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Jurisdiction Affirmed: Trademark Ripples Reach US Shores

Addressing for the first time the issue of whether a foreign intellectual property holding company is subject to personal jurisdiction in the United States, the US Court of Appeals for the Eleventh Circuit reversed a district court’s dismissal and determined that the holding company, which had sought and obtained more than 60 US trademark registrations, had sufficient contacts with the US to support exercise of personal jurisdiction. Jekyll Island-State Park Auth. v. Polygroup Macau Ltd., Case No. 23-114 (11th Cir. June. 10, 2025) (Rosenbaum, Lagoa, Wilson, JJ.)

Polygroup Macau is an intellectual property holding company registered and headquartered in the British Virgin Islands. Jekyll Island is a Georgia entity that operates the Summer Waves Water Park and owns a federally registered trademark for the words SUMMER WAVES. In 2021, Jekyll Island discovered that Polygroup Macau had registered nearly identical SUMMER WAVES marks. After Polygroup Macau asked to buy Jekyll Island’s domain name, summerwaves.com, Jekyll Island sued Polygroup Macau for trademark infringement and to cancel Polygroup Macau’s marks. The district court dismissed the case for lack of personal jurisdiction, finding that “the ‘causal connection’ between Polygroup Macau’s activities in the United States and Jekyll Island’s trademark claims was too ‘attenuated’ to support personal jurisdiction.” Jekyll Island appealed.

The Eleventh Circuit reviewed whether personal jurisdiction was proper under Federal Rule of Civil Procedure 4(k)(2), also known as the national long-arm statute. Rule 4(k)(2) allows courts to exercise personal jurisdiction over foreign defendants that have enough contacts with the US as a whole, but not with a single state, to support personal jurisdiction. To establish personal jurisdiction under Rule 4(k)(2), a plaintiff must show that:

  • Its claim arises under federal law.
  • The defendant is not subject to jurisdiction in any state’s courts of general jurisdiction.
  • “[E]xercising jurisdiction is consistent with the United States Constitution and laws.”

The parties agreed that the first two elements were satisfied; the only dispute was whether the exercise of jurisdiction was consistent with due process.

The Eleventh Circuit noted that in the patent context, the Federal Circuit determined that a foreign defendant that “sought and obtained a property interest from a U.S. agency has purposefully availed itself of the laws of the United States.” The Eleventh Circuit found that a trademark registration is even stronger than patent rights because a “trademark registrant must show that he is already using the mark in U.S. commerce to identify and distinguish goods or intends to soon.” Polygroup Macau had more than 60 registrations and allowed other companies and customers to use those marks, which was enough to establish that it had sought out the benefits afforded under US law.

Additionally, while Polygroup Macau did not license its trademark rights, it permitted other related companies to use the SUMMER WAVES trademark to identify their products. Products marked with Polygroup Macau’s registered mark were sold in the US through dozens of retailers. Although there were no formal written agreements, the Eleventh Circuit found that Polygroup Macau exercised some degree of control [...]

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Purposeful Direction in a Forum Activates the Long Arm of the Law

The US Court of Appeals for the Ninth Circuit again vacated the US District Court for the Central District of California’s dismissal of a case for lack of personal jurisdiction, applying Fed. R. Civ. Proc. 4(k)(2) and concluding that the copyright infringement claims involving a foreign defendant were properly litigated in the United States. Lang Van, Inc. v. VNG Corporation, Case No. 19-56452 (9th Cir. Jul. 21, 2022) (Bybee, Bennett, JJ.; Bataillon, Distr. J., sitting by designation).

Lang Van, Inc. (LVI) is a California corporation that produces and distributes Vietnamese music and entertainment and owns copyrights to more than 12,600 songs and original programs. LVI sued VNG Corporation, a Vietnamese company that makes copyrighted music available for download worldwide through its Zing MP3 website and mobile applications. LVI served discovery requests on VNG, but instead of supplying substantive information or documents, VNG moved to dismiss for lack of personal jurisdiction. The district court granted the motion, and LVI appealed to the Ninth Circuit, which vacated and remanded the case to the district court with instructions that LVI be permitted to undertake jurisdictional discovery.

On remand, LVI took third-party discovery and argued that the evidence showed that VNG intentionally chose to release its applications in the United States; consented to jurisdiction, choice of law and venue in California; and allowed hundreds of thousands of iOS downloads and tens of thousands of Android downloads.

VNG filed a renewed motion to dismiss LVI’s (now amended) complaint, arguing a lack of personal jurisdiction, forum non conveniens (that there is another, more appropriate, forum) and failure to state a claim. The district court granted VNG’s motion after finding that there was no specific personal jurisdiction over VNG in California under the Ninth Circuit’s specific personal jurisdiction test. The district court did not address the second and third arguments (forum non conveniens and failure to state a claim) and did not address the issue of long-arm jurisdiction over VNG under Rule 4(k)(2). Again, LVI appealed.

The Ninth Circuit assessed jurisdiction under Rule 4(k)(2), which provides for jurisdiction over foreign defendants that have ample contacts within the United States as a whole, but whose contacts are so scattered among states that no single state would have jurisdiction. The test requires proof that (1) the claim at issue arises from federal law and (2) the defendant is not subject to any state’s courts of general jurisdiction, such that (3) invoking jurisdiction upholds due process, with the burden shifting to the defendant to show that application of jurisdiction under the third prong would be unreasonable.

The Ninth Circuit found that the first prong was met because the case involved claims of copyright infringement under federal law, and that the second prong was met because VNG asserted that it was not subject to the personal jurisdiction of any state court of general jurisdiction in the United States.

As for the third prong, the Ninth Circuit explained that when jurisdiction is challenged, the plaintiff must show (1) purposeful activities or transactions [...]

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