Finding lack of personal jurisdiction, the Northern District of California has dismissed trademark infringement and dilution claims brought by the social networking giant Facebook against Teachbook.com, a social and professional networking site for teachers. Facebook, Inc. v. Teachbook.com, LLC, No. CV-10-03654 RMW, 2011 WL 1672464 (N.D. Cal. May 3, 2011).
Facebook filed the action in California, alleging that Teachbook’s use of the “-book” mark on a competing social networking site was likely to confuse consumers and dilute the Facebook brand. Id. at 1. Indeed, Facebook alleged that Teachbook had selected the “-book” mark with the specific goal of competing with Facebook in the social networking market. Id.
Facebook asserted the California court had jurisdiction because Teachbook intentionally adopted the infringing mark to compete with Facebook, a Palo Alto-based company, which suffered injuries in its home district. Id. Teachbook, however, argued that it did not register California users and therefore did not intend to compete for Facebook’s California customers. Id. at 3.
The court agreed and held that Teachbook’s conduct was not purposefully directed at California. Id. The court applied the Supreme Court’s three-part “effects” test, which requires that the defendant (1) committed an intentional act, (2) expressly aimed at the forum state, and (3) caused harm that the defendant knew was likely to be suffered in that forum state. The court held that Teachbook’s conduct was not directed at California. Id. at 3-5. Rather, by not registering California users, “Teachbook took purposeful steps to avoid the California market” and did not “directly aim” at Facebook’s home forum.
Lesson Learned: While this decision appears to be nothing more than a speed bump as far as Facebook’s trademark claims against Teachbook.com go (Facebook has refiled in Illinois), it a good reminder that even though websites may be available everywhere, their owners are not subject to jurisdiction in all forums. Trademark owners are reminded to consider whether the website owner’s specific activities are directed at the forum state prior to bringing suit.