Distinguishing Panavision And Bensusan :: Legal Essays

Distinguishing Panavision And BensusanThe law regarding jurisdiction determination was far from crystal clear unconstipated before the internet came of age, and courts are now having a difficult time reconciling the purposeful availment and related effects canvass used in traditional jurisdiction analyses with the new paradigms in information transfer made possible by the internet, and in particular by the World Wide Web (WWW). These difficulties are presumable in Panavision, Intl. L.P. v. Toeppen, 938 F. Supp 616 (C.D. Cal. 1996), and Bensusan Restaurant Corp. v. King, 937 F. Supp. 295 (S.D.N.Y. 1996). Both cases involved trademark infringement and dilution suits stemming from the alleged use of the trademark on the WWW. Each court came down differently on the jurisdiction issue, and rightly so, but neither courts analysis was very satisfying when one attempts to distinguish the two cases. In Toeppen, the defendant had formed a jut out to find prominent registered trademarks wh ich had not yet been registered as internet addresses, and register them as his own, with the expectation that he could sell them at a substantial addition to the possessor of each mark should that owner desire to do business on the internet using that internet address. The court used a three-part test for specific jurisdiction, the first part of which was the purposeful availment test, which in turn became an effects test when the contain is in the nature of a tort. After deciding that the fill was tort-like, the court used the effects test and found that Toeppens acts were 1) intentional, 2) aimed at California, and 3) caused foreseeable harm to the plaintiff. This was at the heart of the courts reasoning in exercising jurisdiction. The facts in Bensusan scrawl out very much like Toeppen, but diverge at a point, resulting in a decision to decline to exercise jurisdiction. In Bensusan, which proceeded Toeppen by ten days, the defendant, a Missouri jazz club, had set up a web p age the contents of which contained an allegedly infringing use of the plaintiffs trademark, The Blue Note. The plaintiff, owner of the mark for a New York jazz club, wanted the New York district court to interpret state law so that it could exercise jurisdiction over the Missouri club. It refused to do so because, under a similar effects test to that used in Toeppen (the court here also found the claim to be in the nature of a tort), there was no foreseeable harm to the plaintiff.