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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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN FRANCISCO DIVISION

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FACEBOOK, INC.,
Plaintiff,

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Case No. 10-cv-04673 JSW (NC)

v.

ORDER TO SHOW CAUSE
Re: Dkt. No. 36

THOMAS PEDERSEN and RETRO INVENT AS,
Defendants.

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In this action for trademark dilution and infringement, Plaintiff Facebook moves for the

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entry of default judgment against Defendants Pedersen and Retro Invent under Federal Rule of

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Civil Procedure 55(b)(2). Dkt. No. 36. Facebook also requests an award of attorneys’ fees and

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costs, a permanent injunction barring defendants from using Facebook’s registered marks, and

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the transfer of Defendants’ internet domains to Facebook. Id. at 3. Facebook alleges to have

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served the summons, the amended complaint, and a copy of the motion for default judgment on

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Defendants. Id. at 4-5. As of the date of this order, Defendants have not answered the

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complaint or responded to the motion. As it appears that the Court lacks personal jurisdiction

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over Defendants, both of whom are residents of Norway, Facebook is ORDERED TO SHOW

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CAUSE why this Court should not recommend to the District Court that this action be

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dismissed for lack of personal jurisdiction. See In re Tuli, 172 F.3d 707, 712 (9th Cir. 1999)

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(“[W]hen a court is considering whether to enter a default judgment, it may dismiss an action

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sua sponte for lack of personal jurisdiction.”).

Case No. 10-cv-04673 JSW (NC)
ORDER TO SHOW CAUSE

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I. BACKGROUND

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Plaintiff Facebook provides online networking services to more than 500 million

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monthly users; these services include allowing users to create profiles, upload photos and

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videos, and connect with others. Dkt. No. 7, Am. Compl. ¶¶ 9, 22. Facebook owns ten

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trademark registrations and has seventeen pending trademark applications in the United States

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for the “Facebook” mark. Id., Ex. A, B. Additionally, Facebook owns one trademark

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registration in the United States for the “Wall” mark. Id., Ex. D.

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Defendant Retro Invent is Norwegian company doing business as www.Faceporn.com

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(“Faceporn”), a website featuring pornographic content that allows its users to create profiles,

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join groups, upload photos and video, and conduct live chats. Id. ¶¶ 4, 20-21. Every page of the

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Faceporn website contains the “Faceporn” mark. Id. ¶ 20. Defendant Thomas Pedersen, a

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resident of Norway, is the principal of Retro Invent. Id. ¶ 4.

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Facebook filed an amended complaint on January 7, 2011, against Defendants Pedersen

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and Retro Invent, alleging that Defendants’ use of the “Faceporn” mark on the Faceporn website

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dilutes and infringes its registered “Facebook” and “Wall” marks. Id. ¶ 1. Facebook served

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Retro Invent with the summons and amended complaint in Norway on April 4, 2011, by

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following the procedures required by the Hague Convention on the Service Abroad of Judicial

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and Extrajudicial Documents. Dkt. No. 36, Mot. at 2; Norberg Decl., Ex. D. Facebook also

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served Pederson with the summons and amended complaint in Norway under the Hague

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Convention on April 29, 2011. Id. Defendants did not respond to the complaint. The clerk

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entered default as to Retro Invent on May 26, 2011, and as to Pederson on June 1, 2011. Dkt.

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Nos. 23, 25. Facebook now moves for the entry of default judgment against Defendants.

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II. DISCUSSION

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Based on the allegations in the complaint and the motion for default judgment, the Court

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lacks personal jurisdiction over Defendants. For the exercise of personal jurisdiction over a

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foreign defendant to be justified, the Due Process Clause requires that the defendant perform

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some act by which he purposefully avails himself of the benefits and protections of the laws of

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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

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In the context of trademark dilution, the Ninth Circuit requires “something more” than “simply

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registering someone else’s trademark as a domain name and posting a web site on the Internet”

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in order to find that the defendant has expressly aimed his conduct at the forum and thus

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purposefully availed himself of the benefits and protections of the laws of that forum.

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Panavision Intern., L.P. v. Toeppen, 141 F.3d 1316, 1322 (9th Cir. 1998). The “something

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more” that the Ninth Circuit requires is “conduct directly targeting the forum,” such as running a

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website that appeals to, and profits from, an audience in the forum. Mavrix Photo, Inc. v. Brand

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Techs., Inc., 647 F.3d 1218, 1229 (9th Cir. 2011) (emphasis added); see also Panavision, 141

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F.3d at 1322 (holding that the foreign defendant’s purposeful monetary extortion of the plaintiff

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constituted the “something more” that is required to justify the exercise of personal jurisdiction

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over the defendant); Rio Properties, Inc. v. Rio Intern. Interlink, 284 F.3d 1007, 1020 (9th Cir.

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2002) (holding that the “something more” requirement was met because the foreign defendant

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“specifically targeted customers” in the forum state by running radio and print advertisements

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there).

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Here, Facebook’s allegations do not establish that Defendants’ conduct meets the

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“something more” requirement. Facebook alleges that Faceporn is a highly interactive website

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that has 250 users in California and 1000 users in the United States, and that Faceporn targeted

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“a U.S. audience” by registering its website with a domain name ending in “.com.” These

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allegations alone, without facts showing that Faceporn’s California viewer base was “an integral

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component” of Faceporn’s business model and profitability, falls short of meeting Facebook’s

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burden to establish that the exercise of personal jurisdiction over Defendants is proper, as “[n]ot

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all material placed on the Internet is, solely by virtue of its universal accessibility, expressly

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aimed at every state in which it is accessed.” Mavrix, 647 F.3d at 1230-31.

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Case No. 10-cv-04673 JSW (NC)
ORDER TO SHOW CAUSE

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IV. ORDER

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On or before December 12, 2011, Facebook must show cause, in writing, why this Court

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should not recommend to the District Court that this action be dismissed for lack of personal

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jurisdiction. Specifically, Facebook must show why the exercise of personal jurisdiction over

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Defendants is proper in light of the case law cited in this order.

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IT IS SO ORDERED.

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DATED: November 29, 2011

____________________________
NATHANAEL M. COUSINS
United States Magistrate Judge

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Case No. 10-cv-04673 JSW (NC)
ORDER TO SHOW CAUSE

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