FILED

U.S. COURT OF APPEALS

ELEVENTH CIRCUIT

OCT 10, 2008

THOMAS K. KAHN

CLERK

[PUBLISH]

IN THE UNITED STATES COURT OF APPEALS

FOR THE ELEVENTH CIRCUIT

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No. 07-14086

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D.C. Docket No. 07-00137-CV-ORL-28-KRS

 

CARMAN LICCIARDELLO,

 Plaintiff-Appellant, 

versus

RENDY LOVELADY,

Defendant-Appellee.

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Appeal from the United States District Court

for the Middle District of Florida

____________

(October 10, 2008)

Before BIRCH, DUBINA and HILL, Circuit Judges.
HILL, Circuit Judge:

Carman Licciardello brought this action in the Middle District of Florida

against Rendy Lovelady under the Lanham Act for trademark infringement and

related claims arising out of Lovelady’s allegedly unauthorized use of

Licciardello’s name, photograph, and apparent endorsement of Lovelady on a

website. Lovelady, who resides in Tennessee, filed a Motion to Dismiss for Lack

of Personal Jurisdiction, which the district court granted. Licciardello filed a

timely notice of appeal. For the following reasons, we shall reverse.

I.

Carman Licciardello (“Carman”) has been a nationally-known Christian

musician and entertainer for over twenty-five years. From 2000 to 2001, 

Lovelady was employed by Carman as his personal manager and Lovelady

managed Carman’s concert tour during that year. The tour had live performances

in approximately eighty major cities in the United States, including three or four in

Florida. Lovelady accompanied the tour to Florida for those performances.

Under his agreement with Carman, Lovelady received commissions from

Carman’s gross income derived from catalogue record sales, from Carman’s

service contracts on specific items, including endorsement and sponsorship

contracts, and his master recordings, musical compositions and other activities

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occurring during the contract. Carman terminated his contract with Lovelady at

the end of 2001.

Carman alleges that Lovelady also managed several other artists who

performed in Florida during this time period, including one group that performs

regularly in Orlando, Florida. Lovelady was in Florida for these performances on

three occasions in 2006 and 2007.

Carman alleges that in early 2006, Lovelady posted a website on the Internet

that was accessible to the public in Florida that promoted Lovelady as a personal

manager for music artists. The website used Carman’s trademarked name and his

picture, implying that Carman endorsed Lovelady’s skill as a personal manager. 

The website offered CD’s for sale that provided management advice and other

career assistance.

Carman brought this action asserting trademark infringement by Lovelady. 

On motion, the district court dismissed the action for lack of personal jurisdiction. 

We review this dismissal de novo. Stubbs v. Wyndham Nassau Resort and Crystal

Palace Casino, 447 F.3d 1357 (11 Cir. 2006). th

II.

A federal district court in Florida may exercise personal jurisdiction over a

nonresident defendant to the same extent that a Florida court may, so long as the

3
exercise is consistent with federal due process requirements. See Fed. R. Civ. P.

4(e)(1), (h), and (k); Sculptchair, Inc. v. Century Arts, Ltd., 94 F.3d 623, 626-27

(11 Cir. 1996). If both Florida law and the United States Constitution permit, the

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federal district court may exercise jurisdiction over the nonresident defendant. Id.

1. The Florida Long-Arm Statute

The Florida “long-arm” statute permits the state’s courts to exercise

jurisdiction over nonresident defendants who commit certain specific acts. Fla.

Stat. § 48.193. For example, § (1)(b) of the statute permits a Florida court to

assert jurisdiction over any person who “commit[s] a tortious act within this state.” 

Fla. Stat. § 48.193(1)(b).

Carman claims that jurisdiction over then nonresident Lovelady is

appropriate under this section of the Florida statute. Carman argues that

Lovelady’s creation in Tennessee of a website containing an allegedly infringing

and deceptive use of Carman’s trademark is a tortious act “within this state” as

contemplated by the statute because the injury from trademark infringement occurs

where the holder of the mark resides – in this case, Florida. He relies upon Nida

Corp. v. Nida, 118 F. Supp. 2d 1223, 1231 (M.D. Fla. 2000) (allegation of

trademark infringement of Florida resident sufficient to trigger Florida long-arm

statute). Accord JB Oxford Holdings, Inc. v. Net Trade, Inc., 76 F. Supp. 2d 1363,

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1368 (S.D. Fla. 1999). Lovelady’s response to this argument is limited to the

contention that he did not commit any tort because he did not actually create the

website; his employee did. He does not address the cases cited by Carman, nor

make any argument about where the injury from the tort occurred, if there was

one. 

We have held that §48.193(b) of the Florida long-arm statute permits

jurisdiction over the nonresident defendant who commits a tort outside of the state

that causes injury inside the state. Posner v. Essex Ins. Co., 178 F.3d 1209, 1216

(11 Cir. 1999) (adopting broad interpretation of long-arm statute by Florida

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courts that permits personal jurisdiction over nonresident defendant alleged to

have committed a tort causing injury in Florida). Therefore, although the website

was created in Tennessee, the Florida long-arm statute is satisfied if the alleged

trademark infringement on the website caused injury in Florida.

We need not decide whether trademark injury necessarily occurs where the

owner of the mark resides, as the Florida district courts have held, because in this

case the alleged infringement clearly also occurred in Florida by virtue of the

website’s accessibility in Florida. On motion to dismiss, and under our precedent, 1

Even under the alternative rule, that the injury occurs where the mark was “passed off,” 1

injury would occur in Florida as the website is alleged to have been accessible in Florida. Cf.

Vanity Fair Mills v. T. Eaton Co.., 234 F.2d 633, 639 (2d Cir. 1956); Tefal, S.A. v. Prods. Int’l

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then, Carman’s allegations in the complaint are sufficient to invoke the Florida

long-arm statute. 

2

Having determined that the Florida long-arm statute authorizes jurisdiction

over Lovelady, we must address whether the due process clause of the United

States Constitution permits the statute to be employed in this case.

2. Constitutional Due process 

Even though a statute may permit a state to assert jurisdiction over a

nonresident defendant, the due process clause of the United States Constitution

protects an individual’s liberty interest in not being subject to the binding

judgments of a forum with which he has established no meaningful “contacts, ties,

or relations.” International Shoe Co. v. Washington, 326 U.S. 310, 319 (1945). 

The Constitution prohibits the exercise of personal jurisdiction over a nonresident

defendant unless his contact with the state is such that he has “fair warning” that

he may be subject to suit there. Shaffer v. Heitner, 433 U.S. 186, 218 (1977)

(Stevens, J., concurring in judgment). This “fair warning” requirement is satisfied

if the defendant has “purposefully directed” his activities at residents of the forum,

Keeton v. Hustler Magazine, Inc., 465 U.S. 770, 774 (1984), and the litigation

Co., 529 F.2d 495, 496 n.1 (3d Cir. 1976). 

Because the court holds that Fla. Stat. § 48.193(1)(b) is satisfied, we do not address 2

Carman’s assertions that jurisdiction lies under other sections of the statute as well.

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results from alleged injuries that “arise out of or relate to” those activities. 

Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 414 (1984). In

this way, the defendant could have reasonably anticipated being sued in the

forum’s courts in connection with his activities there. Burger King, 471 U.S. at

472 (quoting International Shoe, 326 U.S. at 316).

Even where a defendant has purposefully established constitutionally

significant contacts within the forum state, jurisdiction must also be evaluated in

light of several other factors to determine whether its exercise would comport with

“fair play and substantial justice.” International Shoe, 326 U.S. at 320. These

factors include the burden on the defendant of litigating in the forum, the forum’s

interest in adjudicating the dispute, the plaintiff’s interest in obtaining convenient

and effective relief and the judicial system’s interest in resolving the dispute. 

World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 292 (1980). Where

these factors do not militate against otherwise permitted jurisdiction, the

Constitution is not offended by its exercise. Id.

Therefore, in order to determine whether the due process clause permits the

exercise of personal jurisdiction over Lovelady, we must assess whether he has

purposefully established such constitutionally significant contact with the state of

Florida that he could have reasonably anticipated that he might be sued here in

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connection with those activities. If so, we must consider whether the forum’s

interest in this dispute and the plaintiff’s interest in obtaining relief are

outweighed by the burden on the defendant of having to defend himself in a

Florida court.

A. Lovelady’s contacts with Florida

Lovelady maintains that he has no constitutionally significant contacts with

Florida. He has no office, no agents, no employees or property in Florida. His

sporadic travel to Florida in connection with his management of Carman and other

music groups, he argues, is both constitutionally insufficient and unrelated to this

cause of action. Although apparently conceding that his website is related to 3

Carman’s claim, Lovelady contends that it not a sufficient contact upon which to 4

It is unclear whether Lovelady’s travel to Florida and income from his management of 3

several music groups that have performed in Florida are related to Carman’s claim for trademark

infringement on the website. We note, however, that it is not enough that there be some

similarity between the activities that connect the defendant to the forum and the plaintiff’s claim. 

Rather, the plaintiff’s claim must “arise out of” the defendant’s contacts with the forum. Burger

King, 471 U.S. at 474 n.15. The Sixth Circuit has said that “[i]f a defendant’s contacts with the

forum state are related to the operative facts of the controversy, then an action will be deemed to

have arisen from those contacts.” CompuServe, Inc. v. Patterson, 89 F.3d 1257, 1267 (6 Cir. th

1996). In Madara v. Hall, 916 F.2d 1510, 1516 (11 Cir. 1990), we rejected a similar claim that th

a defendant’s visits to Florida for concert performances and the sale of his records in Florida

were related to the activity for which he was being sued – libel. Under this test, Carman’s

trademark infringement claim may not “arise” out of Lovelady’s travel to Florida and

management of groups performing here. In any event, we do not reach this question because we

decide the case based upon Lovelady’s website contact in Florida.

Although Lovelady does not discuss whether the website and Carman’s claim are related, 4

it is clear that they are inasmuch as the website is the location of the offending trademark use. 

8
predicate personal jurisdiction in Florida.5

As we have discussed above, the constitutional litmus test for personal

jurisdiction is whether the defendant “purposefully established ‘minimum

contacts’ in the forum State.’” Burger King, 471 U.S. at 473-74 (quoting

International Shoe, 326 U.S. at 316). Jurisdiction may be constitutionally asserted

over the nonresident defendant whenever he has by his own purposeful conduct

created a “substantial connection” with the forum state. Id. at 475. The Court has

made clear, however, that “[s]o long as it creates a ‘substantial connection’ with

the forum, even a single act can support jurisdiction.” Id. (quoting McGee v. Int’l

Life Ins. Co., 355 U.S. 220, 223 (1984)).

Intentional torts are such acts, and may support the exercise of personal

jurisdiction over the nonresident defendant who has no other contacts with the

forum. Calder v. Jones, 465 U.S. 783, 790 (1984). In Calder, a California

See JB Oxford, 76 F. Supp. 2d at 1367 (use of mark on website accessible in Florida related to

cause of action for infringement of Florida resident’s trademark).

Lovelady also argues that the website was never fully functional nor advertised and never 5

generated any income. Carman alleges in the complaint and proffers an affidavit attesting that he

accessed the website in Florida over several weeks, to which is attached a printout of the

offending material on the website. On motion to dismiss, this affidavit suffices to require the

court to accept as true that the website was operational and available to the public at large. See

Madara, 916 F.2d at 1516 (district court must accept the facts alleged in complaint as true to

extent they are uncontroverted by defendant’s affidavits). Of course, we express no opinion on

the merits, i.e., whether the use of the trademark on the temporary website was sufficient to

constitute an infringement.

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plaintiff sued a Florida newspaper and two of its employees in California state

court based on an allegedly libelous article about the plaintiff. Id. In affirming

jurisdiction, the Court noted that the nonresident employees’ article was not

“untargeted negligence,” but rather an “intentional and allegedly tortious act”

expressly aimed at the plaintiff in the forum state because the defendants knew

their article would have a potentially devastating impact on the California

plaintiff. Id. at 789-90. The defendants knew that the “brunt of the harm” to

plaintiff’s reputation would be suffered in California. Thus, California was the

focal point of the tort and jurisdiction was proper there based on the “effects” in

California of defendants’ Florida conduct. Id. at 789. The Supreme Court

concluded that “[a]n individual injured in California need not go to Florida to seek

redress from persons who, though remaining in Florida, knowingly cause the

injury in California.” Id. at 790.

Similarly, in Keeton, decided the same day as Calder, the Court emphasized

that states have a special interest in exercising jurisdiction over those who commit

intentional torts causing injury to their residents. 465 U.S. at 776-77. In Keeton,

the Court affirmed the exercise of jurisdiction over the nonresident defendant

magazine alleged to have intentionally libeled the plaintiff in the forum. Id.

Many courts have employed the Calder “effects” test when the plaintiff’s

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claim involves an intentional tort. The Seventh Circuit upheld the exercise of

personal jurisdiction in a trademark infringement action by the Indianapolis Colts

football team against a nonresident Canadian football team, also calling

themselves the “Colts.” Indianapolis Colts, Inc. v. Metropolitan Baltimore

Football Club Ltd. Partnership, 34 F.3d 410 (7 Cir. 1994). The Seventh Circuit

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held that the Canadian team was subject to personal jurisdiction in Indiana even

though its only activity directed toward Indiana was the broadcast of its games on

nationwide cable television. Id. Because the Colts used their trademarks in

Indiana, the court reasoned that the intentional injury to them by the Canadian

team’s exploitation of their name was sufficient to permit jurisdiction in Indiana. 

Id.

Similarly, the Ninth Circuit has recognized that the defendant’s connection

with the forum in an intentional tort case should be evaluated under the Calder

“effects” test, rather than the contracts-oriented “minimum contacts” test. Ziegler

v. Indian River County, 64 F.3d 470, 473 (9 Cir. 1995). In Ziegler, the court

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noted that:

 We apply different purposeful availment tests to contract and tort

cases. . . . Consistent with the Supreme Court’s holding in Burger

King, merely contracting with a resident of the forum state is

insufficient to confer specific jurisdiction over a nonresident. In tort

case, however, jurisdiction may attach if an out-of-forum defendant

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merely engages in conduct aimed at, and having effect in, the situs

state.

64 F.3d at 473 (citing Core Vent Corp. v. Nobel Industries AB, 11 F.3d 1482, 1486

(9 Cir. 1993). The court formulated the Calder test for personal jurisdiction as th

requiring a tort that was (1) intentional; (2) aimed at the forum state; and (3)

caused harm that the defendant should have anticipated would be suffered in the

forum state. Id. at 474 (affirming the exercise of jurisdiction over nonresident

defendants alleged intentionally to have caused a false arrest).6

Similarly, in Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316, 1321-22 (9th

Cir. 1998), the Ninth Circuit affirmed the exercise of jurisdiction in a trademark

infringement action over a nonresident defendant whose sole contact with the

forum was his posting of plaintiff’s trademarks on his internet website. Id. The

court found that the defendant knew that “the brunt of the harm to Panavision”

would be felt in California where Panavision had its principal place of business. 

Id. Although noting that the mere posting of an infringing trademark on a website 7

Mere negligent use of an infringing mark would not satisfy the Calder test. 465 U.S. at 6

788-90. Under the effects test, acts expressly aimed by the defendant at an individual in the

forum may result in personal jurisdiction over the defendant, but mere untargeted action or a

fortuitous result will not. Id. 

In Canseco, Inc. v. Hickerson, 698 N.E. 2d 816, 819 (Ind. App. 1998) the Indiana state 7

court declined to permit jurisdiction under the effects test in a trademark infringement action

where the plaintiff was a national corporation, reasoning that the corporation’s injury is not

located in a particular geographic location as an individual’s harm would be. Use of the test in

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“without more” might not be sufficient to demonstrate that the defendant

purposefully aimed his activity toward the forum state, the court found that the

defendant’s use of Panavision’s trademarks as his domain name on the internet

was an attempt to extort payment from Panavision for the names and that this

intentional conduct was sufficient to permit jurisdiction. Id. at 1321.

In a recent case, the Ninth Circuit explained that “something more” is

required under Calder than the mere “forseeability” that an act may have effects in

the forum, and concluded that Calder requires that the defendant “expressly aim”

his wrongful conduct, individually targeting a known forum resident. Bancroft &

Masters, Inc. v. Augusta National Inc., 223 F.3d 1082, 1088 (9 Cir. 2000). When

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the nonresident defendant targets a forum resident and injures him there, the court

held, the defendant cannot complain when he is haled into court there. Id. at 1087.

Recently the Middle District of Florida recognized that “a number of courts”

have held that “where a defendant’s tortuous conduct is intentionally and

purposefully directed at a resident of the forum, the minimum contacts

requirement is met, and the defendant should anticipate being haled into court in

such a case would expose the defendant to suit throughout the nation, according to the state

court, resulting in an “unsuitable” result. Of course, where the plaintiff is an individual, the

injury is suffered where the plaintiff resides. JB Oxford, 76 F. Supp. 2d at 1368. 

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that forum.” New Lennox Industries v. Fenton, 510 F. Supp. 2d 893, 904 (M.D.

Fla. 2007). In that case, the plaintiff had alleged fraud and misappropriation of

trade secrets, and the district court held that jurisdiction was proper inasmuch as

“Plaintiff alleges that Defendants committed one or more intentional torts . . .

against Plaintiff who was injured in Florida. Id. at 904-05 (citing Godfrey v.

Neuman, 373 So. 2d 920, 922 (Fla. 1979) (Florida Supreme Court similarly

applied the effects test to find jurisdiction over the defendant alleged to have

committed an intentional tort).

Finally, in Allerton v. State Department of Insurance, 635 So. 2d 36 (Fla. 1st

DCA 1994), a Florida appellate court rejected an argument that neither the Florida

long-arm statute nor the Constitution permitted the exercise of jurisdiction over a

nonresident alleged to have committed fraud and breach of fiduciary duty causing

injury in Florida, stating “[w]e do not believe that the supreme court [of Florida]

intended . . . to deprive a Florida plaintiff, injured by the intentional misconduct of

a nonresident corporate employee expressly aimed at him, of the right to obtain

personal jurisdiction over that employee in a Florida court.” Id. at 40. The court

held that, because the defendant was alleged to have committed numerous

intentional torts specifically aimed at a Florida resident, due process was satisfied

under the Calder effects test. Id. The court concluded that the “quality and nature

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of [the defendant’s] actions were not so ‘random, fortuitous or attenuated” that

[he] could not reasonably anticipate being haled into court in Florida.” Id.

In this case, Lovelady is alleged to have committed an intentional tort

against Carman – using his trademarked name and his picture on a website

accessible in Florida in a manner to imply Carman’s endorsement of Lovelady and

his products. The use was not negligent, but intentional. The purpose was to

make money from Carman’s implied endorsement. The unauthorized use of

Carman’s mark, therefore, individually targeted Carman in order to misappropriate

his name and reputation for commercial gain. These allegations satisfy the Calder

effects test for personal jurisdiction – the commission of an intentional tort,

expressly aimed at a specific individual in the forum whose effects were suffered

in the forum. The Constitution is not offended by the exercise of Florida’s longarm statute to effect personal jurisdiction over Lovelady because his intentional

conduct in his state of residence was calculated to cause injury to Carman in

Florida. See Calder, 465 U.S. at 791. Lovelady cannot now claim surprise at

being haled into court here. See id. at 789-90.8

We do not, by our decision today, intend to establish any general rule for personal 8

jurisdiction in the internet context. Our holding, as always, is limited to the facts before us. We

hold only that where the internet is used as a vehicle for the deliberate, intentional

misappropriation of a specific individual’s trademarked name or likeness and that use is aimed at

the victim’s state of residence, the victim may hale the infringer into that state to obtain redress

for the injury. The victim need not travel to the state where the website was created or the

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B. Fair Play and Substantial Justice

Having established that Lovelady has a constitutionally sufficient contact

with Florida, we must ascertain whether the exercise of jurisdiction over him

comports with fair play and substantial justice. International Shoe, 326 U.S. at

320. Relevant factors include the burden on the defendant, the forum’s interest in

adjudicating the dispute, the plaintiff’s interest in obtaining convenient and

effective relief and the judicial system’s interest in resolving the dispute. WorldWide Volkswagen, 444 U.S. at 292.

In this case, the Florida plaintiff, injured by the intentional misconduct of a

nonresident expressly aimed at the Florida plaintiff, is not required to travel to the

nonresident’s state of residence to obtain a remedy. The Supreme Court in Calder

made clear that “[a]n individual injured in California need not go to Florida to

seek redress from persons who, though remaining in Florida, knowingly cause the

injury in California.” 465 U.S. at 1487.

Additionally, Florida has a very strong interest in affording its residents a

forum to obtain relief from intentional misconduct of nonresidents causing injury

in Florida. Allerton, 635 So. 2d at 40; Sculptchair, Inc. v. Century Arts, Ltd. 94

F.3d 623, 632 (11 Cir. 1996). The Constitution is not offended by Florida’s th

infringer resides to obtain relief.

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assertion of its jurisdiction over such nonresident tortfeasors. Calder, 465 U.S. at

1487.

IV.

For the foregoing reasons, we reverse the district court’s grant of the motion

to dismiss for lack of personal jurisdiction and remand for further proceedings not

inconsistent with this opinion.

REVERSED AND REMANDED.

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