March 15, 2012
Facebook Faces Jurisdictional Hurdle in its Trademark Lawsuit Against Faceporn--Facebook v. Pedersen
[Post by Venkat Balasubramani]
Facebook v. Pedersen, 10-Cv-04673 (N.D. Cal.; March 2, 2012)
Facebook sued Pedersen, a resident of Norway, alleging that Pedersen's use of the "Faceporn" mark infringed on and diluted Facebook's trademarks. After the complaint was filed, Pedersen transferred ownership of the Faceporn website to Retro Invent, a Norwegian entity. The defendants were served via the Hague Convention, and when they failed to timely respond, Facebook moved for a default judgment. The court issued a show cause order directing Facebook to demonstrate that assertion of personal jurisdiction over Pedersen and Retro Invent was proper. (Here is my blog post flagging this order: "Facebook's Trademark Enforcement Effort Against 'Faceporn' Hits Jurisdictional Snag.") The magistrate judge finds that Facebook's response to the show cause order was insufficient, and he recommends that the lawsuit be dismissed for lack of personal jurisdiction.
Facebook relied on a broad argument that Faceporn intended to target Facebook and competed with Facebook for customers; therefore, under Calder's effects test, personal jurisdiction was proper. The subtext of Facebook's arguments is that "Facebook has a world famous mark and someone who infringes on Facebook's trademark even in a foreign jurisdiction must know that they are harming a California corporation." The court says that there is one problem with this argument: there is no evidence that Facebook and Faceporn compete in any way. As the court notes:
Facebook has not alleged any facts that support the notion that defendants have garnered any revenue from their operation of Faceporn at Facebook's expense or that Faceporn has diverted any of Facebook's potential customers. Instead, Facebook states conclusorily that defendants operate Faceporn "with a bad faith intent to profit" from Facebook's marks, but it alleges no facts to suggest that Faceporn has profited at all at Facebook's expense.
Facebook has been pretty active on the trademark front, suing among other sites Lamebook ("Lamebook Faces Down Facebook") and Teachbook ("Facebook's Trademark Suit Against Teachbook Survives Motion to Dismiss"). Interestingly, in both of these cases, Facebook was unsuccessful in having the dispute heard on its home turf. It lost a motion to transfer the Lamebook case (this lawsuit settled) and lost a jurisdictional motion in the Teachbook case (Facebook refiled that lawsuit in Illinois and the Illinois court rejected Teachbook's motion to dismiss).
Personal jurisdiction decisions are so idiosyncratic that they're not worth spending much time on. But it's interesting that the Mavrix case (where the Ninth Circuit held that locally targeted advertising can support the assertion of jurisdiction) has been cited at least a couple of times in orders granting motions to dismiss. It's also interesting that the court raises the personal jurisdiction issue in this case sua sponte. Maybe the Northern District of California judges are starting to see a pattern of overzealous enforcement efforts on Facebook's part?
"Facebook's Trademark Suit Against Teachbook Survives Motion to Dismiss"
Posted by Venkat at March 15, 2012 11:09 AM | Trademark