Brayton Purcell LLP v. Recordon & Recordon

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT

BRAYTON PURCELL LLP, a 
California partnership,
Plaintiff-Appellee,
v. No. 07-15383
RECORDON & RECORDON, a D.C. No.
California partnership,  CV-04-04995-EMC
Defendant-cross-claimant- ORDER AND
Appellant, OPINION
v.
APPTOMIX INC.; JONATHAN LEE,
Cross-defendants.

Appeal from the United States District Court
for the Northern District of California
Edward M. Chen, Magistrate Judge, Presiding

Argued and Submitted
October 21, 2008—San Francisco, California

Filed May 28, 2010

Before: Mary M. Schroeder, Dorothy W. Nelson and
Stephen Reinhardt, Circuit Judges.

Opinion by Judge D.W. Nelson;
Dissent by Judge Reinhardt

7725
7728 BRAYTON PURCELL v. RECORDON & RECORDON

COUNSEL

Jacob D. Zamora, Law Office of Jacob D. Zamora, Marys-
ville, California, for the defendant-appellant.
 BRAYTON PURCELL v. RECORDON & RECORDON 7729
David W. Fermino, Brayton Purcell LLP, Novato, California,
for the plaintiff-appellee.

ORDER

The Opinion filed August 5, 2009, and published at 575
F.3d 981 (9th Cir. 2009), is hereby withdrawn and superceded
by the Opinion filed concurrently herewith.

With the filing of the new opinion, Appellant’s pending
petition for rehearing en banc is DENIED as moot, without
prejudice to refiling a subsequent petition for rehearing and/or
rehearing en banc. See 9th Cir. G.O. 5.3(a).

OPINION

D.W. NELSON, Circuit Judge:

Recordon & Recordon (“Recordon”) appeals the district
court’s denial of its motion to dismiss for improper venue.1 In
copyright infringement actions, venue is proper “in the district
in which the defendant . . . resides or may be found.” 28
U.S.C. § 1400(a). This circuit interprets this provision to
allow venue in any judicial district where, if treated as a sepa-
rate state, the defendant would be subject to personal jurisdic-
tion. See Columbia Pictures Television v. Krypton Broad. of
Birmingham, Inc., 106 F.3d 284, 289 (9th Cir. 1997), rev’d on
other grounds, Feltner v. Columbia Pictures Television, Inc.,
523 U.S. 340 (1998). Because Recordon would be subject to
personal jurisdiction in the Northern District of California if
it were treated as a separate state, we hold that venue was
proper and affirm the decision of the district court.
1
Recordon waived its claim for transfer of venue. See FED. R. APP. P.
28(a)(9); Martinez-Serrano v. INS, 94 F.3d 1256, 1259 (9th Cir. 1996).
7730 BRAYTON PURCELL v. RECORDON & RECORDON
I. FACTUAL AND PROCEDURAL BACKGROUND

Appellant Recordon is a San Diego-based law firm com-
posed of two attorneys, Kathy R. Recordon and Stephen G.
Recordon. Recordon’s practice is limited to Southern Califor-
nia; it does not have, nor in the past did it ever have, any cli-
ents in the Northern District of California (“the Forum”).
Recordon does not conduct any business, own any real or per-
sonal property, or maintain a mailing address or telephone
listing in the Forum. The Recordons are both licensed to prac-
tice law in the state of California.

Appellee Brayton Purcell LLP (“Brayton Purcell”) is a law
firm based in Novato, California, located within the Forum.
Brayton Purcell markets itself as a leader in elder abuse law,
with a practice extending throughout California. It maintains
an extensive website providing information on its elder abuse
practice, which it copyrighted effective October 7, 2002.

In July 2004, Recordon contracted with Apptomix, Inc., a
web-design company with its principal place of business in
San Diego County, to add an elder law section to Recordon’s
website. Recordon claims this website “was designed for
information only, was passive in nature, and was directed
toward prospective clients located in San Diego County.”
Although Recordon’s website includes only San Diego and
Orange County phone numbers, the website does not restrict
its promotion of the firm to Southern California or San Diego
County, nor is there any indication that, as California-licensed
attorneys, Recordon’s practice is limited within California.

Brayton Purcell discovered Recordon’s website using
“Copyscape,” a tool that scours the internet for unauthorized
use of copyrighted materials. The elder law section of Recor-
don’s website consisted entirely of material copied verbatim
from, and without attribution to, Brayton Purcell’s own web-
site.
 BRAYTON PURCELL v. RECORDON & RECORDON 7731
Brayton Purcell filed suit against Recordon for copyright
infringement, unfair competition, false advertising, and com-
mon law misappropriation.2 Brayton Purcell alleged that
Recordon “knowingly and purposefully directed their infring-
ing acts to this District, . . . knowing Brayton Purcell is a resi-
dent of this District and would suffer any injuries . . . in this
District.” Brayton Purcell further alleged that Recordon
“made commercial use of Brayton Purcell’s Website and of
the copyrighted material . . . [and] willfully, deliberately and
knowingly used Plaintiff’s copyrighted work for the purpose
of promoting its business and attracting new business in the
field of elder abuse law, in competition with [Brayton Pur-
cell].”

Recordon filed a motion seeking, alternatively, dismissal
pursuant to Fed. R. Civ. P. 12(b)(2) for lack of personal jurisdic-
tion,3 dismissal pursuant to Fed. R. Civ. P. 12(b)(3) for
improper venue, or change of venue under 28 U.S.C.
§ 1404(a). The district court denied Recordon’s motion. After
a settlement conference, the parties agreed to submit to bind-
ing arbitration. The arbitrator found for Brayton Purcell, and
the district court entered judgment in its favor. Recordon has
appealed only the district court’s denial of its motion to dis-
miss for improper venue, not the entry of judgment on the
arbitration award.

II. STANDARD OF REVIEW

A district court’s rulings on personal jurisdiction and venue
are reviewed de novo. See Pebble Beach Co. v. Caddy, 453
F.3d 1151, 1154 (9th Cir. 2006) (personal jurisdiction); Immi-
2
At a subsequent arbitration, Brayton Purcell dropped all claims except
copyright infringement.
3
The district court accurately noted that Recordon, as a resident of Cali-
fornia, was unquestionably subject to personal jurisdiction in California,
and thus its “motion is more properly characterized as a motion to dismiss
for improper venue rather than for a lack of personal jurisdiction.”
7732 BRAYTON PURCELL v. RECORDON & RECORDON
grant Assistance Project of the L.A. County Fed’n of Labor
v. INS, 306 F.3d 842, 868 (9th Cir. 2002) (venue). Although
the burden is on the plaintiff to demonstrate that the court has
jurisdiction over the defendant, in the absence of an evidenti-
ary hearing, the plaintiff need only make “a prima facie show-
ing of jurisdictional facts to withstand the motion to dismiss.”
Pebble Beach, 453 F.3d at 1154 (internal quotation marks
omitted). Additionally, “uncontroverted allegations in [plain-
tiff’s] complaint must be taken as true, and conflicts between
the facts contained in the parties’ affidavits must be resolved
in [plaintiff’s] favor.” Rio Props., Inc. v. Rio Int’l Interlink,
284 F.3d 1007, 1019 (9th Cir. 2002); see also Pebble Beach,
453 F.3d at 1154 (“[F]or the purpose of this [prima facie]
demonstration, the court resolves all disputed facts in favor of
the plaintiff.”).

III. DISCUSSION

[1] In copyright infringement actions, venue is proper “in
the district in which the defendant or his agent resides or may
be found.” 28 U.S.C. § 1400(a). The Ninth Circuit interprets
this statutory provision to allow venue “in any judicial district
in which the defendant would be amenable to personal juris-
diction if the district were a separate state.” Columbia Pic-
tures, 106 F.3d at 289.

[2] This Court employs a three-prong test to determine
whether a party has sufficient minimum contacts to be suscep-
tible to specific personal jurisdiction:4

(1) The non-resident defendant must purposefully
direct his activities or consummate some transaction
with the forum or resident thereof; or perform some
act by which he purposefully avails himself of the
privilege of conducting activities in the forum,
4
The district court properly found that Recordon is not subject to gen-
eral personal jurisdiction in the Forum.
 BRAYTON PURCELL v. RECORDON & RECORDON 7733
thereby invoking the benefits and protections of its
laws;

(2) the claim must be one which arises out of or
relates to the defendant’s forum-related activities;
and

(3) the exercise of jurisdiction must comport with
fair play and substantial justice, i.e. it must be rea-
sonable.

Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797, 802
(9th Cir. 2004) (quoting Lake v. Lake, 817 F.2d 1416, 1421
(9th Cir. 1987)). Only the first prong is at issue in this appeal.

[3] The first prong is satisfied by either purposeful avail-
ment or purposeful direction, which, though often clustered
together under a shared umbrella, “are, in fact, two distinct
concepts.” Pebble Beach, 453 F.3d at 1155. “A purposeful
availment analysis is most often used in suits sounding in con-
tract. A purposeful direction analysis, on the other hand, is
most often used in suits sounding in tort.” Schwarzenegger,
374 F.3d at 802 (internal citations omitted). Here, the underly-
ing action is copyright infringement, which is often character-
ized as a tort. See Columbia Pictures, 106 F.3d at 289
(likening willful copyright infringement to an intentional tort).
Purposeful direction is therefore the proper analytical frame-
work in this case. See Schwarzenegger, 374 F.3d at 802.

[4] This court evaluates purposeful direction using the
three-part “Calder-effects” test, taken from the Supreme
Court’s decision in Calder v. Jones, 465 U.S. 783 (1984). See
Schwarzenegger, 374 F.3d at 803. Under this test, “the defen-
dant allegedly must have (1) committed an intentional act, (2)
expressly aimed at the forum state, (3) causing harm that the
defendant knows is likely to be suffered in the forum state.”
Yahoo! Inc. v. La Ligue Contre Le Racisme Et
L’Antisemitisme, 433 F.3d 1199, 1206 (9th Cir. 2006) (en
7734 BRAYTON PURCELL v. RECORDON & RECORDON
banc) (internal quotation marks omitted). There is no require-
ment that the defendant have any physical contacts with the
forum. See Schwarzenegger, 374 F.3d at 803.

1. Intentional Act

In this case, the “intentional act” element is easily satisfied.
This Court “construe[s] ‘intent’ . . . as referring to an intent
to perform an actual, physical act in the real world, rather than
an intent to accomplish a result or consequence of that act.”
Id. at 806. Recordon committed an intentional act when it cre-
ated and posted an elder law section on its website that
infringed Brayton Purcell’s copyright. Cf. id. (placing a news-
paper advertisement was an intentional act); Rio Props., 284
F.3d at 1020 (operating a passive website was an intentional
act); Bancroft & Masters, Inc. v. Augusta Nat’l Inc., 223 F.3d
1082, 1088 (9th Cir. 2000) (sending a letter was an intentional
act).

2. Express Aiming

[5] The second part of the Calder-effects test requires that
the defendant’s conduct be expressly aimed at the forum. See
Pebble Beach, 453 F.3d at 1156. This Court has emphasized
that “ ‘something more’ than mere foreseeability [is required]
in order to justify the assertion of personal jurisdiction,” Sch-
warzenegger, 374 F.3d at 805, and that “something more”
means conduct expressly aimed at the forum, see Pebble
Beach, 453 F.3d at 1156 (“We now conclude that ‘something
more’ is what the Supreme Court described as ‘express aim-
ing’ at the forum state.”) (quoting Bancroft, 223 F.3d at
1087).

[6] It is beyond dispute in this circuit that maintenance of
a passive website alone cannot satisfy the express aiming
prong. See Holland Am. Line Inc. v. Wartsila N. Am., Inc.,
485 F.3d 450, 460 (9th Cir. 2007) (“We consistently have
held that a mere web presence is insufficient to establish per-
 BRAYTON PURCELL v. RECORDON & RECORDON 7735
sonal jurisdiction.”); Pebble Beach, 453 F.3d at 1158 (“[W]e
reject . . . any contention that a passive website constitutes
express[ ] aiming.”). It is equally clear, however, that “operat-
ing even a passive website in conjunction with ‘something
more’—conduct directly targeting the forum—is sufficient to
confer personal jurisdiction.” Rio Props., 284 F.3d at 1020.
Thus, regardless whether a case involves the internet, the
question remains whether the defendant’s conduct was
expressly aimed at the forum.

[7] In its complaint, Brayton Purcell alleged that Recordon
engaged in willful copyright infringement targeted at Brayton
Purcell, which Recordon knew to be a resident of the Forum.
Specifically, Brayton Purcell alleged Recordon individually
targeted it by “willfully, deliberately and knowingly” making
“commercial use of Brayton Purcell’s Website,” thereby plac-
ing Recordon in competition with Brayton Purcell in the field
of elder abuse law. In a supporting affidavit, Brayton Purcell
noted that elder abuse is a growing area of legal specializa-
tion, “and few law firms advertise and hold themselves out as
experts in this field.” Brayton Purcell is a leader in this bur-
geoning speciality, with a practice extending throughout Cali-
fornia. Given the paucity of firms with elder abuse expertise,
any use of the infringing material by Recordon to advertise on
its website places Recordon in direct competition with Bray-
ton Purcell throughout California. Prospective clients in
Northern California viewing the two firms’ websites are likely
to be confused as to the material’s true author, and some may
erroneously believe Brayton Purcell is the infringing party,
harming its business reputation.

[8] For purposes of plaintiff’s prima facie jurisdictional
showing, “uncontroverted allegations in . . . [plaintiff’s] com-
plaint must be taken as true, and conflicts between the facts
contained in the parties’ affidavits must be resolved in . . .
[plaintiff’s] favor.” Rio Props., 284 F.3d at 1019; see Schwar-
zenegger, 374 F.3d at 800 (“Conflicts between parties over
statements contained in affidavits must be resolved in the
7736 BRAYTON PURCELL v. RECORDON & RECORDON
plaintiff’s favor.”). Taking Brayton Purcell’s allegations and
statements as true, Recordon individually targeted Brayton
Purcell by making commercial use of Brayton Purcell’s copy-
righted material for the purpose of competing with Brayton
Purcell for elder abuse clients. Though Recordon maintained
that its “Elder Law Section . . . was directed toward prospec-
tive clients located in San Diego County,” this conclusory
denial does not rebut Brayton Purcell’s allegation. While
Recordon claims its practice is limited to Southern California,
nothing on its website indicates to potential clients that Recor-
don’s practice is so limited. In addition, Kathy and Stephen
Recordon are licensed to practice throughout the state of Cali-
fornia, enabling them to compete with Brayton within the
Forum. Indeed, Brayton alleges that Recordon “willfully,
deliberately and knowingly used Plaintiff’s copyrighted work
for the purpose of promoting its business and attracting new
business in the field of elder abuse law, in competition with
Plaintiff.”

[9] This court’s decisions in Pebble Beach and Schwar-
zenegger are not to the contrary. In Pebble Beach, Califor-
nia’s Pebble Beach golf resort sued defendant for trademark
infringement. 453 F.3d at 1154. The defendant operated a bed
and breakfast called “Pebble Beach,” which was “located on
a cliff overlooking the pebbly beaches of England’s south
shore.” Id. at 1153. Defendant maintained a passive website
advertising his business. Id. The “only acts identified by Peb-
ble Beach as being directed at California are the website and
the use of the name ‘Pebble Beach’ in the domain name.” Id.
at 1156. Reaffirming that express aiming is satisfied by indi-
vidualized targeting, the court held that the defendant, by
merely registering and operating a passive informational web-
site, “engaged in no ‘individualized targeting.’ ” Id. at 1157.
Here, in contrast, Recordon has done more than merely main-
tain a passive website. By plagiarizing Brayton Purcell’s web-
site verbatim, Recordon allegedly placed the two law firms in
competition in the area of elder abuse law and created confu-
sion among potential clients as to the true authorship of the
 BRAYTON PURCELL v. RECORDON & RECORDON 7737
elder abuse material. This individualized targeting distin-
guishes the instant case from Pebble Beach.

[10] In Schwarzenegger, the court held defendant’s use of
Arnold Schwarzenegger’s image in a local Ohio newspaper
insufficient to confer jurisdiction because the advertisement
“was expressly aimed at Ohio rather than California.” 374
F.3d at 807. The court found no individual targeting because
“[t]he Advertisement was never circulated in California, and
. . . [defendant] had no reason to believe that any Californians
would see it.” Id. In contrast, Recordon had every reason to
believe prospective clients in Northern California would see
the website—indeed, attracting new business was the point.
Recordon also knew its conduct was likely to confuse and
deceive potential clients as to the source of the elder abuse
material. Recordon’s wrongful conduct placed it in direct
competition for elder abuse clients with Brayton Purcell, an
established expert in the field with a practice throughout Cali-
fornia. Recordon’s conduct was intentional, wrongful, and
aimed at Brayton. See Panavision Int’l, L.P. v. Toeppen, 141
F.3d 1316, 1319-24 (9th Cir. 1998) (finding that the exercise
of personal jurisdiction was appropriate where the defendant
engaged in a scheme to register the plaintiff’s trademark as
domain names to extort money, which the defendant knew
would injure the plaintiff in California).

Thus this case is unlike Cybersell v. Cybersell, 130 F.3d
414 (9th Cir. 1997), where there was no evidence that the
defendant even knew of the existence of plaintiff. Here,
Recordon knew of Brayton Purcell’s existence, targeted Bray-
ton Purcell’s business, and entered direct competition with
Brayton Purcell.

[11] Given the paucity of elder abuse law firms, and the
fact that Recordon used the same website, Recordon’s actions
placed it in direct competition with Brayton in Northern Cali-
fornia. Furthermore, that Recordon entered the same specialty
and practiced in the same state made Brayton Purcell’s allega-
7738 BRAYTON PURCELL v. RECORDON & RECORDON
tion that Recordon copied the website “for the purpose of pro-
moting [Recordon’s] business and attracting new business . . .
in competition with [Brayton Purcell]” even more plausible.
Anyone in Northern California searching for a law firm spe-
cializing in elder abuse would have been confused when
choosing between Brayton Purcell’s and Recordon’s web
sites. Prior to copying Brayton Purcell’s website, Recordon
did not specialize in elder abuse law and it targeted Brayton
Purcell individually by copying its website and competing for
the same customers. The express aiming prong is therefore
satisfied.

3. Foreseeable Harm

[12] The final element requires that Recordon’s conduct
caused harm that it knew was likely to be suffered in the
forum. See Yahoo!, 433 F.3d at 1206. The Court in Yahoo!
clarified that this element does not require that the “brunt” of
the harm be suffered in the forum, as some previous cases had
suggested, and that this element may be established even if
“the bulk of the harm” occurs outside the forum. Id. at 1207.
This element is satisfied when defendant’s intentional act has
“foreseeable effects” in the forum. See Bancroft, 223 F.3d at
1087. In this case, it was foreseeable that Brayton Purcell
would be harmed by infringement of its copyright, including
harm to its business reputation and goodwill, and decreased
business and profits. It was also foreseeable that some of this
harm would occur in the Forum, where Brayton Purcell was
known to reside. Indeed, Brayton Purcell specifically alleged
“a substantial part of the events giving rise to the claims
herein occurred in [the Northern] District” and Recordon
committed its “infringing acts . . . knowing Brayton Purcell
is a resident of this District and would suffer any injuries from
Defendants’ conduct in this District.” Consequently, Brayton
Purcell has satisfied the third and final element of the Calder-
effects test.
 BRAYTON PURCELL v. RECORDON & RECORDON 7739
IV. CONCLUSION

[13] In sum, Recordon has satisfied the “purposeful direc-
tion” prong for specific personal jurisdiction. Because the par-
ties did not dispute the remaining two prongs—that Brayton
Purcell’s claim arises out of Recordon’s purposeful direction
and that the exercise of jurisdiction does not offend traditional
notions of fair play and substantial justice—Recordon is sub-
ject to personal jurisdiction in the Northern District of Cali-
fornia. We therefore hold that venue was proper in the
Northern District of California pursuant to 28 U.S.C.
§ 1404(a). The decision of the district court is AFFIRMED.

AFFIRMED.

REINHARDT, Circuit Judge, dissenting:

As the majority recognizes, venue in this case was proper
only if Recordon & Recordon “expressly aimed” its conduct
at the Northern District of California. The majority here finds
express aiming based entirely on (1) the foreseeable harm suf-
fered by Brayton Purcell as a result of Recordon & Recor-
don’s passive website, (2) Recordon & Recordon’s
knowledge of Brayton Purcell’s residence in the Northern
District, and (3) the fact that while Stephen and Kathy Recor-
don practice law in the Southern District exclusively, their
law licenses are valid throughout the state, including the
Northern District.1 In doing so, the majority disregards con-
trolling circuit authority, which establishes that “something
more” than the “foreseeable effect” of an intentional tort com-
1
The Northern District of California and the Southern District of Cali-
fornia are treated like separate states for the purposes of establishing
venue. Columbia Pictures Television v. Krypton Broad. of Birmingham,
Inc., 106 F.3d 284, 289 (9th Cir. 1997), rev’d on other grounds, Feltner
v. Columbia Pictures Television, Inc., 523 U.S. 340 (1998).
7740 BRAYTON PURCELL v. RECORDON & RECORDON
mitted against a party known to be a resident of the forum is
required to establish venue. Pebble Beach Co. v. Caddy, 453
F.3d 1151, 1158 (9th Cir. 2006) (internal quotation omitted).
“Something more,” however, must be “something more” than
the unexercised right to practice law or otherwise do business
in a particular forum.

Venue requires “conduct directly targeting the forum.” Rio
Props., Inc. v. Rio Int’l Interlink, 284 F.3d 1007, 1019 (9th
Cir. 2002). Because Recordon & Recordon’s website was tar-
geted exclusively at the Southern District, as the undisputed
facts in the record reflect, its conduct was clearly not “ex-
pressly aimed” at the Northern District. Pebble Beach, 453
F.3d at 1158. Accordingly, the “expressly aimed” test was not
met, and venue did not lie in the Northern District.

I.

The undisputed record here establishes that Recordon &
Recordon limited its legal practice to Southern California.
The firm operated exclusively out of Southern California,
practiced entirely in Southern California, and had never had
any clients or legal work in the Northern District.2 Accord-
ingly, it is beyond dispute that the “elder law” material on
Recordon & Recordon’s website was directed toward clients
or prospective clients in Southern California exclusively. The
Recordons so stated in their declarations and Brayton Purcell
submitted no affidavit or declaration stating otherwise. Bray-
ton Purcell did not even allege in its complaint that the Recor-
dons had in any way targeted prospective clients in the
Northern District.

Venue was proper in the Northern District only if Recordon
& Recordon “ ‘(1) committed an intentional act, (2) expressly
aimed at the [Northern District], (3) causing harm that [Recor-
don & Recordon] kn[ew] [was] likely to be suffered in the
2
See Declarations of Kathy R. Recordon & Stephen G. Recordon.
 BRAYTON PURCELL v. RECORDON & RECORDON 7741
[Northern District].’ ” Yahoo! Inc. v. La Ligue Contre le
Racisme et L’Antisemitisme, 433 F.3d 1199, 1206 (9th Cir.
2006) (en banc) (quoting Schwarzenegger v. Fred Martin
Motor Co., 374 F.3d 797, 803 (9th Cir. 2004)) (emphasis
added). As the majority notes, the second prong, “express
aiming,” requires that Recordon & Recordon have engaged in
“conduct directly targeting the forum,” i.e. the Northern Dis-
trict. Maj. Op. at 7735 (quoting Rio Props., Inc., 284 F.3d at
1019). The majority holds that Recordon & Recordon’s con-
duct was “targeted” at the Northern District of California
because Recordon & Recordon “ma[de] commercial use of
Brayton Purcell’s copyrighted material for the purpose of
competing with Brayton Purcell for elder abuse clients.” Maj.
Op. at 7736. If Recordon & Recordon did compete, however,
it did so only in the Southern District, where it practiced
exclusively. That, of course, is quite the opposite of “directly
targeting the forum.”

The only fact actually linking Recordon & Recordon’s
actions to the Northern District was its knowledge of Brayton
Purcell’s residence in that district. The majority, however,
sees such a link in the Recordons’ possession of California
law licenses. Maj. Op. at 7736. While the majority is correct
that the Recordons are licensed to practice law throughout
California, including the Northern District, that fact in no way
demonstrates a direct targeting of the Northern District, any
more than would the use of a passive website by any business
that operated solely in Southern California with or without a
license to do business throughout the state. The Recordons
could not practice law in the Southern District without obtain-
ing licenses to practice in the entire state of California. Pos-
sessing such a license no more converts behavior expressly
aimed at the Southern District into conduct expressly aimed
at the Northern District than would a foreign person’s posses-
sion of a visa to come to the United States to solicit business
in California constitute the basis for a holding that he was
engaged in the direct targeting of the state of Iowa. Something
more is required: specifically “conduct directly targeting” the
7742 BRAYTON PURCELL v. RECORDON & RECORDON
actual forum in question, not simply the unexercised legal
right to target a broader geographic or political entity. No
such targeting conduct exists here.

The majority seeks to avoid this basic deficiency in Bray-
ton Purcell’s pleading by transmuting the requirement that
there be conduct directly targeting the forum into what it calls
“individualized targeting,” which, as used by the majority,
turns out to mean an intentional act harming an individual or
entity that the defendant knows to be a resident of the forum.
Maj. Op. at 7736-37. But the law requires targeting of the
forum in addition to causing foreseeable damage to one
known to be a resident of the forum. Finding “express aim-
ing” in the circumstances relied upon by the majority is con-
trary to the law of this circuit, which provides that express
aiming constitutes a separate factor that must be met in addi-
tion to the two other factors: knowledge of the plaintiff’s resi-
dence and an intentional tort causing harm to the plaintiff. In
Schwarzenegger v. Fred Martin Motor Co., for example, the
defendant committed an intentional act of intellectual prop-
erty infringement, the unauthorized use of Arnold Schwar-
zenegger’s photograph in advertisements, knowing
Schwarzenegger to be a Californian. 374 F.3d at 799, 807.
That act ultimately caused Schwarzenegger harm. Id. at 807.
Nonetheless, we found no “express aiming” because the
advertisement was directed entirely at Ohio. Id. The court
explained,

Fred Martin’s intentional act — the creation and
publication of the Advertisement — was expressly
aimed at Ohio rather than California. The purpose of
the Advertisement was to entice Ohioans to buy or
lease cars from Fred Martin and, in particular, to
“terminate” their current car leases . . . . It may be
true that Fred Martin’s intentional act eventually
caused harm to Schwarzenegger in California, and
Fred Martin may have known that Schwarzenegger
 BRAYTON PURCELL v. RECORDON & RECORDON 7743
lives in California. But this does not confer jurisdic-
tion, for Fred Martin’s express aim was local.

Id. (emphasis added). This passage from Schwarzenegger
could not be clearer: Express aiming requires “something
more” than an intentional, tortious act causing harm to a
known resident of a state in order for that state to attain forum
status. Here, it requires conduct designed “to entice” Northern
Californians to retain Recordon & Recordon’s services. Given
that Recordon & Recordon provides such services only in
Southern California, and has never provided such services to
any resident of the Northern District, plaintiffs fail to meet the
Schwarzenegger standard.

Likewise, in Pebble Beach Co., the defendant maintained
a passive website that infringed upon the trademark of a busi-
ness known to him to be located in California — the Pebble
Beach golf course and resort. 453 F.3d at 1153-54. Following
Schwarzenegger, the court found no “express aiming”
because the website was not directed at California. Id. at
1158. In language directly applicable here, the court
explained, “where the sole basis for [finding express aiming]
is a non-interactive passive website . . . . the fact that [the
defendant’s] website is not directed at [the forum] is control-
ling” and precludes a finding that venue is proper. Id. at 1158.

Pebble Beach and Schwarzenegger establish that knowl-
edge of the plaintiff’s residence and a foreseeable harm to the
plaintiff are, standing alone, insufficient to establish express
aiming. Renaming that insufficient combination “individual-
ized targeting” cannot override the requirement that a defen-
dant engage in conduct specifically directed at the district in
which the plaintiff hopes to establish venue. Recordon &
Recordon’s actions involved nothing more than the maintain-
ing of a non-interactive, passive website targeting customers
in Southern California with knowledge that the owner of the
material being improperly used lived in Northern California.
Just as the purpose of the advertisement in Schwarzenegger
7744 BRAYTON PURCELL v. RECORDON & RECORDON
was to “entice” individuals in Ohio to buy automobiles in that
state, the purpose of Recordon & Recordon’s website was to
entice potential customers in the Southern District to purchase
Recordon & Recordon’s legal services. The fact that Recor-
don & Recordon used a passive website rather than a print
advertisement to attract customers is of no consequence: Peb-
ble Beach, relying heavily on Schwarzenegger, establishes
that, with regard to “express aiming,” a passive, non-
interactive website is treated no differently than a print adver-
tisement. If a website is not directed at customers in a forum,
the defendant’s conduct in maintaining the website is not tar-
geted at that forum. Pebble Beach Co., 453 F.3d at 1158.

Here, the dispositive factor in the case is that Recordon &
Recordon maintained its offices, practiced law, and litigated
in the Southern District exclusively. No facts to the contrary
are pled in the complaint and no contrary allegation is con-
tained anywhere in the record. There is no indication, there-
fore, that Recordon & Recordon’s website was directed to an
audience other than one located entirely outside of Northern
District. The closest the majority comes to questioning that
fact is when it says that although the website shows that
Recordon & Recordon’s offices are in Southern District, it
doesn’t state expressly that the firm’s practice is limited to
that area. Maj. Op. at 7736. This is a rather feeble attempt at
a negative pregnant, and does not constitute evidence of any
kind that Recordon & Recordon has engaged in the practice
of law in Northern District or directed its website at that Dis-
trict. Accordingly, Pebble Beach and Schwarzenegger pre-
clude a finding of “express aiming.”

In its attempt to evade the controlling authority, the major-
ity asserts that Pebble Beach and Schwarzenegger are inappli-
cable because the disputed material on Recordon &
Recordon’s website “allegedly placed the two law firms in
competition in the area of elder abuse law and created confu-
sion among potential clients as to the true authorship of the
elder abuse material.” Maj. Op. at 7736-37. These conse-
 BRAYTON PURCELL v. RECORDON & RECORDON 7745
quences, even were they true, would constitute nothing more
than the “harm . . . suffered” by Brayton Purcell as a result
of Recordon & Recordon’s actions. Yahoo! Inc., 433 F.3d. at
1206. In relying upon the foreseeable effects of Recordon &
Recordon’s actions to establish express aiming, the majority
reduces the three distinct prongs of the test for personal juris-
diction to two, and adopts an approach to the express aiming
requirement expressly rejected in Pebble Beach. As Pebble
Beach explained, “showing ‘effect’ satisfies only the third
prong of the [ ] test — it is not the ‘something more’ that is
required” to establish express aiming. 453 F.3d at 1160.

II.

Although the stakes of the particular dispute between Bray-
ton Purcell and Recordon & Recordon are minor, the conse-
quences of the majority’s opinion will be major. By ignoring
the rules established by Schwarzenegger and Pebble Beach
and endorsed by Yahoo! Inc., the majority undermines this
circuit’s recent efforts to bring clarity to the law of specific
personal jurisdiction. Clear rules are important in this area,
because personal jurisdiction is a threshold issue in every law-
suit and the erroneous exercise of personal jurisdiction
deprives all subsequent proceedings of legal effect. Unfortu-
nately, in abandoning the simple and easily applied rule estab-
lished by Schwarzenegger and Pebble Beach, the majority
substitutes the unguided suggestion that some in-forum
effects amount to “express aiming,” while others do not, and
leaves litigants and lower courts without any clear principle
by which to determine in what forum venue is appropriate.

More important, the majority opinion would permit a
defendant who resides in Ohio, Florida, or Maine, thousands
of miles from the Ninth Circuit, to be sued in the Northern
District of California based on nothing more than his knowl-
edge that a plaintiff whose intellectual property rights he
allegedly infringed resides in San Francisco and the fact that
the defendant could, if he wanted, do business in that District,
7746 BRAYTON PURCELL v. RECORDON & RECORDON
even if he has no intention of ever doing so. Under the majori-
ty’s opinion, every website operator faces the potential that he
will be hailed into far-away courts based upon allegations of
intellectual property infringement, if he happens to know
where the alleged owner of the property rights resides and he
is not barred from doing business there. Due process and
basic principles of fairness prohibit such an expansive exer-
cise of personal jurisdiction.

Recordon & Recordon had no connection to the Northern
District of California besides its knowledge of Brayton Pur-
cell’s residence there. Its website was targeted entirely at
potential clients in the Southern District. Pebble Beach and
Schwarzenegger are squarely on point and preclude a finding
of express aiming in this case.

I respectfully dissent.