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IN THE UNITED STATES DISTRICT COURT 

FOR THE DISTRICT OF ARIZONA

 

 Plaintiff Merola Sales Company, Inc. (“Merola”) filed suit against Tabarka Studio, 

Inc. (“Tabarka”) seeking a declaratory judgment against any copyright infringement 

claims, and other relief. (Doc. 1) Tabarka filed counterclaims against Home Depot U.S.A. 

Incorporated (“HD Stores”) and Home Depot Product Authority LLC (“HD Web”, and 

together with HD Stores, the “Home Depot Defendants”)1

 for copyright infringement and 

injunctive relief. (Doc. 29) Before the Court is the Home Depot Defendants’ motion to 

dismiss (the “Motion”) seeking dismissal of Tabarka’s infringement counterclaims against 

them. (Doc. 41) The Court’s ruling is as follows. 

I. Background 

Meir Zenati (“Zenati”) is a designer that creates hand-painted tiles, pottery, 

furniture, and other housewares. (Doc. 29 at 14) Zenati has created many collections of 

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 HD Stores owns and operates the stores of The Home Depot Inc. throughout the United States. HD Web buys products and operates the website for The Home Depot Inc. (Doc. 41 at 3) 

Merola Sales Company, Inc., 

 

Plaintiff, 

vs. 

Tabarka Studio, Inc., 

Defendant. 

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No. CV-18-00248-PHX-SPL 

ORDER 

 
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hand-painted tiles, which he manufactures and sells to several of the largest tile distributors 

throughout the United States. (Doc. 29 at 15) At issue in this case are four of Zenati’s 

designs, Paris Metro 1 (“PM 1”) created in 2008, Casablanca 2 (“C2”) created in 2007, 

Paris Metro 11 (“PM 11”) created in 2008, and Touareg 6 created in 2011. In 2017, 

Tabarka began the process of obtaining registered copyrights for PM 1, PM 11, C2, and 

Touareg 6 with the U.S. Copyright Office. (Doc. 29 at 16) On August 15, 2017, PM 1, PM 

11 and Touareg 6 were issued copyright registrations for the artwork on the tiles. (Doc. 29 

at 16) However, the registration application for C2 was denied on March 22, 2018. 2 (Doc. 

29 at 17) 

 In 2015, prior to the filing of the copyright registration applications, Tabarka 

became aware that several of its designs, including PM 1, PM 11, and C2, were being 

copied and sold in nearly-identical tiles throughout the United Kingdom. (Doc. 29 at 17) 

In 2017, Tabarka became aware that Merola, along with the Home Depot Defendants, was 

selling unlicensed tiles that were identical copies of Tabarka’s tiles. (Doc. 29 at 22, 25) 

Tabarka sent a letter to the Home Depot Defendants on May 1, 2017, stating that the Home 

Depot Defendants were violating Tabarka’s copyright interests through sale of the tiles. 

(Doc. 41 at 2) Merola, the supplier of the tiles to the Home Depot Defendants, responded 

to the first letter seeking proof of ownership of valid copyrights. (Doc. 41 at 2–3) On 

August 23, 2017, Tabarka sent a second letter to the Home Depot Defendants alleging 

copyright infringement. (Doc. 41 at 3) 

 On January 23, 2018, Merola initiated this lawsuit seeking a declaratory judgment 

that it did not infringe on Tabarka’s copyright interests. (Doc. 1 at 12–13) On May 1, 2018, 

Tabarka filed its answer and asserted counterclaims against Merola and the Home Depot 

Defendants for copyright infringement and injunctive relief. (Doc. 29 at 12–34) The Home 

Depot Defendants filed the Motion on June 7, 2018, seeking dismissal of Tabarka’s 

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 The application for C2 was denied, but Tabarka filed a request for reconsideration 

with the U.S. Copyright Office. (Doc. 29 at 17) 
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counterclaims for lack of personal jurisdiction and improper venue, among other reasons. 

(Doc. 41) 

II. Dismissal for Lack of Personal Jurisdiction Pursuant to Rule 12(b)(2) 

A. Legal Standard for General Jurisdiction 

It is well settled that only a limited set of affiliations with a forum will render a 

defendant amenable to general jurisdiction there, and the paradigm forum for the exercise 

of general jurisdiction over a corporation is one in which the corporation is fairly regarded 

as at home, such as the place of incorporation and principal place of business. Best Odds 

Corp. v. iBus Media Ltd., 655 F. App’x 582–83 (9th Cir. 2016). Only in an exceptional 

case will general jurisdiction be available anywhere else. Id. It is undisputed that HD 

Stores is a Delaware corporation with its principal place of business in Georgia, and HD 

Web is a limited liability company organized under the laws of Georgia with its principal 

place of business in Georgia. (Doc. 41 at 5; Doc. 29 at 13) Accordingly, the Court finds 

that the Home Depot Defendants are not subject to the general jurisdiction of the Court. 

B. Legal Standard for Specific Jurisdiction 

Under Rule 4.2(a) of the Arizona Rules of Civil Procedure, an Arizona court may 

exercise personal jurisdiction over parties, whether found within or outside the state, to the 

maximum extent permitted by the Arizona Constitution and the Constitution of the United 

States. Cybersell, Inc. v. Cybersell, Inc., 130 F.3d 414, 416 (9th Cir. 1997) (stating that 

under Rule 4.2(a), Arizona will exert personal jurisdiction over a nonresident litigant to the 

maximum extent allowed by the federal constitution). Due process requires that to exercise 

jurisdiction over a non-resident defendant, the defendant have certain minimum contacts 

with a forum such that the maintenance of the suit does not offend traditional notions of 

fair play and substantial justice. Int’l Shoe Co. v. Washington, 326 U.S. 310, 316 (1945). 

Courts employ a three-part test to determine if a defendant has sufficient minimum contacts 

to be subject to specific personal jurisdiction: (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 
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privilege of conducting activities in the forum, 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 reasonable.3 Schwarzenegger v. Fred Martin 

Motor Co., 374 F.3d 797, 802 (9th Cir. 2004). 

“The plaintiff bears the burden of satisfying the first two prongs of the test.” 

Schwarzenegger, 374 F.3d at 802. If the plaintiff meets that burden, “the burden then shifts 

to the defendant to ‘present a compelling case’ that the exercise of jurisdiction would not 

be reasonable.” Axiom Foods, Inc. v. Acerchem Int’l, Inc., 874 F.3d 1064, 1068–69 (9th 

Cir. 2017). Although the burden is on a plaintiff to show that a court has jurisdiction over 

a defendant, in the absence of an evidentiary hearing, a plaintiff need only make a “prima 

facie showing of jurisdictional facts to withstand the motion to dismiss.” Pebble Beach Co. 

v. Caddy, 453 F.3d 1151, 1154 (9th Cir. 2006). 

C. Analysis 

i. Purposeful Direction 

A plaintiff satisfies the first prong by demonstrating that a defendant either 

purposefully availed itself of the privilege of conducting activities in the forum or 

purposefully directed its activities at the forum. Washington Shoe Co. v. A-Z Sporting 

Goods Inc., 704 F.3d 668, 672 (9th Cir. 2012). In tort cases, courts typically inquire 

whether a defendant purposefully directs its activities at the forum state, applying an effects 

test that focuses on the forum in which the defendant’s actions were felt, whether or not 

the actions themselves occurred within the forum. Yahoo! Inc. v. La Ligue Contre Le 

Racisme, 433 F.3d 1199, 1206 (9th Cir. 2006). The “effects” test requires that the 

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 In determining reasonableness, seven factors are considered: (1) the extent of a defendant’s purposeful interjection; (2) the burden on the defendant in defending in the forum; (3) the extent of conflict with the sovereignty of the defendant’s state; (4) the forum state’s interest in adjudicating the dispute; (5) the most efficient judicial resolution of the controversy; (6) the importance of the forum to the plaintiff’s interest in convenient and 

effective relief; and (7) the existence of an alternative forum. Rio Properties, Inc. v. Rio Int’l Interlink, 284 F.3d 1007, 1021 (9th Cir. 2002). No single factor is dispositive, and a court must balance all seven. Id. 
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defendant 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. Calder v. Jones, 465 U.S. 783 (1984); Mavrix Photo, Inc. v. Brand Techs., Inc., 647 

F.3d 1218, 1228 (9th Cir. 2011). 

a. Intentional act 

In this case, the intentional act element is easily satisfied. Courts have held that 

operating an active website qualifies as an intentional act. Rio Properties, Inc. v. Rio Int’l 

Interlink, 284 F.3d 1007, 1021 (9th Cir. 2002) (stating that operating even a passive website 

in conjunction with “something more”—conduct directly targeting the forum—is sufficient 

to confer personal jurisdiction). In the Complaint, Tabarka alleges that HD Web hosted a 

website that provided a forum to actively allow commercial transactions to take place, 

including sale of the tiles at issue. (Doc. 29 at 13, 25–26) Furthermore, HD Stores denies 

that it stocked the tiles in its stores, but admits that its stores were available as vehicles to 

ship and retrieve tiles ordered from HD Web. (Doc. 41 at 8) The Court finds that the 

website operated by HD Web was not a passive website and that the transaction of 

commerce constitutes the “something more” necessary to confer jurisdiction. Further, the 

availability and use of HD Stores’ locations for products ordered from HD Web constitutes 

an intentional act predicated on the sale of the tiles in Arizona. Therefore, the Court finds 

that Tabarka has pleaded sufficient facts to demonstrate that the Home Depot Defendants 

engaged in intentional acts in Arizona. 

b. Expressly Aimed 

The second prong of the test, express aiming, focuses on whether a defendant’s 

allegedly tortious action was expressly aimed at the forum. Picot v. Weston, 780 F.3d 1206, 

1214 (9th Cir. 2015). Courts have held that individualized targeting satisfies the express 

aiming requirement. Individualized targeting is established when a defendant willfully 

infringes on a plaintiff’s copyright and has knowledge of both the existence of the 

copyright and the forum of the copyright holder. Axiom Foods, 874 F.3d at 1069. In this 

analysis, the Court must look to the Defendants’ own contacts with the forum, not to the 
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Defendants’ knowledge of the Plaintiff’s connections to the forum. Axiom, 874 F.3d at 

1070; Picot, 780 F.3d 1206, 1214 (9th Cir. 2015) (stating that personal jurisdiction analysis 

must focus on the defendant’s contacts with the forum state, not the defendant’s contacts 

with a resident of the forum). 

It is clear from the pleadings that the Home Depot Defendants were unaware of 

Tabarka or any of its copyright interests until it received the first letter alleging copyright 

infringement in May 2017. The Home Depot Defendants argue that upon receiving the 

letter, Merola reached out to Tabarka to request proof of ownership of valid copyrights for 

the tiles at issue. (Doc. 41 at 2–3) In the Complaint (Doc. 1), Merola’s description of the 

letter demonstrates that the letter identified Tabarka and alleged infringement of Tabarka’s 

intellectual property rights. (Doc. 1 at 6) Neither party has provided the Court with exhibits 

reflecting the contents of the letters sent from Tabarka to the Home Depot Defendants. 

Accordingly, the Court can only speculate as to when the Home Depot Defendants became 

aware that Arizona was the forum state of Tabarka. However, it is undisputed that the 

Home Depot Defendants have contacts with Arizona in the form of approximately 50 stores 

located in Arizona and website sales made to customers in Arizona. (Doc. 29 at 13) It is 

also undisputed that the Home Depot Defendants sold the tiles at issue in Arizona before 

receipt of Tabarka’s first letter. (Doc. 29 at 25) Accordingly, the Court finds that Tabarka 

has pleaded facts sufficient to demonstrate that the Home Depot Defendants’ sale of the 

tiles is sufficient to demonstrate that their intentional acts were expressly aimed at Arizona. 

c. Causing Harm 

Tabarka must also make a prima facie showing that the Home Depot Defendants 

knew that they were causing harm likely to be suffered in Arizona. This element is satisfied 

when a defendant’s intentional act has foreseeable effects in the forum and can be 

established if the bulk of the harm occurs outside of the forum. Wake Up & Ball LLC v. 

Sony Music Entm’t Inc., 119 F. Supp. 3d 944, 951 (D. Ariz. 2015). The Complaint alleges 

that the Home Depot Defendants were engaging in copyright infringement. It is well 

settled that the economic loss caused by the intentional infringement of a plaintiff’s 
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copyright is foreseeable. Mavrix, 647 F.3d at 1231 (9th Cir. 2011). Accordingly, the Court 

finds that the economic harm described by Tabarka would have foreseeably caused harm 

to an Arizona entity. (Doc. 29 at 25) 

ii. Forum Related Activities 

The second requirement for specific jurisdiction is that Tabarka’s claims arise out 

of the Home Depot Defendants’ Arizona-related activities. This requirement is satisfied if 

Tabarka would not have been injured “but for” the Home Depot Defendants’ conduct in 

Arizona. It is undisputed that the Home Depot Defendants and Merola sold Tabarka’s 

products outside of Arizona. (Doc. 66 at 3) Tabarka does not allege facts sufficient to 

demonstrate that its injury is limited to the tiles sold in Arizona, as Tabarka admits that its 

tiles are sold internationally and the Home Depot Defendants admit that the tiles were 

offered nationwide. (Doc. 29 at 15) The Court must find that “but for” the Home Depot 

Defendants’ actions selling the tiles in Arizona, Tabarka still would have potentially 

suffered an injury. Accordingly, the Court cannot find that Tabarka’s claims arise out of 

the Home Depot Defendants’ forum related activities in Arizona. 

Because the Court finds that Tabarka has not met its burden of demonstrating that 

Tabarka’s claims arise out of forum related activities, the Court need not address the issue 

of reasonableness. The Court finds that Tabarka’s counterclaims against HD Stores and 

HD Web are not properly within the specific jurisdiction of the Court. Accordingly, the 

Home Depot Defendants’ Motion to Dismiss must be granted for lack of personal 

jurisdiction. 

Accordingly, 

IT IS ORDERED that Counter-Defendants’ Motion to Dismiss (Doc. 41) is 

granted. 

 Dated this 31st day of January, 2019. 

Honorable Steven P. Logan 

United States District Judge