The opinion of the court was delivered by: DAVID COAR, District Judge
MEMORANDUM OPINION AND ORDER
Plaintiff Images of the World, Inc. ("Plaintiff" or "Images"),
is an Illinois corporation with its principal place of business
in Chicago, Illinois. (Pl. Compl. ¶ 1). Defendants Continental
American Industries, Inc. ("Continental") and ConWest Resources,
Inc. ("ConWest" or "Defendant") (collectively "Defendants"),
d/b/a Falcon Studios, Jocks Studios, Mustang Studios, and the
Falcon International Collection, are both California corporations
with their principal place of business in California. (Pl. Comp.
¶ 2). Defendants move to dismiss for lack of personal
jurisdiction. Alternatively, should this Court find personal
jurisdiction, Defendants move to dismiss for improper venue, or
to transfer this action to the Northern District of California
for forum non conveniens. For the reasons set forth below,
Defendants' motion to dismiss for lack of personal jurisdiction, or alternatively,
transfer this action, pursuant to 28 U.S.C. § 1404(a), to the
Northern District of California, is DENIED in its entirety.
Plaintiff is a producer, manufacturer, and retailer of adult
films. (See, Steven Toushin ("Toushin") Declaration, ¶ 4). In
1987, Toushin, the president and sole shareholder of Images,
purchased the copyrights to the films "Dangerous," "Getting It,"
"A Few Good Men," and "Games" (hereinafter referred to as "the
four films") (Toushin Declaration, ¶ 5). In 1989, Toushin
assigned all his individual rights to the four films to Images.
(Id. at ¶ 6).
For over fifteen years, Defendants have been in the business of
producing adult entertainment that is distributed through outside
distributors, mail order and the Internet. (Def. Ex. 1; Terry
Mahaffey ("Mahaffey") Declaration, ¶ 5).*fn1 In addition,
Defendants also distribute videos produced or manufactured by
other production companies. (Id. at ¶ 6). Defendants, through
mail order and via the Internet, have openly offered the four
films for sale. (Id. at ¶ 26).
In 1991, Images discovered that Continental was selling the
four films. (Pl. Compl., ¶ 6). Images contacted Continental
regarding the unauthorized sales, and Continental conceded that
the copyrights to the four films were owned by Images. (Toushin
Declaration, ¶ 10). Continental agreed to cease and desist its
infringing activity, surrender to Images the masters of the four
films, destroy all the copies of the copyrighted works, and pay
Images $4000 (the approximate income earned by Continental by
selling the four films). Id. Images refrained from filing suit
against Continental as a result of Continental's agreement to
cease and desist the infringing activity. (Pl. Compl., ¶ 29). In 2001, Plaintiff discovered that Defendants' website was
offering the four films for sale. (Pl. Compl., ¶ 9). Since the
matter had been addressed in 1991, Plaintiff was under the
impression that Defendants had discontinued the duplication and
sale of the four films. (Toushin Declaration, ¶ 14). Plaintiff
purchased the four films through the website to determine whether
they were the same films to which Images owns the copyright. (Pl.
Compl., ¶ 10). Upon arrival, Plaintiff learned that they were the
four films, and furthermore, that Defendants had attached a
notice to the copies claiming copyrights in each of the films.
(Pl. Compl., ¶ 11).
Plaintiff contends that it is the owner of the copyrights for
each of the four films in question. (Pl. Compl. ¶ 5). Plaintiff's
suit contains three counts. Count I alleges copyright
infringement, in violation of 17 U.S.C. § 101, et seq. Count II
is a claim against Defendants for false designation of origin and
unfair competition (15 U.S.C. § 1125(a)). Count III is a claim of
common law fraud against Continental.
Defendants move to dismiss for lack of personal jurisdiction.
Defendants contend that they lack the continuous and systematic
contacts with Illinois that would confer general jurisdiction.
Moreover, Defendants maintain that this Court does not have
specific jurisdiction over Defendants. Should this Court assert
personal jurisdiction, Defendants move to dismiss for improper
venue, or alternatively, transfer this action to the Northern
District of California for forum non conveniens. The Court will
address each ground for dismissal in turn. I. Motion To Dismiss For Lack of Personal Jurisdiction
Defendants contend that Images' Complaint must be dismissed
pursuant to Fed.R.Civ.P. 12(b)(2) for lack of personal
jurisdiction. To survive a motion to dismiss for lack of personal
jurisdiction, Plaintiff has the burden of making a prima facie
case for personal jurisdiction. RAR, Inc. v. Turner Diesel,
Ltd., 107 F.3d 1272, 1276 (7th Cir. 1997) (internal
citations omitted). When reviewing a motion to dismiss, all
jurisdictional allegations are taken to be true. Euromarket
Designs, Inc. v. Crate & Barrel Ltd., 96 F. Supp. 2d 824, 833
(N.D. Ill. May 21, 2001) (citing Turnock v. Cope,
816 F.2d 332, 333 (7th Cir. 1987)). If there are any conflicts between
the parties' affidavits, they will be resolved in favor of the
General jurisdiction is appropriate when the defendant has
engaged in continuous and systematic activities in the forum
state. RAR, 107 F.3d at 1277. Neither party alleges that
Defendants' activities in Illinois are continuous and systematic.
Images concedes that if personal jurisdiction exists in this
case, it must be specific.
Specific jurisdiction is proper when the cause of action arises
out of or is related to the defendant's contacts with the forum.
RAR, 107 F.3d at 1277. In order to make a prima facie case for
specific jurisdiction, a plaintiff must show that: (1) the
defendant is amenable to service of process; and (2) bringing the
defendant into court is consistent with due process. LFG, L.L.C.
v. Zapata Corp., 78 F. Supp.2d 731, 734. The Court will discuss
each of the two factors necessary for specific jurisdiction in
turn. 1. Amenability to Service
Fed.R.Civ.P. 4(k) provides:
service is sufficient to establish personal
jurisdiction over the defendant either, first, when
such service is provided for by a United States
statute, or second, when the defendant could be
subjected to the jurisdiction of a court in the forum
state through that state's long arm statute
See Euromarket Designs, Inc. v. Crate & Barrel Ltd.,
96 F.Supp.2d 824, 834 (N.D. Ill. 2000). "The Illinois long-arm
statute provides that a defendant is subject to the jurisdiction
of its courts as to any of several specified causes of action."
Id.; see also 735 ILCS 5/2-209 (a). The statute also
allows Illinois courts to exercise personal jurisdiction to the
fullest constitutional limit. 735 ILCS 5/2-209(c). Therefore, the
requirements of the Illinois long-arm statute may be satisfied by
inquiring as to whether subjecting the Defendants to the personal
jurisdiction of Illinois comports with federal due process
In order for Illinois to assert personal jurisdiction over a
foreign defendant, the defendant must have sufficient contacts
with Illinois that would provide a fair warning that those
contacts may subject the defendant to jurisdiction in Illinois.
Burger King v. Rudzewicz, 471 U.S. 462, 472-73 (1985). The
types of contacts that constitute fair warning are those that are
purposefully directed to the forum state to establish minimum
contacts with that state. Id. at 473. Moreover, "[i]f a
defendant has purposefully established minimum contacts with the
forum State, the nature of the contacts are considered to
determine whether assertion of jurisdiction would comport with
fair play and substantial justice." ...