(This isn't about copyright and only peripherally related to trademark, so those who aren't interested should hit their friendly Delete button.)
On Wed, 28 May 97, Robert Cumbow <cumbr[_at_]perkinscoie.com> wrote:
>
> Digital Equipment Corp. v. Altavista Technology Inc., Civil Action
> No. 96 12192NG (D.Mass., 3/12/97): Plaintiff Digital Equipment,
> operator of the AltaVista search engine, purchased all rights to
> the AltaVista name from defendant Altavista Technology, then
> licensed back the name rights for certain limited purposes,
> including Altavista's continued use of the "altavista.com" domain
> name. Digital's lawsuit, filed in Massachusetts, alleging that
> Altavista is in breach of the terms of the license, was challenged
> on jurisdictional grounds. The court held that jurisdiction was
> proper in Massachusetts since, in addition to its Web site,
> Altavista also entered into a contract in Massachusetts; allegedly
> breached that contract, causing harm in Massachusetts; solicits
> advertising and sells products in Massachusetts; has sold products
> from its Web site to Massachusetts residents; and allegedly
> infringed Digital's ALTAVISTA trademark, causing confusion
> in Massachusetts.
AltaVista (ATI) did not enter into a contract *in* Massachusetts. Rather, it entered into a contract *with* a MA corporation.
> the wide range of contacts kept the court from reaching the
> more troublesome issue of personal jurisdiction predicated solely
> on a Web site.
Perhaps, but the court seemed to have some conflict on that score. At certain points in the opinion it said it was not deciding the jurisdictional issue solely on the web site, but other comments seemed to indicate that the web site was the most important element. So, it's not so much that without the contract and the alleged sales jurisdiction would not be established, as it is without the web site jurisdiction could not be found (and there would be no controversy anyway).
For example:
"While ATI may have tried to structure its relationship with Digital so that it would not be susceptible to jurisdiction in Massachusetts, its subsequent Web activities bring ATI "over the line," and render jurisdiction appropriate."
-and- (in a list of factors)
"ATI operates a Web-site accessible to Massachusetts computer-users."
-and-
"ATI's contract with Digital, which governed the use of the Web-site with the address "www.altavista.com," was the vehicle through which it solicited business from Massachusetts residents."
It is at this point that the court hung its hat on the infamous three sales ATI supposedly made to MA residents. Three sales, not a helluva lot by most people's standards, forced the court to discuss later at length whether that was enough (see below). The court confused the issue even further by saying in a footnote that it didn't really matter whether the sales were implemented through the web site or some other mechanism like an 800 number. It was the web site that triggered the sales. And the court again repeated the litany, "a Web-site is accessible by people in Massachusetts."
The court seemed to be sensitive to the fact that simply having a web site should not create jurisdiction in any state, but other than the three sales, there seemed to be no proof that (a) ATI intended contact with MA or (b) how much contact there really was. In fact, earlier in the opinion the court discussed the millions of hits *Digital's* AltaVista site got each day, but I found nothing in the opinion that addressed how much activity ATI's site got.
In a fascinating attempt at analogy, the court said the following about web sites and other forms of communication:
"Using the Internet under the circumstances of this case is as much knowingly "sending" into Massachusetts the allegedly infringing and therefore tortious uses of Digital's trademark as is a telex, mail, or telephonic transmission; [footnote omitted] the only difference is that the transmission is not "singularly" directed at Massachusetts, in the way that a letter addressed to this state, or a telephone or fax number with a Massachusetts area code would be. But ATI "knows" that its Web-site reaches residents of Massachusetts who choose to access it, just as surely as it "knows" any letter or telephone call is likely to reach its destination."
As I read the above, web sites are like telephone communications, only they are different, only they are the same. Uh-huh. A person who makes a telephone call knows the precise destination (bar forwarding) and knows the person is reached when the other person answers. A person who makes a telephone call specifically targets that destination. Some commercial web sites clearly target local business, whereas with others the scope may be broader or less clear. This is what causes courts fits, but to say that ATI *knows* that its site will reach MA residents who access it is tautological. It is simply repeating that the site is accessible to MA residents, and that, in itself, says nothing at all, no matter how many times it is repeated.
As I mentioned earlier, the three sales caused the court some difficulty. Without any detail about what the three sales were or how they were arrived at, the court analogized the case to Tatro v. Manor Care, Inc., 416 Mass. 763 (1994), and distinguished it from Droukas v. Divers Training Academy, Inc., 375 Mass. 149 (1978), two cases that came out different ways on the basis of minor contacts. This e-mail is already too long, so I'll spare everyone the court's analysis of those cases and simply say that I found it unconvincing.
As a final addendum on the personal jurisdiction issue, I am not necessarily saying I disagreed with the court's result. I just found some of its logic unpersuasive.
> As far as I know, the merits of the case in chief have not yet been
> decided.
Although no *final* adjudication has been reached, a preliminary injunction issued enjoining ATI from using the AltaVista trademark in various ways, including a specific disclaimer on ATI's web site.
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