946 F. Supp. 2d 182
D. Mass.2012Background
- SLACC and SLACCUS sue SBI and SFS for trademark infringement, false designation, dilution, and common-law trademark claims based on use of “Sun” marks.
- Defendants are New Jersey corporations (SBI and SFS) with no Massachusetts registration; their services are marketed nationwide via a website and through a transfer agent with Massachusetts presence.
- SLACC alleges widespread U.S. use of “Sun” marks and that SBI/SFS market “Sun National Bank,” “Sun Financial Services,” and “Sun Home Loans” online, including to Massachusetts residents.
- Massachusetts long-arm statute § 3 provides both transactional and tort-based bases for jurisdiction; the Court focuses on whether defendants’ Massachusetts activities trigger jurisdiction.
- Estate of procedural posture: plaintiffs allege jurisdiction; defendants move to dismiss for lack of personal jurisdiction and improper venue; the court grants the motion on jurisdiction grounds.
- Transfer agent Computershare operates in Massachusetts; plaintiffs seek to impute agent contacts to defendants for jurisdictional purposes.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether MA long-arm §3(a) provides jurisdiction | SLACC asserts website and MA-targeted activities justify §3(a) | Defendants deny purposeful Massachusetts targeting | No jurisdiction under §3(a) |
| Whether MA long-arm §3(d) provides jurisdiction via transfer agent | Transfer-agent actions bind defendants to MA | Agent actions do not show persistent conduct or substantial MA revenue | No jurisdiction under §3(d) |
| Whether due process allows jurisdiction for internet activities | Infringement should trigger MA injury location | Website not targeted; minimal MA contacts | No due process jurisdiction (not purposeful availment) |
| Whether jurisdictional discovery should be allowed | Discovery could reveal MA revenue/contacts | Discovery unlikely to change jurisdiction outcome | Denied jurisdictional discovery |
| Whether venue is proper given lack of jurisdiction | Venue could be proper; not addressed if no PJ | Venue improper | Venue deemed improper as well (alternative reasoning) |
Key Cases Cited
- Roberts v. Legendary Marine Sales, 447 Mass. 860 (Mass. 2006) (limits of Massachusetts long-arm; internet activity alone insufficient)
- Intech, Inc. v. Triple “C” Marine Salvage, Inc., 444 Mass. 122 (Mass. 2005) (isolated internet transaction not jurisdictional under §3(a))
- Legendary Marine Sales, 447 Mass. 860 (Mass. 2006) (site not sufficient for jurisdiction absent purposeful solicitation)
- United Elec., Radio & Mach. Workers v. 163 Pleasant St. Corp., 960 F.2d 1080 (1st Cir. 1992) (agency imputation limits for transfer agents; not all actions bind clients)
- Cossaboon v. Maine Medical Center, 600 F.3d 25 (1st Cir. 2010) (interactive website alone not enough; must show purposeful transactions with forum residents)