Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.
1. In a recent opinion from the First Circuit Court of Appeals, the Court affirmed the District of Massachusetts’ dismissal of a trademark infringement case for lack of personal jurisdiction. The defendant in the case was a Canadian company that operated a “primarily informational” website accessible by Massachusetts residents and had offices in Colorado and in New York. The First Circuit referred to this purposeful availment argument as a “dead end.” The plaintiff also tried a Calder effects argument that the defendant’s allegedly intentional use of the trademark carried with it the foreseeability of injury to the plaintiff in Massachusetts. The Court also rejected this argument because there was nothing in the record to show that the defendant knew the plaintiff even existed. Thus, the Court affirmed the dismissal for lack of personal jurisdiction. The takeaway here is that forum selection should be guided by evidence (i.e., if the defendant had a presence in Colorado or New York, perhaps suing there would have been better). In addition, when relying on a website for personal jurisdiction, a merely information website is unlikely to pass master. Furthermore, when relying on the Calder effects test for purposeful availment, one must show that the defendant intended to harm an entity known to be a resident of the forum state, like here at page 1108.
2. In a recent opinion from the Fifth Circuit Court of Appeals, the Court reversed a district court’s decision to take judicial notice of an archived web page from the Wayback Machine with terms for an agreement thereon. The Court reasoned that the archived web page was not self-authenticating, and was not otherwise authenticated; therefore, it was not a document whose accuracy could not reasonably be questioned, as required under Fed.R.Evid. 201(b)(2) for taking judicial notice. The Court did note the availability of authentication of the archived web page through the Wayback Machine’s procedures, which was not done here, but may have led to a different result. The takeaway here is that the Wayback Machine can be useful, but any web pages captured from it likely need to be properly authenticated in order to be used as evidence in a case.
3. More sanctions imposed by the United States Patent and Trademark Office (USPTO) against several companies for filing fraudulent trademark applications as well as defrauding the applicants listed on those applications. The takeaway here is obviously not to play around with the USPTO in connection with any trademark filings, but also to counsel clients to be extremely wary of entities advertising marketing services that include trademark filings.