Jurisdiction
The question of jurisdiction as it relates to Trademark law and domain names may seem intimidating at first. However, the process is not as bad as it seems once the law is applied. A good, and recent, exampleis Panavision v. Toeppen. In Panavision, the Ninth Circuit affirmed the District Court's holding that Toeppen diluted Panavision's trademark by registering the domain name panavision.com. The Court stated early in the opinion that jurisdiction was proper since Toeppen registered the domain name panavision.com in order to demand money from Panavision for its release, and that his acts were aimed at Panavision in California, and caused it to suffer injury there.19 The Court later addressed the jurisdictional issue in more detail.
Panavision manufactures and sells motion picture camera equipment under the registered trademarks "Panavision" and "Panaflex." In December of 1995, Panavision attempted to register panavision.com as a domain name, but was prohibited from doing so due to Toeppen's prior registration. Toeppen used the site to display photographs of the City of Pana, Illinois. After being contacted by Panavision's attorney, Toeppen offered to exchange the domain name for $13,000.00. After Panavision rejected his offer, Toeppen registered Panavision's other trademark as a domain name, panaflex.com.
Panavision brought an action against Toeppen, claiming dilution of their trademarks under Federal and California laws. The first legal issue encountered was whether the District Court had personal jurisdiction over Toeppen, a resident of Illinois. California's long arm statute permits its courts to exercise jurisdiction over a defendant to the extent permitted by the Due Process Clause of the Constitution. The Court affirmed the District Court's holding that it did not have general jurisdiction. However, the Court also affirmed the District Court's exercise of specific jurisdiction. The Ninth Circuit applies the following three-part test to determine whether a district court may exercise specific jurisdiction:
(1) The nonresident defendant must do some act or consummate some transaction with the forum or perform some act by which he purposefully avails himself of the privilege of conducting activities in the forum, thereby invoking the benefits and protections of its laws; (2) the claim must be one which arises out of or results from the defendant's forum-related activities; and (3) exercise of jurisdiction must be reasonable.
The purposeful availment requirement is satisfied if the defendant takes deliberate actions towards the forum state. The Ninth Circuit held that Toeppen's activities satisfied the purposeful availment requirement under the "effects doctrine." Under the "effects doctrine," "personal jurisdiction can be based upon: '(1) intentional actions (2) expressly aimed at the forum state (3) causing harm, the brunt of which is suffered-and which the defendant knows is likely to be suffered-in the forum state.'" The Court found that:
Toeppen purposefully registered Panavision's trademarks as his domain names on the Internet to force Panavision to pay him money. (Citation omitted) The brunt of the harm to Panavision was felt in California. Toeppen knew Panavision would likely suffer harm there because, although at all relevant times Panavision was a Delaware limited partnership, its principal place of business was in California, and the heart of the theatrical motion picture and television industry was located there.
Although the Court still maintained that registering a domain name and maintaining a web page is not sufficient for "purposeful availment," the Court held that Toeppen's registration of the domain name with the intent to extort money from Panavision was. The Court also found that Panavision's claims arose out of Toeppen's forum-related activities. Finally, the Court found that the district court's exercise of jurisdiction was reasonable.
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2nd December 2006, 06:44 AM
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