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Eleventh Circuit: Website in Tennessee using Floridian's trademark sufficient for jurisdiction
October 17, 2008

In a decision last week, the Eleventh Circuit reversed a district court's dismissal of a trademark infringement case for lack of personal jurisdiction. The district court held that the allegedly infringing conduct, operating a website, was insufficient to warrant jurisdiction in the plaintiff's home state of Florida.

Here, the plaintiff was an individual, and the trademark allegedly infringed was the plaintiff's name. The court applied the Calder effects test, and held it was reasonable for the defendant, in using the plaintiff's name, to expect to be haled into court in the plaintiff's home state. The court characterized the alleged trademark infringement in this case as intentional, in that the plaintiff was "individually targeted" to "misappropriate his name and reputation for commercial gain." As a result, the Calder test was met, and personal jurisdiction was proper in Florida.More detail of Licciardello v. Lovelady following the jump.Plaintiff Carman Licciardello ("Carman") has been a nationally-known Christian musician and entertainer for over twenty-five years. From 2000 to 2001, the defendant, Rendy Lovelady, worked as Carman's personal manager, managing his concert tour during that year. Lovelady received commissions from Carman's gross income derived from catalogue record sales, from Carman's service contracts on specific items, including endorsement and sponsorship contracts, and his master recordings, musical composition and other activities occurring during the contract, which was terminated by Carman at the end of 2001.In early 2006, Lovelady posted a website (developed in Tennessee) that promoted Lovelady as a personal manager for music artists. The website used Carman's trademarked name and his picture, implying that Carman endorsed Lovelady's skill as a personal manager. In response, Carman brought suit against Lovelady in Florida, asserting trademark infringement. The district court dismissed the action for lack of personal jurisdiction, holding Lovelady had insufficient contacts with Florida to warrant exercising jurisdiction there.The Eleventh Circuit reversed. The terms of the Florida "long-arm" statute permit the state's courts to exercise jurisdiction over nonresident defendants who commit specific acts, including tortious acts. Carman alleged jurisdiction over the nonresident Lovelady was appropriate under this statute on the basis that creation in Tennessee of a website containing an allegedly infringing and deceptive use of Carman's trademark was a tortuous act within Florida as the injury from the infringement occurred where the holder of the mark resides, here Florida. Lovelady did not meaningfully contest this aspect of the jurisdictional analysis, simply arguing he did not commit any tort as his employee was the creator of the website.The Eleventh Circuit had previously held that the Florida long-arm statute permits jurisdiction over the nonresident defendant who commits a tort outside of the state that causes injury inside the state. Therefore, the court determined that even though the website was created in Tennessee, the Florida long-arm statute was satisfied if the alleged trademark infringement on the website caused injury in Florida.The court next looked to the due process clause of the United States Constitution to determine whether it permitted the Florida long-arm statute to be employed. In this respect, the court noted that the due process clause protects an individual's liberty interest in not being subject to the binding judgments of a forum with which he has established no meaningful "contacts, ties, or relations." The Constitution permits the exercise of personal jurisdiction over a nonresident defendant where he has "fair warning" that he may be subject to suit there. This "fair warning" requirement is satisfied if the defendant has "purposefully directed" his activities at residents of the forum and the litigation results from alleged injuries that "arise out of or relate to" those activities. In assessing whether the due process clause permitted the exercise of personal jurisdiction over Lovelady in Florida, the court therefore looked to whether he had purposefully established such constitutionally significant contact with the state that he could have reasonably anticipated that he might be sued there. Lovelady asserted he had no such contact with Florida in that he had no office, agents, employees or property in Florida. Further, while apparently conceding that his website was related to Carman's claim, Lovelady contended it was not sufficient contact upon which to predicate personal jurisdiction.The court held jurisdiction was appropriate, noting intentional torts, such as using Carman's trademarked name and picture on a website accessible in Florida in a manner to imply Carman's endorsement of Lovelady and his products, could support the exercise of personal jurisdiction over a nonresident defendant with no other contacts in the forum. The court further determined that Lovelady's actions whose purpose was to make money from Carman's implied endorsement satisfied the effects test of Calder v. Jones for personal jurisdiction - the commission of an intentional tort, expressly aimed at a specific individual in the forum whose effects were suffered in the forum. As Lovelady's conduct was calculated to cause injury to Carman in Florida, the court held that Lovelady was unable to claim surprise at being haled into court there.In a footnote, the Eleventh Circuit noted that its decision in this case was not intended to establish any general rule for personal jurisdiction in the internet context. Instead, its holding was limited to the facts of this particular case where the internet was used as a vehicle for the deliberate, intentional misappropriation of a specific individual's trademarked name or likeness and that use was aimed at the victim's state of residence.Finally, the court had no trouble finding exercise of jurisdiction over Lovelady comported with fair play and substantial justice. The court noted that Florida has a very strong interest in affording its residents a forum to obtain relief from intentional misconduct of nonresidents causing injury in Florida. Thus, the Eleventh Circuit held that the Constitution was not "offended" by Florida's assertion of its jurisdiction over such nonresident tortfeasors. As a result, the court reversed the dismissal, holding personal jurisdiction permissible in Florida.To read the full decision in Licciardello v. Lovelady, click here.

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