Monthly Archives: September 2010

Internet Advertisement on a Passive Website is Not Generally a Basis for Personal Jurisdiction in a Lawsuit

On August 16, 2010, the Federal District Court of the District of New Jersey upheld the prevailing view of personal jurisdiction as it relates to internet advertisements.  The Court in Morilla v. Laser Spine Institute, LLC, 2010 WL 3258312 (D.N.J.) stated that “[a] website that has only information and a generic contact information input form falls at the passive end of the Zippo scale.  Id. at 5.  The Court held defendant’s website to be passive and declined to exercise jurisdiction over defendant.  In the analysis of the operation of the defendant’s website, The Court stated:

“In the past fifteen years, the increasing popularity of the internet has led courts to examine a defendant’s internet activity as a potential basis for jurisdiction, but the Supreme Court has not yet spoken on this subject.   Zippo Manufacturing Company v. Zippo Dot Com, 952 F.Supp. 1119 (W.D.Pa.1997), a seminal case endorsed by the Third Circuit, considered whether a defendant’s operation of a website could satisfy a federal court’s exercise of personal jurisdiction over that defendant.  The Zippo court created a “sliding scale”, whereby the quality of contacts between a web host and a forum is evaluated by examining the website’s nature and functions.  At one end of the scale are those web hosts who actively solicit business over the internet by using their websites to enter contracts or exchange data files.  If they engage in such activity knowing that their would-be customers are in another forum, jurisdiction over the web hosts in that forum is proper.  On the other end of the scale are passive hosts with purely informational websites that allow no interaction through the site-these websites do not themselves create sufficient contacts between the web host and other forums to justify an extra-territorial court’s exercise of jurisdiction.  In the middle are websites that allow the visitor to ex-change information with the host, but do not affirmatively seek business from other states. For such sites, jurisdiction must be determined on a case-by-case basis by looking at just how “interactive” and commercial in nature the exchange of information through the website is.”

“When a website is passive or falls in the middle of the Zippo sliding scale, plaintiffs may have to prove “something more” to justify the exercise of personal jurisdiction-that is, plaintiffs must show that the defendant purposefully (albeit electronically) directed his activity in a substantial way to the forum state.  The “something more” can include evidence of non-internet contacts, such as ongoing communications with customers in the state, business trips to the state, advertisements in local publications, and business records of sales in the state.”

Id. at 5.

The Court granted defendant’s motion to dismiss plaintiffs’ complaint because the plaintiffs failed to allege sufficient facts to show that defendant’s website was interactive.  Thus, the Court refused to exercise personal jurisdiction over defendant.  


© 2009 Nissenbaum Law Group, LLC

An Internet Service Provider is Generally Protected from Liability for Defamation by the Federal Communications Decency Act

On September 2, 2010, the Supreme Court of New York, New York County decided a case in which it determined a defamation claim regarding negative remarks about the plaintiff’s dental practice posted by a third-party on defendant’s web page.  The court in Reit v. YELP!, Inc., et al. –N.Y.S.2d—, 2010 WL 3490167 (N.Y.Sup.), held that the Federal Communication Decency Act of 1996 (“CDA”) protected Yelp from liability for defamation.  The Court analyzed plaintiff’s defamation claim pursuant to the CDA and stated:   

Section 230 of the CDA provides that “[n]o provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider,” (CDA § 230[c][1] ), and that “[n]o cause of action may be brought and no liability may be imposed under any State or local law that is inconsistent with this section” (Id., § 230[e][3] ).  “Interactive computer service” is defined as “any information service, system or access software provider that provides or enables computer access by multiple users to a computer server …” (CDA § 230[f][2] ).  An “information content provider” is “any person or entity that is responsible, in whole or in part, for the creation or development of information provided through the internet or any other information computer service” (CDA § 230[f][3] ).

Id. at 1.

Through the CDA, Congress granted interactive computer services immunity from liability for publishing false or defamatory material so long as the information was provided by another party.  Similarly, lawsuits seeking to hold a service provider liable for its exercise of a publisher’s traditional editorial functions-such as deciding whether to publish, withdraw, postpone or alter content-are barred.  However, an internet computer service is liable for its own speech, or when it develops information.

Id. at 2.

The Court held that the plaintiff’s defamation claim was barred by the CDA because defendant was an interactive computer service as defined under the CDA and was not considered an internet content provider.  The allegedly defamatory content was supplied by a third party information content provider and consisted of a message board posting.  Id.  Thus, the Court granted defendant’s motion to dismiss plaintiff’s complaint.       


© 2009 Nissenbaum Law Group, LLC

One Cannot Use Someone Else’s Trademark under the “Historical Use” Exception Unless it is True Historical Use.

On September 2, 2010, the United States Court of Appeals, Fourth Circuit, decided a case that discussed the Historical Use Exception to the Trademark laws. That exception allows a trademark to be used by someone other than the legal owner of it if it is included in an historical work. It is essecually an exception that provides for Fair Use of the trademark.

Specifically, the Court in Bouchat v. Baltimore Ravens Limited Partnership, et al. –F.3d–, 2010 WL 3440867 (C.A.4 (Md.)) held that the Ravens and the NFL did not establish fair use of the Flying B logo in the highlight films sold by the NFL and the highlight film played during the Ravens’ home football games.  The Court analyzed the four statutory factors of fair use as listed in 17 U.S.C.§ 107, which are:  (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.  Although the Court considered all four factors, it primarily analyzed the first factor, purpose and character of the use, and defendants’ alleged defense of historical use of the logo.  The Court stated:    
There is no transformative purpose behind the depiction of the Flying B logo in the highlight films.  The use of the logo in the films serves the same purpose that it did when defendants first infringed Bouchat’s copyrighted Shield logo design: the Flying B logo identifies the football player wearing it with the Baltimore Ravens.  The simple act of filming the game in which the copyrighted work was displayed did not add something new to the logo.  It did not alter the logo with new expression, meaning or message.  The films capture the logo as it originally appeared, and the logo remains a symbol identifying the Ravens.  While the films no doubt add to the historical record of Ravens play, the use of the logo in those films simply fulfilled its purpose of identifying the team.  The logo continues to fulfill that purpose whenever a highlight film is shown.    

Id. at 4.

Simply filming football games that include the copyrighted logo does not transform the purpose behind the logo’s use into a historical one.  Defendants point to the dramatic editing, music, and narration in the highlight films in an attempt to show a transformative use for the logo.  But none of these effects transform the purpose behind the display of the logo.  The narrator in the films never comments on the controversy surrounding the use of the Flying B logo. Nor are the films a documentary on the history of the Ravens logo.  Instead, the films simply capture highlights of three Ravens seasons and necessarily portray the Flying B logo as it was actually used to identify the Ravens team.


The Court held that the “Ravens and the NFL originally violated Bouchat’s copyright by using his logo as the Ravens logo. Highlight films that come along later and depict that same use, without transformation, cannot stand as a fair use.”  Id. at 8.


© 2009 Nissenbaum Law Group, LLC