United States Court of Appeals,

Fifth Circuit.

No. 93-2253

Summary Calendar.

Bill HAM d/b/a Hamstein Music Company, Plaintiff-Appellant,

v.

LA CIENEGA MUSIC COMPANY, et al., Defendants-Appellees.

Oct. 19, 1993.

Appeal from the United States District Court for the Southern District of Texas.

Before POLITZ, Chief Judge, HIGGINBOTHAM and DeMOSS, Circuit Judges.

POLITZ, Chief Judge:

Bill Ham appeals the dismissal for lack of personal jurisdiction of his copyright declaratory

judgment action against Bernard Besman and Besman's company, La Cienega Music. We affirm.

Background

In 1948 and 1950 Besman and John Lee Hooker wrote a song entitled "Boogie Chillen" and

a derivative work entitled "Boogie Chillen No. 2." In 1970, Hooker recorded and released a second

derivative with the musical group Canned Heat. Besman registered the three works with the United

States Copyright Office and, through La Cienega, holds the copyrights. In 1973 Billy Gibbons, Joe

Hill, and Frank Beard—popularly known as the rock band ZZ Top—authored a song entitled "La

Grange" and registered it as an unpublished work. That song appeared on ZZ Top's 1973 hit album

"Tres Hombres." Ham, doing business as Hamstein Music Company, acquired the rights to "La

Grange" in 1973.

On July 8, 1991, Besman wrote Ham claiming that "La Grange" infringed the copyrights on

"Boogie Chillen" and its derivatives. Ham denied any infringement and, alternatively, asserted various

defenses. After an exchange of conflicting expert musicology reports, on April 27, 1992 Ham filed1 On June 10, 1992 Besman filed suit against Ham in federal court in California asserting an

identical claim. After denying Ham's motion to transfer that action to Texas, that court dismissed

the complaint for failure to state a claim upon which relief could be granted. That ruling is

pending appeal before the Ninth Circuit Court of Appeals.

2 BMI operates as a non-profit performing rights society, obtaining exclusive public

performance rights to songs and, in turn, licensing them on a non-exclusive basis to radio stations

and other users throughout the United States. Each use of a work from the BMI catalog

generates a royalty, which BMI passes on to the copyright owner, net of expenses.

3 E.g., Bullion v. Gillespie, 895 F.2d 213 (5th Cir.1990).

4 Irving v. Ow ens-Corning Fiberglas Corp., 864 F.2d 383 (5th Cir.), cert. denied sub nom.

Jugometal Enterprise for Import and Export of Ores and Metals v. Irving, 493 U.S. 823, 110

S.Ct. 83, 107 L.Ed.2d 49 (1989).

5 E.g., Fed.R.Civ.P. 4(e), (f); Aviles v. Kunkle, 978 F.2d 201 (5th Cir.1992).

6 Tex.Civ.Prac. & Rem. Code §§ 17.041-045. the instant declaratory judgment action. 1 Besman moved to dismiss for lack of personal jurisdiction.

In support of jurisdiction, Ham pointed to Besman' s exploitation of his rights in "Boogie Chillen"

nationwide, and the exploitation in Texas through an affiliat ion agreement with Broadcast Music, Inc.

(BMI), 2 the sale of recordings, and the mailing of the 1 991 demand letter. Adopting the

recommendatio n of a magistrate judge, the district court granted Besman's motion; Ham timely

appealed.

Analysis

On appeal Ham faults the district court's personal jurisdiction ruling. Absent any dispute as

to the relevant facts, we review such determinations de novo. 3 Plaint iffs typically carry the burden

of proof on personal jurisdiction by making a prima facie showing. The district court usually resolves

the jurisdictional issue without conducting a hearing. 4

A two-step analysis governs the inquiry into personal jurisdiction over nonresident

defendants. Absent a controlling federal statute regarding service of pro cess, we first determine

whether the long arm statute of the forum state permits exercise of jurisdiction. We then determine

whether such exercise com ports with due process. 5 Because t he Texas Supreme Court has

interpreted the Texas lo ng arm provisions 6 as conferring personal jurisdiction over nonresidents7 E.g., Schlobohm v. Schapiro, 784 S.W.2d 355, 357 (Tex.1990); see also, e.g., CommandAire Corp. v. Ontario Mechanical Sales & Serv., Inc., 963 F.2d 90 (5th Cir.1992).

8 Asahi Metal Indus. v. Superior Court, 480 U.S. 102, 107 S.Ct. 1026, 94 L.Ed.2d 92 (1987);

Burger King Corp. v. Rudzew icz, 471 U.S. 462, 105 S.Ct. 2174, 85 L.Ed.2d 528 (1985);

Command-Aire.

9 E.g., Burger King; World-Wide Volksw agen Corp. v. Woodson, 444 U.S. 286, 100 S.Ct.

559, 62 L.Ed.2d 490 (1980); Command-Aire.

10 Burger King; Dalton v. R & W Marine, Inc., 897 F.2d 1359 (5th Cir.1990). Continuous

and systematic contacts by a defendant with the forum state will support personal jurisdiction

even in an action not arising out of those contacts. Helicopteros Nacionales de Colombia, S.A. v.

Hall, 466 U.S. 408, 104 S.Ct. 1868, 80 L.Ed.2d 404 (1984) ( citing Perkins v. Benguet Consol.

Mining Co., 342 U.S. 437, 72 S.Ct. 413, 96 L.Ed. 485 (1952)); Bearry v. Beech Aircraft Corp.,

818 F.2d 390 (5th Cir.1987). Ham does not suggest that the district court could exercise such

general jurisdiction over Besman and La Cienega.

11 E.g., Irving; Bean Dredging Corp. v. Dredge Technology Corp., 744 F.2d 1081 (5th

Cir.1984); Osw

alt v. Scripto, Inc., 616 F.2d 191 (5th Cir.1980). In Asahi, four justices

suggested that, without additional forum-directed conduct, the sweep of a defendant's product

into a state by the stream of commerce could not alone constitute minimum contacts sufficient to

support personal jurisdiction there. Asahi, 480 U.S. at 108-12, 107 S.Ct. at 1030-32 (O'Connor,

J.) (plurality opinion). Absent rejection by a majority on the Supreme Court, we have continued

to apply the stream of commerce analysis found in our pre- Asahi cases. Irving. whenever consistent with constitutional due process, 7 we need now answer only the latter inquiry.

Due process requires that (1) the defendant have established "minimum contacts " with the forum

state; and (2) the exercise of personal jurisdiction does not offend "traditional notions of fair play and

substantial justice." 8

A defendant has the minimum contacts required by du e process where his purposeful

activities directed at the forum state have invoked the benefits of t hat state's laws, so that he

reasonably could anticipate being hauled into court there. 9 Purposeful forum-directed activity—even

if o nly a single substantial act—may permit the exercise of specific jurisdiction in an action arising

from or related to such ac ts. 10 Ham relies heavily on our cases recognizing that placement of

products into the stream of commerce may satisfy the minimum contacts prong of the due process

analysis. 11 We find those cases distinguishable from the case at bar.

Clearly, through his affiliation agreement with BMI and distribution of recordings, Besman

and La Cienega sought to exploit "Boogie Chillen" and it s derivatives on the broadest possible

geographical basis. Ham presented evidence that these efforts have borne fruit in Texas. Besman's12 Compare Bean (finding defendant amenable to suit in Louisiana where it manufactured

castings in Washington and sold them as component parts to California concern which, in turn,

sold its finished product to Louisiana manufacturer of dredging equipment which injured plaintiff;

defendant did not (1) know purpose for which California company would use castings or that they

would end up in Louisiana, (2) solicit work in Louisiana, (3) negotiate with Louisiana personnel

in Washington, or (4) own property in Louisiana).

13 We might reach a different result in an action asserting "Boogie Chillen" as infringing the

copyright on another work.

14 See Holt Oil & Gas Corp. v. Harvey, 801 F.2d 773 (5th Cir.1986), cert. denied, 481 U.S.

1015, 107 S.Ct. 1892, 95 L.Ed.2d 499 (1987) (communication by defendant with plaintiff in

forum state in course of contract negotiation and performance motivated by fortuity of plaintiff's

location there does not support exercise of specific jurisdiction); Cascade Corp. v. Hiab-Foco

AB, 619 F.2d 36 (9th Cir.1980) (defendant did not, by sending demand letters alleging patent

infringement to defendant in forum state, submit to personal jurisdiction there in declaratory

judgment action).

15 J. Stephen Scherer, Inc. v. Ltee, 845 F.2d 1033 (Fed.Cir.1988) (unpublished opinion, text in

WESTLAW); Publications Int'l, Ltd. v. Simon & Schuster, Inc., 763 F.Supp. 309 (N.D.Ill.1991).

In view of our resolution of the minimum contacts question, we need not determine whether

exercise of personal jurisdiction here would comport with notions of fair play and substantial

justice. act ivit ies connect him to Texas within the meaning of our stream of commerce cases. 1 2 Ham,

however, has demonstrated at best a highly attenuated relationship between the subject matter of the

instant declaratory judgment action and distribution of music in Texas by Besman and La Cienega.

Ham alleges no injury flowing from that distribution. Rather, resolution of this action depends solely

upon whether "La Grange" infringed copyrights owned by Besman and La Cienega. Exploitation of

the "Boogie Chillen" copyrights by the defendants in no way relates to the merits of that question. 13

Likewise, Besman's July 8 letter, although it forms the basis for Ham's allegations about the existence

of a live controversy, in no way relates to the merits of the copyright questi on and thus does not

support personal jurisdiction in Texas. 14 We conclude that the inst ant action does not arise from

contacts of Besman and La Cienega with Texas. Exercise of personal jurisdiction over them in the

instant action would thus offend due process. 15

The judgment of the district court is AFFIRMED.