RE: [ga] 4th Circuit Court of Appeals Reverses Barcelona.com Deci sion

["Michael Froomkin - U.Miami School of Law" <froomkin@law.miami.edu>]

In the US, at least, we're approaching this question pretty much the way
we do a standard jurisdictional analysis: as we move away from the
superficial active/passive distinction and go to a fuller, more
traditional, apporach, we try to figure out the intent of the party from
the circumstantial evidence (are they seeking to 'avail themselves' of the
target jurisdiction market or laws). In most cases it's not hard; in
marginal cases it is very hard, but nothing's perfect.

If there is local presence, it's very easy.

If they are sending goods or services into the jurisdiction for
compensation knowingly, it's easy.

If they are targeting ads to the jurisdiction, it's pretty easy.

If they are selling intangibles (e.g. downloaded software) without worrying
about where it's going, and substantial quantities of it are going into
the jurisdiction, we say it's easy on the 'really should have known'
theory if nothing else.

If the sales are negligible it might be hard, but it's clear from
non-Internet cases that a very small number of sales won't create general
jurisdiction.

If there are no sales, just exchanges of information, there probably isn't
jurisdiction other than for libel.  The issue of trademark doesn't arise
here since it's rare to have "in commerce" activities without sales,
though it might be logically possible.  (I say this with less confidence
than all the above, as I've not looked recently at the case law, and some
of the cases I know of are confused on this issue.)

I'm sure Michael Geist could explain it better.

On Tue, 3 Jun 2003 richard.hill@itu.int wrote:

> Michael,
> 
> Your comments make sense to me.
> 
> Re 1, I presume that the Spanish court would have jurisdiction over a US
> firm if the US firm markets in Spain to residents of Spain?  Which then
> raises another complicated question: "When can it be deemed that an Internet
> site is marketing to the citizens of country X?"  That is, what sorts (if
> any) of country-specific actions are required?
> 
> Best,
> Richard
> 
> 
> > -----Original Message-----
> > From: Michael Froomkin - U.Miami School of Law
> > [mailto:froomkin@law.miami.edu]
> > Sent: Tuesday, 03 June 2003 14:24
> > To: richard.hill@itu.int
> > Cc: john@johnberryhill.com; ga@dnso.org
> > Subject: RE: [ga] 4th Circuit Court of Appeals Reverses Barcelona.com
> > Deci sion
> > 
> > 
> > Well, only a little complicated, maybe?  trademark is territorial and
> > always has been.  The Spanish court
> > 
> > 1. might not have personal jurisdiction over a US firm marketing to US
> > clients
> > 
> > 2. even if it did, wisely might not exercise it under forum 
> > non conveniens
> > 
> > 3. even if exercised jurisidiction, would rule about the use 
> > of the name
> > *in spain*
> > 
> > 4. injunctive relief would risk hitting the first amendment (cf. Yahoo
> > case....); damages would fall under well established principles of
> > enforcement.
> > 
> > 5.  Note, however, that any claim in Spain would be a traditional
> > infringement claim -- NOT a claim for ownership of the domain 
> > name.  And
> > that's exactly as it should be.
> > 
> > On Tue, 3 Jun 2003 richard.hill@itu.int wrote:
> > 
> > > Under US law, says the US court.
> > > 
> > > But what about Spanish law?  Not applicable in US court, 
> > because of ACPA and
> > > the general principle of territoriality of trademark law, 
> > says the US court.
> > > 
> > > However, I suppose, the City Council of Barcelona could 
> > bring an action in
> > > Spanish courts, under Spanish law, if it felt that the 
> > activities exercised
> > > under the disputed domain name were violating Spanish law in Spain.
> > > 
> > > If such an action suceeded in Spain, then the question of 
> > whether or not the
> > > Spanish court's decision could be enforced in the US is probably a
> > > complicated question.
> > > 
> > > Best,
> > > Richard Hill
> > > 
> > > 
> > > 
> > > > -----Original Message-----
> > > > From: John Berryhill Ph.D. J.D. [mailto:john@johnberryhill.com]
> > > > Sent: Monday, 02 June 2003 22:43
> > > > To: [GA]
> > > > Subject: [ga] 4th Circuit Court of Appeals Reverses Barcelona.com
> > > > Decision
> > > > 
> > > > 
> > > > 
> > > > As if anyone needed to know, "Barcelona" is not a trademark 
> > > > of the City of
> > > > Barcelona:
> > > > 
> > > > http://pacer.ca4.uscourts.gov/opinion.pdf/021396.P.pdf
> > > > 
> > > > 
> > > > It looks like an update will be needed here to avoid false 
> > > > advertising:
> > > > http://www.oblon.com/barcelona/
> > > > 
> > > > 
> > > > 
> > > > 
> > > > 
> > > > 
> > > > --
> > > > This message was passed to you via the ga@dnso.org list.
> > > > Send mail to majordomo@dnso.org to unsubscribe
> > > > ("unsubscribe ga" in the body of the message).
> > > > Archives at http://www.dnso.org/archives.html
> > > > 
> > > --
> > > This message was passed to you via the ga@dnso.org list.
> > > Send mail to majordomo@dnso.org to unsubscribe
> > > ("unsubscribe ga" in the body of the message).
> > > Archives at http://www.dnso.org/archives.html
> > > 
> > > 
> > 
> > -- 
> > 		Please visit http://www.icannwatch.org
> > A. Michael Froomkin   |    Professor of Law    |   froomkin@law.tm
> > U. Miami School of Law, P.O. Box 248087, Coral Gables, FL 33124 USA
> > +1 (305) 284-4285  |  +1 (305) 284-6506 (fax)  |  http://www.law.tm
> >                         -->It's hot here.<--
> > 
> 

-- 
		Please visit http://www.icannwatch.org
A. Michael Froomkin   |    Professor of Law    |   froomkin@law.tm
U. Miami School of Law, P.O. Box 248087, Coral Gables, FL 33124 USA
+1 (305) 284-4285  |  +1 (305) 284-6506 (fax)  |  http://www.law.tm
                        -->It's hot here.<--

--
This message was passed to you via the ga@dnso.org list.
Send mail to majordomo@dnso.org to unsubscribe
("unsubscribe ga" in the body of the message).
Archives at http://www.dnso.org/archives.html