May 2007 – Page 2 – Attorney Evan Brown

May 14, 2007 Service of Process

Service of process by e-mail allowed for foreign defendants

Williams-Sonoma Inc. v. Friendfinder Inc., No. 06-6572, 2007 WL 1140639 (N.D.Cal. April 17, 2007).

Williams-Sonoma, the well-known purveyor of kitchen and other household goods, and owner of the POTTERY BARN trademark, filed suit against a number of defendants, seeking ot prevent those defendants from using the POTTERY BARN mark in meta tags and in HTML on certain sexually-explicit websites. Many of the defendants were foreign, and a number of them listed incorrect contact information, which foiled Williams-Sonoma’s attempts to serve process in the traditional manner.

Undaunted, Williams-Sonoma asked the court for an order authorizing it to serve process in the manner in which Williams-Sonoma had already been able to communicate with the defendants – by e-mail. The court granted the request.

To determine whether service of process by e-mail was proper, the court looked at some of the more interstitial parts of Fed. R. Civ. P. 4, which deals with service of process. Rule 4(h) says that foreign businesses may be served in the same manner as individuals not within any judicial district of the United States. Rule 4(f) provides the procedure for that, and allows service “by other means not prohibited by international agreement as directed by the court.”

The court determined that the circumstances of the case warranted service by alternative means. Nodding to Rio Properties, Inc. v. Rio Intern. Interlink, 284 F.3d 1007 (9th Cir. 2002), the court found that Williams-Sonoma had established that e-mail was an effective means of communication with the defendants, and that messages sent to the defendants would serve the purposes of notifying them of the pending litigation. Moreover, there was no indication that service in that manner would contravene any international agreement.

May 11, 2007 DMCA

Plain meaning, plain silliness under the DMCA anticircumvention provisions

CNET is reporting on a cease and desist letter some company has sent to Microsoft, Apple, Adobe and others. (I’m not going to mention the company by name because I don’t want to play into what Jessica Litman and I agree is an attempt to garner some unwarranted publicity — see the CNET article.) Simply stated, the company, which has apparently developed some kind of technology designed to prevent ripping of digital audio streams, claims that Microsoft et al. are actively avoiding the implementation of the company’s technology in their products. It clams that this avoidance is a circumvention prohibited under the DMCA.

I don’t opine much on this site, but this company’s theory is based on, at best, a hypertechnical and unsupportable reading of the DMCA. As you know, “circumvention” under the DMCA means to “descramble a scrambled work, to decrypt an encrypted work, or otherwise to avoid, bypass, remove, deactivate, or impair a technological measure, without the authority of the copyright owner.”

Did you see the word “avoid” there? That’s what the company is apparently hanging its hat on. And the argument sounds clever, until you actually think about the DMCA and what it says.

One has to read the DMCA prohibitions on avoiding, bypassing, removing, deactivating, or impairing technological measures along with the terms immediately preceding, namely, descrambling and decrypting. These prohibited activities share a common theme of some sort of active disabling of the technology, not simply choosing not to use an available technology.

There’s a maxim that Aristotle probably made up called sui generis that lawyers and courts are supposed to use when interpreting statutes. Essentially, when you see a group of terms together in a statute, one is to attribute a common meaning to those terms. Interpreting the meaning of “to avoid” in the way that this company suggests would not be consistent with this principle.

I sincerely hope to not see any reported decisions on these facts.

May 9, 2007 Personal Jurisdiction

Zippo “sliding scale” approach to personal jurisdiction rejected

Howard v. Missouri Bone and Joint Center, Inc., No. 05-476, — N.E.2d —-, 2007 WL 1217855 (Ill.App. 5th Dist. April 24, 2007)

Plaintiff Howard filed suit in Illinois against defendant Missouri Bone and Joint Center, alleging personal injury arising from “athletic training services” that defendant provided to plaintiff at its Missouri facility. Defendant moved to dismiss for lack of personal jurisdiction, arguing that its contacts with Illinois were insufficient: it had no facilities and did not transact business there, and owned no property located in the state. Further, defendant argued it was not registered to do business in Illinois, and all its activities took place at its Missouri location.

Responding to the motion to dismiss, plaintiff argued that the court could exercise general jurisdiction over defendant due to its “continuous and systematic general business contacts” in Illinois. Relying on the Zippo sliding scale test [Zippo Mfg. Co. v. Zippo Dot Com, Inc., 952 F.Supp. 1119 (W.D. Pa. 1997)], plaintiff claimed these contacts arose through defendant’s website which allowed its visitors to make appointments, fill out surveys, and ask questions.

The court initially denied the motion to dismiss, and the case proceeded to trial. After the court awarded a substantial judgment to the plaintiff, the defendant moved for reconsideration of the question of personal jurisdiction. This time the court found that it lacked personal jurisdiction, and it vacated the judgment. Plaintiff sought review with the Appellate Court of Illinois. On appeal, the court affirmed.

The appellate court rejected the Zippo test:

Instead, we find that the web page’s level of interactivity is irrelevant. In reality, an interactive website is similar to telephone or mail communications. A passive website is much the same as advertising on the radio or in a magazine. An ad on the Internet is no different than an ad in any other medium that provides a telephone number or other means to contact a potential defendant. It is mere advertisement or solicitation of business. Illinois courts have long held that a mere advertisement or solicitation is not enough to sustain personal jurisdiction in Illinois.

In this case, the court held that the defendant had done nothing more that advertise and solicit business in Illinois. That conduct, in and of itself, was insufficient to give rise to personal jurisdiction. The court compared the facts of the case to two previous Illinois appellate cases, Pilipauskas v. Yakel, 258 Ill.App.3d 47 (1994), and Excel Energy Co. v. Pittman, 239 Ill.App.3d 160 (1992) to support its holding. The nature and quality of the acts occurring in Illlinois were insubstantial. The plaintiff had chosen to contact the defendant, and had chosen to travel to Missouri for treatment. Accordingly, the court held that exercising jurisdiction over the defendant “would not be fair, just, or reasonable.”