Impossible Foods Inc. v. Impossible X LLC

80 F.4th 1079

IMPOSSIBLE FOODS INC., Plaintiff-Appellant, v. IMPOSSIBLE X LLC, Defendant-Appellee.

No. 21-16977

United States Court of Appeals, Ninth Circuit

Argued and Submitted December 6, 2022 San Francisco, California

Filed September 12, 2023

Appeal from the United States District Court for the Northern District of California Beth Labson Freeman, District Judge, Presiding, D.C. No. 5:21-cv-02419-BLF

William H. Brewster (argued) and Theodore H. Davis, Jr., Kilpatrick Townsend & Stockton LLP, Atlanta, Georgia; Gia L. Cincone, Kilpatrick Townsend & Stockton LLP, San Francisco, California; for Plaintiff-Appellant.

Thomas M. Johnson, Jr. (argued), David E. Weslow, and Adrienne J. Kosak, Wiley Rein LLP, Washington, D.C.; Kevin K. Eng, Markun Zusman Freniere & Compton LLP, San Francisco, California; for Defendant-Appellee.

Before: Carlos F. Lucero,^* Daniel A. Bress, and Lawrence VanDyke, Circuit Judges.

Opinion by Judge Bress;

Dissent by Judge VanDyke

OPINION

BRESS, Circuit Judge:

We determine whether a California federal court in a trademark declaratory judgment action has personal jurisdiction over a one-person company run by a self-described "digital nomad" who for two years operated his business from San Diego. We hold that Impossible X, the declaratory judgment defendant, is subject to specific personal jurisdiction in California because it previously operated out of California and built its brand and trademarks there. Impossible X's activities in the forum state are sufficiently affiliated with the underlying trademark dispute to satisfy the requirements of due process. We reverse the district court's dismissal of the plaintiff's complaint.

I

A

Declaratory judgment plaintiff Impossible Foods, a Delaware corporation, manufactures and markets plant-based meat substitutes. This includes the "Impossible Burger," which is sold in grocery stores and restaurants nationwide. Impossible Foods' principal place of business is in Redwood City, California. Declaratory judgment defendant Impossible X, now a Texas LLC, sells apparel, nutritional supplements, diet guides, exercise plans, and consulting services through its website and various social media channels. Impossible X is solely owned and operated by entrepreneur Joel Runyon, who currently resides in Austin, Texas.

Impossible X and Impossible Foods use a similar all-caps version of the word "IMPOSSIBLE" to market their products. Both companies have federally registered trademarks for their versions of the IMPOSSIBLE mark. Runyon first used the mark on his personal fitness and lifestyle blog in 2010. The purpose of the blog was to encourage Runyon himself and others "to push ourselves to our limits and do something impossible." In 2012, Runyon in his personal capacity registered the IMPOSSIBLE mark for use on a website featuring information on personal fitness and "adventure activities."

Shortly thereafter, Runyon turned his personal blog into a business, forming Impossible Ventures LLC as an Illinois legal entity. Runyon changed the name of the LLC to Impossible X in 2016. Between 2014 and 2018, Impossible X obtained several additional trademark registrations related to the original IMPOSSIBLE mark, such as IMPOSSIBLE FITNESS and IMPOSSIBLE HQ. Impossible X uses these marks on numerous nationwide platforms, including several domain names, an Amazon e-commerce platform, and a YouTube channel.

Though Impossible X ambitiously expanded its virtual footprint, it has fewer ties to the physical world. Impossible X has no employees or outside investors, has no manufacturing or production facilities, and does not itself own or rent any office space. The company is, for all practical purposes, an extension of Joel Runyon, who claims to "handle[ ] business for Impossible LLC ... remotely from wherever I happen[ ] to be."

As it happens, Runyon—who refers to himself as a "digital nomad"—has worked from several places since he first registered the IMPOSSIBLE mark. While Runyon has traveled extensively, his ties to California are substantial, at least as related to the present dispute.

Although Runyon never registered Impossible X to do business in California, San Diego served as Impossible X's de facto headquarters from 2014 to 2016. Runyon claims he split his time between San Diego and New York City during this period, but he also described San Diego as a "base point," and his Impossible X business activities were clearly concentrated there. In these years, Runyon rented both an apartment and a workspace in San Diego from which he ran Impossible X. He did not rent workspace in New York or elsewhere. (Runyon's primary reason for spending time in New York was due to a personal relationship.)

In social media posts from Impossible X accounts, Runyon referred to his San Diego workspace—a room he rented from the cross-fit gym where he worked out—as "impossiblehq" and "impossibleheadquarters." Runyon expressed excitement about "[s]etting up shop" there and "hav[ing] a dedicated spot for videos and writing." In an Instagram post, Runyon also described his gym-adjacent office as "[m]y new favorite place to work in San Diego," telling his social media followers that he just had to "finish up putting @impossibleheadquarters branding on everything now." Runyon's LinkedIn profile listed "San Diego, California" as the "headquarters" for Impossible Ventures (later renamed Impossible X). In a blog post on an Impossible website, Runyon promoted his San Diego office as a place where he could "build a team" and "do calls and do meetings."

While living in San Diego, Runyon endeavored to build recognition for Impossible X. The record contains various marketing efforts and social media posts in which Runyon touted the Impossible brand, including through photos of himself wearing fitness gear with the Impossible mark. When promoting the Impossible X brand on social media, Runyon frequently tagged San Diego as his location. For example, in a June 2014 post from the "impossiblehq" Instagram handle, Runyon promoted his new Impossible X fitness gear, adding hashtags for #sandiego and #sd. And in January 2015, Runyon posted to Twitter that he "[c]ame home to San Diego and found my brand new #impossible hoodie waiting for me." Runyon also promoted Impossible X in a segment on the local news. In an Instagram post, Runyon featured a screenshot of himself (clad in an Impossible X t-shirt) being interviewed under the storyline "New Local App Aims to Relieve Sitting Pain," adding hashtags for "#sd" and "#sandiego."

While operating out of his base in California, Runyon also leveraged the Impossible X brand to promote various "paleo" diet and recipe guides. For example, in a June 2015 blog post from an Impossible X website, he mentioned that he was "starting to build a team both at Impossible and on Ultimate Paleo Guide." In another post, Runyon referenced a "workshop on the paleo projects that I've been building over the past couple years." Later, Runyon used the Impossible brand in connection with his "Paleo.io" and "Paleo Recipe Pro" software applications.

In June 2016, Runyon left his "base point" in San Diego and started living a fully nomadic lifestyle. Although Runyon had rented the gym office in his own name, in his letter to his landlord giving notice of vacating the lease, he signed it "Joel Runyon[,] Impossible X LLC." For the next two years, Runyon ran his business remotely as he traveled and worked in Europe and elsewhere.

In January 2019, Runyon settled in Austin, Texas. Two years later, he formed Impossible LLC in Texas and merged his Illinois LLC into it. He also assigned the Impossible trademark registrations to the new Texas entity. In social media posts, Runyon would later reflect that San Diego was the "nicest place," but that it was "tougher to grow business there." As Runyon would post in August 2019, "san diego is great, but taxes [Image materials not available for display.]. better entrepreneur community in austin."

Though Runyon moved out of California in 2016, he still had frequent business-related contacts with the state. Runyon in February 2017 described his "homebase" as "socal-ish (San diego) and NYC usually. couple years back was Chicago." As indicated by social media posts (some from Impossible-branded accounts) and flight records, Runyon made at least eight trips to California between October 2017 and December 2019. Runyon describes these trips as personal in nature, although he would still perform Impossible X-related work while on the road. And, as recently as 2021, Impossible X made plans with a Los Angeles-based company to manufacture apparel using the IMPOSSIBLE mark.

When Runyon returned to California in the years after he left, he continued to promote the Impossible brand in connection with California. In 2018, Runyon's personal Instagram account and the @impossiblehq account shared several posts tagged with California locations that advertised Impossible X content and products. For example, in August 2018, Runyon tweeted asking "[w]ho in the San Diego/Encinitas area" he should host on his Impossible X podcast. In November 2018, the Impossible X Twitter account promoted an interview that Runyon recorded with an athlete in West Hollywood. In 2018 and 2019, Impossible X posted to Instagram photos of athletes wearing Impossible-branded shirts at iconic locations in California, such as near the Golden Gate Bridge. Cumulatively, Runyon spent at least two months in San Diego in 2018 alone.

B

The trademark dispute between Impossible Foods and Impossible X began in the summer of 2020 when the U.S. Patent and Trademark Office (USPTO) published for opposition three trademark applications filed by Impossible Foods. On November 10, 2020, Impossible X sent a letter to Impossible Foods demanding that Impossible Foods cease using its "confusingly similar IMPOSSIBLE designs ... and limit the use of its IMPOSSIBLE mark to only use in association with plant-based food substitutes."

On...