Take Three: Why Cyberspace Still Matters In The Post Dot Com World

By Julia Anne Matheson and Dinah Nissen

Originally published in Trademark World, September 2003

The past few years have spurred incredible changes and evolution in the law of trademark infringement, identification, and enforcement. But with the dot com bubble deflated, if not altogether burst, is the law of cyberspace still relevant and still evolving?

As the headlines in the major trademark bulletins across the globe reflect, and the ever-expanding online presence of even the most stalwart bricks and mortar companies confirms, the answer is an unqualified "yes."

Legal issues such as what acts on the Internet constitute infringement and dilution, to the minimum "Net" contacts necessary to establish jurisdiction over a nonresident, and sometimes out-of-country, defendant, continue to proliferate. What follows is a brief summary of some of the key disputes currently shaping the future of trademarks online.

The Question of Jurisdiction

When an infringing act occurs on a website that is hosted in one jurisdiction, but can be accessed all over the world, the question of where that infringement is said to occur can be controversial. Is the fact that a website is accessible from a particular country enough to fix jurisdiction in that country, or does the website need to be specifically targeted to that country in order to fix it with jurisdiction?

In the United States, demonstration that a defendant has some meaningful connection with a forum is a necessarily prelude to any court's exercise of jurisdiction. Prior to the advent of the Internet, courts generally looked to a defendant's physical contacts with the forum - a defendant's domicile or primary place of business; visits to the forum; ownership of property in the forum; and the like - to justify their exercise of authority. The incorporeal nature of the electronic marketplace has necessitated vast revisions to the jurisdictional concept of "meaningful forum connections."

Courts in the United States were the first to articulate and continue to be on the forefront of fleshing out the concept of active versus passive Internet activities in evaluating the exercise of personal jurisdiction over web site operators.

To date, U.S. courts have restricted the exercise of personal jurisdiction to cases in which a web site operator has engaged in "interactive contact" with state residents. A website that permits visitors to place product or service orders; exchange information with the web site operator, or otherwise engage in business transactions is generally viewed as sufficient to substantiate the exercise of jurisdiction. On the other hand, in cases where the operator maintains a passive site that merely makes information available for browsing, U.S. courts have been hesitant to exercise personal jurisdiction. Recent case law continues to build on the theme that the greater the commercial nature and level of interactivity associated with a website, the more likely its operator will be found to have purposefully availed itself of the forum state's jurisdiction. But what constitutes interactivity (a toll free number listed on the site; provisions permitting users to request a catalog; etc.) sufficient to justify the exercise of jurisdiction continues to evolve with significant consequences to all businesses on the Web.

With increasing frequency, U.S. courts are also having to grapple with domain name disputes where the registrant and the registrar are both located outside the United States. In such cases, trademark owners may bring a...