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District Court Orders Facebook to Show Cause as to Why Trademark Action Against Faceporn Website Should Not Be Dismissed for Lack of Personal Jurisdiction

Friday, December 16, 2011

Ashok Chandra | Bloomberg Law Facebook, Inc. v. Pedersen, No. 10-CV-04673, 2011 BL 315913 (N.D. Cal. Nov. 29, 2011) The U.S. District Court for the Northern District of California ordered Facebook to show cause as to why the court should not dismiss Facebook's trademark infringement case against a Norwegian company and its principal for lack of personal jurisdiction. In response, Facebook asserted that personal jurisdiction is proper because the defendants targeted a California company with a distinctive brand.

Facebook Alleges FACEPORN Infringes Its Marks

The court observed that Facebook provides an online networking service that allows users to create profiles and upload content. Facebook owns 10 trademark registrations, and has 17 pending in the United States, for the FACEBOOK mark. Defendant Thomas Peterson is the principal of Retro Invent, a Norwegian company that operates www.Faceporn.com, a website that features pornographic content and allows users to upload content and create profiles. The court noted that every page on the website contains the FACEPORN mark. On January 7, 2011, Facebook filed a complaint against Pederson and Retro Invent alleging that defendants' mark infringed its FACEBOOK and WALL marks. Facebook served defendants with a summons in Norway in accord with the protocols of the Hague convention. Defendants did not respond to the complaint, and Facebook moved for entry of a default judgment.

Court Finds Facebook Failed to Allege "Something More"

The court observed that for it to have personal jurisdiction over the defendants, the defendants must have purposefully availed themselves of the protections of the laws of the forum. See Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797, 801-02 (9th Cir. 2001). The court noted that for a trademark dilution claim, the U.S. Court of Appeals for the Ninth Circuit requires "something more" than "simply registering someone else's trademark as a domain name and posting a web site on the Internet" in order to find that a defendant expressly aimed his actions at a specific forum. Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316,1322 (9th Cir. 1998). In order to target a forum, a website must appeal to an audience in the forum and must also profit from the forum. The court observed that Facebook failed to allege that defendants' actions satisfied the "something more" requirement. Facebook had alleged that "Faceporn is a highly interactive website that has 250 users in California and 1000 users in the United States, and that Faceporn targeted 'a U.S. audience' by registering its website with a domain name ending in '.com.'" Facebook at 3. The court noted, however, that Facebook's allegations failed to show that California's Faceporn users were "'an integral component' of Faceporn's business model and profitability." Id. Noting that not all material on the Internet is aimed at every state where the information is accessed, the court found that jurisdiction over the defendants was not proper, and ordered Facebook to show cause as to why the action should not be dismissed.

Facebook Responds to Show Cause Order

On December 12, 2011, Facebook filed a Response to Order to Show Cause Re Personal Jurisdiction. In the Response, Facebook argued that it has satisfied the "something more" requirement by showing that the defendants targeted a California company's distinctive brand. Facebook first asserted that the purposeful direction prong was satisfied because defendants targeted a California resident. Facebook then argued that, with regard to "express aiming," a court must examine "whether the defendant 'individually targeted' a plaintiff known to be a forum resident." Response at 2 (citing Mavrix Photo, Inc. v. Brand Technologies, Inc., 647 F.3d 1218, 1229 (9th Cir. 2011)). Facebook noted that in Panavision v. Toeppen, 141 F.3d 1316, 1322 (9th Cir. 1998), the court found that the "something more" standard was satisfied when a defendant registered domains that infringed the intellectual property of a resident of the forum and later sought payment from plaintiff for those domains. Facebook argued that defendants intentionally targeted it when they adopted their infringing mark. Facebook asserted that the defendants' actions went far beyond merely using infringing material, but rather, that defendants copied aspects of the Facebook website to make the Faceporn site "visually and functionally similar to Facebook," including "a similar layout and color scheme to that of Facebook, and even using Facebook's WALL trademark in the same manner it was used by Facebook." Response at 3. Facebook further noted that Faceporn also allows users to find friends, send messages, and share photos and videos. Additionally, Faceporn specifically makes reference to Facebook by noting that, unlike Facebook, Faceporn does not censor its content. Facebook therefore asserted that the court has personal jurisdiction over the defendants. DisclaimerThis document and any discussions set forth herein are for informational purposes only, and should not be construed as legal advice, which has to be addressed to particular facts and circumstances involved in any given situation. Review or use of the document and any discussions does not create an attorney-client relationship with the author or publisher. To the extent that this document may contain suggested provisions, they will require modification to suit a particular transaction, jurisdiction or situation. Please consult with an attorney with the appropriate level of experience if you have any questions. Any tax information contained in the document or discussions is not intended to be used, and cannot be used, for purposes of avoiding penalties imposed under the United States Internal Revenue Code. Any opinions expressed are those of the author. The Bureau of National Affairs, Inc. and its affiliated entities do not take responsibility for the content in this document or discussions and do not make any representation or warranty as to their completeness or accuracy.©2014 The Bureau of National Affairs, Inc. All rights reserved. Bloomberg Law Reports ® is a registered trademark and service mark of The Bureau of National Affairs, Inc.

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