520 F.Supp.3d 87
D. Mass.2021Background
- Motus, LLC (formerly Corporate Reimbursement Services, Inc.), a Delaware LLC headquartered in Boston, alleges trademark rights in the phrase CORPORATE REIMBURSEMENT SERVICES and claims goodwill from prior use.
- CarData Consultants, Inc. is a Canadian corporation (offices in Ontario, New York, Colorado) with no physical presence or known clients in Massachusetts.
- Motus sued CarData after CarData used the phrase CORPORATE REIMBURSEMENT SERVICES in a webpage "meta title," asserting federal and state trademark infringement, dilution, unfair competition and unjust enrichment claims.
- CarData moved to dismiss for lack of personal jurisdiction and failure to state a claim, arguing the phrase is generic and that CarData lacks contacts with Massachusetts beyond a nationally accessible website.
- The district court applied the prima facie standard, concluded Motus failed to show "something more" than an accessible website (no purposeful targeting of Massachusetts or known intent to harm Motus there), denied jurisdictional discovery, and dismissed the complaint without prejudice for lack of personal jurisdiction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Personal jurisdiction (specific) via website contacts | Motus: CarData’s interactive website is accessible in MA and Motus is a MA domiciliary, so specific jurisdiction exists | CarData: No offices, clients, or targeted activity in MA; mere website accessibility is insufficient | Court: Dismissed for lack of personal jurisdiction — no purposeful availment or intentional targeting of MA; website alone not enough |
| Federal-question nationwide service of process | Motus: Federal Lanham Act claims allow suit in federal court; asserts contacts with U.S. suffice | CarData: Lanham Act does not authorize nationwide service; forum long-arm governs | Court: Where Lanham Act is silent, jurisdictional inquiry focuses on defendant’s contacts with MA (forum), so MA long-arm/constitutional analysis controls |
| Jurisdictional discovery | Motus: Requested discovery to show CarData’s contacts | CarData: Opposed; argued plaintiff offered no factual basis | Court: Denied — Motus did not show a colorable claim or explain what discovery would likely reveal |
| Merits (trademark protectability/genericness) | Motus: Claims rights and goodwill in the phrase and alleges infringement | CarData: Argues the phrase is generic and unprotectable | Court: Did not reach the merits because jurisdictional dismissal was granted |
Key Cases Cited
- Cossart v. United Excel Corp., 804 F.3d 13 (1st Cir. 2015) (plaintiff bears burden to make prima facie showing of personal jurisdiction)
- United States v. Swiss Am. Bank, Ltd., 274 F.3d 610 (1st Cir. 2001) (minimum contacts standard in federal-question cases and guidance on nationwide service)
- A Corp. v. All Am. Plumbing, Inc., 812 F.3d 54 (1st Cir. 2016) (prima facie standard; treat properly documented evidentiary proffers as true)
- Philips v. Prairie Eye Center, 530 F.3d 22 (1st Cir. 2008) (plaintiff must adduce evidence of specific facts to establish jurisdiction)
- Chen v. United States Sports Academy, Inc., 956 F.3d 45 (1st Cir. 2020) (website contacts and purposeful availment analysis)
- Cossaboon v. Maine Med. Ctr., 600 F.3d 25 (1st Cir. 2010) (internet contacts and purposeful availment framework)
- Zippo Mfg. Co. v. Zippo Dot Com, Inc., 952 F. Supp. 1119 (W.D. Pa. 1997) (website interactivity test influential in jurisdictional analyses)
- Calder v. Jones, 465 U.S. 783 (1984) (intentional torts expressly aimed at the forum can establish jurisdiction)
- Astro–Med, Inc. v. Nihon Kohden Am., Inc., 591 F.3d 1 (1st Cir. 2009) (relatedness, purposeful availment, reasonableness factors for specific jurisdiction)
- Daynard v. Ness, Motley, Loadholt, Richardson & Poole, P.A., 290 F.3d 42 (1st Cir. 2002) (long-arm and constitutional analysis in diversity cases)