Facebook, Inc. v. Pedersen

Filing 46

ORDER TO SHOW CAUSE Re: 36 . Signed by Judge Nathanael M. Cousins on 11/29/11. (nclc1, COURT STAFF) (Filed on 11/29/2011)

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1 2 3 4 5 6 UNITED STATES DISTRICT COURT 7 NORTHERN DISTRICT OF CALIFORNIA 8 SAN FRANCISCO DIVISION 9 10 FACEBOOK, INC., Plaintiff, 11 12 13 Case No. 10-cv-04673 JSW (NC) v. ORDER TO SHOW CAUSE Re: Dkt. No. 36 THOMAS PEDERSEN and RETRO INVENT AS, Defendants. 14 15 16 In this action for trademark dilution and infringement, Plaintiff Facebook moves for the 17 entry of default judgment against Defendants Pedersen and Retro Invent under Federal Rule of 18 Civil Procedure 55(b)(2). Dkt. No. 36. Facebook also requests an award of attorneys’ fees and 19 costs, a permanent injunction barring defendants from using Facebook’s registered marks, and 20 the transfer of Defendants’ internet domains to Facebook. Id. at 3. Facebook alleges to have 21 served the summons, the amended complaint, and a copy of the motion for default judgment on 22 Defendants. Id. at 4-5. As of the date of this order, Defendants have not answered the 23 complaint or responded to the motion. As it appears that the Court lacks personal jurisdiction 24 over Defendants, both of whom are residents of Norway, Facebook is ORDERED TO SHOW 25 CAUSE why this Court should not recommend to the District Court that this action be 26 dismissed for lack of personal jurisdiction. See In re Tuli, 172 F.3d 707, 712 (9th Cir. 1999) 27 (“[W]hen a court is considering whether to enter a default judgment, it may dismiss an action 28 sua sponte for lack of personal jurisdiction.”). Case No. 10-cv-04673 JSW (NC) ORDER TO SHOW CAUSE 1 I. BACKGROUND 2 Plaintiff Facebook provides online networking services to more than 500 million 3 monthly users; these services include allowing users to create profiles, upload photos and 4 videos, and connect with others. Dkt. No. 7, Am. Compl. ¶¶ 9, 22. Facebook owns ten 5 trademark registrations and has seventeen pending trademark applications in the United States 6 for the “Facebook” mark. Id., Ex. A, B. Additionally, Facebook owns one trademark 7 registration in the United States for the “Wall” mark. Id., Ex. D. 8 Defendant Retro Invent is Norwegian company doing business as www.Faceporn.com 9 (“Faceporn”), a website featuring pornographic content that allows its users to create profiles, 10 join groups, upload photos and video, and conduct live chats. Id. ¶¶ 4, 20-21. Every page of the 11 Faceporn website contains the “Faceporn” mark. Id. ¶ 20. Defendant Thomas Pedersen, a 12 resident of Norway, is the principal of Retro Invent. Id. ¶ 4. 13 Facebook filed an amended complaint on January 7, 2011, against Defendants Pedersen 14 and Retro Invent, alleging that Defendants’ use of the “Faceporn” mark on the Faceporn website 15 dilutes and infringes its registered “Facebook” and “Wall” marks. Id. ¶ 1. Facebook served 16 Retro Invent with the summons and amended complaint in Norway on April 4, 2011, by 17 following the procedures required by the Hague Convention on the Service Abroad of Judicial 18 and Extrajudicial Documents. Dkt. No. 36, Mot. at 2; Norberg Decl., Ex. D. Facebook also 19 served Pederson with the summons and amended complaint in Norway under the Hague 20 Convention on April 29, 2011. Id. Defendants did not respond to the complaint. The clerk 21 entered default as to Retro Invent on May 26, 2011, and as to Pederson on June 1, 2011. Dkt. 22 Nos. 23, 25. Facebook now moves for the entry of default judgment against Defendants. 23 II. DISCUSSION 24 Based on the allegations in the complaint and the motion for default judgment, the Court 25 lacks personal jurisdiction over Defendants. For the exercise of personal jurisdiction over a 26 foreign defendant to be justified, the Due Process Clause requires that the defendant perform 27 some act by which he purposefully avails himself of the benefits and protections of the laws of 28 the forum. Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797, 801-02 (9th Cir. 2004). Case No. 10-cv-04673 JSW (NC) ORDER TO SHOW CAUSE 2 1 In the context of trademark dilution, the Ninth Circuit requires “something more” than “simply 2 registering someone else’s trademark as a domain name and posting a web site on the Internet” 3 in order to find that the defendant has expressly aimed his conduct at the forum and thus 4 purposefully availed himself of the benefits and protections of the laws of that forum. 5 Panavision Intern., L.P. v. Toeppen, 141 F.3d 1316, 1322 (9th Cir. 1998). The “something 6 more” that the Ninth Circuit requires is “conduct directly targeting the forum,” such as running a 7 website that appeals to, and profits from, an audience in the forum. Mavrix Photo, Inc. v. Brand 8 Techs., Inc., 647 F.3d 1218, 1229 (9th Cir. 2011) (emphasis added); see also Panavision, 141 9 F.3d at 1322 (holding that the foreign defendant’s purposeful monetary extortion of the plaintiff 10 constituted the “something more” that is required to justify the exercise of personal jurisdiction 11 over the defendant); Rio Properties, Inc. v. Rio Intern. Interlink, 284 F.3d 1007, 1020 (9th Cir. 12 2002) (holding that the “something more” requirement was met because the foreign defendant 13 “specifically targeted customers” in the forum state by running radio and print advertisements 14 there). 15 Here, Facebook’s allegations do not establish that Defendants’ conduct meets the 16 “something more” requirement. Facebook alleges that Faceporn is a highly interactive website 17 that has 250 users in California and 1000 users in the United States, and that Faceporn targeted 18 “a U.S. audience” by registering its website with a domain name ending in “.com.” These 19 allegations alone, without facts showing that Faceporn’s California viewer base was “an integral 20 component” of Faceporn’s business model and profitability, falls short of meeting Facebook’s 21 burden to establish that the exercise of personal jurisdiction over Defendants is proper, as “[n]ot 22 all material placed on the Internet is, solely by virtue of its universal accessibility, expressly 23 aimed at every state in which it is accessed.” Mavrix, 647 F.3d at 1230-31. 24 25 26 27 28 Case No. 10-cv-04673 JSW (NC) ORDER TO SHOW CAUSE 3 1 IV. ORDER 2 On or before December 12, 2011, Facebook must show cause, in writing, why this Court 3 should not recommend to the District Court that this action be dismissed for lack of personal 4 jurisdiction. Specifically, Facebook must show why the exercise of personal jurisdiction over 5 Defendants is proper in light of the case law cited in this order. 6 IT IS SO ORDERED. 7 8 DATED: November 29, 2011 ____________________________ NATHANAEL M. COUSINS United States Magistrate Judge 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Case No. 10-cv-04673 JSW (NC) ORDER TO SHOW CAUSE 4

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