Facebook might be able to “friend” anyone it wants in California, but when it comes to suing people, it will have to be a bit more selective.
In a recent suit, Facebook filed a complaint in the U.S. District Court for the Northern District of California against Teachbook.com, LLC (“Teachbook”). Facebook, Inc. v. Teachbook.com, LLC, 2011 U.S. Dist. LEXIS 48590 (N.D. Cal. May 2, 2011). Facebook demanded that Teachbook, an Illinois-based website that provides a social and professional networking community for teachers, remove the “-book” suffix from its name. Facebook took this action on the basis that it was a trademark violation. Teachbook moved to dismiss the complaint, arguing, in part, that the Northern District of California did not have personal jurisdiction over it.
Personal jurisdiction refers to the power of a court to rule on the personal legal rights of parties properly brought before it in a forum state. One way for a person or company to open themselves to personal jurisdiction is by establishing “minimum contacts” in the forum state, which generally requires a party taking some purposely direct action toward that state. Facebook argued that Teachbook established sufficient “minimum contacts” in California through its adoption and use of the “Teachbook” mark and the subsequent effects the use would have on Facebook within California.
In order to determine whether Teachbook’s conduct was “purposely directed” at California, the Court applied a three-part “effects” test. The “effects” test requires that the defendant allegedly have:
1) committed an intentional act
2) expressly aimed at the forum state
3) causing harm that the defendant knows is likely to be suffered in the forum state.
Id. at 5, 6.
Facebook argued that Teachbook’s actions met the three requirements of the “effects” test by claiming Teachbook intentionally used a confusingly similar trademark; that it intended to compete with Facebook; and that it knew its use of the “Teachbook” mark would injure Facebook in its home state of California.
However, the Court disagreed with Facebook’s argument because it found that Facebook failed to show Teachbook’s conduct was “expressly aimed” at California. Id. at 6. “None of Teachbook’s acts were purposely directed at California; to the contrary, Teachbook took purposeful steps to avoid the California market,” the Court stated. Id. at 10. The Court placed particular significance on the fact that Teachbook did not register users in California. Therefore, even if it did intend to compete with a California company such as Facebook, it intended to compete for users who were not in California. Id. at 7. Additionally, the Court noted that a mere foreseeable effect is not sufficient for establishing personal jurisdiction as “[t]he fact that an essentially passive Internet advertisement may be accessible in the plaintiff’s home state without ‘something’ more is not enough to support personal jurisdiction in a trademark infringement suit.” Id.
The Court’s dismissal does not preclude Facebook from filing the claim in another venue. However, the decision is significant in that it sheds some light on when a website’s actions are sufficient to develop “minimum contacts” in a forum state and, consequently, when such a court could exercise personal jurisdiction over such a company.
© 2011 Nissenbaum Law Group, LLC