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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...

Jurisdiction - Internet Library of Law and Court Decisions - Updated May 19, 2008

496 F.Supp.2d 653 (E.D. Va., July 12, 2007)

Court denied motion to dismiss complaint charging the defendant Union and two of its organizers with violating the CAN-SPAM Act by sending email solicitations promoting union membership to Verizon employees which purported to come from Verizon managers who did not authorize their transmission.  The Virginia District Court held that it could exercise personal jurisdiction over the non-resident Union organizers because both the corporate servers used to transmit these emails, as well as some of the employees who received them, were located in Virginia. 

The Court further held that plaintiff Verizon had stated valid CAN-SPAM claims against the defendants.  In reaching this result, the Court rejected defendants’ contentions that their solicitations constituted non-commercial speech promoting union membership exempt from the strictures of CAN-SPAM.  Because the Union rendered a service – representation of employees – for a fee – union dues – the emails constituted commercial speech.  As such, held the Court, the failure of these emails to accurately describe their source, or to appropriately advise that they were, in fact, advertisements, as well as their failure to provide mandated opt-out instructions, rendered their senders potentially liable for violations of CAN-SPAM.

2000 U.S. Dist. Lexis 10232, 106 F. Supp. 2d 848 (E.D. Va., July 13, 2000)

Court holds that act of registering an allegedly infringing domain name with NSI, which has its headquarters in Virginia, is insufficient by itself to permit the Virginia federal court to assert in personam personal jurisdiction over the registrant in a suit brought by the holder of the mark allegedly infringed.

27 F. Supp. 2d 109 (D. Conn., October 26, 1998)

(Court holds that operation of a passive web site available to all United States residents, including those residing in Connecticut, which does no more than solicit participation in an essay writing contest for children, and provide an 800 telephone number for contacting the defendant, is insufficient to permit the court to assert personal jurisdiction over a non-resident corporate defendant under the Connecticut long arm statute in a trademark infringement action arising, in part, out of the alleged improper use of the Mark on the site in question.)

34 F. Supp. 2d 1145 (E.D. Mo., Feb. 12, 1999)

In this domain name dispute, Court issued preliminary injunction, enjoining defendant from continuing to operate websites at domain names containing plaintiffs' common law trademark "Papal Visit 1999" which mark was used by plaintiff to promote the Pope's January 1999 visit to St. Louis, Missouri. Defendant's websites contained information about the Pope's visit and St. Louis, as well as advertising for, and links to, separate adult websites operated by the defendant. These adult sites, in turn, solicited membership for use of the sites, and offered to sell various adult entertainment products and services. There was no indication in the court's decision that these links led to sales by defendant of any products or services to Missouri residents. There was, however, a finding by the court that Missouri residents had complained to plaintiffs about defendant's sites. These contacts with Missouri were held sufficient to confer specific personal jurisdiction over the defendant on the Missouri District Court. The court awarded plaintiffs injunctive relief because it found that plaintiffs were likely to prevail on their Federal trademark claim that defendant was diluting plaintiffs' famous marks by tarnishing them. The court found that plaintiffs' marks "are famous and distinctive." This was apparently based on plaintiffs' use of the marks for approximately seven months, and their expenditure of a "considerable amount of money" advertising the marks. Tarnishment arose by the association of the mark with "websites advertising and promoting adult entertainment materials and services."

1 CA-CV 04-0823, 125 P.3d 389 (Arz. Crt. App., 2006)

Court holds that the Communications Decency Act, 47 U.S.C. § 230 ("CDA") immunizes web hosting company from liability arising out of its hosting of a third party's website that allegedly contained defamatory statements about plaintiff.  Following the Fourth Circuit's decision in Zeran v. AOL, the Court holds that such immunity exists notwithstanding any notice the web hosting company received concerning the defamatory nature of the content it was hosting.  The Court also dismisses plaintiff's defamation claims against the originator of the content at issue, holding it lacks personal jurisdiction over him.  The Court reached this result notwithstanding the fact that this defendant had contracted with an Arizona web hosting company to host the website which contained the defamatory statements at issue.  The Court held the exercise of jurisdiction over the defendant would be unreasonable given the fact he was a non-resident, the parties each operated Bali-related travel services, and the dispute was governed by Bali law.

Index No. (Sup. Ct. N.Y. Co., December 14, 2001)

Plaintiff bank brought defamation claims against defendant Mario Menendez-Rodriguez, a Mexican resident and journalist, defendant Narco News, a web site, and defendant Al Giordano, its publisher, arising, in part, out of statements defendants made concerning Roberto Hernandez-Ramirez, plaintiff's largest shareholder, general director and chairman of its board of directors, and the bank itself. In these statements, defendants accused Hernandez-Ramirez of being a "drug trafficker", and of having used gains from illegal endeavors to acquire the plaintiff bank. The Narco News also allegedly claimed that "bank officials have been arrested for drug-money laundering …". Defendants allegedly made the statements in question in a newspaper published in Mexico, Por Esto! with which defendant Menendez-Rodriguez is affiliated, in an interview given to The Village Voice, a New York publication, during a panel discussion at Columbia University in New York, and/or in articles published on the Narco News web site.

The court, on defendants' motions, dismissed the complaint. The claims advanced against defendant Menendez-Rodriguez were dismissed on the ground that the court lacked personal jurisdiction over him given the plaintiff's failure to allege facts sufficient to show that Menendez-Rodriguez, a non-resident, "transacted purposeful business activity bearing a substantial relationship to the subject matter of the lawsuit in [New York]." The defamation claims against the remaining defendants were dismissed as a result of plaintiff's failure to allege facts sufficient to state a claim against them. The court determined that these defendants were media defendants entitled to heightened protection under the First Amendment. Given that they were reporting on matters of public concern plaintiff, to state a claim against them, had to allege facts sufficient to show both that the statements they allegedly made were false, and that they were made with "actual malice," that is with knowledge that the statements were false or made with reckless disregard for the truth. The court held that plaintiff had not alleged facts sufficient to establish that the remaining defendants had acted with actual malice, given, inter alia, their reliance on articles appearing in Por Esto! for the statements they made, and accordingly dismissed the complaint against them.

1996 WL 509716, 937 F. Supp. 295 (S.D.N.Y. Sept. 9, 1996) aff'd, 126 F.3d 25, 1997 U.S. App. LEXIS 23742 (2d Cir., Sept. 10, 1997)

(Uploading a web site onto a server located outside the forum that was accessible to forum residents was insufficient, without more, to subject web masters to personal jurisdiction where site not intended to sell product to forum residents)

992 F. Supp. 44 (D.D.C. April 22, 1998)

Court holds defamation claim against AOL as a result of its making available a gossip column written by a third-party content provider titled the"Drudge Report" was barred by the Communications Decency Act. Court reached this conclusion notwithstanding the fact that AOL had reserved the right to exercise control over the Report's editorial content, and further, had promoted the report as a gossip column, thereby acknowledging the nature of the report's general content and the risks inherent therein.

The court denied defendant Drudge's motion to dismiss for want of personal jurisdiction. Drudge's maintenance of an interactive website, on which his Report appeared, which permitted users to subscribe to the Drudge report via e-mail, and solicited contributions from forum residents to defray publication costs, combined with other contacts with Washington D.C., including a visit to D.C. to promote the report, and mail and phone contacts to obtain gossip, made the exercise of jurisdiction over him appropriate.

112 F. Supp. 2d 502, Civil Action No.99-550-A (E.D.Va., March 3, 2000)

The court holds that the provisions of the Anticybersquatting Consumer Protection Act that permit a trademark holder to proceed with an in rem action against a domain name do not violate the Due Process clause of the United States Constitution.

No. C 97-4676, 1998 U.S. Dist. Lexis 8886 (N.D. Cal., June 5, 1998)

(Draft client website posted by website designer at designer's own domain name held insufficient to establish personal jurisdiction wherever website could be accessed.)

954 F. Supp. 43 (D. Conn., February 4, 1997)

(Out-of-state resident who allegedly makes misrepresentations to Connecticut resident in at least 15 e-mail messages sent to resident in Connecticut, and 4 telephone calls from California (where non-resident is situated) to resident in Connecticut, held sufficient to subject non-resident to jurisdiction in suit arising out of alleged misrepresentations)

89 F.3d 1257 (6th Cir. 1996)

(Uploading shareware onto computer subjects programmer to jurisdiction where computer located)

1994 U.S. Dist. Lexis 20352 (S.D. Ohio Aug. 11, 1994), motion for recons. denied, 1995 U.S. Dist. Lexis 7530 (S.D. Ohio March 23, 1995) reversed, 89 F. 3d 1257 (6th Cir.1996)

698 N.E.2d 816 (Indiana Court of Appeals, August 14, 1998)

(Operation by an out-of-state defendant of a web site available to Indiana residents which allegedly infringed the trademark of, and defamed a nationwide corporation headquartered in Indiana, without more, was insufficient to support personal jurisdiction over the non-resident defendant in Indiana. In these circumstances, the fact that the defendant's allegedly tortious activities caused an injury, or had an effect, on the plaintiff in Indiana was insufficient to sustain jurisdiction over the non-resident defendant.)

Civ. Act. No. 98-5029, 1999 U.S. Dist. Lexis 1934 (D. Pa., February 24, 1999)

(Court holds that it lacks personal jurisdiction over a non-resident defendant in a trademark infringement suit arising out of defendant's use of plaintiff's trademark in its domain name. Defendant had not transacted business with, or provided services in Pennsylvania. The court found that defendant's operation of a passive website which contained advertisements of both defendant's services and various employment opportunities at defendant's company were insufficient to support a finding of jurisdiction. This conclusion was not altered by the fact that visitors to the site were provided with the means of communicating with defendant via e-mail, file transfer protocol or listed telephone numbers. Nor did the presence of an order form on the site change the result, as it could not be completed or sent on line.)

17 F. Supp. 2d 104 (D. Conn., August 4, 1998)

(Court holds that maintenance by non-resident of website available to forum residents which advertises products, permits users to order information concerning the products online, and provides an 800 telephone number for ordering products, but does not allow placement of an order online, is insufficient by itself to establish personal jurisdiction over non-resident. Court also holds that single sale of product to a forum resident was insufficient to satisfy the minimum contacts with the forum required under the U.S. Constitution for the assertion of jurisdiction, when the purchaser bought the product at the behest of plaintiff, who, like defendant, was also a non-resident.)

946 F. Supp. 413 (D. Arz., Nov. 19, 1996)

Posting a statement on a web site available to Arizona residents sufficient to permit Arizona District Court to exercise jurisdiction over non-resident in action charging that the statement was libelous and defamatory because defendant could foresee that its activities would have an effect on corporation with offices in Arizona

Civ. Act. No. 6:02CV0040 (W.D.Va., March 4, 2003)

Court dismisses action brought against a non-resident for want of personal jurisdiction.  In the action, plaintiff, a nationally known public figure who resides in Virginia, sued a non-resident, inter alia, for defamation and violation of the Anticybersquatter Consumer Protection Act ("ACPA") as a result of critical statements defendant made on a website he operated at a Url bearing plaintiff's name.  Finding that defendant had not, by his activities, expressly targeted a Virginia audience, the court dismissed the suit for want of personal jurisdiction.

48 F. Supp. 2d 640 (N.D. Tex., March 26, 1999)

(Texas court holds that it lacks personal jurisdiction in trademark infringement suit over nonresident defendant that 1) operates a passive web site on the Internet available to Texas residents, on which site defendant advertised its services; 2) operates a toll free eight hundred telephone number that is not found on its web site; and 3) purchases supplies on regular intervals from a Texas-based concern. In so holding, the court specifically rejected the early holding of the United States District Court for the District of Connecticut in Inset Systems Inc. v. Instruction Set, Inc., 937 F. Supp. 161 (D. Conn. 1996) "that personal jurisdiction can be premised on a defendant's maintenance of a passive web site and a toll-free telephone number.")

1998 U.S. Dist. Lexis 331, 996 F. Supp. 394 (D.N.J., March 5, 1998)

(Maintenance of a passive web site available to forum residents, without more, is insufficient to subject a party to general personal jurisdiction in the forum state).

No.97-CV-2314 (RMU) 21 F. Supp. 2d 27 (D.D.C., Sept. 28, 1998), remanded,199 F.3d 1343 (D.C. Cir., 2000)

Court holds that non-resident defendants' contacts with the District of Columbia via the Internet are sufficient to support the assertion of personal jurisdiction over them. Each defendant operated an Internet Yellow Pages service on a website available to all United States residents, including those residing in Washington D.C. To utilize these services, a user submitted information to defendants (such as the identity of the entity who's listing was sought) and received in return (hopefully) a listing from defendants. There was no direct charge from this transaction. However, defendants profited from it, because it increased the traffic to their sites which, in turn, increased the revenue received from advertisements appearing thereon. Plaintiff alleged that this conduct caused it injury by improperly diverting D.C. residents from plaintiff's competing Internet Yellow Pages services to those of the defendants. The court held that this conduct was sufficient to support jurisdiction under Washington D.C. Long Arm Statute section 13.423(a)(4), which permits the assertion of personal jurisdiction over a non-resident who causes tortious injury in the District of Columbia by an act outside the jurisdiction. The court further concluded that this conduct constituted a "persistent course of conduct" in the District of Columbia within the meaning of section 13.423(a)(4).

In its complaint, plaintiff charged defendants with entering into a conspiracy in violation of the Sherman Antitrust Act and various comparable District of Columbia statutes. The alleged goal of the conspirators was to monopolize and unreasonably restrain trade in the Internet Yellow Pages market by reducing competition among themselves and by preventing competing Internet Yellow Pages providers from using various important Internet portals to market their services. This conspiracy was allegedly effectuated by agreements defendants entered into with Netscape and others under which exclusive links were created from important Internet portals to defendants' services, which links did not reference competitors such as plaintiff.

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

The mere availability of an out-of-state web site to forum residents, without more, is insufficient to establish jurisdiction in the forum in a trademark infringement suit arising out of the site's operation

958 F. Supp. 1 (D.D.C., Dec. 19, 1996)

(Out-of-state charitable organization subject to jurisdiction in trademark action based on (a) an advertisement which allegedly infringed plaintiff's service mark which was run with defendant's knowledge in a newspaper circulated in D.C., TheWashington Post, from which defendant derived substantial income, and defendant's maintenance of a home page on the Internet available to D.C. residents)

1996 U.S. Dist. Lexis 7160, 937 F. Supp. 161, (D. Conn. April 17, 1996)

A commercial web site's accessibility to forum residents, standing alone, is sufficient to sustain jurisdiction in a trademark infringement suit arising out of the operation of the site.

No. 05 C3459 (N.D. Ill., October 27, 2005)

Illinois federal court holds that it lacks personal jurisdiction over corporate and individual defendants residing in California in a defamation action arising out of defendants' publication of a newspaper article that allegedly defamed Illinois resident "Bo" Jackson.  The article was published both in a local California newspaper and on the newspaper's website.  The Court based its determination on the fact that the article was not aimed at Illinois, because it reported on a speech given in California, and because only one of the subscribers to the print and electronic versions of defendants' local California newspaper was a resident of Illinois.

98 Civ. 3773 (LMM), 1998 U.S. Dist. Lexis 18464 (S.D.N.Y., November 23, 1998)

Court holds that it lacks personal jurisdiction in a trademark infringement suit over a non-resident defendant. The lawsuit arose out of defendant's registration of a domain name which allegedly contained plaintiff's trademark. Defendant did not operate any business at this site. Instead, he merely posted a web site available to forum residents which said "under construction." The court found it lacked jurisdiction despite the fact that defendant, in response to plaintiff's inquiries, had offered to sell the domain name for $8000, and had registered three other domain names at which he posted no content. The court rejected plaintiff's arguments that defendant was a "cyber pirate," or that it could exercise personal jurisdiction over defendant under the "effects" test expounded by Ninth Circuit in Panavision v. Toeppen, 141 F.3d 1316 (9th Cir. 1998).

947 F. Supp. 1328 (D. Mo. August 19, 1996) reconsideration denied and preliminary injunction denied, 947 F. Supp. 1338 (1996).

A commercial web site's accessibility to forum residents, standing alone, was sufficient to sustain jurisdiction in a trademark infringement suit arising out of the operation of the site

1996 U.S. Dist. Lexis 15139 (S.D. Cal. August 5, 1996)

(A commercial websites accessibility to forum residents, standing alone, is insufficient to sustain personal jurisdiction over the creator of the site in a suit that does not arise out of operation of the site itself).

Civil Act. No. SA-07-CA-353-XR (W.D. Texas, November 5, 2007)

Federal Court sitting in Texas holds that it can exercise personal jurisdiction over a non-resident defendant arising out of posts made on the internet site thealamofilm.com which allegedly defamed and injured plaintiff, a Texas resident.

CV 01-08541-SVW (C.D. Ca., January 9, 2003)

Court holds that both Sharman Network Ltd. ("Sharman") a company based in Australia which distributes software that enables individuals to utilize the Kazaa peer-to-peer file sharing network, and LEF Interactive PTY Ltd. ("LEF"), which manages Sharman's operations, are subject to personal jurisdiction in the California federal courts in a copyright infringement lawsuit arising out of Sharman's distribution of its file sharing software to California residents, and their subsequent use of such software.  The court reached this conclusion notwithstanding the fact that Sharman's activities all occur outside California, where it operates a web site from which California residents download the Kazaa software.  As a result, the court denied defendants' motion to dismiss this action for want of personal jurisdiction.

33 F. Supp. 2d 907 (D. Or., Jan. 4, 1999)

(Court holds that the availability to forum residents of an interactive website on which forum residents could but had not yet effectuated purchases was not sufficient contact with the forum to permit the exercise specific personal jurisdiction in a trademark infringement lawsuit arising out of the website's operation. Something more, such as actual sales to forum residents or a site particularly targeted toward forum residents, was required.

The court further held that the in-state sale of a single compact disc, apparently purchased at plaintiffs' behest, did not support a finding of jurisdiction. Such a contact did not constitute a "purposeful availment" by defendants of the protections of the forum, but rather the attempt by plaintiff to manufacture jurisdiction in the forum.

In analyzing these questions, the court provided the Internet community with the most exhaustive and comprehensive listing to date of court decisions addressing personal jurisdiction and the Internet. It is highly recommended for anyone seeking a summary of the state of the law on the issue of personal jurisdiction.)

568 N.W. 2d 715, Court File No. c6-95-7227 (State of Minn. Dist. Crt., Ramsey County, Dec. 11, 1996) aff'd 576 N.W. 2d 747, No. C6-97-89 (Minn. Ct. App., Sept. 5, 1997)

Placing an advertisement on a web site accessible to Minnesota citizens was sufficient contact with Minnesota to subject a non-resident web master to jurisdiction in Minnesota

378 F. Supp.2d 715 (E.D. Va., July 14, 2005)

Court denies motion to dismiss made by foreign domain name registrant, and allows trademark owner to proceed with in rem action, seeking relief under both the Anticybersquatting Consumer Protection Act, and the Lanham Act for trademark infringement.  The ACPA gives a trademark holder the right to proceed in rem to have a domain name transferred to it, or its registration cancelled, and allows a United States court to exercise jurisdiction over a res – the domain name – where the registry or registrar for such domain name is located in the United States.  This is true notwithstanding the fact that the United States court lacks personal jurisdiction over the domain name registrant.

89 F. Supp. 2d 1154 (C.D.Cal. 2000) aff'd. without opinion, 246 F.3rd 675 (9th Cir. 2000)

Court holds that plaintiffs Nissan Motor Co. and its licensee are likely to prevail on their trademark infringement claims against defendant Nissan Computer Corporation arising out of defendant's display on its nissan.com and nissan.net websites of third party advertisements for automobiles. The court accordingly issued a preliminary injunction, enjoining defendant from displaying automotive-related advertising and links on the web sites in question. The court further directed defendant to place a prominent disclaimer on the site, informing visitors that it is not affiliated with plaintiffs, and providing users with plaintiffs' web site address. The court permitted defendant to continue to operate web sites at nissan.com and nissan.net at which it advertised its computer business and non-automotive products, in part because Nissan is the surname of defendant's principal, and in part because plaintiffs are not in the computer business. The court also denied defendant's motion to dismiss the case for want of personal jurisdiction, both because the effects of its infringing activities were felt in California, where one of the plaintiffs was headquartered, and because defendant had contracted with a number of California concerns to obtain the automobile advertising at issue.

No. C-98-1392 PJH, 1998 U.S. Dist. Lexis 13154 (N.D. Cal., August 20, 1998)

(Operation by non-resident of a website available to forum residents as well as the rest of the Internet community which offered merchandise for sale held insufficient to create personal jurisdiction over non-resident in trademark infringement suit arising out of the site's operation. Because there was no evidence of sales to forum residents, and because the site did not specifically target forum residents for sales, defendants had not purposefully availed themselves of the privilege of doing business in the forum.)

No. 01-35648 (9th Cir., October 7, 2002).

Applying the ‘effects test,’ the Ninth Circuit holds that Washington courts can exercise personal jurisdiction over defendant Healthgrades.com, a Delaware corporation with its principal place of business in Colorado, in a defamation action arising out of allegedly defamatory statements found on defendant’s website that caused injury to plaintiff in Washington.  The statements at issue consisted of ratings of home health care providers, including plaintiff, which provides such services in Washington.

309 F.Supp.2d 446, Civ. 02-5164 (DRH) (WDW) (E.D.N.Y., Mar. 25, 2004)

Court holds that plaintiff, by clicking an "I accept" icon agreeing online to be bound by the Terms of Service governing use of an online discussion group set forth in a scrollable window, viewable ten lines at a time, was bound by the forum selection contained therein.  Finding such a clause enforceable, the Court dismissed a claim brought by plaintiff asserting that defendant Google breached this agreement, because this claim was not brought in the designated forum.

The Court also held that Section 230 of the Communications Decency Act ("CDA") immunized an ISP hosting an online discussion group from claims that its failure to remove objectionable content posted on the discussion group's web page gave rise to claims of tortious interference with contractual relations. 

Finally, the Court denied the motions of two additional defendants to dismiss the claims asserted against them for want of personal jurisdiction.  The Court held that the first defendant was subject to specific jurisdiction in New York because of its operation of a commercial website via which it sold $6000 of products a year to New York residents.  The second defendant was similarly subject to suit because he had entered into a contract with a New York company, which contract allegedly gave rise to the claims asserted against him.

Civil Act. No. 3:07CV-330-H (W.D. Ken., November 7, 2007)

Kentucky District Court holds that it lacks personal jurisdiction over an English resident in a defamation action brought against her by a Kentucky corporation arising out of defendant’s posting of allegedly defamatory statements on an website, and transmission of allegedly defamatory emails from England to recipients in England and Illinois.

 

938 F. Supp. 616 (C.D.Cal. Sept. 20, 1996)

(A non-resident's registration in Virginia by acts out of state of a domain name containing a federally registered trademark without permission of the trademark owner subjected the non-resident to suit in California where the owner had its principal place of business, and thus where the injury of defendant's conduct was felt)

2007 WL 725412 (S.D.N.Y., March 12, 2007)

Court denies defendants’ motion to dismiss and allows plaintiff Philip Morris USA Inc. (“Philip Morris”) to pursue trademark infringement claims arising out of defendants’ alleged distribution into the US of gray market cigarettes from their websites.  The Court rejected defendants’ argument that plaintiff’s trademark infringement claims should be dismissed because the disclaimers on defendants’ websites adequately disclosed that the cigarettes offered for sale are ‘gray market’ goods – goods manufactured by Philip Morris for different markets - and that the defendants’ websites are not affiliated with or sponsored by Philip Morris.  These disclaimers did not warrant dismissal because they failed to disclose that the ‘gray market’ cigarettes offered for sale by defendants were ‘materially different’ from those intended for the US market.  As such, consumers may be confused and led to believe they were purchasing a product they would not in fact receive.

The Court also rejected defendants’ motion to dismiss on the ground that the Court lacked personal jurisdiction over the defendants.  The Court held the complaint’s allegations that defendants shipped gray market goods into New York in violation of the Lanham Act were sufficient to establish that a New York federal court could exercise personal jurisdiction over the defendants.  Notably, defendants did not seek to challenge these factual assertions, or offer evidence as to either their lack of contact with the forum  or their actual location.

Finally, the Court denied that branch of defendants’ motion to dismiss which asserted that service of the complaint by fax and email pursuant to Fed. Rule Civ. Pro. Rule 4(f)(3) violated Due Process.

1996 WL 337276 (S.D.N.Y. June 19, 1996), aff'd on recons., 1996 WL 396128 (S.D.N.Y. July 12, 1996)

(Court holds that defendant, by placing pictorial images on a server located in Italy that is connected to the World Wide Web, and hence available to United States residents, has violated a permanent injunction prohibiting distribution of the images in the United States).

51 F. Supp. 2d 707 (E.D. Va., June 8, 1999), vacated and remanded 215 F.3d 1320 (4th Cir., 2000)

Court grants defendants' motion to dismiss complaint for want of personal jurisdiction on the grounds that the Federal Trademark Dilution Act does not permit the prosecution of in rem actions against domain names which allegedly dilute famous trademarks.

Plaintiffs, owners of the trademarks "porsche" and "boxster", brought suit under the Federal Trademark Dilution Act, claiming that 128 domain names, including "porsche.com", diluted their famous marks. Plaintiffs elected to proceed with this suit in a novel manner. Rather than file an in personam action against those who had registered the allegedly offending domain names, plaintiffs commenced an in rem action against the 128 domain names themselves.

The court held that this procedure was not authorized by the Act. Moreover, such a procedure, if authorized, would call into question the constitutionality of the statute, as it would permit the assertion of personal jurisdiction over parties without regard to the level of their contacts with the forum. The court accordingly dismissed the complaint.

636 So.2d 1351 (Fla. App. 1994)

IP 96-1457-C-M/S, 1997 U.S. Dist. Lexis 3523 (So. Dist. Indiana, March 24, 1997)

(Court held that out-of-state residents that neither had offices, nor conducted business in Indiana, were subject to jurisdiction in Indiana because of their participation in 80 e-mail and two telephone communications with an Indiana resident about forming a company which would in part be based in Indiana)

985 F. Supp. 1032 (D.Kan. Nov. 19, 1997)

(Mere operation of passive website available to forum residents which does not provide any method of communicating directly with website operator, and on which no goods or services are sold, is insufficient to establish general personal jursidiction over out-of-state website operator)

03 CV 4790 (E.D.N.Y., June 5, 2006)

Court holds it can exercise personal jurisdiction over defendant Boss Media AB ("Boss Media"), a Swedish corporation, based on the New York activities of a wholly-owned subsidiary found to be acting as its agent.  This subsidiary - Web Dollar - processed online financial transactions for individuals engaged in web-based gambling at websites utilizing defendant Boss Media's software, including the website at issue, and distributed funds it collected to Boss Media, its subsidiaries and licensees.  As a result of this determination, the Court permitted plaintiff to proceed with claims against Boss Media, and its licensee Cyber Croupier, seeking the recovery of in excess of $900,000 due plaintiff as result of having won an online contest.

No. 97 C8745, 1998 U.S. Dist. Lexis 7120 (N.D. Ill. April 24, 1998)

(Court held that it had specific personal jurisdiction over non-resident defendants who manufactured and designed boats in action arising out of boating accident in Illinois. Jurisdiction was based on the combination of (a) defendants' operation of a website available to forum residents which provided them with e-mail facilities to contact defendants concerning their products, and advised forum residents that defendants' products would be displayed at an in-state trade show and (b) defendants' sale of their products to a third party who in turn sold the boat involved in the suit to plaintiffs and who defendants knew marketed the products at in-state trade shows. The court reached this conclusion despite the fact that there was no evidence that defendants' website was used to transact business.)

977 F. Supp. 327 (D.N.J. Sept. 12, 1997)

Availability to forum residents of a website which advertises defendant's product and services, and provides a telephone number for ordering the same, is insufficient by itself to support general personal jurisdiction in the forum over the website's owner. No products or services were sold over the site in question, nor did the plaintiff use the site in connection with her purchase of the services which gave rise to the suit in question.

No. 01-2340 (4th Cir., December 13, 2002)

Reversing the court below, the Fourth Circuit Court of Appeals holds that Virginia's Federal Courts may not exercise personal jurisdiction over two small Connecticut newspapers which published articles on the Internet that allegedly defamed a Virginia resident.  To be able to assert personal jurisdiction over the newspapers, the court held that they must "(1) direct electronic activity into the State, (2) with the manifested intent of engaging in business or other interactions within the State, and (3) that activity creates, in a person within the State, a potential cause of action cognizable in the State's courts."  The mere posting of an article on a website, even one that addressed conditions in Virginia prisons, was not enough to satisfy this burden.  Because the newspapers were small Connecticut-based publications which served almost exclusively Connecticut readers, they would not be subject to jurisdiction in Virginia courts for libel claims arising out of their publication on the articles at issue on the Internet.

952 F.Supp. 1119 (E.D. Penn., Jan. 16, 1997)

California corporation, which operated web site on California server accesible to Pennsylvania residents, and which, via Internet contacts, sold 3000 Pennsylvanians password which permitted them to access newsgroup postings stored on California computer, and which corporation also entered into contracts with seven Pennsylvanian Internet access providers to provide access to its newsgroup postings to Penn. residents, held subject to personal jurisdiction in Pennsylvania in trademark infringement and dilution lawsuit arising out of such activities.

Quick Hits

Ballistic Products Inc. v. Precision Reloading, Inc.
2003 WL 21754816, Civil No. 03-2950 ADM/AJB (D. Minn., July 28, 2003)

Court finds plaintiff Ballistic Products Inc. likely to prevail on its claim that its competitor - defendant Precision Reloading Inc. – violated the  Anticybersquatting Consumer Protection Act as a result of its registration of two “typo” domain names, containing misspellings of plaintiff’s then common law trademark.  Defendants registered these domain names to “attract potential customers” and pointed them to their own web site, at precisionreloading.com, where they sold competing products.  Finding such actions likely to confuse consumers, the Court issued a preliminary injunction, enjoining defendants from further use of the “typo” domains, and directed their immediate transfer to the plaintiff.

The Court further held that it could assert personal jurisdiction over the non-resident defendants.  The Court held that defendant Precision Reloading Inc. had sufficient contact with Minnesota to permit the assertion of general personal jurisdiction over it.  It had over the last 18 months sold over $21,000 in product to Minnesota customers, and purchased over $32,000 of merchandise from Minnesota sellers.  It had also distributed 223 catalogues to Minnesota residents, advertising its products, advertised nationally in publications sent to Minnesota and operated a website that received numerous ‘hits’ some of which were likely to be from Minnesota residents.  Specific jurisdiction could be exercised over both Precision and the remaining defendants under the ‘effects test’ articulated by the Supreme Court in Calder v. Jones.  The Corporate defendants committed tortuous misconduct directed against the plaintiff, a Minnesota company, the effects of which would be felt by that company in Minnesota.  Said the Court:

Defendants’ registration of domain names that are slight misspellings of Ballistic’s trademark and domain name was an action directed at Minnesota such that Defendants’ should ‘reasonably anticipate being haled into court’ in Minnesota. … ‘[a]n individual injured in Minnesota need not got to Connecticut to seek redress from persons who, though remaining in Connecticut, knowingly caused the injury in Minnesota.’ 

The Court held that the individual defendants, officers of Precision, “are primary participants in an alleged wrongdoing intentionally directed at a forum state resident, and jurisdiction over them is proper on that basis.”  It was the individual defendants who came up with the idea of registering the ‘typo’ domain names at issue to attract business for the defendant Precision Reloading. 

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Victoria S. Bowen v. YouTube Inc.
2008 WL 1757578 (W.D. Wash., April 15, 2008).

Court upholds the validity of the forum selection clause in YouTube’s Terms of Use, which mandates that disputes arising out of the use of the YouTube website be litigated exclusively in courts located in San Mateo County, California.  As a result, the Court granted defendant YouTube’s motion to dismiss plaintiff’s complaint, because it was brought in Washington, rather than in a court located in San Mateo County, California.

The Court further held that it lacked personal jurisdiction over the defendant because “no conduct has been alleged [by plaintiff] to provide the ‘something more’ necessary [under the effects test] for rendering YouTube subject to jurisdiction in the Western District of Washington.”

It should be noted that plaintiff was proceeding pro se.

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Mattel, Inc. v. Procount Business Services, et al.
03 Civ. 7234 (RWS) (S.D.N.Y., March 10, 2004)

In an action brought by Mattel under the Anticybersquatting Consumer Protection Act, as a result of defendants’ registration of the domain names BarbieToy.com and BarbieRetro.com, the Southern District of New York held that it could exercise personal jurisdiction over a non-resident defendant because “defendants solicited sales over the Internet, accepted an order from a resident of this state, and shipped goods into this state to fill that order.”  As a result, the Court denied defendants’ motion to dismiss this action for want of personal jurisdiction.  The defendants were retailers who primarily sold vintage toy reproductions.  At some point, they expanded their product line to include licensed ‘Barbie Classic’ items.  The domain names were purchased to promote this product line, and redirected the user to defendants’ website at which such items were offered for sale.  Plaintiff arranged to purchase two Barbie items from defendants’ website, which defendants shipped to plaintiff in New York.  As stated above, this purchase was sufficient to establish personal jurisdiction over the defendants in New York.

The Court nonetheless transferred the case to Texas, where the defendants reside, pursuant to 28 U.S.C. Section 1401(a).  Said the Court:

In the interests of justice and trial efficiency, this action should be transferred to the Southern District of Texas.  The locus of operative facts is in both the Southern District of Texas and New York;  Defendants documents related to the website in question are located in Houston Texas; Mattel is a worldwide manufacturer with offices all over the United States and Defendants are a one man outfit, located only in Houston Texas, maintaining the action in New York will pose a heavy financial burden on defendants; neither party is located in the Southern District of New York and Defendants are located in Houston, Texas.

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