Williams Sonoma, Inc. v Online Marketing Servs., Ltd., 2008 U.S. Dist. LEXIS 16544 (Mar. 4, 2008)
Facts: Williams Sonoma, Inc. (WSI) is the owner of the “Pottery Barn†family of marks. Online Marketing Service (OMS) owns, operates, and hosts a variety of websites with the extension “filthserver.com.†After OMS used WSI’s marks on its websites, WSI sued OMS for trademark infringement and dilution. OMS was properly served by WSI, however, OMS never appeared before the United States District Court for the Northern District of California. Despite OMS’s failure to appear, the Court ordered supplemental briefing on the issue of personal jurisdiction over OMS.
Holding: There is personal jurisdiction over OMS, WSI’s motion for default judgment is granted, and OMS is permanently enjoined from infringing or diluting in any manner WSI’s “Pottery Barn†family of marks.
Reasoning: In light of OMS’s absence, the Court concluded that WSI need only make a prima facie showing that personal jurisdiction exists. The Court applied the “effects†test set forth in Calder v. Jones to determine if OMS had “purposefully availed†itself to California. Under that test, the purposeful availment prong can be satisfied if the defendant is alleged to have (1) committed an intentional act; (2) expressly aimed at the forum state; (3) causing harm, the brunt of which is suffered, and which the defendant knows is likely to be suffered, in the forum state. The plaintiff must establish “something more†than foreseeable effects in the forum state arising from foreign acts. Specifically, the plaintiff must show that a defendant “engaged in wrongful conduct targeted at a plaintiff whom the defendant knows to be a resident of the forum state.†See Bancroft & Masters, Inc. v. Augusta National, Inc. Here, the Court found that OMS committed an intentional act because it infringed WSI’s trademarks. The Court also concluded that there was sufficient evidence that OMS targeted WSI, which has its principal place of business in California, and that OMS’s contacts with California were not merely fortuitous. Further, WSI has demonstrated that it has suffered harm as a result of OMS’s actions. The Court also concluded that WSI had demonstrated that (1) its claim arose out of OMS’s forum-related activities and (2) the exercise of jurisdiction over OMS was reasonable. Therefore, the Court ultimately held that it possessed personal jurisdiction over OMS and granted WSI’s motion for default judgment.
Analysis: Ultimately, the Court reached the proper decision using the appropriate reasoning. It correctly applied the Calder’s effects test to determine that OMS had “purposefully availed†itself to California. My only complaint with the Court’s opinion is the brief mention it gives to the second and third prongs of the personal jurisdiction test. While the Court had specific jurisdiction over OMS and that jurisdiction was reasonable, the Court simply concludes this finding in a brief, two-sentence statement at the conclusion of its opinion. But the Court did reach the proper conclusion. The interesting part of this case now becomes whether WSI will ever be able to enforce the judgment against OMS. If WSI was able to serve OMS, then it seems likely that WSI will be able to track OMS down. However, OMS seems like a very shady operation that will do everything in its power to elude the enforcement of this Court’s judgment.
Facts: Williams Sonoma, Inc. (WSI) is the owner of the “Pottery Barn†family of marks. Online Marketing Service (OMS) owns, operates, and hosts a variety of websites with the extension “filthserver.com.†After OMS used WSI’s marks on its websites, WSI sued OMS for trademark infringement and dilution. OMS was properly served by WSI, however, OMS never appeared before the United States District Court for the Northern District of California. Despite OMS’s failure to appear, the Court ordered supplemental briefing on the issue of personal jurisdiction over OMS.
Holding: There is personal jurisdiction over OMS, WSI’s motion for default judgment is granted, and OMS is permanently enjoined from infringing or diluting in any manner WSI’s “Pottery Barn†family of marks.
Reasoning: In light of OMS’s absence, the Court concluded that WSI need only make a prima facie showing that personal jurisdiction exists. The Court applied the “effects†test set forth in Calder v. Jones to determine if OMS had “purposefully availed†itself to California. Under that test, the purposeful availment prong can be satisfied if the defendant is alleged to have (1) committed an intentional act; (2) expressly aimed at the forum state; (3) causing harm, the brunt of which is suffered, and which the defendant knows is likely to be suffered, in the forum state. The plaintiff must establish “something more†than foreseeable effects in the forum state arising from foreign acts. Specifically, the plaintiff must show that a defendant “engaged in wrongful conduct targeted at a plaintiff whom the defendant knows to be a resident of the forum state.†See Bancroft & Masters, Inc. v. Augusta National, Inc. Here, the Court found that OMS committed an intentional act because it infringed WSI’s trademarks. The Court also concluded that there was sufficient evidence that OMS targeted WSI, which has its principal place of business in California, and that OMS’s contacts with California were not merely fortuitous. Further, WSI has demonstrated that it has suffered harm as a result of OMS’s actions. The Court also concluded that WSI had demonstrated that (1) its claim arose out of OMS’s forum-related activities and (2) the exercise of jurisdiction over OMS was reasonable. Therefore, the Court ultimately held that it possessed personal jurisdiction over OMS and granted WSI’s motion for default judgment.
Analysis: Ultimately, the Court reached the proper decision using the appropriate reasoning. It correctly applied the Calder’s effects test to determine that OMS had “purposefully availed†itself to California. My only complaint with the Court’s opinion is the brief mention it gives to the second and third prongs of the personal jurisdiction test. While the Court had specific jurisdiction over OMS and that jurisdiction was reasonable, the Court simply concludes this finding in a brief, two-sentence statement at the conclusion of its opinion. But the Court did reach the proper conclusion. The interesting part of this case now becomes whether WSI will ever be able to enforce the judgment against OMS. If WSI was able to serve OMS, then it seems likely that WSI will be able to track OMS down. However, OMS seems like a very shady operation that will do everything in its power to elude the enforcement of this Court’s judgment.