United States District Court, E.D. Missouri, Eastern Division
KENNETH C. WARREN, Plaintiff,
CARDOZA PUBLISHING COMPANY, et al., Defendants.
MEMORANDUM AND ORDER
L. WHITE UNITED STATES DISTRICT JUDGE
matter is before the Court on Defendants Cardoza Publishing
Company and Avery Cardoza's Motion to Dismiss for Lack of
Personal Jurisdiction and Estoppel (ECF No. 23). The motion
is fully briefed and ready for disposition.
April 22, 2016, Plaintiff filed a Complaint against
Defendants Cardoza Publishing Company ("Cardoza
Publishing") and Avery Cardoza, a/k/a Allan Silberstang
("Cardoza"), raising seven counts related to six
publishing book contracts the parties entered into between
June 1996 and September 2004. (Compl. ¶¶ 1-4, 8,
ECF No. 1) The book contracts granted Defendant Cardoza
Publishing the right to publish, sell, and license books
authored by Plaintiff pertaining to the game of poker.
(Id. at ¶¶ 8-9) The contracts also
provided for royalties to be paid to Plaintiff. (Id.
at ¶ 10) Plaintiff is the registered owner of the
copyright of each book. (Id. at ¶ 14) Plaintiff
contends that his books sold many more copies, both
domestically and in foreign countries, than Defendants
reported. (Id. at ¶ 17) In addition, he alleges
that the books had been translated into other languages and
sold abroad, which Defendants failed to communicate.
(Id. at ¶¶ 18-19) Plaintiff claims that
Defendants have failed to make royalty payments to Plaintiff
for many years and that he terminated the book contracts
based upon Defendants' breach of the contracts.
(Id. at ¶¶21-22) However, Plaintiff
maintains that Defendants have continued to publish and sell
Plaintiffs books, including internet sales since 2010.
(Id. at 23-26)
Cardoza Publishing is a Florida corporation with its
principal place of business in Las Vegas, Nevada.
(Id. at ¶ 2) Cardoza is a resident and citizen
of the State of Nevada. (Id. at ¶ 3) Plaintiff
Kenneth Warren is a resident of St. Charles County, Missouri.
(Id. at ¶ 1)
26, 2010, Plaintiff filed an action in this court against
Defendants based upon the same contracts set forth above
('Warren I'). Ken Warren v. Cardoza
Publishing, Inc., et al, No. 4:10-CV-01353 SNLJ.
Plaintiffs First Amended Complaint in the 2010 law suit
alleged breach of contract, request for an accounting,
declaratory and injunctive relief, unjust enrichment, and
fraud. On December 2, 2011, United States District Judge
Stephen N. Limbaugh, Jr., issued a Memorandum and Order
granting Defendants' Motion to Dismiss Due to Lack of
Personal Jurisdiction and dismissing all of Plaintiff s
claims without prejudice. Warren v. Cardoza Publ'g,
Inc., "No. 4:10-CV-01353 SNLJ, 2011 WL 6010758
(E.D. Mo. Dec. 2, 2011).
February 21, 2012, Plaintiff filed a petition in the Circuit
Court of St. Charles County, Missouri asserting the same
claims contained in the 2010 law suit (Warren II).
(Compl. ¶ 27; Defs.' Ex. L, Kenneth Warren v.
Cardoza Publ'g, et al, No. 1211-CC00182, ECF No.
24-12) Plaintiff voluntarily dismissed the case without
prejudice on April 24, 2015 after the state court heard
argument on Defendants' motion to dismiss for lack of
jurisdiction and ordered Plaintiff file a memorandum in
opposition no later than April 24, 2015. (Defs.' Exs. M
and N, ECF No. 24-14, 24-15)
Complaint now before the Court, which is Plaintiffs third law
suit against Defendants regarding the book contracts
("Warren IIF), alleges Copyright Infringement
(Count I); Breach of Contract (Count II); Request for an
Accounting (Count III); Unjust Enrichment (Count IV); Fraud
(Count V); Declaratory and Injunctive Relief (Count VI); and
Money Had and Received (Count VII). Plaintiff claims that
venue is proper in this Court "because a substantial
part of the events or omissions giving rise to the claims
occurred in this judicial district." (Compl. ¶ 7)
Specifically, Plaintiff contends that Defendant Cardoza
Publishing markets and sells Plaintiff s copyrighted books
through "brick and mortar" retail locations and
through its website and other online outlets and internet
websites. (Id.) Plaintiff further asserts that the
allegedly infringing products are regularly sold within the
Eastern District of Missouri. (Id.)
August 12, 2016, Defendants filed a Motion to Dismiss for
Lack of Personal Jurisdiction and Estoppel based on Judge
Limbaugh's determination that the court lacked personal
jurisdiction over Defendants. Plaintiff filed a response in
opposition, contending that collateral estoppel does not
apply because Plaintiff has raised a new claim, copyright
infringement, and raised new facts regarding brick-and-mortar
sales, internet sales, and direct mail marketing. Thus,
Plaintiff asserts that the Court now has subject matter
jurisdiction over Plaintiffs claims.
survive a motion to dismiss for lack of personal jurisdiction
under Rule 12(b)(2) of the Federal Rules of Civil Procedure,
"a plaintiff must make a prima facie showing of personal
jurisdiction by pleading facts sufficient to support 'a
reasonable inference that the defendant[ ] can be subjected
to jurisdiction within the state.'" Valez v.
Portfolio Recovery Assocs., 881 F.Supp.3d 1075, 1080
(E.D. Mo. 2012) (quoting K-V Pharm. Co. v. J. Uriach
& CIA, S.A., 648 F.3d 588, 591-92 (8th Cir. 2011)
(internal quotation and citations omitted)). Where
'"the district court does not hold a hearing and
instead relies on pleadings and affidavits, . . . the court
must look at the facts in the light most favorable to the
nonmoving party, and resolve all factual conflicts in favor
of that party."' Pangaea, Inc. v. Flying Burrito
LLC, 647 F.3d 741, 745 (8th Cir. 2011) (quoting
Dakota Indus., Inc. v. Dakota Sportswear, Inc., 946
F.2d 1384, 1387 (8th Cir. 1991) (internal citations
omitted)). Id. (citation omitted). "Although
the Court may consider affidavits and other matters outside
the pleadings on a Rule 12(b)(2) motion, the pleader's
burden, in the absence of an evidentiary hearing, is only to
make a 'minimal' prima facie showing of personal
jurisdiction . . . ." Scarpino v. Bodian, No.
4:12CV1458 HEA, 2013 WL 4042216, at *3 (E.D. Mo. Aug. 3,
2013) (citation omitted). The party seeking to establish
personal jurisdiction carries the burden of proof, and that
burden does not shift to the party that challenges
jurisdiction. Fastpath, Inc. v. Arbela Techs. Corp.,
760 F.3d 816, 820 (8th Cir. 2014) (citation omitted).
determine whether personal jurisdiction exists, the forum
state's long-arm statute must be satisfied, and the
exercise of personal jurisdiction must be consistent with due
process. Wells Dairy, Inc. v. Food Movers Int'l,
Inc., 607 F.3d 515, 518 (8th Cir. 2010) (citation
omitted). "Missouri has construed its long-arm statute
to confer jurisdiction to the fullest extent permitted by the
United States Constitution." Helenthal v. Polk,
No. 4:08-CV-1791 CEJ, 2010 WL 546313, at *1 (E.D. Mo. Feb. 9,
2010) (citations omitted). Due process requires that minimum
contacts exist between a nonresident defendant and the forum
states such that the exercise of personal jurisdiction is
consistent with traditional notions of fair play and
substantial justice. Wells Dairy, 607 F.3d at 518
(citations omitted). '"Sufficient contacts exist
when the defendant's conduct and connection with the
forum state are such that [it] should reasonably anticipate
being haled into court there.'" Id.
(quoting Bell Paper Box, Inc. v. U.S. Kids, Inc., 22
F.3d 816, 818 (8th Cir. 1994)). A defendant reasonably
anticipates being haled into the forum state's court
where the defendant performs some act by which it
'"purposefully avails itself of the privilege of
conducting activities within the forum [s]tate, thus invoking
the benefits and protections of its laws.'"
Id. (quoting Bell Paper Box, 22 F.3d at
regard to collateral estoppel, "[d]ismissal of a suit
for lack of federal subject matter jurisdiction precludes
relitigation of the same issue of subject matter jurisdiction
in a second federal suit on the same claim." Oglala
Sioux Tribe of Pine Ridge Indian Reservation v. Homestake
Mining Co.,722 F.2d 1407, 1411 (8th Cir. 1983) (citing
18 C. Wright, A. Miller & E. Cooper, Federal Practice
& Procedure § 4403, at 11). "In order for
collateral estoppel to apply, (1) 'the issues in both
proceedings must be identical'; (2) 'the issue in the
prior proceedings must have been actually litigated and
actually decided'; (3) 'there must have been [a] full
and fair opportunity for .. . litigation in the prior
proceeding'; and (4) 'the issue previously litigated
must have been necessary to support a valid and ...