17 F. Supp. 3d 107
D. Mass.2014Background
- Media3 Technologies, LLC (Massachusetts) owns the registered mark “media3” and provides internet/cloud services; it alleges use of the mark since 1995 and federal registration in 2013.
- CableSouth Media III, LLC (Tennessee) provides cable/Internet/phone services in LA, AR, and MS and operates www.mymedia3.com; it has never provided services, employees, property, or advertising targeted to Massachusetts.
- Beginning before 2011 Media3 began receiving misdirected calls and communications from CableSouth’s customers and alleges business disruption and reputational harm in Massachusetts.
- Media3 contacted CableSouth in 2011–2013 about the confusion; Media3 alleges CableSouth knew of Media3 and of its Massachusetts base but continued use of the mark and later expanded into cloud services.
- Media3 sued in D. Mass. asserting Lanham Act, Massachusetts trademark statute, and common-law claims; CableSouth moved to dismiss for lack of personal jurisdiction and improper venue or, alternatively, transfer to the W.D. Tenn.
- The court considered the prima facie record and granted CableSouth’s Rule 12(b)(2) motion, holding Massachusetts courts lack specific personal jurisdiction over CableSouth.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether D. Mass. has specific personal jurisdiction over CableSouth for trademark claims | CableSouth’s website used the “media3” mark accessible in MA and CableSouth knew injury would be felt in MA; continued use after notice satisfies purposeful availment | CableSouth never targeted MA, has no property/employees/customers there, and mere website availability is insufficient for purposeful availment | No personal jurisdiction — website accessibility and third‑party contacts alone do not show purposeful availment |
| Whether defendant’s knowledge that harm would be felt in MA suffices for jurisdiction (analogy to Calder effects test) | Calder supports jurisdiction where defendant knew the brunt of injury would be felt in MA | Calder requires conduct expressly aimed at the forum; trademark cases differ and plaintiff alleged no intentional targeting of MA | Calder inapplicable: plaintiff did not allege intentional conduct expressly aimed at MA; effects alone insufficient |
| Whether third‑party contacts (misdirected calls) can supply the required contacts | Continuing confusion and customer calls into MA after notice show purposeful contacts | Unilateral acts of third parties do not establish defendant’s voluntary contacts with MA | Third‑party unilateral actions (customers calling plaintiff) cannot substitute for defendant’s purposeful contacts |
| Whether website interactivity/commerciality alone creates jurisdiction | Plaintiff: interactive/commercial website causing harm in MA suffices | Defendant: website targets LA/AR/MS; generic internet availability is insufficient | Website accessibility and generic advertising do not, by themselves, satisfy purposeful availment; something more required |
Key Cases Cited
- International Shoe Co. v. Washington, 326 U.S. 310 (minimum contacts standard for due process jurisdiction)
- Calder v. Jones, 465 U.S. 783 (court may exercise jurisdiction when tortious conduct is expressly aimed at the forum causing foreseeable injury there)
- Cossaboon v. Maine Medical Center, 600 F.3d 25 (interactive website alone does not establish purposeful availment; need evidence of targeted commercial transactions)
- Daynard v. Ness, Motley, Loadholt, Richardson & Poole, P.A., 290 F.3d 42 (prima facie standard on Rule 12(b)(2) and plaintiff’s burden to plead jurisdictional facts)
- United States v. Swiss American Bank, 274 F.3d 610 (distinguishing specific and general jurisdiction analyses)