Teachbook, a social and professional networking Web site dedicated to teachers, successfully moved to dismiss Facebook's trademark infringement claims by arguing that it was not subject to personal jurisdiction in California. Facebook, Inc. v. Teachbook.com, LLC, No. CV 10-03654 RMW, 2011 WL 1672464 (N.D. Cal. May 3, 2011). The District Court for the Northern District of California held that although Facebook presented sufficient evidence to show that Teachbook intentionally adopted a "confusingly similar trademark," it did not purposefully avail itself of doing business in California because it did not register users in that state.
Facebook brought suit against the start-up networking site for trademark infringement and dilution of the Facebook mark. In doing so, Facebook alleged that the use of a "--BOOK" mark by another social networking site would "confuse consumers and dilute the Facebook brand." Teachbook maintained, "somewhat implausibly," that its mark was chosen without consideration of the Facebook name, but instead, was based on "the connection between teachers and books." In laying a jurisdictional foundation, Facebook argued that the Northern District of California had personal jurisdiction over Teachbook because it intentionally infringed on a mark held by the Palo Alto company and caused it to suffer injuries in California.
Applying well-established principles of due process, the Court set forth the three prong test for establishing specific personal jurisdiction: "(1) The non-resident defendant must purposefully direct activities or consummate some transaction with the forum or resident thereof; . . . (2) the claim must be one which arises out of or is related to the defendant's forum-related activities; and (3) the exercise of jurisdiction must comport with fair play and substantial justice." To establish the first prong of this analysis, the Court applied the Calder effects test, which confers personal jurisdiction based on the defendant's intentional acts directed at the forum and the defendant's knowledge that harm is likely to be suffered by the plaintiff in the forum state.
Despite Facebook's argument that it made a prima facie showing to satisfy the Calder effects test, the Court held that Facebook fell short of its requirement by failing to establish that Teachbook "expressly aimed" its conduct at the forum. In doing so, the Court noted that "[t]he Ninth Circuit has repeatedly confirmed that Calder 'cannot stand for the broad proposition that a foreign act with foreseeable effects in the forum state always gives rise to specific [personal] jurisdiction.'" The Court gave great weight to the fact that Teachbook did not register users in California and that "even if Teachbook intended to compete with a California company, it intended to compete for users who were not in California."
Citing to recent case law interpreting the "expressly aimed" requirement, the Court drew a distinction between cases where the defendant infringed on a mark to compete with the plaintiff in the forum, thus conferring jurisdiction on the forum, versus a defendant infringing on a mark but directing the harm to markets outside of the forum. Because Teachbook's conduct was not "purposefully directed at California," the Court held that Facebook "failed to identify 'something more' than foreseeable effects in the forum." Accordingly, the Court granted Teachbook's motion to dismiss for lack of personal jurisdiction.