Bensusan Restaurant Corp., v. King, 937 F. Supp. 295 (S.D.N.Y.1996) (full-text).
Factual Background Edit
Bensusan Restaurant Corporation, the plaintiff, owned the Blue Note jazz club in New York’s Greenwich Village, and owned a federal trademark registration for the mark “THE BLUE NOTE.” The defendant, Richard King, operated “The Blue Note,” a small club in the college town of Columbia, Missouri, and had used that mark on a local basis since 1980 — several years prior to use of “Blue Note” by the now-famous New York club. Although the New York jazz club had obtained a federal registration for the Blue Note mark in 1985, the Missouri club could continue to use the name within its local area based on the Missouri club's prior use of the name.
In April 1996, the Missouri club began operation of a website (http//www.throughport.com/cyberspot) that offered general information about King’s club, including a calendar of events and ticketing information. Tickets could not be ordered via the Internet; instead, one could order tickets for an advertised event by telephone and then pick-up the tickets in person at a box office in Columbia, Missouri. The Missouri club’s website also included a hyperlink to the website for Greenwich Village’s Blue Note club, while also offering a disclaimer that "The Blue Note’s Cyberspot should not be confused with one of the world’s finest jazz clubs, the Blue Note, located in the heart of New York’s Greenwich Village. If you should find yourself in the Big Apple give them a visit.”
The New York jazz club viewed the Missouri club's website on the Internet as an expansion of use of the Blue Note name outside of the local area, and raised this objection with King. In response, King removed the second sentence of the disclaimer and the hyperlink from his website.
The operator of the New York jazz club sued the operator of the Missouri jazz club for trademark infringement in New York.
Trial Court Proceedings Edit
Looking to New York’s long-arm statute, the court inquired whether King’s operation of a website on a server in Missouri represented the commission of a tort in New York. Although a New York user could access the Missouri Club’s website to obtain event ticket information, a purchase of tickets required calling the Missouri club via its website-advertised telephone number and picking up the tickets at the Columbia, Missouri box office.
The court stated that "[t]he mere fact that a person can gain information on the allegedly infringing product is not the equivalent of a person advertising, promoting, selling or otherwise making an effort to target its product in New York." Consequently, the district court concluded that any tortious action of trademark infringement would arise in Missouri rather than in New York.
In examining whether the exercise of jurisdiction over King would satisfy due process, the court asserted that “creating a site, like placing a product into the stream of commerce, may be felt nationwide — or even worldwide — but, without more, it is not an act purposefully directed toward the forum state.” The court distinguished the CompuServe v. Patterson case based on the observation that the facts in CompuServe v. Patterson, were vastly different from the present action. Unlike the software developer in CompuServe, King did not direct any contact to or have any contact with New York, nor did he intend to avail himself of the benefits of New York.
Thus, the court held that King's operation of the website was not sufficient to satisfy the requirements of New York’ long-arm statute, and that the exercise of personal jurisdiction would violate the precepts of constitutional due process. Significantly, the court found that the owner of the Missouri club was only trying to attract local patrons by the club's operation of its website, and dismissed the action for lack of personal jurisdiction.