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HUSCH BLACKWELL LLP

Steven E. Holtshouser, MO 33531 (admitted pro hac vice)

Erin D. Knese, MO 70171 (admitted pro hac vice)

190 Carondelet Plaza, Suite 600

St. Louis, MO 63105

Phone: 314-480-1500 

steve.holtshouser@huschblackwell.com

erin.knese@huschblackwell.com

DICKINSON WRIGHT PLLC

Scot L. Claus, AZ 014999

1850 North Central Avenue, Suite 1400

Phoenix, AZ 85004-4568

Phone: (602) 285-5000

courtdocs@dickinsonwright.com

Attorneys for Plaintiff/Counterdefendant, 

Merola Sales Company, Inc. and for Third-Party

Defendants, Home Depot U.S.A., Inc. and Home

Depot Product Authority, LLC

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF ARIZONA

Merola Sales Company, Inc., 

Plaintiff/Counterdefendant,

vs. 

Tabarka Studio, Inc., 

Defendant/Counterclaimant. 

No. CV-18-00248-PHX-SPL

THIRD PARTY DEFENDANTS’ 

MOTION TO DISMISS 

AMENDED THIRD-PARTY 

COMPLAINT AND 

MEMORANDUM IN SUPPORT

Tabarka Studio, Inc., 

 Third Party Plaintiff, 

vs. 

Home Depot Product Authority, 

LLC, et al., 

 Third Party Defendants. 

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Pursuant to Rules 12(b)(1), 12(b)(2), 12(b)(3), 12(b)(6), 17(a), and 17(b) of the Federal 

Rules of Civil Procedure, Third-Party Defendants Home Depot U.S.A., Inc. (“HDUSA”) and 

Home Depot Product Authority, LLC (“HDPA”) (collectively, “Home Depot Entities”)

request the Court dismiss Tabarka Studio, Inc.’s (“Tabarka’s”) Amended Third-Party 

Complaint (Dkt. 29) because: 

1) The Court does not have personal jurisdiction over the Home Depot Entities; 

2) Venue is improper; and, for reasons stated in Merola Sales Company, Inc.’s 

(“Merola’s”) Motion to Dismiss (Dkt. 36): 

3) Tabarka lacks standing to allege infringement of certain works; and, 

4) Tabarka has failed to state cognizable claims for certain works. 

This Motion is supported by the attached Memorandum of Points and Authorities and 

contemporaneously filed Certificate of Counsel.

MEMORANDUM OF POINTS AND AUTHORITIES

I. INTRODUCTION

This case stems from the Declaratory Judgement sought by Merola that copyrights 

allegedly owned by Tabarka are invalid and/or unenforceable by Tabarka. Merola brought the 

suit after Tabarka sent harassing, disparaging, and threatening letters to Merola’s customers, 

then subsequently refused to disclose any evidence of Tabarka’s ownership in a valid 

copyright. The first customer to receive one of these letters from Tabarka was Home Depot. 

Merola supplies Home Depot with decorative ceramic tiles that Tabarka accuses of 

infringing its copyrights. Tabarka’s first letter to Home Depot was sent May 1, 2017, when 

Merola had never even heard of Tabarka. As the supplier of the accused tiles, Merola received 

a copy of the letter from Home Depot. In response, Merola reasonably requested that Tabarka 

demonstrate ownership of valid copyrights so that Merola could make an informed decision 

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about future sales of the accused tiles. Instead of offering Merola any proof of ownership, 

Tabarka instead sent a second letter to Home Depot on August 23, 2017, threatening criminal 

sanctions among other wholly inappropriate and inapplicable penalties. 

In response to Merola’s suit, Tabarka counterclaimed and added Home Depot as a third 

party. In its amended third-party complaint, Tabarka names HDUSA and HDPA (collectively, 

“Home Depot Entities”). The Home Depot Entities are subsidiaries of The Home Depot Inc.

HDUSA owns and operates stores in the United States, while HDPA buys product and runs the 

website. Despite these very different company functions, Tabarka improperly groups the two 

Home Depot entities throughout its amended third-party complaint. 

It is well-known the Supreme Court has curtailed the bounds of personal jurisdiction in 

recent years. Following the new guidelines, as laid out by the Supreme Court and interpreted 

by the Ninth Circuit, compels a single conclusion: this Court does not have personal 

jurisdiction over the Home Depot Entities with regards to the third-party complaint brought by 

Tabarka. The relationship among the defendants, the forum, and the litigation does not justify 

the Court’s exercise of specific jurisdiction here. Dismissal of the Home Depot Entities from 

the suit still leaves room for Tabarka to recover from Home Depot in an appropriate forum, in 

the unlikely event that Tabarka succeeds in establishing that owns valid, enforceable, and 

infringed copyrights. Likewise, because the Court lacks personal jurisdiction, venue is also 

improper. Dismissal is therefore warranted. 

II. ARGUMENT

A. Legal Standards

Federal Rule of Civil Procedure 12(b)(2) allows a party to move to dismiss for lack of 

personal jurisdiction. Personal jurisdiction must be addressed before the merits of a case, as it 

“is an essential element of the jurisdiction of a district...court, without which the court is 

powerless to proceed to an adjudication.” Ruhrgas AG v. Marathon Oil Co., 526 U.S. 574, 

584 (1999) (quotations omitted). “To withstand a 12(b)(2) motion, the plaintiff must show 

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that the defendant is properly subject to the court’s jurisdiction.” Salt River Project Agric. 

Improvement & Power Dist. v. Trench France SAS, No. CV-17-01468-PHX-DGC, 2017 WL 

5885528, at *2 (D. Ariz. Nov. 29, 2017), reconsideration denied, No. CV-17-01468-PHXDGC, 2017 WL 6554860 (D. Ariz. Dec. 22, 2017) (quoting Mavrix Photo, Inc. v. Brand 

Techs., Inc., 647 F.3d 1218, 1223 (9th Cir. 2011)). 

District courts have the power to exercise personal jurisdiction to the extent authorized 

by the law of the state in which they sit. Fed. R. Civ. P. 4(k)(1)(A); Panavision Int’l, L.P. v. 

Toeppen, 141 F.3d 1316, 1320 (9th Cir. 1998). Personal jurisdiction over a nonresident is 

proper when the requirements of the state’s long-arm statute have been satisfied and the 

exercise of jurisdiction “comports with the constitutional principles of due process.” Rio 

Props., Inc. v. Rio Int’l Interlink, 284 F.3d 1007, 1019 (9th Cir. 2002). Arizona’s long-arm 

statute allows the exercise of personal jurisdiction to the same extent as the U.S. Constitution. 

See Ariz. R. Civ. Proc. 4.2(a); Cybersell, Inc. v. Cybersell, Inc., 130 F.3d 414, 416 (9th Cir. 

1997). Thus, an Arizona court may exercise personal jurisdiction over a nonresident defendant 

as long as doing so accords with due process. Cybersell, 130 F.3d at 416.

Federal Rule of Civil Procedure 12(b)(3) allows a party to move to dismiss for 

improper venue. Venue in copyright actions lies in the district where the defendant resides or 

may be found. 28 U.S.C. §1400(a). This allows venue “in any judicial district where, if treated 

as a separate state, the defendant would be subject to personal jurisdiction.” Brayton Purcell 

LLP v. Recordon & Recordon, 606 F.3d 1124, 1126 (9th Cir. 2010). If an action is filed in the 

“wrong division or district” a court may dismiss the action. 28 U.S.C. § 1406(a). When 

deciding a motion to dismiss for improper venue, the court may consider facts outside the 

pleadings. R.A. Argueta v. Banco Mexicano, S.A., 87 F.3d 320, 324 (9th Cir. 1996). 

B. The Court Lacks Personal Jurisdiction over the Home Depot Entities with 

respect to this copyright infringement action. 

“[A] corporation may be subject to personal jurisdiction only when its contacts with 

the forum support either specific or general jurisdiction.” Martinez v. Aero Caribbean, 764 

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F.3d 1062, 1068 (9th Cir. 2014) (citing Int'l Shoe Co. v. Washington, 326 U.S. 310 (1945)).

“Each defendant’s contacts with the forum State must be assessed individually.” Calder v. 

Jones, 465 U.S. 783, 790 (1984) (citations omitted). As to both HDUSA and HDPA, neither 

general nor specific jurisdiction is supported in this case.

1. General Jurisdiction is not supported. 

This Court cannot exercise general personal jurisdiction over either of the Home Depot 

Entities. “[O]nly a limited set of affiliations with a forum will render a defendant amenable to 

all-purpose jurisdiction there.” Daimler AG v. Bauman, 134 S. Ct. 746, 760 (2014). The 

“paradigm forum” for general jurisdiction over a corporation it is its “place of incorporation 

and its principal place of business.” BNSF Ry. Co. v. Tyrrell, 137 S. Ct. 1549, 1558 (2017)

(quoting Daimler, 134 S. Ct. at 761). “Only in an ‘exceptional case’ will general jurisdiction 

be available anywhere else.” Martinez, 764 F.3d at 1070 (quoting Daimler, 134 S. Ct. at 761 

n.19). HDUSA is a Delaware corporation with its principal place of business in Georgia. 

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

place of business also in Georgia. Therefore, the Court can exercise jurisdiction over the Home 

Depot Entities only if specific personal jurisdiction is found.

2. Specific Jurisdiction is not supported. 

“The inquiry whether a forum State may assert specific jurisdiction over a nonresident 

defendant ‘focuses on the relationship among the defendant, the forum, and the litigation.’”

Walden v. Fiore, 134 S. Ct. 1115, 1121 (2014) (quoting Keeton v. Hustler Magazine, Inc., 465 

U.S. 770, 775 (1984)). “[T]he defendant's suit-related conduct must create a substantial 

connection with the forum State.” Walden, 134 S. Ct. at 1121 (emphasis added). “When there 

is no such connection, specific jurisdiction is lacking regardless of the extent of a defendant’s 

unconnected activities in the State.” Matus v. Premium Nutraceuticals, LLC, 715 F. App'x 662 

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(9th Cir. 2018) (quoting Bristol-Myers Squibb Co. v. Superior Court of California, San 

Francisco Cty., 137 S. Ct. 1773, 1781 (2017)). 

“The ‘primary concern’ in assessing personal jurisdiction is ‘the burden on the 

defendant.’” Bristol-Myers, 137 S. Ct. at 1776 (quoting World–Wide Volkswagen Corp. v. 

Woodson, 444 U.S. 286, 292 (1980)). A plaintiff’s “strong forum connections” are simply not 

enough. See Axiom Foods, Inc. v. Acerchem Int'l, Inc., 874 F.3d 1064, 1069-70 (9th Cir. 2017)

(quoting Walden, 134 S. Ct. at 1124-25). “A forum State’s exercise of jurisdiction over an outof-state intentional tortfeasor must be based on intentional conduct by the defendant that 

creates the necessary contacts with the forum.” Axiom, 874 F.3d at 1068 (9th Cir. 2017)

(quoting Walden, 134 S. Ct. at 1123) (emphasis added).

In the Ninth Circuit,

We use a tripartite analysis in determining specific jurisdiction: (1) the nonresident 

defendant must purposefully direct his activities or consummate some transaction with 

the forum or residents thereof; or perform some act by which he purposefully avails 

himself of the 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.

Turney v. Hyundai Constr. Equip. USA, Inc., No. CV 11-808-PHX-SRB, 2012 WL 12886200, 

at *3 (D. Ariz. Jan. 12, 2012), aff'd sub nom. Turney v. Hyundai Const. Equip. USA Inc., 577 

F. App'x 659 (9th Cir. 2014) (quoting Lake v. Lake, 817 F.2d 1416, 1421 (9th Cir. 1987)); see 

also Axiom, 874 F.3d at 1068. “The plaintiff bears the burden of satisfying the first two prongs 

of the test.” Turney, 2012 WL 12886200, at *3 (quoting Schwarzenegger v. Fred Martin 

Motor Co., 374 F.3d 797, 802 (9th Cir. 2004)). “If the plaintiff fails to satisfy either of these 

prongs, personal jurisdiction is not established in the forum state.” Id. “Only if the plaintiff 

satisfies the first two prongs does the burden shift to the defendant to show why the exercise of 

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jurisdiction would not be reasonable.” Id. As demonstrated below, Tabarka has not met its 

burden on either of the first two prongs.

i. Tabarka has not, and cannot, adequately allege that the Home Depot 

Entities “purposefully directed” the alleged acts toward Arizona. 

The Ninth Circuit generally uses a “purposeful direction” analysis (as opposed to 

purposeful availment) for copyright infringement actions, as it does for actions sounding in 

tort. See Brayton, 606 F.3d at 1128. Purposeful direction is analyzed under the “effects test.” 

Calder v. Jones, 465 U.S. 783, 787-89 (1984); Dole Food Co. v. Watts, 303 F.3d 1104, 1111 

(9th Cir. 2002). The “effects” test requires that the defendant: “(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.” Axiom, 874 F.3d at 1069. “The proper question is not where 

the plaintiff experienced a particular injury or effect but whether the defendant’s conduct 

connects him to the forum in a meaningful way.” Salt River, 2017 WL 5885528, at *3 

(quoting Walden, 134 S. Ct. at 1125). Tabarka has not shown either of the Home Depot 

Entities “purposefully directed” activities toward Arizona for purposes of its suit. 

Tabarka’s amended third-party complaint obscures the distinct operations of the two 

Home Depot Entities. Tabarka acknowledges that HDUSA operates “retail locations,” and that 

HDPA operates “Home Depot’s website.” (Dkt. 29 at 13, ¶¶ 2-3). However, Tabarka refers to 

every alleged action after this point as being done by both Home Depot Entities, with no 

distinction, explaining in Paragraph 3 that the entities will thereafter be referred to collectively 

as “Home Depot.” Instead, what is required at this stage is to consider whether jurisdiction is 

proper over each entity separately. Therefore, Tabarka’s allegations related to infringement 

through physical retail locations will be attributed to HDUSA, (Dkt. 29 at 12-33, ¶¶ 7, 64, 

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106), while allegations related to infringement through the website will be attributed to HDPA,

(Dkt. 29 at 12-33, ¶¶ 7, 75, 78, 79, 85, 105, 106). 

a. The Intentional Acts Alleged by Tabarka.

Tabarka alleges that “Home Depot” has “intentionally made substantial contacts with 

Arizona, including, doing business in Arizona, marketing and selling [its] products to 

customers in Arizona, and operating interactive websites which are aimed toward and tailored 

to consumers in Arizona and which sell infringing copies of Tabarka’s products manufactured 

in Arizona.” (Dkt. 29 at 13-14, ¶ 7). Tabarka later alleges that “Home Depot” has “reproduced 

and/or distributed (and, upon information and belief, continue to reproduce and/or distribute) 

copyrighted artwork copied from Tabarka’s Tiles.” (Dkt. 29 at 29, ¶ 106). 

As Tabarka alleged, HDUSA operates retail stores while HDPA runs the website. 

Accordingly, the intentional act will be taken to be the advertisement or sale of accused tiles –

in its Arizona stores1(for HDUSA), and to Arizona residents through the website (for HDPA).

b. The Home Depot Entities did not expressly aim the intentional 

act(s) at Arizona. 

Tabarka’s allegations against HDPA2cannot amount to “express aiming” toward 

Arizona. Walden added an express requirement to the Calder effects test – the defendant’s 

“suit-related conduct” must create a “substantial connection” with the forum state. Walden, 

134 S. Ct. at 1121. Taking HDPA’s alleged suit-related conduct to be posting images of, 

 

1 HDUSA does not actually sell or stock the accused tiles in-store. Rather, all purchases of the 

accused tiles through “Home Depot,” including purchases allegedly made by Meir Zenati (Dkt. 

29 at 22, ¶¶ 63-65), occur through HDPA’s website, with the option at checkout to have the 

item(s) shipped to a HDUSA location for pickup. See Exhibit A, ¶¶ 6-13. 

2

Tabarka’s allegation that HDUSA operates “at least fifty retail locations” in Arizona, 

including locations that allegedly sell the accused tiles, is likely sufficient to meet the “express 

aiming” requirement. However, as noted above, HDUSA does not stock the accused tiles instore. For that reason, HDUSA also does not meet the “express aiming” requirement.

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advertising, offering, and selling the accused tiles on its website, this conduct does not create 

the substantial connection to Arizona necessary for a finding of express aiming. On the 

contrary, in the course of hosting its website, HDPA conducts activities and employs persons 

at its headquarters, in Georgia. Providing content over the internet does not require any 

substantial connection to Arizona, and here there is none. 

That Arizona residents are among those throughout the nation that shop on HDPA’s 

website is not sufficient for a finding of express aiming. See Matus v. Premium Nutraceuticals, 

LLC, 715 F. App'x at 663 (“Premium committed that act in the state of Georgia by publishing 

language on its public, commercial website, for all the world to see, visit, and consider. This 

was a global, universal publication without any express aiming at the California market.”) 

(emphasis added); see also Calder, 465 U.S. at 789 (finding California was “the focal point 

both of the story and of the harm suffered”); Pebble Beach Co. v. Caddy, 453 F.3d 1151, 1158 

(9th Cir. 2006) (finding no specific personal jurisdiction because maintaining a website with 

an infringing domain name did not “aim” at California alone, and holding that the “fact that 

Caddy's website is not directed at California is controlling”); Neuromechanical, LLC v. Kiro 

Kids Pty. Ltd., No. CV-10-1068-PHX-GMS, 2011 WL 333337, at *3 (D. Ariz. Jan. 31, 2011)

(finding no specific personal jurisdiction and noting that “nation-wide advertisements do not 

constitute ‘individualized targeting’ by the Defendants” (citation omitted)). 

Tabarka attempts to allege express aiming by stating that HDPA’s website is 

“specifically tailored to consumers in Arizona by, among other things, showing availability to 

consumers of products at particular retail locations in Arizona (including the [accused tiles]), 

automatically suggesting a default Arizona retail location for Arizona consumers, and, upon 

information and belief, suggesting products to consumers based on their location in Arizona.” 

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(Dkt. 29 at 26, ¶ 79.) However, this is nothing that HDPA doesn’t do for every customer from 

any state. One can see from browsing HDPA’s site that Tabarka’s series of allegations are

simply services HDPA offers to all of its website vistors, regardless of the state a visitor is 

from. If Tabarka’s allegation gives rise to express aiming, then HDPA “expressly aims” its 

conduct toward every single single state in the nation. Such a position ignores the 

constitutional requirement the defendant engage in activity expressly aimed at the forum state. 

The Ninth Circuit has undoubtedly “struggled with the question whether tortious 

conduct on a nationally accessible website is expressly aimed at any, or all, of the forums in 

which the website can be viewed.” Mavrix, 647 F.3d at 1231 (creating and applying an 

“express aiming” test for passive websites, pre-Walden, that focused on the “interests...of the 

plaintiff in proceeding with the cause in the plaintiff's forum of choice” (quoting Kulko v. 

Superior Court of Cal., 436 U.S. 84, 92 (1978)). This Court has said that “[a] defendant 

expressly aims at a forum when he engages in conduct to exploit the forum market for 

commercial gain.” Hydentra HLP Int. Ltd. v. Sagan Ltd., 266 F. Supp. 3d 1196, 1201 (D. Ariz. 

2017) (citing Mavrix, 647 F.3d at 1229). Examples of such “exploits” have included “conduct 

that focused on [the product at issue] located in Arizona” (Salt River, 2017 WL 5885528, *4) 

and “earn[ing] revenue based on advertising and website traffic in [the forum]” (Hydentra, 266 

F. Supp. 3d at 1201). Unlike in Salt River, HDPA’s conduct has not “focused on” accused tiles 

located in Arizona, but rather sales were nationwide. And in Hydentra, where the forum being 

analyzed was the United States, Plaintiffs alleged the forum constituted “the largest source” of 

website users, comprising nearly a quarter of all users. That is simply not the case with 

HDPA’s sales of the accused tiles, and Tabarka’s allegations are completely silent on the issue. 

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Accordingly, HDPA’s posting and selling of the accused tiles on its website is different 

than in Salt River and Hydentra, and does not “exploit” Arizona for commercial gain. See 

Matus v. Premium Nutraceuticals, LLC, No. EDCV1501851, 2016 WL 3078745, at *3 (C.D. 

Cal. May 31, 2016), aff'd, 715 F. App'x 662 (9th Cir. 2018) (“Although the parties appear to 

agree that the website is interactive, as consumers can make purchases from the website, ‘that 

a website is commercial in nature and interactive does not necessarily mean there is personal 

jurisdiction.’” (quoting DFSB Kollective Co. Ltd. v. Bourne, 897 F.Supp.2d 871, 881 (N.D. 

Cal. 2012)). Likewise, HDPA’s sales of accused tiles through its website, including to 

consumers in Arizona, is not sufficient to constitute “express aiming” where Tabarka alleges 

nothing further regarding those sales. See also Axiom, 874 F.3d at 1070 (noting up to “ten of 

the newsletter’s recipients were physically located in California” but finding no purposeful 

direction under its post-Walden application of Calder). 

A recent application of Axiom by the Central District of California is instructive here. In 

L.A. Gem & Jewelry Design, Inc. v. An & Assocs. Co. Inc., the court resolved “whether 

defendants expressly aimed their conduct at California.” No. CV17-2417-CAS(JEMX), 2017 

WL 6209816, at *5 (C.D. Cal. Dec. 6, 2017). In finding that they did not, the court 

acknowledged and accepted “Plaintiff’s arguments for substantial marketing and sales [which 

were] drawn from defendants’ (1) use of Facebook’s ability to target California as a market, 

(2) advertising and selling infringing products to customers in California, and (3) selling 

infringing products through their own websites and storefronts on websites like Facebook and 

Groupon.” Id. The court found that, “[l]ike the ten California residents who received the 

newsletter in Axiom, ten sales are simply too attenuated and isolated to suggest that California 

was the focal point of the sales and the harm suffered.” Id. (citing Axiom, 874 F.3d at 1070). 

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Like in L.A. Gem, here “there is no evidence” that HDPA “targeted [its] advertising or made 

anything more than attenuated or isolated sales to” Arizona, and HDPA “did not expressly 

target [its] activities towards” Arizona. Id, at *6. HDPA “therefore did not purposefully direct 

its activities towards” Arizona. Id. 

c. Neither of the Home Depot Entities knew harm would likely be 

suffered in Arizona. 

Tabarka’s amended third-party complaint fails to demonstrate that either of the Home 

Depot Entities “purposefully directed” their activities toward Arizona, because the allegations 

do not (and cannot) demonstrate that either of the Home Depot Entities “knew they were 

causing harm likely to be suffered in Arizona.” Salt River, 2017 WL 5885528, at *4. 

This third requirement of Calder “is satisfied when defendant’s intentional act has 

foreseeable effects in the forum.” Id. (quoting Brayton, 606 F.3d at 1131). “In order to 

establish specific jurisdiction, a plaintiff must also show that jurisdictionally significant harm 

was suffered in the forum state.” Id. (quoting Mavrix, 647 F.3d at 1231) (emphasis added). For 

harm to be jurisdictionally significant, it cannot be centered on harm to the plaintiff in the 

forum solely because the plaintiff has its business headquartered there. The harm under this 

requirement must also be foreseeable.

The “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.” Picot v. Weston, 780 

F.3d 1206, 1214 (9th Cir. 2015). This Court has found contacts such as operations in the 

forum, employing forum residents, and paying forum taxes do not amount to contacts 

“sufficient to show [Plaintiffs] were harmed in the forum, much less that harm to them in [the 

forum] was foreseeable.” Hydentra, 266 F. Supp. 3d at 1203. This Court further noted that the 

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Plaintiffs in Hydentra made “no attempt to show the significance of the harm to them in the 

[forum].” Likewise, Tabarka fails to allege any significance of alleged harm it suffered in 

Arizona. The fact that Tabarka operates and employs people in Arizona is not enough.

Moreover, Tabarka alleges facts that go against any finding of jurisdictionally 

significant harm in this forum by touting its reputation internationally: “Tabarka has become a 

successful world-recognized designer and manufacturer of decorative tiles. Tabarka’s tiles are 

shipped throughout the world [and] are highly visible at international design shows and across 

social media.” (Dkt. 29 at 15-16, ¶ 22). To be sure, reputational-based effects have been found 

to establish “jurisdictionally significant” harm. But this happens when the effects are tied to a 

forum-centric industry. In Calder, the harm suffered was strongly related to the fact that 

plaintiff-actress’s reputational damage would be felt in California, where the majority of acting 

jobs are centered. In fact, California sometimes exercises specific jurisdiction due to its unique 

position in the film industry. See, e.g., Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316, 1321 

(9th Cir. 1998) (finding, pre-Walden, that harm would be suffered in California because it was 

“the heart of the theatrical motion picture and television industry.”). Tabarka has not alleged 

any similar situation here. Tabarka does not allege that decorative tiles are an Arizona-centric 

industry. And according to Tabarka’s own allegations, its market is not centered on Arizona. 

Finally, the fact that some Arizona residents viewed or even purchased the accused 

tiles, absent more, does not amount to foreseeable, jurisdictionally significant harm. Instead, 

the forum of Arizona must be a focal point of the harm. See, e.g., Calder, 465 U.S. at 789 

(finding a proper forum to be “the focal point both of the story and of the harm suffered”) 

(emphasis added); Axiom, 874 F.3d at 1070-71 (noting “[i]t can hardly be said that California 

was the focal point both of the newsletter and of the harm suffered” despite known viewership 

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by California residents of the allegedly infringing material); The Carsey-Werner Co., LLC v. 

British Broad. Corp., No. CV 17-8041 PA (ASX), 2018 WL 1083550, at *6 (C.D. Cal. Feb. 

23, 2018) (“That some California individuals may have viewed the Program does not establish 

that Defendants directed their conduct toward California...California [was not] the focal point 

of the [allegedly infringing] Program and any harm suffered by Plaintiff” (citing Axiom, 874 

F.3d at 1070-71)).

ii. Tabarka has not shown its claims arise out of or relate to the Home 

Depot Entities forum-related activities. 

Even if Tabarka demonstrates purposeful direction (it hasn’t), purposeful direction is 

not enough to establish specific personal jurisdiction. Tabarka’s claims must also arise out of 

the Home Depot Entities’ contacts with Arizona, and Tabarka has failed to meet its burden. 

“The Ninth Circuit uses a ‘but for’ test. A claim arises out of a defendant’s forum 

contacts if, ‘but for’ the contacts, the cause of action would not have arisen.” Salt River, 2017 

WL 5885528, at *4 (citing Menken v. Emm, 503 F.3d 1050, 1058 (9th Cir. 2007)); see also

Axiom, 874 F.3d at 1068. “This requirement is satisfied if [Tabarka] would not have been 

injured ‘but for’ [the Home Depot Entities’] conduct in [Arizona].” Matus v. Premium 

Nutraceuticals, LLC, 715 F. App'x at 663 (quoting Rio, 284 F.3d at 1021 (citation omitted)

(alterations in original, but with current parties inserted)). 

L.A. Gem is again instructive. In L.A. Gem, the plaintiff argued “its claims for copyright 

infringement all arise from defendants’ advertising contracts with the social media websites, 

Facebook in particular.” 2017 WL 6209816, at *6. Particularly relevant in assessing whether 

HDPA’s contacts meet the “arising under” test, the court in L.A. Gem noted that California 

residents direct purchases from the defendants’ website would still not meet the but-for test. 

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But most critically, the court explained that a “but-for” finding of fewer instances of infringing 

sales does not satisfy the “but-for” requirement that the forum-activity itself gives rise to the 

claims. Id. (“But for defendants’ Facebook advertising defendants may have sold fewer 

infringing products, but they certainly would have sold some infringing products. Plaintiff’s 

claims therefore do not arise from defendants’ Facebook advertising.”).

iii. The exercise of jurisdiction here would be unreasonable. 

Because Tabarka has failed to satisfy its burden on not just one, but both, of the first 

two requirements of the “tripartite analysis,” the Court does not need to consider whether its 

exercise of jurisdiction over the Home Depot Entities would be unreasonable. In any case, the 

exercise of specific personal jurisdiction in this situation would be unreasonable. 

Courts determine “reasonableness” under a seven factor balancing test. See Fed. 

Deposit Ins. Corp. v. British-Am. Ins. Co, 828 F.2d 1439, 1442 (9th Cir. 1987) (“FDIC”). All 

of the factors weigh against the exercise of jurisdiction or are neutral at best, and therefore, on 

balance, demonstrate that the exercise of jurisdiction is unreasonable here. 

The burden of defending Arizona favors the Home Depot Entities, whose principal 

operations are centered in Georgia, and especially favors HDPA, as it “has done little to reach 

out to the forum state.” FDIC, 828 F.2d at 1444. The most efficient judicial resolution would 

occur in the Northern District of Georgia or the District of New Jersey, where Merola is 

headquartered, since that is where witnesses, records, and other key evidence is located, and 

Tabarka’s records and key evidence, if any even exists, is minimal. Tabarka also cannot show 

the unavailability of an alternate forum; for example, the Northern District of Georgia is an 

available, alternate forum. 

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The remaining factors are neutral at best: purposeful interjection does not favor Arizona 

over any other state (see Ziegler v. Indian River County, 64 F.3d 470, 475 (9th Cir.1995)

(“Even if there is sufficient ‘interjection’ into the state to satisfy the purposeful availment 

prong,” jurisdiction is not automatically reasonable) (alterations omitted)); Arizona has no 

superior interest to any other forum in adjudicating this dispute, which rests on issues of 

federal copyright law (see FDIC, 828 F.2d at 1444 (“If California law governed the dispute, 

California would have a substantial interest in adjudicating it.”)); Tabarka’s preference to 

litigate in Arizona will still be realized even if this Court dismisses the Home Depot Entities, 

since Merola has agreed to submit to the Court’s personal jurisdiction and is litigating the 

validity of the copyright through its declaratory action, which entails a necessary predicate to 

any findings of wrongdoing by the Home Depot Entities. 

C. Venue is improper in the District of Arizona.

For purposes of 28 U.S.C. § 1400(a), venue is proper where a defendant would be 

subject to personal jurisdiction. Brayton, 606 F.3d at 1124. As demonstrated above, the Home 

Depot Entities are not subject to personal jurisdiction in this district for purposes of this case, 

and therefore venue is improper under § 1400(a). 

D. The Court lacks Subject Matter Jurisdiction over Tabarka’s claims of 

infringement of at least the Paris Metro 1 and Paris Metro 11 Works, and 

Tabarka fails to state a claim for relief. 

On May 15, Merola filed a Motion to Dismiss because Tabarka does not have standing 

to assert copyright infringement of at least two alleged designs, and because Tabarka’s claim 

that it has ownership rights in three of the four asserted copyrights is not plausible on its face. 

(Dkt. 36). The Home Depot Entities join in every respect in that Motion. 

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III. CONCLUSION

For all of the foregoing reasons, the Home Depot Entities respectfully request that this 

Court dismiss this action against it because Tabarka lacks standing, the Court lacks personal 

jurisdiction, venue is improper, and Tabarka has failed to state a claim. The Home Depot 

Entities hereby give notice of intent to seek attorneys’ fees as the prevailing party.

RESPECTFULLY SUBMITTED this 7

th day of June, 2018. 

By: /s/ Erin D. Knese

Steven E. Holtshouser, Missouri Bar No. 33531, admitted pro hac vice

Erin D. Knese, Missouri Bar No. 70171, admitted pro hac vice

HUSCH BLACKWELL LLP

190 Carondelet Plaza, Suite 600

St. Louis, MO 63105

steve.holtshouser@huschblackwell.com

erin.knese@huschblackwell.com

Scot L. Claus, Arizona Bar No. 014999

DICKINSON WRIGHT PLLC

1850 N. Central Avenue, #1400

Phoenix, AZ 85004

sclaus@dickinsonwright.com

Attorneys for Plaintiff / Counterdefendant Merola Sales Company, Inc. and for Third 

Party Defendants Home Depot U.S.A., Inc. and Home Depot Product Authority, LLC

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CERTIFICATE OF SERVICE

I hereby certify that on June 7, 2018, I electronically transmitted the attached document to 

the Clerk of the Court using the CM/ECF system, and which will be sent electronically to all 

registered participants as identified on the Notice of Electronic Filing, and paper copies will be 

sent to those indicated as non-registered participants.

By:/s/ Erin D. Knese

Case 2:18-cv-00248-SPL Document 41 Filed 06/07/18 Page 18 of 18