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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

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Hearst Corp. v. Goldberger

96 Civ. 3620, 1997 U.S. Dist. Lexis 2065 (S.D.N.Y. Feb. 26, 1997) (Magistrate's Report)

Defendant, a New Jersey resident, created a web site in New Jersey at "" which was accessible to and had been accessed by New York residents. While the site featured a description of legal support services defendant intended to offer members of the public defendant had not, by the commencement of the suit, sold services to anyone, New Yorkers or otherwise. Charging that defendant's use of "esqwire" infringed its mark in "esquire", plaintiff commenced suit in New York, charging defendant, inter alia, with trademark infringement.

On defendant's motion, the Court held that it lacked personal jurisdiction over the defendant, and transferred the case to New Jersey. Said the Court:

Where, as here, defendant has not contracted to sell or actually sold any goods or services to New Yorkers, a finding of personal jurisdiction in New York based on [the mere availability of] an Internet web site would mean that there would be nationwide (indeed, worldwide) personal jurisdiction over anyone and everyone who establishes an Internet web site. Such nationwide jurisdiction is not consistent with traditional personal jurisdiction case law nor acceptable to the Court as a matter of policy.

The Court analogized defendant's conduct to the placement of an ad in a national magazine. Such conduct, without more, does not establish jurisdiction under N.Y. CPLR §302(a)(1), as it does not constitute transacting business in New York. The Court also held that defendant, simply by posting a web site in New Jersey, had not committed a tort in New York, because his actions occurred outside New York.

Nor was jurisdiction appropriate under N.Y. CPLR §302(a)(1), which permits the exercise of jurisdiction over someone who regularly solicits business in New York and causes, by acts outside the state, a tortious injury in New York. Said the Court:

Here, as discussed above, even if Goldberger's present Internet web site is considered a solicitation (since he does not yet have any product or service to sell), it did not occur in New York. Thus §302(a)(3)(i) is not applicable. If it were, it would offend traditional notions of fair play, because it would lead to nationwide jurisdiction over the Internet. (citation omitted).

The Court further held that defendant's post litigation acts of sending e-mail to New York did not permit it to exercise jurisdiction. The Court equated such communications to out-of-state telephone calls placed to in state residents, or to the sending of letters, which it found insufficient to support jurisdiction. Of note to practioner, the court's opinion discusses a number of decisions around the country that address the propriety of exercising personal jurisdiction based on Internet contacts. For someone unfamiliar with this area, the decision is a good place to begin to get a handle on this issue. The Court rejected the holdings of a number of decisions which found that the existence of a web site available to forum residents, combined with tortious injury in the forum state, sufficient to sustain jurisdiction, such as Maritz, Inset and Heroes, Inc. And, of course, the Court should be commended for citing in its opinion this author's article on jurisdiction.

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