Subject Matter Jurisdiction Personal Jurisdiction Issue Jurisdiction F.R.C.P. 4(k)(2): “Federal Long-arm statute”

General Jurisdiction No contact w/ forum state. Then need systematic and continuous contacts with forum state, longstanding business Specific Jurisdiction Defendant’s contacts isolated or sporadic. But the contacts arise out of the cause of action Federal Long Arm Foreign entity Federal claim (IP) Needs minimum contact with the US as a whole, not any one state.

(2) Federal Claim Outside State-Court Jurisdiction. For a claim that arises under federal law, serving a summons or filing a waiver of service establishes personal jurisdiction over a defendant if: (A) the defendant is not subject to jurisdiction in any state's courts of general jurisdiction; and (B) exercising jurisdiction is consistent with the United States Constitution and laws.

1.Holland America Line Inc. v. Wärtsilä N. America, Inc., 485 F.3d 450 (9 th Cir. 2007) (jurisdiction does not comport with Due Process Clause because there was no connection with United States except one-time presentation at trade meeting). 2.Cello Holdings, L.L.C. & Cello Music & Film Sys., Inc. v. Lawrence-Dahl Cos., 89 F.Supp.2d 464 (S.D.N.Y. 2000) (due process was not violated through exercise of personal jurisdiction in trademark dilution case)

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 No specific jurisdiction in California  No federal long arm jurisdiction  Court did not buy Pebble Beach’s argument that nearly identical domain name and general knowledge of the Pebble Beach golf course were expressly aimed at the forum state. Caddy had a legitimate business.  Note the court’s discussion of Panavision International v. Toeppen, 938 F.Supp. 616 (C.D.Cal.1996) – Panavision, where jurisdiction was found, was different because the defendant purchased a domain name that was identical to Plaintiff’s trademark with a scheme to extort money from plaintiff.

“Plaintiff has not demonstrated that it acted in good faith. Plaintiff has exhibited a pattern of delay, both in this case and in prior actions against Defendants. To the Court's chagrin, Plaintiff's counsel boasts that in the over 40 copyright infringement actions it has brought against Ross Stores, it has timely served defendants "a full 90% of the time[.]" This Court is not a baseball diamond. Failing timely to serve defendants 10% of the time is not a good "batting average;" it is unacceptable.”

 Be aware of the copyright registration vs application split in the Federal Circuits. Copyright trolls are generally knowledgeable of the different treatment but many other IP practitioners are not.  Keep up with Federal Circuit practice in patent cases, particularly in rapidly changing areas of the law like damages and patent eligibility.

Copyright No registration needed to bring suit Opportunity for unexpected counterclaim Trademark No “use in commerce” necessary to get registration

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Jason Nardiello & Gaston Kroub Locke Lord, LLP