Parrish explained to Larsen
that all designs must initially be approved by Parrish and
that Larsen was to email all designs to both Parrish and
Prince so that they were both “in the loop.” (ECF
21-1, ¶ 7). Larsen's designs were often rough
sketches or ideas that required significant additional
design, development, and layout work by Prince following
Parrish's approval. (ECF 21-1, ¶ 7). Prince worked
for Want2Scrap remotely from locations such as Missouri,
communicating with Parrish by email, Facebook Messenger, and
telephone. (ECF 21-1, ¶ 8). Larsen followed the
submission process for all, or a substantial majority, of her
submitted designs. Id. Larsen also frequently
submitted designs to Parrish through Facebook Messenger,
which meant those designs were submitted to Parrish twice.
Id. (Ex. A-10, 1-22). Larsen would email unsolicited
business ideas for Want2Scrap to Parrish. (ECF 21-1, ¶
9); (Ex. A-11).
states that none of Larsen's designs were submitted to
Want2Scrap in Indiana but rather to Prince, who had a mailing
address in Missouri, and that Parrish instructed Larsen to
submit designs to Prince. (ECF 17-1, ¶ 7). The emails
submitted as Exhibit A-9 to Parrish's Affidavit are
“from” Larsen “to” both Parrish and
Prince at each of their “want2scrap.com” email
addresses. (Ex. A-9). However, within the body of the emails,
the text is addressed to Robert; none of the emails
specifically addresses Parrish within the text. Id.
In contrast, Exhibit A-10 includes Facebook Messenger
messages from Larsen to Parrish that contain designs and that
indicate Larsen will forward the designs to Prince. (ECF
March 2017, Larsen determined that she was not being
sufficiently compensated for her incurred expenses related to
the social media development and notified Parrish that she
could not afford to continue with the social media
development. (ECF 17-1, ¶ 9). As a result, the ...