UPDATE on Personal Jurisdiction and the Web

Digital Media

By Marie D'Amico

On April 9, 1997, the United States Court of Appeals for the Second Circuit in New York affirmed a dismissal (pursuant to Federal Rule of Civil Procedure 12(b)(2), lack of personal jurisdiction), against Bensusan Restaurant Corporation ("Bensusan"), operators in New York City, of a famous jazz club called "The Blue Note" against Richard B. King ("King"), a Missouri resident, who owns a club in Columbia, Missouri also called "The Blue Note." Bensusan alleged in his complaint that King was infringing the trademark Bensusan owned in "The Blue Note" and tried to sue King in the Southern District of New York alleging violations of the Federal Trademark Dilution Act of 1995, as well as common law unfair competition.

King has a disclaimer on his website that "The Blue Note, Columbia, Missouri, should not be confused in any way, shape, or form with Blue Note Records or the jazz club, Blue Note, located in New York. The CyberSpot is created to provide information for Columbia, Missouri area individuals only, and any other assumptions are purely coincidental."

The district court dismissed the complain, see 937 F. Supp. 295 (1996) in your local law library. Bensusan appealed. The Second Circuit Court of Appeals said that "[a]although we realize that attempting to apply established trademark law in the fast-developing world of the internet is somewhat like trying to board a moving bus, we believe that well-established doctrines of personal jurisdiction law support the result reached by the district court."

The district court ruled that King did not have sufficient contacts with New York to be sued by Bensusan in that forum. King did not transact business in New York, King did not commit any tortious acts in New York. The acts giving rise to Bensusan's lawsuit - the authorization and creation of King's website, the use of the words "The Blue Note," and the Blue Note logo on the website - were performed by persons physically present in the State of Missouri and not in New York. ThoughtPort Authority, Inc., a website design company, created King's website and all work done to create the website was done in Missouri.

The Court found that Columbia, Missouri is a small to medium sized city far distant both physically and substantively from Manhattan. It is principally a white-collar community, hosting among other institutions Stephens College, Columbia College, and the University of Missouri. It would appear to be an ideal location for a small cabaret featuring live entertainment, and King, and Columbia resident, undoubtedly found this to be so. The Court found that Bensusan did not prove that King received substantial revenues from interstate commerce, rather most of his commerce was local, particularly students from the University of Missouri.

This case was argued and won by Kerry L. Konrad, Esq., of the law firm of Simpson, Thatcher & Bartlett in New York City, 425 Lexington Avenue, New York, NY 10017-3954, Vox: (212) 455-2000. If you've got a similar case, call him. He's a top-notch litigator.

Questions? Send me email.

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