OPINION: [*1120] MEMORANDUM OPINION
McLAUGHLIN, J.
This is an Internet domain name n1 dispute. At this stage
of the controversy, we must [*1121] decide the Constitutionally permissible
reach of Pennsylvania's Long Arm Statute, 42 Pa.C.S.A. § 5322, through
cyberspace. Plaintiff Zippo Manufacturing Corporation ("Manufacturing")
has filed a five count complaint against Zippo Dot Com, Inc. ("Dot Com")
alleging trademark dilution, infringement, and false designation under
the Federal Trademark Act, 15 U.S.C. § § 1051-1127. In addition,
the Complaint alleges causes of action based on state law trademark dilution
[**2] under 54 Pa.C.S.A. § 1124, and seeks equitable accounting and
imposition of a constructive trust. Dot Com has moved to dismiss for lack
of personal jurisdiction and improper venue pursuant to Fed.R.Civ.P 12(b)(2)
and (3) or, in the alternative, to transfer the case pursuant to 28 U.S.C.
§ 1406(a). For the reasons set forth below, Defendant's motion is
denied.
- n1 Domain names serve as a primary identifier of an Internet user. Panavision Intern., L.P. v. Toeppen, 938 F. Supp. 616 (S.D. Cal. 1996). Businesses using the Internet commonly use their business names as part of the domain name (e.g. IBM.com). Id. The designation ".com" identifies the user as a commercial entity. Id.
I. BACKGROUND
The facts relevant to this motion are as follows. Manufacturing
is a Pennsylvania corporation with its principal place of business in Bradford,
Pennsylvania. Manufacturing makes, among other things, well known "Zippo"
tobacco lighters. Dot Com is a California corporation with its principal
place of business in [**3] Sunnyvale, California. Dot Com operates an Internet
Web site n2 and an Internet news service and has obtained the exclusive
right to use the domain names "zippo.com", "zippo.net" and "zipponews.com"
on the Internet. n3
n2 A "site" is an Internet address that permits the exchange
of information with a host computer. Bensusan Restaurant Corp. v. King,
937 F. Supp. 295 (S.D.N.Y. 1996). The "Web" or "World Wide Web" refers
to the collection of sites available on the Internet. Id.
n3 Dot Com has registered these domain names with Network Solutions, Inc. which has contracted with the National Science Foundation to provide registration services for Internet domain names. Once a domain name is registered to one user, it may not be used by another.
Dot Com's Web site contains information about the company,
advertisements and an application for its Internet news service. The news
service itself consists of three levels of membership - public/free, "Original"
and "Super." Each successive level offers access [**4] to a greater number
of Internet newsgroups. A customer who wants to subscribe to either the
"Original" or "Super" level of service, fills out an on-line application
that asks for a variety of information including the person's name and
address. Payment is made by credit card over the Internet or the telephone.
The application is then processed and the subscriber is assigned a password
which permits the subscriber to view and/or download Internet newsgroup
messages that are stored on the Defendant's server in California.
Dot Com's contacts with Pennsylvania have occurred almost
exclusively over the Internet. Dot Com's offices, employees and Internet
servers are located in California. Dot Com maintains no offices, employees
or agents in Pennsylvania. Dot Com's advertising for its service to Pennsylvania
residents involves posting information about its service on its Web page,
which is accessible to Pennsylvania residents via the Internet. Defendant
has approximately 140,000 paying subscribers worldwide. Approximately two
percent (3,000) of those subscribers are Pennsylvania residents. These
subscribers have contracted to receive Dot Com's service by visiting its
Web site and filling [**5] out the application. Additionally, Dot Com has
entered into agreements with seven Internet access providers in Pennsylvania
to permit their subscribers to access Dot Com's news service. Two of these
providers are located in the Western District of Pennsylvania.
The basis of the trademark claims is Dot Com's use of
the word "Zippo" in the domain names it holds, in numerous locations in
its Web site and in the heading of Internet newsgroup messages that have
been posted by Dot Com subscribers. When an Internet user views or downloads
a newsgroup message posted by a Dot Com subscriber, the word "Zippo" appears
in the "Message-Id" [*1122] and "Organization" sections of the heading.
n4 The news message itself, containing text and/or pictures, follows. Manufacturing
points out that some of the messages contain adult oriented, sexually explicit
subject matter.
[**6]
II. STANDARD OF REVIEW
When a defendant raises the defense of the court's lack
of personal jurisdiction, the burden falls upon the plaintiff to come forward
with sufficient facts to establish that jurisdiction is proper. Mellon
Bank (East) PSFS, N.A. v Farino, 960 F.2d 1217, 1223 (3d Cir. 1992) (citing
Carteret Savings Bank v. Shushan, 954 F.2d 141 (3d Cir. 1992), cert. denied
506 U.S. 817, 121 L. Ed. 2d 29, 113 S. Ct. 61 (1992)). The plaintiff meets
this burden by making a prima facie showing of "sufficient contacts between
the defendant and the forum state." Mellon East, 960 F.2d at 1223 (citing
Provident Nat. Bank v. California Fed. Sav. & Loan Assoc., 819 F.2d
434 (3d Cir. 1987)).
III. DISCUSSION
A. Personal Jurisdiction
1. The Traditional Framework
Our authority to exercise personal jurisdiction in this
case is conferred by state law. Fed.R.Civ.P. 4(e); Mellon, 960 F.2d at
1221. The extent to which we may exercise that authority is governed by
the Due Process Clause of the Fourteenth Amendment to the Federal Constitution.
Kulko v. California Supreme Court, 436 U.S. 84, 91, 56 L. Ed. 2d 132, 98
S. Ct. 1690 (1978).
Pennsylvania's long [**7] arm jurisdiction statute is
codified at 42 Pa.C.S.A. § 5322(a). The portion of the statute authorizing
us to exercise jurisdiction here permits the exercise of jurisdiction over
non-resident defendants upon:
"(2) Contracting to supply services or things in this Commonwealth."
42 Pa.C.S.A. § 5322(a). It is undisputed that Dot
Com contracted to supply Internet news services to approximately 3,000
Pennsylvania residents and also entered into agreements with seven Internet
access providers in Pennsylvania. Moreover, even if Dot Com's conduct did
not satisfy a specific provision of the statute, we would nevertheless
be authorized to exercise jurisdiction to the "fullest extent allowed under
the Constitution of the United States." 42 Pa.C.S.A. § 5322(b).
The Constitutional limitations on the exercise of personal
jurisdiction differ depending upon whether a court seeks to exercise general
or specific jurisdiction over a non-resident defendant. Mellon, 960 F.2d
at 1221. General jurisdiction permits a court to exercise personal jurisdiction
over a non-resident defendant for non-forum related activities when the
defendant has engaged in "systematic and continuous" activities [**8] in
the forum state. Helicopteros Nacionales de Colombia, S.A. v. Hall, 466
U.S. 408, 414-16, 80 L. Ed. 2d 404, 104 S. Ct. 1868 (1984). In the absence
of general jurisdiction, specific jurisdiction permits a court to exercise
personal jurisdiction over a non-resident defendant for forum-related activities
where the "relationship between the defendant and the forum falls within
the 'minimum contacts' framework" of International Shoe Co. v. Washington,
326 U.S. 310, 90 L. Ed. 95, 66 S. Ct. 154 (1945) and its progeny. Mellon,
960 F.2d at 1221. Manufacturing does not contend that we should exercise
general personal jurisdiction over Dot Com. Manufacturing concedes that
if personal jurisdiction exists in this case, it must be specific.
A three-pronged test has emerged for determining whether
the exercise of specific personal jurisdiction over a non-resident defendant
is appropriate: (1) the defendant must have sufficient "minimum contacts"
with the forum state, (2) the claim asserted [*1123] against the defendant
must arise out of those contacts, and (3) the exercise of jurisdiction
must be reasonable. Id. The "Constitutional touchstone" of the minimum
contacts analysis is embodied [**9] in the first prong, "whether the defendant
purposefully established" contacts with the forum state. Burger King Corp.
v. Rudzewicz, 471 U.S. 462, 475, 85 L. Ed. 2d 528, 105 S. Ct. 2174 (1985)
(citing International Shoe Co. v. Washington, 326 U.S. 310, 319, 90 L.
Ed. 95, 66 S. Ct. 154 (1945)). Defendants who "'reach out beyond one state'
and create continuing relationships and obligations with the citizens of
another state are subject to regulation and sanctions in the other State
for consequences of their actions." Id. (citing Travelers Health Assn.
v. Virginia, 339 U.S. 643, 647, 94 L. Ed. 1154, 70 S. Ct. 927 (1950)).
"The foreseeability that is critical to the due process analysis is ...
that the defendant's conduct and connection with the forum State are such
that he should reasonably expect to be haled into court there." World Wide
Volkswagen Corp. v. Woodson, 444 U.S. 286, 295, 62 L. Ed. 2d 490, 100 S.
Ct. 559 (1980). This protects defendants from being forced to answer for
their actions in a foreign jurisdiction based on "random, fortuitous or
attenuated" contacts. Keeton v. Hustler Magazine, Inc., 465 U.S. 770, 774,
79 L. Ed. 2d 790, 104 S. Ct. 1473 (1984). [**10] "Jurisdiction is proper,
however, where contacts proximately result from actions by the defendant
himself that create a 'substantial connection' with the forum State." Burger
King, 471 U.S. at 475 (citing McGee v. International Life Insurance Co.,
355 U.S. 220, 223, 2 L. Ed. 2d 223, 78 S. Ct. 199 (1957)).
The "reasonableness" prong exists to protect defendants
against unfairly inconvenient litigation. World Wide Volkswagen, 444 U.S.
at 292. Under this prong, the exercise of jurisdiction will be reasonable
if it does not offend "traditional notions of fair play and substantial
justice." International Shoe, 326 U.S. at 316. When determining the reasonableness
of a particular forum, the court must consider the burden on the defendant
in light of other factors including: "the forum state's interest in adjudicating
the dispute; the plaintiff's interest in obtaining convenient and effective
relief, at least when that interest is not adequately protected by the
plaintiff's right to choose the forum; the interstate judicial system's
interest in obtaining the most efficient resolution of controversies; and
the shared interest of the several states in furthering fundamental [**11]
substantive social policies." World Wide Volkswagen, 444 U.S. at 292 (internal
citations omitted).
2. The Internet and Jurisdiction
In Hanson v. Denckla, the Supreme Court noted that "as technological progress has increased the flow of commerce between States, the need for jurisdiction has undergone a similar increase." Hanson v. Denckla, 357 U.S. 235, 250-51, 2 L. Ed. 2d 1283, 78 S. Ct. 1228 (1958). Twenty seven years later, the Court observed that jurisdiction could not be avoided "merely because the defendant did not physically enter the forum state. Burger King, 471 U.S. at 476. The Court observed that:
It is an inescapable fact of modern commercial life that a substantial amount of commercial business is transacted solely by mail and wire communications across state lines, thus obviating the need for physical presence within a State in which business is conducted.
Id.
Enter the Internet, a global "'super-network' of over
15,000 computer networks used by over 30 million individuals, corporations,
organizations, and educational institutions worldwide." Panavision Intern.,
L.P. v. Toeppen, 938 F. Supp. 616 (S.D.Cal. 1996) (citing [**12] American
Civil Liberties Union v. Reno, 929 F. Supp. 824, 830-48 (E.D.Pa. 1996).
"In recent years, businesses have begun to use the Internet to provide
information and products to consumers and other businesses." Id. The Internet
makes it possible to conduct business throughout the world entirely from
a desktop. With this global revolution looming on the horizon, the development
of the law concerning the permissible scope of personal jurisdiction based
on Internet use is in its infant stages. The [*1124] cases are scant. Nevertheless,
our review of the available cases and materials n5 reveals that the likelihood
that personal jurisdiction can be constitutionally exercised is directly
proportionate to the nature and quality of commercial activity that an
entity conducts over the Internet. This sliding scale is consistent with
well developed personal jurisdiction principles. At one end of the spectrum
are situations where a defendant clearly does business over the Internet.
If the defendant enters into contracts with residents of a foreign jurisdiction
that involve the knowing and repeated transmission of computer files over
the Internet, personal jurisdiction is proper. E.g. Compuserve, [**13]
Inc. v. Patterson, 89 F.3d 1257 (6th Cir. 1996). At the opposite end are
situations where a defendant has simply posted information on an Internet
Web site which is accessible to users in foreign jurisdictions. A passive
Web site that does little more than make information available to those
who are interested in it is not grounds for the exercise personal jurisdiction.
E.g. Bensusan Restaurant Corp., v. King, 937 F. Supp. 295 (S.D.N.Y. 1996).
The middle ground is occupied by interactive Web sites where a user can
exchange information with the host computer. In these cases, the exercise
of jurisdiction is determined by examining the level of interactivity and
commercial nature of the exchange of information that occurs on the Web
site. E.g. Maritz, Inc. v. Cybergold, Inc., 940 F. Supp. 96, 1996 U.S.
Dist. LEXIS 14976 (E.D.Mo. 1996).
n5 See, generally, Robert A. Bourque and Kerry L. Konrad, Avoiding Jurisdiction Based on Internet Web Site, New York Law Journal (Dec. 10, 1996); David Bender, Emerging Personal Jurisdiction Issues on the Internet, 453 PLI/Pat 7 (1996); Comment, Richard S. Zembek, Jurisdiction and the Internet: Fundamental Fairness in the Networked World of Cyberspace, 6 Alb. L.J. Sci. & Tech. 339 (1996).
[**14]
Traditionally, when an entity intentionally reaches beyond
its boundaries to conduct business with foreign residents, the exercise
of specific jurisdiction is proper. Burger King, 471 U.S. at 475. Different
results should not be reached simply because business is conducted over
the Internet. In Compuserve, Inc. v. Patterson, 89 F.3d 1257 (6th Cir.
1996), the Sixth Circuit addressed the significance of doing business over
the Internet. In that case, Patterson, a Texas resident, entered into a
contract to distribute shareware n6 through Compuserve's Internet server
located in Ohio. Compuserve, 89 F.3d at 1260. From Texas, Patterson electronically
uploaded thirty-two master software files to Compuserve's server in Ohio
via the Internet. Id. at 1261. One of Patterson's software products was
designed to help people navigate the Internet. Id. When Compuserve later
began to market a product that Patterson believed to be similar to his
own, he threatened to sue. Id. Compuserve brought an action in the Southern
District of Ohio, seeking a declaratory judgment. Id. The District Court
granted Patterson's motion to dismiss for lack of personal jurisdiction
and Compuserve [**15] appealed. Id. The Sixth Circuit reversed, reasoning
that Patterson had purposefully directed his business activities toward
Ohio by knowingly entering into a contract with an Ohio resident and then
"deliberately and repeatedly" transmitted files to Ohio. Id. at 1264-66.
n6 "Shareware" is software which a user is permitted to download and use for a trial period, after which the user is asked to pay a fee to the author for continued use. Compuserve, 89 F.3d at 1260.
In Maritz, Inc. v. Cybergold, Inc., 947 F. Supp. 1328,
1996 U.S. Dist. LEXIS 14978 (E.D. Mo. 1996), the defendant had put up a
Web site as a promotion for its upcoming Internet service. The service
consisted of assigning users an electronic mailbox and then forwarding
advertisements for products and services that matched the users' interests
to those electronic mailboxes. Maritz, 947 F. Supp. 1328, 1996 U.S. Dist.
LEXIS 14978 at *7 The defendant planned to charge advertisers and provide
users with incentives to view the advertisements. Id. Although the [**16]
service was not yet operational, users were encouraged to add their address
to a mailing list to receive updates about the service. Id. The court rejected
the defendant's contention that it operated a "passive Web site." Id. at
*16. The court reasoned that the defendant's conduct amounted to "active
solicitations" [*1125] and "promotional activities" designed to "develop
a mailing list of Internet users" and that the defendant "indiscriminately
responded to every user" who accessed the site. Id. at *14-17.
Inset Systems, Inc. v. Instruction Set, 937 F. Supp. 161
(D. Conn. 1996) represents the outer limits of the exercise of personal
jurisdiction based on the Internet. In Inset Systems, a Connecticut corporation
sued a Massachusetts corporation in the District of Connecticut for trademark
infringement based on the use of an Internet domain name. Inset Systems,
937 F. Supp. at 162. The defendant's contacts with Connecticut consisted
of posting a Web site that was accessible to approximately 10,000 Connecticut
residents and maintaining a toll free number. Id. at 165. The court exercised
personal jurisdiction, reasoning that advertising on the Internet constituted
[**17] the purposeful doing of business in Connecticut because "unlike
television and radio advertising, the advertisement is available continuously
to any Internet user." Id. at 165.
Bensusan Restaurant Corp., v. King, 937 F. Supp. 295 (S.D.
N.Y. 1996) reached a different conclusion based on a similar Web site.
In Bensusan, the operator of a New York jazz club sued the operator of
a Missouri jazz club for trademark infringement. Bensusan, 937 F. Supp.
at 297. The Internet Web site at issue contained general information about
the defendant's club, a calendar of events and ticket information. Id.
However, the site was not interactive. Id. If a user wanted to go to the
club, she would have to call or visit a ticket outlet and then pick up
tickets at the club on the night of the show. Id. The court refused to
exercise jurisdiction based on the Web Site alone, reasoning that it did
not rise to the level of purposeful availment of that jurisdiction's laws.
The court distinguished the case from Compuserve, supra, where the user
had "'reached out' from Texas to Ohio and 'originated and maintained' contacts
with Ohio." Id. at 301.
Pres-Kap, Inc. v. System One Direct [**18] Access, Inc.,
636 So. 2d 1351 (Fla. App. 1994), review denied, 645 So. 2d 455 (Fla. 1994)
is not inconsistent with the above cases. In Pres-Kap, a majority of a
three-judge intermediate state appeals court refused to exercise jurisdiction
over a consumer of an on-line airline ticketing service. Pres-Kap involved
a suit on a contract dispute in a Florida court by a Delaware corporation
against its New York customer. Pres-Kap, 636 So. 2d at 1351-52. The defendant
had leased computer equipment which it used to access an airline ticketing
computer located in Florida. Id. The contract was solicited, negotiated,
executed and serviced in New York. Id. at 1352. The defendant's only contact
with Florida consisted of logging onto the computer located in Florida
and mailing payments for the leased equipment to Florida. Id. at 1353.
Pres-Kap is distinguishable from the above cases and the case at bar because
it addressed the exercise of jurisdiction over a consumer of on-line services
as opposed to a provider. When a consumer logs onto a server in a foreign
jurisdiction he is engaging in a fundamentally different type of contact
than an entity that is using the [**19] Internet to sell or market products
or services to residents of foreign jurisdictions. The Pres-Kap court specifically
expressed concern over the implications of subjecting users of "on-line"
services with contracts with out-of-state networks to suit in foreign jurisdictions.
Id. at 1353.
3. Application to this Case
First, we note that this is not an Internet advertising
case in the line of Inset Systems and Bensusan, supra. Dot Com has not
just posted information on a Web site that is accessible to Pennsylvania
residents who are connected to the Internet. This is not even an interactivity
case in the line of Maritz, supra. Dot Com has done more than create an
interactive Web site through which it exchanges information with Pennsylvania
residents in hopes of using that information for commercial gain later.
We are not being asked to determine whether Dot Com's Web site alone constitutes
the purposeful availment of doing business in Pennsylvania. This is a "doing
business over the Internet" case in the line of Compuserve, supra.. We
are being asked to determine whether Dot Com's conducting of electronic
commerce with Pennsylvania residents constitutes [*1126] the [**20] purposeful
availment of doing business in Pennsylvania. We conclude that it does.
Dot Com has contracted with approximately 3,000 individuals and seven Internet
access providers in Pennsylvania. The intended object of these transactions
has been the downloading of the electronic messages that form the basis
of this suit in Pennsylvania.
We find Dot Com's efforts to characterize its conduct
as falling short of purposeful availment of doing business in Pennsylvania
wholly unpersuasive. At oral argument, Defendant repeatedly characterized
its actions as merely "operating a Web site" or "advertising." Dot Com
also cites to a number of cases from this Circuit which, it claims, stand
for the proposition that merely advertising in a forum, without more, is
not a sufficient minimal contact. n7 This argument is misplaced. Dot Com
has done more than advertise on the Internet in Pennsylvania. Defendant
has sold passwords to approximately 3,000 subscribers in Pennsylvania and
entered into seven contracts with Internet access providers to furnish
its services to their customers in Pennsylvania.
n7 Defendant has cited to: Gehling v. St. George's School of Medicine, Ltd., 773 F.2d 539 (1985); Fields v. Ramada Inn Inc., 816 F. Supp. 1033 (E.D. Pa. 1993); and Garofalo v. Praiss, 1990 U.S. Dist. LEXIS 8544, 1990 WL 97800 (E.D.Pa. 1990). We note that these cases all involve the issue of whether advertising can rise to the level of "systematic and continuous" contacts for the purpose of general jurisdiction.
[**21]
Dot Com also contends that its contacts with Pennsylvania
residents are "fortuitous" within the meaning of World Wide Volkswagen,
444 U.S. 286, 62 L. Ed. 2d 490, 100 S. Ct. 559 (1980). Defendant argues
that it has not 'actively' solicited business in Pennsylvania and that
any business it conducts with Pennsylvania residents has resulted from
contacts that were initiated by Pennsylvanians who visited the Defendant's
Web site. The fact that Dot Com's services have been consumed in Pennsylvania
is not "fortuitous" within the meaning of World Wide Volkswagen. In World
Wide Volkswagen, a couple that had purchased a vehicle in New York, while
they were New York residents, were injured while driving that vehicle through
Oklahoma and brought suit in an Oklahoma state court. World Wide Volkswagen,
444 U.S. at 288. The manufacturer did not sell its vehicles in Oklahoma
and had not made an effort to establish business relationships in Oklahoma.
Id. at 295. The Supreme Court characterized the manufacturer's ties with
Oklahoma as fortuitous because they resulted entirely out the fact that
the plaintiffs had driven their car into that state. Id.
Here, Dot Com argues that [**22] its contacts with Pennsylvania
residents are fortuitous because Pennsylvanians happened to find its Web
site or heard about its news service elsewhere and decided to subscribe.
This argument misconstrues the concept of fortuitous contacts embodied
in World Wide Volkswagen. Dot Com's contacts with Pennsylvania would be
fortuitous within the meaning of World Wide Volkswagen if it had no Pennsylvania
subscribers and an Ohio subscriber forwarded a copy of a file he obtained
from Dot Com to a friend in Pennsylvania or an Ohio subscriber brought
his computer along on a trip to Pennsylvania and used it to access Dot
Com's service. That is not the situation here. Dot Com repeatedly and consciously
chose to process Pennsylvania residents' applications and to assign them
passwords. Dot Com knew that the result of these contracts would be the
transmission of electronic messages into Pennsylvania. The transmission
of these files was entirely within its control. Dot Com cannot maintain
that these contracts are "fortuitous" or "coincidental" within the meaning
of World Wide Volkswagen. When a defendant makes a conscious choice to
conduct business with the residents of a forum state, [**23] "it has clear
notice that it is subject to suit there." World Wide Volkswagen, 444 U.S.
at 297. Dot Com was under no obligation to sell its services to Pennsylvania
residents. It freely chose to do so, presumably in order to profit from
those transactions. If a corporation determines that the risk of being
subject to personal jurisdiction in a particular forum is too great, it
can choose to sever its connection to the state. Id. If Dot Com had not
wanted to be amenable to jurisdiction in [*1127] Pennsylvania, the solution
would have been simple - it could have chosen not to sell its services
to Pennsylvania residents.
Next, Dot Com argues that its forum-related activities
are not numerous or significant enough to create a "substantial connection"
with Pennsylvania. Defendant points to the fact that only two percent of
its subscribers are Pennsylvania residents. However, the Supreme Court
has made clear that even a single contact can be sufficient. McGee, 355
U.S. at 223. The test has always focused on the "nature and quality" of
the contacts with the forum and not the quantity of those contacts. International
Shoe, 326 U.S. at 320. The Sixth Circuit also rejected a similar [**24]
argument in Compuserve when it wrote that the contacts were "deliberate
and repeated even if they yielded little revenue." Compuserve, 89 F.3d
at 1265.
We also conclude that the cause of action arises out of
Dot Com's forum-related conduct in this case. The Third Circuit has stated
that "a cause of action for trademark infringement occurs where the passing
off occurs." Cottman Transmission Systems Inc. v. Martino, 36 F.3d 291,
294 (citing Tefal, S.A. v. Products Int'l Co., 529 F.2d 495, 496 n.1 (3d
Cir. 1976); Indianapolis Colts v. Metro. Baltimore Football, 34 F.3d 410
(7th Cir. 1994). In Tefal, the maker and distributor of T-Fal cookware
sued a partnership of California corporations in the District of New Jersey
for trademark infringement. Tefal, 529 F.2d at 496. The defendants objected
to venue in New Jersey, arguing that the contested trademark accounted
for only about five percent of national sales. Id. On appeal, the Third
Circuit concluded that since substantial sales of the product bearing the
allegedly infringing mark took place in New Jersey, the cause of action
arose in New Jersey and venue was proper. Tefal, 529 F.2d at 496-97.
In [**25] Indianapolis Colts, also case cited by the Third
Circuit in Cottman, an Indiana National Football League franchise sued
a Maryland Canadian Football League franchise in the Southern District
of Indiana, alleging trademark infringement. Indianapolis Colts, 34 F.3d
at 411. On appeal, the Seventh Circuit held that personal jurisdiction
was appropriate in Indiana because trademark infringement is a tort-like
injury and a substantial amount of the injury from the alleged infringement
was likely to occur in Indiana.' Id. at 412.
In the instant case, both a significant amount of the
alleged infringement and dilution, and resulting injury have occurred in
Pennsylvania. The object of Dot Com's contracts with Pennsylvania residents
is the transmission of the messages that Plaintiff claims dilute and infringe
upon its trademark. When these messages are transmitted into Pennsylvania
and viewed by Pennsylvania residents on their computers, there can be no
question that the alleged infringement and dilution occur in Pennsylvania.
Moreover, since Manufacturing is a Pennsylvania corporation, a substantial
amount of the injury from the alleged wrongdoing is likely to occur in
Pennsylvania. [**26] Thus, we conclude that the cause of action arises
out of Dot Com's forum-related activities under the authority of both Tefal
and Indianapolis Colts, supra.
Finally, Dot Com argues that the exercise of jurisdiction
would be unreasonable in this case. We disagree. There can be no question
that Pennsylvania has a strong interest in adjudicating disputes involving
the alleged infringement of trademarks owned by resident corporations.
We must also give due regard to the Plaintiff's choice to seek relief in
Pennsylvania. Kulko, 436 U.S. at 92. These concerns outweigh the burden
created by forcing the Defendant to defend the suit in Pennsylvania, especially
when Dot Com consciously chose to conduct business in Pennsylvania, pursuing
profits from the actions that are now in question. The Due Process Clause
is not a "territorial shield to interstate obligations that have been voluntarily
assumed." Burger King, 471 U.S. at 474.
* * * [The Court also rejected a challenge to venue in
the district.]