Kahoot! AS v. CPDlive Pty Ltd. (D. Mass. 25-cv-11783).

Kahoot!, a Norway company, filed a declaratory judgment against CPDlive, an Australian company, concerning an alleged breach of contract relating to trademark rights.  Seven years ago, the parties had entered into a coexistence agreement while prosecuting registrations for similar marks – “KAHOOT!” and “CAHOOT LEARNING” – that set forth the separate and distinct channels of trade that each party would use to avoid confusion.  Five years later, CPDlive suggested that Kahoot! was breaching the agreement, and in April 2025 CPDlive indicated that it would file suit in California in July if Kahoot! failed to return to compliance.  Kahoot! agreed to mediation, but two days before the mediation was to occur, Kahoot! filed the instant case.  CPDlive filed its own suit in the Northern District of California several days later, and moved to dismiss the Massachusetts case for lack of personal jurisdiction.

Judge Murphy found that Kahoot! had made a prima facie showing of specific personal jurisdiction.  Initially, he determined that in a declaratory judgment action relating to trademark rights, jurisdiction can be shown through any activities of the defendant that arise out of or relate to trademark-building activities in the forum state – or when, as here, the complaint relates to a contract, on activities related to the formation and/or breach of the contract.  He rejected CPDlive’s argument, borrowed from patent law, that declaratory judgment can only be based on enforcement activities, noting that unlike patent cases, the trademark-rights-holder necessarily relies on evidence of its business activities and thus covers a broader scope of activities on which personal jurisdiction can be based.

Under this framework, Judge Murphy deemed sufficient facts had been alleged to show that CPDlive had conducted substantial relevant business in Massachusetts.  CPDlive had partnered with MIT to offer professional certification programs, which it prominently features (along with other testimonials from Massachusetts-based clients) on its website.  Such activity forms at least a part of the basis on which CPDlive bases its acquisition of trademark rights based on use.

Judge Murphy also rejected CPDlive’s request that he refuse to exercise jurisdiction (which judges have discretion to do in declaratory judgment cases).  CPDlive sought the refusal based on the anticipatory first-to-file rule, claiming that Kahoot! had misled it into forgoing filing suit by promising to mediate and then “racing to the courthouse” to file the instant suit.  He noted that rather than “racing” to the courthouse, seven weeks had elapsed  between CPDline’s threat to file suit and the filing of Kahoot’s DJ action, and several years had passed since CPDlive had first indicated its belief that the contract had been breached.  Further, CPDlive could not show that it relied on the promise to mediate, as Kahoot! actually filed its DJ action before the deadline that CPDline had imposed.  Accordingly, he refused to dismiss the case.