IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF COLORADO

Judge Christine M. Arguello

Civil Action No. 11-cv-02688-CMA-BNB

FLOYD’S 99 HOLDINGS, LLC, 

Plaintiff,

v.

JUDE’S BARBERSHOP, INC., et al.,

Defendants.

ORDER GRANTING IN PART AND DENYING IN PART DEFENDANTS’ MOTION 

TO DISMISS FOR LACK OF PERSONAL JURISDICTION AND IMPROPER VENUE

In this trademark infringement dispute, Plaintiff Floyd’s 99 Holdings, LLC

(“Plaintiff” or “Floyd’s”) brings claims under the Lanham Act, 15 U.S.C. § 1125, and

the Trademark Act of 1946, 15 U.S.C. § 1114, as well as common law claims of unfair

competition and trademark infringement. (Doc. # 1 at 6-7.) The matter currently before

the Court is Defendants’ Motion to Dismiss for Lack of Personal Jurisdiction and

Improper Venue. (Doc. # 24.) 

I. BACKGROUND

A. INTRODUCTION

Floyd’s is a limited liability company and owner and franchisor of barbershops,

with its principal place of business in Colorado. (Doc. # 1, ¶¶ 1, 5.) It utilizes federally

registered trademarks, including a trademark of its unique interior design – also known

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 “Trade dress” refers to a product's “overall image and appearance, and may include features such as

size, shape, color or color combinations, texture, graphics, and even particular sales techniques.” Sally

Beauty Co., Inc. v. Beautyco, Inc., 304 F.3d 964, 977 (10th Cir. 2002). Here, Plaintiff’s registered Trade

Dress includes “vapor lock lights in metal cages, pendant lighting with exposed bulbs, mechanic’s

toolboxes, stainless steel countertops with cut-ins and cut-outs, a vertical wall sign, and a display wall

for displaying music themed posters.” (Doc. # 1, ¶ 26.) 

2

 Plaintiff alleges in its Complaint that Martin is Defendants’ “agent” (Doc. # 1, ¶ 2), and

Martin’s affidavit indicates that he is the President of Jude’s Barbershops (Doc. # 29-1, ¶ 2). 

3

 There is evidence that Defendants utilized Plaintiff’s Trade Dress in other ways, such as in the interior

design of Defendants’ stores. For purposes of this Order, because the Court draws all reasonable

inferences in Plaintiff’s favor, the Court assumes, but does not decide, that Defendants committed actions

that could plausibly constitute trademark infringement. (See Doc. # 1, ¶¶ 32-34; Doc. # 1-2; Doc. # 1-3.)

2

as its “trade dress”1 (“Trade Dress”). (Doc. # 28, ¶¶ 1, 3, 5; Doc. # 1-1.) Plaintiff’s

trademark for its Trade Dress was filed on October 28, 2005, and the United States

Patent and Trademark Office issued the registration of the Trade Dress on July 15,

2008. (Doc. # 28, ¶ 5; Doc. # 1-1 at 2.) Sometime in 2005, Defendant Thomas Martin

traveled to Colorado and entered one of Plaintiff’s barbershops.2

 (Doc. # 28, ¶¶ 6-7.) 

Martin was photographed sitting in a barbershop chair, and the photograph (“the

Photograph”) also captured some aspects of Plaintiff’s Trade Dress. (Id.; Doc. # 1-2.) 

Thereafter, Martin returned to Michigan where, over time, Defendants opened at least

23 “Jude’s Barbershops.” (Doc. # 28, ¶ 8.) Additionally, Defendants used the

Photograph in one of their advertisements.3

 (Doc. # 1-2.) 

On September 29, 2005, Plaintiff sent a written demand that Defendants cease

and desist their allegedly wrongful use of Plaintiff’s Trade Dress and informed

Defendants of Plaintiff’s intent to expand nationwide. (Id, ¶ 13.) On August 3, 2006,

Plaintiff notified Defendants of its intent to enter the Michigan market specifically, and

on October 2, 2011, Plaintiff entered into a franchise agreement, under which a

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 Plaintiff’s Complaint alleges, in part, that the Court has jurisdiction because “Defendants transacted

business in Colorado.” (Doc. #1 at ¶ 23.) However, Plaintiff did not further substantiate this allegation. 

Additionally, Plaintiff’s Brief in Opposition to Defendants’ Motion to Dismiss (Doc. # 28), and Plaintiff’s

Supplemental Brief in Opposition to Motion to Dismiss (Doc. # 47), are limited to Defendants’ alleged

tortious acts as grounds for jurisdiction. Moreover, no evidence provided elsewhere, such as in the

affidavits submitted to the Court, contradict Defendants’ assertion that they have never conducted

business in Colorado. Accordingly, the Court does not accept Plaintiff’s allegations regarding Defendants having transacted business in Colorado.

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franchisor would be able to eventually operate a Floyd’s barbershop in Michigan. (Id, 

¶¶ 14-15.) 

B. ADDITIONAL JURISDICTIONAL FACTS

Defendant Martin is a resident of the state of Michigan, and the Defendant limited

liability companies and corporations are registered or incorporated in, and have their

principal place of business in, Michigan. (Doc. #1, ¶¶ 6-19.) Defendants have never

provided any services, sold any products, nor conducted any business in the state of

Colorado.4 (Doc. # 24 at 6; Doc. # 24-1, ¶¶ 6-9.) However, Plaintiff alleges that two

somewhat related contacts with the state of Colorado suffice to confer personal

jurisdiction over Defendants in this case: (1) the Defendants’ injury and damage to

Plaintiff in Colorado, resulting from Defendants’ purported infringement of Plaintiff’s

Trade Dress in the interior design of Defendants’ barbershops; and (2) Martin’s taking,

and subsequent use, of the Photograph of Plaintiff’s Trade Dress. (Doc. # 28 at 10.) 

II. ANALYSIS

A. STANDARD OF REVIEW: RULE 12(b)(2) MOTION TO DISMISS

Plaintiff bears the burden of establishing the Court's personal jurisdiction over

Defendants. Dudnikov v. Chalk & Vermilion Fine Arts, Inc., 514 F.3d 1063, 1070 (10th

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Cir. 2008) (citation omitted). Because this case is in the preliminary stages of litigation,

that burden is less stringent that it otherwise would be. Wenz v. Memery Crystal, 55

F.3d 1503, 1505 (10th Cir. 1995). Where, as here, a district court considers a pre-trial

motion to dismiss for lack of personal jurisdiction, the plaintiff need only make a prima

facie showing of personal jurisdiction. AST Sports Sci., Inc. v. CLF Distrib. Ltd., 514

F.3d 1054, 1056–57 (10th Cir. 2008). The plaintiff may make such a showing by

demonstrating, via affidavits or other written materials, facts that if true would support

jurisdiction over the defendant. Id. 

In resolving this motion, the Court accepts as true all well-pled facts – i.e., facts

that are neither conclusory nor speculative – alleged in Plaintiff's complaint. Dudnikov,

514 F.3d at 1070. Additionally, Plaintiff has “the duty to support jurisdictional allegations

in a complaint by competent proof of the supporting facts if the jurisdictional allegations

are challenged by an appropriate pleading.” Pytlik v. Prof’l Res., Ltd., 887 F.2d 1371,

1376 (10th Cir. 1989). The parties have each submitted supporting affidavits. If the

parties' affidavits conflict, the conflicts “must be resolved in the plaintiff's favor, and the

plaintiff's prima facie showing is sufficient notwithstanding the contrary presentation by

the moving party.” Wenz, 55 F.3d at 1505 (internal quotation marks and citation

omitted).

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B. WHETHER THE COURT HAS JURISDICTION OVER DEFENDANTS

1. Legal Standard: Threshold “Minimum Contacts” Analysis

Colorado’s long-arm statute confers jurisdiction, in relevant part, over “any cause

of action arising from . . . [t]he commission of a tortious act within this state.” Colo. Rev.

Stat. § 13-1-124(1)(b). Additionally, “tortious conduct in a foreign state which causes

injury in Colorado may be deemed to be an act committed in Colorado so as to satisfy

the long-arm statute.” D & D Fuller CATV Const., Inc. v. Pace, 780 P.2d 520, 524

(Colo. 1989). To obtain personal jurisdiction over a nonresident defendant in a diversity

action, a plaintiff must show (1) that jurisdiction is legitimate under the laws of the forum

state, and (2) that the exercise of jurisdiction does not offend the Due Process Clause. 

Soma Med. Int'l v. Standard Chartered Bank, 196 F.3d 1292, 1295 (10th Cir. 1999)

(citation omitted). In Colorado, this two-pronged inquiry essentially collapses into one

inquiry, because “Colorado's long arm statute is coextensive with constitutional

limitations imposed by the due process clause.” Grynberg v. Ivanhoe Energy, Inc., 666

F. Supp. 2d 1218, 1229 (D. Colo. 2009) (internal quotation marks and citation omitted). 

Thus, “‘if jurisdiction is consistent with the due process clause, Colorado's long arm

statute authorizes jurisdiction over a nonresident defendant.’” Id. (quoting Benton v.

Cameco Corp., 375 F.3d 1070, 1075 (10th Cir. 2004)); see also Archangel Diamond

Corp. v. Lukoil, 123 P.3d 1187, 1193 (Colo. 2005) (same). Therefore, the Court asks

whether the exercise of personal jurisdiction over Defendants comports with due

process.

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 Because the Court determines that Plaintiff has not made its prima facie showing under step one (i.e.,

it cannot demonstrate that Defendants had sufficient minimum contacts with the forum state), the Court

need not analyze the “fair play and substantial justice” factors involved in the second step. 

6

 The Court need not discuss whether there was “general” personal jurisdiction because the Plaintiff has

not alleged that Defendants had “continuous and systematic contacts” with Colorado sufficient to permit

the Court to exercise such jurisdiction. See Beverly Kuenzle, Wayne Kuenzle v. HTM Sport-Und

Freizeitgerate AG, 102 F.3d 453, 455-56 (10th Cir. 1996); see also Dudnikov, 514 F.3d at 1078-79

(discussing the distinction between general and specific personal jurisdiction). Defendants’ limited

contacts with Colorado are, indeed, insufficient to confer general jurisdiction. 

6

This is a two-step inquiry. First, the Court examines “whether the non-resident

defendant has ‘minimum contacts' with the forum state.” Melea, Ltd. v. Jawer SA, 511

F.3d 1060, 1065 (10th Cir. 2007) (quoting TH Agriculture & Nutrition, LLC v. Ace

European Grp. Ltd., 488 F.3d 1282, 1287 (10th Cir. 2007)). Second, the Court

considers “whether the court's exercise of jurisdiction over the defendant offends

‘traditional notions of fair play and substantial justice,’ that is, whether the exercise of

jurisdiction is ‘reasonable’ under the circumstances.” Id.5

To have sufficient minimum contacts for “specific” personal jurisdiction,6 the outof-state defendant must have (i) purposefully directed activities at forum residents, and

(ii) the litigation must result from alleged injuries that arise out of those forum-related

activities. Dudnikov, 514 F.3d at 1071 (citing Burger King Corp. v. Rudzewicz, 471 U.S.

462, 472 (1985)); see also Found. for Knowledge in Dev. v. Interactive Design, 234

P.3d 673, 678 (Colo. 2010). The touchstone of the minimum contacts analysis is

“whether ‘the defendant's conduct and connection with the forum State are such that he

should reasonably anticipate being haled into court there.’” Olsen v. Mapes, 139 Fed.

Appx. 54, 57 (10th Cir. 2005) (unpublished) (quoting World-Wide Volkswagen Corp. v.

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Woodson, 444 U.S. 286, 297 (1980)). The aim of the “‘purposeful direction’ doctrine has

been said by the Supreme Court to [be to] ensure that an out-of-state defendant is not

bound to appear to account for merely ‘random, fortuitous, or attenuated contacts' with

the forum state.” Dudnikov, 514 F.3d at 1071 (quoting Burger King, 471 U.S. at 475). 

Additionally, “the question of whether a non-resident defendant has the requisite

minimum contacts with the forum state to establish in personam jurisdiction must be

decided on the particular facts of each case.” Benton v. Cameco Corp., 375 F.3d 1070,

1076 (10th Cir. 2004).

In Calder v. Jones, 465 U.S. 783, 789-90 (1984), the Supreme Court articulated

what is now known as the “Calder effects test.” The Court held that, where a defendant

intentionally engages in tortious actions outside the forum state, and her actions are

expressly directed at causing a harmful effect within that state, a sufficient nexus exists

between the defendant and the state so as to satisfy due process and constitute

“purposeful direction” under the “minimum contacts” analysis. Id.; see also D & D

Fuller, 780 P.2d at 524 (describing and applying the Calder test). The Tenth Circuit has

refined the Calder test to three elements, explaining that a defendant has “purposefully

directed” its activities at Colorado or its residents when the defendant has (1) taken

intentional tortious action, (2) that was expressly aimed at Colorado, (3) with the

knowledge that the brunt of the injury from the action would be felt in Colorado. 

Dudnikov, 514 F.3d at 1071; see also Impact Prods, 341 F. Supp. 2d at 1190 (same). 

Further, the Tenth Circuit has taken a relatively “restrictive” approach when analyzing

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whether a defendant expressly aimed his activities at the forum state, explaining that

the “express aiming” requirement looks at “where was the ‘focal point’” of the

defendant’s intentional action, and has held that “the forum state itself must be the ‘focal

point of the tort,’” Dudnikov, 514 F.3d at 1075 & n.9 (quoting Far W. Capital, Inc. v.

Towne, 46 F.3d 1071, 1080 (10th Cir. 1995)). 

Indeed, the mere fact that an out-of-state defendant has committed a business

tort that causes economic injury to a forum resident does not necessarily establish that

the defendant engaged in the constitutionally required minimum contacts with the forum

state. Far W. Capital, 46 F.3d at 1077-80. Instead, the plaintiff must show that there

was “something more” by way of “minimum contacts” than the mere foreseeability of

economic injury; “[t]hat ‘something more’ is the requirement that the defendant have

‘expressly aimed’ his activities at the forum state such that the forum is the ‘focal point’

of the tort and the injury.” Allison v. Wise, 621 F. Supp. 2d 1114, 1120 (D. Colo. 2007)

(citing Far W. Capital, 46 F.3d at 1078); see also Impact Prods., 341 F. Supp. 2d at

1191 (same); Dudnikov, 514 F.3d at 1077 (same); Regional Airline Mgt. Sys., Inc. v.

Airports USA, Inc., No. 06-cv-01758, 2007 WL 1059012, at *5 (D. Colo. Apr. 4, 2007)

(unpublished) (same). The Tenth Circuit has cautioned that “those courts finding

personal jurisdiction based upon an intentional tort analysis have not created a per se

rule that an allegation of an intentional tort creates personal jurisdiction. Instead, they

have emphasized that the defendant had additional contacts with the forum.” Far W.

Capital, 46 F.3d at 1078; see also Impact Prods., Inc., 341 F. Supp. 2d at 1191 (quoting

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 As previously indicated, for the purposes of this Order, the Court accepts as true all well-pled facts in

Plaintiff's complaint. Dudnikov, 514 F.3d at 1070. Accordingly, the Court assumes, but does not decide,

that the Defendants acted intentionally, and that they committed trademark infringement, because the

Plaintiff has adequately alleged facts that could plausibly establish such liability. Specifically, Plaintiff

alleges that Martin intended to copy and use “Floyd’s 99’s Trade Dress with the intent of copying same

and using Floyd’s 99’s Trade Dress to develop Defendants’ barbershops and in so doing, confuse and

deceive consumers”; that Defendants used the Photograph of Plaintiff’s store in an advertisement for its

own stores; and that Defendants’ barbershops had a very similar interior design to that of Plaintiff’s Trade

Dress. (Doc. # 1, ¶¶ 30-34; Doc. # 1-2; Doc. # 1-3; Doc. # 28, ¶¶ 6-10.) 

9

IMO Indus., Inc. v. KiekertAG, 155 F.3d 254, 265 (3d Cir. 1998) (“Calder did not carve

out a special intentional tort exception to the traditional jurisdiction analysis, so that

a plaintiff could always sue in his or her home state.”)).

2. Plaintiff Cannot Establish that Defendants “Purposefully Directed” Their

Conduct at the State of Colorado

Plaintiff has failed to allege facts that Defendants had such substantive,

intentional, and/or purposeful contacts with the State of Colorado that the Court's

exercise of personal jurisdiction would meet the minimum contacts requirements of the

Due Process Clause; therefore, Plaintiff fails to present a prima facie case for personal

jurisdiction. Defendants’ two alleged contacts with the state – Defendants’ acts of

alleged trademark infringement, and Martin’s taking of the Photograph – are addressed,

in turn, below.

a) Defendants’ Alleged Trademark Infringement7

Trademark infringement is considered an economic tort for the purposes of

Colorado’s long-arm statute. Nestle Prepared Foods Co. v. Pocket Foods Corp.,

No. 04-cv-02533, 2007 WL 1058550, at *3 (D. Colo. Apr. 5, 2007) (unpublished). 

Plaintiff has adequately alleged that Defendants took intentionally tortious action and

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 Plaintiff’s Complaint and Brief in Opposition to Defendants’ Motion to Dismiss also state that

Defendants “expressly aimed” conduct at the State of Colorado by taking the Photograph in

Colorado “in order to misappropriate the Trade Dress and use it for Defendants’ financial gain.” 

(Doc. #1, ¶¶ 30-31; Doc. # 28 at 10). This argument is discussed, and ultimately rejected,

below.

10

engaged in trademark infringement, and that Defendants did so with the knowledge that

the brunt of the injury would be felt in Colorado. See Dudnikov, 514 F.3d at 107. (Doc.

# 1, ¶¶ 30, 32-34; Doc. # 1-2; Doc. # 1-3; Doc. # 28, ¶¶ 6-10.) However, Plaintiff has

not met its burden to support its Complaint with “competent proof of the supporting

[jurisdictional] facts,” Pytlik, 887 F.2d at 1376, because Plaintiff does not include any

well-pled facts that Defendants’ actions in committing the tort of trademark infringement

were – as is required under the Calder effects test – “expressly aimed” at Colorado, see

Dudnikov, 514 F.3d at 1071. (See generally Doc. # 28, ¶¶ 1-17.) Rather, Plaintiff’s

Complaint alleges only that “Defendants engaged in such intentional infringement of

Floyd’s 99’s Trade Dress with knowledge that it would cause injury to Floyd’s 99 in

Colorado.”8

 (Doc. # 1, ¶ 33).

However, the out-of-state commission of trademark infringement alone – even

with knowledge that the infringement would cause economic injury in Colorado – falls

well short of contact “expressly aimed” at the state. “[T]hat [defendant] may have

infringed on [plaintiff’s] mark outside of Colorado, and did so knowing that [plaintiff]

was a Colorado resident and that this infringement would have effects in Colorado, is

not sufficient to demonstrate ‘express aiming’ at this forum.” Impact Prods., Inc., 341

F. Supp. 2d at 1191; see also Reg'l Airline Mgmt. Sys., Inc., 2007 WL 1059012, at *5

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(same); Burger King, 471 U.S. at 474 (holding mere foreseeability of non-forum resident

causing injury in forum state not sufficient for exercise of personal jurisdiction); Allison,

621 F. Supp. 2d at 1121 (“[T]he . . . [c]omplaint evidences nothing more than that the

economic impact of [defendant’s] alleged copyright infringement is felt by plaintiff here

in Colorado. Such a circumstance is based on the mere fortuity that plaintiff happens to

reside here, and is patently insufficient to permit the assumption of personal jurisdiction

over [defendant] in this forum.”); Nat'l Bus. Brokers, Ltd. v. Jim Williamson Prods., Inc.,

115 F. Supp. 2d 1250, 1255 (D. Colo. 2000) (holding that loss of profits sustained by

Colorado resident as a result of tortious conduct of nonresident in another state did not

constitute injury so as to subject nonresident to jurisdiction under the long-arm statute),

aff'd, 16 Fed. Appx. 959, 2001 WL 912796 (10th Cir. 2001) (unpublished); GCI 1985-1

Ltd. v. Murray Properties P'ship, 770 F. Supp. 585, 590 (D. Colo. 1991) (dismissing

claims against a nonresident defendant for lack of personal jurisdiction where the

alleged loss of anticipated profits injured the plaintiff in Colorado “only as a result of the

fortuitous circumstance that [the plaintiff] maintained its headquarters in Colorado”);

Amax Potash Corp. v. Trans-Resources, Inc., 817 P.2d 598, 600 (Colo. App. 1991)

(“when both the tortious conduct and the injury occur in another state, the fact that

plaintiff resides in Colorado and experiences some economic consequences here is

insufficient to confer jurisdiction on a Colorado court”) (citing McAvoy v. Dist. Court, 757

P.2d 633 (Colo. 1988)); Gognat v. Ellsworth, 224 P.3d 1039, 1053 (Colo. App. 2009)

(same).

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Instead, as already mentioned, Plaintiff must allege “something more” than mere

foreseeable economic injury in the forum state to demonstrate that Defendants had

sufficient minimum contacts, and that “something more” must be that Defendants

“undertook intentional actions that were expressly aimed” at Colorado, such that the

forum state was the “focal point” of Defendants’ actions. Dudnikov, 514 F.3d at 1077;

see also Reg'l Airline Mgmt. Sys., 2007 WL 1059012, at *5 (“Plaintiff “must present

‘something more’ than the injuries [he] allegedly suffered as a result of the out-of-forum

infringement.”) Here, the only other alleged contact with Colorado that could constitute

“something more” was Defendant Martin’s visit to one of Plaintiff’s barbershops and his

taking the Photograph of himself in a barbershop chair.

b) The Defendants’ Photograph

Taking a photograph in a public business on a single occasion does not

constitute sufficient “minimum contacts” with the State of Colorado to allow this Court

to exercise personal jurisdiction over the photographer. First, for sufficient minimum

contacts to exist, (i) Defendants must have purposefully directed activities at forum

residents and (ii) the litigation must result from alleged injuries that arise out of those

activities. Dudnikov, 514 F.3d at 1071. As explained above, in order to establish

“purposeful direction” under the Calder test, Plaintiff must show that Defendants’ actions

(in committing the alleged tort) were “expressly aimed at the forum state,” and that the

state was the “focal point” of the actions. Id. at 1075, 1077. The Photograph may

arguably meet the second part of the minimum contacts test, insofar as Plaintiff pleads

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 The Tenth Circuit has not yet decided whether “but-for” or “proximate” causation should

be the standard guiding the “arising out of” inquiry. Dudnikov, 514 F.3d at 1079; see also

Employers Mut. Cas. Co. v. Bartile Roofs, Inc., 618 F.3d 1153, 1161 (10th Cir. 2010) (“Although

we have rejected the substantial-connection approach outright, we have not expressly “pick[ed]

sides” (i.e., exclusively made an election) between the proximate-cause and the but-forcausation approaches.”) Here, the Photograph would appear to satisfy “but-for” causation,

as it was arguably an “event in the causal chain leading to the plaintiff's injury.” Dudnikov, 514

F.3d at 1078. But whether it was a “proximate cause,” which is significantly more restrictive and

“examine[s] whether any of the defendant's contacts with the forum are relevant to the merits of

the plaintiff's claim,” id., is a closer question. In any event, because Plaintiff fails to adequately

allege that the Photograph was “expressly aimed” at the forum, this issue is rendered nondispositive.

13

facts indicating that the injury of Defendants’ alleged trademark infringement “arose

out of,” at least in part, Defendants’ actions in taking the Photograph (because the

Photograph was used in an advertisement and served as a kind of “blueprint” for

copying Plaintiff’s Trade Dress).9 However, Plaintiff cannot meet the first part of that

test – that is, it cannot show the act of taking the Photograph was “purposefully

directed” (and, accordingly, “expressly aimed”) at forum residents. For example,

Plaintiff alleges no facts indicating that the advertisement in which the Photograph

appeared was circulated in Colorado, or that Jude’s existence (through the Photograph

or the advertisement) was known to Colorado residents. See Allison, 621 F. Supp. 2d

at 1120-21 (internal citation omitted) (finding no “express aiming” or “purposeful

direction,” because there were no allegations that defendant’s website “announce[d] the

fact that plaintiff is located in or in any way connected to Colorado. The mere fact that

plaintiff holds copyright registrations in the website is not sufficient to support the

conclusion that [defendant] purposefully directed his activities to this forum.”) Indeed,

after Martin took the Photograph, no later contact was made between Defendants, the

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Photograph, and the State of Colorado. Put differently, if the State of Colorado was the

“target,” Defendants’ action in taking the Photograph did not hit the target – much less

the “focal point” of it. See Dudnikov, 514 F.3d at 1077. 

The instant case is similar to Schwarzenegger v. Fred Martin Motor Co., 374

F.3d 797 (9th Cir. 2004), cited with approval in Impact Prods., 341 F. Supp. 2d at

1190, in which an Ohio car dealer used Arnold Schwarzenegger’s photograph in an

advertisement without permission. Schwarzenegger sued in California, and the Ninth

Circuit declined to find personal jurisdiction, because: 

The [defendant’s] intentional act – the creation and publication of the

Advertisement [using a copyrighted photograph] – was expressly aimed

at Ohio rather than California. The purpose of the Advertisement was to

entice Ohioans to buy or lease cars from [defendant] . . . . The Advertisement was never circulated in California, and [defendant] had no reason to

believe that any Californians would see it and pay a visit to the dealership

. . . . It may be true that [defendant’s] intentional act eventually caused

harm to Schwarzenegger in California, and [defendant] may have known

that Schwarzenegger lived in California. But this does not confer

jurisdiction, for [defendant’s] express aim was local. We therefore

conclude that the Advertisement was not expressly aimed at California.

Id. at 807. Here, too, Defendants’ aim – in building and running barbershops in

Michigan (for Michigan customers), and advertising in Michigan (for Michigan residents)

– was purely local. Defendants were not reaching back into Colorado in any meaningful

way. Compare Miller Yacht Sales, Inc. v. Smith, 384 F.3d 93, 97 (3d Cir. 2004)

(Defendant’s advertisements using photographs without permission appeared “in

boating magazines circulated in New Jersey and in at least one brochure that was sent

directly to a potential customer in New Jersey. Intentionally and directly transmitting the

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10 Plaintiff does not cite, nor is the Court aware of, any cases showing that the taking of a

photograph in a place of business constitutes a tort. “Although our Supreme Court has said that

the term, ‘tortious act,’ is to be liberally construed [under the long-arm statute] to carry out the

intent of the legislature, it cannot be so liberally construed as to create a tort.” In re People in

Interest of D. R. B., 30 Colo. App. 603, 606 (1972). However, Plaintiff cites two cases in support

of the proposition that taking the Photograph was a wrongful act that could subject Defendants

to personal jurisdiction. First, Plaintiff points to Ultra-Images LLC v. Franclemont, No. 05-

60538, 2007 WL 81832, at *5 (S.D. Fla. Jan 8, 2007) (unpublished), but that case is distinguishable on two grounds: (1) it involved an already-existent, copyrighted photograph that

was taken from the forum state and used without permission whereas, here, Martin was taking

his own (obviously uncopyrighted) photograph; and (2) the defendant in Ultra-Images was

essentially conducting business in the forum state: the court noted that “[d]efendants availed

themselves of the privilege of conducting activities – purchasing photographs from a Florida

photographer – within Florida. By hiring a Florida resident to buy photographs sold in Florida for

[d]efendants' use, it is entirely reasonable to conclude that [d]efendants should have anticipated

being haled into a Florida court.” Id. Defendants here conducted no such business activity. 

Plaintiff also relies on Miller Yacht Sales, Inc., 384 F.3d at 97. While one of the contacts

in that case is similar to Miller’s photograph here – the defendants in Miller Yacht took a

plaintiff’s brochure and floorplans out of the forum state and used them in one of their own

advertisements – the Third Circuit emphasized that the defendant’s advertisements appeared

“in boating magazines circulated in New Jersey and in at least one brochure that was sent

directly to a potential customer in New Jersey. Intentionally and directly transmitting the

misappropriated property that [a]ppellees initially obtained in New Jersey back into New Jersey

is a very strong contact between them and the State.” Id. By contrast, in this case there are no

allegations that the advertisement using the Photograph was circulated in Colorado or sent to

any customers in Colorado. 

15

misappropriated property that Appellees initially obtained in New Jersey back into

New Jersey is a very strong contact between them and the State.”)

Further, taking a photograph of a public business is not, itself, tortious.10 Instead,

Defendants had to take significant additional action – including actually constructing

Jude’s Barbershops – before Plaintiff, in Colorado, could have been injured in tort. 

Trademark infringement actions turn on whether customers are likely to be confused,

mistaken, or deceived by the use of a trademarked product. 15 U.S.C. §§ 1114(1);

1125(a)-(b). Any alleged confusion, mistake, or deception could not have occurred

when Martin took the Photograph; rather, they could only have occurred later, in

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Michigan, because Defendants decided to use the Photograph later, in Michigan, to

inform its own barbershop’s designs and advertisements. See Vandermee v. Dist.

Court, 164 Colo. 117, 122 (1967) (holding that an event does not become a “tortious

act” until it causes injury or damage within the forum regardless of where the event took

place); Wenz v. Memery Crystal, 55 F.3d 1503, 1507 (10th Cir. 1995) (holding that there

was no jurisdiction in part because “the alleged wrongful conduct – the tortious disbursal

[of the Colorado plaintiff’s account] – occurred in London, not Colorado. Therefore, we

conclude that [plaintiff] has failed to allege that the defendants engaged in any tortious

conduct in Colorado.”).

Lastly, that the Photograph was taken in Colorado – the same state where

Plaintiff’s principal place of business is located – was merely fortuitous, Dudnikov, 514

F.3d at 1071 (quoting Burger King, 471 U.S. at 475), the kind of “contact” that the

“minimum contacts” test is supposed to guard against. The Photograph very well could

have been taken in any of the ten other states where Floyd’s franchises are located

(Doc. # 1, ¶ 1), or from the Plaintiff’s website in another state, which indicates that

where the Photograph was taken is primarily a matter of happenstance. See GCI 1985-

1 LTD., 770 F. Supp. at 589-90 (holding that where plaintiff alleged economic injury

resulting from defendant's tortious conduct in North Carolina, court held that “the lost

revenue . . . injured GCI in Colorado only as a result of the fortuitous circumstance that

GCI maintained its headquarters in Colorado,” and concluded personal jurisdiction in

Colorado was not proper).

Case 1:11-cv-02688-CMA-BNB Document 65 Filed 09/28/12 USDC Colorado Page 16 of 18
11 Because the Court concludes that it lacks jurisdiction over this matter, it need not analyze

whether the state of Colorado would represent a proper venue and, accordingly, denies that

portion of Defendants’ motion as moot. 

17

For the reasons provided above, the Court finds that Defendants have not had

adequate “minimum contacts” with the state of Colorado for the exercise of in personam

jurisdiction to be proper here.11

Finally, the Court considers whether venue transfer would be appropriate. The

federal transfer statute, 28 U.S.C. § 1631, provides that if a federal court determines

that it lacks jurisdiction over a civil action, “the court shall, if it is in the interest of justice,

transfer such action or appeal to any other such court in which the action or appeal

could have been brought at the time it was filed or noticed.” 28 U.S.C. § 1631; see also

In re Cline, 531 F.3d 1249, 1251 (10th Cir. 2008). Even though “§ 1631 contain[s] the

word ‘shall,’ . . . the phrase ‘if it is in the interest of justice’ . . . grant[s] the [transferor]

court discretion in making a decision to transfer an action or instead to dismiss the

action without prejudice.” Cline, 531 F.3d at 1251 (first alteration in original). Factors

relevant to the interest-of-justice determination include “whether the claims would be

time barred if filed anew in the proper forum, whether the claims alleged are likely to

have merit, and whether the claims were filed in good faith or if . . . it was clear at the

time of filing that the court lacked the requisite jurisdiction.” Id. Plaintiff did not request

transfer in the event of dismissal due to lack of jurisdiction, and the current record

discloses no reason to believe that the case would now be time-barred if Plaintiff refilled

it in Michigan. See Doc. # 28 at 15 (discussing how Plaintiff’s claims are not timebarred, and alleging that they arose as of October 11, 2011); see also Ford Motor Co.

Case 1:11-cv-02688-CMA-BNB Document 65 Filed 09/28/12 USDC Colorado Page 17 of 18
18

v. Catalanotte, 342 F.3d 543, 550 (6th Cir. 2003) (internal quotation omitted) (The

“Lanham Act does not contain a statute of limitations. In determining when a plaintiff's

suit should be barred under the Act, courts have consistently used principles of laches

as developed by courts of equity.”) Accordingly, the Court declines to exercise its

discretion to transfer the case.

III. CONCLUSION

For the foregoing reasons, it is ORDERED that Defendants’ Motion to Dismiss for

Lack of Jurisdiction and Improper Venue be GRANTED in part as to the lack of personal

jurisdiction, DENIED AS MOOT IN PART as to whether Colorado would be a proper

venue, and DENIED in part as to Defendants’ request to transfer venue. It is

FURTHER ORDERED that the remaining motions pending in this case are

DENIED AS MOOT. It is

FURTHER ORDERED that, although each party shall bear its own attorneys’

fees, Defendants shall have their costs by the filing of a Bill of Costs with the Clerk of

the Court within fourteen days of the entry of judgment. It is

FURTHER ORDERED that this case be DISMISSED WITHOUT PREJUDICE. 

DATED: September 28 , 2012

BY THE COURT:

______________________________

CHRISTINE M. ARGUELLO

United States District Judge

Case 1:11-cv-02688-CMA-BNB Document 65 Filed 09/28/12 USDC Colorado Page 18 of 18