N. Am. Software, Inc. v. James I. Black & Co.
2011 Ohio 3376
Ohio Ct. App.2011Background
- NAS is an Ohio corporation developing the Helper Series software and licenses it from its Cincinnati office.
- JIBC is a Florida corporation that purchased licenses for multiple users to operate Helper Series.
- NAS alleges 1999–2007 contacts with JIBC include extensive communications and five occasions of sending client data to NAS for integration.
- In 2002 NAS mailed a Version 4.6 licensing update with a click-wrap agreement that required payment and license revocation of prior licenses; the agreement had an Ohio choice-of-law provision but no forum clause.
- NAS alleged 2004 arrearage and ongoing 2005 unauthorized use of an older version; the Hamilton County Municipal Court dismissed for lack of personal jurisdiction; NAS appeals.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether NAS claims are preempted by the Copyright Act. | NAS claims seek damages for a promise to pay, an extra element. | JIBC argues preemption applies to copyright-based claims. | NAS claims not fully preempted; extra element survives. |
| Whether the Ohio long-arm statute and Civ.R. 4.3(A) confer jurisdiction over JIBC. | NAS asserts JIBC transacted business in Ohio. | JIBC contends no substantial connection with Ohio. | Trial court correctly found lack of personal jurisdiction. |
| Whether exercising specific jurisdiction would comply with due process. | JIBC's Ohio contacts relate to NAS's claims. | Contacts insufficient to satisfy minimum contacts and reasonableness. | Jurisdiction would not satisfy due process. |
Key Cases Cited
- Burger King Corp. v. Rudzewicz, 471 U.S. 462 (U.S. 1985) (purposeful availment and fair play in jurisdictional analysis)
- Kentucky Oaks Mall Co. v. Mitchell’s Formal Wear, Inc., 53 Ohio St.3d 73 (1989) (transacted business in Ohio via telephone/lease-like obligations with payments to Ohio)
- U.S. Sprint Communications Co., Ltd. Partnership v. Mr. K’s Foods, Inc., 68 Ohio St.3d 181 (1994) (two-step long-arm jurisdiction and relatedness standards)
- Kauffman Racing Equip., LLC v. Roberts, 126 Ohio St.3d 81 (2010) (three-factor due process specific-jurisdiction test; minimum contacts)
- Southern Machine Co. v. Mohasco Indus., Inc., 401 F.2d 374 (6th Cir. 1968) (three-factor Mohasco test for specific jurisdiction)
- Goldstein v. Christiansen, 70 Ohio St.3d 232 (1994) (preemption and rights-courts interplay; statutory interpretation)